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Summary of Indian Trademark Cases of 2019

BananaIP Counsels > Intellectual Property  > Summary of Indian Trademark Cases of 2019

Summary of Indian Trademark Cases of 2019

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 [email protected] 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 the business of manufacturing/selling whisky, the probability of confusion among consumers was high.

The Court upon reviewing the submissions and the arguments observed that not only were the two marks phonetically different but the literal meaning of the two words were also different. The word “Officer” identifies “a person in power” and on the other hand, “Fauji” means a soldier who is not a military officer. Further, there was no resemblance in the product labels.  The Court, therefore held that there was no resemblance or similarity between the marks and their labels and dismissed the infringement suit

Available at: https://indiankanoon.org/doc/72541709/

Samsung Electronics Co. Ltd & Anr v. Lakhan A & Ors. CS (COMM) 255/2018]

Decided On: 28.02.2019

Court: Delhi High Court

Samsung Electronics Company filed a suit before the Delhi High Court requesting for a permanent injunction to restrain Lakhan & Others (Defendants) from using identical SAMSUNG trademarks in respect of mobile phones, accessories and such allied goods. In 2015, the Court passed an ex-parte ad interim injunction in favour of Samsung and appointed Local Commissioners to visit the premises of the Defendants. Upon conducting the raids, large quantities of infringing goods were recovered from the said premises. The Court upon reviewing the seized goods and submissions made by Samsung noted that the Defendants had no real prospect of defending the claims and had failed to appear before the court. Therefore, the Court issued a decree in favour of Samsung and issued a permanent injunction against the Defendants.

Available at: https://indiankanoon.org/doc/170960026/

Hotel Panchavati & Anr. v. The Panchavati Hotel [Commercial IP Suit (L) No.187 of 2019]

Decided On: 15.02.2019

Court: Bombay High Court

Hotel Panchavati, part of the Panchavati Group, a well-known hospitality service provider filed a request for a trademark injunction to restrain the Panchvati Hotel from infringing and passing off on the former’s registered trademark “Panchavati” in respect of hotel and food services. In the first week of 2019, Hotel Panchavati came across the existence of the domain name www.hotel-panchvati-pachmarhi-mptdc.hotelsgds.com running identical services under the deceptive trademark ‘Panchvati’. The Bombay High Court observed that Hotel Panchavati had obtained wide and enviable reputation and goodwill due to its open and continuous use of the mark since early 80’s.  In its further observation, the Court stated that it would cause public confusion considering the close similarity in the trademarks and the nature of business, and therefore, an ex-parte interim injunction was passed against the Panchvati Hotel from using the descriptively similar name.

Available at: https://indiankanoon.org/doc/22009770/

MakemyTrip (India) Private Limited v. Pravasi Guide Private Limited & Ors. [I.A.No.200/2019]

Decided On: 19.03.2019

Court: Delhi High Court

The online travel company, MakeMyTrip, filed a suit before the Delhi High Court requesting for a permanent trademark injunction to restrain Pravasi Guide from using the deceptively similar mark ‘MakeMyPravaas’ and the domain www.makemypravaas.com with respect to online travel. MakeMyTrip in the suit claimed that it had started using the brand name in 2000 and is the registered holder of the trademarks and the domain www.makemytrip.com. The  Court upon hearing the submissions of the partiesopined that Pravasi Guide has no real prospect in defending the claim and there is a clear case of infringement of MakeMyTrip’s reputation and goodwill. The Court therefore passed an ex-parte permanent injunction in favour of MakeMyTrip restraining Pravasi Guide from using the deceptively similar mark and the domain.

Available at: https://indiankanoon.org/doc/31047492/

Time Inc vs. Anand Nadar & Anr [I.A.No.443/2019]

Decided On: 29.03.2019

Court: Delhi High Court

Time Inc., an American global mass media major, filed a suit before the Delhi High Court requesting for a permanent injunction to restrain Anand Nader and another (Defendants) from using the mark ‘FORTUNE ASIA 2018 & CIO AWARDS’ for an upcoming conference and the domain www.fortuneasiaevent.com, which are descriptively similar to Time’s registered trademarks ‘FORTUNE ASIA’ and ‘FORTUNE’. Time Inc is said to have started using the trademark ‘FORTUNE’ in the 1930s in the US and has obtained registration in India in 1978. Upon reviewing the evidence and hearing both the parties, Court observed that the Defendants had no real prospect to defend the claim as there is a clear case of trademark infringement. The Court, therefore, passed a permanent injunction in favour of Time Inc restraining the Defendants from using the mark ‘FORTUNE ASIA 2018 & CIO AWARDS’ and the domain www.fortuneasiaevent.com.

Available at: https://indiankanoon.org/doc/136851366/

Hindustan Unilever Limited v. Ankit [GA No.946 of 2019 with CS No.78 of 2019]

Decided On: 04.04.2019

Court: Calcutta High Court

Hindustan Unilever (HUL) filed an interlocutory petition against an individual named Ankit from manufacturing and selling detergent powder under the marks ‘MR Excel’ and ‘MS Excel’ with packaging and color schemes deceptively similar to HUL’sproduct packaging of their brand , ‘SURF EXCEL’. The High Court of Calcutta opined that the infringing detergent packets are a colourable and deceptive imitation of the label and trademark of HUL which is a well-known trademark. The Court, further opined that it is prima facie satisfied that Ankit’s products are infringing the trade dress of HUL’s product ‘SURF EXCEL’and therefore granted an ad interim injunction in favour of HUL.

