This post provides a summary of Indian Trademark Cases for the year 2021
El Baik Food Systems Co. S.A vs Arsalan Wahid Gilkar & Anr.
In a recent decision, the Delhi High Court granted an Ex-parte Injunction against use of the trademark ‘Albaik’ for restaurants and related services. The Plaintiff in the case was the Albaik Group based out of Saudi Arabia, which started its business in 1986. The Plaintiff briefly operated under the mark, Albaik, in India between 2017 and 2020, and shut down its operations due to the COVID lock downs. It had several trademark registrations over the mark, Albaik, in word and logo forms.
The Defendants in the case were offering franchises over the Plaintiff’s mark by charging a franchise fee of five (5) percent, and details of the same were placed on the Defendants’ websites and social media pages. Convinced with the prima facie case of the Plaintiff, the Court granted the Ex-parte injunction in favour of the Plaintiff.
Citation: El Baik Food Systems Co. S.A vs Arsalan Wahid Gilkar & Anr, Decided by the Delhi High Court on 4th June, 2021, available at: https://indiankanoon.org/doc/99016397/
United Spirits Limited vs Som Fragrances Private Limited and Ors.
In this case, United Spirits filed an application for ad interim injunction with respect to use of its well-known trademark, SIGNATURE, by the Defendants for Gutka. The parties had earlier entered into a settlement agreement pertaining to use of the said mark for tobacco and related products by the Defendants. United Spirits argued that the Defendants had breached the settlement agreement and related undertaking, which made the settlement invalid. The Court disagreed and stated that actions were taken by parties with respect to the trademark applications filed after the settlement, which made the agreement valid. Acknowledging that well known marks get broader protection, the Court asked the Defendants to use the trademark, Signature, in line with the settlement agreement. It did not injunct the Defendants from using the mark for Gutka.
Citation: United Spirits Limited vs Som Fragrances Private Limited and Others., Decided by Delhi High Court on 28th April, 2021, available at: https://indiankanoon.org/doc/155080630/.
Kaira District Cooperative Milk Producers Union Ltd and Anr. V/S. Maa Tara Trading Co. and Ors
In this case, the Calcutta High Court passed an interim order against the Defendants, restraining them from using the trademark ‘Amul’ in connection with their products. The case was instituted by Kaira District Cooperative Milk Producers Union Ltd., who are the proprietors of the trademark ‘Amul’. It was contended in the plaint, that the Defendants incorporated the ‘Amul’ trademark with a deceptively similar font in the labels of candles marketed by them, which was alleged to be an act of trademark infringement. The Plaintiffs pointed out that the ‘Amul’ trademark was recognised as a well-known mark by the Trademark Registry, and as the Defendant’s products were being sold at cake shops and confectionaries, there exists a high likelihood that consumers would associate such infringing products with the Plaintiff. The Calcutta High Court passed an order of temporary injunction restraining the Defendants from using the ‘Amul’ mark until the disposal of the suit.
Citation: Kaira District Cooperative Milk Producers Union Ltd and Anr. V/S. Maa Tara Trading Co. and Ors. [G.A./1/2020 in CS./107/2020], Decided by the Calcutta High Court on 22nd March, 2021, available at: https://indiankanoon.org/doc/148365026/
Franco Indian Pharmaceuticals … vs Micro Labs Limited and Anr.
In this case, the Bombay High Court granted an ex parte injunction with respect to the word and label marks, Dexorange, and trade dress of the bottle. The trademarks were being used for folic acid supplements for more than 50 years, and the Plaintiff held several registrations with respect to its trademarks. The Defendants in this case were selling products under the name ‘Ferri Orange,’ though a permanent injunction was earlier granted against one of them. As the Plaintiff had a prima facie case, the trademarks and trade dress were copied, and as Defendants behaved dishonestly, the Court granted an ex parte injunction against them.
Citation: Franco Indian Pharmaceuticals … vs Micro Labs Limited And Anr, Decided by Bombay High Court on 14 June, 2021, available at: https://indiankanoon.org/doc/45913753/
Sulphur Mills Limited vs Virendra Kumar Saini
The Bombay High Court in this case granted an interim injunction against use of the mark, Fortis Royal, by the Defendant. The Plaintiff in the case held a trademark over Fortis under which it sold sulphur products. On comparing the packaging, the Court came to the conclusion that the Defendant had lifted the Plaintiff’s packaging and trademark representation. The Court pointed out that change of one vowel will not make the Defendant’s use of the mark non-infringing.
Citation: Sulphur Mills Limited vs Virendra Kumar Saini, Decided by the Bombay High Court on 14 June, 2021, available at: https://indiankanoon.org/doc/14684884/
M/S Sri Tulasi Industries vs M/S Sri Sapthagiri Industries
In this case, the Plaintiff/Appellant challenged the order of the District Court in vacating the interim injunction with respect to its trademark, Tasty Gold, before the Telangana High Court. The Defendant/Respondent in the case was using the trademark, Tasty Drops and different suffix variations. Both were using the trademarks for edible oils. After reviewing the facts, the Court reinstated the interim injunction as the prefixes were similar, products were similar, and as the Plaintiff’s products had acquired goodwill in the market. The Court reasoned that the Defendant should not be permitted to ride on Plaintiff’s goodwill during the pendency of the suit.
Citation: M/S Sri Tulasi Industries vs M/S Sri Sapthagiri Industries, Decided by Telangana High Court on 9 June, 2021, available at: https://indiankanoon.org/doc/158670689/
Sony Corporation vs. K. Selvamurthy
In this case, Sony Corporation filed a trademark infringement suit claiming dilution of its well-known SONY trademark against a sole proprietor running a tours and travels business under the name, Sony Tours and Travels. After analyzing the facts before it, the District Court came to the conclusion that the Defendant did not take unfair advantage of, or cause detriment to the distinctive character or repute of the Plaintiff’s SONY mark. The Court came to this conclusion as Sony Corporation’s business is limited to electronics and media, which could be differentiated from the tours and travels business of the Defendant. The Court also noted that the use of the word, Sony by the Defendant did not cause any confusion among the consumers. It also took note of the inordinate delay of the Plaintiff in approaching the Court, and granted Defendants Rs. 25, 000/- as costs.
