Latest Trademark Cases in 2021 – Part 8

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Prateek Chandragupt Goyal vs The State of Maharashtra and Anr.

In this case, the petitioner, Prateek Goyal, a journalist working with Newslaundry filed a writ petition to quash the First Information Report registered against him at Vishrambaug Police Station, Pune for offences under Section 103 of the Trade Marks Act, 1999. The FIR was registered against the petitioner by Chief Administrative Officer of Sakal Group for writing highly defamatory articles against the Sakal Media Group and that use of the official logos / trade mark of the Sakal Media Group and Sakal Times on these articles clearly amounted to falsely applying the said trademark, thereby resulting in an offence under Section 103 of the aforesaid Act. The court was of the view that the articles authored by the Petitioner and published in the news portal Newslaundry neither qualify as goods nor as services as defined under Section 2(j) and 2(z) of the aforesaid Act. The Court found that, although the mark shown in the two articles is indeed the ‘trademark’ of Sakal Media Group under Section 2(z)(b) of the aforesaid Act, the said mark being shown in the articles could not be said to be in the context of either ‘goods’ or ‘services’. It would have been a completely different matter if the Petitioner had used the registered trademark of Sakal Media Group to portray as if the news portal itself was that of Sakal Media Group. Thus, the Court directed the Vishrambaug Police Station to quash the FIR.

Citation: Prateek Chandragupt Goyal vs The State of Maharashtra and Anr., decided by Bombay High Court on 20 April, 2021, available at : Prateek Chandragupt Goyal vs The State Of Maharashtra And Anr on 20 April, 2021 (indiankanoon.org) visited on 13.09.2021

KAVERI HOTELS PRIVATE LIMITED... VS INTELLECTUAL PROPERTY APPELLATE BOARD & ORS.

In this case, a Letters Patent Appeal was filed by the Appellant, Kaveri Hotels Pvt. Ltd. as the lower court did not look into adequacy of stamp fee. The questions before the High Court of Gujarat were whether the agreement reduced into writing on a Non-Judicial Stamp Paper of Rs.100 required appropriate stamp duty to be affixed in order to become admissible as evidence before the Registrar of Trademarks and whether the dispute between the parties on the Trade Mark ‘Chokhi Dhani’ should be registered in favour of the Appellant or in favour of the Respondent. The Court observed that at the previous instances the question of stamp duty was neither raised by the parties nor discussed by the Registrar of Trademarks or the Lower Court and therefore not discussed by the Single Judge. The Court opined that all the orders passed by the Authorities below could not be sustained and the entire matter had to be remanded back to the Registrar to decide the case again with the question of stamp duty as a preliminary issue after giving an opportunity of hearing to both the sides. Hence, the Letters of Patent Appeal was allowed, the order passed by the Single Judge and IPAB were set aside and the matter was restored to the Registrar.

Citation: Kaveri Hotels Private Limited… Vs Intellectual Property Appellate Board & Ors., Decided by High Court of Gujarat on 1st July, 2021, available at: Kaveri Hotels Private Limited… Vs Intellectual Property Appellate Board & Ors., visited on 13th September, 2021.

GUCCIO GUCCI… vs INTIYAZ SHEIKH

In this case, the Plaintiff, Guccio Gucci S.P.A. filed a suit for permanent injunction against Defendant, Intiyaz Sheikh so as to restrain him and persons claiming under him from infringing its trademark, copyright, passing off, unfair trade competition, rendition of accounts, delivery up, etc. The Plaintiff had been advertising its products bearing its IP, registered in many countries, through various printed media including newspapers, magazines, internet and trade journals, leaflets and other promotional literature. Plaintiff in its course of market survey came to know that the Defendant was illegally manufacturing socks using Plaintiff’s registered “green and red stripes” logo and mark “Gucci” in its entirety. The Court had passed an ex-parte ad-interim injunction. At the later stages of the suit the Court noted that the Defendant deliberately chose not to participate in the proceedings despite the pendency. The Court reasoned that a civil case proceeded on the doctrine of preponderance of probabilities and not on proof beyond reasonable doubt. Although mere non−appearance of Defendant could not be inferred against him, but in view of overall facts, coupled with the evidence on record along with the report of local commissioner, the Plaintiff was successful in establishing the case in its favour. The Court decreed a permanent injunction against the Defendant and directed him to handover all the infringing goods to the Plaintiff as well as pay ₹2,00,000/- and ₹1,66,000/- as costs and damages respectively.

Citation: Guccio Gucci… vs Intiyaz Sheikh, decided by District Judge (Commercial Court), Tis Hazari Court, Delhi on 27th August, 2021, available at: Guccio Gucci… vs Intiyaz Sheikh, visited on 9th September, 2021.

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Please note that these case updates have been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the decisions published in the bulletin. You may write to contact@bananaip.com  for corrections and take down.

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