Justdial vs PVR

Court: Delhi High Court

PVR Cinemas had filed a suit seeking a permanent injunction against the search engine Justdial for infringement of trademark, passing off, and unfair business practices.. Both the parties had entered in to a non-exclusive ticketing agreement in which Justdial was allowed access to PVR’s ticketing software through which tickets can be booked for PVR cinema halls. This agreement expired in August, 2018. Later, PVR came to know through BookMyShow and Paytm that Justdial is continuing to provide online ticket bookings of movies shown at PVR. A cease and desist notice was issued to Justdial. Despite the reminders and requests, Justdial did not respond to the notice nor stop its unlawful activities. Justdial is said to have created web pages pertaining to PVR and its cinema halls, and unauthorizedly using PVR’s registered trademark and photographs of PVR cinema halls, to give an impression to the public of an association with PVR. The High Court of New Delhi opined that there is a prima facie case of infringement and passing off. Further, irreparable harm or injury would be caused to PVR if an injunction is not passed. Therefore, till further orders, Justdial is restrained from using the registered trademark PVR or any descriptive variant.

Living Media India Limited & Anr. v. Vijayan Madhavan Praveen & Anr. [CS (COMM) 1107/2018]

Decided On: 16.04.2019

Court: Delhi High Court

Living Media, owner and publisher of the weekly news magazine, “INDIA TODAY” since 1975 filed a suit seeking a permanent injunction against an individual, Vijayan Madhavan Praveen (Praveen), from infringing and passing off Living Media’s registered trademark, “INDIA TODAY”.   Praveen has been using a deceptively similar domain name www.indiatoday24X7.com to offer online Tamil news. It is also submitted in the suit that the individual has also copied the design, logo and colour scheme of “INDIA TODAY”. The High Court of New Delhi opined that the individual does not have any real prospect in defending the claim as “INDIA TODAY” was the registered trademark of Living Media and the individual had failed to appear or file a written statement. The Court, therefore, issued an ex-parte permanent injunction and restrained Praveen from using the domain name.

Available at: https://indiankanoon.org/doc/32782208/

Raymond Limited v. Radhika Export & Anr. [Commercial IP Suit (L) No. 541 of 2019]

Decided On: 30.04.2019

Court: Bombay High Court

The leading textile and garment manufacturer, Raymond filed a suit seeking an ad-interim injunction to stop Radhika Export from infringing and passing off Raymond’s registered trademarks, RAYMOND, as well as the tagline, THE COMPLETE MAN, which was adopted more than 90 years ago. In December 2018, Raymond came across Radhika Export’s use of RAYMOND for an apparel shop.  The mark adopted by Radhika Export was written in an identical style and manner as RAYMOND’S mark. Radhika Export defended that they had taken over the authorized dealership of Raymond. The Bombay High Court observed that Raymond is the registered trademark proprietor of the aforementioned marks and has acquired immense goodwill and reputation. Additionally, the Court noted that Radhika Export were neither an authorized dealer nor the authorized distributor of RAYMOND. The Court, therefore, passed an ad-interim injunction against Radhika Export.

Available at: https://indiankanoon.org/doc/86228316/

Bata India Limited v. Chawla Boot House & Anr. [CS (COMM) 110/2019]

Decided On: 16.04.2019

Court: Delhi High Court

The well-known footwear manufacturer and retailer, Bata, filed a suit seeking an injunction to stop Leayan Global. from using the trademark “POWER FLEX” as it infringes it’s trademark POWER which was adopted in 1971. The Delhi High Court observed that Leayan Global’s primary mark was RED CHIEF and the mark “POWER FLEX” was used inside its shoes on a standalone basis. The Court further observed that the adoption of mark “POWER FLEX” is fraught with risk owing to the high standing of the POWER mark by Bata for the last five decades. The Court granted an interim injunction to stop Leayan Global’s use of the infringing trademark and also rejected their argument that the mark POWER is descriptive in relation to its use with footwear.

Available at: https://indiankanoon.org/doc/3770661/

Adidas Ag & Anr. v. Praveen Kumar & Ors. [CS (COMM) 1269/2018 and I.A. 16629/2018]

Decided On: 14.05.2019

Court: Delhi High Court

Adidas AG and its Indian subsidiary, filed a suit before the Delhi High Court seeking a permanent injunction against the footwear manufacturer Colo Footwear, for using the trademark COLO along with the ‘Three Stripes’ on their products. It is submitted in the suit that Adidas, founded in 1920, had adopted the ‘Three Stripes’ device mark in 1949 and since then has earned immense goodwill and reputation for its mark. The Court had appointed a Local Commissioner to visit the infringer’s premises, and around 550 pairs of shoes, including replicas of the Adidas brand and shoes bearing the ‘Three Stripes’ device mark, were seized. As per the Commissioner’s report, Colo Footwear is clearly infringing the registered trademark of Adidas. On the basis of the pleadings and the documents on record and lack of any defence by Colo, the Delhi High Court granted a permanent injunction in favour of Adidas restraining Colo Footwear from using the ‘Three Stripes’ on their products. Further, the Court ordered Colo Footwear to pay INR 20 lakh as damages to Adidas.