Citation: Sony Corporation Vs. K. Selvamurthy, Decided by Bangalore District Court on 18th June, 2021, available at: https://indiankanoon.org/doc/22176292/
M/S. Dabur India Limited vs. Bison Laboratories Private…
In this case, the Madras High Court granted a permanent injunction against the use of the mark, ODOSOL, by the Defendant for cleaning preparations. The Plaintiff had a registered trademark over ODOPIC. After citing a Supreme Court judgment, the Court came to the conclusion that the mark, ODOSOL, was confusingly and deceptively similar to the mark, ODOPIC. The Court took note of the fact that an injunction was operating against the Defendant for about twenty years while granting the permanent injunction.
Citation: M/S.Dabur India Limited vs Bison Laboratories Private …, Decided by Madras High Court on 22 June, 2021, available at: https://indiankanoon.org/doc/171318470/
V3 Events And Entertainments … vs V3 Entertainments/V3 Artists
In this case, the Plaintiff sued the Defendants for using its trademark, V3, on social media platforms and to carry out their business. After reviewing the facts, the District Court came to the conclusion that the trademark usage by the Defendants was deceptive, and that such usage was likely to cause confusion among consumers seeking wedding and event management services. The Court therefore restrained the Defendants from using the V3 trademark on websites, Facebook, Instagram, Google Plus, and other social media platforms in addition to a general restraint from using the Plaintiff’s mark.
Citation: V3 Events And Entertainments … vs V3 Entertainments/V3 Artists, Decided by a District Court in Delhi on 1 July, 2021, available at: https://indiankanoon.org/doc/7857343/
Sun Pharmaceutical Industries Limited vs Cipla Limited
In this case, the Respondent/Plaintiff filed a suit for a permanent injunction before the Madras High Court against the Applicant/Defendant for infringement of its copyright and trademark. The Court herein, granted an interim injunction in favour of the Respondent/Plaintiff. Henceforth, the Applicant/Defendant filed three applications with a plea to vacate the interim relief granted on grounds of urgency. The plea was based on the fact that the drugs were of a huge amount, carried an expiry date of 1 year, and were in demand because of the ongoing pandemic as they helped in relieving the Covid-19 symptoms. The Court held that the Respondent/Plaintiff had made out a prima facie case for continuance of the interim order as the balance of convenience continued to be in their favour. While holding so, the Court pointed out that they cannot allow a party to violate another person’s IPR, notwithstanding the fact that the country was facing an unprecedented medical emergency. The Court upheld the interim order and held that it shall continue to remain in force subject to the final decision of the suit.
Citation: Sun Pharmaceutical Industries Limited vs. Cipla Limited … Decided by Madras High Court in May, 2021, available at: https://indiankanoon.org/doc/95848712/
Frankfinn Aviation vs Fly High Institute & Ors.
In this case the trademark involved was “Fly High”, the Delhi High Court granted an Ex-parte injunction in favour of the Plaintiff, and restrained the Defendant from using the mark on its websites, social media platforms or otherwise. The Court in a short observation pointed out that there was a prima facie case because the Plaintiff was using the trademark from 2007 while the Defendant was using only from 2018. It pointed out that irreparable harm would be caused if interim relief was not granted, and therefore proceeded with its order.
Citation: Frankfinn Aviation … vs Fly High Institute & Ors, Decided by Delhi High Court on 5 July, 2021, available at: https://indiankanoon.org/doc/32074880/
Cross Fit LLC vs Mr. Renjith Kunnumal & Anr.
The Plaintiff herein used ‘CrossFit’, a registered word and device mark, on a global basis for fitness & training services as well as its domain name www.crossfit.com. The Defendants were found using the name “SFC CROSSFIT” while imparting identical gym and fitness services, in their advertisements, website, social media handles, etc. Aggrieved by the same the Plaintiff filed a suit before the High Court of Delhi and an application seeking interim injunction. The averments in the plaint, remained uncontested by the Defendants hence, they were deemed to be true based on the principle of non-traverse. The Court pointed out that the word “CrossFit” was entitled to an enhanced degree of protection as it had no known etymological significance. The Court concluded that a prima facie case and balance of convenience for grant of interim injunction existed in the Plaintiff’s favour. The Defendants were injuncted from using the mark “CrossFit” or any other identical or deceptively similar mark offline or online. They were also directed to take down their website and domain name www.sfccrossfit.com as well as all listings, posts, pictures etc. from all sites on the internet including their social media webpages.
Citation: Cross Fit LLC vs Mr Renjith Kunnumal & Anr. [I.A. 6927/2021 in CS (COMM) 251/2021] Decided by High Court of Delhi on 8th July, 2021, available at:
ITC Limited vs Maurya Hotel (Madra) Pvt Ltd
In this case, the Madras High Court allowed the Plaintiff to add a relief for trademark infringement to a passing off suit based on subsequent registration of the trademark by the Plaintiff. The Court in the case pointed out that adding a relief is permitted, and helps in avoiding multiplicity of suits. It also stated that the outcome might be different if the application was for conversion of the plaint from the relief of passing off to infringement.
Citation : ITC Limited vs Maurya Hotel (Madra) Pvt Ltd, Decided by Madras High Court on 22nd July, 2021, available at: https://indiankanoon.org/doc/36231681/
M/S Praba’s V Care Health … vs M/S I-Care Aesthetic Clinic
This case involved a dispute between an employer and its ex-employee. The Plaintiff in the case registered the trademark ‘V Care,’ which was given registration with the limitation that no protection will extend to ‘Care.’
The Defendant in the case started a competing business in related goods/services pertaining to personal and health care with the mark ‘I Care.’ The Plaintiff sued for infringement, and the Court dismissed the case summarily.
While arriving at its decision, the Court stated that the marks are dissimilar, and that there is no likelihood of confusion between the two marks. It pointed out that the word ‘care’ is publici juris, and that use of the word in a trademark will not give rise to liability.
