03 Feb DIGEST OF IMPORTANT INTELLECTUAL PROPERTY CASES DECIDED IN 2019- TRADE MARK, PATENT, COPYRIGHT

The appellants have proved that they are prior registered user of the trademarks in question and have also established a case of infringement of registered trademarks hence the suit is decreed in favour of the appellants and against respondents

Hsil Limited          V/S               Sanjay Ceramic Works

The present suit is filed by the appellants HSIL Limited., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademark and copyright, misrepresentation, passing off, unfair competition, dilution, delivery up and damages against the respondents. [CS (COMM) 882/2018 and I.A. 6822/2018, Decided On: 08.01.2019]

The appellants HSIL Limited are engaged in business of homecare solutions, including the manufacture and sale of sanitary ware and bathroom products, kitchen appliances, container glass products etc. under the mark HINDWARE as well as several supplementary marks such as H VITREOUS, HINDWARE, HSIL etc. The appellants are the proprietor of the trademark H VITREOUS HINDWARE which was first registered by the plaintiff in 1990 in various stylised representations under Classes 11, 21, 37, 40 and 42 of the Trade Marks Act, 1999. According to the appellants during an investigation conducted by them in January, 2016, it was revealed that the respondents were selling sanitary-ware products using a mark that was deceptively similar to the appellant’s registered trademark namely, H VITREOUS or HINDUSTAN VITREOUS.

The appellants state that the respondents have their own brand named ‘EAGLEWARE’ and ‘SANITATION’ which has no relation to the appellant’s trademarks H VITREOUS/HINDUSTAN VITREOUS. It is the contention of the appellants that the respondents have adopted the appellant’s trademark H VITREOUS /HINDUSTAN VITREOUS with the dishonest intention to take advantage of the goodwill and reputation of the appellants’ and with a view to confuse the public into believing that the respondents are associated with the appellants.

Hence the appellants have filed the present suit for a decree of permanent injunction restraining the respondents and anyone acting for and on their behalf from using the trademark HINDUSTAN VITREOUS or H VITREOUS or any other mark that is deceptively similar to the trademarks of the appellants’ on its products thereby resulting into infringement of the trademarks of the appellants or resulting in passing off its goods as that of the appellants or in any manner misrepresenting or holding out to be connected or related to the appellants in any manner whatsoever.

Prior to the present suit the court had on 16th May, 2018 granted an ex parte ad interim injunction in favour of the appellants and against the respondents.

The court in the present suit opined that appellants had proved that they were prior registered user of the trademarks in question and had also established a case of infringement of registered trademarks, misrepresentation and unfair competition, passing off and dilution, blurring and tarnishment in their favour. Further according to the court the respondents had no real prospect of defending the claim as the evidence of the appellants has gone unrebutted. However, the court also highlighted that with regards to the  prayer  for delivery up, according to the court the appellant was not entitled to a decree of delivery up of the infringing materials as the same were seized in the prior suit i.e. CS(COMM.) 1629/2016 and not in the present suit. Also as the appellants had not led any evidence with respect to the quantum of damages suffered by them, the court stated that the same cannot be granted. Thus, in view of the above the suit was decreed in favour of the appellants and against respondents.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VII Rule 10; Code of Civil Procedure, 1908 (CPC) – Section 20; Trade Marks Act, 1999 – Section 134

The respondents had no real prospect of defending the claim, as they neither entered appearance nor filed a written statement, hence the present suit was decreed in favour of the appellants

Hugo Boss Trade Mark Management Gmbh & Co. KG   V/S   Sheeta Sabharwal

The present suit is filed by the appellants Hugo Boss Trade Mark Management Gmbh & Co. KG, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademarks, passing off, unfair trade practices, delivery up, rendition of accounts and damages. [CS (COMM) 1236/2018 and I.A. 15717/2018, Decided On: 11.01.2019]

The appellants in the suit Hugo Boss Trade Mark Management Gmbh & Co. KG are a global manufacture and merchant in clothing and apparel for men and women, luxury items, fashion accessories, perfumes, leather goods, cases and bags etc. in India and throughout the world. The appellant’s company HUGO BOSS GmbH was incorporated in Germany in 1948 and appellants adopted the mark BOSS HUGO BOSS in 2003. The appellants state that their marks BOSS, BOSSHUGO BOSS and other BOSS formative marks are registered in Classes 9, 14, 18, 25, and 35 under the Trade Marks Act, 1999 and vide assignment deed dated 23rd December 2004, the aforesaid registrations were assigned in favour of the appellants. The appellants are also the owner of the website www.hugoboss.com which exclusively sells their products under the aforesaid marks.

According to the appellants the in July, 2018 they came across a store bearing the impugned name BOSS BIG BOSS, located in New Delhi, which was virtually identical to the appellant’s well-known trademarks BOSS and BOSS HUGO BOSS. Upon further investigations it was revealed that the respondents were operating two Facebook pages under the names ‘Big Boss Branded Clothes’& ‘DS Big Boss’, which was prominently displayed on the hoarding of the respondent’s store as its profile and cover photo. It is further stated that the respondents were also operating a web page http://big-boss-clothes-showroom.business.site, wherein they claimed to be a ‘Big Boss Designer Clothes Showroom’.

Hence the appellants filed the present suit requesting for a permanent injunction whereby the respondents are restrained from   manufacturing, promoting, advertising and offering for sale any product bearing the impugned mark BOSS BIG BOSS or BIG BOSS or any other mark deceptively or confusingly similar to the appellant’s well known trademarks BOSS, BOSS HUGO BOSS and other BOSS formative marks as a trademark or trade name, part of a company name or a domain name or part of a domain name or in any other manner whatsoever so as to infringe the appellant’s registered trademarks and formative marks.

Vide order dated 19th November 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents and also despite service none had entered appearance on behalf of the respondents.

A physical investigation conducted by the appellants had revealed that the respondents had adopted the impugned mark a year ago though the same could not be verified.  Also a conversation with the store manager revealed that the respondents claimed to be only using the impugned mark BIGG BOSS and BOSS BIG BOSS for the name of their store and did not sell products under the impugned marks.

The court in the present case opined that the respondents had no real prospect of defending the claim, as they had neither entered appearance nor filed a written statement. Hence in view of the above, the present suit was decreed in favour of the appellants and against the respondents along with the actual costs. The appellants were also given the liberty to file on record the exact cost incurred by them in adjudication of the present suit, if not already filed. Further the respondents were also directed to cancel their impugned webpage https://big-boss-clothes-showroom.business.site and social media websites.

The appellants are the registered owners of the trademarks and the respondent has no real prospect of defending the claim, as he neither entered appearance nor filed a written statement hence the present suit is decreed in favour of the appellants

Citigroup Inc.                 V/S               Puneet Motwani

The present suit is filed by the appellants Citigroup Inc., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of registered trademarks, passing off, dilution of trademark and unfair competition. [CS (COMM) 1112/2018 and I.A. 12345/2018, Decided On: 29.01.2019]

The appellants are a company established under the laws of the State of Delaware and are internationally renowned and world leaders in banking and financial services. They own renowned marks CITI, CITI and Arc Design , CITIBANK, CITIGROUP, CITIFINANCIAL, CITI WEALTH ADVISORS and a number of other well known CITI family marks. The appellants state that the mark CITI was first founded in 1812 and that they obtained their earliest registration for the mark CITIBANK under Class 09 of the Trade Marks Act on 15th April, 1982 with earliest use of CITI being 30th January, 1979. It is further stated that the appellants are the registered proprietors of the marks CITI, CITI with ARC Design and CITIGROUP and several CITI formative marks under Classes 02, 04, 09, 16, 35, 36 and 42 of the Trade Marks Act, 1999. The appellants also have a strong presence on the internet under the domain names ‘citi’, ‘citibank’, ‘citigroup’, ‘citicorp’ and ‘citicards’ and their websites www.citicorp.com, www.citibank.com and www.citi.com amongst others serve as a tool for banking and financial services, including secure online banking.

The appellants state that the respondent was employed with their Indian subsidiary Citigroup Global Markets India Private Limited between 08th June 2015 and 25th August 2015.

On 09th September 2018, the appellants gained information that the respondent was carrying on business under the name and style of CITI WEALTH ADVISORS, Citigroup Global Markets India Private Limited and offering fraudulent schemes and products. Further the respondent had unauthorisedly mentioned his ex-employers address i.e. Citigroup Global Markets India Private Limited, Ground Floor, Jeevan Vihar Building, 3 Sansad Marg, Parliament Street, New Delhi – 110001 as his own and also was displaying the email id puneet.motwani@citi.com on his business card, which was the exact name and style as the appellants’ email IDs for their employees. The respondent had also shared an application form for the fraudulent scheme CW MILLION OPPORTUNITIES FUND, which contained the appellants’ registered trademarks CITI and CITI with ARC Design as well as the impugned name CITI WEALTH and the impugned logo, which were identical and confusingly similar to the trade name of the appellants’. Also an online investigation further revealed that on 03rd August, 2018, the respondent became the registered owner of the domain name www.citiwealth.in.

It is the appellants’ plea of that the respondent’s adoption and fraudulent use of the impugned marks is with the intent to usurp and take unfair advantage of the reputation of the appellants’ well-known trademarks CITI, CITI with ARC Design and trade name CITI WEALTH ADVISORS, CITIGROUP GLOBAL MARKETS INDIA PRIVATE LIMITED. Further the respondent’s use of the abbreviation CW on his website and CITI WEALTH on the application form displays the respondent’s mala fide intent to try and portray that he is somehow associated with the appellants. It is further stated that the activities of the respondent amount to infringement of the appellant’s trademarks.

Hence the appellants filed the present suit for a permanent injunction restraining the respondent from carrying on any business under the mark and trading name CITI, CITI WEALTH ADVISORS, CW, CITIGROUP GLOBAL MARKETS INDIA PRIVATE LIMITED and CITI with ARC Design or in any other manner holding themselves out as agents of or masquerading as the appellants. The respondent was also to be restrained from offering investments applications under the name CW MILLION OPPORTUNITIES FUND, CW DIVERSIFIED FUND and CW QUANT MULTIPLIER FUND or in any other name whatsoever so as to misrepresent the investment as that of the appellants, or using the impugned mark CITI, CITIGROUP and CITI with ARC Design or any other mark which was deceptively or confusingly similar to the appellants’ registered trademarks CITI, CITIGROUP and CITI with ARC Design and CITI Formative marks either as a trademark or part of a trademark, trade name or part of a trade name, company name or a domain name and providing services so as to infringe the appellants’ registered trademarks and formative marks. Vide order dated 13th September 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondent. Further the right of the respondent to file his written statement was closed vide order dated 18th January 2019 since despite service none entered appearance on behalf of the respondent.

In the opinion of the court, the respondent had no real prospect of defending the claim, as he had neither entered appearance nor filed a written statement. Further, the appellants were the registered owners of the trade marks in question and hence, in view of the above, the present suit was decreed in favour of the appellants and against the respondent. The appellants were also given liberty to file on record the exact cost incurred by them in adjudication of the present suit and the respondent was directed to transfer the impugned domain name www.citiwealth.in to the appellants or their assignee.

The use of the mark MILLENNIUM by the respondents would result in infringement and passing off and hence the appellants were entitled to the decree of permanent injunction

Millennium Automation & Systems Ltd.  V/S  Celkon Impex Pvt. Ltd.

The present suit is filed by the appellants Millennium Automation & Systems Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking a permanent injunction for infringement and passing off as also rendition of accounts against the respondents. [CS (COMM) 1229/2016, CC (COMM) 26/2017, I.As. 16045 and 18183/2014, Decided On: 15.01.2019]

The appellants in the present suit claim to be the owners of the trademark MILLENNIUM, adopted by them in year 1999 and which is used by them for products and services in the IT industry. The word MILLENNIUM is claimed to be a registered trademark of the appellants in class 9. The appellants state that they supply their products and render services to various government departments including the defence sector. The appellants also have a website-www.millenniumsystem.com and the products sold by the appellants include computers, computer software, laptops, tablets and mobile phones.

It is stated by the appellants that in July 2014, they acquired knowledge of the respondents’ use of the mark MILLENNIUM in respect of mobile phones under the mark ‘CELKON MILLENNIUM’. The appellants also came across an advertisement dated 11th August 2014, in the Delhi Times, a supplement to the Times of India. The appellants then effected a purchase of the respondents’ products on www.snapdeal.com and thereafter filed the present suit.

It is the plea of the appellants that a decree of permanent and prohibitory injunction be passed, restraining the respondents from reproducing, selling, marketing, advertising or in any manner dealing in the infringed trademark ‘MILLENNIUM’ or any other deceptively similar trademark.

A perusal of all the documents filed in the court show that the appellants claim right in the mark MILLENNIUM by virtue of the assignment deed dated 19th April 2001. Further the appellants have also placed on record the certificate for trademark no. 1089675 which is for the MASL logo along with the word ‘Millennium’ and certificate for trademark registration nos. 865691 and 1123697 which are for the ‘Millennium’ globe logo. Thus the appellants have clearly proved themselves to be the registered owners of the mark MILLENNIUM.

Also on numerous occasions none appeared for the respondents to conduct the cross-examination thereby resulting into the matter being placed before the court presently and on the date of the present suit too there was no appearance on behalf of the respondents and accordingly, the respondents were proceeded ex-parte.

According to the court in case of the present suit apart from the registration, the other documents placed on record show that the appellants have been using the mark MILLENNIUM not only as a trademark and in logo form but also as a prominent and essential part of their corporate name. The court further stated that the said goodwill was liable to be protected and use of the mark MILLENNIUM by the respondents in respect of mobile phones would severely impinge upon the appellant’s rights.

The court highlighted that the respondents in their written statements and counter claim had primarily claimed rights in the word mark ‘CELKON’, stating that the word MILLENNIUM was a generic mark. Further in their counter claim, the respondents had prayed for damages on the ground that they had to spend a huge sum of money in marketing of MILLENNIUM branded products. But according to the court the respondents have no justification for adoption of the mark ‘MILLENNIUM’ and even a basic trademark search would have revealed that the appellants had registered the mark MILLENNIUM in class 9. The court asserted that in any event, the adoption of the mark MILLENNIUM by the respondents even if done innocently, did not confer any protection in respect of violation of the rights of the appellants who were clearly the prior user of an identical mark. According to the court use of the mark MILLENNIUM by the respondents would result in not only infringement but would also in passing off the respondents’ product as that of the appellants as the word ‘Millennium’ was an essential and prominent feature of the trademark of the appellants.

The court concluded that the appellants were entitled to the decree of permanent injunction and were also granted costs of Rs. 2 lakhs in the suit. Further the counter claim of the respondents was dismissed as no case was made out for grant of damages in favour of the respondents.

  Cases Referred: The Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd.

As the evidence of the appellants had gone unrebutted the suit was decreed in favour of the appellants and against respondents

HSIL Limited                     V/S               Gujrat Ceramic Industries

The present suit is filed by the appellants HSIL Limited, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademark and copyright, misrepresentation, passing off, unfair competition, dilution, delivery up and damages against the respondents. [CS (COMM) 808/2018 and I.A. 5185/2018, Decided On: 08.01.2019]

The appellants are engaged in the business of homecare solutions, including the   manufacture and sale of sanitary ware and bathroom products, kitchen appliances etc. under the mark HINDWARE as well as several supplementary marks such as H VITREOUS, HINDWARE, HSIL etc. The appellants claim to be the largest Indian   facturer of sanitary ware products with a dominant one-third market share in the industry. The appellants are the proprietor of the trademark H VITREOUS HINDWARE which was first registered by them in 1990 and their mark H VITREOUS HINDWARE is registered in various stylised representations under Classes 11, 21, 37, 40 and 42 of the Trade Marks Act, 1999.

The appellants state that during an investigation in 2016 conducted by them it was revealed that the respondents were selling sanitary-ware products using a mark that was deceptively similar to the appellants’ registered trademark, namely H VITREOUS in conjugation with the former corporate name of the appellants’ HINDUSTAN. The appellants had instituted a suit for permanent injunction restraining the respondents from using their trademark H VITREOUS/ HINDUSTAN VITREOUS on its products. Further on 12th August 2016, an ex-parte ad interim injunction was granted in favour of the appellants and a Local Commissioner was also appointed to seize the infringing products. During the execution of the Commission in New Delhi, over 1655 infringing products were seized and returned on superdari. But vide judgment and order dated 13th February, 2018, the court had allowed the respondents’ application and returned the appellants’plaint on the ground of lack of territorial jurisdiction. However while returning the plaint, the court had reserved the right of the appellants to re-file the suit after establishing the jurisdiction.

Hence the appellants filed the present suit on 13th April praying for a decree of permanent injunction restraining the respondents from using the trademark HINDUSTAN VITREOUS or H VITREOUS or any other mark that was deceptively similar to the trademarks of the appellants on their products or in any other manner thereby resulting into infringement of the trademarks of the appellants.

The appellants asserted that the respondents had their own brand name ‘GCI’ which had no relation to the appellant’s trademarks H VITREOUS or HINDUSTAN VITREOUS. It is the contention of the appellants that the respondents have adopted their trademark with the dishonest intention to take advantage of the goodwill and reputation of the appellants and with a view to confuse the public into believing that the respondents were associated with the appellants.

The appellants further state that the court has the jurisdiction to entertain the present suit under Section 20 of the Code of Civil Procedure, 1908 and Section 134 of the Trade Marks Act, 1999 as the appellants carry on business from their office in New Delhi and because the appellants also have credible information that the respondents’ infringing products were   manufactured  and available for sale and distribution in New Delhi.

In the opinion of the court, in case of the present suit the respondents had no real prospect of defending their claim as the evidence of the appellants had gone unrebutted. Hence in view of the above, the present suit was decreed in favour of the appellants and against respondents.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 20; Trade Marks Act, 1999 – Section 134

The appellants are the prior users and adopters of the mark and hence, the use of a mark by the respondents would constitute to violation of the appellants’ rights under Section 29(1), 29(2) and 29 (5) of the Act

Shree Rajmoti Industries         V/S             Rajmoti Foods Products

The present suit is filed by the appellants Shree Rajmoti Industries, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of trademark, passing off, delivery up, etc. [CS (COMM) 335/2018 and I.A. 10666/2014, Decided On: 07.02.2019]

The appellants Shree Rajmoti Industries has filed the present suit seeking permanent injunction restraining infringement of trademark, passing off, delivery up, etc. The appellants state that they adopted the mark ‘RAJMOTI’ in the year 1962 as a trademark, trade name and a prominent part of their trading style and that the mark ‘RAJMOTI’ is registered both as a word mark and as a label mark in various classes. The appellants are primarily using the mark ‘RAJMOTI’ in respect of edible oil and their products are advertised and publicised through the website www.rajmoti.com. According to the appellants they claim to have copyright registrations in ‘RAJMOTI’ label and artistic style of writing.

The appellants state that, they came to know of a trademark application filed by the respondents, M/s. Rajmoti Foods Products seeking registration of the mark ‘RAJMOTI BRAND’ (application no. 2322047) in class 30, claiming user-ship since 1st April, 1995 for products such as flour, coffee, tea, sugar, rice, yeast, baking powder, sauces etc.

The case of the appellants is that the use of the word ‘RAJMOTI’ both as a trademark and in the logo as also part of the trading style of respondents constitutes to infringement and passing off. Hence the appellants filed the present suit seeking a decree of permanent injunction restraining the respondents from   facturing, selling, soliciting, exporting, advertising or by any other mode dealing with or carrying on their business under the impugned trademark RAJMOTI BRAND or any other trademark, identical with or deceptively similar to the appellants’ aforesaid trademark or trade name consisting of the word RAJMOTI and from doing any acts amounting to infringement of the registered trademarks of the appellants.

With reference to the present suit the respondents were proceeded ex-parte on 13th March, 2018.

The court in the present suit noted that there was no doubt that the respondents had applied for registration of the mark ‘RAJMOTI’, which was identical to the mark of the appellants. A perusal of the respondents’ trademark application showed that the respondents were not only claiming user of the mark ‘RAJMOTI’ from 1st April, 1995 but is also using the trading style “Rajmoti Foods Products”. Further the products, for which the respondents had made the application, were in class 30. The court highlighted that the trademark ‘RAJMOTI’ was registered in favour of the appellants’ both as a label mark and a word mark and that the appellants had been diligent in protecting their rights, inasmuch, as soon as they acquired the knowledge of the respondent’s mark, they immediately filed objections to the same before the Trademark Registry.

Further, in the present suit, steps had been taken for serving the respondents repeatedly. The service report on record also showed that the factory of the respondents was closed and that the Bailiff, in fact, had visited the premises of the respondents on 25th July, 2014 and 1st August, 2014.

The court in the present case concluded that the appellants’ trademark ‘RAJMOTI’ had been in use since at least 5 decades and that the appellants were the prior users and adopters of the mark hence, the use of a mark either upon goods or as a trading style would constitute violation of the appellants’ rights under Section 29(1), 29(2) and 29 (5) of the Act.

Accordingly, a decree of permanent injunction was granted in favour of the appellants and against the respondents and the respondents were restrained from using the mark ‘RAJMOTI’ either as trademark or as a trade name in relation to food products or any other goods which were cognate and allied to edible oil.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 135 (2) (c), Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 2(c), Trade Marks Act, 1999 – Section 29, Trade Marks Act, 1999 – Section 29 (5), Trade Marks Act, 1999 – Section 29(1), Trade Marks Act, 1999 – Section 29(2)

The respondents had made use of a deceptively similar trademark in relation to identical goods having an identical trade channel and hence the suit was decreed in favour of the appellants and against the respondents

Hira Sweets & Confectionary Pvt. Ltd.    V/S    Hira Confectioners

The present suit is filed by the appellants Hira Sweets & Confectionary Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement and passing off of trademark, copyright, damages, delivery up etc. [CS (COMM) 17/2018, I.As. 218/2018, 219/2018 and 16420/2018, Decided On: 01.02.2019]

The predecessors of the appellants started the business of selling sweets with one outlet on the outskirts of Delhi (Shahdara) in 1912 and conceived and adopted the trademark/label HIRA SWEETS in 1960. The appellants became the registered proprietor of the mark and device HIRA SWEETS under Classes 29, 30, 32 and 43 of the Trade Marks Act, 1999 in 2016.

Further the appellants through their predecessors are also the original conceivers, adopters and users of the artistic work HIRA SWEETS, the same being original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 having unique colour combination, layout, lettering style etc. since 1960. The appellants also stated that, since their adoption of the trademark HIRA SWEETS they have been continuously doing business of preparation and sale of sweets, namkeen, pastry, biscuits, chocolates, bakery items, ice creams, soft drinks etc. and that they enjoy immense goodwill and reputation in the said business, using the trademark/label HIRA SWEETS.

