Through this post, we are sharing 3 cases that relate to counterfeiting and wrongful registration of a trademark by the distributor. In the first case involving HUL’s trademarks 3 Roses and Brooke Bond, 6 of the 45 defendants agreed to not use HUL’s trademarks, and settled the case against them. In the second case involving the mark ‘Ahuja’ for audio systems, the Court restrained the defendants and interestingly, granted damages based on the cost of the plaintiff’s products. In the third case, the Court removed the trademark, Tiche, for water bottles from the Register as it was wrongfully registered by a distributor.
Trademark Case Notes
HUL settles 3 Roses, Brooke Bond, and HUL trademark infringement case against counterfeiters.
Hindustan Unilever Limited (HUL) filed a trademark infringement and passing off case against 45 counterfeiters of its trademarks 3 Roses, Brooke Bond, Hindustan Unilever Limited, and HUL. Out of the 45 counterfeiters, 6 defendants agreed to settle the dispute with HUL. As a part of the settlement, they have agreed to not use the 3 Roses, Brooke Bond, and HUL marks for tea or other products.
Citation: Hindustan Unilever Limited vs Vikesh Kumar And 44 Ors, Bombay High Court,17 January 2024, I.A (L) NO. 26017 of 2023 IN COMMERCIAL IP (L) No. 25724 OF 2023.
Delhi High Court grants 50 percent of product value as damages in a counterfeiting case
In a case involving the counter fitting of ‘Ahuja’ trademarks, the Delhi High Court granted 50 percent of the plaintiff’s product cost as damages. Established in 1940, the plaintiff was in the business of public address and audio systems bearing the marks, Ahuja word and Ahuja device. These marks were registered in class 9 in 1948 and 1976.
The Court appointed a local commissioner to seize products being sold by the defendants. Based on the goods seized the Court came to the conclusion that the defendants were liable for trademark infringement and passing off. The Court asked each of the defendants to pay damages of Rs. 30, 000/-, Rs. 64, 000/-, Rs. 2, 20, 000/-, and Rs. 9, 70, 000/- as damages. It also granted the costs to the plaintiff.
Citation: Ahuja Radios Vs M/S. Rohini Electronics & Ors., High Court of Delhi, 25 January, 2024, CS(COMM) 498/2019
Delhi High court cancels ‘Tiche’ trademark registered by an agent.
In a petition filed by the proprietor of the ‘Tiche’ trademark used for mineral water and carbonated drinks, the Delhi High Court cancelled a trademark registration fraudulently acquired by an agent of the petitioner. The petitioner in the case had entered into a sale purchase agreement with the respondent for sale of its ‘Tiche’ products but had not authorized or transferred any rights over the mark to the respondent. The respondent fraudulently acquired a trademark registration over the mark, which the Court cancelled. The Court also granted costs of one lakh rupees to the petitioner.
Citation: Uzdaroji Akcine Bendrove(Uab) Vs Mr. Sahil Tandon Trading, High Court of Delhi, 25 January, 2024, C.O. (COMM.IPD-TM) 202/2022
Thoughts
Adopting trademarks that are being used by others can give rise to significant liability, and such an approach may not be worthwhile. Instead, it is advisable to choose a trademark that is free from trademark infringement risks. This can be easily accomplished by acquiring a trademark clearance search report and opinion from a qualified trademark attorney.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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