Citation: M/S Praba’s V Care Health Clinic … vs M/S I-Care Aesthetic Clinic , Decided by Madras High Court on 29th July, 2021, available at: https://indiankanoon.org/doc/27457134/
RELIANCE INDUSTRIES LIMITED AND ANR. VS ASHOK KUMAR
In this case, Reliance Industries Limited, the Plaintiff, found a hardware fittings and bathroom accessories retailer using their well-known mark ‘JIO’ and hence filed a trademark & copyright infringement suit before the Bombay High Court. The Defendant on 11th June, 2021 had filed two applications for registration of the mark JIO and pirated artwork which were advertised, claiming use since 16th December, 2016. The court noted that the Defendant not only copied Plaintiffs’ mark, logo and artwork but also added an image of a leaping jaguar which violated Jaguar Land Rover’s intellectual property as well. The Plaintiffs filed an interim application praying for injunction against Defendant’s use of its copyright and trademark until the final disposal of the suit. The Court was of the opinion that an overwhelming prima facie case and balance of convenience lied in Plaintiffs’ favour, and irretrievable prejudice would be caused if the reliefs sought were denied. Hence, the court granted a temporary injunction and gave the Defendant the liberty to apply for a variation, modification or recall of the order after 7 days’ notice to the Plaintiffs’ Advocates. Finally, the court listed the matter hearing on further ad-interim relief on 30th September, 2021.
Citation: Reliance Industries Limited And Anr. Vs Ashok Kumar, Decided by Bombay High Court on 23rd August, 2021, available at: https://indiankanoon.org/doc/58666138/
SONY PICTURES NETWORK INDIA PVT. LTD. V/S THE STATE OF MAHARASHTRA & ANR.
In this case, an FIR was filed by Karad Urban Co-operative Bank (KUCB) for defamation by the web series ‘Scam 1992: The Harshad Mehta story,’ which aired on SonyLIV App. The FIR accused Sony Pictures Network India Pvt. Ltd. and others of offences punishable under Section 500 of IPC and Sections 102 and 107 of the Trade Marks Act, and Sections 66C and 43(b) of the Information Technology Act. In its FIR, the bank alleged that in the third episode of the web series, a logo displayed in the background resembled its trademark, causing severe damage to its financial, commercial and social reputation. Aggrieved by the FIR the accused filed two criminal writ petitions seeking a stay on investigations. The Bombay High Court heard both the matters jointly wherein the petitioners sought the stay on three grounds. Firstly, as per Section 115(4) of the Trade Marks Act, 1999, investigation couldn’t be done by an officer below the rank of Deputy Superintendent of Police, but the said FIR was being investigated by a police inspector. Secondly, alleged offence under Section 500 of IPC was non-cognizable could not be investigated by police on the basis of an FIR. Lastly, that the web series did not come within scope of Trade Marks Act, 1999 based on Prateek Chandragupt Goyal Vs. The State of Maharashtra & Anr, wherein same court held that mere use of trademark in an article does not amount to false application. Convinced by all the three grounds the Court stayed the investigations until the next date of hearing i.e., 17th September, 2019.
Citation: Sony Pictures Network India Pvt. Ltd. v/s The State of Maharashtra & Anr. Decided by Bombay High Court on 23rd August, 2021, available at: https://indiankanoon.org/doc/75179673/
Meher Distilleries Pvt. Ltd. vs. SG Worldwide Inc. and Radico Khaitan Ltd.
An appeal to Commercial court was filed by Meher Distilleries, who is a registered proprietor of the trademark THE ASWA for the class – 33 including alcoholic beverages. Respondent No.2- Radico Khaitan launched a product in the same class, a single malt whiskey, using the mark ASĀVA. The Appellant has registered a trademark under class – 33. Later Appellant filed a commercial suit for trademark infringement and filed an interim application to restrain the Respondents from using ASĀVA as a trademark. The learned Single Judge by the impugned order dismissed the interim application. Challenging the judgment and praying for a restraint order, Appellant has filed this commercial appeal under Section 13 of the Commercial Courts Act, 2015. The appellate court set aside the finding of the learned Single Judge that RAMPUR ASĀVA and not ASĀVA alone is the trademark of Defendant No.2. The court also set aside the finding that there is no visual, phonetic or structural similarity between THE ASWA and ASĀVA and the similarity/identity will have to be decided as per the settled principle that in respect of expensive consumable products, the use of house mark with the product mark will obviate the likelihood of confusion. Thus, the Appeal was allowed and the impugned order was quashed and set aside.
Citation: Meher Distilleries Pvt.Ltd vs Sg Worldwide Inc. And Anr Decided by Bombay High Court on 23 August, 2021, availabe at https://indiankanoon.org/doc/149887609/
Victoria Foods Private Limited v. Rajdhani Masala Co. & Anr.
In this case, the Plaintiff claimed to have originally conceived and adopted the trademark “Rajdhani” for food products, condiments, confectionary, etc. Through social media it found that the Defendants, engaged in the business of Indian Spices under the name of “Rajdhani Masale Co.” and “New Rajdhani Masala Co.” were using its trademark and labels on their products. Aggrieved by the same, Plaintiff filed a suit as well as an interim application seeking injunction against Defendants’ use of the impugned trademarks. On the other hand, the Defendants denied the Plaintiff’s claims, and counterclaimed to be the prior user. The Delhi High Court heard the plea for ad-interim relief on the grounds of ownership, prior use, deceptive similarity and delay in approaching the court. The Court observed that, the Plaintiff was the prior user and registered owner of the trademark and was ‘first in the market’ to use it. Moreover, while comparing the Court noted that the Defendants’ trademarks were deceptively similar to Plaintiff’s trademark, use of which would further infringe Plaintiff’s rights. Further the Court pointed that delay per se was not sufficient to disentitle the Plaintiff of interim relief. The court concluded that the Plaintiff was successful in establishing a prima facie case in its favour and hence granted the interim order restraining the Defendants from using the Plaintiff’s trademark.
