04 Feb INTELLECTUAL PROPERTY- DIGEST OF IMPORTANT CASES- 2018- TRADEMARK, PATENT, COPYRIGHT

The decree is passed in favour of the appellants and against the respondents as none appeared for the respondents and the evidence clearly showed that the appellant’s trademark was recognised and well known to the public

Red Bull AG                    V/S               C. Eswari

The present suit is filed by the appellants Red Bull AG, in the Honourable High Court of Delhi before Honourable Justice Jayant Nath, for declaration, permanent injunction restraining infringement of trademarks and passing off, delivery up and damages. [CS (COMM) 1062/2018, Decided On: 06.12.2018]

The appellants Red Bull AG, adopted the Bull Marks for the first time for their energy drink in 1987 in Austria. They obtained trademark registration in India for their Bull Marks including Double Bull Device and the Single Bull Device on 28.11.1997.

According to the appellants they were made aware that the respondents had filed an application in class 24 for an impugned mark which was similar to that of the appellants’ mark and which was advertised in Trade Marks Journal and subsequent market enquiries also revealed that the respondents had started  manufacturing  and selling men clothing including shirts and cotton dhotis under the impugned mark.

It is the appellants plea that their mark, the Double Bull Device and the Single Bull Device are considered well known marks globally under Article 6 of the Paris Convention Treaty as well as under the provisions of Section 2(1)(zg) of the Trade Marks Act, 1999 and the appellants have also prayed for a decree of declaration, declaring that their trademarks the Double Bull Device  and the Single Bull Device are well known trade marks in India.

According to the appellants they have pointed out that their Red Bull Energy Drink is being distributed in 173 countries including in India. Hence the appellants have filed the present suit for declaration, permanent injunction restraining infringement of Trade Marks and passing off, delivery up and damages. It is prayed by the appellants that a decree of permanent injunction be passed restraining the respondents and their franchisees from using the impugned Double Bull Device forming part of the respondent’s impugned mark which is deceptively or confusingly similar to the appellant’s prior registered trademarks.

Despite service, none appeared for the respondents and they were proceeded ex parte.

The court in the present suit stated that the evidence produced on record clearly showed that the trademark of the appellants the Double Bull Device and the Single Bull Device have a large coverage in India and abroad and that the appellants control almost 97% of the sales of energy drinks within India. Further according to the court the volume of appellant’s business was substantially large and the appellant’s trademark was recognised and well known to the public.

Hence the court opined that the appellants were entitled to a decree of declaration, declaring that the appellants’ trademarks the Double Bull Device and the Single Bull Device were well known trade marks in India and accordingly, a decree was passed in favour of the appellants and against the respondents and the appellants were also entitled to the actual costs.

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

 

The respondents were selling products bearing the mark FREEFUN which was identical and deceptively similar to that of the appellant’s trademark FUNFINE, hence suit was decreed in favour of the appellants and against the respondents

Ved Prakash Garg                  V/S               Gurudev Industries

The present suit is filed by the appellants Ved Prakash Garg, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trademark and passing off of trademark, copyright, damages and delivery up. [CS (COMM) 1219/2018, I.A. Nos. 15189 and 15191/2018, Decided On: 20.12.2018]

The appellant, Ved Prakash Garg is engaged in the business of  manufacturing  and marketing of puffs, namkeen, biscuits, rusk, chips and confectionary goods since 2005 under the mark FUNFINE. The appellant conceived and adopted the trademark and artistic work for the mark FUNFINE in 2005 and has continuously, extensively and openly used the same. Further the appellant is the registered proprietor of the trademark FUNFINE under Class 30 of the Trade Marks Act, 1999. The appellant’s artistic work FUNFINE, having unique colour combination, layout and lettering style amounts to an “original artistic work” within the meaning of Section 2(c) of the Copyright Act, 1957 and is entitled to copyright protection under the provisions of Section 14 of the Copyright Act, 1957.

The appellant states that in the third week of October 2018, in the course of a routine market survey in Delhi and NCR, the appellant’s sales person discovered the respondent’s puff packet bearing the trademark FREEFUN and the packaging bearing a mark identical to that of the appellant’s trademark FUNFINE along with lettering style and overall trade dress of the product.

According to the appellant the respondent’s mark FREEFUN is identical and deceptively similar to appellant’s trademark FUNFINE and is likely to cause confusion in the minds of the consumers that the respondent’s products originate from the appellants. Further it is the contention of the appellants that the respondents have adopted an identical and deceptively similar trademark to take advantage of the goodwill and reputation of the appellant’s. Hence the appellants filed the present suit in order to restrain the respondents from marketing, selling, advertising and directly or indirectly dealing in impugned goods included in Class-30 bearing the impugned mark FREEFUN or any other trademark as may be identical with or deceptively similar to appellant’s said trademark FUNFINE, thereby resulting into infringement and passing off.

Vide order dated 02nd November 2018, the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents and the court had also appointed a Local Commissioner. Further during the execution of the local commission, the respondents were found to be infringing the appellant’s trademark and were found in possession of 2472 infringing products and 2 infringing packaging rolls. But despite service of the injunction order by the Local Commissioner, the respondents had not entered appearance nor filed a written statement.

The court in the present appeal stated that the appellant was the prior user and registered proprietor of the trademark FUNFINE and due to extensive use their trademark FUNFINE had acquired reputation and goodwill in India. Also according to the court the respondents had no real prospect of defending their claim, as they have not entered appearance nor filed a written statement.

The court concluded that the respondents were selling products bearing the mark FREEFUN which was identical and deceptively similar to that of the appellant’s trademark FUNFINE and the same was also apparent from the report of the Local Commissioner on record, hence according to the court it was a clear case of infringement of the appellant’s registered trademark, trade dress and colour combination. Thus in view of the above the present suit was decreed in favour of the appellants and against the respondents along with actual cost and court-fees and the respondents were also directed to hand over infringing goods seized by the Local Commissioner to the appellants for destruction within 14 days of passing the order.

Acts/Rules/Orders: Copyright Act, 1957 – Section 14, Copyright Act, 1957 – Section 2(c)

The appellants are the registered and prior user of the trademarks in question and hence the present suit is decreed in favour of the appellants and against the respondents

Sun Pharmaceutical Industries Ltd  V/S  Brexsun Pharma Pvt Ltd

The present suit is filed by the appellants Sun Pharmaceutical Industries Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, permanent injunction restraining infringement of trademark, passing-off, unfair competition, rendition of accounts of profits/damages and delivery up. [CS (COMM) 994/2018 and I.As. 8573-8574/2018, Decided On: 13.12.2018]

The appellants originally started marketing pharma products as a proprietary firm in the year 1978 and in 1982 formed a partnership firm and continued their business under the name and style of M/s. Sun Pharmaceutical Industries. They are engaged in the business of marketing drugs and formulations in more than 150 countries worldwide under their extensive range of well known and distinctive trademarks and brand names. The appellants are the registered proprietor of the various trademarks containing SUN (both as a word and device mark), Sun Pharma and Sun Pharmaceutical Industries Ltd. in various classes under the Trade Marks Act, 1999 and by virtue of continuous and extensive use since 1978, the words SUN and SUN PHARMA are exclusively associated with the appellants.