The appellants have highlighted that in 2014 the respondents applied for registration of the trademark HIRA under Class 30 of the Trade Marks Act, 1999 claiming user since 12th November 2008. According to the appellants, it was in the second week of November 2015, that the appellants came to know through market sources regarding the unauthorized and illegal use of the similar trademark HIRA CONFECTIONERS by the respondents in an identical business of identical goods as that of the appellants. It is further stated by the appellants that they issued a cease and desist notice on 23rd November 2015 and a reminder notice on 26th February 2016 to the respondents, to which the respondents requested the appellants to not to take any legal action, further promising to stop using the mark HIRA CONFECTIONERS. But the respondents instead of closing the their outlet had opened another outlet in Sector-12, Dwarka, New Delhi and were doing business in the name of HIRA CONFECTIONERS.

It is the contention of the appellants that that the respondents had adopted a trademark/ name HIRA CONFECTIONERS which was identical with and deceptively similar in each and every aspect, including phonetically, visually and structurally to the trademark/ name of the appellants’. According to the appellants such an imitation in exactitude was bound to confuse and deceive the consumers. The appellants have appealed that the respondents adopted and started using the impugned trademark/label HIRA CONFECTIONERS in respect of impugned goods with a view to take advantage and trade upon the reputation and goodwill of the appellants and further with a view to create confusion to pass off their impugned goods and business as those of the appellants.

Hence the appellants filed the present suit for a permanent injunction to restrain the respondents from   facturing, selling, advertising or directly and indirectly dealing in impugned goods and business included in Class- 30 and 43 bearing the impugned trademark/trade name HIRA CONFECTIONERS or any other trademark as may be identical with or deceptively similar to appellants’ said trademark HIRA SWEETS, thereby resulting into infringement of the trademark/ name of appellants.

Vide order dated 08th January, 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents. Though the respondents had entered appearance and filed their written statement, however as none had appeared for the respondents on the last two dates of hearing, the respondent’s right to file admission/denial was closed on 25th January, 2019 and it was proceeded ex parte.

According to the court the respondents had no real prospect of defending their claim, as although they had entered appearance and filed the written statement, they had not conducted admission denial and had stopped appearing. Further, the appellants were the registered owners of the trademarks in question. The court in the present suit further opined that the triple identity test was also satisfied, as the respondents has made use of an identical/deceptively similar trademark in relation to identical goods having an identical trade channel. Thus in view of the above, the present suit was decreed in favour of the appellants and against the respondents.

  Acts/Rules/Orders: Copyright Act, 1957 – Section 2(c)

The respondent’s marks constitute to a violation of the statutory and common law rights of the appellants and hence, the suit is decreed in favour of the appellants and against the respondents

Make my Trip (India) Private Limited    V/S    Make My Happy Journey

The present suit is filed by the appellants Makemy Trip (India) Private Limited, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademarks, copyrights, passing off, dilution of goodwill, unfair competition, rendition of accounts of profits, damages, delivery up etc. [CS (COMM) 1211/2018 and I.A. No. 15013/2018, Decided On: 08.02.2019]

The appellants company was incorporated in the year 2000, and started its business initially with airline booking. It is today one of the largest travel companies in India and has expanded into range of products and services beyond online and travel booking. The appellants state that they were originally incorporated with the name ‘Travel by web Private Limited’ and subsequently on 28th June 2002, changed their name to the current name i.e., MakeMyTrip (India) Pvt. Ltd. The appellants averred that they primarily work through their website, www.makemytrip.com, and mobile applications and that the domain name makemytrip.com was registered on 08th May, 2000 in the name of the founder of the appellant’s company.

The appellants also stated that they have been continuously and uninterruptedly using the marks MakeMyTrip (hereinafter referred to as “Make MyTrip Word Mark”, “MakeMyTrip logo marks”) and the domain names, (herein after collectively referred as “MakeMyTrip domain names”) and that the MakeMyTrip marks are invented marks and have earned immense reputation and goodwill. The appellants are the registered proprietor of at least 15 MakeMyTrip marks under various Classes of the Trade Marks Act, 1999 over and above several foreign registrations.

The appellants state that in June 2018, they came to know about the respondents while browsing through the internet. On further investigation the appellants came across the website of the respondents, wherein the respondents were offering online services of booking flight tickets (and tour bookings), hotel reservations, etc., which are services identical to that of the appellants. The perusal of the respondent’s website showed that apart from using the word mark ‘MakeMyHappyJourney’ which was deceptively similar to the appellants’ ‘MakeMyTrip’ word mark, the respondents on their impugned website were also using an infringing logo which contained the infringing word mark ‘MakeMyHappyJourney’.

The appellants state that on 20th June 2018, they issued a cease and desist notice to the respondents to stop using all the infringing marks and domain names, but despite delivery, no response was received till date.

It is the contention of the appellants that respondents’ mark ‘MakeMyHappyJourney’ is phonetically, visually, structurally and conceptually similar to their registered mark ‘MakeMyTrip’. The appellants state that the infringing word mark, which constitutes a predominant feature of the infringing logo marks and the infringing domain name is phonetically, visually, structurally and otherwise deceptively and confusingly similar to their MakeMyTrip word mark and MakeMyTrip logo marks and the colour scheme of the respondent’s infringing logo marks is also identical to that of the appellant’s ‘MakeMyTrip’ logo marks.

According to the appellants the respondent’s adoption of the aforesaid impugned marks for identical services create a sense of collaboration or nexus between the appellants and the respondents in the minds of the public and thereby cause unwary costumers to confuse the respondent’s business for that of the appellants. The appellants state that the respondents are brazenly attempting to usurp the dominant features of their MakeMyTrip marks and ride upon the reputation and goodwill of the appellant’s MakeMyTrip marks.

Hence the appellants have filed the present suit pleading for a decree of permanent injunction restraining the respondents from using in manner whatsoever for selling, advertising or directly and indirectly dealing in any products or services under, the infringing marks which are identical to or deceptively similar to the appellant’s well known MakeMyTrip Marks, namely, MakeMyTrip (word mark), MakeMyTrip Logo Marks (as set out in the Plaint), thereby amounting to infringement of the appellants’ registered trademarks or undertaking any such activities thereby amounting to passing off of their services as those of the appellants’.

Vide order dated 31st October 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents. Further on 01st February 2019, the respondents were served by way of publication in newspapers however, since despite service, none has appeared for the respondents they were proceeded ex parte.

In the opinion of the court, the respondents had no real prospect of defending the claim in the present suit, as despite service, they has neither entered appearance nor filed a written statement. Further according to the court, the appellants were the registered owner of the trademarks in question. The court also opined that the respondent’s marks constituted to infringement under Section 29 of the Trade Marks Act, 1999 apart from constituting to a violation of the statutory and common law rights of the appellants. Thus in view of the above, the present suit was decreed in favour of the appellants and against the respondents along with actual costs.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 29

As the appellants’ trademark has been declared as a well-known mark it is entitled to the highest degree of protection conferred under law

Aktiebolaget Volvo                V/S               Volvo Holidays

The present suit is filed by the appellants Aktiebolaget Volvo, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademarks, passing off, damages, delivery up, etc against the respondents. [CS (COMM) 1275/2018 and I.A. 16760/2018, Decided On: 13.02.2019]

The appellants are an international automotive and transport vehicle group. The appellants were incorporated on 05th May, 1915 and commenced business of assembling cars in April 1927 and trucks in 1928. The appellants adopted the trademark ‘Volvo’ on 05th May, 1915 and they further state that  the word VOLVO is not found in any authoritative English dictionary and is thus a coined and inherently distinctive trademark which is solely associated with the appellants. The appellants have stated that they have a robust presence under the VOLVO mark in India for several decades and they established an Indian flagship company in India in 1996. The appellants have obtained over 30 different registrations for the trademark VOLVO and also VOLVO Iron Mark in India including under Class 39 under the Trade Marks Act, 1999 and the appellant’s earliest registration in India dates back to 1975.

The appellants state that in October 2018, they received a complaint regarding the respondents’ website www.volvoholidays.co.in from an individual in India on the social networking site www.twitter.com, reporting that the respondents’ aforesaid website was using the Volvo Iron Device Mark. Subsequently, the appellants conducted inquiries which revealed that the respondents were operating the website www.volvoholidays.co.in and the impugned domain name was registered in the name of respondents.

The appellants asserted that the respondents had adopted a device mark which was identical to the appellants’ Volvo Iron Device Mark with a mere addition of the word HOLIDAYS. The appellants also highlighted that the respondents’ infringing website claimed “a proven name in the travel and hospitality industry today” and also claimed to be “…the best architect firm & Building Consultant” and “a New Jersey private inspection facility as well as Certified Emission Repair facility…” further stating that the respondents also offered tour packages and hotel bookings in India as well as other locations such as Bali, Dubai, Hong Kong, Thailand, Malaysia on their website. The appellants highlighted that though the respondents claimed to be a winner of a Travvy Award (a travel award given by a US based entity named travAlliancemedia) it was stated that upon checking with travAlliancemedia, the appellants’ were informed that the respondents’ claims were false.

The appellants issued a cease and desist notice on 08th November 2018 calling upon the respondents to give up all use of the appellants’ trade mark VOLVO and the Volvo Iron Device Mark and to transfer the infringing domain name www.volvoholidays.co.in to the appellants. Though the respondents verbally undertook to take down the website and cease all use of the VOLVO mark and infringing logo they had failed to do so and despite considerable follow up, they continued to use the impugned mark and trading style VOLVO HOLIDAYS and the infringing logo.

The appellants highlighted that their trade mark VOLVO had been declared as a well-known mark as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 by Division Bench of the Bombay High Court and that the well known status of the appellants’ trade mark in India was also recognized by the Trade Marks Registry and that the VOLVO trademark has been inserted in the list of the well known marks maintained by the Trade Mark Registry, as a result of which, the appellant’s trademark was entitled to the highest degree of protection conferred under law.

It is the plea of the appellants that the adoption and use of the mark VOLVO and the impugned domain name www.volvoholidays.co.in and the impugned device mark by the respondents in relation to travel services being provided by them without any authorization from the appellants amounts to infringement of appellants’ registered trademark under Section 29(1), (4) and (5) of the Trade Marks Act, 1999 and passing off. The appellants have further pleaded that the adoption and use of the mark VOLVO by the respondents is likely to cause confusion in the mind of the public and is also likely to mislead the customers into purchasing the respondents’ product and business under the mistaken impression that they originate from the appellants. According to the appellants the respondents’ adoption of the impugned mark VOLVO and the impugned domain name and impugned device mark is clearly designed to ride upon the appellants’ common goodwill and stellar reputation in relation to the VOLVO trademark. Hence the appellants filed the present suit for permanent injunction restraining the respondents from using the mark VOLVO HOLIDAYS or any mark or device similar to the appellants’ trademark, in any manner including without limitation on websites and as a part of the infringing domain name www.volvoholidays.co.in thereby amounting to infringement of appellants’ registered trademarks.

The court in the present suit stated that the respondents had no real prospect of defending the claim, as they neither entered appearance nor had filed written statements. Further, the appellants were the registered owner of the trademarks in question. Thus in view of the above, the present suit was decreed in favour of the appellants and against the respondents along with actual costs and the respondents were also directed to transfer the impugned domain name www.volvoholidays.co.in to appellants.

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 2(1)(zg), Trade Marks Act, 1999 – Section 29(1)

The respondents had attempted to pirate the appellant’s designs and hence the suit was decreed in favour of the appellants

Symphony Ltd.                V/S               Life Plus Appliances

The present suit is filed by the appellants Symphony Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, for permanent injunction restraining infringement of its registered designs and for damages. [CS (COMM) 324/2018, Decided On: 28.02.2019]

The appellants Symphony Ltd. are engaged in the business of   facturing and selling of consumer home appliances including air coolers. The design of three models of air coolers of the appellants company are registered under the Designs Act, 2000. The appellants state that the designs were registered in the name of Mr. Achal Anil Bakeri, who was one of the promoters of Symphony Limited and vide assignment deed dated 30th October 2013, the designs were assigned by Mr. Bakeri to the appellants’ company. Pursuant to the said assignment, the appellants have since been registered as the subsequent proprietor of the three designs and all the three design registrations have been renewed and are valid.

The appellants have filed the present suit against the respondents M/s. Life Plus Appliances on the premise that the respondents commenced   facturing and selling of air coolers, which were replicas of the appellants designs.

The respondents had filed their written statement stating that the designs were prior published. The respondents placed on record the advertisements of the appellants’ products dating back to March 2010 wherein the appellants had advertised various models of air coolers. The respondents also relied upon two trademark applications filed by the appellants for registration of the marks ‘Winter’ and ‘Symphony Sumo’ dated 13th December 2004 and 7th March 2000 respectively. Further, the respondents also pleaded that their designs were different from the appellants’ registered designs. But the appellants had averred that filing of trademark applications did not show that air coolers, bearing the registered designs, were launched at the time when the trademark applications were filed.

Further the respondents had initially appeared in the matter, however since October 2015, the respondents stopped appearing and on 27th April 2017, they were proceeded ex-parte.

The court in the present suit stated that a perusal of the two brochures i.e. the appellant’s and the respondent’s brochures showed that the respondent’s products of air coolers with the model names Tower and Tycoon were substantial imitations of the appellant’s models Symphony Sumo, Symphony Winter and Symphony Storm 70i. Further, though the respondents claim that they had launched the products bearing the marks Tower and Tycoon, the written statement is silent on the aspect as to when the said products were launched. Thus, there is no claim of prior use by the respondents.

The court asserted that the respondents had obviously attempted to pirate the appellant’s designs. According to the court under the law of designs, it is the settled principle that the overall look of the product is to be seen and the same is to be judged with the naked eye, an intricate examination of the design is not to be done. Further, under Section 22 of the Designs Act 2000 the use of any design, which is an obvious imitation of a registered design, constitutes piracy of the registered design. The case of the respondents that the designs are prior published is merely based upon the advertisements and trademark applications of the appellants, both of which have been duly explained by the appellants. Also, the applications for trademark registrations do not constitute prior publication of the designs, as the same only contain the model names and does not contain the photographs of the products.

The court also highlighted that the respondents being ex-parte had chosen not to contest the case and had also not discharged the burden of showing that the designs were prior published. Thus under these circumstances, the court concluded that, there was no reason to disbelieve the appellant’s case and the evidence put up by them.

Hence the suit was decreed in favour of the appellants. Also since the respondents had contested the matter for some time, at least until 2015, and thereafter chose to remain absent, damages of Rs. 3 lakhs were also awarded in favour of the appellants.

Acts/Rules/Orders: Designs Act, 2000 – Section 22

The respondents have no real prospect of defending their claim, as they neither entered appearance nor filed their written statement, hence the present suit is decreed in favour of the appellants

Flipkart Internet Private Ltd.    V/S   www.flipkartwinners.com

The present suit is filed by the appellants Flipkart Internet Private Limited, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for infringement of trademark, passing off, rendition of accounts, delivery up, damages etc. [CS (COMM) 1177/2018 and I.As. 14229/2018 and 14232/2018, Decided On: 26.02.2019]

The appellants are one of the leading online marketplaces in India and own, manage and provide access to their online e-commerce marketplace i.e. Flipkart, in India through the website www.flipkart.com. The appellants’ company’s online platform offers products in various categories and offers for sale a variety of products from almost 11454 brands. The appellants have been operating their aforementioned website continuously since 2007 and also launched the mobile application FLIPKART, in 2011. The appellants are proprietor of various FLIPKART trademarks, logos and devices in various classes under the Trade Marks Act, 1999 and the same are valid and subsisting.

The appellants state that in the fourth week of September 2018, it came to the appellants’ knowledge that the respondents, in disregard to the appellants’ statutory and common law rights, had incorporated the appellants’ trademark ‘Flipkart’ as part of their domain name and were conducting fake lucky draw contests through the impugned websites. It is the contention of the appellants that such an infringing website used by the respondents is likely to give false impression to the innocent public that the website emanates from and is associated with the appellants. The appellants further highlighted that the respondents on their website were not only using the FLIPKART trademark in their domain name, but are also extensively using the FLIPKART trademarks in the website itself in order to falsely represent that the lucky draw contests were being conducted by FLIPKART. According to the appellants the said websites were deceiving the general public into providing their personal information and also asking the public to part with their hard earned monies in order to participate in the lucky draw contests, which were in no way connected with the appellants.

The appellants had also issued takedown notices to the respondents on 29th September 2018 and 5th October 2018, however, no response was received from the respondents.

Hence in light of the above the appellants filed the present suit requesting for an order and decree of permanent injunction restraining the respondents from using the mark “Flipkart” or any deceptive variant thereof which was identical or similar to the appellants’ trademark “Flipkart” in respect of domain name, lucky draw contest or in any other manner thereby amounting to infringement of appellants trademark.

The court had vide order dated 12th October 2018 granted an ex parte ad interim injunction in favour of the appellants.

With regards to the present suit, the court opined that the respondents had no real prospect of defending their claim, as they have neither entered appearance nor filed their written statement. Further, the appellants were clearly the registered and prior user of the trademarks in question. Consequently, the present suit was decreed in favour of the appellants and against the respondents along with actual cost.

  As the appellants are the registered owners of the trademarks in question, hence the suit is decreed in favour of the appellants and against the respondents

Samsung Electronics Co. Ltd.                 V/S               Lakhan A.

The present suit is filed by the appellants Samsung Electronics Co. Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction, infringement of trademarks and copyrights, passing off, unfair competition, dilution, rendition of accounts, delivery up and recovery of damages etc. [CS (COMM) 255/2018, Decided On: 28.02.2019]

The appellants in the present suit, Samsung Electronics Co. Ltd. are a part of Samsung Group of companies which is a South Korean multinational conglomerate company established in Seoul, Korea under the house mark and trademark SAMSUNG. The appellants state that, since inception, they have grown to become one of the world’s most reputed multinational conglomerates globally and have consistently maintained the number one position in the smart phone market since 2012. The appellants are also the registered proprietor of the trademarks Samsung, Samsung Galaxy S and Samsung Galaxy Tab. The appellants state that it came to their knowledge that the respondents were unauthorisedly using their SAMSUNG trademarks for and in relation to mobile phones, accessories and such allied goods. According to the appellants, the acts of the respondents amount to infringement of the appellant’s SAMSUNG trademarks, copyrights and passing off. It is further stated by the appellants that they are entitled to exclusive use of the SAMSUNG trademarks and any unauthorized use thereof amounts to a violation of the appellants’ statutory and common law rights. Further, vide an order dated 14th September 2015, the court had granted an ex parte ad interim injunction in favour of the appellants and had also appointed Local Commissioners to visit the premises of the respondents on zone-wise basis. Accordingly, raids were also conducted on the premises of the respondents on 14th October 2015 and large quantities of infringing goods were recovered from the said premises. As the respondents had not entered appearance they were proceeded ex parte vide order dated 14th February 2019. The court in case of the present suit opined that the respondents had no real prospect of defending the appellants’ claim, as they had neither entered appearance nor filed a written statement and had not conducted admission denial. The court also highlighted that the appellants were the registered owners of the trade marks in question and that the local Commission conducted on the premises of respondents had also found several infringing products. Thus in view of the above, the present suit was decreed in favour of the appellants and against the respondents.

The respondent’s act of using and broadcasting the appellant’s works without a license was deliberate and conscious and hence the court decreed the suit in favour of the appellants

Super Cassettes Industries Pvt. Ltd.   V/S   Kumaon Broadband Company Pvt. Ltd.

The present suit is filed by the appellants Super Cassettes Industries Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of copyright, damages and rendition of accounts. [CS (COMM) 1039/2016 and I.A. 14390/2014, Decided On: 28.02.2019]

The appellants in the present suit are the owner of a large repertoire of sound recordings and underlying works including literary and musical works. The appellants have over 20,000 Hindi film and non-film songs and around 50,000 songs in regional languages in their library and claim that they have launched a large number of well-known singers, music directors and video directors under their banner.

The appellants have filed the present suit against the respondents Kumaon Broadband Company Pvt. Ltd. seeking permanent injunction restraining infringement of copyright, damages and rendition of accounts. The respondents in the present suit are Kumaon Broadband Company Pvt. Ltd., a cable operator providing cable TV services in Haldwani, Uttarakhand. It runs two cable channels-KBC Music and KBC Uttarakhand.

According to the appellants, they received information through their investigator that the respondents, through their two cable channels, were communicating various sound recordings of the appellants’ without a license from the appellants. The appellants got recordings of the respondent’s broadcasts made through their investigator and issued a cease and desist notice on 26th May 2014 to the respondents but the respondents chose not to reply, and hence the present suit was filed by the appellants. It is the plea of the appellants that as the respondents had failed to take a license they were liable to be injuncted.

The court in the present suit stated that a perusal of the pleadings, documents and the evidence on record showed that the appellants are a company involved in the music business. Initially, the appellants used to sell various recordings in the form of cassettes, CD, DVDS etc. however, in view of the change in technological means of accessing music, one of the major sources of revenue for the appellants was through copyright licensing of music. The appellants granted licenses to almost all the well known radio and television stations, broadcasters, as also cable operators and multi operators which broadcast their sound recordings.

Further according to the court the evidence also showed that various songs, sound recordings, copyrights of which were owned by the appellants, had been broadcasted by the respondents. The court further asserted that the evidence on record clearly showed that the respondents were guilty of infringement of the appellant’s copyrights and that the respondents did not have any license but had telecasted and broadcasted the appellants’ copyrighted works on their channels, KBC Music and KBC Uttarakhand.

Further it was also highlighted in the course of the suit that, various attempts were made by the appellants to contact the respondents and to offer them an opportunity to take a license, however the said opportunity had not been availed by respondents. Subsequently, a legal notice was also issued to the respondent, which was also not replied to. It was clear that the respondent’s act of using and broadcasting the appellant’s works without a license was deliberate and conscious. After having acquired knowledge, the respondents ought to have immediately stopped the infringing use. Obviously the respondents chose to contest the matter initially, and thereafter stopped appearing. Hence the court under these circumstances, decreed the suit in favour of the appellants and also awarded them damages to the tune of Rs. 10,00,000/- along with costs in actuals.

  Acts/Rules/Orders: Indian Evidence Act, 1872 – Section 65B

The appellants were the registered owner of the trademarks and hence the suit was decreed in favour of the appellants and against the respondents

Makemy Trip (India) Pvt. Ltd.      V/S      Pravasi Guide Pvt. Ltd.

