Today, we bring to you 3 interesting trademark cases decided by the Delhi High Court, the Calcutta High Court, and the Madras High Court. In the Biriyani King case, the Court granted relief while the registration certificate was awaited, and in the MI Sumeet case, the Court reviewed the history of use of the suffix by different parties before passing the order. In the Toofan case, the Court answered if filing of translation related information would have a bearing on the validity of the marks, and their use in trade.
Trademark Case Notes
Use of ‘Biriyani King’ Trademark for Rice Injuncted by the Delhi High Court.
The Delhi High Court recently passed an exparte interim injunction restraining the defendant from using the trademark, Biriyani King, and its trade dress. The plaintiff and defendant’s trademarks are as follows:
The plaintiff argued in the case that the trademark registration under class 30 will be issued shortly, and that it is the assignee of the trademark that was being used since 2005. Additionally, the plaintiff also pointed out that its use was consistent, honest, and continuous. On a comparison of the marks, the Court was satisfied that the plaintiff had made out a prima facie case and granted an exparte injunction. The Court also appointed a local commissioner to visit the defendant’s premises, seize infringing products, and submit a report.
Citation: Jrpl Riceland Llp vs Madhav Traders, Delhi High Court, 14 February, 2024, CS(COMM) 139/2024, I.A. 3559/2024, I.A. 3560/2024, I.A. 3561/2024 I.A. 3562/2024 I.A. 3563/2024
MI Sumeet Vs. Nikoda Sumeet for Mixers, Grinders and Juicers: Calcutta High Court injuncts the use of Nikoda Sumeet
In a case involving the trademarks, MI Sumeet and Nikoda Sumeet, the Calcutta High Court stated that Nikoda Sumeet is phonetically, visually, and structurally similar to Mi Sumeet. Both marks were being used for mixers, grinders, juicers, and so on. Based on the similarity when seen as a whole, the Court stated that the use of the Nikoda Sumeet by defendants is infringing, and granted a permanent injunction in favour of the plaintiff.
Citation: Dilip Kumar Jain Alias Dilip Kumar … vs Vikas D. Jain & Ors, Calcutta High Court, 18 January, 2024, CS 40 of 2020
Madras High Court refuses to remove ‘Thufan’ for electric fans from the register
The proprietor of the registered trademark Toofan’ for electric fans filed rectification petitions to rectify the trademarks, Thufan, in tamil and telugu languages. The respondent in the case acquired registration over Thufan based on an application in 2005 claiming user date from 2003. The petitioner filed a rectification based on the fact that it was using the mark, Toofan, since 1987, and that respondent’s marks were wrongly registered.
The respondent argued in the case that its predecessor was using the mark since 1976, and that it was the prior user. The Court was convinced and dismissed the rectification petitions. While dismissing the petitions, the Court also stated that not filing a translation was not a valid ground for removing the trademarks as it was a curable defect.
Citation: Sorting Hat Technologies Private … vs M/S.Pgr E-Commerce Private Limited, Madras High Court, 09 February, 2024, (T)OP(TM)/483,484,525/2023 (ORA/SR.30, 31, 32//2021/TM/CHN)
Observations
The cases indicate the growing trend of positive orders in favour of trademark proprietors and prior users. To ensure that their trademark rights are appropriately protected and enforced, it is important for companies to take all required steps to acquire trademark registrations in all relevant classes, and fortify the strength of their trademark rights by building good will and recognition.
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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