According to the appellants in the fourth week of June 2018, they came across the respondent’s trademark application dated 07th March 2018 for registration of the trademark BREXSUN under Class 5 of the Trade Marks Act, 1999, and according to the respondent’s website, www.brexsun.com, they were a registered company engaged in the business of pharmaceutical marketing and regulatory consulting. It is the plea of the appellants that the respondents have adopted the whole of the appellant’s mark SUN PHARMA and simply added the prefix ‘Brex’, making it ‘Brexsun Pharma’ and that the respondent’s mark is visually, structurally and phonetically deceptively similar to the appellant’s trademark. The appellants contend that the respondents have unethically and unlawfully adopted the impugned mark with the intent to ride upon the goodwill and reputation of the appellants. It is further asserted by the appellants that the adoption of the impugned trademark amounts to misrepresentation and misappropriation of the appellant’s goodwill in their trademark  SUN and SUN PHARMA and also amounts to unfair trade practice, unfair competition and dilution. Also the impugned trademark used by the respondents is likely to cause confusion and deception in the minds of the consumers, as the respondents are in the same business as that of the appellants.

Hence the appellants filed the present suit praying for a decree for permanent injunction restraining the respondents from  manufacturing , selling, advertising and  directly or indirectly dealing in medicinal preparations or services related to the pharmaceutical business under the impugned trademark which is deceptively similar to the appellant’s trademark SUN/SUN PHARMA, thereby amounting to infringement of registered trademark Nos. 408870, 1564369, 1822656 of the appellants and further restraining the respondents from  passing off of their goods and business for those of the appellants.

Keeping in view the averments in the plaint and that the respondents did not appear till date, the suit is proceeded ex-parte. The court asserted that the respondents had no real prospect of defending the claim, as they neither entered appearance nor filed a written statement and also the appellants were the registered and prior user of the trademarks in question. Hence the present suit was decreed in favour of the appellants and against the respondents along with actual cost.

As the balance of convenience lied in favour of the respondents and not the appellants the reliefs sought by the appellants were declined

Womad Music Ltd.          V/S          Dharma Productions Pvt. Ltd.

The present suit is filed by the appellants Womad Music Ltd., in the Honourable High Court of Bombay before Honourable Justice Bharati H. Dangre, seeking a permanent restraint order against the respondents for communicating to the public the song “Tere Bin Nahi Lagda Dil Mera”, which, according to the appellants amounts to infringement of copyright. [Notice of Motion (L) No. 3240 of 2018 in Commercial Suit (L) No. 1793 of 2018, Decided On: 26.12.2018]

The present suit is filed by the appellants Womad Music Ltd. a music company located in U.K., engaged in the business of sound recording and sound publishing. The appellants claims to possess the exclusive rights of the song “Tere Bin Nahi Lagda Dil Mera” written by Lyricist Khawaja Parvez and sung by Late Nusrat Fateh Ali Khan both in the literary work, composition and sound recording. They have filed the present suit seeking a permanent restraint order against the defendant respondents for, in any manner, promoting publishing or communicating to the public the said song, which, according to the appellants amounts to infringement of copyright and their rights in the original work and for the act alleged of releasing the said song, the appellants have claimed damages to the tune of Rs. 3,55,000/-

According to the appellants on 9th April 1991, Late Nusrat Fateh Ali Khan entered into an agreement with the appellants and all the copyrights in certain composition owned by him were transferred to the appellants for a period of five years for lawful consideration. The plaintiff appellants claim that on the basis of the said agreement, they acquired the sole and exclusive right to use and licence others to use the titles of the composition for any purpose. According to the appellants, the agreement also made them entitle to any composition which, during its subsistence were written, composed or created in whole or in part by the writer, including the title, words and music. Further the appellant claim that the rights assigned under the agreement extend to the entire world. The appellants also asserted that the original agreement entered with Late Nusrat Fateh Ali Khan was extended till 30th April 2013 and by virtue of the said agreement, the appellants were entitled to collect all income from exploitation of the works covered by the agreement.

The respondents asserted that they had acquired valid and legal rights in respect of the song Tere Bin. According to the respondents, Sonic Enterprises had entered into an agreement with Late Nusrat Fateh Ali Khan in 1989 and the rights came to be assigned in their favour, which included the copyright in literary, music, performance and song recordings of various songs in all future albums of Late Nusrat Fateh Ali Khan in Urdu language and lyrics by Khwaja Parvez and that the said rights were to be availed in the entire world in perpetuity. A further reference is also made by the respondents, to another agreement dated 28th January 1994 which was entered into, between Late Nusrat Fateh Ali Khan and Sonic Enterprises where the former assigned and transferred unconditionally and absolutely the copyright in the literary works, performances and sound records of all songs including the song in question. The respondents have highlighted the fact that Sonic Enterprises executed a rights transfer agreement on 11th May 2016 in respect of exclusive rights in song Tere Bin in favour of one Muhammed Fahat Liaquat who then assigned the rights in favour of NM Worldwide Limited. Later Super Cassettes Industries Pvt. Ltd. obtained the said exclusive rights in the song vide agreement dated 16th April 2018 for a consideration of 33,000 dollars and the respondent’s affidavit then proceeds to state that the film ‘SIMBA’ which features the said song is on the basis of the rights so acquired.

The court in the present suit stated that the appellants claimed that the agreement dated 09th April 1991 is subsisting and valid however, no acknowledgement is presented by the appellants relating to the continuation of the agreement of Nusrat Fateh Ali Khan with them beyond 2013. According to the court, in any contingency when both the appellants and the respondents were claiming exclusive rights over the original work, balance of convenience could not be conclusively established in favour of the appellants. Further the court also asserted that the appellants had failed to establish a prima-facie case and had also not taken any steps in seeking any restraining order when the song was released on You tube and could be viewed on You-Tube and almost every music channel. The court acknowledged that, the film featuring the said song was going to be released after two days and the prints were already out, hence in view of the court, irreparable loss would be caused to the respondents if the release of the film was stalled. Also the removal of song from the move was not possible at this stage. The court concluded that the appellants could be adequately compensated if they were able to establish their claim, during adjudication of the suit and that presently the balance of convenience lied in favour of the respondents and not the appellants. Thus for the aforesaid reasons, the relief sought could not be granted in favour of the appellants and the same was declined.

 Cases Referred: Ram Sampath vs. Rajesh Roshan and Ors.  /MH/1429/2008

As the respondents had no real prospect of defending the claim hence, the suit was decreed in favour of the appellants and against the respondents

Shoppers Stop Ltd.                 V/S               Softobell Inc.

The present suit has been filed by the appellants Shoppers Stop Ltd., in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trade mark, passing off, dilution, unfair competition, delivery up, rendition of accounts and damages. [CS (COMM) 204/2016, Decided On: 01.11.2018]

The appellants Shoppers Stop Ltd. were established in 1997 and are engaged in the marketing of various consumer and household goods.  One of the leading fashion brands of the appellant’s is “VETTORIO FRATINI” for men’s apparels such as pens, wallets, footwear, belts, sunglasses etc and it is stated that the appellants adopted the mark VETTORIO FRATINI in 2003 and have been using it continuously since. The appellants have also stated that they own registration for the mark VETTORIO FRATINI under various classes of the Trade Mark Act, 1999. According to the appellants in August 2014, the appellant’s representatives came across goods being sold under the mark ‘VETTERN FRATTINI’ and further investigations revealed that the products bearing the impugned marks were available on the respondent’s website. Consequently the appellants addressed a cease and desist notice dated 21st October, 2014 to the respondents. Though the respondents replied to the cease and desist notice stating that they have removed the goods bearing the impugned mark the appellants, at the time of filling of the suit came across the goods bearing the impugned mark on the respondent’s website.

Hence the present suit is filed by the appellants for a permanent injunction restraining infringement of trade mark, passing off, dilution, unfair competition, delivery up, rendition of accounts, damages etc. Vide order dated 08th February, 2015 the Court had granted an ex parte ad interim injunction against the respondents and in case of the present suit the court was of the opinion that the respondents had no real prospect of defending the claim and hence, the suit was decreed in favour of the appellants and against the respondents along with the actual costs.