The present suit is filed by the appellants Makemy Trip (India) Private Limited, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademarks, copyrights, passing off, dilution of goodwill, unfair competition, rendition of accounts of profits, damages, delivery up etc. [CS (COMM) 7/2019 and I.A. No. 200/2019, Decided On: 19.03.2019]

The appellant’s company was incorporated in the year 2000, and started its business initially with airline booking and is today one of the largest travel companies in India. The appellants have expanded into range of products and services beyond online and travel booking. The appellant’s company was originally incorporated with the name ‘Travel by web Private Limited’ and subsequently, on 02nd August 2000 it was changed to ‘MakeMyTrip Pvt. Ltd.’ and on 28th June 2002, the appellants changed their name to their current name i.e. ‘MakeMyTrip (India) Pvt. Ltd.’

The appellants stated that they primarily work through their website, www.makemytrip.com., and mobile applications and that the domain name makemytrip.com was registered on 08th May 2000 in the name of the founder of the appellant’s company. The appellants have been continuously and uninterruptedly using the marks “MakeMyTrip” and their domain names and that the MakeMyTrip marks are invented marks and have earned immense reputation and goodwill. The appellants are the registered proprietor of the MakeMyTrip marks under various classes of the Trade Marks Act, 1999 and have also acquired registration for the trademark “MakeMy” bearing application nos. 3869251 and 3869255 in Classes 09 and 43 under the Trade Marks Act, 1999.

According to the appellants, in May 2018, they came to know about the respondents while browsing through the internet. Further investigations revealed the website of the respondents, wherein the respondents were offering online services of booking flight tickets (and tour bookings), hotel reservations, etc., which were services identical to that of the appellants and were also using the word mark ‘MakeMyPravaas’ which was deceptively similar to the appellants’ ‘MakeMyTrip’ word mark, further the respondents on their impugned website were also using an infringing logo which contained the infringing word mark ‘MakeMyPravaas’.

Consequently on 07th May 2018, the appellants issued a cease and desist notice to the respondents to stop using all the infringing marks and domain names, but despite delivery, no response was received till date.

It is the contention of the appellants that the respondents mark ‘MakeMyPravaas is phonetically, visually, structurally and conceptually similar to the appellant’s registered mark ‘MakeMyTrip’ and that the “MY” formative element in the respondents’ infringing marks is stylized in an identical manner and is also contained in a box, which makes the respondents’ dishonest intent apparent. The appellants further assert that the respondents’ adoption of the aforesaid impugned marks for identical services create a sense of collaboration or nexus between the appellants and the respondents in the minds of the public and may cause unwary costumers to confuse the respondent’s business for that of the appellant’s. According to the appellants the respondents were brazenly attempting to usurp the dominant features of the appellants’ MakeMyTrip marks and ride upon the reputation and goodwill of the appellant’s marks.

Hence the appellants filed the present suit pleading for a decree of permanent injunction restraining the respondents from using in manner whatsoever or dealing in any products or services under the infringing marks, namely MakeMyPravaas (word per se), and MakeMyPravaas Logo, that is,  or any other trademark or logo which is identical to and deceptively similar to or includes the appellant’s well known MakeMyTrip marks, namely, MakeMyTrip Word Marks, MakeMyTrip Logo Marks and MakeMyTrip Domain Names, thereby amounting to infringement of the appellants’ registered trademarks.

On 01st March 2019, the respondents were served, however despite service, none had appeared for the respondents and hence they were proceeded ex parte

In the opinion of the court, the respondents had no real prospect of defending the claim, as despite service, they had neither entered appearance nor filed their written statement. Further, according to the court the appellants were the registered owner of the trade marks in question. The court asserted that the respondents’ infringing marks constituted infringement under Section 29 of the Trade Marks Act, 1999 apart from constituting a violation of the statutory and common law rights of the appellants. Thus in view of the above, the present suit was decreed in favour of the appellants and against the respondents.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 29

Cases Referred: Satya Infrastructure Ltd. and Ors. vs. Satya Infra & Estates Pvt. Ltd.   /DE/0511/2013

The actions of the respondents constitute infringement under Section 29 of the Trade Marks Act, 1999, hence the suit is decreed in favour of the appellants and against the respondents

Time Inc.                             V/S                           Anand Nadar

The present suit is filed by the appellants Time Inc., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent and mandatory injunction for infringement of registered trademark, passing off, unfair competition, delivery up and damages. [CS (COMM) 16/2019 and I.A. No. 443/2019, Decided On: 29.03.2019]

The appellants are a mass media powerhouse and a renowned printer and publisher of international repute inter alia in printed periodicals and publications, newspapers, books etc. The trademark FORTUNE was first used by the appellants in as early as January 1930 in the United States of America and they published their first magazine in India in 2010. The Fortune Magazine is the world’s leading tri-weekly business magazine and is known for its unrivalled access to industry leaders. The appellants are the registered proprietor of the mark FORTUNE under various classes of the Trade Marks Act 1999, with their first registration for the mark FORTUNE in India dating back to 1978.

According to the appellants they first came across the respondents’ website www.fortuneasiaevent.com in November 2018. It is the plea of the appellants that respondents have dishonestly adopted and misused their trade mark FORTUNE by using “Fortune Asia 2018 & CIO awards” as the name for their upcoming conference as well as domain name www.fortuneasiaevent.com on blockchain technology and the marketplace. The respondents had also published a report titled “Fortune Asia Report” on their website which mentioned a Delhi edition of the conference being held at the Leela Ambience, Gurugram. The appellants further asserted that the respondents were using a device mark containing the word mark FORTUNE written in an identical font as that of the appellants. It is further revealed that website was registered on 15th October 2018 in the name of the respondents and that they were using the impugned mark FORTUNE in relation to services which overlapped with the services of the appellants.

The appellants have highlighted that the respondents had dishonestly adopted the trademark FORTUNE to cause confusion amongst the consumers and the use of the trademark FORTUNE ASIA EVENT, FORTUNE ASIA REPORT etc. and domain name www.fortuneasiaevent.com by the respondents was bound to confuse the participating businesses into believing that the said symposium was being organised by the appellants.

Hence the appellants filed the present suit, requesting for restraining the respondents by a permanent injunction from using the impugned mark FORTUNE ASIA or FORTUNE and the impugned domain name www.fortuneasiaevent.com or iterations of the appellant’s trademark FORTUNE as a trademark or part of a trademark or trade name or corporate name or as a domain name or part of a domain name, or in name of a conference or in any other manner whatsoever thereby infringing the registered trademark of the appellants’.

Vide order dated 14th January 2019, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents and on 20th February 2019, the respondents were proceeded ex parte.

The court in the present suit was of the opinion that the actions of the respondents constituted infringement under Section 29 of the Trade Marks Act, 1999 apart from constituting a violation of the statutory and common law rights of the appellants. Consequently, the suit was decreed in favour of the appellants and against the respondents.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 2(1) (zg), Trade Marks Act, 1999 – Section 2(1)(zg), Trade Marks Act, 1999 – Section 29

The respondents were using the appellants’ registered trademark to sell counterfeit products and to trade upon the goodwill of the appellants’ mark and hence the suit was decreed in favour of the appellants

Sandisk LLC                                V/S                           B-One Mobile

The present suit is filed by the appellants Sandisk LLC, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trade mark and copyright, rendition of account of profits, damages and delivery up, etc. against the respondents. [CS (COMM) 1130/2018 and I.A. No. 12863/2018, Decided On: 09.04.2019]

The appellants in the suit are a company founded in 1998 and are one of the world’s largest dedicated providers of flash memory storage solutions under the mark “SANDISK” and have been directly selling their products in the Indian market since 2005. They are the registered user of the trademarks SanDisk, Cruzer Blade and the Red Frame Logo. The appellants have further stated that they possess both common law trademark rights as well as trademark registrations for the mark SanDisk in more than 150 countries worldwide. The said trademark has been in extensive, continuous and uninterrupted use globally since 1995 and in India since 2005 and in addition to the worldwide trademark registrations, the appellants are the registered proprietor of a variety of word marks and device marks in India, including the SanDisk house mark, logo and the Red Frame logo, since 2003 and 2009 respectively, under Class 9 of the Trade Marks Act, 1999 and all the trademarks are valid and subsisting.

According to the appellants in August 2018, it came to their knowledge that unauthorized third parties, in the Gandhipuram area of Coimbatore, were marketing and selling counterfeit microSDHC cards bearing identical trademarks and packing as that of the appellant’s products. The appellants further state that their investigator also noticed that the premises of the respondents’ was a mobile accessory shop and that they were engaged in marketing and selling of counterfeit microSDHC cards bearing identical trademarks and packaging as that of the appellants’ and also sold a deceptively similar product bearing the mark ‘Zeenjer Digital’.

Hence the appellants filed the suit requesting for a permanent injunction restraining the respondents and all others in active concert with them from   facturing, marketing, offering for sale any product bearing the appellants’ registered trademarks ‘SanDisk’, the logo and the ‘Red Frame Logo’ or any other mark confusingly or deceptively similar thereto amounting to infringement of the appellants’ registered trademarks.

Vide order dated 20th September 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and had also appointed Local Commissioners to visit the premises of the respondents. The Local Commissioners had visited the premises of the respondents, seized the infringing material and the seized products were sealed by the Local Commissioner and were given on Superdari to the respondents.

With reference to the current case the court was of the view that due to extensive use, the appellants’ mark SANDISK, the logo and Red Frame logo had acquired reputation and goodwill globally as well as in India. Hence keeping in view the documents as well as evidence on record, the court was asserted that the respondents were using the appellants’ registered trademark SANDISK and its product packaging to sell counterfeit products with a view to trade upon and benefit from the reputation and goodwill of the appellants’ mark and pass off their services as that of the appellants.

Consequently, the allegation that the trademark SANDISK, the logo and Red Frame logo used by respondents amounted to infringement of appellants’ trademarks was held correct. The court also asserted that the use of the appellants’ mark by the respondents was bound to cause incalculable losses, harm and injury to the appellants and immense harm to the public in general. Accordingly the suit was decreed in favour of the appellants and against the respondents and the appellants were also held entitled to compensation of Rs. 30,42,300/- to be paid by the respondents. The respondents were also directed to hand over the goods seized by the Local Commissioners to an authorised representative of appellants for destruction within three weeks.

Cases Referred: Microsoft Corporation vs. Mr. Yogesh Papat and Anr.   /DE/0331/2005; Super Cassettes Industries Private Limited vs. HRCN Cable Network   /DE/3094/2017; Hindustan Unilever Limited vs. Reckitt Benckiser India Limited   /DE/0353/2014

As the triple identity test of use of an identical trademark in relation to identical services having an identical distribution channel was satisfied the suit was decreed in favour of the appellants

Living Media India Limited         V/S         Vijayan Madhavan Praveen

The present suit is filed by the appellants Living Media India Limited, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement and passing off of trade mark and copyright and rendition of accounts against the respondents. [CS (COMM) 1107/2018, Decided On: 16.04.2019]

The appellants together with their affiliates are one of the major media corporations in India having an enormous presence in both print and electronic media and together form a part of the media conglomerate popularly known as INDIA TODAY GROUP (ITG). The appellants are engaged in diverse business activities ranging from printing and publishing of magazines, journals, periodicals, newspapers to broadcasting of news channels.

It is stated by the appellants that they are the registered proprietor of the trade mark “TODAY” and other TODAY composite marks under numerous classes of the Trademarks Act, 1999. It is further stated that the trademark “TODAY” and other TODAY composite marks have formidable presence on the internet through the websites indiatoday.com, headlinestoday.com, aajtak.com, indiatoday.today.in etc.

The appellants stated that around Mid-April 2018, they became aware that the respondents were using “INDIATODAY24X7.COM” to publish and disseminate Tamil news. Upon further verification the appellants learnt that the respondents had also copied the design, logo and colour scheme of the appellants and that the respondents were also running a twitter handle @indiatodaywebtv, and a You Tube channel using the impugned domain name. The appellants also stated that a further verification and search on the WHOIS database revealed that the said domain name was registered in the name of the respondents and was created on 22nd March, 2018.

The appellants had issued a cease and desist notice on 30th April, 2018 and subsequently on 17th May and later on 29th May 2018 however, the respondents neither replied to the said notice nor shut down their website or transferred the impugned domain name. It is the plea of the appellants that the dishonest, wrong, malafide and illegal acts of the respondents were aimed at enriching themselves at the expense of the appellants and were detrimental to the distinctive character, reputation and goodwill of the appellants.

Hence the appellants filed the present suit requesting for a decree of permanent injunction against the respondents from using the trademark “INDIA TODAY”, indiatoday24x7.com; Twitter Handle @indiatodaywebtv or any other mark deceptively and confusingly similar to that of the appellants’ trademark as part of their trademark, trade name and services especially for telecasting, broadcasting or relaying media channels, or in any manner whatsoever, which may or may not be in the knowledge of the appellants.

Vide order dated 11th September 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents.

In case of the present suit, the court opined that the respondents had no real prospect of defending the claim, as they have neither entered appearance nor filed a written statement. Further, the appellants were the registered owner of the trademark in question. Also according to the court the triple identity test of use of an identical and deceptively similar trademark in relation to identical services having an identical distribution channel was also satisfied. Thus in view of the above, the present suit was decreed in favour of the appellants and against the respondents along with actual costs.

  Under section 29, use of a registered trademark in respect of similar goods constitutes infringement and hence the suit is decreed in favour of the appellants

Today Tea Ltd.                V/S               Today Foods Pvt. Ltd.

The present suit is filed by the appellants Today Tea Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking injunction restraining the infringement of its registered trademark, passing off, damages, etc. [CS (COMM) 464/2018 and I.A. 10693/2003, Decided On: 25.04.2019]

The appellants Today Tea Ltd. claim to be the owner of the trademark ‘TODAY’ in respect of tea, which falls in class 30 and that the trademark has been registered in favour of the appellants in class 30 vide registration nos. 630093 and 1256057. The appellants adopted their ‘TODAY’ tea mark since 1st January 1994 and they claim that their mark is extremely well known and popular.

The grievance in this suit is that the appellants acquired knowledge of the respondent’s adoption of the mark ‘TODAY’ in respect of biscuits, which according to them constituted infringement of their mark.  According to the appellants their trademark ‘TODAY’ is extremely well-known and adoption by the respondents of the same mark, in respect of biscuits, was dishonest.  The appellants have further highlighted that the respondent’s application for registration of the ‘TODAY’ mark for biscuits was opposed by the appellants.

The respondents in the case, i.e. Today Foods Pvt. Ltd. claim to be in the business of   facturing of biscuits since 1997 under the trademark ‘TODAY’. It is the case of the respondents that they are a small-scale industry, whose business is being thwarted by the appellants and that the appellant’s registrations for the mark ‘TODAY’ were liable to be cancelled.

With regards to the present suit a perusal of the evidence placed on record showed that the respondents had admitted the use of the mark ‘TODAY’ in respect of glucose biscuits and crunch cream elaichi biscuits. The appellants on the other hand had established the use of the mark ‘TODAY’ and had also exhibited various documents including the registration certificates and the invoices etc. A memorandum of association of the appellants’ company exhibited on record showed that the appellants had been carrying on their business since 1st January 1994, under the name Broker Tea Company, which thereafter was changed to Today Tea Limited in the year 2002. From the evidence placed on record there is no doubt that the appellants have been continuously using the trademark ‘TODAY’ in respect of tea and that the same was registered in respect of a variety of products in class 30. Further it is also highlighted that no evidence was led to show that the respondents had in fact, been using the mark ‘TODAY’ since 1997.

The appellants have also highlighted that they acquired knowledge of the respondent’s use of the mark through market sources and that the respondent’s biscuits were confused with the appellant’s tea due to use of the word/mark ‘TODAY’ in respect of the same.

With reference to the present suit the court stated that it was common knowledge that tea and biscuits go hand-in-hand, though, the appellants did not   facture biscuits under the mark ‘TODAY’, the appellants had registered for the said mark. According to the court, tea and biscuits were goods of the same description as also cognate and allied products, much like other products which are used together such as tooth paste and toothbrush, shoe-polish and shoe-brushes, etc.

The court highlighted that the appellant’s mark ‘TODAY’ had acquired enormous reputation and goodwill and being the registered owner of the mark and having established statutory right in the mark ‘TODAY’, the appellants were entitled to permanent injunction against the respondents from using the mark ‘TODAY’ as the respondents had in fact, not led any evidence, though they had contested the matter for so many years against the appellants.

According to the court use of an identical mark in respect of tea and biscuits was bound to result in confusion and deception as the said products were stored, served and consumed together. Further the court also asserted that use of an identical mark for tea and for biscuits would create an immediate connection, and hence the appellant’s TODAY tea mark being extremely well known, use of an identical mark for biscuits was bound to result in confusion and deception. Thus passing off was inevitable.

The court concluded that the appellants were the prior user of the mark and that the use of the mark TODAY could not have gone unnoticed by the respondents. Also according to the court the adoption of the mark TODAY by the respondents was with completely knowledge of the appellant’s mark and the respondents had not given up litigating in the present suit even after the filing of the opposition by the appellants. Further, tea and biscuits were products which fell in class 30 and under section 29, use of a registered trade mark in respect of similar goods constituted infringement. Thus the use of the mark TODAY for biscuits by the respondents was a violation of the rights of the registered trademark owner. Accordingly, the suit was decreed in favour of the appellants and they were also awarded damages of Rs. 2 lakhs and the actual costs of litigation.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VI Rule 17

As the respondents had carried out their activities without any authorization granted by the appellants, their activities constituted piracy of the sole and exclusive, statutory rights vested in the appellants’

Koninlijke Philips N.V. V/S               Amazestore

The present suit is filed by the appellants Koninlijke Philips N.V., in the Honourable High Court of Delhi before Honourable Justice Manmohan, seeking decree of damages as well as permanent injunction restraining violation of multiple statutory and common law rights. [CS (COMM) 737/2016, I.A. 7469/2016, CS (COMM) 1170/2016, I.A. 2685/2017 and 16768/2018, Decided On: 22.04.2019]

The appellants Koninlijke Philips N.V. are an electronic conglomerate of immense global repute and have revolutionized the world with path breaking innovations and unprecedented consumer products.

The appellants instituted the present suits to protect and enforce their statutory and common law rights in relation to their products, QT4000, QT4001, QT4005, QT4006 and QT4011, forming part of the Advanced Beard Trimmers series 3000. The packaging for their Advanced Beard Trimmer Series 3000 consists of several unique elements inter alia the design, layout, color scheme etc. The literary work, artistic work and the photographs in the appellants’ product literature and promotional material and packaging fall within the meaning of Sections 2(c), 2(o) and 2(s) of the Copyright Act, 1957 respectively and by virtue of Sections 13 and 14 of the Copyright Act 1957, the appellants are entitled to the exclusive rights in the copyright vested in the literary work, artistic work well as the packaging of the product. The appellants have further highlighted that they have been granted and have been enjoying protection over the design of the beard trimmer forming part of their design registration No. 253140 dated April 12, 2013 and the same is valid and subsisting.

According to the appellants the respondents are engaged in the   facture, advertisement, export, import etc. of beard trimmers under the trademark NOVA and the appellants are aggrieved with the fact that the respondents’ trimmers are an imitation of the shape and configuration of the beard trimmers for which the appellants enjoy design registration. The appellants state that the respondents had violated the rights vested in multiple aspects of the appellants’ intellectual property i.e. in relation to the imitation of trade-dress of the appellants’ products, as well as infringement of copyright and alleging piracy of registered design as vested in the appellants’ beard trimmers.

It is the contention of the appellants that the respondents had slavishly copied the photograph of the model, the copyright of which is owned by the appellants and had merely replaced the appellants’ beard trimmer with their hair trimmer. The extent of the respondents’ imitation was evident from the fact that the product description which accompanied the respondents’ trimmer series had the appellants’ registered trademark PHILIPS mentioned in the product literature. The respondents had imitated the entire shape of the container, the color scheme employed, the manner of description of the product’s specifications etc. from the appellants’ Advanced Beard Trimmer range of products. According to the appellants it is the mala fide intention of the respondents to piggy back upon the immense goodwill and reputation vested in the appellants’ advanced beard trimmer range of products.

Hence the appellants filed the present suit seeking an order for permanent injunction restraining the respondents from   facturing, selling and directly or indirectly dealing in any manner with health and personal care appliances products or any other goods and services thereby resulting in infringement of the appellants’ design number 253140 and passing off of the respondents’ impugned products as belonging to the appellants by using trademarks, trade dress and copyright which are identical and deceptively similar to the appellants’ trademarks, trade dress and copyright

Having perused the ex parte evidence led by the appellants as well as the documents placed on record the court was of the opinion that the appellants had proved the facts stated in the plaint in relation to their claims for permanent injunction as well as damages payable by the respondents. Further the respondents had chosen not to appear before this Court despite being duly served with summons. The court asserted that the respondents had with mala fide intent deliberately imitated the shape and configuration of the appellants’ beard trimmers under the QT 4000 Series as they operate in the same industry i.e. consumer care products. Further as the respondents had carried out their activities without any authorization granted by the appellants, the court was satisfied that the respondents’ activities constituted piracy of the sole and exclusive, statutory rights vested in the appellants’ registered design No. 253140 under Section 22 of the Designs Act, 2000. Thus according to the court the appellants were entitled to a decree of permanent injunction against the respondents restraining infringement of registered design.

Further according to the court the respondents had made unauthorised and brazen reproduction of the appellants’ literary, artistic work as well as packaging and trade dress which amounted to infringement of copyright in terms of section 51 of the Copyright Act 1957, consequently, the appellants were held entitled to a decree of permanent injunction restraining infringement of copyright, passing off and unfair competition. The court concluded that as the respondents had willfully and repeatedly infringed the appellants’ rights as vested in their copyright, trade dress and design, the appellants were entitled to an award of compensatory damages to the extent of Rs. 3,15,71,000/- to be paid by the respondents. The court also held the appellants entitled to actual costs of litigation including lawyer’s fees.

  Reference Number:    /DE/1390/2019

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VI Rule 17; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2A; Copyright Act, 1957 – Section 13, Copyright Act, 1957 – Section 14, Copyright Act, 1957 – Section 2(c), Copyright Act, 1957 – Section 2(o), Copyright Act, 1957 – Section 2(s), Copyright Act, 1957 – Section 51; Designs Act, 2000 – Section 22; Indian Contract Act, 1872 – Section 73

Cases Referred: Hindustan Unilever Limited vs. Reckitt Benckiser India Limited; C.N. Ramappa Gowda vs. C.C. Chandregowda (Dead) by L.Rs. and Anr.

