This week’s trademark updates are as follows:
A hot win for ‘Chaayos’.
In the matter of SUNSHINE TEAHOUSE PVT. LTD. v. MTRM GLOBAL PVT. LTD., the plaintiff, owner of the trademark- Chaayos had approached the Delhi High Court against the usage of the mark- Chaiops by the defendants. The suit was filed in September seeking permanent injunction and restraining unauthorised use of the mark by the defendants. The matter was referred to mediation last month which failed and further options to settle the dispute were explored. Finally, the parties settled the dispute on October 12, 2022. The defendants agreed to change the name of their outlets to ‘ChaiApps’. This change shall reflect from April 1, 2023. Justice Pratibha M Singh recorded the settlement and stated that, “The defendant shall withdraw their currently pending trademark applications before the Trademark Registry for the trademark “Chaiops” or its variants within one week of this settlement and e-mail the proof of having done so to the counsel for the Plaintiff”.
Well-known mark RAJNIGANDHA secures itself a win.
In the current matter, the defendants were found to be infringing the name and trade dress of the famous brand- ‘RAJNIGANDHA’. The defendants had notoriously launched their brand- ‘Rajni Paan’ with a similar colour scheme and trade dress. A Single Judge Bench of Justice Jyoti Singh, allowed the petition and passed an ex-parte injunction. The Court held that the defendants had intentionally attempted to “trade off the significant goodwill and reputation of the plaintiffs” and directed them to pay Rs. 3 Lakhs in damages. The Court observed that, “The packaging of the impugned product has been designed in an identical colour scheme, font and labels, to give an overall look and feel of the Plaintiffs’ products under the RAJNIGANDHA marks, which, as rightly contended by the Plaintiffs, has been done intentionally to trade off the significant goodwill and reputation of the Plaintiffs in their RAJNIGANDHA marks. It is obvious that there is a dishonest adoption by the Defendants and Plaintiffs have made out a case of infringement and passing off”. The Court further stated that, “Given that the trademark RAJNIGANDHA is a “well-known” mark as defined under Section 2(1)(zg) of the Act and entitled to a high degree of protection, even in cases of dissimilar goods the owner of the mark is required to be shielded”.
PEPS INDUSTRIES PRIVATE LIMITED v. KURLON LIMITED
In the present matter, the Delhi High Court observed that the Courts are not at liberty to suo moto question the legitimacy of a trademark registration unless the same has been disputed. “Therefore, once the mark has been registered, it is accepted as, prima facie, valid unless an objection is raised questioning the validity of the registration and is adjudicated by the Court,” the Court further observed. The bench consisting of Justice Vibhu Bakhru and Justice Amit Mahajan added that if the owner of a trademark fails to show that a descriptive mark has obtained distinctive character as a result of long use, rectification proceeding can be initiated against it. The Court made these observations while deciding the matter between Peps Industries and Kurlon Limited. Peps had sought for permanent injunction against Kurlon for using the trademark ‘NO TURN’.
Interpreting the synonyms: Plant or Tree
While deciding upon a matter between Vinita Gupta v. Amit Arora, Justice Jyoti Singh, made interesting observations on synonyms being used by trademark owners. Justice Jyoti was deciding upon a classic case of infringement where synonyms were being used by two different trademark owners thus causing consumer confusion. In the instant case, two similar trademarks- APPLESTREE and APPLEPLANT were being used by two different manufacturers for similar goods/services. The Plaintiffs were the proprietor of the mark ‘APPLESTREE’ whereas the Defendants were using the mark- ‘APPLEPLANT’ for identical goods. The Court observed that the use of the word ‘plant’ and ‘tree’ would cause great consumer confusion as both words are used interchangeably especially since the marks are being used for identical products. “No purchaser, while buying the products such as Abrasive Paper, will dissect the trademark to find a scientific (botanical) difference between a PLANT and TREE, especially when both are even otherwise synonymous to each other. A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion”, the Court stated while passing an interim injunction preventing the sale, advertisement or promotion of any product under the mark ‘APPLEPLANT’ or any other mark deceptively similar to ‘APPLESTREE’. Justice Singh commented on synonymy, “Synonymy would cover the semantic field where words have nearly the same meanings such that they can be interchanged in some degree and most common cases under this head are of relative synonymy as it is difficult to find words which are absolute synonyms of each other,” said Justice Singh. She further added, “As an illustration, under this concept, purple, pink, white, brown, violet etc. would fall under the genus ‘colours’ and similarly, knives, spoons, forks would have a semantic relationship with the genus ‘cutlery’.”
Promoting Indian GIs around the world
The Government of India along with The Ministry of Commerce and Industry aims at promoting Indian GIs (Geographical Indications) across all countries. Various steps have been taken up to promote the GIs of India. A few recent ones are:-
- Recently various GI registered handicrafts were showcased at Shilpkala Utsav, a three-day craft and textile fair in Delhi. “The celebration of art and crafts has been at the heart of our endeavor. It is always challenging to get women artisans from the grassroots but we succeeded in enrolling new participants each year and keeping buyers interested in traditional handmade crafts. This year, Shilpkala Utsav showcases many unique handicrafts registered as Geographical Indications,” says Ritu Singhal, convener, of Shilpkala Utsav.
- The Government aims at promoting various registered GIs of India through virtual Buyer Seller Meets for agricultural and food products with the UAE including handicrafts, with the United States.
Authored by Lavanya Anand (Associate, BananaIP Counsels)
This post is brought to you by BananaIP Counsels’ Trademarks and Copyright Attorneys
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