Available at: https://indiankanoon.org/doc/53807786/

Parveen Kumar Jain v. Rajan Seth & Ors. [CS (COMM) 213/2019]

Decided On: 08.05.2019

Court: Delhi High Court

Parveen Kumar Jain, a restaurant owner filed a suit seeking a permanent injunction against Rajan Seth & Others (Defendants) for using the marks ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’ as their restaurant outlet name. Parveen Kumar claims that he has exclusive rights over the terms ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’ as he has obtained trademark registration over the same. Further, it is contended in the suit that latter’s usage of trademarks ‘PAHARGANJ KE MASHOOR CHUR CHUR NAAN’ and ‘AMRITSARI CHUR CHUR NAAN’ is also infringing on Parveen Kumar’s good will and reputation. Defendants submitted that the term ‘Chur Chur’ is generic in nature meaning ‘crushed’ and it is a common usage among their trade and submitted a list in their defence that showcases various third parties using ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’ with various suffixes and prefixes. Upon reviewing the documents and the pleadings, theCourt noted that there is no doubt that Parveen Kumar is the registered trademark holder, but, if registrations are wrongly granted or applied for with respect to completely generic expressions, the Court cannot ignore the generic nature of the marks and confer monopoly on the same in favour of any party.

The Court therefore, passed an order stating that the Defendants are permitted to use the marks ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’, but they have to distinguish themselves from Parveen Kumar’s outlet in order to avoid any consumer confusion. Therefore, the latter have agreed to change their trademarks to ‘PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN‟ and ‘PAHARGANJ SETH KE MASHOOR AMRITSARI NAAN’ within thirty days of the order.

Available at: https://indiankanoon.org/doc/159607524/

Accor & Anr. v. Mr. Ajay Gupta & Ors. [CS (COMM) 191/2019]

Decided On: 27.05.2019

Court: Delhi High Court

Accor France, a global hotel chain along with its subsidiary AAPC Indian Hotel Management filed a suit before the Delhi High Court seeking permanent injunction against Ajay Gupta for using the marks ‘ACCOR & ACCOR INN’. Accor France claims to be the registered user of the marks “ACCOR & ACCOR HOTELS”. Ajay Gupta was found to be running a hotel in the name of ACCOR INN along with an identical logo to that of Accor France’s marks. In furtherance to Accor France issuing repeated legal notices to Ajay Gupta notifying him of their trademark rights, the latter responded to the notices stating that he has changed the hotel trading name to ACCORD INN. Accor France stated in the suit that both ACCOR INN and ACCORD INN are deceptively similar, and also the use of the domains www.accorinn.com and www.accordinn.com are unlawful considering travellers mostly use online platforms for making bookings, and such usage leads to consumer confusion.

During the course of the hearing, the parties agreed to settle their dispute. As per their settlement provisions, Ajay Gupta will stop using the names ACCOR INN and ACCORD INN and also surrender both the domain names along with damages of INR 5 Lakh to Accor France. The Court, thereafter issued a permanent injunction against Ajay Gupta..

Available at: https://indiankanoon.org/doc/185627759/

Unilever Plc. & Anr. v. Masqati Dairy Products [Commercial IP Suit (L) No. 599 of 2019]

Decided On: 20.05.2019

Court: Bombay High Court

Unilever, a well-known FMCG, filed a suit seeking a permanent injunction against Hyderabad based Masqati Dairy Products for infringing Unilever’s registered trademark FEAST by using the deceptively similar mark CHOCO FEAST for ice-creams. On the basis of the pleadings and the documents on record, The High Court of Bombay instructed Masqati to pay INR 5 lakh as damages to Unilever. However, Unilever requested the amount be donated to ‘AWARE Foundation’, an organization which takes care of animals found in sick and injured condition on the streets. The Court passed a permanent injunction in favour of Unilever restraining Masqati from using the mark CHOCO FEAST for ice-creams, frozen desserts and similar goods. Interestingly, the Court also ordered the infringing goods seized by the Court Receiver, to be distributed amongst poor children and the seized wrappers to be destroyed by the Parties.

Available at: https://indiankanoon.org/doc/56636979/

Reliance Industries Ltd & Anr. v. Dhananjay Dinkarrao Khairnar & Anr. [Commercial IP Suit No.766 of 2019]

Decided On: 10.06.2019

Court: Bombay High Court

Reliance Industries, the Indian conglomerate, filed a suit before the Mumbai High Court seeking permanent injunction against Dhananjay Dinkarrao Khairnar for using the trademarks JIOFIT, JOIFER, JIO-4G and JIO-4EVER.  Reliance contended in the suit that these marks are deceptively similar to its registered trademark JIO. On the basis of the documents on record. the Court issued a permanent injunction and instructed Dhananjay to return all goods bearing impugned trademarks to Reliance. A court receiver has also been appointed to take charge of the disputed goods and remove contents in the packing material and hand it over to Reliance for destruction.