Citation: Victoria Foods Private Limited vs Rajdhani Masala Co. & Anr. Decided by Delhi High Court on 1st September, 2021, available at: http://22.214.171.124/jupload/dhc/JAN/judgement/01-09-2021/JAN01092021SC1082021_105848.pdf
Tata Sons Pvt. Ltd v. Sunil Keshavji Tataria
The Plaintiff, Tata Sons Pvt. Ltd., sought a permanent injunction restraining the Defendant Sunil Keshavji Tataria from infringement of Plaintiff’s registered trade mark, passing off, dilution and tarnishment of trademarks, damages, rendition of accounts. The Defendant was engaged in the manufacture and sale of adult diapers and underpads sold online on the website www.tatariahygiene.com which infringed the Plaintiff’s registered trademark “Tata”. The subject matter of the suit was amicably resolved in terms of Settlement Agreement dated 03.08.2021 passed by the Delhi High Court Mediation and Conciliation Centre. Since the dispute inter se parties stood resolved prior to commencing of pleadings, the Court found that the Plaintiff was entitled to get a refund of entire court fees.
Citation: Tata Sons Private Limited v. Sunil Keshavji Tataria & Anr. Decided by Delhi High Court on 31 August, 2021 available at: https://indiankanoon.org/doc/53529635/
Prince Pipes And Fittings Limited vs Prince Platinum Pipes And Fittings
The Plaintiff, Prince Pipes uses the mark “PRINCE” in conjunction with a crown device as a registered trade mark in relation to its PVC pipe products. The adoption of the mark itself goes back to 1996. The Plaintiff has obtained a series of registrations from 2014 onwards of the “PRINCE” mark and logo. The goods have been described by the Plaintiff as “Piping Systems”. The PRINCE mark is prominently displayed on every unit or segment of the supplied products. The Defendant, Prince Platinum Pipes was using “PRINCE PLATINUM” to trade the goods and also created a website with domain name “www.princeplatinumplastindia.com” for trading the goods similar to Plaintiff. Deceived by the advertisement of Defendant, one of the dealers of Plaintiff sent a communication on 4th January, asking for their platinum products. The Plaintiff claims that such communication is a strong prima facie material showing that actual deception and confusion has in fact already taken place and anyone would be lured into believing that the PRINCE platinum product is in fact from the house of the Plaintiff. The court gave interim orders and restrained Defendant from using the impugned trade mark “PRINCE PLATINUM”, the impugned domain name “www.princeplatinumplastindia.com” and/or impugned business name “Prince Platinum Pipe & Fittings” and/or any other impugned mark/domain name/business name/trading style containing the word PRINCE and/or any other trade mark, domain name or business name/trading style identical with and/or deceptively similar to the Plaintiff’s well-known trade mark “PRINCE” in respect of Plaintiff’s business. The court also appointed a court receiver as the receiver of Defendants’ goods, stamps, printing materials, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, printed matter, things and such material and documents of the Defendants bearing or containing the impugned trade mark “PRINCE PLATINUM”.
Citation: Prince Pipes & Fittings Limited vs Prince Platinum Pipes & Fittings decided by Bombay High Court, on 10 March, 2021 available at: https://indiankanoon.org/doc/64355958/
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 : https://indiankanoon.org/doc/96389521/
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: https://indiankanoon.org/doc/27698270/
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: https://indiankanoon.org/doc/178127761/
Hindustan Unilever Limited v. Vansh Cosmetic and Anr
In this case, the Plaintiff was the true proprietor of the marks “LAKME”, “LAKME NINE TO FIVE, NINE TO FIVE”, “9 to 5”, “LAKME EYECONIC”, “LAKME ABSOLUTE”, “LAKME ABSOLUTE WHITE INTENSE”, “LAKME ABSOLUTE ARGAN OIL RADIANCE” and many others, which had been successful in the market since 2011. Around July 2021, it was found that the Defendants were selling the counterfeit cosmetic products/goods of “LAKME” brand the counterfeit products were a blatant imitation and obvious copy of the artistic work, trade dress or the overall colour scheme of the original, which in turn might have led to deception and confusion amidst the general public. The plaint also averred the apprehension that the Defendant’s products were of an inferior quality and could thus be a health threat to the users. Thereby it was submitted that the Defendant was infringing the registered trademarks and copyrights actually owned by the Plaintiff.
The Court agreed found a clear case of prima facie infringement of the trademarks and copyrights owned by the Plaintiff, and found that the evident and deceptive similarity between the two could not be a mere coincidence. Thus, the court granted an ex-parte ad interim order restraining the Defendant from manufacturing/ packaging/ printing/ selling/ distributing any counterfeit products/goods bearing marks deceptively similar to the Plaintiff’s registered marks. The Court also appointed a Court Receiver as receiver of the Defendants’ counterfeit goods bearing the impugned marks or the pirated artistic works. As per the said order the Court commissioner was vested with the powers to execute this said order was held to be in operation till 17th September 2021.
Citation: Hindustan Unilever Limited vs Vansh Cosmatic and Anr, Decided by Bombay High Court on 27 July, 2021, available at : https://indiankanoon.org/doc/115803403/
Global Car Group Pte Ltd & Anr Vs Mr Krishi Ramesh Khandelwal & Ors.
The Plaintiff, Global Car Group PTE Ltd. & Anr., filed an application under Order 39 Rule 1 and 2 of the Civil Procedure Code 1908 seeking a prima facie ex-parte injunction to restrain the Defendant, Mr. Krishna Ramesh Khandelwal & Ors., from using or offering for sale, advertising, or dealing in goods infringing the trademarks of the Plaintiffs specifically, “Bikes24x7” or any other identical or deceptively similar ’24 Formative Marks’. The Plaintiff had been using the trademarks since 2015 and the concept combining the words ‘Cars’, ‘Funding’, ‘Auction’ and ‘Unnati’ along with the number ’24’ was an essential feature of all the trademarks of the Plaintiff. The Plaintiff while conducting a search for the word ‘Bikes24’ came across the Defendant’s mark, which was infringing the Plaintiff’s trademarks in connection with its second-hand/refurbished motorcycles business. The Defendant was also operating the website www.bikes24x7.com and had filed a trade mark application for the mark in class 35 which was pending before the Registrar of Trademarks. The Plaintiff had previously issued a cease-and-desist notice to the Defendant. The court stated that it was clear that the Defendant was prima facie trying to adopt a mark which was deceptively similar to the Plaintiff’s trademark, and thus restrained the Defendant from selling, offering for sale, advertising, or dealing in goods or services bearing the infringing marks, or any other trade mark which was identical to the Plaintiff’s trademarks until further orders were given by the court. The Defendant was also directed to suspend the use of domain name https://bikes24x7.com/ within three weeks from the date of the receipt of the order.