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

The appellants had rightly made out a case of trademark infringement, copyright infringement and passing off, hence the suit was decreed in favour of the appellants and against the respondents

Sanofi                     V/S               Faisal Mushtaq

The present suit has been filed by the appellants Sanofi, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for a permanent injunction, restraining infringement and dilution of trademark, trade name, domain name, passing off, infringement of copyright, damages and delivery-up. [CS (COMM) 929/2018 and I.A. No. 7820/2018, Decided On: 16.11.2018]

The appellants in the current case are a part of the Sanofi group which is the largest pharmaceutical group in Europe and the fourth largest in the world and are engaged in the research, development,  facture and marketing of prescription based pharmaceutical products as well as over-the-counter (OTC) medication. The mark SANOFI was adopted by the appellants in the year 1980 and the logo in the year 2011 and both marks are registered in various Classes under the Trade Marks Act, 1999. Further the appellant’s “Bird of Hope” logo constitutes an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 and the tag-line “A global healthcare leader focused on patients’ needs” comprises literary work within the meaning of Section 2(o) of the Copyright Act, 1957 and both are entitled to protection under Section 17 of the Copyright Act, 1957.

According to the appellants in the first week of December, 2017, they came across the respondent’s website www.snofinn.com wherein the respondents were using the nearly identical trademark SNOFINN and trade name SNOFINN PHARMACEUTICALS as that of the appellants’ in relation to pharmaceutical products and services. The appellants further state that the respondents were also using the tag- line “A universal healthcare provider focused on patients’ needs”, while promoting their website on search engines such as Google, which was nearly identical to the appellant’s tag-line.

The appellants have also highlighted the fact that despite service of a cease and desist letter dated 7th December, 2017 and an email dated 12th December, 2017, the respondents had failed to act on the same. Further according to the appellants the respondents were also seeking registration of their trademark under Class 35 of the Trade Marks Act, 1999 before the Trade Marks Registry.

Thus as the respondents had adopted the trademark, trading name, domain name, colour combination and device in their logo, and the tag lines which were visually, phonetically, structurally and aurally deceptively similar to that of the appellant’ with the intention to cause confusion and create an impression amongst consumers that the respondents have a direct affiliation with the appellants, the appellants have filed the present application pleading for a decree of permanent injunction restraining the respondents from directly or indirectly dealing in any manner with products and services using the tag-line “A Universal healthcare provider focused on patients’ needs”, the trademark SNOFINN, trading name SNOFINN PHARMACEUTICALS, SNOFINN PHARMA, SNOFINN, the logos and the domain name www.snofinn.com or any other trademark and trading name which might be similar to that of the appellant’s.

With reference to the present suit, in the opinion of the court, a case of trademark infringement, copyright infringement and passing off was made out by the appellants and hence the suit was decreed in favour of the appellants and against the respondents along with the actual costs.

Acts/Rules/Orders: Copyright Act, 1957 – Section 17, Copyright Act, 1957 – Section 2(c), Copyright Act, 1957 – Section 2(o)

 

The respondent’s mark “AAJ TAK AAMNE SAAMNE” is structurally, visually and phonetically identical to the appellant’s registered trademark “AAJ TAK”, hence the respondent’s act is a clear violation of the rights of the appellants.

Living Media India Limited               V/S               Mandeep Kaur

The present suit has been filed by the appellants Living Media India Limited, in the Honourable High Court of Delhi before Honourable Justice Jayant Nath, for a permanent injunction restraining the respondents from infringement and passing off trademark “AAJ TAK” or any other trademark deceptively similar to the appellants’ registered trademark “AAJ TAK”. [CS (COMM) 990/2016, Decided On: 16.11.2018]

The present suit is filed by the appellants Living Media India Limited for permanent injunction restraining the respondents from infringement and passing off trademark “AAJ TAK” or any other trademark deceptively similar to that of the appellants’ registered trademark “AAJ TAK” in relation to magazine, newspaper, journal etc.

The appellants are one of the major media corporations in India with enormous commercial interests in both print and electronic media.  They are the registered owner of immensely popular trademark “AAJ TAK”, a 24 hour Hindi news channel and have been using the trademark “AAJ TAK” since 1995 continuously and uninterruptedly. Further being in the media business for over 4 decades the appellants have earned huge and unparallel reputation not only in India but across the world. The appellants also have developed a website “www.aajtak.com” which gives information about the appellants and their services and disseminates news and headlines online.

According to the appellants, they recently came to know of the infringement and violation of their trademark by the respondents when an email was sent to an employee of the appellants’ by the respondents. The appellants state that the respondents claim to own, print and publish a fortnightly magazine “AAJ TAK AAMNE SAAMNE” and are owner of the domain name “aajtakaamnesaamne.com” and that the said domain name was created on 22.01.2014.

It is the contention of the appellants that hat the impugned trademark “AAJ TAK AAMNE SAAMNE” is deceptively similar to the appellants’ registered trademark “AAJ TAK” and that the respondcents are using the said trademark for similar goods, services as that of the appellants. According to the appellants the respondents are clearly trying to ride and encash upon the goodwill earned by the appellants over a long period of use.

The appellants further highlighted that they had issued a notice to the respondents for using the deceptively similar trademark for similar services and a cease and desist notice dated 09.04.2014 was also issued by the appellants but the respondents failed to act upon the notice and continued to use the impugned trademark.

In view of the averments made in the plaint and the un-rebutted evidence filed by the appellants, the court stated that the appellants had established that they were the registered proprietor of the said trademark “AAJ TAK” and hence had a statutory right to the exclusive use of the same. Further according to the court the mark “AAJ TAK AAMNE SAAMNE” used by the respondents was structurally, visually and phonetically identical to the registered trademark of the appellants and hence the respondent’s act was a clear violation of the rights of the appellants. The court also asserted that the act of the respondents lacked bonafide and that the goods and services sold under a deceptively similar trade mark would lead to passing off the goods and services of respondents as those of the appellants.

Accordingly, the decree of permanent injunction was passed in favour of the appellants and against the respondents restraining them from using the mark “AAJ TAK AAMNE SAAMNE” and “aajtakaamnesaamne.com” or any other trademark deceptively or phonetically similar to that of the appellants’ registered trademark “AAJ TAK” in relation to magazine, newspaper, journal, news or any other media related services. The court also entitled the appellants to damages of Rs. 1 lac and a decree to that effect was passed in favour of the appellants and against the respondents.

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

The stand of the respondent that it is not the owner of the Idukki Vision News and Idukki Vision Digital is completely false and therefore the suit is decreed in favour of the appellants

Super Cassettes Industries Pvt. Ltd.  V/S   I-Vision Digital LLP

The present suit has been 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 and damages against the respondents. [CS (COMM) 905/2018 and I.A. 7340/2018, Decided On: 12.11.2018]

The appellants in the current suit are Super Cassettes Industries Pvt. Ltd., owners of a large repertoire of rights in sound recordings and audiovisual works from various cinematographic films. The respondent in the suit are I-Vision Digital LLP a company which is running the cable channel by the name Idukki Vision Digital.

The appellants state that, they found that the respondent was broadcasting various copyrighted works of the appellants’ on its channel Idukki Vision News which was one of the channels, run by the respondent. Subsequently the appellants issued notices dated 29th December 2017 and 20th January 2018 notifying the respondent of their rights in the audio-visual works. The appellants further state that the respondents took a stand that the channel Idukki Vision Entertainment is not owned by them. The appellants thereafter, issued another notice dated 5th February 2018 clearly showing evidence to the effect that Idukki Vision Entertainment and Idukki Vision News were run by the respondent. However no reply was received, leading to the filing of the present suit.

Hence the present suit was filed by the appellants seeking permanent injunction and damages against the respondents. Further despite service of the summons and notice, none appeared for the respondents.