Available at: https://indiankanoon.org/doc/116340200/

PolicyBazaar vs. Acko General Insurance

Delhi High Court imposed a fine of INR 10 Lakhs on PolicyBazaar, an online insurance aggregator, for concealing facts to obtain a favourable decision in a trademark infringement matter filed against Acko General Insurance. On May 16th this year, the Court passed an ex-parte order restraining Acko, which is also an online insurance provider, from using the trademark ‘PolicyBazaar’ in any manner or form or as an adword/keyword programme through Google. Acko however submitted to the Court that PolicyBazaar has misrepresented, concealed and distorted the facts and made false statements to obtain the ex-parte interim injunction. PolicyBazaar had filed a trademark infringement suit against Acko alleging that the latter was using its trademark ‘PolicyBazaar’ as a keyword when PolicyBazaar themselves were using Acko’s name as a meta tag/keyword and therefore its website was showing up as a sponsored link whenever someone was searching for Acko. PolicyBazaar contended that they stopped using ‘Acko’ since April 23rd this year.  However, the Court did not accept the contention and considered it as a deliberate act of concealing of facts and directed PolicyBazaar to deposit INR 5 lakhs with the Prime Minister’s Relief Fund and 5 lakhs with the Delhi Legal Aid Services Authority. The Court has also ordered PolicyBazaar to submit an undertaking and unconditional apology.

Swarovski Aktiengesellshaft v. Durgesh Kumar Patwa [TM No.13809/16]

Decided On: 01.06.2019

Court: Delhi District Court

 Swarovski Aktiengesellshaft, a well-known crystal jewellery maker filed a suit seeking a permanent injunction against Durgesh Kumar Patwa, proprietor of M/s. Bajrang Beads for infringing their registered trademark “SWAROVSKI” and logo. Durgesh was engaged in selling, manufacturing, soliciting and trading jewellery, gemstones, artificial stones or allied products using the mark/label SWARAWSKI, SWAROVSKI and its logo and its variants having artistic features, getup, layout and lettering style similar to that of Swarovski. On the basis of the documents filed and the evidence, the Delhi High Court noted that Swarovski is the registered owner of the trademark SWAROVSKI and its logo and the said trademark have acquired distinct features due to the long and continuous use. The Court, therefore passed an order permanently restraining Durgesh from using the ‘SWAROVSKI’ and its logo or any other deceptively trademark and awarded damages of INR 25,000 to be paid to Swarovski.

Available at: https://indiankanoon.org/doc/49730979/

Max Healthcare Institute Ltd. v. Sahrudya Health Care Pvt. Ltd. [CS (COMM) NO.866/2016]

Decided On: 04.07.2019

Court: Delhi High Court

Max Healthcare Institute, a famous chain of hospitals, filed a trademark infringement suit before the Delhi High Court to restrain Sahrudya Health Care from using the trademarks MAXCURE HOSPITALS, MAXKURE, MAXCURE MEDICITI for hospital services which are fraudulently similar to Max Healthcare’s registered trademarks MAX, MAX HOSPITAL. It was further contended in the suit that the marks MAXCURE and MAXKURE were recently adopted by Sahrudya in 2015-2016 and earlier were known as Sunshine Hospital and Mediciti Hospitals. In arriving at the decision, the Court observed that there is no doubt that the two marks are deceptively similar and are likely to cause confusion to the public at large. The Court further noted that the word MAX is not an abbreviation in the English language of the word ‘maximum’ and also, the word MAX is not a generic word in relation to hospital and healthcare services. Therefore, the Court passed a permanent injunction against Sahrudya from using the trademarks MAXCURE HOSPITALS, MAXKURE, MAXCURE MEDICITI or any other mark similar to the marks of Max Healthcare. Furthermore, Sahrudya was instructed to change the names within 30 days of the order.

Available at: https://indiankanoon.org/doc/47648057/

Nippon Steel & Sumitomo Metal Corporation v. Kishor D. Jain & Anr. [Commercial IP Suit (L) No. 383 Of 2019]

Decided On: 23.04.2019

Court: Bombay High Court

Nippon Steel, the world’s third largest steel producer filed a trademark infringement suit before the Bombay High Court against Kishore D Jain & Jeetendra Burad (Defendants) against using the trademark NIPPON and its logo on counterfeit pipes. This suit was filed by Nippon after they received a complaint from Saudi Arabia-based Yanbu Steel Company regarding the quality of carbon seamless pipes to be used in oil plants. Yanbu Steel informed that the Defendantsfalsely made them to believe that these pipes were manufactured by Nippon. It was later discovered that these pipes were manufactured by a third party manufacturer and the Defendants affixed Nippon Steel’s trademarks on the pipes and provided forged signatures bearing Nippon Steel’s trademarks/logo to the trading company. On the basis of the pleadings and the documents on record, The Court made relevant observations that if pipes in oil plants do not meet the requisite quality and standards, it will lead to serious accidents and disasters. The Court, therefore passed an ex-parte order restraining the Defendants from infringing the registered trademarks `Nippon Steel’ and its variants owned by Nippon Steel. Further, the Court in order to send out a stern message against such activities which are of a serious and criminal nature has imposed a Rs. 5 Crore penalty on the Defendants, and directed the costs to be paid to the Tata Memorial Hospital, a charitable organization based in Mumbai.