Citation: Global Car Group Pte Ltd & Anr vs Mr Krishi Ramesh Khandelwal & Ors, Decided by the Delhi High Court on 21st September, 2021, available at: https://indiankanoon.org/doc/9080762/
P.Kanthilal vs Shetan Singh
Kanthilal, the Plaintiff, filed a suit seeking a permanent injunction and damages against Shetan Singh, the Defendant, for infringement and passing off of the Plaintiff’s trademark. Plaintiff claimed to own the trademark “PREETHI” and acquired distinctiveness as a result of continuous and extensive use and promotion since 1998. The Plaintiff became aware that the Defendant was infringing and passing off the Plaintiff’s trademark by using the identical mark PREETHI/RREETHI for identical goods as those manufactured and marketed by the Plaintiff and thereby diverting customers looking for the Plaintiff’s products. The Defendant claimed that the registration of the Plaintiff’s mark was currently the subject matter of rectification proceedings before Registrar of Trademarks, Chennai under rectification filed by M/s.Maya Appliances Limited on 10.4.2006 and was pending for adjudication and hence there could be no infringement suit against the Defendant. The court held the Defendant liable for infringement, permanently restrained the Defendant from infringing and passing off the Plaintiff’s registered trademark PREETHI by using the identical and deceptively similar trademark PREETHI/RREETHI or any other identical or deceptively, confusingly similar trademark in relation to the goods manufactured and traded by the Plaintiff.
Citation: P.Kanthilal vs Shetan Singh on 30 August, 2021, decided by Addl. City Civil Judge Bangalore City, available at P.Kanthilal vs Shetan Singh on 30 August, 2021, Available at https://indiankanoon.org/doc/130347445/
Geetanjali Studio Private V. Nuxi To Kut N Kurl Private Limited
In this case, Geetanjali Studio Private, the Plaintiff filed an application under Order 39 Rule 1 and 2 of the Civil Procedure Code 1908 seeking prima facie ex-parte injunction to restrain Nuxi To Kut N Kurl Private Limited, the Defendant, from offering for sale of any services or goods under the marks GEETANJALI, GEETANJALI SALON, GEETANJALI STUDIO or any other identical or deceptively similar marks. The Plaintiff entered into a new franchise agreement with the Defendant, whereby the Plaintiff licensed the Defendant to use its trade mark on a non- exclusive basis for a certain payment. The Defendant failed to pay the franchise fee even after several reminders, thus, on 30.03.2021, the Plaintiffs sent an email to the Defendant demanding a total sum of Rs.3,83,210/- as an outstanding fee as a last measure. On failure of the Defendant to pay the fee within the given time, the Plaintiff terminated the franchise agreement by issuing a notice of termination on 06.04.2021. In June 2021, after the lockdown was lifted, it was found that the Defendant was using the Plaintiff’s trademark and running ‘Geetanjali Studio’ despite the termination notice, and a legal notice was sent to the Defendants on 28.06.2021. However, the Defendant continued to use the said trademark. The court found that the continued use of the trademark in question by the Defendant to be violating the Plaintiff’s rights, and restrained the Defendant from using the impugned trademark or any other or identical or deceptively similar mark to the Plaintiff’s trademark ‘GEETANALI’. The Defendant was ordered to comply within five days from the date of the order.
Citation: Geetanjali Studio Private vs Nuxi To Kut N Kurl Private Limited, Decided by the Delhi High Court on 21stSeptember, 2021, available at: https://indiankanoon.org/doc/18307181/
Brandzstorm India Marketing Pvt. v. L N Agency
In this case, the Plaintiff was the registered proprietor of the brand name “LUXXUBERANCE” and also a dealer of many internationally acclaimed and well-known brands for lifestyle products such as handbags and watches. The Plaintiff chose the Defendant to operate the franchise which was to be opened at Jamshedpur for the purpose of selling goods under the Plaintiff on a sale-or-return basis. Thereby a Letter of Intent (LoI) was executed between the parties and the Defendant agreed to make a security deposit of Rs 7.5 lakhs and the Plaintiff delivered stocks worth around Rs. 42 Lakhs to the Defendant. The Defendant was unable to generate service and the commission-related obligations in accordance with the LoI and sent an email to the Plaintiff intimating his decision to shut down the store by 1st May 2021. The Defendant claimed Rs. 52 lakhs from the Plaintiff citing the amount it had spent for the signage and setting up of the outlet in spite of the fact that the LoI clearly indicated that those expenses were to be taken from the Defendant’s account. The Plaintiff also submitted that the Defendant had not generated any income from the said franchisee set up. Though the Plaintiff stated that the LoI signed as a part of Franchise had come to an end, the Defendant still continued to use the Plaintiff’s registered trademark in order to sell many products. Thus, having made out a prima facie case and found the balance of convenience in favour of the Plaintiff, the court issued temporary injunction restraining the Defendant from dealing/ advertising/ marketing/ selling any goods with the Plaintiff’s registered marks or the other well-known trademarks owned by the Plaintiff. The court further ordered ad interim relief such that if any material/items were found at the Defendant’s outlet, the same would be seized by the Court Receiver and handed over to the Plaintiff and. The Court appointed an Additional Special Receiver, empowered and vested with the powers to take police assistance for successful execution of the commission. The order was held to be in operation till 20th October 2021 or until receipt of further order from the Court.
Citation : Brandzstorm India Marketing Pvt. … vs L N Agency, Decided by Bombay High Court on 21 September, 2021, available at : https://indiankanoon.org/doc/160060846/
Saint-Gobain India Private Ltd. vs Geeta Kaler & Ors.