The respondents were aware of the goodwill attached to the word ‘FILEX’, for referring to the appellants or their products and still adopted the same as a trademark, hence the appellants were entitled to a decree for injunction

Filex Systems Pvt. Ltd.                     V/S               Deepika File Products

The present suit is filed by the appellants Filex Systems Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Rajiv Sahai Endlaw, for permanent injunction restraining passing off by the respondents by violating the trademark ‘FILEX’ in respect of stationery including files, file covers, folders, diaries, note pads, office requisites and for ancillary reliefs. [CS (COMM) 696/2016, IAs No. 7189/2016 (u/O XXXIX R-1&2 CPC) and 10624/2016 (u/O XIII-A CPC), Decided On: 12.03.2019]

The appellants in the present suit are engaged in the business of   facturing and selling office files, office stationery, paper and paper products, printed publications, cleansing wipes, cleaning preparations etc. The trademark ‘FILEX’ forms a primary, essential, distinctive and material part of the appellant’s trade name and corporate name ‘FILEX Systems Private Limited’ since the incorporation of the appellants in the year 1996. According to the appellants ‘FILEX’ is the house mark of the appellants which appears prominently and distinctively on each and every product packing, advertisements, catalogues, sales promotional products, public communications as well as on the products itself and the goods of the appellants are referred to as emanating from ‘FILEX’. The appellants also have a colossal portfolio of differentiated trademarks including well-known trade mark ‘SOLO’ in respect of the said goods which are being used by the appellants in the course of their trade since the year 1996 along with the house mark ‘FILEX’ further the trade name, house mark ‘FILEX’ in respect of the aforesaid goods, by virtue of extensive use for more than 19 years, has become distinctive.

It is asserted by the appellants that in November 2015, they learnt that the respondents had introduced their stationery items including files, file covers, diaries, note pads, office requisites and other similar goods in the market under an identical and violating trademark ‘FILEX’. The appellants further stated that the respondents had not only failed to stop use of the said mark inspite of a cease and desist notice dated 28th November 2015 but had also not responded thereto. It is the contention of the appellants that that use by the respondents of the mark ‘FILEX’ in respect of identical goods amounts to them passing off their goods as that of the appellants.

The respondents contested the suit pleading stating that the registered trademark of the appellants is ‘SOLO’ and not ‘FILEX’ and that the appellants cannot sue with respect to an unregistered trademark. According to the respondents they are the prior user of the mark ‘FILEX’ and that their goods are associated with the mark ‘FILEX’ and the goods of the appellants are associated with the mark ‘SOLO’. Further according to the respondents, both they and the appellants are members of Delhi File Nirmata Sangh which comes out with a Directory every 2-3 years in which the members take out advertisements of their products, the respondents have been advertising with the trade mark ‘FILEX’ for their goods and the appellants have been advertising with the trade mark ‘SOLO’ for their goods, thus, according to the respondents, the appellants knew that the respondents were using the mark ‘FILEX’ since the year 2012, but did not raise any objection. According to the respondents though the appellants were aware of use by the respondents of ‘FILEX’ they raised objection for the first time only towards the end of the year 2015.

The court in the present suit stated that the Trademark Act, 1999 defined “Mark” in Section 2(m) as including a name and Section 2(o) defined “Name” as including any abbreviation of a name and, Section 2(zb) inter alia defined trademark as a mark capable of being represented graphically and which was capable of distinguishing the goods or services of one person from those of others. According to the court the name of the   facturer of goods is certainly capable of distinguishing the goods of one person from those of others and any similarity between the name and a mark of goods emanating from a   facturer with a different name is likely to cause confusion. According to the court ‘FILEX’, forming a prominent part of the trade name of the appellants, was not a dictionary word and was an invented word, easily identifiable with the products in which the appellants were dealing. Owing to the said peculiarity, the possibility of trade circles using ‘FILEX’ instead of ‘SOLO’, for referring to the appellants or their products, could be fathomed.

The court stated that the respondents had given no explanation whatsoever, as to why they started using the mark ‘FILEX’ for the same products. According to the court, the respondents themselves had shown to be using, besides ‘FILEX’ also ‘DEEPIKA AND CHANDAN’ as their trade mark. The court asserted that it was quite normal of the respondents named ‘Deepika File Products’ to use ‘DEEPIKA’ as a trademark, but it was incumbent on the respondents to explain use of ‘FILEX’, when they were aware as per their own admission from the Directory of Delhi File Nirmata Sangh of the appellants. The court highlighted that it was not for the respondents to on their own take a decision that though the appellants had ‘FILEX’ as a part of their trade name but no goodwill or reputation would be attached to it, especially when the word ‘FILEX’ in the trade name of the appellants was a coined word and not a dictionary word. Hence the court opined that it could safely be assumed that the respondents were aware of the goodwill attached to the word ‘FILEX’ and still adopted the same as a trademark, to take advantage thereof.

The court also stated that the appellants, even if not using ‘FILEX’ as a trademark and using only ‘SOLO’ as their trademark, cannot be expected to not show their name on their products, in their advertisements and on their invoices. Once the appellants show so, the possibility of the persons dealing with the appellants, associating the appellants and their products with the word ‘FILEX’ which as aforesaid was peculiar to the business of files, instead of as ‘SOLO’, cannot be ruled out.

The court concluded that due to the aforesaid facts, the respondents had no possibility of succeeding in their defence and the appellants were entitled to a decree for injunction. The court however highlighted that it was not inclined to put the claim of the appellants for damages to trial and to award any costs of the suit to the appellants because of delay of about two years in instituting the suit, the respondents being the prior applicant for registration of the mark ‘FILEX’ and the likely possibility of the fact that the appellants after realizing use by the respondents of ‘FILEX’ as a trademark, having applied for registration thereof and having commenced using the same along with ‘SOLO’ as a trademark.

Accordingly, a decree of permanent injunction was passed, in favour of the appellants and against the respondents and a decree was also passed for destruction of the infringing goods, leaving the parties to bear their own costs.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 2

The mark ‘POWER’ was exclusively associated with the appellants’ brand of footwear and the use of the said mark, in respect of footwear by the respondents violated the statutory and common law rights of the appellants

Bata India Limited                    V/S               Chawla Boot House

The present suit is filed by the appellants Bata India Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking an injunction restraining infringement of trademark, passing off, unfair competition, damages, etc. [CS (COMM) 110/2019, Decided On: 16.04.2019]

The appellants in the present suit are Bata India Limited, a well-known   facturer and seller of footwear. The appellants state that they adopted the mark ‘POWER’ for footwear in the early 1970s and the same has been in continuous use for almost 50 years. The ‘POWER’ brand is registered in favour of the appellants both in word form and logo form and as a combination with other marks. Further, the ‘POWER’ range of footwear of ‘BATA’ has been promoted by well-known sporting personalities such as Mr. Kapil Dev, Mr. Sachin Tendulkar and Ms. Smriti Mandana (Player of Indian National Women’s Cricket Team).

The appellants claim that they came across a trademark application filed by the respondents for the mark ‘POWER FLEX’ in respect of footwear and the same was opposed by the appellants. Further, the appellants also came across an application for the tagline ‘THE POWER OF REAL LEATHER’, which was also opposed by them. The allegation of the appellants is that the appellants’ use of the mark ‘POWER FLEX’ and ‘THE POWER OF REAL LEATHER’ is a violation of their statutory and common law rights.

The respondents in the present suit asserted that, they are well-known company selling footwear under the mark ‘RED CHIEF’ and have been in business since 1995. According to the respondents the word ‘POWER’ is a dictionary word, which is incapable of being exclusively monopolised by any one party. The respondents also highlighted that they had started using of the mark ‘POWER FLEX’ since 2010-11 and had used Mr. Virat Kohli as their brand ambassador. Further the mark ‘POWER FLEX’ has not been used as a trademark in isolation but always with the mark ‘RED CHIEF’ and hence, there is no chance of confusion with the appellants’ mark.

The court in the present suit stated that, on the basis of the documents on record, it was clear that the mark ‘POWER’ and ‘POWER’ derivative marks were adopted by the appellants since 1971 i.e. 48 years ago. Subsequent registrations of the mark ‘POWER’ showed that the word ‘POWER’ was registered as a word mark, as a device mark, as a combination mark and in various derivative forms such as ‘POWER SPORTS’, ‘POWER ULTIMO’, ‘POWER SPORTS FOOTWEAR’, ‘POWER BODYLINE’ etc. thus showing that the mark ‘POWER’ was not only being used in isolation, but in conjunction with several words, depending on the business and commercial needs of the appellants.

It is clear that the appellants’ use of the mark ‘POWER’ was indisputably prior to that of respondents by at least four decades.

Further, a perusal of the respondent’s documents showed that the trademark of respondents was ‘RED CHIEF’ and that within the inside of the shoe, the mark ‘POWER FLEX was used on a standalone basis. The stores of the respondents were exclusive ‘RED CHIEF’ stores and the endorsement by Mr. Virat Kohli was of the ‘RED CHIEF’ branded products and was dated 2nd February 2011, and that it was not an endorsement of ‘POWER FLEX’ branded products. The court highlighted that the use of the mark ‘POWER FLEX’ by the respondents was sketchy. The respondents had not produced any sales turnover of ‘POWER FLEX’ range products in the written statement nor was there any major publicity to the mark ‘POWER FLEX’.

According to the court a clear impression that the court got while looking at the documents of the respondents was that they were adopting a clever, tactical and a ‘camel-in-the-tent’ approach and slowly attempting to expand the mark ‘POWER’ in respect of their footwear, on the other hand the court stated that the appellant’s ‘POWER’ brand was on the other hand, a brand that was being used prominently and extensively for almost five decades.

The court asserted that, it cannot even remotely be believed that the respondents were unaware of the appellants’ brand while adopting the mark ‘POWER FLEX’. The presence of the appellant’s ‘POWER’ brand of footwear is quite prominent and conspicuous and the adoption by the respondents of the mark POWER FLEX’, in such a situation, could be termed as fraught with risk owing to the high standing of the ‘POWER’ mark of the appellants’. Thus on the basis of the above, the court had no hesitation in coming to the conclusion that the mark ‘POWER’ was exclusively associated with the appellants’ brand of footwear and the use of the said mark, either in combination with other words or in isolated manner in respect of footwear, accessories and clothing, etc. violated the statutory and common law rights of the appellants.

However the court was conscious of the respondents’ use of their mark in the last 4-5 years, was not as restricted as the appellants had made it out to be in the plaint. Hence, the court permitted the respondents to sell their existing stock, subject to certain conditions, i.e. the respondents were restrained from using the mark/word ‘POWER’ in respect of footwear, clothing and accessories and other related products including the mark ‘POWER FLEX’ or any other mark containing the word ‘POWER’ or a combination thereof.

The use of the tagline ‘THE POWER OF REAL LEATHER’ by the respondents as part of an advertising slogan or a tagline was permitted, however, no undue prominence was to be given to the word ‘POWER ‘ and finally the existing stock of the respondents’ products was permitted to be sold by filing a monthly statement of disposal, including the value of the stock so sold, subject to the final adjudication in the suit.

  Reference Number:    /DE/1368/2019

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 3; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 4

The use of the impugned mark by the respondents prima facie constituted an infringement under section 29(2)(a) of the Trade Marks Act, 1999 and hence the suit was decreed in favour of the appellants

Radico Khaitan Ltd.          V/S          Devans Modern Breweries Ltd.

The present suit is filed by the appellants Radico Khaitan Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trade mark, passing off, delivery up, rendition of accounts, damages etc. [CS (COMM) 724/2018, Decided On: 07.03.2019]

The appellants in the present suit are one of India’s largest liquor companies, having four millionaire brands -8 PM Whisky, Contessa Rum, Old Admiral and Magic Moments Vodka, selling more than a million cases per annum. The appellants are the registered owner of various marks/labels having ELECTRA as their prominent feature in Class 33 of the Trade Marks Act, 1999 since 23rd December, 2004. In 2014 the appellants decided to use the mark ELECTRA for Ready to Drink alcoholic beverages in Ready To Drink bottles, and in June 2015, officially launched their Ready to Drink product under the aforesaid mark combined with their flagship brand MAGIC MOMENTS. Further, the appellants promote their products bearing the mark ELECTRA in India through permitted channels, and through their own websites www.radicokhaitan.com and www.m2electra.com, as well on their Official Facebook and Twitter pages ‘m2electra’.

It is the case of the appellants that in November 2016, while conducting a regular search on the website of the Trade Marks Registry, the appellants came across the respondents’ trademark application dated 25th April 2013, for the mark ELECTRA under Class 32 for goods ‘Beers, mineral and aerated waters, and other non-alcoholic drinks; fruits drinks and fruit juices; syrups and other preparations for making beverages’ which was filed on a ‘Proposed to be Used’ basis. The appellants have further stated that in January 2018, it came to their knowledge that the respondents intended to launch their products in Delhi and Silvassa by April 2018 and on 23rd February 2018, the respondents had obtained an Excise Approval for selling products under the mark ELECTRA in the territory of Delhi. Accordingly the present suit was filed for a permanent injunction on 26th February, 2018.

The respondents in the present suit stated that they were the prior user of the mark “GODFATHER ELECTRA” and that they had honestly and bonafidely adopted the trademark GODFATHER ELECTRA on 25th April 2013. Further according to the respondents, the appellants despite having registration for the trademark ELECTRA since 2004, the appellants had not used the same in relation to any of their goods and business until June 2015. The respondents further contended that prior to commencing use of the trademark GODFATHER ELECTRA in 2013, they had conducted a market survey and that at that time no products bearing the mark ELECTRA were found. The appellants argued that the respondents had been selling beer since 1984 under their main mark GODFATHER and in 2014 the respondents without explanation added ELECTRA to their successful flagship brand GODFATHER. The appellants contended that while the respodnent’s main brand was GODFATHER, the appellant’s main mark for their ready to drink alcoholic beverages was ELECTRA.

Having heard the arguments put forth by both the parties, the court was of the opinion that it was essential to first analyze the scheme of the Trade Marks Act 1999, to examine the rights of registered proprietors of the trade mark as well as the remedies available to an aggrieved party on account of non-use of a registered trade mark. Thus on basis of the documents put on record by both the parties the court was of the prima facie opinion that the appellants had been using the trademark ELECTRA since at least 2006 and consequently and the respondents were not even the prior user of the impugned mark. Thus the use of the impugned mark by the respondents prima facie constituted an infringement under section 29(2)(a) of the Trade Marks Act, 1999. According to the court the respondents had failed to discharge their duty of care and due diligence as they had not conducted a search in the Trade Marks Registry with regard to the impugned mark ELECTRA for goods falling under classes 32 and 33 before adopting the said mark. Thus keeping in view the aforesaid, the court was of the opinion that a prima facie case of infringement of trademark was made out in favour of the appellants and balance of convenience too was in their favour. Further, irreparable harm and injury would be caused to the appellants if an injunction order was not passed.

Consequently, the respondents and anyone acting on their behalf were restrained from   manufacturing, exporting, marketing, selling, advertising or in any manner dealing with any alcoholic beverages including but not limited to beer and Ready to Drink Beverages under the trademark ‘ELECTRA’ or any other mark or label which was identical or deceptively similar to the appellant’s registered trade mark ELECTRA.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 142, Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 2(2)(b), Trade Marks Act, 1999 – Section 2(2)(c)(i), Trade Marks Act, 1999 – Section 27(2), Trade Marks Act, 1999 – Section 28, Trade Marks Act, 1999 – Section 28(3), Trade Marks Act, 1999 – Section 29(2), Trade Marks Act, 1999 – Section 29(2)(a), Trade Marks Act, 1999 – Section 33, Trade Marks Act, 1999 – Section 34, Trade Marks Act, 1999 – Section 46(1), Trade Marks Act, 1999 – Section 46(1)(a), Trade Marks Act, 1999 – Section 46(3), Trade Marks Act, 1999 – Section 47, Trade Marks Act, 1999 – Section 47(1)(b)

The flagrant infringing activities of the respondents had impinged on the appellants’ right consequently, the suit was decreed in favour of the appellants and against the respondents

Louis Vuitton Malletier                  V/S               Iqbal Singh

The present suit is filed by the appellants Louis Vuitton Malletier, in the Honourable High Court of Delhi before Honourable Justice Sanjeev Narula, for permanent injunction restraining infringement of its trademark, passing off, dilution, rendition of accounts of profits, damages and delivery up. [CS (COMM) 607/2018, Decided On: 03.04.2019]

The appellants Louis Vuitton Malletier, are a company incorporated under the laws of France. The appellant’s company derived its name from its founder Mr. Louis Vuitton who opened the first Louis Vuitton store in Paris in the year 1854. The appellants opened their first exclusive retail outlet in India in 2003 at the Oberoi Hotel in New Delhi. In addition to the use of the name “Louis Vuitton” as a trademark, the initials of Louis Vuitton, namely “LV”, represented in an intertwined manner has also been used as a trademark by the appellants since 1890 and since 1896, the appellants have also continuously and uninterruptedly used a canvas design with a flower pattern and the intertwined initials of Louis Vuitton (LV) which is known as the “Toile Monogram”. The appellants enjoy copyright over the above pattern, which is an artistic work within the meaning of the Indian Copyright Act 1957. Further the appellants also have statutory rights over the “LOUIS VUITTON” word mark, the “LV” logo and the monogram pattern which are registered in India under classes 3, 14, 18 and 25 with the Registrar of Trademarks.

According to the appellants, they have been vigilant in protecting and safe-guarding their trademark rights from misuse by any third parties and have in the past successfully enforced their Intellectual Property Rights in their various trademarks in India as well as in other parts of the world. The well-known nature of the appellant’s registered trademarks “LOUIS VUITTON” trademark, the “LV” logo and the “Toile Monogram” pattern have been duly recognized by the Delhi High Court.

The respondents in the present suit are an entity operating from the premises at Sadar Bazar. The grievance of the appellants is that the respondents are dealing in infringing and counterfeit products bearing the appellant’s registered trademarks. The respondent’s infringing activities came to the knowledge of the appellants in September 2011 during a market survey conducted by an investigator. The respondents on the other hand asserted that the averments in the suit did not tantamount to any infringement of the trademark of the appellants. According to the respondents they had been in innocent use of the name “Louis Vuitton Mallertier” for the last over 8 to 9 years. The respondents had nothing to do with the logo of the appellants and were using their own logo since the inception of the business. The respondents state that their business was parallel to that of the appellants and the quality of their goods was not less than that of the appellants. In fact according to the respondents the quality of the products produced by them was more durable and superior than the products of the appellants.

The court in the present suit stated that the reports of the Local Commissioners appointed by the court uncovered the infringing activities of the respondents. Secondly, the respondents also had admitted in the written statement that they had been using the appellants’ trademark for last 8-9 years. Thirdly, the respondents had deliberately stayed away from the court proceedings. Thus according to the court the conduct of the respondents was egregious and called for the court to draw adverse inference against them.

Keeping in view the judgments relied upon by the appellants, the averments made in the written statement and taking into note of the conduct of the respondents, the court concluded that the flagrant infringing activities of the respondents had impinged on the appellants’ right. Consequently, in view of the above, the court awarded damages to the tune of Rs. 3,50,000/- (three lakh fifty thousand only) in favour of the appellants and the suit is decreed in favour of the appellants and against the respondents.

The present suit was governed by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 as also the Delhi High Court (Original Side) Rules, 2018. The appellants had filed a statement of cost along with supporting affidavit to the tune of Rs. 9,27,296/- (Nine Lakhs Twenty Seven Thousand Two Hundred and Ninety Six Only). The cost includes lawyers’ fees as well as amounts spent on Court fees. Accordingly, the aforesaid cost too was awarded to the appellants.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VII Rule 14; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Section 151; Trade Marks Act, 1999 – Section 11(6), Trade Marks Act, 1999 – Section 29 (2), Trade Marks Act, 1999 – Section 29(2)

The appellants were the registered owner of the trademark and hence the suit was decreed in favour of the appellants

Flipkart Internet Private Limited   V/S   Flipkartwinnerdraw.com

The present suit is filed by the appellants Flipkart Internet Private Limited, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for infringement of trademark, passing off etc. against the respondents. [CS (COMM) 117/2019, I.As. 3268 and 3270/2019, Decided On: 03.05.2019]

The appellants, Flipkart Internet Private Limited, own and operate a leading shopping portal through the website, www.flipkart.com, since 2007 and also have a mobile application, Flipkart, launched by them in year 2011. The appellants carry on their business under the trademark by providing a market place through Flipkart online platforms to third parties to buy and sell products.  The appellants are the proprietor of various FLIPKART trademarks in various classes under the Trade Marks Act, 1999 and the same are valid and subsisting. The appellants have asserted that they have been continuously and extensively using the trademark ‘Flipkart’ since the year 2007 and have an impeccable goodwill and reputation in the said trademark. Further the appellants have stated that they have adopted a unique and unusual font, get up, layout and colour combination for the trademark and logo of their e-commerce website and mobile application, i.e. Flipkart and their various formative marks, thereby making it a highly distinctive trademark and logo. Further the appellant’s trademark ‘Flipkart’ has been adjudged as a well known trademark.

The appellants state that in the fourth week of January 2019, it came to their knowledge that the respondents had incorporated the appellant’s trademark ‘Flipkart’ as part of their domain name. Consequently the appellants had issued a cease and desist/takedown notice to the respondents however, no response was received to the same.

It is the plea of the appellants that the respondents are infringing their registered trademark ‘Flipkart’ by having domain name containing ‘flipkart’ and using such infringing websites to give false impression to the innocent public that such website emanates or is associated with the appellants. The appellants further highlight that the website is a vehicle of infringement and that the respondents’ business model is designed and dedicated towards misrepresenting to the members of the public that the respondents are associated with the appellants thereby misleading them into not only providing their personal information including but not limited to their name, age, e-mail address, phone number etc. but also inducing them to part with their hard earned monies.

Hence the appellants filed the present suit requesting for a decree of permanent injunction restraining the respondents from using the mark “Flipkart” or any deceptive variant thereof which is identical or similar to the appellant’s trademark “Flipkart” in respect of domain name, lucky draw contest or any other manner, thereby amounting to infringing of the appellant’s trademark.

Vide order dated 06th March 2019, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents. Further with regards to the present suit the court stated that the respondents had no real prospect of defending the claim, as they had neither entered appearance nor filed written statements. Also, the appellants were the registered owner of the trademark in question. Thus, in view of the above, the suit was decreed in favour of the appellants along with actual costs.

