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

Lenskart Solutions Pvt. Ltd. v. M/s. Lenspark Optician

The Plaintiff, an eyewear company selling various products throughout the country, contended that had it adopted and used the fanciful and inherently distinctive trademark “LENSKART” since 2009. Additionally, the Plaintiff contended that it was the owner and proprietor of the copyright in the original artistic work contained in the label. Lastly, the Plaintiff claimed that it had a business of several crores of rupees and that the brand was immensely popular.
The Defendant adopted the name “Lenspark” in the use of its optical retail store at Aurangabad, Maharashtra. The Defendant did not effectively respond to the cease-and-desist notice or the summons of the suit, nor did it file a written statement within the stipulated time period.
The Court held that the term “Lenspark” was an infringement of the Plaintiff’s trademark as well as copyright rights enjoyed by it. The Court passed a decree of permanent injunction in favour of the Plaintiff, awarded Rs. 25,00,000/- as punitive damages, cost of the suit, and ordered for destruction of all products and materials bearing the infringing trademark “LENSPARK” .

Citation: Lenskart Solutions Pvt. Ltd. v. M/s. Lenspark Optician, Decided by The Delhi District Court on 9th February, 2022, available at https://indiankanoon.org/doc/3108072/, last visited on 14th February, 2022.

Bulgari Spa v. Notandas Gems Private Limited

The Plaintiff and the Defendant widely engaged in high end luxury jewelry. The Plaintiff filed a suit against the Defendant and alleged trademark infringement as well as design infringement. The Plaintiff undisputedly held four registered trademarks with “SERPENTI”, and its device mark of a snakehead as well as design of its wristwatch were also registered.
The Plaintiff contended that the mark “SERPENTI” was identifiable with its range of niche jewelry which was used since the 1940s. Further, the Plaintiff submitted that the defendant used the mark “SERPENTINE”, which was deceptively similar to the Plaintiff’s, in respect of identical jewelry. Similarly, the design infringement was alleged as the Defendant’s design seen as a whole, was similar to that of the Plaintiff.
The Defendant contended that the Plaintiff could not claim exclusivity in respect of “SERPENTI” because it was a composite mark. Further, the Defendant contended that “SERPENTI” was common to the trade and several jewelry manufacturers used the same. Additionally, the Defendant also contended that the Delhi High Court did not have territorial jurisdiction to adjudicate the case.
The Court examined the submissions made and held that since the Defendant’s website was interactive in nature and commercial transactions took place all over the country, jurisdiction was conferred upon the Delhi High Court, among others. Further, the Court held that there was phonetic similarity between “SERPENTI” and “SERPENTINE”. Additionally, the Court opined that “SERPENTI” was fanciful and coined by the Plaintiff. With respect to the design infringement, the Court held that there was no infringement as the ‘shape’ and ‘design’ of both the designs were dissimilar. As a result, an interim injunction restraining the Defendant to the extent of only trademark infringement was passed.

Citation: Bulgari Spa v. Notandas Gems Private Limited, Decided by The Delhi High Court on 21st February, 2022, available at https://indiankanoon.org/doc/84705826/, last visited on 25th February, 2022.

Pernod Richard India Pvt. Ltd. v. Frost Falcon Distilleries Ltd.

In the present case the subject matter was two products of the Plaintiff, Pernod Richard India Pvt. Ltd., with the Trade name, “Blenders Pride” and “Imperial Blue” which were registered and were in use since the year 1994 and 1997 respectively. The Plaintiff alleged that the Defendant, Frost Falcon Distilleries, infringed the Plaintiff’s trademark by using the mark “Casinos Pride” and tried to misrepresent its product as that of the Plaintiffs’. The Plaintiff stated that the label, the getup, the packaging, the colour combination and arrangement of features of the Defendant’s product were deceptively similar to both the products of the Plaintiff. As both the parties dealt with the product which belonged to the same segment i.e. Indian Made Foreign Liquor (IMFL), the Plaintiff submitted that similar features on different products might confuse the prospective consumers. The Defendant denied the claims made by the Plaintiff and stated that its products were not similar phonetically, visually, or otherwise and thus the Plaintiff could not claim exclusivity in respect of its composite mark “Blenders Pride” which had no secondary meaning in the minds of the consumer. The High Court of Delhi, after analysing the distinctive aspects of infringement and passing off and several other legal principles, held that the Defendant was passing off the existing marks of the Plaintiff. The Court issued injunctive relief restraining the Defendant from manufacturing, marketing or selling the IMFL under the mark “Casinos Pride”.

Citation: Pernod Richard India Pvt. Ltd. v. Frost Falcon Distilleries Ltd., decided by Delhi High Court on 2nd March, 2022, available at https://indiankanoon.org/doc/124742288/, visited on 4th March, 2022.


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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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