In this case, the Plaintiffs 1 to 4 an English, French, UK and Indian Company respectively were part of the SAINT-GOBAIN group of corporate entities which mainly dealt with the manufacture and sale of a variety of insulation systems, glass, building materials, water supply systems and so on across many international jurisdictions. The SAINT-GOBAIN group established its presence in the Indian market since 1996. In India, the mark “GYPROC” was registered in the name of the Plaintiff-1 and the marks “SAINT-GOBAIN” and the label “SAINT-GOBAIN” were registered in the name of Plaintiff-2. They also owned a few other marks such as “GLASROC”, “GYPROC HABITO” and so on. Around May 2014, the Defendant-1 filed an application for the mark “GYPROCK” and the Registry in its objection cited Plaintiff-1’s mark “GYPROC” as the conflicting mark. The Defendant-1 claimed dissimilarity and did not respond to Cease and Desist notice issued by the Plaintiffs. The Plaintiffs filed an Opposition Notice and eventually the application was deemed to be abandoned. In 2017, another application for mark “SAND GOVIND GYPROCK” was filed by the Defendants 1 & 2, operating under the banner of the Defendant-3. The Plaintiffs initiated the opposition proceedings and this application too was abandoned. In 2020, the Plaintiffs discovered that the Defendants tried to trade under the marks “GYPROCK” and “SAND GOVIND GYPROCK” again. Hence, they filed this suit and the Court found sufficient prima facie case on the grounds that the Defendants’ mark was indistinguishable from that of the Plaintiffs’ and was a blatant imitation to take undue advantage of the phonetic, aural, structural and visual similarity between the said marks and to in turn trade upon Plaintiffs’ hard-earned goodwill and reputation. The Court granted an injunction restraining the Defendants from using the marks “GYPROCK”, “SAND GOVIND GYPROCK” or “SAND GOVIND GYPSUM CO” or the packaging/trade dress that might be similar or in any way identical to the registered marks “GYPROC”, “SAINT-GOBAIN” owned by the Plaintiffs. The order was held to be in operation till 26th October 2021 or until receipt of further order from the Court.
Citation: Saint-Gobain India Private … vs Geeta Kaler & Ors, Decided by Bombay High Court on 27 September, 2021, available at : https://indiankanoon.org/doc/173802317/
Avtar Singh & Ors. v. Sakshi Srivastava & Anr.
There were four Plaintiffs in this case, i.e., Mr. Avtar Singh, Mr. Harkirat Singh, Aero Traders Private Ltd. and Aero Associates Pvt. Ltd., who co-owned M/s Aero Club. They filed an application for the trademark “WOODS” in the club’s name firstly in 1994 and 1996 under Class 25 and in 2017 under Class 3. The Plaintiffs together subsequently registered trademarks “WOODLAND”, “WOODLAND” (stylised) and other “WOODLAND” marks on varying dates in compliance with Section 28 and 31 of the Trademarks Act, 1999. They had pending registration for trademarks “WOODS” (word) and “WOODS” (stylised) under Class 18. The two Defendants in this case jointly owned M/s Siddhi Vinayak Clothes and Concepts. Defendant 1 also registered trademarks with the same names as the Plaintiffs’, as well as “WOODLEY” under Class 18 and 35. On October 4th, 2021, the Plaintiffs filed an opposition under Classes 18, 25 and 35 on the grounds that the Defendants have dishonestly adopted the Plaintiffs’ impugned mark “WOODLEY”. The Plaintiffs argued that the Defendants’ mark “WOODLEY” was deceptively, visually and phonetically similar to the Plaintiff’s marks “WOODLAND” and “WOODS”. The style and font of “W” on the Defendants’ device or label “WOODLEY” was also virtually identical, along with the identical colour scheme of blue background with white font colour. The Defendants contended that there was unreasonable delay on the part of the Plaintiffs in the filing of the suit and that that the word “wood” cannot have any exclusivity over it as it is non-distinctive and generic. The Defendants’ mark “WOODLEY” is also phonetically pronounced “wad-lee”, which is different from the Plaintiff’s marks and the logos as a whole has many differences in styling, colour schemes and font size. The Defendants also claimed that they were under litigation for the issue of similarity before the specialized authority i.e. the Trademark Registry for the last 3 years, so this case filed by Plaintiff was to hasten those proceedings. The Delhi High Court observed, in favour of the Plaintiffs, that a mark should not always be looked at in totality because some elements of mark could be deceptively similar. The Court also observed that the similarity test is to be applied differently for different economic classes, which was an argument in the favour of the Defendants, as their targeted buyers were not on the affluent side unlike the Plaintiffs’. The Court also observed that the Defendants submitted that they would only use their trademarks under class 25 and class 35 and not use blue colour. The Court ruled in favour of the Plaintiffs and allowed the interim order mainly because the Plaintiffs had a prima facie case against the Defendant.
Citation: Avtar Singh & Ors. v. Sakshi Srivastava & Anr., Decided by The Supreme Court on 4th October, 2021, available at: https://indiankanoon.org/doc/45312155/
Jumeirah Beach Resort Llc vs Designarch Consultants Pvt Ltd.
In this case, Jumeirah, the hotel and trademark owner of “Burj Al Arab,” filed a case against a real estate/construction company, which was using the marks Burj Noida, Burj Bangalore, Burj Mumbai and so on. Jumeirah asked for an interim injunction during the pendency of the suit. The Defendant also had registrations over its marks, and argued that Jumeirah does not hold any rights over the word ‘Burj,’ which means tower. After reviewing the facts and arguments, the Delhi High Court allowed the Defendant to use Burj Noida for its ongoing project, but restrained the Defendant from using Burj Bangalore, Burj Mumbai and so on. While arriving at its conclusion, the Court stated that Burj is the essential part of Jumeirah trademark, and that well knownness of the mark has to be established on trial.
Citation: Jumeirah Beach Resort Llc vs Designarch Consultants Pvt Ltd., Decided by Delhi High Court on 9 November, 2021, available at: https://indiankanoon.org/doc/88013685/
Bacardi And Company Limited vs Bahety Overseas Private Limited & others
Bacardi filed a trademark infringement and passing off case against Bahety with respect to its products sold under the registered trademark, BREEZER, and its trade dress. The suit was filed against Bahety’s use of the marks, Freeze and FreezeMix’ for non-alcoholic drinks, which were being sold in bottles having design similarities. After looking at the usage of the marks and bottle designs, the Court came to the conclusion that Bahety was using the trademark, FreezeMix, by writing it in a manner similar to Bacardi’s Breezer. According to the Court, the emphasis was on the word ‘Freeze,’ which was being used in a prominent manner along with bottles bearing similar designs. It stated that the bottle of Bahety included a similar champagne base, ridges and bottle top. Though Bacardi was selling alcoholic drinks and Bahety, non-alcoholic drinks, the Court came to the conclusion that there was infringement as there was consumer association between the products. The Court went on to grant an interim injunction in favour of Bacardi restraining Bahety from using the trademark FreezeMix and related trade dress.