According to the court a perusal of all the records showed that that the respondent clearly claimed that Idukki Vision News is one of its channels, as per the data available on its own website www.idukkivision.com. Hence, the stand of the respondent, that it is not the owner of the channel, was clearly contrary to the information available on its own website, also highlighting the fact that the respondent was clearly trying to evade taking responsibility of the illegal broadcasts on its cable channel. Under these circumstances, the court observed that the stand of the respondent, that it is not the owner of the Idukki Vision News and Idukki Vision Digital, was completely false, and in fact malafide. Further according to the court considering that the appellants had put the respondent to notice and that the respondent took a false plea in its reply and also failed to reply to the subsequent notices sent by appellant, this was an apt case for passing a decree of damages. Thus considering that the respondent was a cable channel, broadcasting to more than 20 lakh homes, the suit was decreed for a sum of Rs. 10 lakhs along with costs of the suit and counsel fee.

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

As the goods of the appellants’ were packed in a box of different shape with a different colour combination as that of the respondents, the present application was dismissed

Kama Ayurveda Private Limited     V/S     RWL Healthworld Ltd.

The present suit has been filed by the appellants Kama Ayurveda Private Limited, in the Honourable High Court of Delhi before Honourable Justice Jayant Nath, seeking a permanent injunction to restrain the respondents from selling, offering for sale any goods similar to the get up and packaging as that of the appellants’ products. [CS (COMM) 420/2017, Decided On: 22.11.2018]

The appellants Kama Ayurveda Private Limited are in the business of  manufacturing  and marketing an array of cosmetic products for skin care, hair care and body care. The products of the appellants’ are sold bearing their trademark KAMA AYURVEDA. In order to distinguish their products from other traders in the market, the appellants have internally developed a unique and distinctive artwork and get up for all its products and all the products are packaged in a distinctive and unique packaging with unique art work. The appellants have various registrations for the mark KAMA AYURVEDA in India and also in abroad.

One of the best selling products of the appellants’ is a face cream named ‘Eladi Hydrating Ayurvedic Face Cream’ available in the market in a distinctive and unique get up and packaging. The original artwork, get up and packaging of the aforementioned face cream was said to have been created by the director of the appellants’ company and by virtue of long use by the appellants, the trade dress of ‘Eladi Hydrating Ayurvedic Face Cream’ has acquired a significant goodwill and secondary meaning of being unique.

It is the plea of the appellants that on 24.05.2017, one of the employees of the appellants, came across the store of the respondents in Khan Market and came across the product named ‘Anantam Ageless Collection by Mantra-Green Apple Stem Cell-Face Revitalizer’. The get up and packaging of the said product was shockingly the same and strikingly and deceptively similar to the get up of ‘Eladi Hydrating Ayurvedic Face Cream’  factured and sold by the appellants. Hence, the appellants filed the present suit, seeking a permanent injunction to restrain the respondents from selling, offering for sale any goods similar to the get up and packaging as that of the appellants’ products.

The respondents RWL Healthworld Ltd. have denied the appellants’ contentions. The respondents pointed out that the brand used by both the parties was entirely different and that even the cost was entirely different. The respondents highlighted that their product was being sold at around Rs. 1,890/- whereas the product of the appellants’ was priced at only Rs. 1,125/-. The respondents have pleaded that there is no similarity in the trade dress of the two products.

The court in the current suit asserted that a perusal of a judgment of the Supreme Court showed that the essential aspects to be considered were that, whether the colour scheme and the overall effect of the packaging would create confusion in the eyes of a common person and whether there was a dishonest intention on the part of the respondents in passing off their goods as that of the appellants.

Keeping in view the above judgement and the physical perusal of the two products in question, the court in the present suited stated that a look at two goods when put together showed material distinction in the packaging being used. The court highlighted that the goods of the appellants’ were packed in a box of different shape with the colour combination in gold and cream and in contrast, the background colour of the box of the respondents was white / off white and the floral pattern used was also different. The court was of the opinion that, there were hardly any similarities that could confuse and mislead a purchaser and that it was extremely unlikely that a common man with an average intelligence would be misled to believe the product of the respondents’ as that of the appellants’. Further the cost of the product of the respondents’ and that of the appellants’ was also different, the cost of the respondents’ product being higher.

Hence according to the court, the appellants had failed to make out a prima facie case for grant of interim order and accordingly, the present application was dismissed.

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

Cases Referred: Dabur India Ltd. vs. Amit Jain and Anr.  /DE/1715/2008; Heinz Italia and Anr. vs. Dabur India Ltd.  /SC/2133/2007; J.N. Electricals (India) vs. President Electricals  /DE/0172/1979

An interim arrangement, permitting the respondents to use the name ‘Kaka-Ka Dhaba’, ‘Kaka-Ka Restaurant’ and ‘Kaka-Ka Garden’, but restraining them from using the name ‘Kaka-Ka Hotel’, was passed

Arun Chopra                  V/S               Kaka-Ka Dhaba Pvt. Ltd.

The present suit has been filed by the appellants Arun Chopra, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh for infringement of registered trademark and other reliefs. [CS (COMM) 728/2018, Decided On: 28.11.2018]

The appellant claims that the name ‘Kake Da Hotel’ was adopted in 1931 when the said name was used for a restaurant which was started in Lahore, Pakistan. Post partition, the founders shifted to Delhi and opened a restaurant in the same name. The earliest trademark registration for ‘Kake Da Hotel’ dates back to 14th December, 1950 and the claim of the user is from 1st June, 1931 in respect of goods falling in class 30. The appellants claim that after several years of use, they also registered the trademarks ‘K-D-H Kaku-Da-Hotel’ and ‘K-D-H Kake-Da-Hotel’. According to the appellant the name ‘Kake Da Hotel’ has acquired enormous reputation and goodwill. Further the appellant’s outlet has received excellent reviews in the print and the electronic media and the name is associated only with the appellant’s restaurant.

The present suit is filed by the appellant on the ground that the respondents had started use of the name/mark ‘Kaka-Ka Dhaba’ for food outlets in Nashik, Maharashtra. It is the contention of the appellants that the use of the mark ‘Kaka-Ka’ for food outlets infringes upon the registered trademark of the appellant.

The respondents, Kaka-Ka Dhaba Pvt. Ltd., in a written statement asserted that they adopted the mark ‘Kaka-Ka Dhaba’ in 1997, however there was a food cart used by the family since the early 1980s called ‘Kaka-Ka Dhaba’ and the outlet was started in the year 1993 or at least since 1997. Further the appellants claim that they have three outlets in Nashik area and that all the three outlets were started at least 17 years ago and the expression ‘Kaka-Ka’ has been used by them for these outlets with different descriptions. It is further submitted by the respondents that the appellant has no reputation in Nashik, Maharashtra and the respondents had gained their own reputation. Also according to the respondents the word ‘Kaka’ was generic and no monopoly could be claimed in the same.

The court in the present case stated that a perusal of the appellant’s trademark registration showed that the appellant is registered for the mark ‘Kake-Da-Hotel’ and is also using the mark ‘K-D-H’ along with it. On the other hand, the respondents were using the trademark ‘Kaka-Ka Restaurant’, Kaka-Ka Hotel, ‘Kaka-Ka Dhaba’ and ‘Kaka-Ka Garden’ and had applied for registration only for ‘Kaka-Ka Dhaba’.