Available at: https://indiankanoon.org/doc/101501483/

Dish TV India Ltd. v. Prasar Bharti [CS (COMM) 347/2016]

Decided On: 16.07.2019

Court: Delhi High Court

The Delhi High court has issued a permanent injunction against Prasar Bharati for using the trademark ‘Free Dish’ logo that is deceptively similar to former’s registered trademark DISH TV.  The trademark infringement suit was filed by Dish TV, India’s leading direct to home service provider, against Prasar Bharti, India’s largest public broadcasting agency, also known as Doordarshan for the use of the mark ‘Dish’ by Prasar Bharti for its Direct To Home (DTH) service.  Dish TV argued that Prasar Bharati’s “Free Dish” logo is similar in nature to its mark and amounts to passing off. However, Prasar Bharti refuted the allegation of similarities in the logo and argued that the exclusive right to the Dish logo cannot be claimed by anyone, as the word is generic. On the basis of the pleadings and the documents on record, the Court stated that it is highly possible for consumers to form a misleading opinion that Dish TV, in association with Doordarshan (Prasar Bharati), is providing certain free channels also and may result in the consumers wanting the paid channels of Dish TV also to be telecast free. Therefore it granted three months’ time to Prasar Bharti to change its DTH’sname and inform its customers.

Available at: https://indiankanoon.org/doc/129905078/

Exxon Mobil Corporation v. Exoncorp Private Limited [I.A. No. 3119/2019]

Decided On: 16.07.2019

Court: Delhi High Court

Exxon Mobil Corporation, one of the world’s largest multinational oil and gas company, filed a trademark infringement suit before the Delhi High Court against Exoncorp for using the trademark EXON as its corporate name for rendering information technology services. Exxon commenced its business in 1882 and has registrations in over 160 jurisdictions including India where the operations started since 1982. In November 2018, Exxon came across the existence of Exoncorp which was operating the website www.exoncorp.com, and had a presence in various social media platforms. Exoncorp in reply to the suit, defended that the trademark EXXON in not registered in class 42 which relates to IT services and the term exoncorp has been coined from a scientific term. On the basis of the pleadings and the documents on record, the Court observed that the trademark EXXON is a well-known mark and accordingly Exoncorp cannot use it even for technology services. Therefore, the Court issued a permanent injunction restraining Exoncorp from using the term EXON for its IT related services.

Available at: https://indiankanoon.org/doc/112686892/?type=print

M/S V.V.V. & Sons Edible Oils Limited v. M/S.Shivaraja Impex Company [C.S.No.475 of 2017 and A.No.9424 of 2018, O.A.No.623 of 2017]

Decided On: 01.07.2019

Court: Madras High Court

V.V.V. & Sons, the proprietors of Idhayam oil filed a trademark infringement suit against Chennai based Shivaraja Impex Company, for using the mark ‘IDHAYAM’ for sesame oil. V.V.V contended in that suit that they have been using the brand name Idhayam for more than two decades and also exports to 49 countries worldwide. V.V.V came to know Shivaraja Impex was packing and selling sesame oil under the brand name ‘IDHAYAM’ and was exporting to the US and Canada. The Madras High Court arriving at the decision, noted that the label used by Shivaraja Impex for the product is an exact replica of V.V.V’s product label, proving its dishonest intention. The Court, therefore, passed an ex-parte decree of permanent injunction restraining Shivaraja Impex from using the trademark ‘IDHAYAM’ and a monetary compensation of INR 50,000 to be paid to V.V.V within three months from the date of order.

Available at: https://indiankanoon.org/doc/168937321/

Durian Industries Ltd v. Binder Pal [Commercial IP Suit (L) No.729 of 2019]

Decided On: 16.07.2019

Court: Bombay High Court

Durian Industries, a home and office furniture company based in Mumbai, filed a trademark infringement suit against Binder Pal for using the mark ‘DURIAN TOUCH’ for home and office furniture. Durian Industries contended in the suit that they have adopted the mark DURIAN in 1985 and has 43 trademark registrations for their word and logo marks. In 2016, Durian Industries noted that Binder Pal had filed a trademark application for the mark ‘DURIAN TOUCH’ but did not take any further steps as they could not find any goods bearing the said trademark. However, in 2018, Durian Industries came to know that Binder Pal was selling the products using the impugned trademark. In arriving at the decision, the High Court of Mumbai noted that Durian Industries had made out a strong case for interim relief, and also Binder Lal chose to remain absent for the hearing in spite of being served notice twice. The Court also has appointed a Receiver to break open Binder Lal’s premises without permission and to take custody and seize all the infringing goods from the said premises pending the final disposal of the suit.

