Service of notice and related consequences have been the subject of several Court orders, and Courts have been reversing orders of Registrar of Trademarks that have been issued without serving notice to the parties. In this post, we bring to you a case where an opposition relating to ‘ASLI AMLA, SIRF DABUR AMLA’ trademark was decided without serving notice. Additionally, we are also sharing with you another case relating to determination of infringement based on the similarity of the suffix ‘40’.
Case Notes
The trademark HP-40 is structurally and phonetically similar to WD-40 as both have 40, says the Delhi High Court.
The Delhi High Court recently granted an interim injunction in favour of the plaintiff, WD Manufacturing, with respect to its trademark WD-40 stating that the defendant’s trademark HP-40 is phonetically and structurally similar. WD Manufacturing adopted the trademark WD-40 in 1957, and has been continuously using the same for lubricating sprays, penetrating oils, cleaning products, and other chemical products. As stated before the Court, it uses the mark in different labels and artistic forms. Also, WD Manufacturing created a specific trade dress for its products in 1960, which it continues to use.
The primary grievance of WD Manufacturing before the Court was that the defendant adopted the numeral 40, which is associated only with it, and that the defendant was applying the said numeral to products with similar trade dress. After comparing the plaintiff and defendant’s products, the Court stated that the trade dress of the products was similar, and that both companies were selling similar products. As the defendant was unable to give a valid reason for adopting ’40’ in its trademark, the Court stated that the marks were phonetically and structurally similar based on the suffix. It therefore concluded that there is deception and possibility of confusion, and found a prima facie case in favour of the plaintiff.
Citation: Wd 40 Manufacturing Company vs H P Enterprises & Ors, Delhi High Court, 26th February, 2024, CS(COMM) 141/2024
Order of the Registrar of Trademarks is not valid because the notice of opposition was never served to the applicant, says the Delhi High Court.
In a case involving an application for registration of Dabur’s trademark ‘ASLI AMLA, SIRF DABUR AMLA’, the Registrar of Trademarks passed an order abandoning the application because Dabur did not respond to the notice of opposition. On appeal, Dabur submitted that they were never served the notice of opposition by the trademark office. accepting the submission, the Delhi High Court remanded the application for an appropriate opportunity and consideration.
Citation: Dabur India Ltd vs The Registrar Of Trade Marks & Anr, Delhi High Court, 23 February, 2024, C.A.(COMM.IPD-TM) 39/2023
Observations
Abandonment or refusal of trademark applications based on notice issues continues to create problems. In many instances, notices are uploaded online, but not served to the parties. In these cases, a party that contests is asked to prove that the notice was not received, and this is despite the fact that the party has not expressed its intent to forego an application. Hopefully, the IP Office will resolve this issue, and do the needful in ensuring that notices are appropriately served, and negative consequences do not result from non-receipt of notices.
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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