The court opined that the following interim arrangement would serve the ends of justice. Accordingly the respondents were permitted to use the name ‘Kaka-Ka Dhaba’, ‘Kaka-Ka Restaurant’ and Kaka-Ka Garden’ for their outlets already operating in Nashik, Maharashtra, however, they were not to use the name Kaka-Ka Hotel’. Also the respondents were not open any further outlet with the name Kaka-Ka ‘, during the pendency of the present suit. The respondents were also ordered to maintain complete accounts of all sales which they were conducting in their three restaurants/outlets.  Thus the interim order already granted was modified in the above terms. Further taking on record and accepting the personal undertaking given by the respondents the contempt applications were disposed of and the respondents were directed to scrupulously abide by the interim order passed.

 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 2A; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 4

Cases Referred: Wander Ltd. and Anr. vs. Antox India P. Ltd.  /SC/0595/1990

 

The trademark SANDISK and Red Frame logo used by respondents amounted to infringement of appellants’ trademarks, hence the suit was decreed in favour of the appellants and against respondents

Sandisk LLC                    V/S                 Raj Enterprises

The present suit has been filed by the appellants Sandisk LLC, in the Honourable High Court of Delhi before Honourable Justice Manmohan for permanent injunction restraining infringement of trademark, copyright, passing off, rendition of account of profits, damages and delivery up. [CS (COMM) 990/2018 and I.A. No. 15226/2018, Decided On: 26.11.2018]

The appellants, Sandisk LLC are a company founded in 1998 and are one of the world’s largest dedicated provider of flash memory storage solutions under the mark SanDisk and have been selling their products in the Indian market since 2005. It is stated that the appellants possess both common law trade mark rights as well as trade mark registrations for the mark SanDisk in more than 150 countries worldwide and that the appellants are also the registered proprietors of both, a variety of word marks and device marks in India, since 2013 and 2009 respectively, under Class 9 of the Trade Marks Act, 1999 and all the trademarks are valid and subsisting. Further the appellants sell their memory cards in a unique packaging.

The appellants state that in June 2018, it came to their knowledge that unauthorised third parties, were marketing and selling counterfeit micro SDHC cards and USB flash drives bearing identical trademarks and packing as the appellants’ products. The appellants deputed an investigator to carry out an investigation in the Koti area of Hyderabad where the investigator noticed that the premises of respondents contained large quantities of counterfeit ‘SanDisk’ and ‘Cruzer Blade’ products and an analysis of the sample products purchased from the respondents confirmed them to be counterfeit products.

Hence the appellants filed the present suit for permanent injunction restraining the respondents, from  manufacturing , marketing, advertising and directly or indirectly dealing in any product bearing the appellant’s registered trademarks ‘SanDisk’, their logo, ‘Cruzer Blade’ and the ‘Red Frame Logo’ or any other mark, confusingly or deceptively similar to that of the appellants’ thereby amounting to infringement of the appellants’ registered trademarks.

Prior to the present suit the court had vide order dated 05th July, 2018 granted an ex parte ad interim injunction in favour of the appellants and against the respondents.

The court in the present case was of the view that due to extensive use, the appellants’ mark SANDISK and the Red Frame logo had acquired reputation and goodwill globally as well as in India. Further keeping in view the pleadings as well as the evidence on record, the court opined that the respondents were using the appellants’ registered trade mark SANDISK and their 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 goods as those of the appellants. Consequently, the allegation that the trademark SANDISK and Red Frame logo used by respondents amounted to infringement of appellants’ trademarks was deemed correct. Further the court also highlighted that the use of the appellants’ mark by the respondents was bound to cause incalculable loss, harm and injury to the appellant and immense public harm.

Accordingly the suit was decreed in favour of the appellants and against respondents along with costs and the appellants were also held entitled to compensation of Rs. 1,99,500/- to be paid by the respondents. Also the respondents were also directed to hand over the goods seized by the Local Commissioner to an authorised representative of appellants for destruction within three weeks.

 patra Reference Number:   /DE/4381/2018

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VIII Rule 10; Code of Civil Procedure, 1908 (CPC) – Section 151

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 respondents were selling counterfeit products bearing the appellants’ CLIPPER trademark and product packaging, the suit was decreed in favour of the appellants and against the respondents

Flamagas S.A.                V/S               Ojas B. Shah

The present suit has been filed by the appellants Flamagas S.A., in the Honourable High Court of Delhi before Honourable Justice Manmohan for permanent injunction restraining infringement of trademark, copyright, passing off, rendition of accounts and other reliefs against the respondents. [CS (COMM) 99/2017 and I.A. 15219/2015, Decided On: 28.11.2018]

The appellants Flamagas S.A. are a Spanish company incorporated in 1959 and are engaged in the business of  manufacturing  and selling a wide range of pocket and multipurpose lighters, gas and gas refills under the mark “CLIPPER”.  According to the appellants, they were the first in the market to introduce refillable gas lighters in the world and for this purpose adopted the mark CLIPPER. The appellants have been granted trademark registrations in respect of their unique wing shaped lighter as a three-dimensional trademark in various foreign countries and in India also, the appellants’ are the registered proprietors of the CLIPPER word mark and the shape of the famous CLIPPER lighter under Classes 4 and 34 of the Trademarks Act, 1999. Further the said registrations are valid and subsisting. Also by virtue of continuous and uninterrupted use the aforesaid CLIPPER trademark and the shape of the CLIPPER lighter of the appellants’ is exclusively associated with them. The appellants are also the owner of the artistic work in respect of the “CLIPPER” mark/label as well as the unique wing shaped lighter with an additional feature of removable flint as they amount to an “original artistic work” within the meaning of Section 2(c) of the Copyright Act, 1957 and the appellants are entitled to copyright protection under the provisions of Section 14 of the Copyright Act, 1957.

According to the appellants in June 2015, they came to know through market sources, about certain lighters of identical shape being sold in Kolkata. Subsequently, the appellants commissioned an investigation which revealed that the respondents were selling counterfeit products bearing the appellants’ trademarks. The investigation highlighted that the respondents trading as Chandra Agencies imported lighters in bulk from China which is stored at the respondents’ godown or is immediately distributed to various entities who sell the infringing lighters in Delhi and Kolkata.

The appellants contended that the respondents were infringing upon their statutory and common law rights by selling counterfeit products in a packaging that was an exact replica of the appellants’ packaging with the sole intent to confuse unwary customers and to ride upon the appellants’ reputation and goodwill.

Hence the appellants filed the present suit for a permanent injunction restraining the respondents from  manufacturing , selling, advertising and directly or indirectly dealing in any products which are identical or deceptively similar to the appellant’s trademark No. 709140 and 803833 in the shape of CLIPPER lighter amounting to infringement of the trademark.

Vide order dated 30th July, 2015, the court had granted an ex parte ad interim injunction in favour of the appellants and with respect to the current suit the court opined that the respondents had no real prospect of defending their claim as despite entering appearance and filing a written statement, they had not lead any evidence and hence, the appellants’ evidence had gone unrebutted. The court also acknowledged that due to extensive use, the appellants’ mark CLIPPER had acquired reputation and goodwill globally as well as in India and that the respondents were selling counterfeit products bearing the appellants’ CLIPPER trademark and product packaging and hence it was a clear case of infringement of the appellants’ registered trade mark.

Thus in view of the aforesaid arguments put forth by the appellants the suit was decreed in favour of the appellants and against the respondents along with costs.