  Reference Number:    /DE/1560/2019

Cases Referred: Satya Infrastructure Ltd. and Ors. vs. Satya Infra & Estates Pvt. Ltd.   /DE/0511/2013

As the respondents were making false statements and deliberately misleading the court the suit was decreed against the respondents

Tata Sons Ltd.               V/S               Prakash Yadav

The present suit is filed by the appellants Tata Sons Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, for permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishment of trademarks, damages, rendition of accounts, delivery up, etc. [CS (COMM) 383/2018 and I.A. 10439/2015, Decided On: 15.07.2019]

The appellants Tata Sons Ltd. were established in 1917 and is are the promoter and principal investment holding company of the House of TATA. Tata is one of the most well-known brands of India and are engaged in the business of a wide range of goods and services including industrial core sectors, pioneering textiles, iron & steel, power, chemicals, hotels and automobile industries in India. They have also expanded into a large number of IT services including computer software, electronics, as also financial services. The trademark TATA is registered in favour of the appellants in a large number of classes including in Class 5.

The respondents, Mr. Prakash Yadav, operate various shops under the name of Vardhman Chemicals. The grievance of the appellants is that the respondents started using the trademark TATAZYME and TATA GOLD for various agricultural products.

The appellants issued notice dated 24th August 2009 to the respondents, which was replied to vide letter dated 3rd September 2009. Vide the said letter, the respondents gave an undertaking that they would not use the mark TATAZYME in respect of its bio-products and that they would also change the packaging of the product. However, on a follow up enquiry, the respondents were found to be using the trademarks TATAZYME and TATA GOLD, leading to the filing of the present suit.

Accordingly the appellants have filed the present suit for permanent injunction restraining infringement of their registered trademarks, passing off, dilution and tarnishment of trademarks, damages, rendition of accounts, delivery up, etc.

The court had on 27th February 2015, granted an ex-parte ad interim injunction restraining the respondents from using the impugned marks and had also appointed Local Commissioners, but In effect, both the Commissioners had to return without executing the commission in respect of M/s. Vardhman Chemicals and Mr. Prakash Yadav.

According to the court in the present suit, the respondents were making false statements before the court and deliberately misleading the court. The court highlighted that even the Local Commissioner’s Report showed that the respondents had deliberately failed to cooperate in the execution of the Local Commission. Further, coming to damages, the court asserted that the present was a case of deliberate violation and infringement of the mark TATA and that the respondents were habitual offenders. The court asserted that the respondents were put to notice in 2006 and after giving undertakings continued to misuse the mark TATA in various forms including by using the marks TATAZYME and TATAGOLD. To make matters worse, deliberate misstatements and false statements were made by Mr. Prakash Yadav, who was the proprietor of M/s. Vardhman Chemicals.

According to the court under principles akin to Section 105 of the Trade Marks Act 1999, which provides for increased punishment for second or subsequent convictions, the court was of the opinion that even in civil cases, such respondents who indulged in habitual infringement ought to be punished with higher damages. The court stated that the appellants had incurred legal costs since 2006 to stop violation of their mark TATA hence the suit was decreed against Mr. Prakash Yadav for a sum of Rs. 20,00,000/-, out of which Rs. 10,00,000/- would be payable to the appellants and Rs. 10,00,000/- would be payable to the AIIMS Poor Fund Account with SBI.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2A; Contempt Of Courts Act, 1971 – Section 14, Contempt Of Courts Act, 1971 – Section 15; Trade Marks Act, 1999 – Section 105

The mark ‘EXON’ was almost identical to ‘EXXON’ and there was chance of confusion as the appellants name was Exxon Mobil Corporation, accordingly the appellants were entitled to an injunction

Exxon Mobil Corporation       V/S       Exoncorp Private Limited

The present suit is filed by the appellants Exxon Mobil Corporation, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of trademark, passing off, delivery up and rendition of accounts. [CS (COMM) 111/2019, Decided On: 16.07.2019]

The appellants Exxon Mobil Corporation commenced their business in 1882 and adopted the word ‘EXXON’ as their trademark since 1967 in the U.S.A. The word ‘EXXON’ is a prominent part of the appellants trading style. The said mark is used in combination with various other marks. The appellants are in the business of gas exploration, oil production, refining and marketing of petroleum products, research and development. The appellant’s mark ‘EXXON’ is a registered trademark in over 160 jurisdictions, including in India.

According to the appellants, they have consistently been amongst the top five Fortune 500 companies in the world since 1967. The appellant’s business and operations are supported by their website www.exxonmobil.com. Further the appellants have constantly taken actions to protect the ‘EXXON’ mark.

The appellants came across the respondents M/s. Exoncorp Technology Solutions, who were operating their website – www.exoncorp.com, sometime in November 2018. The appellants state that the respondents had their presence not only on the internet through their website, but also on various social media platforms such as LinkedIn, Facebook, Twitter and YouTube.

In view of the use of an identical mark, consisting of the expression Exoncorp, which was almost identical to the appellant’s mark ‘EXXON’, a cease and desist notice was issued by the appellants calling upon the respondents to seize use of the impugned mark. Further a notice dated 8th November 2018 was issued to the respondents and on receiving no response from the respondents, reminder notices were also issued. But despite delivery of the notices, no reply was received from the respondents hence, the appellants filed the present suit concerning the trademark ‘EXXON’ and the use of the mark ‘EXON’ by the respondents as part of their corporate name and trading style for rendering information technology services.

The respondents in the present suit admitted that they were incorporated in 2018. Further in response to the global registrations of the appellants, the respondents did not deny the same but averred that the appellant’s mark was not registered in Class 42. The respondents also averred that while the Plaintiff is in the business of petroleum and petroleum related products and businesses, the Defendant is in IT related services. It was further stated by the respondents that they had booked the domain name www.exoncorp.com on 5th May, 2014. Thus broadly the arguments raised by the respondents were that the logo used by the respondents was not deceptively similar, that the appellant’s wordmark “Exxon” was not registered in Class 42 and that the appellants and the respondent’s area of business was different.

The appellants argued that in some orders passed by the Calcutta High Court and the Delhi High Court, their ‘EXXON’ mark was declared as a ‘well-known mark’ and according to the definition of a well-known trademark under Section 2(1) (zg) it was clear that upon being declared as a well-known mark, even if the mark was used in respect of other goods or services for which it may not be registered or for which the appellants were not using the same, the mark was liable to be protected. Thus, the objection of the respondents that the appellants were in a different area of business and hence the respondent’s mark was not liable to be injuncted was untenable.

The court in the present suit concluded that the mark ‘EXON’ was almost identical to ‘EXXON’ and that there were chances of confusion as the appellants name was Exxon Mobil Corporation. The court further asserted that the word ‘CORP’ read with ‘EXON’ in fact added to the confusion and conflict between the appellants and the respondents. Further it was also highlighted that the appellant’s mark EXXON had been declared as a well-known mark. Hence, according to the court, the appellants were entitled to protect their mark EXXON even in respect of IT services. According to the court the nature of IT services in current day and age was such that the same were used in every area of business whether it was  manufacturing of goods or providing services. IT services in that sense were now the foundation of every office and no business could be successfully run without a supporting IT framework. Thus, according to the court the stand of the respondents that their services were distinct and different from that of the appellant’s was not liable to be accepted.

Thus, in view of the various admissions by the respondents, it was clear that the appellants were entitled to an injunction. Also as the respondents had not reverted despite attempts made by the appellants which ultimately led to the filing of the present suit including incurring of costs by the appellants, the appellants were awarded a sum of Rs. 2 lakhs as costs.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XII Rule 6; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Section 20; Code of Civil Procedure, 1908 (CPC) – Section 20 (c); Code of Civil Procedure, 1908 (CPC) – Section 20(c); Copyright Act, 1957 – Section 62, Copyright Act, 1957 – Section 62(2); Trade And Merchandise Marks Act, 1958 [repealed] – Section 105; Trade Marks Act, 1999 – Section 10(4), Trade Marks Act, 1999 – Section 134, Trade Marks Act, 1999 – Section 134(2), Trade Marks Act, 1999 – Section 2(1), Trade Marks Act, 1999 – Section 2(2), Trade Marks Act, 1999 – Section 28, Trade Marks Act, 1999 – Section 29, Trade Marks Act, 1999 – Section 29(4), Trade Marks Act, 1999 – Section 29(5), Trade Marks Act, 1999 – Section 29(6), Trade Marks Act, 1999 – Section 29(7), Trade Marks Act, 1999 – Section 56, Trade Marks Act, 1999 – Section 56 (2), Trade Marks Act, 1999 – Section 56(1)

The triple identity test of use of a deceptively similar trademark (ZENFONE) in relation to identical goods (mobile phones) having identical trade channels was satisfied and accordingly the suit was decreed in favour of the appellants

Teleecare Network India Pvt. Ltd.  V/S  Asus Technology Pvt. Ltd.

The present suit is filed by the appellants Teleecare Network India Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for infringement, permanent and mandatory injunction, passing off, delivery up and damages. [CS (COMM) 731/2017, CCP (O) 42/2015, I.A. Nos. 7941, 12833/2015, 5022/2016, 2248, 5770 and 13477/2018, Decided On: 28.05.2019]

The appellants, Teleecare Network India Pvt. Ltd. became the registered proprietor of the marks ZEN and ZENMOBILE under Classes 09, 21 and 36 of the Trade Marks Act, 1999 on 13th June 2016. According to the appellants their trademarks ZEN and ZEN MOBILE are arbitrary and coined words which have no relation to the business of mobile phones and accordingly are not descriptive marks. The appellants stated that they were the prior users and had been continuously and extensively using the marks ZEN and ZEN MOBILE for feature phones, smart phones, tablets and accessories since 2008.

It is the contention of the appellants that the respondents had adopted an identical trademark ZENFONE to that of the appellant’s mark ZEN and ZENMOBILE for selling identical goods i.e. mobile phones. According to the appellants the essential feature of the respondent’s trademark was ZEN and the addition of the word FONE as a suffix was immaterial. It is further pleaded by the appellants that the respondents had launched their products under the impugned identical mark ZENFONE within a similar price range and were targeting the same class of customers as the appellants. According to the appellants the respondent’s mark was likely to cause confusion in the minds of the public that the respondent’s goods were somehow associated with that of the appellant’s.

Hence the appellants filed the present suit praying for a decree of permanent injunction restraining the respondents from selling and advertising for sale mobile phones and mobile accessories or any other goods whatsoever under the trademark “ZENFONE” or any other trademark identical and deceptively similar to the trademark “ZEN” and “ZEN MOBILE” which amounts to infringement of the appellant’s marks.

The respondents in the present suit argued that their corporation was spearheaded by a Mr. Jonney Shih who was a staunch believer of the ancient “Zen Philosophy” and that they have been using the Zen Design Concept, namely the concentric circles (giving the effect of ripples in water) on their gadgets outer surfaces since long. It is the contention of the respondents that they had in 2011, the launched the Ultra thin laptops named as ZENBOOK to reflect their belief in Zen Philosophy and that the success of the Zenbook led to the launch of ASUS Zenpad tablets, ASUS ZenUI (user interface system), Asus Zenpower (for batteries, power chargers), Asus Zenflash (camera flash lights) etc. The respondents also asserted that they had already filed an application for cancellation of the appellant’s registered trademark under Application no. 733503 in Class 09 under the Trade Marks Act, 1999 before the Intellectual Property Appellate Board, New Delhi and the same was pending adjudication. The respondents also contended that the mark ZEN was common to trade and generic in nature and that there were various third-party   facturers who had got the mark ZEN registered under Class 9 of the Trade Marks Act, 1999 for mobile phones, mobile handsets etc.

Having heard both the parties, the court is of the view that though the word ZEN was a generic word qua a school of Buddhism, yet it was not a generic mark with regard to mobile phones and tablets as the said word has no connection or correlation with mobile phones or tablets and consequently, the adoption of the mark ZEN by the appellants with respect to mobile phones and tablets, with which it has no correlation, was arbitrary and was entitled to protection.

Further according to the court in the present suit, the appellants had placed on record documents showing that they were the prior users since 2008 of the mark ZEN in comparison to the respondents who began using an identical and deceptively similar mark ZENFONE in 2014. The court also highlighted that, Mr. Amitabh Bachchan was the brand ambassador for the appellants vide agreement dated 27th May 2010, while the respondent’s first advertisement was in 2014 and this clearly showed that the plaintiff appellants had acquired significant goodwill and reputation with regards to their products sold under the mark ZEN prior to the respondents entering the market. Hence the court was of the view that the respondent’s adoption of the mark ZEN was in bad faith as they had applied for the appellant’s mark subsequently in 2014. Also, in the opinion of the court, the triple identity test was satisfied as the respondents had made use of a deceptively similar, identical trademark (ZENFONE) in relation to identical goods (mobile phones) having identical trade channels.

Accordingly, the respondents were restrained from directly or indirectly selling or advertising mobile phones and mobile accessories or any other related products under the trademark ZEN, ZENFONE or any other trademark identical and deceptively similar to the trademark ZEN and ZEN Mobile, in any manner whatsoever.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 17(2), Trade Marks Act, 1999 – Section 9(1)

Cases Referred: Heinz Italia and Anr. vs. Dabur India Ltd.   /SC/2133/2007; Century Traders vs. Roshan Lal Duggar Co.   /DE/0153/1977; Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.   /SC/0199/2001; Corn Products Refining Co. vs. Shangrila Food Products Ltd.   /SC/0115/1959; Bhole Baba Milk Food Industries Ltd. vs. Parul food specialities pvt. Ltd.   /DE/4050/2011; The Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd.   /SC/0052/1955; Skyline Education Institute (Pvt.) Ltd. vs. S.L. Vaswani and Anr.   /SC/0009/2010; Novelty Emporium vs. Novelty Creation Private Limited   /DE/1483/2001; Rhizome Distilleries P. Ltd. and Ors. vs. Pernod Ricard S.A. France and Ors.   /DE/2742/2009; Bigtree Entertainment Pvt. Ltd. vs. Brain Seed Sportainment Pvt. Ltd. and Ors.   /DE/5189/2017; Sunil Mittal and Ors. vs. Darzi on Call   /DE/1028/2017; Mattel, Inc. and Ors. vs. Mr. Jayant Agarwalla and Ors.   /DE/1378/2008; Evergreen Sweet House vs. Ever Green and Ors.   /DE/0959/2008; Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. vs. Shree Sita Chawal Udyog Mill   /DE/2307/2010; Goenka Institute of Education and Research vs. Anjani Kumar Goenka and Anr.   /DE/2229/2009; Novartis AG vs. Crest Pharma Pvt. Ltd. and Anr.   /DE/1587/2009; Shri Pankaj Goel vs. Dabur India Ltd.   /DE/2271/2008; Patel Field Marshal Agencies and Ors. vs. P.M. Diesels Ltd. and Ors.   /SC/1509/2017; H&M Hennes and Mauritz AB and Ors. vs. HM Megabrands Pvt. Ltd. and Ors.   /DE/2097/2018

 

The balance of convenience was in favour of the appellants and hence an injunction order was passed restraining the respondents

Sun Pharma Laboratories Ltd.   V/S   Intas Pharmaceuticals Ltd

The present suit is filed by the appellants Sun Pharma Laboratories Ltd., in the Honourable High Court of Delhi before Honourable Justice Jayant Nath, seeking a decree of permanent injunction, an order for delivery of the infringing goods and a decree for damages and costs. [CS (COMM) 1206/2016, Decided On: 15.05.2019]

The appellants are a company registered under the Companies Act 2013 and are a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd., which is ranked as one of the top five pharma companies in India and which was set up in India in 1983. The appellants state that one of the preparations   manufactured  by them is under the trademark DECITEX which is a coined mark and the said product is used for treating cancer/chemotherapy. According to the appellants the trademark DECITEX has been used extensively and commercially by the appellants in the course of medicinal preparations since December 2011 and has acquired formidable goodwill and reputation. The appellants registered the trademark DECITEX was in India under Class 5 on 15.07.2011. Further, the appellants asserted that they have statutory rights to the exclusive use of their registered trademark DECITEX and that the mark DECITEX is a well known mark as per the provisions of Section 2(1) (zg) of the Trade Mark Act.

The respondents in the present suit, Intas Pharmaceuticals Limited, are a company incorporated under the Companies Act 2013 and are engaged in the business of   facturing and marketing pharmaceutical preparations.

According to the appellants, in the second week of September 2014, the appellants through their field force came across the respondent’s product under the impugned trade mark DECITAS which was deceptively similar to the appellant’s trademark DECITEX. Further the respondent’s drug was also used for treatment of the same ailment, namely, cancer. The appellants then conducted a search of the respondent’s impugned trademark with the Trade Mark Registry and found that an application for the mark DECITAS dated 19.04.2014 was applied by the respondents as “proposed to be used”. This application was yet to be advertised.

It is the contention of the appellants that the respondent’s trademark DECITAS is visually, structurally, phonetically and deceptively similar to the appellant’s trademark DECITEX. The appellants asserted that the respondents had malafidely adopted the trademark DECITAS in April 2014 for the sale of their product which amounted to unfair trade practice and unfair competition. It was further pleaded by the appellants that the conduct of the respondents was unethical, unfair, lacked bona fide and was unlawful.

The respondents in the present suit stated that DECITAS and DECITEX are both based on the drug/molecule Decitabine hence the prefix ‘DECI’ in their trade name and that of the appellants’, represented the molecule or the active ingredient present in the drugs   manufactured  by both the parties. According to the respondents no one could claim monopoly over a name or short name of a molecule/active ingredient of a drug. The respondents further pleaded that in the adoption of the trademark DECITAS, the prefix ‘DECI indicated the molecule ‘Decitabine’ and the suffix ‘TAS’ represented the name of the company that   manufactured  the drug i.e. ‘INTAS’. The respondent asserted that it was common methodology in pharma industry to name medicines/ products/ trademarks by using a combination of an abbreviation of the molecule with the company name.

The court after hearing the arguments put forth by both the parties asserted that the appellants had made out a prima facie case. According to the court the appellants had approached the court within three months of launch of the drug by the respondents. The court stated that the balance of convenience was also in favour of the appellants.

Hence an injunction order was passed restraining the respondents from   facturing, selling, advertising or dealing in the drug/medicinal preparations using the impugned trademark ‘DECITAS’ or any other mark which is deceptively similar to the appellants’ registered trademark DECITEX.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VII Rule 10; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2

Cases Referred: Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.   /SC/0199/2001; Neon Laboratories Ltd. vs. Medical Technologies Ltd. and Ors.   /SC/1192/2015; Sun Pharma Laboratories Ltd. vs. Lupin Ltd. and Ors.   /DE/0770/2018; F. Hoffmann-la Roche & Co. Ltd. vs. Geoffrey Manner & Co. Pvt. Ltd.   /SC/0302/1969; Astrazeneca UK Limited and Anr. vs. Orchid Chemicals and Pharmaceuticals Ltd.   /DE/0869/2007; Stiefel Laboratories vs. Ajanta Pharma Ltd.   /DE/1466/2014; Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories   /SC/0197/1964; American Home Products Corporation vs. Mac Laboratories Pvt. Ltd. and Anr.   /SC/0204/1985; Tata Oil Mills Co. Ltd. vs. Wipro Ltd. and Anr.   /DE/0614/1985; Midas Hygiene Industries P. Ltd. and Anr. vs. Sudhir Bhatia and Ors.   /SC/0186/2004; Encore Electronics Ltd. vs. Anchor Electronics and Electricals Pvt. Ltd.   /MH/0069/2007; K.R. Chinna Krishna Chettiar vs. Shri Ambal and Co., Madras and Anr.   /SC/0303/1969; Amritdhara Pharmacy vs. Satyadeo Gupta   /SC/0256/1962; Keshav Kumar Aggarwal vs. M/s. NIIT Ltd.   /DE/0731/2013; Corn Products Refining Co. vs. Shangrila Food Products Ltd.   /SC/0115/1959

Due to the lack of any defence on behalf of the respondents, the suit was decreed in favour of the appellants

Adidas AG                         V/S                           Praveen Kumar

The present suit is filed by the appellants Adidas AG, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, for permanent injunction restraining infringement of trademark, passing off, unfair competition, for rendition of accounts of profits/damages, delivery up etc. [CS (COMM) 1269/2018 and I.A. 16629/2018, Decided On: 14.05.2019]

The appellants in the present suit claim to be one of the world’s leading   facturers of ADIDAS athletic footwear, sportswear, and sporting equipment. The appellant’s company was founded in Germany in 1920 and since then has expanded to a global market into several countries. The appellants stated that the ‘THREE STRIPES’ device mark since its adoption in 1949, almost 80 years ago, has been exclusively associated with them and has been promoted by various sporting celebrities including Shri. Milkha Singh, legendary Indian Olympian. According to the appellants the immediate recognition and association of the ‘THREE STRIPES’ mark is with them. Further the ‘THREE STRIPES’ mark is also registered in several countries of the world as a device mark and is registered in India, in various forms, since 1989 in Class 25.

The appellants came to know in September 2018 that the respondents were using the trademark COLO however with the ‘THREE STRIPES’ device mark on their footwear. Hence the appellants filed the present suit against the respondents.

With regards to the plea of the appellants, Local Commissioners were, appointed to visit the premises of the respondents and to submit their reports after inventorising the infringing products. The Local Commissioners, so appointed by the court, vide order dated 5th December 2018, filed their reports stating that the respondents had stock of various footwear that bore the ‘THREE STRIPES’ mark of the appellants. The Commissioner’s report clearly stated that the respondents were clearly the   facturer of the infringing shoes bearing the ‘THREE STRIPES’ device mark.

On the basis of the pleadings and the documents filed on record it was established that the ADIDAS brand and the ‘THREE STRIPES’ device mark had been in use for several years in India and were registered and owned by the appellants. Further it was also highlighted that the European Court of Justice observed that a large proportion of persons who, faced with a shoe consisting of two parallel stripes, associated the same with ADIDAS and hence the THREE STRIPES DEVICE was protected by the ECJ. A perusal of the image of the respondent’s shoes showed that the ‘THREE STRIPES’ device mark was used by the respondents in a manner identical to that of the appellants.

On the basis of pleadings and documents on record and due to the lack of any defence on behalf of the respondents, the court in case of the present suit, granted a decree of permanent injunction in favour of the appellants and against the respondents. Further the court asserted that damages were liable to be awarded against the respondents and accordingly the respondents were to pay a sum of Rs. 21 lakhs and were also directed to hand over the products seized from them by the Local Commissioners to the appellants’ representative.

