This week’s trademark updates are as follows:
Its TATA vs TAATAS.COM
The TATA Group has recently filed a lawsuit with World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre seeking the recovery of the domain name taatas.com on the grounds that it was identical to the well-known TATA trade and services mark. The Panel did recognize that the marks were phonetically similar and that the plaintiff had a legitimate interest in reclaiming the domain because of their reputation in India and geographical closeness to Sri Lanka. However, because the Panel’s purview of adjudication was restricted to the usage and registration of the domain, the Panel declined to comment on the parties’ respective trademark rights and urged the complaint to initiate proceedings in a court of competent jurisdiction. The Panel’s ruling demonstrates unequivocally that only fame and reputation are not sufficient to succeed.
A conflicting glass of beer
In a recent matter of CARLSBERG BREWERIES A/S v. TENSBERG BREWERIES INDUSTRIES PVT. LTD. & ORS., the plaintiffs having a registered trademark since 1949 alleged that Tensberg were marketing their beer in a bottle that was deceptively similar to theirs. The Delhi High Court after scrutiny, passed an ad interim injunction against the Defendants. Justice Navin Chawla stated, “Beer Bottles and Cans are not bought with minute scrutiny but in a more casual manner. Applying the test of an unwary consumer with imperfect recollection, the two marks and their trade dress, prima facie appear to be deceptively similar and likely to deceive and confuse such consumer”. The Court also found phonetic similarity between the two marks ‘Tensberg’ and ‘Carlsberg’ and observed that, “the placement of the marks, the appearance of the deceptively similar crown, also prima facie reflects the intention of the defendants to come as close to the plaintiff’s mark as possible. Beer bottles and cans are not bought with minute scrutiny but in a more casual manner. Applying the test of an unwary consumer with imperfect recollection, the two marks and their trade dress, prima facie appear to be deceptively similar and likely to deceive and and confuse such consumer”.
WESTERN DIGITAL TECHNOLOGIES INC. vs RAAJ COMPUTER
In a suit filed for permanent injunction by the well-known manufacturer of storage devices, Western Digital Technologies (WD) against Raaj Computer to restrain them from “selling, offering for sale, advertising or otherwise dealing in infringing goods which bear” the mark of WD. The Delhi High Court, ruling in favour of the plaintiff, stated that passing off outdated and used hard disc drives as new items after changing the labels and printed circuit board is plainly a violation of the original manufacturer’s trademark. A Local Commissioner was appointed who visited the Nehru Place business in 2020, he confiscated 24 boxes containing merchandise carrying the ‘Western Digital’ trademarks. “The plaintiff is held entitled to damages quantified at Rs. 3,00,000/- (Rupees Three Lakh only), especially keeping in view the recovery made by the Local Commissioner as also the potential loss and injury that the unwary consumer shall suffer on purchasing such counterfeit product from the defendants,” said Justice Navin Chawla stated.
VASUNDHRA JEWELLERS PVT. LTD. vs KIRAT VINODBHAI JADVANI & ANR.
The Delhi High Court recently refused to grant ad interim injunction in a trademark infringement matter between VASUNDHRA JEWELLERS PVT. LTD, a well-known Delhi based jewellery showroom and KIRAT VINODBHAI JADVANI & ANR. In the instant case, the plaintiffs had field a suit against the defendant for using the mark ‘Vasundhra Fashion’. The plaintiffs claimed that the mark “Vasundhra Fasion’ was infringing upon their mark ‘Vasundhra’. Justice Navin Chawla observed that the name ‘Vasundhra’ is a common name in India and hence, no exclusive right can be granted over it. He further stated that though the plaintiff had trademark registration but the same was for device marks and not for the word ‘Vasundhra’. The Court observed that the goods of the plaintiff and the defendant were not identical and can be said to be remotely cognate to each other. The Court stated that, “It would also have to be considered that the plaintiff has only one store at Delhi, while the defendant no.1 herein claims to have two manufacturing units, four warehouses, and seven offline stores. Its goods are available also online at Flipkart and Meesho, where the plaintiff is not present”.
Authored by Lavanya Anand (Associate, BananaIP Counsels) and Rohan Koshy Cherian (Intern).
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