Acts/Rules/Orders: Copyright Act, 1957 – Section 14, Copyright Act, 1957 – Section 2(c)

Cases Referred: Hindustan Unilever Limited vs. Reckitt Benckiser India Limited  /DE/0353/2014

The evidence of the appellants has gone unrebutted and accordingly the suit is decreed in favour of the appellants and against the respondents

Premier Nutrition    V/S    Industrial Progressive (India) Limited

The present suit has been filed by the appellants Premier Nutrition, in the Honourable High Court of Delhi before Honourable Justice Manmohan for permanent injunction restraining infringement of trademarks, infringement of copyright, delivery up of goods, rendition of accounts and damages. [CS (COMM) 1371/2016 and I.A. 9229/2014, Decided On: 29.11.2018]

The appellants in the case Premier Nutrition are a company incorporated in 1973 and are one of the largest companies of India engaged in the business of  manufacturing  and marketing milk and dairy products under the name and style of “MANTHAN” with the trading style “Premier with logo P” since the year 1990-91. The appellants conceived and adopted its unique trading name “MANTHAN” with trading style “Premier with logo P” and trade dress in the year 1990 and are the registered owner of the trademark “MANTHAN” and the trading style “Premier with logo P” under Classes 29 and 32 of the Trade Marks Act, 1999. Further the appellants’ logo contains a unique get up, layout and arrangement of the features and the said logo and trade dress constitute an “original artistic work” within the meaning of Section 2(c) of the Copyright Act, 1957. The appellants have also filed applications for registration of the copyright in their unique logo and trade dress.

The appellants state that in October 2013, they became aware about the respondents’ products being sold under a trademark, trade dress and logo identical to that of the appellants’ for skimmed milk powder. Further, enquiries revealed that the respondents were  manufacturing  and supplying milk, dairy products and skimmed milk powder and had targeted consumers and purchasers of the appellants to make large sales during the festive months of Diwali, Holi and Christmas.

Consequently the appellants addressed a Caution Notice dated 16th October 2013 and 18th October 2013 in the regional newspaper “Dainik Bhaskar”, with the view to caution their customers regarding the respondents infringing products and warn the respondents of impending legal action, however, this was ignored by the respondents. Thereafter the appellants with the assistance of the police conducted a raid in October 2013 where spurious goods worth approximately Rs. 5 lakh were found at the premises of the respondents. Accordingly, the present suit was filed by the appellants for a decree of permanent injunction restraining the respondents from using, selling and advertising or by any other mode or manner dealing in or using the deceptively similar impugned trademark, trade dress and logo in relation to their impugned goods.

On 30th October 2013 the court had granted an ex parte ad interim injunction in favour of the appellants and against the respondents. Further though the parties had tried to mediate the matter in April 2014 however, the mediation failed as the respondents refused to stop using the trademark “MANTHAN”.

It is the contention of the appellants that the adoption and use of the impugned marks by the respondents was motivated by dishonest intention to trade upon and commercially benefit from the reputation and goodwill enjoyed by the appellants in their “MANTHAN” mark along with the trading style “Premier with logo P”. Also the dishonest adoption and use of the impugned mark, by the respondents had caused confusion that the products of the respondents were associated with those of the appellants’.

In the opinion of the court, in case of the present suit, the respondents have no real prospects of defending the claim as they have not denied the documents and the evidence of the appellants has also gone unrebutted. Hence in view of the above, the suit is decreed in favour of the appellants and against the respondents and the appellants are held entitled to Rs. 20,00,100/- as loss of damages.

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

The suit was decreed in favour of the appellants and the respondents were ordered to pay Rs. 4,45,000/- for the value of goods seized at their premises

Sandisk LLC          V/S             Ishu Narang

The present suit has been filed by the appellants Sandisk LLC, in the Honourable High Court of Delhi before Honourable Justice Manmohan, for permanent injunction restraining infringement of trade dress, copyright, passing off, rendition of account of profits and damages. [CS (COMM) 857/2016, Decided On: 11.04.2018]

The appellants, Sandisk LLC are a company organized and incorporated under the laws of State of Delaware and have been using the trademark SanDisk since 1988 for consumer electronic goods all over the world. The appellants are one of the world’s largest dedicated providers of flash memory storage solutions under the mark SANDISK and the said trademark has been in extensive, continuous and uninterrupted use globally since 1995 and in India since 2005. Further the appellants are the registered proprietor of a variety of word marks and device marks in India including the SanDisk logo.

It is the contention of the appellants that in last week of May, 2015, they came to know that large quantities of counterfeit SanDisk memory cards were being sold in the market. Further the appointed Local Commissioner seized a total of 890 infringing goods on 10th June 2015 from the premises of the respondents.

The court had vide order dated 29th May, 2015 granted an ex parte ad interim injunction in favour of the appellants and against the respondents.

With regards to the present appeal the court stated that the respondents had no real prospect of defending the claim as the respondents had not filed their written statement. Consequently, the suit was decreed in favour of the appellants and against respondents. Further the court was also of the view that the respondents were liable to pay to the appellants the value of goods seized by the Local Commissioner and the legal costs incurred by the appellants. Hence the respondents were to pay Rs. 4,45,000/- for the value of goods seized at their premises and were also ordered to hand over the goods seized by the Local Commissioner to the appellants for destruction.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXIII Rule 3; Code of Civil Procedure, 1908 (CPC) – Section 151

 

The appeal was dismissed and the modification sought was declared inconsequential, as the interim injunction order passed, was in favour of the appellants and the infringing material was seized by the Local Commissioner

Morepen Laboratories Limited    V/S   East West Pharma

The appellants, Morepen Laboratories Limited are aggrieved by the judgment and orders that partly allowed their suit for permanent injunction, but denied the claim for damages, hence the present suit is filed in the Honourable High Court of Delhi before the Honourable Justice S. Ravindra Bhat and A.K. Chawla. [RFA (OS) (COMM.) 13/2017, Decided On: 16.04.2018]

The appellants in the suit Morepen Laboratories Limited are primarily engaged in the production and marketing of pharmaceutical products since the year 1985 and have filed various applications with the Controller General of Patents, Designs and Trademarks and, have various trademark registrations in their kitty. In the year 1995, they started  manufacturing  and marketing a medicine under the brand name ‘DOM DT’ the trademark of which has been renewed and is valid till 14.08.2019.

It was the plea of the appellants that in the third week of January, 2013, they came to know that a medicine under the brand name ‘DOM’ was being sold by the respondents East West for the purpose for which the appellants, Morepen were  manufacturing  their medicine under the trademark ‘DOM DT’ and that the salt composition of both the products was also same. The contention of the appellants was that the respondents had started using the trademark ‘DOM’ from the year 2010 to encash upon the goodwill and reputation of Morepen and to earn illicit profits.

Accordingly Morepen had filed the suit seeking decrees of permanent injunction for infringement and passing off and had also sought leave to file a separate suit for damages on account of losses suffered on account of conduct of the respondents.

According to the appellants though the Court had passed the decree of permanent injunction restraining East West from  manufacturing  or selling the products under the brand name ‘DOM’, the learned Single Judge had erred in not ordering the delivery-up of the infringement labels and marks for destruction as provided for under Section 135 of the Trade Marks Act, 1995 further, it was also contended by the appellants that they should have been granted leave to sue for damages as prayed for and hence it was requested that the decree passed, was required to be modified to contain the remaining reliefs prayed for.

The court in the above matter stated that the interim injunction orders were passed on 15th February 2013 and the Local Commissioner had seized the infringing material on 23rd February 2013, further the products seized had a shelf life of two years only hence, as of now, those products had become stale and were of no use. Thus in the given factual conspectus, according to the court the modification sought was inconsequential and hence the court concluded that it did not see any merit in the appeal and was dismissed.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order II Rule 2; Code of Civil Procedure, 1908 (CPC) – Section 151

Cases Referred: Deva Ram and Another vs. Ishwar Chand and another  /SC/0097/1996

Stating the rival mark of the respondent to be deceptively similar to that of the appellant’s the earlier impugned order was set-aside and the present appeal was allowed

Mangalore Ganesh Beedi Works           V/S          Sangishetty Ramulu

The appellants have filed the present appeal opposing the order dated 30th June 2009 passed by the Assistant Registrar of Trade Marks at Trade Marks Registry, Chennai in the matter of an Opposition filed by the appellants against the application No. 479278 in class 34 for registration of trade mark label containing the Device of God GANESH and Goddess LAXMI. The present appeal was made before the Intellectual Property Appellate Board before the Honourable Coram Manmohan Singh, (Chairman) and Sanjeev Kumar Chaswal, (Member – Trade Marks).  [OA/49/2011/TM/CH, Decided On: 06.04.2018]

The appellants, Mangalore Ganesh Beedi Works are an established and reputed  facturers and traders of bidis. According to the appellants they have been continuously and extensively using in relation to their bidis the trade mark labels containing the word GANESH and the motif of Lord Ganesh as the leading and essential features with a view to distinguish their bidis from those of others. Further the appellants have also secured registrations of the said trademarks and the registrations have been duly renewed and are valid and subsisting.