  The marks ACCOR INN and ACCORD INN were identical and deceptively similar to the appellants’ mark and hence injunction was granted restraining the respondents

Accor                      V/S               Ajay Gupta

The present suit is filed by the appellants Adidas AG, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of its registered trademarks and service marks against the respondents. [CS (COMM) 191/2019, Decided On: 27.05.2019]

The appellants claim to be a global hotel chain using the mark ‘ACCOR’ and ACCOR HOTELS’. According to the appellants the respondents started using the name/trading style ACCOR’ and ‘ACCOR INN’ as also the logo style. The appellants had issued notice to the respondents notifying them of their rights in the mark. The respondents reverted vide e-mail dated 23rd November 2015 that they would close all the related activity of ‘ACCOR’ including the website, social sites, company etc. However, despite this assurance given by the respondents, the appellants came to know that the respondents were continuing to use the infringing trading style and name and further notices were addressed by the appellants to the respondents. To this, the respondents had, vide reply dated 21st March 2016, given an assurance that they had stopped all activities relating to ACCOR and had started marketing activity of ‘ACCORD INN’. Hence the present suit was filed by the appellants.

The court in the present suit stated that, it was clear that the appellants were the registered owner of the mark ACCOR’, and that the marks ACCOR INN and ACCORD INN were both identical and deceptively similar to the appellants’ mark. Further, according to the court the use of the said trading style for hotel names or any other accommodation related services would be violative of the appellants’ rights in the mark and also create confusion between the appellants’ hotels and the respondents’ Inns/Hotels. Thus, in view of the above a decree of permanent injunction was granted restraining the respondents, from using the trademark and logo ACCOR, ACCOR INN, ACCORD INN or any other trademark or logo, which was identical or deceptively similar thereto, either as a trademark, service mark or as part of a domain name, email address or in any other manner including on social media. The respondents were also directed via a decree of mandatory injunction to surrender the domain names www.accorinn.com and www.accordinn.com and handover the control of the said domain names to the appellants on or before 15th June 2019 and the appellants were awarded costs of Rs. 5,00,000/- (Rupees Five Lakhs) to be paid by the respondents.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 134, Trade Marks Act, 1999 – Section 135

The respondents had confirmed that they would change their name during the pendency of the suit, and accordingly the suit was decreed in favour of the appellants

Thermax Limited            V/S              Thermax Engineers Pvt. Ltd.

The present suit is filed by the appellants Thermax Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of trademark and trade name, passing off etc. in respect of its trade name ‘THERMAX’. [CS (COMM) 157/2017 and I.A. 10119/2014, Decided On: 19.07.2019]

The appellants in the present suit Thermax Limited stated that they had coined and adopted the mark ‘THERMAX’ in 1974 and the same was being used by them as a trademark, house mark and was a distinctive and prominent mark of their corporate name. The mark ‘THERMAX’ was a registered trademark in India in various classes of goods and services and was also registered in several foreign countries. The appellants promoted their business through their website www.thermaxindia.com and had several international offices across 75 countries and the sales turnover of the appellants was more than Rs. 4,000 crores per annum.

The appellants state that sometime in May 2014, they came to know that the respondents had started using the corporate name Thermax Engineers Pvt. Ltd. Further enquiries revealed that the respondents’ company was incorporated on 30th October 2012 with the Registrar of Companies, Delhi and its Memorandum and Articles of Association explain its business areas as being almost identical to that of the appellants’ i.e., installation, ducting, fitting, repairing and maintenance of air conditioners and refrigerators, technical consultation, engineering services etc. According to the appellants the use of the word ‘THERMAX’ as part of the respondents’ corporate name was violative of their statutory rights under the Trademark Act, 1999 as the mark ‘THERMAX’ was a well-known mark.

The court in the present suit asserted that a perusal of the plaint showed that the appellants were the prior user and adopter of the mark ‘THERMAX’ since 1974 and that their company had been in existence for more than 40 years and it had been using the mark not only in India but in several foreign countries. Further the court also asserted that the mark ‘THERMAX’ was extremely well-known and the services which the respondents were offering as per the Memorandum and Articles of Association were identical to that of the appellants. Further, as recorded in the order dated 24th November, 2010, the respondents had confirmed that they would change their name during the pendency of the present suit. Hence under these circumstances, no ex-parte evidence was needed to be led. The court concluded that the appellants were entitled to a permanent injunction against the respondents from using the mark THERMAX and the suit was accordingly decreed. Further, since the respondents had agreed to give up the mark at an early stage of the proceedings, costs of Rs. 1 lakh were awarded to the appellants.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXIII Rule XXIII; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Trade Marks Act, 1999 – Section 29(4), Trade Marks Act, 1999 – Section 29(5)

Cases Referred: Montari Overseas Limited vs. Montari Industries Limited   /DE/0513/1995; Kirloskar Diesel Recon Pvt. Ltd. and another vs. Kirloskar Proprietary Ltd. and others   /MH/0033/1996; K.G. Khosla Compressors Ltd. vs. Khosla Extrakting Ltd. and Ors.   /DE/0219/1985; Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd.   /SC/0724/2001

The respondents copying the appellants’ trademark would amount to infringement of the trademark, as stated in S. 29 of the Trade Marks Act

Ayngaran Coffee          V/S          K. Vijayan

The present suit is filed by the appellants Ayngaran Coffee, in the Honourable High Court of Madras before Honourable Justice Krishnan Ramasamy, for the relief of permanent injunction and such other reliefs. [C.S. No. 190 of 2019, A. No. 1980 of 2019, O.A. Nos. 256 and 258 of 2019, Decided On: 25.07.2019]

The appellants are engaged in the business of   facturing, marketing, preparing and selling of traditional Kumbakonam coffee, tea and other hot beverages under the trademark “KUMBAKONAM AYNGARAN COFFEE” written in Tamil language. The appellants had started their first shop on 19.01.2014 in Kumbakonam under the trademark “KUMBAKONAM AYNGARAN COFFEE” and due to their hard work and sheer effort have also started their business in various other places in Tamil Nadu such as Mannargudi, Thanjavur and Chennai etc. According to the appellants they are the first to adopt the said trademark for the said business honestly and continue to use the same without any interruption and commercial break since 2014. In order to protect their brand / trademark the appellants have applied and obtained the trademark registration under No. 2672510 in class 30 and have also filed various other applications in order to protect their trademark “KUMBAKONAM AYNGARAN COFFEE” under the Trademark Act, 1999 and Copyright Act, 1957.

The appellants submitted that in spite of all the notices and warnings, during the month of January 2019 they came across the shop of the respondents with the board “OM KUMBAKONAM AYNGARAN COFFEE” in Thanjavur which was similar and identical to that of the appellants’ registered trademark “KUMBAKONAM AYNGARAN COFFEE”. The appellants state that the trademark adopted by the respondents was both visually, phonetically and structurally similar and identical to that of the appellants. Except for some minor additions the colour scheme, getup etc. of the trademark was deceptively similar to that of the appellants’ trademark. According to the appellants the malafide intention of the respondents in making unlawful profit was crystal clear by a simple glance of the two trademarks i.e. of the appellants and the respondents. Hence the appellants filed the present suit restraining the respondents from infringing their trademark and copying “KUMBAKONAM AYNGARAN COFFEE”.

Subsequently, after the admission of the suit, the suit summons was served on the respondents on 12.04.2019 but in spite of the service of the suit summons, the respondents failed to appear before the court.

The court in the present suit asserted that on a perusal of the documents, the court found that trademark of the appellants namely “KUMBAKONAM AYNGARAN COFFEE” was registered and that the appellants had also obtained legal user certificate. It was clear that the respondents were not only copying the trademark of the appellants ‘KUMBAKONAM AYNGARAN COFFEE’ but also copying the colour scheme and design. The court concluded that the respondents copying the appellants’ trademark ‘KUMBAKONAM AYNGARAN COFFEE’ would amount to infringement of the trademark, as stated in Section 29 of the Trademarks Act.

The court asserted that the appellants had proved their claim and were entitled to the decree as prayed for and were also entitled to costs as the appellants had incurred substantial expenditure in carrying the suit to its logical end.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35-A

The respondents’ copying the appellants’ trademark ‘Aachi’ would amount to infringement of the trademark, as stated in S. 29 of the Trade Marks Act hence the suit was decreed in favour of the appellants

A.D. Padmasingh Isaac          V/S               Aachi Fast Food

The present suit is filed by the appellants A.D. Padmasingh Isaac, in the Honourable High Court of Madras before Honourable Justice Krishnan Ramasamy, for the relief of permanent injunction and such other reliefs. [C.S. No. 912 of 2017, Decided On: 24.07.2019]

The appellants are the proprietor of the trademark Aachi and have diversified their business activities and started   facturing and marketing various kinds of consumer goods, within a short span of 17 years. According to the appellants, they had become one of the leading   facturers of packaged masalas, because of the efforts undertaken by them in promoting and advertising their products through various mediums. The appellants have also received many prestigious awards for the quality of products and customer service. According to the appellants the word mark ‘Aachi’ as a whole has been used by them since 1995 and has become a well known trademark of the appellants. The appellants state that they had honestly adopted the mark and because of the efforts made by them, the trade and the public, associated the mark with the appellants and none else. Further the appellants with a view to protecting their intellectual property applied for the registration of the word mark Aachi on 29.01.1999, in Class 30 and were granted registration for the trademark “Aachi” under Registration No. 838786. The appellants are since then the exclusive owners of the word mark ‘Aachi’.The respondents are carrying on their business in the name and style, ‘Aachi Fast Foods’. Hence the appellants filed the present suit.After the admission of the suit, the suit summons was served on the respondents but in spite of the service the respondents failed to appear before the court.The court on perusal of the records put forth was of the view that the trademark, ‘Aachi’ of the appellants was a registered trademark. According to the court the respondents carrying on their business in the name and style of ‘Aachi Fast Foods’ were copying the whole trademark of the appellants as part of their trade name. Further perusal of the exhibits on record also highlighted that the respondents were not only copying the trademark of the appellants’ ‘Aachi’ but also copying the colour scheme.  Therefore, the court found that the respondents’ copying the appellants’ trademark ‘Aachi’ would amount to infringement of the trademark, as stated in Section 29 of the Trademarks Act. Accordingly, the appellants were entitled to the decree as prayed for.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35-A, Indian Evidence Act, 1872 – Section 65B; Trade Marks Act, 1999 – Section 29

Use of identical content would infringe the appellants’ copyright and hence a permanent injunction is granted in favour of the appellants

Mankind Pharma Limited   V/S   Lee Pharmaceuticals of Lee House

The present suit is filed by the appellants Mankind Pharma Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking a permanent injunction restraining the respondents – Lee Pharmaceuticals of Lee House from using the content of the appellants’ website. [CS (COMM) 483/2016, CCP (O) 49/2015 and I.A. 6903/2017, Decided On: 12.07.2019]

The appellants in the present suit, Mankind Pharma Limited are a pharmaceutical company selling various medicinal preparations and over the counter drugs (OTCs). The appellants have various domain names registered in their name with the mark ‘MANKIND’, however, the main website of the appellants’ is www.mankindpharma.com. The appellants state that the said website had been originally designed by them to promote their business and had a large amount of unique content, including information about the appellants, images of products   manufactured , and other details.

The respondents, according to the appellants were incorporated in 2013 and their headquarters is in Chennai. The appellants asserted that they came to know on 27th February 2014 that the respondents had registered a website by the name www.leepharmaceuticals.in. A perusal of the website revealed that the entire website, including the photographs, images, etc. of the appellants was copied by the respondents. Accordingly, the appellants filed the present suit.

The respondents were duly served with the summons of the suit and the notice of the applications, however they failed to appear before the court and were proceeded ex-parte vide order dated 11th August, 2015.

It is the plea of the appellants that despite the injunction order, the respondents continued to use the content of the appellants’ website. The appellants had then filed contempt and though the respondents thereafter took down the infringing content from its website, they chose not to appear before the court at all.

A bare perusal of the appellants’ and respondents’ websites showed that the website of the respondents was identical in terms of the content of the text, images, tabs and various features. The appellants highlighted that, where their research centre was called as Mankind Research Centre (MRC), the respondents though terming their research centre as ‘Lee Research Centre’ still continued to use the abbreviation MRC. This showed that the respondents had unabashedly copied the appellants’ website and its contents despite not having any rights in the same whatsoever. Further the respondents, being in the same field as that of the appellants’ i.e. pharmaceuticals and considering the nature of the online website use by customers and other members of the general public, there was bound to be deception.

The court in the present suit asserted that the use of identical content was not only infringement of the appellants’ copyright but could also led to misrepresentation that the respondents were either affiliated to, or a group company of the appellants’. Thus, under these circumstances, considering the evidence placed on record by the appellants and the perusal of the contents of the website of the respondents, the court concluded that, a permanent injunction was liable to be granted in favour of the appellants against the respondents, restraining them from in any manner infringing the copyright of the appellants in the contents of their website www.mankindpharma.com. Further, the respondents were also restrained from passing off their business as being affiliated to that of the appellants.

  The respondents had copied the original literary work of the appellants, thus they were clearly guilty of infringing the appellants’ copyright

IGNOU         V/S               Dominant Publishers and Distributors

The present suit is filed by the appellants IGNOU, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, for permanent injunction restraining infringement of copyright, and for rendition of accounts. [CS (COMM) 219/2016, Decided On: 14.05.2019]

The appellants IGNOU provide distance education to lakhs of students across the country in several courses. One of the courses conducted by IGNOU is a Post Graduate diploma course in Journalism and Mass Communication (‘PGJMC’). The course material for this course is prepared under its aegis and directions. One of the course materials is titled as ‘New Communication Technologies’ being Course-I, Unit No. 4 of Block No. 3′ of PGJMC. The author of the said course material is Shri V. Rama Rao. The said course material is a literary work.

The appellants state that it came to their notice that the respondents had published a book titled ‘Modern Communication Technologies’ under the authorship of a Mr. Y.K. D’Souza, and that several pages of the appellants’ course material had been reproduced at pages 74 to 90 and pages 207 to 222 of the respondents’ book.

Hence the appellants filed the present suit seeking a decree for permanent prohibitory injunction restraining the respondents from in any manner selling, circulating or distributing the infringed book titled “Modern Communication Technologies” by Y.K. D’souza and from in any manner further reproducing the said copyright work.

The respondents filed their written statement and one of the defences taken was that the impugned work was “based on the fundamentals of electronics, which was a part of physics/science.” It was further pleaded by the respondents that they were only a publisher and not the author of the book in question. The respondents further claimed that the contents, which the appellants complained of, were also contained in various other books.

According to the appellants, the respondents being the proprietor of the publishing house ought to have known and met the author, Mr. Y.K. D’Souza, which the respondents themselves confirmed that they had never met. Hence according to the appellants, the fact that the respondents did not even know the author and denied having met the author, showed that there is no author such as Mr. Y.K. D’Souza.

The court in the present suit summarised that as per the evidence, the appellants’ course material was published for the first time in 1995 and the respondents’ infringing work was published in 1999. Further the profile of the author was not contained in the book of respondents as, apart from the name, there were no details whatsoever about the author, given in the book. Also the appellants had produced the author, who had written the course work for the appellants’ university. A perusal of the documents put on record clearly highlighted that except the introduction and the summing up part of the course work in chapter 4, the entire chapter had been lifted word to word, including the titles and sub-titles. Hence the respondents’ defence, that their infringing work was based on general knowledge of electronics or physics, was completely false, as on the basis of general knowledge it is not possible for anyone to produce an identical verbatim text. Obviously the respondents had copied from the appellants’ original course work.

The court further asserted that the appellants’ work was an original literary work under Section 2(o) of the Copyright Act, 1957. The appellants had exclusive rights to reproduce the same in any form including the print or electronic form. Copying of even a small extract of the original work constituted infringement. In the present case, the respondents had copied almost two full chapters of the appellants course work. Thus, the respondents were clearly guilty of infringing the appellants’ copyright.

Further, the process server’s report dated 13th March 2004 stated that there was no person by the name Mr. Y.K. D’Souza and the respondents appear to have used a fictitious author’s name for publishing the infringing book.

Accordingly, a decree of permanent injunction was granted in favour of the appellants and against the respondents. Further, a decree of damages of Rs. 50,000/- was also granted in favour of the appellants. Also since the appellants are a University, which had to litigate in the present suit for almost 16 years, actual costs were awarded in their favour.

  Acts/Rules/Orders: Copyright Act, 1957 – Section 2

The respondents were directed by the court to not launch the impugned television commercial with the word ZEROX or any other mark identical/similar to the appellants’ mark XEROX

XEROX Corporation               V/S               P.K. Khansaheb

The present suit is filed by the appellants XEROX Corporation, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of trademark, passing off, dilution, tarnishment, damages etc. [CS (COMM) 1196/2016 and I.A. 7727/2019, Decided On: 12.07.2019]

The appellants claim ownership in the trademark XEROX which was coined by Haloid Company, their predecessor in the year 1948. As per the appellants the said mark has been used extensively across the globe including in India. The word mark XEROX is an invented mark which has been coined by the appellants by combining the Greek words for ‘dry’ and ‘writing’. The appellants state that the trademark XEROX is registered in respect of goods in various classes in India, including Classes 1, 7 and 9, with the earliest trademark dating back to 1952. The appellants claim that their mark XEROX has become a well-known trademark and remains a coveted property of the appellants.

The grievance of the appellants is that the respondents launched an advertisement in 2006 for its mango candy “Kachha Mango Bite”. In the said advertisement, the respondents used the tag line “KACHE AAM KA ZEROX”. According to the appellants the use of the word ZEROX is violative of their trademark rights in the mark XEROX. Accordingly, the appellants issued a legal notice dated 10th January 2006, calling upon the respondents to withdraw the said advertisement. The respondents thereafter modified their advertisements by doing a voice over on the word ZEROX in the script by using the word “PHOTOCOPY”. However, the by-line continued to read as “KACHE AAM KA ZEROX”.

According to the appellants the respondents, after a span of 6 to 7 years, in December 2013, re-launched the television commercial for their product “Kachha Mango Bite” again using the word ZEROX in the by-line and voice-over. The appellants sent a legal notice dated 21st January 2014 to the respondents but the respondents refused to acknowledge the appellants’ proprietary rights in the word XEROX and also threatened the appellants with legal proceedings.

Hence the appellants field the present suit seeking a decree of permanent injunction restraining the respondents from using the mark ZEROX or any other trademark, deceptively/confusingly similar to the appellants’ mark in any form of advertisement whether in print or visual media, or in any other manner as may lead to infringement of the appellants’ registered trademark XEROX.

With regards to the present suit the respondents on enquiry by the court, stated that the advertisement which was running for their product “Kachha Mango Bite” has since been stopped and is not likely to be re-launched in any manner. The television commercial is also off air and the by-line is also not being used. The appellants, as recorded in order dated 3rd December 2018, have agreed not to press for damages and costs if the respondents agreed not to re-telecast the television commercial and withdraw the oppositions filed against the appellants’ trademarks.

Considering the stand of the appellants and the respondents, the court was of the opinion that, no issue in fact survived in as much as the cause of action in the present suit was, in respect of the television commercial which used the word ZEROX. Since the respondents do not intend to use the word ZEROX, they were directed by the court to not launch the impugned television commercial with the word ZEROX or any other mark identical/similar to the appellants’ mark XEROX. The respondents were also directed to withdraw the oppositions filed to the appellants’ mark XEROX within a period of four weeks.  It was further stated by the court that the respondents were at liberty to use the words “Kachha Mango Bite” which was the respondents own trademark, in respect of which no order was passed by this court in this matter. Accordingly the suit was decreed in the above terms.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 3; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 4

The respondents had no real prospect of defending their claim as their defence had been struck off and the evidence of the appellants’ too, had gone unrebutted

Yash Raj Films Pvt. Ltd.          V/S          Sri Sai Ganesh Productions

The present suit is filed by the appellants Yash Raj Films Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction, rendition of accounts and damages. [CS (COMM) 1329/2016, Decided On: 08.07.2019]

The appellants are a company engaged inter alia in production, direction and marketing etc. of films and over the years have attained an unparalleled reputation both in India as well as across the world. On 24th September 2010, the appellants announced the release of their film BAND BAAJA BAARAAT. On 10th December 2010 the appellant’s film was released across 629 screens in India and 114 screens in other countries. The appellants are owner of copyright in various original works that subsist in their film including but not limited to the story line, dialogues, theme, concept, plot, script, music, lyrics, character sketches etc. and are entitled to copyright protection under Section 14 of the Copyright Act, 1957.

In April, 2011, the appellants decided to remake the aforesaid film in Tamil and Telugu languages. According to the appellants it was in November/December 2011, that through market sources, they gained knowledge that the respondents intended to remake their film in Telugu language. The appellants issued a legal notice to the respondents, calling upon them to forthwith stop any plans for making a remake of any of their films. However, despite service, no response was received and the appellants assumed that the respondents had paid heed to their legal notice.

Subsequently, the appellants learnt that the respondents had continued to pursue a project to remake the appellants’ film in Telugu and issued a second legal notice to the respondents reiterating their objections and requesting the respondents to cease and desist from making a remake of their film. However, once again, despite service, no response was received. Further, according to the appellants on 27th January 2013, the respondents released the first trailer of the film titled JABARDASTH, which raised suspicions in the appellants’ mind, because of its striking similarity with the appellants’ film.

On watching the impugned film, the appellants found that the respondents’ film was a blatant copy of their film. Further the appellants state that the respondents had unlawfully sold the rights to release a dubbed version of the impugned film in Tamil language titled “DUM DUM PEE PEE” and same was scheduled to be released in the last week of March or first week of April, 2013.

It is the contention of the appellants that the similarities between their film and the respondents’ film were substantial and material in terms of theme, concept, plot, character sketches, story, script, form and expression etc. It is stated that the respondents’ blatant copying of all the elements of the appellants’ film amounted to copyright infringement. Further a spectator or viewer of the impugned film, who had also seen the appellants’ film, would have an unmistakable impression that the respondents’ film was a copy or reproduction of the appellants’ film.

Hence the appellants filed the suit praying for a decree permanently restraining the respondents from violating and infringing, in any manner, the copyrights of the appellants comprised in and over the movie BAND BAAJA BAARAAT and from dubbing or releasing the movie JABARDASTH in any other language including Tamil, and from releasing the movie JABARDASTH on any other format including on DVDSs, VCDs, Blu-ray discs or in any other electronic or magnetic format and from showing the movie JABARDASTH in theatres across the country.

