This week’s trademark updates are as follows –
PhonePe’ vs ‘DIGIPE’ – Madras High Court grants interim relief to the plaintiff
PhonePe Private Limited, the plaintiff, has been in the Unified Payments Interface (UPI) business since 2016. DigiPe Fintech Private Limited, the defendant filed an application for registration of the mark “DIGIPE” in September 2022 even after being issued a legal notice by PhonePe. The Madras High Court has temporarily restrained defendant from using its mark ‘DIGIPE’ following a trademark infringement suit by the plaintiff. Further the Court observed that the offending trademark ‘DIGIPE’ is similar to the ‘PhonePe’ mark which stands registered in Class 9, 35, 36 and 42 by PhonePe Private Limited. The Court also added that the defendant will not suffer or incur loss if an interim relief is granted as prayed. On the other hand, if no injunction is granted, the applicant may have to put up with the use of offending trademark “DIGIPE” which is deceptively similar to the marks “Phone Pe”.
Switzerland Army’s trademark infringement case against Indian textile brand
A single judge bench of Justice C Hari Shankar passed the judgement on a plea seeking usage of the term “Swiss Military” along with the insignia — a white cross on a red background —as a registered trademark by Promoshirt — a clothing and textile brand — as was allowed by the Deputy Registrar of Trademarks in its July 25, 2022, order. The HC held that the words “Swiss Military”, when used in conjunction with the red-and-white cross, would appear to any customer with average intelligence — presuming that they have knowledge of the fact that the red-and-white cross is the indicia of the Swiss confederation — as goods having a Swiss origin.
The HC observed that the impugned mark “would clearly” confuse the consumer into assuming that the goods have been manufactured or produced in Switzerland, amounting to a “false trade description” ineligible for registration under the Trademarks Act.
Delhi High Court stays release of Indian movie AJINOMOTO
Ajinomoto Cowhichc, who claims to be the largest seasoning manufacturer in Japan, has filed a civil suit against the filmmakers, Dattatrey Studios, who are naming their upcoming movie as “AJINOMOTO”, which is being used without the manufacturer’s authorization. The manufacturer was also of the view that considering the storyline of the film revolving around cooking ingredient, it is directly linked to the manufacturer. Further, any negative portrayal in a film with such wide outreach is bound to severely prejudice the manufacturer’s reputation in the Indian market. The Court duly recognized the IPRs of the Japanese manufacturer over its registered trademark and granted it protection. It was held that the manufacturer would suffer irreparable loss if an ex-parte injunction was not granted and therefore, the Hon’ble Court restrained the filmmakers from releasing the film under the title “AJINOMOTO” or any other identical or deceptively similar name until the next date of hearing.
Bombay High Court Temporarily Restrains Pune’s Regal Footwear From Using ‘Regal’ Trademark
The plaintiffs are the registered proprietor of the mark ‘Regal’ for footwear and leather articles carrying out business since 1954 under the mark Regal/Regal Footwear/Regal Shoes. The defendant claimed to have adopted the trademark ‘Regal’ in 1963 and the mark has been in continuous use. The defendant’s 2006 trademark registration application was rejected in 2020. The plaintiffs came to learn that the defendant had started selling footwear with trademark REGAL. Hence the present suit.
The Court acknowledged that the plaintiffs had produced enough evidence to show that they were in open, uninterrupted, and continuous use of their trademark since 1954. The evidence produced by the defendant failed to establish their continuous and uninterrupted use since 1963. The Court rejected the defense of honest concurrent use of the mark by the defendant as it was only available for trademark registration and not infringement.
The Court said that the defendant’s claim that the plaintiffs had knowledge of the defendant’s business and were tardy in coming to the Court does not establish acquiescence.
Therefore, a prima facie case for infringement and passing off is made out, the Court concluded.
Authored by Lavanya Anand (Associate, BananaIP Counsels) and Muhammad Mohyddin Muhammad (Intern).
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