This running post provides a summary of the latest Trademark cases decided by courts in India in 2022:

Renaissance Hotel Holdings Inc. Vs. B. Vijay Sai And Ors.

The Appellant, proprietor and holder of the trademark ‘RENAISSANCE’, filed a suit against the Respondents for a permanent injunction against the use of the allegedly infringing trademark ‘SAI RENAISSANCE’, as well as any other mark identical to the Respondents’ mark, ‘RENAISSANCE’. The Appellant discovered two hotels being run by the Respondents, in Bangalore and Puttaparthi, and noted that it copied the style, signage, and the word ‘RENAISSANCE’.

The Respondents’ countered the claim stating that the term ‘RENAISSANCE’ was a generic word used widely, and the use of it by the Appellant had not gathered reputation. The Respondents also asserted their obliviousness to the fact that the mark was under use by the Appellant. The Trial Court held the Respondents’ mark to be infringing, and granted an injunction against its use by the Respondents, but denied the Appellant’s claim for damages.

The Apex Court came to the conclusion that the High Court had erred in its interpretation of the test laid down under S.29(4) of the Act, as it had not taken into account the other applicable provisions of S.29(4), as well as other provisions which covered the circumstances of the case herein. The Apex Court overturned the order of the High Court, and upheld that the order delivered by the Trial Court as well-reasoned.

Citation: Renaissance Hotel Holdings Inc. vs. B. Vijay Sai And Ors, Decided by the Supreme Court of India on 19th January, 2022, available at: https://indiankanoon.org/doc/143185473/  last visited on 22nd January, 2022.

Airtec Electrovision Pvt. Ltd Vs. Sunil Kumar Saluja

In this case involving a trademark infringement suit pertaining to “EIRTEC” for LED Televisions, the Delhi High Court refused  to grant an interim injunction against use of “AIRNET” for the same goods. The Single Judge initially refused the injunction based on visual/phonetic dissimilarity and the fact that the trademarks have commonly used words and prefixes. The Division Bench agreed with the Single Judge on appeal, and did not interfere with the injunction. This case cites some useful cases pertaining to common prefixes and descriptive marks.

Citing Marico, the   Single Judge has reiterated some important principles with respect to unprotectable marks and related injunctions, which are reproduced below:

“41. The following conclusions thus emerge:-

(i) A mark which is sought to be used as a trade mark, if, is one falling under Section 9 (1)(a) to (c), then the same ordinarily ought not to be afforded protection as a trade mark

(ii) Before the marks which fall under Section 9(1) (a) to (c) are given protection as a trade mark, the distinctiveness must of an undisturbed user of a very large/considerable number of years, with the emphasis being on discouragement on appropriation of such marks which fall under Section

9(1)(a) to (c).

(iii) A civil Court in a suit filed for infringement of a registered trade mark is entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the validity of registration for the purpose of passing an interlocutory order including of grant or refusal of an interim injunction–once the objection as to invalidity of registration is taken up in the pleading/written statement.

(iv) A trade mark which falls under Section 9(1)(a) to (c) cannot be registered on proposed to be used basis. Evidence on distinctiveness with respect to trade marks falling under Section 9(1)(a) to (c) should be the evidence of user evidencing distinctiveness as on the date of application for registration or at the best of evidence up to the date of registration.

(v) In infringement actions the Court is entitled to consider the evidence of distinctiveness up to the date of registration for the purpose of passing any interlocutory order and not evidence showing distinctiveness post registration. However, in cancellation proceedings evidence of distinctiveness post registration of the trade mark can also be considered.

(vi) Even if there is finality to registration of a trade mark, yet the defendant in infringement action can take statutory defences under Sections 30 to 35 to defeat the infringement action.”

Citation: Airtec Electrovision Pvt. Ltd vs. Sunil Kumar Saluja, Decided by Delhi High Court  on 28 January, 2022, available at: https://indiankanoon.org/doc/187562009/.

Moonshine Technology Private … Vs. Tictok Skill Games Private Limited

In this case, the Plaintiff  owned registered trademarks  for Baazi, PokerBaazi, BaaziGames, etc., for online, computer and electronic games.

The Defendants started using the  mark Winzo Baazi for their games website and mobile app, and the Plaintiff sued for trademark infringement and passing off. After reviewing the facts of the case, the Delhi High Court granted an interim injunction in favour of the plaintiff as the mark was registered and not descriptive, and because the defendant adopted it dishonestly. The Court came to the conclusion that the Plaintiff made out a prima facie case for infringement and passing off, and that irreparable harm and balance of convenience was in its favour.

Citation: Moonshine Technology Private … vs. Tictok Skill Games Private Limited, Decided by Delhi High Court on 31 January, 2022, available at: https://indiankanoon.org/doc/137837776/.


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Updates on recent orders and judgments are brought to you by Consulting & Strategy Divisions of BananaIP Counsels, a Top ranked IP Firm in India. If you have any questions, or need any clarifications, please write to contact@bananaip.com  with the subject: Trademark Judgements

Disclaimer

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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