Case citation: Bacardi And Company Limited vs Bahety Overseas Private Limited & Others, Decided by Delhi High Court on 12 November, 2021, available at: https://indiankanoon.org/doc/48139811/
Pidilite Industries Limited v. Platinum Waltech Limited
The Plaintiff filed this suit against the Defendant seeking relief in trade mark, copyright and designs combined with causes of action in passing off in each. The Plaintiff was a well-known manufacturer of products relating to the construction and paint industry and had a worldwide presence since 1969. The Plaintiff had several trademarks related to its products which included the DR FIXIT mark with a distinctive device of a man wearing a yellow construction helmet and product identification marks including LW+, LW, URP, PIDIPROOF. Plaintiff claimed Copyright protection in the labels as well, being original artistic works. The Plaintiff claimed goodwill and reputation acquired by usage of its IP over an extended period of time continuously and uninterruptedly. The Plaintiff also claimed distinctiveness in the configuration of the can or container used by them for its products.
The Plaintiff came across a construction chemical product manufactured by the Defendant, which had some striking similarities with the Plaintiff’s product. The container was almost indistinguishable from that of the Plaintiff, which also used the mark LWC. The colour scheme was also broadly the same as that of the Plaintiff’s products and there was a feature of a man in tie and jacket wearing a yellow construction helmet. The defence presented by the Defendant was that the mark LWC used by the Defendants was purely descriptive and stood for ‘liquid waterproof / waterproofing compound’.
The Court stated that entire set of actions of the Defendant must be seen as one. The Court applied the test of average intelligence and imperfect recollection. The court stated that the container used by the Defendant was a dead giveaway. If the Defendant was bona fide in its adoption, there was no reason for it to adopt a container of this design that was so strikingly similar to the Plaintiff’s. With respect to the Defendant’s claim that its use of the LWS mark was descriptive, the court stated that the Defendant was not the expression ‘’liquid waterproof compound’’, but was using the abbreviation LWC, which was similar to marks LW and LW+ that were registered by the Plaintiff. Further, the man portrayed by the Defendant was also similar to the DR FIXIT device of the Plaintiff.
The court issued an injunction against the Defendant, and also ordered the Defendant to pay costs in the amount of Rs. 2.5 lakhs to the Plaintiff within two weeks from the date of the order.
Citation: Pidilite Industries Limited vs Platinum Waltech Limited, Decided by High Court of Bombay on 24 August, 2021, available at: https://indiankanoon.org/doc/55280317/
N. Ranga Rao & Sons Private Ltd. v. Sree Annapoorna Agro Foods
The Plaintiff, engaged in the business since 1948, was a leading manufacturer and supplier of incense sticks and other allied products. It held several trademarks, of which the mark ‘CYCLE’ was in dispute in this case. The Defendant herein adopted the mark ‘CYCLE’ concerning edible oil. Plaintiff claimed that the mark was immensely popular and owing to its wide turnover and extensive sales and promotional activities, the trademark CYCLE was a well-known mark. The Plaintiff filed the suit under Sections 27, 28, 29, 134 and 135 of Trade Marks Act, 1999 and claimed that Defendant intended to take undue advantage of its reputation and goodwill. It was further claimed that such use caused unwarranted confusion among the public and amounted to clear infringement of Plaintiff’s registered trademark.
The Court stated that the burden was on the Plaintiff to prove (i) its reputation in India; (ii) that the Defendant was using the mark without due cause; (iii) that by using the mark without cause the Defendant took unfair advantage, or it was detrimental to the distinctive character or reputation of the Plaintiff’s registered trademark.
The Court found that the Plaintiff proved only reputation regarding goods related to incense sticks and failed to prove that the Defendant was using the mark without due cause or taking unfair advantage. Further, no evidence was led by Plaintiff to show that the use of the mark by the Defendant was detrimental to or caused dilution to the Plaintiff’s reputation. The Court noted that though the mark CYCLE was a common household item and a generic word the distinctiveness acquired by the Plaintiff was restricted to the goods for which it had registration, and it could not obtain a monopoly over the word or claim exclusive right across other classes of goods. In view of the findings the Court dismissed the suit.
Citation: N. Ranga Rao & Sons Private Ltd vs Sree Annapoorna Agro Foods, Decided by Madras High Court on 18 November, 2016, available at: https://indiankanoon.org/doc/25237434/
Aqua Pump Industries & Anr. v. Tapesh Kumar
Plaintiffs No. 1 and 2, Aqua Pump Industries and Aqua Sub Engineering respectively, manufactured different types of electric motors and pumps under their registered trademark “TEXMO”. They also jointly owned the trademark in respect of goods such as centrifugal pumps, domestic pumps and sugar cane machines categorised under Class 7 of the Schedule of the Trademark Rules. They registered “TEXMO” as a mark and device mark, with the expression “TEXMO” impressed on an inverted triangle. Plaintiff No. 1 commenced its business in April 1974 under the trademark “TEXMO”, while Plaintiff No. 2 started its business in November 1982 under the same mark. They entered into an agreement together to officially register as proprietors of the trademark “TEXMO” in April 1998. In Trade Mark Journal No. 1915 published in August 2019, the Plaintiffs discovered that the Defendant applied for registration of a mark with the same name for industrial and domestic sewing machines, under Class 7. The Plaintiffs claimed that the Defendant knowingly exploited the commercial goodwill gained all over the Indian market attached to the Plaintiffs’ trade mark “TEXMO”. They contended that the Defendant not only adopted an identical mark, but did so for goods in the same class, thus making it cognate to the Plaintiffs’ goods. Even though the nature of goods was different, the public may confuse the Defendants’ goods with theirs, diluting their mark’s reputation. The Defendants would unfairly gain from Plaintiff’s business with annual turnover of 1,200 crore rupees. The Madras High Court observed that the Defendant could have easily found that the mark was existing, if it had conducted a bona fide search for the invented word “TEXMO”, being used by the Plaintiffs since 1976. Thus, the Court granted permanent injunction in the Plaintiffs’ favour restraining the Defendant from using their mark.