Available at: https://indiankanoon.org/doc/182638935/?type=print

Tata Sia Airlines Limited v. M/S Pilot18 Aviation Book Store & Anr. [CS (COMM) 156/2019]

Decided On: 05.08.2019

Court: Delhi High Court

Tata SIA Airlines, the owner of VISTARA airlines filed a trademark infringement suit before the Delhi High Court against Pilot18 Aviation for infringement, passing off and dilution of the former’s registered trademark, VISTARA Tata SIA in the suit contended that the use of the mark VISTARA as a part of the airline services includes usage on various merchandise, uniforms, name tags, badges and other accessories which are worn by airline staff. The mark VISTARA is also registered in India, Singapore, and various other countries. In February 2019, Tata SIA came to know that the Pilot18 Aviation Book Store is selling products such as badges, name tags, mugs, baggage tags, etc. bearing the mark VISTARA and logo on their website www.pilot18.com. In conducting further investigation, it was revealed that Pilot18 also claims to be supplying VISTARA branded aviation products to Vistara Airlines. During the trial of the suit, Pilot18 argued that they have never used or sold any products bearing the VISTARA mark or logo. In furtherance to this, a local commissioner was appointed to visit Pilot18’s premises where more than 300 products were uncovered bearing the mark VISTARA. During the inspection it was also uncovered that Pilot18 were selling products of other airlines including Jet Airways, SpiceJet and Air India. After hearing the arguments and inspecting the seized products, the High Court of New Delhi found that Pilot18 is not only liable to be permanently injuncted from using the mark VISTARA but also liable for perjury. The Court, therefore, passed a permanent injunction restraining Pilot18 from using the trademark VISTARA and also directed them to pay Rs. 2 lakhs to Tata SIA. The Court, on the next date of hearing, shall consider if any further action is to be taken in view of the false plea made by Pilot18.

Available at: https://indiankanoon.org/doc/25487259/

Titan Co. Ltd. v. Rohit Kumar Jain & Ors. [CS (COMM) No. 380/2019]

Decided On: 29.07.2019

Court: Delhi High Court

The Titan Companyfiled a trademark infringement suit against counterfeit sellers, and Snapdeal, an online e-commerce player, alleging the sale of counterfeit/infringing Fastrack branded watches on their website. Titan also contended in the suit that Snapdeal did not take down various listings despite being notified by Titan. The Delhi High Court passed an ex-parte ad-interim injunction restraining the sellers from marketing, selling or dealing with goods bearing the marks TITAN and FASTRACK of Titan. The High Court further directed Snapdeal to take down the products from its website within 24 hours of the said order.

Available at: http://delhihighcourt.nic.in/dhcqrydisp_o.asp?pn=175421&yr=2019

Unilever Plc & Anr v. Royal Ice Cream [GA 1927 of 2019 with CS 163 of 2019]

Decided On: 26.08.2019

Court: Calcutta High Court

Unilever PLC, filed a trademark infringement case against Royal Ice Cream for manufacturing, marketing and selling “KORNETTO” brand ice-creams which are deceptively similar to Unilever’s well-known CORNETTO ice-cream. Unilever contended in the suit thatithas been using CORNETTO as the umbrella brand for frozen dessert/ice-creams, i.e., Kwality Walls since 1997. The High Court of Calcutta noted that Unilever has acquired a wide and enviable reputation and goodwill with respect to the mark CORNETTO, and it is prima facie evident that Royal Ice Cream knowingly and deliberately adopted the mark “KORNETTO” to make unlawful gains. The Court therefore, passed an ex-parte ad interim order and also appointed a Special Officer to inventory the infringing products at Royal Ice Cream’s go-down.

Available at: https://indiankanoon.org/doc/150994346/

Apollo Hospitals Enterprise Ltd v. Sai Apollo Pharmacy [C.S. No.205 of 2016]

Decided On: 06.08.2019

Court: Madras High Court

Apollo Hospitals, the leading chain of multi-speciality hospitals in India, filed a trademark infringement suit against Sai Apollo Pharmacy for rendering pharmacy services under the mark “SRI SAI APOLLO PHARMACY”. It is alleged that the term ‘Sri Sai’ is sidelined and the word APOLLO is featured dominantly in the infringing trademark. On the basis of the documents on record, the High Court of Madras passed an ex-parte order and ruled that there is no doubt that Sai Apollo is using the trademark ‘APOLLO” with a malafide intent to ride on the reputation and goodwill of Apollo Hospitals and it is a clear case of infringement. The Court therefore passed a permanent injunction in favour of Apollo Hospitals restraining Sai Apollo Pharmacy from using the mark ‘APOLLO’.

Available at: https://indiankanoon.org/doc/2461518/

Bennett, Coleman & Company Limited & Ors. v. Rising India Entertainment Production & Ors. [CS (COMM) NO. 359 of 2019]

Decided On: 04.09.2019

Court: Delhi High Court

Bennett, Coleman and Company (Times Group) filed a trademark infringement suit against Rising India for using the titles ‘Miss India’ and ‘Mr. India’ for a beauty pageant organized by them. Times Group contended in the suit that they have been organizing beauty pageants with the said titles since 1964 and the same have gained great reputation and goodwill in India and abroad. Moreover, they are the registered trademark owners of the titles in several trademark classes.  Rising India stated in their defence that they were not aware of the registration of the trademarks in favour of the Times Group and agreed not to conduct the event. The Delhi High Court, therefore passed an order restraining the organization from using the titles ‘Miss India’ and/or ‘Mr. India’ or any other trademark which is deceptively similar to these.

