In this post, we bring to you 3 trademark cases relating to injunctions and process for the removal of a trademark. In the trademark removal case, the Court stated that a registered trademark cannot be automatically removed without issuing a notice of renewal. In the other two cases, the Courts granted injunctions against the use of Fly Hi and Timespro trademarks by infringing defendants.
Trademark Cases
Delhi High Court Restrains the use of ‘Fly Hi’ Trademark for Aviation and Travel Services
In a case filed by FrankFinn Aviation, the Delhi High Court restrained Fly-Hi Maritime from using the trademark. Though the defendant was using a stylized logo, the Court stated that the logo containing the word ‘Fly Hi’ is prima facie infringing. The Court stated that Frankfinn had been using the mark since 2007, and the adoption of the mark by the defendant for similar services such as aviation, travel, and hospitality in class 41 would give rise to confusion/deception. Therefore, the Court restrained the defendant from using the mark in any manner.
Citation: Frankfinn Aviation Services (Pvt) Ltd Vs Fly-Hi Maritime Travels Private Limited & Anr., HIGH COURT OF DELHI, 05 February, 2024, CS(COMM) 83/2024
Delhi High Court restrains the use of Timespro Trademark
In a case filed by Bennett Coleman with respect to its “Times” and “Timespro” trademarks, the Delhi High Court granted a permanent injunction restraining the defendant from using the ‘Timespro’ Trademark. The Court ordered the take down of social media profiles and pages using the Timespro mark, and also asked the defendant to hand over the domains and email ids using the mark. Additionally, the Court also granted a sum of 1.5 Lakh Rupees as costs.
Citation: Bennett Coleman And Company Limited Vs Timespro Consulting Llp & Ors, Delhi High Court, 05 February, 2024, CS(COMM) 723/2022, I.A. 12370/2023 & I.A. 12371/2023.
A Registered Trademark cannot be removed without issuing a notice of renewal, says the Bombay High Court
In a case involving the removal of the trademark, Motwane, from the register of trademarks, the Madras High Court stated that the trademark cannot be removed without issuing a notice of renewal as required under Section 25(3). As per the Court, removal without issuance of a notice is irregular, and the proprietor has to be permitted to pay the renewal fee and restore the application. The trademark in question in this case was not renewed since 1983.
Citation: Motwane Private Limited vs The Registrar Of Trade Marks, Bombay High Court, 16 February, 2024,WRIT PETITION (L) NO. 30537 OF 2023
Observations
It is today relatively much easier for trademark owners to stop competitors from infringing their trademarks through legal action. Courts are not only responding quickly, but also positively if the trademarks are registered, and are being honestly and continuously used. Also, taking down online infringers has become relatively easier than earlier.
Interestingly, in the case relating to the removal of trademarks from the register, the Court stated that a trademark cannot be removed without issuing a notice of renewal. This opens the doors for trademark owners, whose trademarks have been removed through an automated process, and who are unable to pay the renewal fee because of a lapse of applicable timeline.
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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