Summary of Indian Trademark Cases of 2019

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This post provides a summary of Indian Trademark Cases of 2019

HSIL Limited v. Gujrat Ceramic Industries & Anr. [I.A. 5185/2018]

Decided On: 08.01.2019

Court: Delhi High Court

 Hindustan Sanitaryware & Industries Limited (HSIL) filed for a permanent injunction in the Delhi High Court to restrain Gujarat Ceramic Industries (GCI) from using the trademarks ‘Hindustan Vitreous’ or ‘H Vitreous’ which are identical/deceptively similar to HSIL’s registered trademarks. HSIL, India’s largest manufacturer of sanitaryware products, having a presence in over 50 cities is the registered trademark holder of ‘H Vitreous Hindware’ since 1990. During a market search, HSIL discovered that GCI is selling sanitaryware products under the brand ‘H Vitreous’ in conjugation with Hindustan, which was the former corporate name of HSIL. The Delhi High Court opined that HSIL has proved and established a case of infringement of registered trademarks, misrepresentation and unfair competition, passing off and dilution, blurring and tarnishment. The Court, therefore, passed a decree in favor of HSIL granting a permanent injunction restraining the other party from using the ‘Hindustan Vitreous’ or ‘H Vitreous’ trademarks.

Available at: https://indiankanoon.org/doc/174655386/

The Ritz Hotel Limited v. Canada Fly Consultancy & Ors. [TM No. 116/18]

Decided On: 03.01.2019

Court: South East District, Saket Court, New Delhi

The Hotel Ritz Paris, one of the most popular Parisian hotels, filed for a permanent injunction to restrain Canada Fly Consultancy from infringing its registered trademark RITZ. Canada Fly Consultancy based out of Mumbai was claiming to be a government registered firm and providing employment consultancy and placement services in the hotel industry overseas by using the domain name www.ritzparis007.com and the email address hr@ritzparis007.com. The Hotel Ritz Paris started receiving several complaints from the public regarding job openings as Canada Fly Consultancy was using the above-stated domain name and email address on offer letters to individuals along with the Ritz Paris’ company seal. The Court noted that the said illegal activities of Canada Fly Consultancy are solely motivated to dupe aspiring candidates in the name of providing overseas employment in the hotel industry by using the Hotel Ritz Paris trademark and domain name/email with a malafide intent to gain mileage from the goodwill and reputation of the hotel’s registered trademark. The Court, therefore, passed a decree in favor of Hotel Ritz Paris and ordered the Canada Fly Consultancy to pay Rs. 1 lakh as compensatory damages.

Available at: https://indiankanoon.org/doc/53010320/

3rd Eye Event & Advertising vs. Ahmedabad Municipal Corporation

An advertising firm, 3rd Eye Event & Advertising, had filed a case last week in the Ahmedabad commercial court alleging trademark infringement by Ahmedabad municipal authorities for using the name ‘Ahmedabad Shopping Festival 2019’ without prior permission from the advertising firm. The firm had been using the registered trademark ‘Ahmedabad Shopping Festival’ since 2015. The trademark row was amicably resolved as the Gujarat State Government submitted before the commercial court that it was not aware that the trademark ‘Ahmedabad Shopping Festival’ existed and was registered by 3rd Eye Event & Advertising. Based on the submission, the advertising firm decided to withdraw its Rs. 10 crore suit.

Whatman International Limited v. P Mehta & Ors. [CS (COMM) 351/2016 & I.A. 5235/2018]

Decided On: 01.02.2019

Court: Delhi High Court

The Delhi High Court has awarded damages of 3.85 Crores to WHATMAN International Limited, a UK based company, in a suit for trademark infringement. WHATMAN is a well-known GE Healthcare Life Sciences brand specializing in laboratory filtration products. WHATMAN had claimed in the suit that P. Mehta and others belonging to the same family, are selling filter paper of an identical colour combination to theirs, under various brands and thus harming their reputation. The Court in its judgment said that the infringing parties were not only selling lookalike filter paper but were also selling counterfeit WHATMAN filter papers, making customers believe that the filter papers were genuine WHATMAN products. The infringing parties have been selling the products continuously, even after a temporary injunction order was passed by the Court in May 2014. Therefore, the Court held P. Mehta and others guilty of trademark infringement and passing off, and directed them to pay damages of INR 3.85 crores to WHATMAN within three months from the date of order.

Available at: https://indiankanoon.org/doc/131756857/

Hindustan Unilever Limited v. Utkarsh Somani & Anr. [GA No. 297 of 2019 with CS No. 21 of 2019]

Decided On: 01.02.2019

Court: Calcutta High Court

Hindustan Unilever (HUL) filed a suit before the Calcutta High Court requesting for a permanent injunction to restrain Utkarsh Somani from using the trademarks “LIKEBOY” and “LOVEBOY” for selling and distributing soaps which are deceptively similar to HUL’s registered trademark LIFEBUOY and also for bearing a similar trade design, color scheme and packaging labels as that of LIFEBUOY’s. The Court upon reviewing the evidence and the submissions was, prima facie, satisfied that the products sold by Utkarsh are infringing HUL’s registered trademark and trade dress. The Court, therefore, passed an interim injunction in favour of HUL restraining Utkarsh from using the infringing trademarks. The Court further, has appointed a Special Officer to visit Utkarsh’s godown and outlet and to seize the infringing goods.

Available at: https://indiankanoon.org/doc/118170946/

Flipkart Internet Private Limited v. www.flipkartwinners.com & Ors. Delhi [I.As.14229/2018 and 14232/2018]

Decided On: 26.02.2019

Court: Delhi High Court

Flipkart, the e-commerce major, filed for a suit before the Delhi High Court requesting for a permanent injunction to restrain www.flipkartwinners.com’s proprietors from using the trademark ‘Flipkart’ or any other deceptively similar name which is identical to Flipkart’s registered trademark in respect to domain names, lucky draw contest or in any other manner which will amount to a trademark infringement.. In September 2018, Flipkart came across the domain www.flipkartwinners.com conducting fake lucky draw contests through the impugned website. The e-commerce player stated that such infringing websites are being used to give a false representation to the public that such websites originate from and/or are associated with Flipkart. It was also submitted that the websites are anonymous and the information provided in the public domain regarding the owner of the website is incomplete and incorrect and therefore it is practically impossible to bring the owners of the website before the Court.

In view of the above, the Court opined that owners of the websites have no real prospect in defending the claim, as they have neither appeared before the Court nor filed their written statement. Therefore, the Court passed a decree in favor of Flipkart permanently restraining the Defendants from using the mark ‘Flipkart’.

Available at: https://indiankanoon.org/doc/82029942/

M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr. [I.As. 5616/2018, 14586/2018]

Decided On: 31.01.2019

Court: Delhi High Court

Allied Blenders and Distillers, one of the leading players in the Indian liquor industry filed an application before the Delhi High Court requesting for a permanent injunction to restrain Govind Yadav from using the term ‘Fauji’ for being conceptually and deceptively similar to its own brand, ‘Officer’s Choice’ which was adopted in 1988. The contentions by Allied Blenders is that the term ‘Fauji’ was a commonly used Hindi phrase for ‘Military Officer’ and moreover, the color combination and the product label is deceptively similar to the packaging and product label of ‘Officer’s Choice’.  Allied Blenders further argued that since both the parties are in th