Available at: https://indiankanoon.org/doc/195848370/

MTR Foods Private Ltd. v. Raniammal Agencies & Ors. [C.S.No.315 of 2012]

Decided On: 10.09.2019

Court: Madras High Court

MTR Foods, a well-known FMCG in India since 1924, filed a trademark infringement suit against Raniammal Agenices & Ors (Defendants) for using the trade dress of MTR Foods in respect of its Badam Drink Mix and passing off the goods of the Defendants as and for that of MTR’s. MTR contended in the suit that among its several products, Badam Drink Mix is one of the most popular. Recently it was brought to MTR’s notice that several shops and supermarkets in Tamil Nadu were selling badam drink mixes with the trademark “MTR” resembling the real MTR’s appearance/trade dress. The Madras High Court noted that the carton, get up, label design of the cartons, of the counterfeiters are similar to MTR product’s design and label. The Court, therefore passed an ex-parte injunction against the Defendantsfrom using the trade dress of MTR Badam Drink Mix and passing off the goods as that of MTR. The Court further ordered the Defendants to surrender the cartons, packing materials, catalogues, publicity materials bearing similar trade dress as MTR for destruction.

Available at: https://indiankanoon.org/doc/119429425/

GrabOn vs. GrabOnRent

Decided On: 17.09.2019

Court: Delhi High Court

GrabOn, Hyderabad based coupons and daily deals start-up had filed a trademark infringement suit against the Bangalore based rental platform GrabOnRent, for misusing its goodwill and causing confusion by the use of a deceptively similar brand name. GrabOn further claimed that it’s facing the impact of negative customer reviews, complaints and feedbacks which were intended for GrabOnRent, but diverted to GrabOn due to the similarity in the brand names. GrabOnRent entered into a settlement with GrabOn and agreed to refrain itself from using the brand name ‘GrabOn’ or ‘GrabOnRent’ or any other similar trademarks and domains within a agreed timeframe. The settlement placed before the Delhi High Court Mediation and Conciliation Centre was decreed by the Delhi High Court in favour of GrabOn. The Court further instructed GrabOnRent to place a disclaimer on their website and mobile application stating that they have no relation with GrabOn and to destroy all the goods bearing the mark ‘GrabOnRent’ by 31st July, 2020.

Available at: http://ptinews.com/pressrelease/37081_press-subGrabOn-Wins-Trademark-Infringement-Case-Over-GrabOnRent-in-a-Delhi-High-Court-Decree

Oravel Stays Pvt. Ltd v. Hotel Metro [TM No.13/2019]

Decided On: 09.09.2019

Court: Saket Courts, South District, New Delhi

Oravel Stays, operating OYO in India and abroad, filed a trademark infringement suit against Hotel Metro, a hotel operating in Jaipur, Rajasthan for using the trademark OYO and logo in front of the hotel’s property in a negative manner. Oravel contended in the suit that Hotel Metro has been indulging in unlawful activities of defaming OYO by making false representations before the public. It was therefore averred that the adoption and misuse of the identical trademark and logo by Hotel Metro amounts to detriment of the goodwill and reputation of the OYO trademark. The Court observed that Oravel has made a prima facie case for infringement and Hotel Metro’s adoption of an identical trademark was a deliberate move to demean the registered trademark. The Court, therefore, granted an ex-parte decree of permanent injunction restraining the Hotel Metro from infringing and passing off the registered trademark OYO.

Available at: https://indiankanoon.org/doc/198367090/

Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited [CS (COMM) 889/2018, I.As. 6896/2018 & 8837/2018]

Decided On: 18.10.2019

Court: Delhi High Court

One of the largest online travel companies of India, MakeMyTrip (MMT), filed for a permanent trademark injunction to restrain MakeMyTravel from using the trademarks ‘Make My Travel’, MMT, the tagline ‘Dreams Unlimited’ and the domain www.makemytravelindia.com.  MMT started using the brand name in 2000 and has a presence across India and several other countries. MMT argued that owing to its widespread goodwill and reputation in its MakeMyTrip marks, the public and trade has come to associate and recognize the MakeMyTrip marks as originating from MMT and none else. Thus, any unauthorized use of the MakeMyTrip marks and/or any other deceptively similar mark would violate its statutory and common law rights. MakeMyTravel in this defence stated that MMT’s suit was not bonafide as the MakeMyTravel marks were known to MMT since 2011 and it has not objected before. The Delhi High Court hearing both the parties, opined that MakeMyTravel’s adoption of the mark is without any cogent explanation and it prima facie appears to be dishonest. The Court, therefore, granted a decree of permanent injunction in favour of MMT.