The respondent Sangishetty Ramulu made an application to the Registrar of Trade Marks, Chennai for registration of the trade mark label containing the word GANESH and Goddess LAXMI as its leading and essential features in respect of bidis, claiming user of the trademark from 16th March 1984.

The appellants filed their opposition to the respondent’s trademark application on the grounds that the respondent’s trademark was deceptively similar to that of the appellants’ and that the respondent’s mark would likely cause confusion and deception in the minds of the consumers and would result in infringement of the appellants’ registered trademarks. The Registrar of Trade Marks upon hearing the matter, by his order, dismissed the appellants’ opposition and allowed the respondent’s application. Hence the appellants filed the present appeal challenging the impugned order.

The board in the present appeal stated that in view of the settled principle of law and finding in the above judgment, the Registrar had erred in holding that the rival marks were different. The board also asserted that the rival mark of the respondent was deceptively similar to that the appellant’s and further highlighted that the respondent had not seriously contested the matter. Thus the court concluded that the respondent was not entitled to the registration of the impugned trademark and accordingly the earlier impugned order was set-aside and the present appeal was allowed.

 Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 11(1), Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 18(4), Trade Marks Act, 1999 – Section 8, Trade Marks Act, 1999 – Section 9, Trade Marks Act, 1999 – Section 9(1), Trade Marks Act, 1999 – Section 9(2)(a)

Cases Referred: Mohamed Oomer, Mohamed Noorullah vs. S.M. Noorudin  /MH/0056/1952; National Sewing Thread Co. Ltd. vs. James Chadwick & Bros. Ltd. (J. & P. Coats Ltd., Assignee)  /SC/0063/1953; T.G. Balaji Chettiar vs. Hindustan Lever Ltd., Bombay  /TN/0252/1967

The respondents had made use of a deceptively similar mark i.e. UNIQUE in relation to identical goods and hence the suit was decreed in favour of the appellants

Maya Sharma              V/S            Unique Law Publication House

The present suit has been filed by the appellants Maya Sharma for permanent injunction restraining passing off, dilution, unfair trade competition and rendition of accounts in the Honourable High Court of Delhi before the Honourable Justice Manmohan. [CS (COMM) 551/2018, Decided On: 02.04.2018]

The appellant, Maya Sharma is the sole proprietor of Nitin Prakashan involved in the business of publication of books, particularly guide books, model papers with answers, question and answer series, particularly for law students since the year 1984. The appellants have been publishing books under the trademarks UNIQUE, UNIQUE 20, UNIQUE 30, UNIQUE Law Series and ULS since 1984 in Hindi and English. It is further stated by the appellants that the trademark UNIQUE has a distinct layout, art work and trade dress. Also the trademark UNIQUE 20 of the appellant’s refers to twenty important questions from the syllabus for each subject. The appellants have also highlighted that due to long, continuous, uninterrupted and extensive use, the appellant’s trademark UNIQUE has acquired huge reputation in relation to books.

The appellants state that on 25th December 2014 it came to their notice that the respondents were publishing law books under the trademark UNIQUE and UNIQUE 20 and hence the appellants filed the present suit.

The court had on 12th January 2015, granted an ex-parte ad interim injunction in favour of the appellants and against the respondents.

With reference to the present appeal, the court stated that after perusing  the ex parte evidence as well as documents placed on record, it was of the opinion that the appellants had proved the facts stated in the plaint and that the respondents had blatantly copied the trademarks and the trade dress of the appellants. The court also highlighted that the respondents were using the trademark UNIQUE 20 for the book containing 30 questions, which was a wrong description of the contents of the book.

Thus the court concluded that the appellant’s evidence has gone unrebutted and that the respondents had deliberately stayed away from the court’s proceeding with a view of frustrating the appellant’s claim and hence the present suit was decreed in favour of the appellants and against the respondents.

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

As the respondents had neither entered appearance nor filed their written statement or denied the documents of the appellants the suit was decreed in favour of the appellants along with costs

Samsung Electronics Company Ltd.     V/S     A. Shajahantrading

The present suit has been filed against the respondents for permanent injunction for infringement of trademarks and copyright, passing off, unfair competition, delivery up and recovery of damages in the Honourable High Court of Delhi before Honourable Justice Manmohan. [CS (Comm.) 574/2017, I.As. 6484/2015 and 94/2017, Decided On: 10.04.2018]

The appellants Samsung Electronics Company Limited, are a corporation organized and existing under the laws of the Republic of Korea and is a leading  facturer and provider of high-tech consumer electronics and telecommunications products in India. The appellants are the registered proprietor of the well known trademarks, “SAMSUNG”, “SAMSUNG DEVICE” “SAMSUNG GALAXY” and “SAMSUNG GALAXY TAB” and are also the owner of copyright in the original artistic work of the oval device. The appellants have stated that said oval device is protected as an original artistic work under Section 2(c) of the Copyright Act, 1957 and is also protected in India by virtue of Section 41 of the Copyright Act, 1957. The appellants contended that around March, 2015, they learnt that several vendors in Chennai were  manufacturing  and selling counterfeit products such as mobile phones, tablets, mobile covers, flip covers etc. bearing the appellants’ aforementioned trademarks.

Further the market survey conducted by an independent investigator appointed by the appellants revealed that that there were several parties engaged in the  facture and sale of counterfeit products bearing the appellants’ trademarks and also revealed that some of them were  manufacturing  and selling mobile phones, tablets and mobile accessories bearing the name SAMTEL, CALAYX, SAMOSANG which were virtually identical and confusingly similar to the appellant’s trademarks.

Hence the present suit was filed by the appellants for permanent injunction as the physical inspection of the counterfeit products revealed that the products were made from inferior quality material but as they were virtually identical to the original products of the appellants, the customers were easily mislead, thereby causing immense loss and injury to the appellants.

The court had on 27th March 2015, granted an ex parte ad interim injunction in favour of the appellants and against the respondents and in case of the present appeal, the court was of the opinion that the respondents had no real prospect of defending their claim, as they had not entered appearance and had also not filed their written statement or denied the documents of the appellants.  Hence in view of the above, the court decreed the suit in favour of the appellants along with costs.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 3; Copyright Act, 1957 – Section 2(c), Copyright Act, 1957 – Section 41

The respondents had reclused themselves from the proceedings and also had infringed the appellant’s rights, hence the suit was decreed in favour of the appellants

Vior (International) Ltd.   V/S   Maxycon Health Care Private Ltd.

The appellants have filed the suit for restraining the respondents from infringement of Indian Patent No. 221536, infringement of copyright in the literary work, dilution & tarnishment of brand image, rendition of accounts and damages in the Honorable High Court of Delhi before Honorable Justice Yogesh Khanna. [CS (COMM) 712/2018, Decided On: 12.04.2018]

The appellants Vior (International) Ltd. are a company incorporated under the laws of Switzerland and one of the world’s leading companies in treatment of iron deficiency and iron deficiency anaemia. According to the appellants their patent is an invention which is a novel water soluble iron carbohydrate complex which is used for intravenous treatment of iron deficiency when oral iron preparations are ineffective or cannot be used. The appellants have further highlighted that their patent is an established, valid and subsisting patent and has a term of 20 years from 20th October 2003 in India also no pre-grant or post grant opposition has been filed against this patent.