The court, in the present case was of the view that the respondents had blatantly copied the fundamental, essential and distinctive features as well as forms and expression of the appellants’ film on purpose and consequently, had infringed the appellants’ copyright in their film ‘BAND BAJA BARAT’. The court was further of the opinion that it had jurisdiction to decide the present case, which was challenged by the respondents, as the impugned film was released in Delhi too. The court concluded that the respondents had no real prospect of defending their claim as their defence had been struck off and the fact that the evidence of the appellants’ too had gone unrebutted. Thus in view of the above, the suit was decreed in favour of the appellants and against the respondents.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXIII Rule 3; Code of Civil Procedure, 1908 (CPC) – Section 151; Copyright Act, 1957 – Section 13(3), Copyright Act, 1957 – Section 13(l), Copyright Act, 1957 – Section 14, Copyright Act, 1957 – Section 14(d), Copyright Act, 1957 – Section 2(d)

Cases Referred: R.G. Anand vs. Delux Films and Ors.   /SC/0256/1978

As the balance of convenience was in favour of the appellants an ad interim order of injunction was granted by the court

Hindustan Unilever Limited          V/S               Seif Khan

The present suit is filed by the appellants Hindustan Unilever Limited in the Honourable High Court of Calcutta before Honourable Justice Ashis Kumar Chakraborty, for infringement of trademark and copyright and various interim reliefs against the respondent. [G.A. No. 1736 of 2019 and C.S. No. 146 of 2019, Decided On: 31.07.2019]

The appellants are a part of the Unilever Group and carries on the business, inter alia, of  manufacturing, marketing and sale of various kinds of washing soaps, including detergent. The appellants state that since 1955, they have been   manufacturing and selling detergent powder in India by adopting the trade mark “WHEEL”. Apart from “WHEEL”, the appellants also  manufacture and sell another premium version of the said “WHEEL” brand known as “ACTIVE WHEEL”.

The appellants got designed a unique trademark label bearing original artistic work, get up and lay out to market their detergent bearing the trade name “ACTIVE WHEEL” containing swirl device and prominent display of lemons along with white jasmine flower covering the border of the label with the trademark “ACTIVE WHEEL” appearing on the centre of the label and the device of “WHEEL” on the lower right hand end of the label. The appellants are also the owner of the copyright in the painting and artistic work used in the labels for packaging of the detergent powder “ACTIVE WHEEL”. The appellants are is also the registered proprietor of several trademarks with respect of their products “WHEEL” and “ACTIVE WHEEL”. Further according to the appellants the said detergent “ACTIVE WHEEL” has acquired substantial reputation and goodwill in the entire country and the said labels with its unique feature have become distinctive product of the appellants’.

The appellants further claim that they also  manufacture and market another kind of detergent in the form of detergent bars, detergent liquids and matic (machine wash) powder and liquids used for washing machine under the trade names “SURF” and “SURF EXCEL”. According to the appellants, they have secured registration of the logo “SURF” and “SURF EXCEL” under the Trade Marks Act, 1999 and are also the assignee of the copyright in the painting and art work displayed in the labels and wrappers for packaging of their said products i.e. “SURF” & “SURF EXCEL”.

The appellants state that in or about the month of July 2019, in the course of market survey and investigation carried out by them at Bhagalpur, Bihar it was found that the respondents were   manufacturing, selling and distributing a detergent powder under the marks “LOVELY DETERGENT CAKE” and “ACTIVE LOVELY DETERGENT POWDER”. According to the appellants, a mere comparison of the labels of the appellants’ product “SURF EXCEL” with those of the first impugned product would indicate an identical use of the appellants’ registered logo by the respondent in which the appellants owned the trademark.

It is further asserted by the appellants that the respondents had adopted all the leading and essential features of the appellants’ product packaging label including the layout, get up, colour combination and trade dress of packaging of the product “ACTIVE WHEEL” for selling their detergent under the mark “ACTIVE LOVELY DETERGENT POWDER”. It is the contention of the appellants that the labels/packaging of respondent’s first and second impugned products are slavish and flagrant imitations of their products “SURF EXCEL” and “ACTIVE WHEEL” respectively.

Thus on the basis of the aforementioned allegations the appellants filed the suit against the respondent for infringement of the registered trade mark and prayed for an ex-parte at interim order of injunction restraining the respondents from infringing their said trademarks and copyrights.

The court in the present suit stated that considering the materials on record, it was prima facie satisfied that by using the impugned logo and artistic work in their first and second impugned products the respondent has infringed and were continuing to infringe the appellants’ registered trademarks. It further appeared that the respondent had infringed and were continuing to infringe the appellants’ copyrights in the artistic works comprised in the label/packaging of the appellants’ products, “ACTIVE WHEEL” and “SURF EXCEL”. According to the court the balance of convenience was in favour of the appellants for obtaining ex-parte ad interim order of protection and accordingly, the court granted an ad interim order of injunction. Further a Special Officer was also appointed who was to visit the place of business of the respondents where the infringing products may be stored and invetorise the infringing products.

 

The respondent’s adoption of the mark FENTEL was entirely dishonest and was intended to pass off its goods as that of the appellants

Glaxo Smithkline Pharmaceuticals Ltd.  V/S  Naval Kishore Goyal

The present suit is filed by the appellants Glaxo Smithkline Pharmaceuticals Ltd., in the Honourable High Court of Delhi before Honourable Justice Sanjeev Narula and concerns the appellant’s statutory and common law proprietary rights over the trademark ZENTEL and violation thereof by the respondents on account of use of a deceptively similar mark FENTEL for identical pharmaceutical preparation. [CS (COMM) 292/2016, Decided On: 01.10.2019]

The appellants in the present suit are engaged in the business of   facturing and marketing a wide range of products, inter alia, pharmaceutical and medicinal preparations and health care products of high quality. The trademark ZENTEL, registered in the name of the appellants under registration No. 361874 in class 5 since May 14, 1980 is an invented word having no dictionary meaning and has a highly distinctive character. The mark is being used in India by the appellants since 1986 in respect of Albendazole tablets and syrups meant for de-worming purposes in human beings. Further the said product under the trademark ZENTEL, is extremely well known both in India and the world over. The appellants state that the aforesaid trademark has been duly renewed from time to time and is subsisting, thereby conferring on the appellants the exclusive right to its use and to restrain use of any identical or deceptively similar marks by unauthorized persons.

According to the appellants in March 2003, their attention was drawn to the product FENTEL   manufactured  and sold by the respondents and further inquiries revealed that respondent, Mr. Naval Kishore Goyal, is the Director of the company Faith Pharmaceuticals Ltd., which is engaged in the   facture and marketing of Albendazole preparation under the mark FENTEL which are being distributed/marketed in various parts of India.

Hence the present suit filed by the appellants, concerns their statutory and common law proprietary rights over the trademark ZENTEL and violation thereof by the respondents on account of use of a deceptively similar mark FENTEL for identical pharmaceutical preparation.

The respondents in the suit contended that they were the proprietors of the trademark FENTEL since its introduction in April, 1998 and that the said trademark is being used only in respect of Albendazole tablets and not for any other purpose. According to the respondents it had acquired substantial reputation in the market due to its high quality, effectiveness and competitive price. The respondents further argued that they had coined the word FENTEL as a trademark keeping in mind the name of their company, nature of disease and the drug Albendazole which is used to cure the disease. It was submitted by the respondents that the first letter “F” was obtained from the word FAITH, which was the first word of their company Faith Pharmaceuticals Ltd., while the letters “ENT” were obtained from the Greek word “enterikos” (enteron intestine), which means ‘intestines’ and the last two letters “EL” were obtained from the name of the drug “ALBENDAZOLE”. Thus according to the respondents the word FENTEL was coined to indicate that the disease pertaining to intestines can be cured through the use of drug Albendazole under the trademark FENTEL. The respondents found that the most appropriate word to use in respect of their medicinal product was FENTEL, and hence adopted the same. According to the respondents the appellants on the contrary had no cogent explanation for adopting the mark “ZENTEL”.

Further it is also highlighted by the respondents that the appellants were aware of fully aware of the launch and marketing of their product FENTEL, as the advertisements of both the companies were appearing side by side in same journals and magazines. In spite of the knowledge of the products   manufactured  and marketed under the trademark FENTEL, since the year 1998, the appellants chose to wait and file the present suit on 9th July, 2003. According to the respondents this belated action was initiated with the intention to disturb the established market of the respondents and hence on the ground of delay, laches and estoppel, the appellants were not entitled to relief of injunction and the present suit was liable to be dismissed.

In case of the resent suit the pivotal question before the court was whether the respondent’s mark “FENTEL” was deceptively similar to the appellant’s trademark “ZENTEL”. The court stated that the marks looked and sounded alike and therefore FENTEL could be mistakenly administered under a wrong impression of being ZENTEL and this could lead to severe and disastrous consequences having adverse impact on public health. Therefore, in such matters, the court had to take a far stricter approach to restrain unauthorized use of deceptively similar mark.

Bearing the aforesaid principles in mind, on comparison of the two competing marks ZENTEL and FENTEL, one could easily perceive that there were overwhelming visual, structural and phonetic similarities between the two marks. Further both the marks were being used in relation to drugs used for the treatment of the same condition i.e. for de-worming and both the drugs were Schedule H drugs. According to the court the explanation given by the respondents for adoption of the mark FENTEL was downright imaginative and far-fetched. The court stated that it is difficult to accept that “EL” was based on Albendazole, as one could not anywhere see the two letters appearing together in the spelling of the said compound [Albendazole] and therefore the contention had been raised only to confuse the Court and to justify the adoption of the mark FENTEL. The court has also highlighted that it cannot be accepted that respondents, being a pharmaceutical company were unaware of the appellant’s trademark ZENTEL. Further the court also stated that the respondent had failed to prove that their product was launched in 1998 while on the other hand, the appellants had proved their case that they had found the respondent’s products in 2003.

Thus in view of the above findings the court stated that the appellants were entitled to the injunction as prayed for by them and were also entitled to a decree of delivery up.

Accordingly, a decree of permanent injunction was passed in favour of the appellants and against the respondents whereby the respondents were restrained from   manufacturing, selling or offering for sale pharmaceutical preparations under the trade name FENTEL or any other mark which might be deceptively similar to appellant’s trademark ZENTEL and from doing any other such thing so as to cause confusion or deception amounting to passing off of the goods and business of the respondents as those of the appellants. An order to delivery up was also passed in favour of the appellants directing the respondents to handover the goods which were lying in supurdari with the respondents. Further a decree of damages was passed in favour of the appellants and against the respondents for a sum of Rs. 3 lacs.

Acts/Rules/Orders: Trade And Merchandise Marks Act, 1958 [repealed] – Section 32

Cases Referred: F. Hoffmann-la Roche & Co. Ltd. vs. Geoffrey Manner & Co. Pvt. Ltd.   /SC/0302/1969; Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.   /SC/0199/2001; Amritdhara Pharmacy vs. Satyadeo Gupta   /SC/0256/1962; Dr. Reddy’s Laboratory Ltd. vs. Reddy Pharmaceuticals Ltd.   /DE/3136/2013; S.B.L. Ltd. vs. Himalaya Drug Co.   /DE/0311/1997; Hindustan Pencils (P) Ltd. vs. India Stationery Products Co. and Anr.   /DE/0383/1989; Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd.   /MH/1550/2014; Midas Hygiene Industries P. Ltd. and Anr. vs. Sudhir Bhatia and Ors.   /SC/0186/2004; M/s. Bengal Waterproof Limited vs. M/s. Bombay Waterproof   facturing Company and Another   /SC/0327/1997; Apple Computer Inc. vs. Apple Leasing & Industries   /DE/0919/1991; Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd.   /SC/0462/2004; Indian Performing Right Society Ltd. vs. Debashis Patnaik and Ors.   /DE/0675/2007

The appellants had a prima facie case and the balance of convenience also was in their favour

Make My Trip (India) Pvt. Ltd.   V/S   Make My Travel (India) Pvt. Ltd.

The present suit is filed by the appellants Make My Trip (India) Private Limited, in the Honourable High Court of Delhi before Honourable Justice Sanjeev Narula seeking a permanent injunction restraining the respondents from adopting and using the MakeMyTrip word mark, MMT letter mark and such other “MakeMyTrip Marks” of the appellants’. [CS (COMM) 889/2018, I.As. 6896/2018 and 8837/2018, Decided On: 18.10.2019]

The appellants’ company MakeMyTrip (India) Private Limited was incorporated in the year 2000 and started its business initially with airline ticket bookings and is today one of the largest travel companies in the country. The appellants through their primary website, www.makemytrip.com and other technology-enhanced platforms including application based mobile platforms, etc., offer an extensive range of travel services and products, both in India and abroad. The said services of the appellants include, booking of air tickets, rail tickets, bus tickets, hotel reservations, car hire, domestic and international holiday packages and ancillary travel requirements such as facilitating access to travel insurance.

According to the appellants they have continuously and uninterruptedly used the trade marks MakeMyTrip and MMT, the MakeMyTrip word mark as well as the MMT letter mark. The tag line “Memories Unlimited” and “Hotels Unlimited”, have also been continuously and uninterruptedly used by the appellants for their business activities since the day they were conceived. Further the appellants state that the MakeMyTrip Marks, including the MakeMyTrip word mark, MMT letter mark and appellants’ Tag Lines are invented terms, and have earned immense reputation and goodwill on account of extensive and continuous use.

Sometime in the month of December 2017, while browsing through the Internet, the appellants came to know about the respondents and their infringing marks. The appellants carried out further investigation and came across the website of the respondents, https://www.makemytravelindia.com wherein the respondents were offering information pertaining to travel tours and packages and such services which were identical to that of the appellants’. Being aggrieved by the adoption and use of the infringing mark and infringing domain name, the appellants issued a cease and desist notice requisitioning the respondents to, inter alia, cease all use of the infringing marks and infringing domain name.

It is the case of the respondents that the suit is barred by Section 33 of the Trade Marks Act 1999. According to the respondents, the appellants were aware that the respondents had incorporated a company by name of Make My Travel (India) Private Limited and were doing business under the said name, since the year 2010-2011. The respondents further stated that in the years 2011 to 2017, the appellants and the respondents had entered into business transactions and that despite being aware of use of the name ‘Make My Travel (India) Private Limited’ by the respondents, the appellants had not objected to the same. The respondents further asserted that the appellants had also acquiesced to the use of trademark/trade name Make My Travel, MMT and tag line DREAMS UNLIMITED and make my travel logo for a continuous period of five years and more and that they would not object to the use thereof.

The main relief sought in the present suit is for permanent injunction restraining infringement of trademarks and passing off. The court in the present suit stated that the first two words of the marks MakeMyTrip and MakeMyTravel were identical and the last words, TRIP and TRAVEL were similar and conveyed the same idea. Similarly, the respondents’ tag line DREAMS UNLIMITED was deceptively similar to that of the appellants’ taglines HOTELS UNLIMITED and MEMORIES UNLIMITED. While the second word in the tag lines was identical, the first words DREAMS, MEMORIES and HOTELS, when considered in the context of travel and holiday related services, may be used in the same context or idea. Thus according to the court in view of the above, there was no doubt that the appellants had a strong prima facie case and the balance of convenience was also in their favour.

If the respondents were permitted to continue to use infringing marks, grave and serious prejudice was likely to be caused to the appellants.

The court also highlighted that the appellants had clarified that the communications relied upon by the respondents were allegedly exchanged between the booking executives of the appellants and the franchisees of the appellants in the year 2011. Prima facie, such email communications were not exchanged with the management of the appellants’ company or any of its key managerial personnel who could be regarded as persons who ought to be aware of respondents’ existence. Thus according to the court a correspondence with a booking customer care executive of the appellants who apparently did not have knowledge of the intellectual property rights of the appellants’ cannot be considered as positive acts of encouragement towards the respondents to do business under the infringing/impugned marks.

The court concluded that the respondents had no justification or defence for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require a further and deeper scrutiny and examination during the course of trial.

Thus, having regarded the aforesaid facts, the court was of the considered opinion that appellants had a prima facie case and the balance of convenience also was in their favour. Irreparable loss would be caused to the appellants if the respondents were not restrained from using the impugned marks.

Accordingly, the plea of the appellants was allowed and the injunction order dated 17th May 2018 was made absolute and would continue to operate during the pendency of the present suit.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 4; Code of Criminal Procedure, 1973 (CrPC) – Section 340; Trade Marks Act, 1999 – Section 33

Cases Referred: Makemytrip (India) Private Limited vs. Orbit Corporate Leisure Travels (I) Private Limited   /DE/5200/2017; F. Hoffmann-la Roche & Co. Ltd. vs. Geoffrey Manner & Co. Pvt. Ltd.   /SC/0302/1969; Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.   /SC/0199/2001; Amritdhara Pharmacy vs. Satyadeo Gupta   /SC/0256/1962; Shree Nath Heritage Liquor Pvt. Ltd. and Ors. vs. Allied Blender and Distillers Pvt. Ltd.   /DE/1933/2015; The Gillette Company LLC vs. Tigaksha Metallics Private Ltd. and Ors.   /DE/2390/2018; Corn Products Refining Co. vs. Shangrila Food Products Ltd.   /SC/0115/1959; Prathiba M. Singh vs. Singh and Associates   /DE/2587/2014; Triumphant Institute of Management Education Pvt. Ltd. vs. Aspiring Mind Assessment Pvt. Ltd. & Ors.   /DE/1186/2014; Hindustan Pencils (P) Ltd. vs. India Stationery Products Co. and Anr.   /DE/0383/1989; Dr. Reddy’s Laboratory Ltd. vs. Reddy Pharmaceuticals Ltd.   /DE/3136/2013; Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd.   /MH/1550/2014; Midas Hygiene Industries P. Ltd. and Anr. vs. Sudhir Bhatia and Ors.   /SC/0186/2004

 

The incorrect statement made by the respondents constituted perjury before the court and hence they were liable to be permanently injuncted from using the mark ‘VISTARA’

Tata Sia Airlines Limited     V/S     Pilot18 Aviation Book Store

The present suit is filed by the appellants Tata SIA Airlines Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction, restraining infringement of its registered trademarks, dilution, damages, rendition of account, etc. [CS (COMM) 156 of 2019, Decided On: 05.08.2019]

The appellants Tata SIA Airlines Limited filed the present suit seeking permanent injunction, restraining infringement of its registered trademarks, dilution, damages, rendition of account, etc. The appellants are a joint venture of TATA Sons Private Limited and Singapore Airlines Limited and operate a full-service airline under the mark “VISTARA”. The mark “VISTARA” has been used by the appellants since 2014 for airline services and is registered in India in classes 12, 39, 21, 25, 27 and 28 and in various other jurisdictions.

The grievance of the appellants is that the respondents operate an aviation studies portal called www.pilot18.com, the appellants acquired knowledge in February 2019 of sale of “VISTARA” branded products on the website of the respondents and on various e-commerce portals such as Amazon and Snapdeal. The respondents were offering various badges, name tags and other accessories including mugs, baggage tags, etc. bearing the mark “VISTARA” with an identical device mark/logo form. The appellants state that an investigation conducted by them revealed that the respondents were not only offering these products on their website, but claimed that they were also supplying “VISTARA” branded aviation products to Vistara Airlines. The appellants refuted this claim stating that they had never sourced any “VISTARA” branded products from the respondents and that the uniform and other accessories worn by the appellants’ staff was used and distributed in a controlled manner and was under the control of the Ground Station Head. Hence the appellants have filed the present suit.

The case of the respondents is that they had not used the trademark ‘Vistara’ and that the appellants had concocted a false story.

The court appointed a local commissioner on 26th March, 2019 who visited the premises of respondents. The local commissioner, in fact, found a large number of products bearing the mark ‘Vistara’ and accordingly placed on, record the photographs of the products which were seized by him.

Thus it was clear that the respondents were taking a false stand before the court that they had not used the mark ‘Vistara’.

The court in the present suit stated that the statements put forth by the respondents were false and clearly, the respondents were not just selling products bearing the mark ‘VISTARA’ but also products of various other airlines including Jet Airways, Spice jet and Air India as well. The sale of so much merchandise with the names of various airlines was not only violative of the trademark rights of the respective parties, including the appellants but also posed a serious threat owing to the fact that some unauthorised persons may try to seek entry into airports etc., on the basis of the counterfeit badges, labels, uniforms and other merchandise illegally bearing the trademarks of these airlines. According to the court such a threat cannot be ignored by the court.

The court was of the opinion that the respondents were not only liable to be permanently injuncted from using the mark ‘VISTARA’ but are also liable to pay costs and damages. Further, the incorrect statement made in the written statement also constituted to perjury before the court and the respondents had no remorse whatsoever while making the statement, thus under these circumstances, the court concluded that there shall be permanent injunction restraining the respondents. Further the respondents were also directed by the court to pay Rs. 2 lakhs to the appellants within a period of 1 month from today as costs.

The court asserted that the mark VISTARA was quite popular in India and had acquired a unique status. According to the court it was a distinctive mark that enjoyed enormous goodwill and reputation in the airline, travel and tourism industry and hence use of this mark, even in respect of unrelated services would create confusion and deception. The court further asserted that the appellants’ mark deserved to be declared as a well-known mark.

The appellants are entitled to a decree of injunction against the respondents for passing off their products as that of the appellants’, based on the packaging

Great Food and Beverages LLP          V/S          Yash Taneja

The present suit is filed by the appellants Great Food and Beverages LLP, in the Honourable High Court of Delhi before Honourable Justice Mukta Gupta, seeking a permanent injunction against the respondents. [CS (COMM) 266/2017, Decided On: 27.09.2019]

The appellants in the present suit are   facturing and selling beverages and ready to eat snacks for kids and youngsters in a fun and innovative convenient way. The product portfolio of the appellants comprises of reasonably priced frozen juice bars, flavoured popcorn, dip and lick lollypops and fruit juice drinks sold in various states in India under the brands FRUITCHILL, FRUTCHILL, CRACKY and LOLICK. The most popular produce of the appellants’ sold is FRUTCHILL, which is a frozen fruit bar with the goodness of natural juices and freshness of an ice-cream. The appellants claim that they   facture and sell FRUTCHILL in a variety of flavours and that it is a very high quality edible product packaged with utmost hygiene and safety.

The grievance of the appellants is the dishonest adoption and misuse by the respondents in copying their unique packaging which includes a Penguin Mascot, colour combination, style of fonts and placement of images with respect to identical goods being fruit flavoured Ice Candy. Although the respondents are using the mark JUICYBLISS, however  according to the appellants the said mark has been done in a manner almost identical to their mark with exact stylization of the marks, with identical colours and fanciful representation of the labels, the copyright whereof vests with the appellants’.

Thus, it is in the light of the above that the appellants are seeking a permanent injunction against the respondents, restraining them from   facturing, distributing or offering for sale in any manner the impugned products in the packaging as noted above which is deceptively and confusingly similar to the appellants’ mark and packaging and also restraining the respondents from passing off their products as that of the appellants’.

Summons in the suit were issued to the respondents vide order dated 18th May, 2017, however despite service of summons the respondents failed to file written statement within the period of 120 days from the date of service and hence their right to file the written statement was closed.

The court in the present suit concluded that from the material placed on record by the appellants’, it has been proved that the use of the identical and nearly similar packaging/trade dress by the respondents was bound to cause confusion in the minds of the consumers of the appellants’ products who are primarily young children. Thus according to the court, the appellants were entitled to a decree of injunction against the respondents for passing off their products as that of the appellants’, based on the packaging.