Available at: https://indiankanoon.org/doc/146728717/

Flipkart Internet Private Limited v. Somasundaram Ramkumar [C.S.No.848 of 2017 and O.A.Nos.1083 to 1085 of 2017]

Decided On: 13.09.2019

Court: Madras High Court

Flipkart, the famed e-commerce company, filed for a permanent trademark injunction to restrain Somasundaram Ramkumar from using the trademark FLIPPINGKART and the domain www.flippingkart.com. Flipkart contended in the suit that they are the registered owners of the trademark FLIPKART which was adopted in 2007 and Somasundaram has unauthorizedly registered the domain www.flippingkart.com in 2017 to encash upon the reputation and goodwill of Flipkart. In an ex-parte judgment, the Madras High Court after perusing through the records opined that the mark FLIPPINGKART was adopted with a malafide intent and the same would amount to trademark infringement and passing-off of Flipkart’s goods and/or services. The Court further declared Flipkart a well-known trademark.

Available at: https://indiankanoon.org/doc/94765199/

Medicare Hygiene Ltd vs Vivan Medicare Pvt. Ltd [TMSUIT/11/2019]

Decided On: 06.09.2019

Court: Ahmedabad (Rural) Court at Mirzapur, Ahmedabad

Medicare Hygiene, an Ahmedabad-based manufacturer and exporter of medical products, filed a trademark-infringement suit against Vivan Medicare, another medical products manufacturer. The suit alleged that the latter’s use of the word ‘Medicare’ and the ‘medi’ as a prefix and suffix in the names of its products encroached upon Medicare Hygiene’s trademarks, causing confusion amongst consumers. Medicare has claimed ownership of the mark ‘Medicare Private Company’. A compromise deal was struck between the two companies, with the directors of Vivan affirming before the Mirzapur Rural Court that they would cease to use the word ‘Medicare’, as well as ‘medi’ in any of their products. The compromise deed was taken on record by the Court, and the suit was decreed in favour of Medicare Hygiene.

Available at: https://services.ecourts.gov.in/ecourtindia_v4_bilingual/cases/display_pdf.php?filename=/orders/2019/203700000112019_1.pdf&caseno=TMSUIT/11/2019&cCode=1&appFlag=&normal_v=1

Hindustan Unilever Limited v. Sambhu Das [G.A. No. 2426 of 2019 with C.S. No. 236 of 2019]

Decided On: 13.11.2019

Court: Calcutta High Court

Hindustan Unilever (HUL), the FMCG major has filed a suit before the Calcutta High Court requesting for an interim injunction to restrain Sambhu Das, an individual from selling or marketing his detergent powder “ACTIVE SANGITA” in packets/labels similar to HUL’s product “ACTIVE WHEEL”. HUL claims that the packets, labels and/or cartons, in which the “ACTIVE SANGITA” detergent powder is sold are a deceptive imitation of their well-known “Active Wheel” label. On the basis of the documents on record, the Court noted that the mark used by Sambhu Das was prima facie infringing HUL’s mark, and the detergent packets and labels were a colourful and deceptive imitation of the “Active Wheel” product. The Court, therefore,passed an ad interim order against Sambhu Das.

Available at: https://indiankanoon.org/doc/136001825/

Nike Innovate C V v. Shoesnation & Ors [TM No.88/17]

Decided On: 18.11.2019

Court: Patiala House Court, New Delhi District

Nike Innovate, the registered trademark owners of the marks NIKE, SWOOSH device and NIKE AIR filed a suit seeking permanent injunction against Shoesnation & Ors(‘Defendants’) from using SWOOSH device along with the mark FITZE. Nike alleged that Defendants’ mark has artistic features, getup, layout, lettering style and placement similar to that of Nike’s and is available at online market places like Snapdeal, Flipkart, Amazon, etc. Further, Defendants are using false descriptions on its impugned goods to wrongly link the impugned goods with Nikes’ and mislead common people and customers. Defendants argued that their mark FITZE is completely and phonetically different from that of NIKE and denied having indulged in counterfeiting. However, on examination of both the parties, the Court found that the Swoosh device or the tick mark used in the Defendants’ products are deceptively similar to that of Nike to confuse an average person with average intelligence. Additionally, the Court awarded damages of Rupees 40,000 to Nike after the Defendants’ admitted to the sales.

Available at: https://indiankanoon.org/doc/38392229/

Shri Ved Prakash Garg Trading As M/S Parul Food Products v. M/S Gurudev Industries [15191/2018]

Decided On: 20.12.2018

Court: Delhi High Court

Parul Food, engaged in the manufacture of confectionery products since 2005, filed an application for a permanent injunction requesting the Delhi High Court to restrainGurudev Industries from the use of the trademark ‘FREEFUN’, which bears packaging identical to Parul Food’s registered trademark FUNFINE. During a routine market survey in Delhi, it was discovered that Gurudev Industries was using the trademark ‘FREEFUN’ with packaging and trade dress identical to that of FUNFINE. This, Parul Food contented, is likely to cause confusion and/or deception in the minds of consumers about the products’ origin and source. In furtherance, the Court appointed a local commissioner and upon inspection, it was found that Gurudev Industries was infringing and all such infringing products were seized. The Court opined that Gurudev Industries had no real prospect of defending the claims as they have neither made a court appearance nor filed a written statement in the case. Therefore, a decree of permanent injunction is passed in favour of Parul Food.

Available at: https://indiankanoon.org/doc/71386157/

 

 

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  • Anil Suraj
    Saturday, February 29th, 2020 at 3:51 PM

    Excellent collection of cases and accurate summaries! Thank you!

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