Citation: Aqua Pump Industries & Anr. v. Tapesh Kumar, Decided by The Madras High Court on 31st August, 2021, available at https://indiankanoon.org/doc/156980139/
Walmart Apollo Llc vs Aayush Jain & Anr
In this case, the Plaintiff owns a registered trademark for WALMART / WAL-MART. The Defendant applied for WMART and allegedly used since April, 2019. The Plaintiff filed an infringement suit against the Defendant, who was using ‘WMart’ and www.wmartretail.com. The Plaintiff prayed for an injunction during the pendency of the suit, which the Court granted until the next date of hearing.
Citation: Walmart Apollo Llc vs Aayush Jain & Anr, Decided by Delhi High Court on 12 November, 2021, available at: https://indiankanoon.org/doc/121804661/
Khandelwal Edible Oils Limited vs Landsmill Agro Private Limited
In this case, the Plaintiff registered a trademark on the word “Chakra” for edible oils. The Defendant in the case was using the marks “CHAKRA KOLHU”, “CHAKRIKA” and “CHAKRESH” for its oil products. The Court in the case granted an interim injunction in favour of the Plaintiff with respect to the Defendant’s use of “CHAKRA KOLHU”, but allowed the Defendant to file a reply before making a decision on “CHAKRIKA” and “CHAKRESH.” Though the Defendant argued that the word “Chakra” is commonly used in the industry, the Court opined that the Defendant’s use of the mark with yellow lettering with black background like the Plaintiff warrants an interim injunction.
Citation: Khandelwal Edible Oils Limited vs Landsmill Agro Private Limited, Decided by Delhi High Court on 12 November, 2021, available at: https://indiankanoon.org/doc/66419635/
Y.V. Seshachalam and Co. v. Sri Om Sai Traders
The Plaintiff, engaged in trading pooja products, sought a permanent injunction against the Defendant for infringing its registered trademark despite having issued a Cease-and-Desist notice. The Plaintiff alleged that the Defendant’s trademark ‘GOKULAM’ was phonetically similar to ‘GOPURAM’, and claimed that the Defendant adopted the Plaintiff’s colour scheme with the intent to pass off its goods as that of the Plaintiff’s. The High Court of Madras acknowledged the similarity of trademarks and opined that the Defendant had deliberately adopted a similar colour scheme to mislead an average consumer into thinking that the product belonged to the Plaintiff. The Court verified the Plaintiff’s stronghold in the market by perusing various trade-related certificates that were submitted. The relief sought by the Plaintiff restraining the Defendants from further infringement of trademark was granted, and the Court imposed exemplary costs of Rs. 50,000 for the act of infringement. However, due to lack of evidence that proved unjust enrichment of trademark, the Court denied a relief that directed the Defendant to surrender the accounts of profits earned during the period of infringement.
Citation: Y.V. Seshachalam and Co. v. Sri Om Sai Traders on 9th September, 2021, available at Y.V. Seshachalam and Co. v. Sri Om Sai Traders https://indiankanoon.org/doc/71243154/
Agatha Christie Limited vs Registrar Of Trade Marks.
In this case, Agatha Christie Limited filed a trademark application for the mark, “And Then There Were None.” The Registrar rejected the application, and the Agatha Christie Limited appealed. The Delhi High Court came to the conclusion that there was no ground based on which the mark could have been rejected under the Trademarks Act, 1999, as the mark was not descriptive and because no similar marks were existing on the Register. It also pointed out that the mark was distinctive, and asked the Registrar to register the mark.
Citation: Agatha Christie Limited vs Registrar Of Trade Marks, Decided by Delhi High Court on 8 December, 2021, available at: https://indiankanoon.org/doc/183502564/
Sun Pharma Laboratories Limited vs D.D.Pharmaceuticals Private Limited.
In this case, Sun Pharma filed three trademark infringement suits against DD Pharma with respect to adoption of similar trademarks. One of the trademarks of the Plaintiff was BUPRON, and the Defendant was using BUPRO.
DD Pharma primarily argued that its trademarks are not infringing because the trademarks were adopted by both parties from the names of active ingredients. With respect to BUPRON, the active ingredient was Bupropion Hydrochloride. It also argued that the marks are prescription drugs, which can be differentiated by doctors and pharmacists.
The Court disagreed with DD Pharma, and held that the likelihood of confusion required a lower standard of proof with respect to pharmaceutical products as confusion in drug marks is likely to cause harm to the general public. It also pointed out that patients are likely to be easily confused if the names are similar. Though the marks of both Sun and DD Pharma were adopted from the names of active ingredients, the Court stated that there is likelihood of confusion and granted a permanent injunction in favour of Sun Pharma prohibiting DD Pharma from using the marks in question.
Citation: Sun Pharma Laboratories Limited vs D.D.Pharmaceuticals Private Limited., available at: https://indiankanoon.org/doc/40229201/
Exxon Mobil Corporation vs Mobilfuels Private Limited & Anr
In this case, Exxon Mobil filed a trademark infringement suit against MOBILFUELS for use of its registered trademark, MOBIL, as part of the name of its mobile app on Google Play Store. The Defendant in the case was using MOBILFUELS as the name of its app. The Court passed an ex-parte injunction restraining the Defendant from using the mark, MOBILFUELS, until the date of next hearing.
Citation: Exxon Mobil Corporation vs Mobilfuels Private Limited & Anr, Decided by Delhi High Court on 29 November, 2021, available at: https://indiankanoon.org/doc/130852639/
This post is brought to you by BananaIP’s Consulting & Strategy Department.
About BananaIP’s Consulting & Strategy Department
BananaIP’s Consulting & Strategy Department has the experience of helping companies use IP for business and competitive advantage. Companies regularly seek their assistance, advise and opinions on identifying/mining inventions and creations, conducting IP audits, protecting IP assets appropriately, launching risk free products, managing litigation for business benefit, resolving disputes out of Court, making money out of IP, enforcing IP, and licensing transactions. If you have any questions, or need any clarifications, please write to [email protected].
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 [email protected] for corrections and take down.