Further in absence of any defence from the respondents and in view of the documents placed on record by the appellants and the facts noted above, the suit was disposed of passing a decree in favour of the appellants and against the respondents. Also a sum of Rs. 1,76,500/- was awarded in favour of the appellants and against the respondents.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VIII Rule 10

The suit is decreed in favour of the appellants and against the respondents and the appellants’ trademark ‘PULSE’ is declared as a well-known trademark

Dharampal Satyapal Sons Pvt. Ltd.     V/S     Akshay Singhal

The present suit is filed by the appellants Dharampal Satyapal Sons Private Limited, in the Honourable High Court of Delhi before Honourable Justice Mukta Gupta, praying for a decree of permanent injunction restraining the respondents from using the trademark ‘PLUSS’ or any other trademark deceptively similar to the appellants’ trademark ‘PLUSE’. [CS (COMM) 129/2019, Decided On: 17.10.2019]

The appellants in the present suit are a private limited company with strong presence in high growth sector such as F&B, hospitality, mouth fresheners, Pan Masala, Tobacco, Agro Forestry, Rubber Thread and Infrastructure. The appellants have introduced a number of products such as RAJNIGANDHA, CATCH, PASS-PASS, CHINGLES, PULSE etc. The appellant’s candies under the trademark ‘PULSE’ were launched on 13th December, 2014.

According to the appellants their ‘PULSE’ products with its trade-dress are inherently distinctive and have amassed immense goodwill and reputation amongst all classes of consumers and people associate the ‘tangy twist’ flavour to the well-known ‘PULSE’ candies. The core concept behind the ‘PULSE’ candies is the unique and exclusive method of ingredient composition- A hard boiled flavour candy filled with tangy and tingly salt and spices in its central powered filling. The appellants have been granted trademark registration for their trademark ‘PULSE’ as well as the overall get up, layout and colour combination comprising of its packaging.

The respondents in the present suit are engaged in the business of   manufacturing and supply of candy products like flavoured candy, cola fizzy candy, cool fizzy candy etc. under the brand name “MYCO”.

During the course of market surveillance in the last week of January, 2019 the appellants learnt of the respondents business of advertising and selling candies having the flavour of raw mango and bearing the mark PLUSS and trade-dress under the “MYCO” trading style. The appellants have claimed that the act of the respondents amounts to infringement of their trademark and passing off by the respondents, as well as infringement of the appellants’ copyright in the design and thereby violating their proprietary rights.

Further the appellants are also seeking a declaration of their mark ‘PULSE’ as a well known trademark.

The court had appointed a local commissioner to prepare the inventories of the impugned products infringing the appellants’ products and take into custody all infringing goods of the respondents on superdari.

Thus on the basis of the material placed on record and the report of the learned local commissioner, the court stated that it was evident that the appellants’ trademark had wide acceptability pursuant to the result of promotion of the trademark. Further the popularity of the appellants’ trademark and trade-dress extends not only in India but in other countries as well and they had a wide use across India and were continuing to be used. Hence according to the court, as per the criteria laid down under Section 11(6) and Section (7) of the Trademarks Act the appellants were entitled to a decree of declaration of their trademark ‘PULSE’ as a well-known trademark.

The suit was decreed in favour of the appellants and against the respondents and the appellants’ trademark ‘PULSE’ was declared a well-known trademark. Also a cost of Rs. 8,53,369/- was awarded in favour of the appellants and against the respondents.

  Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11(6), Trade Marks Act, 1999 – Section 2, Trade Marks Act, 1999 – Section 2(1), Trade Marks Act, 1999 – Section 2(4), Trade Marks Act, 1999 – Section 2(zg)

Cases Referred: Rolex Sa vs. Alex Jewellery Pvt. Ltd. and Ors.   /DE/0796/2009; Tata Sons Ltd. vs. Manoj Dodia and Ors.   /DE/0980/2011; Whirlpool Co. and Anr. vs. N.R. Dongre and Ors.   /DE/0650/1994; Kamal Trading Co. and Ors. vs. Gillette U.K. Limited   /MH/0828/1987

The appellants were able to make out a strong prima facie case and accordingly were entitled to an ad-interim order of injunction

Srmb Srijan Private Ltd.     V/S     Super Smelters Ltd.

The present suit is filed by the appellants SRMB Srijan Private Ltd., in the Honourable High Court of Calcutta before Honourable Justice Bibek Chaudhuri, for permanent injunction restraining the respondents from   facturing, marketing, selling products including TMT bars and rods by applying pattern of X ribs mark/get up/trade dress upon or in relation to the TMT bars and rods. [G.A. Nos. 2127, 1 of 2019 and C.S. No. 192 of 2019, Decided On: 30.09.2019]

The appellants are a private limited company carrying on business of   manufacturing, selling and distributing of TMT bars, wires, grills etc since 2001. The appellants claim to be the pioneers of   facturing “X-ribs” TMT bars with letter “X” embossed at regular intervals over the entire surface and length of TMT bars, each bar having two series of “X” pattern.

The appellants have alleged that the respondents are also   manufacturing TMT bars and that they are new in the market. According to the appellants the respondents are advertising their TMT bars with pattern “X” RIBS look alike as “YY RIB”. The surface pattern of respondents TMT bars are exact copy of the appellants’ “X” RIB pattern, thus, making the respondents TMT bars virtually identical. It is also stated by the appellants that the respondents were earlier using an elliptical helix pattern on their TMT bars and later switched over to “X RIB” pattern describing the said pattern as “YY” ribbed. Thus, according to the appellants the respondents had in a dishonest and slavish manner copied the surface pattern of the appellants on their TMT bars to create confusion in the minds of the customers and thereby cause substantial financial loss.

The appellants had sent a cease and desist notice to the respondents for discontinuing the use of “X RIB” pattern on their TMT bars, but the respondents sent a reply on 15th May, 2017 claiming that the surface pattern of their TMT bars was “Y” ribbed which no one else was using.

The appellants state that, they being the prior users of “X RIB” pattern TMT bars, their right to use the said pattern exclusively, needs to be protected. The appellants further assert that similarity of surface pattern may raise a presumption of common imagination or close business association between the appellants and the respondents and hence according to the appellants they were entitled to get an order of injunction in the instant case.

The respondents in the present suit state that the appellants are thoroughly confused as to what they want to protect – the product or the trade mark or the surface pattern on the product or the trade dress attached to the product. According to the respondents, the pattern “X” on TMT Bar   manufactured  by the appellants is in the nature of a pattern on the surface of an iron rod and that the appellants want to protect this “X-Ribs” surface pattern for their TMT bars as unique and distinctive design.  But according to the respondents since the said surface pattern “X” was not registered under the Designs Act, 2000, the appellants cannot get any protection either under the Trademarks Act or under the Designs Act. According to the respondents the appellants’ prayer for injunction alleging action for passing off against the respondents prima facie cannot stand because the allegation of infringement of trademark was not established. The respondents asserted that the appellant’s mark “X RIBS”(Word) was not infringed by the respondent’s distinct mark “Super Shakti”.

Having heard submission made by both the parties, the court in the present suit summarised that TMT Bars were   manufactured  by various   facturers dealing with the trade. Further in the instant case the appellants had two registered trademarks, i.e. “SRMB 500 + XRIBS” (label) and “XRIBS” (word) for their TMT Bars and likewise the respondents had two registered trademarks “SUPER SHAKTI” and trademark image. Further the appellants’ had got “XX” mark or impression registered as design on the TMT Bars   manufactured  by them in 2003 and the said registration was cancelled under Section 19 of the Designs Act in 2010. The court also highlighted that the appellants had been using their said mark as an unregistered trademark since 2001 and the goods   manufactured  by them had earned goodwill and reputation on the basis of the said unregistered mark embossed on the goods. The allegation against the respondents was that they had copied the said mark on their product claiming to be “YY” mark on the strength of registered image trademark. According to the appellants, they were the prior users of the said mark and the respondents cannot pass off their product by a slavish imitation of the mark embossing on their TMT Bars.

The court concluded that the appellants were able to make out a strong prima facie case and accordingly were entitled to an ad-interim order of injunction in view of the fact that “X” mark on the TMT Bar of the respondents’ was ex facie identical and deceptively similar to the appellants’ trade dress and pattern.

For the reason stated above, an order of interim injunction restraining the respondents from  manufacturing, distributing, marketing or selling TMT Bars with “X” pattern emboss thereon was passed by the court.

Acts/Rules/Orders: Copyright Act, 1957 – Section 2; Designs Act, 2000 – Section 11, Designs Act, 2000 – Section 19, Designs Act, 2000 – Section 19(e), Designs Act, 2000 – Section 2, Designs Act, 2000 – Section 2(d), Designs Act, 2000 – Section 9; Indian Penal Code 1860, (IPC) – Section 479; Trade And Merchandise Marks Act, 1958 [repealed] – Section 2; Trade Marks Act, 1999 – Section 2(1), Trade Marks Act, 1999 – Section 27, Trade Marks Act, 1999 – Section 27(2), Trade Marks Act, 1999 – Section 28, Trade Marks Act, 1999 – Section 29, Trade Marks Act, 1999 – Section 29(2), Trade Marks Act, 1999 – Section 34

Cases Referred: Amar Nath Chakroborty vs. Dutta Bucket Industries and Ors.   /WB/0019/2005; Apollo Tyres Ltd. vs. Pioneer Trading Corporation and Ors.   /DE/2374/2017; S. Syed Mohideen vs. P. Sulochana Bai   /SC/0576/2015; The Indian Hotels Company Ltd. and Anr. vs. Jiva Institute of Vedic Science and Culture   /DE/0892/2008; M/s Micolube India Limited vs. Rakesh Kumar Trading as Saurabh Industries and Ors.   /DE/1360/2012; Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd.   /DE/4610/2018

The respondents are at liberty to use the word Arishta in a manner so as to not result in violation of the appellants’ statutory and common law rights

Emami Limited   V/S   Shree Baidyaraj Ayurved Bhawan Pvt. Ltd.

The present suit is filed by the appellants Emami Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking protection of the mark ‘ZANDU PANCHARISHTA’ and ‘PANCHARISHTA’. [CS (COMM) 275/2019, Decided On: 26.08.2019]

The appellants in the present suit state that the product ‘ZANDU PANCHARISHTA’ was launched in the year 1968 by Zandu Pharmaceutical Works ltd. and this company was acquired by the appellants Emami Ltd. sometime in 2008. According to the appellants the term ‘PANCHARISHTA’ was coined by the appellants and is claimed to be an inherently distinctive trademark. The appellants state that the product sold under the said mark ‘PANCHARISHTA’ with the house-mark ‘ZANDU’ is an ayurvedic digestive tonic for treating consumers with ailments including digestive problems, gas, heaviness in the stomach, flatulence, belching, loss of appetite and constipation. The appellants further claim that the product has been developed with a unique formulation containing 36 ingredients, including water, using the traditional ayurvedic science of Asavaarishta. According to the appellants the ‘ZANDU PANCHARISHTA’ label had been registered since 1986 and the word marks ‘ZANDU PANCHARISHTA’ and ‘ZANDU PANCHARISHTA PLUS’ were registered since 2010 and 2014, respectively, in class 5 for ayurvedic, herbal and medicinal preparations and similar goods.

On 13th April 2019, the appellants came across the respondents’ product under the name ‘PANCHARISHTA’ used along with the house-mark ‘BAIDYARAJ’. Hence they have filed the present suit, seeking a permanent injunction restraining infringement of their registered trademark, passing off and other reliefs.

The respondents in the present suit stated that the word ‘PANCHARISHTA’ is based on traditional ayurvedic texts and since the word ‘Arishta’ is an ayurvedic preparation, no monopoly can be claimed or granted in respect of the same. It is further stated by the respondents that there are third parties who are using the mark ‘PANCHARISHTA’, such as Planet’s Pancharishta and Gwapha Pancharishta and in view of the same, no monopoly can be granted over the mark. According to the respondents the appellants have admitted that ‘PANCHARISHTA’ has been used with the word ‘ZANDU’, which is a prominent part of their trademark, thus in fact, ‘ZANDU’ is the distinctive part and ‘PANCHARISHTA’ is the descriptive part of the mark.

The court in the present suit stated that the effect of the appellant’ product on a consumer could be considerably different than the effect of the respondents’ product. The consumers may purchase the respondents’ products simply presuming that because the word ‘PANCHARISHTA’ is used in both products, the appellants’ and the respondents’ products are one and the same or have the same therapeutic effect. Further the use by the appellants of the mark ‘PANCHARISHTA’ is for a different purpose from its use by the respondents. Also, during the course of argument, the respondents made a suggestion that they were ready to amend their label.

According to the court since no amicable resolution took place, the appellants were entitled to an injunction restraining the respondents from using the word ‘PANCHARISHTA’ as a trademark for medicinal preparations. It was, however, clarified that the respondents would be at liberty to use the word Arishta in a manner so as to not result in violation of the appellants’ statutory and common law rights.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 3A; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 4

Cases Referred: Schering Corporation vs. United Biotech (P) Ltd.   /MH/1240/2010; Online India Capital Co. Pvt. Ltd. and Anr. vs. Dimensions Corporate   /DE/1178/2000; Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd.   /SC/0462/2004; Amritdhara Pharmacy vs. Satyadeo Gupta   /SC/0256/1962; Heinz Italia and Anr. vs. Dabur India Ltd.   /SC/2133/2007; Pidilite Industries Limited vs. Jubilant Agri & Consumer Products Limited   /MH/0019/2014; Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.   /SC/0199/2001; Godfrey Philips India Ltd. vs. Girnar Food and Beverages Pvt. Ltd.   /SC/0541/2004

The suit is decreed in favour of the appellants with compensatory costs being imposed on the respondents

Syed Ibramsha Cottage Industries     V/S     Jayanthi Agencies

The present suit is filed by the appellants Syed Ibramsha Cottage Industries, in the Honourable High Court of Madras before Honourable Justice Krishnan Ramasamy, for the relief of perpetual injunction and such other reliefs. [C.S. No. 835 of 2014, Decided On: 16.08.2019]

The appellants in the present suit state that originally the appellants’ predecessors had adopted the trademark “ANIL BRAND” on 20.03.2000 with characteristic artistic work, unique color combination and design. Subsequently on various dates the appellants’ firm had applied for trademark “ANIL BRAND” with trademark registry and had obtained registration. The registration is still existing and in subsistence. Further the copyright with regard to the “ANIL BRAND” label has also been registered with the Registrar of copyright bearing No. -A-109429/2014. The appellants have further asserted that, they have taken enormous efforts to promote their trademark “ANIL BRAND” in respect of slate, pencils for more than a decade and the reputation and goodwill accrued by the appellants over the trademark “ANIL BRAND” is of a high magnitude.

It is the contention of the appellants that the respondents had adopted the word “GOLD WINNER” as their trademark which was entirely similar to the appellants’ registered trademark of “ANIL BRAND” bearing 1173696 under Clause 16. The adoption of the appellants’ trademark namely the trade dress, label, color scheme identical art work and layout showed that respondents’ malafide intention to enrich unlawfully by adapting the appellants’ trademark “ANIL BRAND”.

Hence the appellants filed the present suit against the respondents for the reliefs of infringement of trademark and copyright of the appellants’ mark “ANIL BRAND” and also sought relief of surrender of infringed goods and accounts and profits made by the respondents through the unlawful use of appellants’ trademark and copyright.

After the admission of the suit, suit summons was served on the respondents on 12.02.2015 but in spite of the service of the suit summons, the respondents failed to appear before the court.

On basis of the perusal of the documents on record, the court stated that the certificate of registration of trademark of the appellants namely “ANIL BRAND” was registered under trademark Registry. Further it was also clear that the respondents were not only copying the trademark of the appellants’, ‘ANIL BRAND’ but also copying the artistic work, colour scheme, layout, get up, lettering style and trade dress. Hence, the court stated that the respondents copying the appellants’ trademark ‘ANIL BRAND’ would amount to infringement of the appellants’ trademark, under Section 29 of the Trademarks Act and accordingly, the appellants had proved their claim.

The appellants were therefore entitled to the decree as prayed for by them and the court also imposed, compensatory costs of Rs. 50,000/- (Rupees Fifty Thousand only) on the respondents.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35-A

The balance of convenience lies in favour of the appellants for obtaining ex-parte ad interim order of protection

Hindustan Unilever Limited     V/S     Atul Tiwari

The present suit is filed by the appellants Hindustan Unilever Limited, in the Honourable High Court of Calcutta before Honourable Justice Ashis Kumar Chakraborty, for infringement of trademark and copyright and various interim reliefs against the respondents. [GA 2126 of 2019 and CS 195 of 2019, Decided On: 11.09.2019]

The appellants are a part of the Unilever Group and are carrying on the business of  manufacturing, marketing and selling of various kinds of washing soaps, including detergent. The appellants claim that since 1955, they have been   manufacturing and selling detergent powder in India by adopting the trade mark “WHEEL”. Apart from “WHEEL”, they are also   manufacturing and selling another premium version of the said “WHEEL” brand known as “ACTIVE WHEEL”. The appellants had designed a unique trade mark, label bearing original artistic work, get up and lay out to market their detergent bearing the trade name “ACTIVE WHEEL” containing swirl device and prominent display of lemons along with white jasmine flower covering the border of the label with the trademark “ACTIVE WHEEL” appearing on the centre of the label and the device of “WHEEL” on the lower right hand end of the label. Further the appellants are also the owners of the copyright in the painting and artistic work used in the labels/wrappers for packaging of the detergent powder “ACTIVE WHEEL”.

The appellants are also   facturing and marketing another kind of detergent in the form of detergent bars, detergent liquids and matic (machine wash) powder and liquids used for washing machine under the trade names “SURF” and “SURF EXCEL”. By virtue of long, extensive and continuous use of these trademarks in respect of the said goods, the trademarks have acquired a secondary meaning, indicating that the goods are originating from the appellants and from none else.

According to the appellants in or about the month of August 2019, in the course of market survey and investigation carried out by them at Faizabad, Uttar Pradesh, it was found that the respondents was   manufacturing, selling and distributing detergent powder under the marks “EKO PLUS DETERGENT POWDER”, “DHRA DETERGENT POWDER”, “ANANYA DETERGENT POWDER” and “TRETA DETERGENT POWDER”.

A mere comparison of the labels/packets of the appellants’ products “SURF EXCEL” and “ACTIVE WHEEL” with those of the above mentioned impugned products indicated a deceptive imitation of the artistic work, get up and layout and an identical use of the appellants’ registered logo.

Thus it is the claim of the appellants that the labels/packaging of respondent’s impugned products are slavish and flagrant imitations of their products “SURF EXCEL” and “ACTIVE WHEEL”.

On the basis of the aforementioned allegations the appellants have filed the present suit against the respondents for infringement of their registered trademarks, as well as for infringement of their copyrights in the artistic work comprised in the label/packaging/trade dress and the overall get up and style of their products “ACTIVE WHEEL” and “SURF EXCEL”. The appellants have prayed for an ex-parte ad interim order of injunction restraining the respondents from infringing their said trademarks and copyrights.

Considering the materials on record, the court in the present suit stated that, it was clear that by using the impugned logo and artistic work in case of their impugned products the respondents had infringed and were continuing to infringe the appellants’ registered trademarks and were also infringing the appellants’ copyrights in the artistic works comprised in the label/packaging of the appellants’ products “ACTIVE WHEELS and “SURF EXCEL”. According to the court the balance of convenience was also in favour of the appellants for obtaining ex-parte ad interim order of protection. Accordingly, the court granted an ad interim order of injunction valid till October 1, 2019 or until-further order, whichever was earlier.

Further the court also appointed as a Special Officer, for visiting the place of business of the respondents at Faizabad, in the State of Uttar Pradesh and also other godown(s) of the respondents where the infringing products may be stored or inventorised.

Copying of the entire colour scheme, get up and design of the appellants’ product by the respondents clearly amounts to infringement under Section 29 of the Trade Marks Act

Kaleesuwari Refinery Pvt. Ltd.  V/S  Pradeebha Trading Company

The present suit is filed by the appellants Kaleesuwari Refinery Pvt. Ltd., in the Honourable High Court of Madras before Honourable Justice Krishnan Ramasamy, for violation of the appellants’ trademark and copyright by the respondents. [C.S. No. 628 of 2014, A. Nos. 6116, 6119 of 2014 and O.A. Nos. 765 to 767 of 2014, Decided On: 28.08.2019]

The appellants in the present suit are one of the leading brand-holder in the market and leader in refined edible sunflower oil sector. The appellants have been marketing the products since 1991 with their reputed brand “Gold Winner”. The appellants are   facturing and packing various edible oils such sunflower oil, groundnut oil, palm oil, olive oil, blended oil etc. with their well known trademarks namely “Gold Winner”, “Gold Choice”, “Cardia Life” etc. The appellants state that they maintain high standards of quality and enjoy enviable reputation and goodwill among their consumers/customers. According to the appellants their label is very stylish and captivating. Further the appellants are registered proprietors of the trademark “Gold Winner” for refined sunflower oil and other allied products falling under class 29 of IV Schedule to the Trade and Merchandise Rules, 1959 as amended by Trademark Rules, 2002 and the trademarks are valid and subsisting. Also the appellants have obtained copyright registration of the artistic work used along with trademark “Gold Winner” and these registrations too are valid and subsisting.

The present suit has been filed by the appellants as, during 4th week of August, 2014 they came to know that the respondents were trading in “Jeyam Gold” with offending label. According to the appellants, the respondents have deceptively imitated the appellants’ getup, trade dress and colour scheme for packing and marketing their inferior sunflower oil thereby violating the appellants’ trademark and copyright in the artistic work of “Gold Winner” pouch, cover and other packing.

The respondents appear to be engaged in packing and marketing refined sunflower oil in Coimbatore and in the neighbouring districts in the State of Tamil Nadu. It is the contention of the appellants that the respondents intend to trade on the goodwill associated with the appellants’ “Gold Winner” to cause confusion in the market to cheat consumers for unjust enrichment. The suit summon were served on the respondents but none appeared.

On the perusal of the documents on record the court asserted that the appellants were the proprietor of the trade mark “Gold Winner” and though the word mark of the appellants and the respondents was different, the respondents had copied the colour scheme, get up and design of the appellants’ registered trademark. The court concluded that copying of the entire colour scheme, get up and design of the appellants’ by the respondents clearly amounted to infringement under Section 29 of the Trade Marks Act. Therefore, the appellants were entitled for the relief as prayed for by them and the suit was decreed with the cost of Rs. 50,000/-.