In this post, we bring to you 4 trademark cases where injunctions were granted in favour of trademark owners. The cases relate to popular brands such as Nykaa, Social, A to Z, and Burger King.
Nykaa Vs. Oykaa for Cosmetics: Delhi High Court grants exparte injunction restraining Oykaa.
In a case involving the trademarks Nykaa and Oykaa for cosmetics, healthcare, personal care, and wellness products, the Delhi High Court granted an exparte injunction restraining the use of Oykaa. The Court stated that Nykaa was registered and that Oykaa was confusingly similar to Nykaa. As the marks were being used for similar goods and services, which were being offered in the same trade channels, the Court stated that the triple identity test was satisfied. In addition to restraining the defendant from using the Oykaa mark, the Court also ordered the takedown of the website and removal of listings from Amazon, Flipkart, and so on.
Citation: Fsn E-Commerce Ventures Ltd & Anr Vs. Pintu Kumar Yadav & Anr. [CS(COMM) 726/2023, I.A. 20126/2023, 20127/2023, 20128/2023]
A to Z Vs. A 2 Z for Nutritional Supplements: The Delhi High Court grants Exparte Injunction against the use of ‘A 2 Z’.
In a case filed by Alkem Laboratories with respect to its trademark ‘A to Z’ for nutritional supplements, the Delhi High Court granted an exparte injunction against the use of the mark ‘A 2 Z’ by the defendant. The Court stated that the plaintiff had made out a prima facie case and that any infringement of trademarks related to medicines must be taken seriously. In its response to the legal notice, the defendant had stated that it would change the name, and had moved from A to Z to ‘A 2 Z’, another infringing mark.
Citation: Alkem Laboratories Ltd Vs. Medox Lifesciences & Ors [CS(COMM) 863/2023, I.As. 24144/2023, 24145/2023, 24146/2023, 24147/2023]
Social Vs. China Social for restaurants and cafes: Delhi High Court restrains the use of ‘China Social’ for Cloud Kitchens.
In a case filed by Impresario Entertainment, the owner of the Mark, Social, for restaurants, cafes, and other food outlets, the Delhi High Court granted an interim injunction restraining the defendant from using ‘China Social’ for cloud kitchens. Impresario runs restaurants and cafes under different brands such as Social, Smoke House Deli, Salt Water Cafe, The Tasting Room, Flea Bazar, etc. It stated before the Court that it had a unique trade dress and food/beverage services and that its trademarks had acquired goodwill among consumers. As per the company, its revenues were more than 473 Crore Rupees in 2022, and its advertisement expenses were in excess of 30 Crore Rupees.
Noting that Impresario had made out a prima facie case for infringement and passing off, the Court granted the interim order.
Citations: Impresario Entertainment And Hospitality Pvt. Ltd. Vs. China Social Through Its Proprietor [CS(COMM) 702/2023 and I.A. 19541-19545/2023]
Delhi High Court grants Dynamic Injunction against use of ‘Burger King’ domain names and infringing business activities through the said domain names.
In a case involving the domain names ‘burgerkingfoodindia.com’ and ‘https://burgerkingfranchisesindia.com/’, the Delhi High Court granted a dynamic injunction restraining the defendants from using the said domain names and carrying out business with the trademark, Burger King. The Court granted this injunction following several injunctions granted in favour of Burger King against defendants who were defrauding the public by issuing fraudulent franchises. The Court asked the Domain Name registrar to transfer the infringing domain names to the plaintiff and stated that the injunction would apply to future domains as well as infringing parties, who may be impleaded by filing an application.
Citation: Burger King Corporation Vs. Swapnil Patil and Ors. [CS(COMM) 303/2022 & I.A. 24159/2023]
Conclusion
These cases indicate that trademark infringers online and offline cannot get away by adopting identical marks and logos. Courts in these cases have passed broad orders restraining the use of the marks online as well as offline.
Acquiring trademark registrations and building good will with respect to the marks among consumers can help companies stop infringers through pre-court and Court actions. Trademark registrations in India are today more valuable in protecting brand value, and companies must seek to build strong trademark portfolios to build and safeguard their brand value.
Disclaimer
The case notes 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.
If you have any questions, speak with a Trademark expert/attorney – [email protected] or 91-80-26860414/24/34.