It is the contention of the appellants that they became aware of the activities of the respondents in the second week of December, through the respondent’s website http://maxyconhealthcare.com/about_us.html, through which the respondents had falsely misrepresented that the appellants had given an IP license to them to  facture and commercialize the said patent. Further the respondents had blatantly copied the literary write-up and content from the appellant’s website, thereby amounting to infringement of the copyright that was vested with the appellants with respect to the literary work. According to the appellant such activities of the respondents amounted to dilution of the brand image of the appellants’ thereby resulting in unlawful enrichment. The appellants further highlighted that the respondents, despite the operation of an ad-interim injunction against them, continued their infringing activities.

The court in the present suit stated that from the pleadings and the evidence placed on record, the appellants had proved that the acts of the respondents were in complete contravention and disregard of the appellants’ existing and valid patent and hence it amounted to infringement of the appellant’s rights as the respondents were violating Section 48 of the Patents Act, 1970 which prescribed that the patentee had an exclusive right to make, use, sell, import and distribute the patent. Further according to the court, a conjoint reading of Section 51 of the Copyright Act, 1957 along with Section 14 of the Act conferred exclusive rights upon the owner of a copyright and any person or entity reproducing the work in any material form would be liable for the act of copyright infringement hence the act of the respondents of blatantly copying the content from the appellant’s website was clearly a violation of the copyright vested with the appellants and amounted to infringement of copyright.

The court asserted that as the respondents had reclused themselves from the proceedings and continued their infringing activities despite an injunction order, the damages must be awarded not merely to compensate the appellant’s loss, but also to punish the respondents in an exemplary manner and vindicate the distinction between a wilful and innocent wrongdoer.

Accordingly, a decree for a sum of Rs. 10 Lac in favour of the appellants and against the respondents was passed on account of infringing the registered marks, trade dress and violating interim order by the court. The costs of the suit were also awarded to the appellants.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order I Rule 10; Copyright Act, 1957 – Section 14, Copyright Act, 1957 – Section 51; Indian Evidence Act, 1872 – Section 65B; Patents Act, 1970 – Section 48

Cases Referred: R.G. Anand vs. Delux Films and Ors.  /SC/0256/1978; Hindustan Unilever Limited vs. Reckitt Benckiser India Limited  /DE/0353/2014; Jockey International Inc and Anr. vs. R. Chandra Mohan and Ors.  /DE/1312/2014

 

Stating that, the respondents using the registered trademark of the appellants with a view of benefitting from the reputation and goodwill of the appellants’, amounted to infringement of registered trademark, the suit was decreed in favour of the appellants

Frhi Hotels & Resorts S.A R.L.           V/S           Mukram Ulla Khan

The present suit has been filed for permanent injunction restraining infringement of trade mark, passing off, rendition of accounts and damages against the respondents, by the appellants in the Honourable High Court of Delhi before the Honourable Justice Manmohan. [CS (Comm.) 830/2017 and I.A. No. 14500/2017, Decided On: 20.04.2018]

The appellants, Frhi Hotels & Resorts S.A.R.L. are a world leading travel and lifestyle group carrying on an established international business, as a leading luxury hotel company in the world and largest luxury hotel in North America under the name FAIRMONT. The appellants are the registered proprietor of the mark FAIRMONT in over 100 jurisdictions in the world including in India, were the said mark is registered under Class 42 of the Trade Marks Act, 1999 in 2003. The appellants stated that the mark FAIRMONT has been continuously and uninterruptedly used by them and that the same is a famous trade mark.

The appellants highlighted that in or around June 2017, it came to their knowledge that the respondents were using the mark MK FAIRMONT as a part of the name of their luxury serviced apartment and were also operating a website under the domain name www.mkfairmont.com. The appellants served a cease and desist letter upon the respondents on 14th June, 2017 and a reminder letter dated 21st July, 2017 however, no response was received to the same. Hence the appellants filed the present suit as adoption and use of their registered trademark FAIRMONT, as a part of the name of the luxury service apartments MK FAIRMONT, domain name www.mkfairmont.com and logo, by the respondents constituted to infringement as well as passing off.

The court in the present case stated that, the respondents had no real prospect of defending the claim as they had neither entered appearance nor filed their written statement or denied the documents of the appellants. The court further highlighted that, using the appellant’s registered trademark FAIRMONT as a part of the name of their luxury service apartments MK FAIRMONT, domain name www.mkfairmont.com and logo, by the respondents clearly amounted to infringement of registered trademark under Section 29(1) and Section 29(5) of the Trade Marks Act, 1999. The court concluded that the respondents were using the registered trademark FAIRMONT of the appellants’ with a view of benefitting from the immense reputation and goodwill of the appellant’s mark and passing off their services as that of the appellants and hence the suit was decreed in favour of the appellants.

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

The respondents had infringed the sound recordings, cinematograph films and underlying literary and musical works belonging to appellants, hence the present suit was decreed in favour of the appellants

Super Cassettes Industries Pvt. Ltd. V/S  Good Media News Pvt. Ltd.

The present suit has been filed for permanent injunction restraining infringement of copyright, mandatory injunction, damages and rendition of accounts by the appellants in the Honourable High Court of Delhi before the Honourable Justice Manmohan.  [CS (COMM) 1161/2016, Decided On: 02.04.2018]

The appellants in the suit are Super Cassettes Industries Private Limited, one of the largest and most reputed music companies in the country and the owner of a large repertoire of copyrighted works comprising cinematographic films, sound recordings etc. operating under the brand “T-SERIES”. The appellants business also includes giving licences to various organizations such as Broadcasting Organizations, Television Channels, FM Radio Stations and Cable TV Operators etc. for the use of its copyrighted works.

It is the case of the appellants that the respondents Good Media New Pvt. Ltd. is one of the largest ground cable network provider and is involved in providing Cable Television services under the logo GOOD MEDIA NEWS PVT. LTD. to various subscribers having operation in the State of Himachal Pradesh. According to the appellants the respondents had earlier obtained a TPPL licence for broadcasting works of the appellants’ for a period of three months from 15th March, 2015 to 14th June, 2015. While obtaining the said licence the respondents had declared that they had only 806 subscribers however, the appellants discovered that the respondents had more than 60,000 connections. On coming to know of the aforesaid facts, the appellants wrote a letter requiring the respondents to obtain a renewed licence for actual number of connections on and from 15th June, 2015 and also issued a legal notice dated 01st June, 2016, requiring the respondents to cease and desist from using the appellant’s work without first obtaining a licence, however no reply for the same was received by the appellants.

The court had on 26th August 2016, granted an ex-parte ad interim injunction in favour of the appellants and against the respondents. In reference to the present appeal the court stated that the appellants had proved the facts stated in the plaint and had also exhibited the relevant documents in support of their case. Further according to the court a bare perusal of the screenshot of the infringing recording showed that in most songs, the logo of the appellants’ T-SERIES was visible on the top-right or left corner of the screen. However, in a few songs, the T-Series logo was not entirely visible as it was hidden behind the logo of the respondents, this proved that the respondents were aware that the audio visual work broadcast on their network belonged to the appellants.  The court also highlighted that the respondents had deliberately stayed away from the court’s proceeding with a view to frustrate the appellants’ claim for damages and the said act was unjustified. Accordingly the court concluded that as the respondents had broadcasted the appellants’ video songs without any license, the respondents had infringed the appellants’ rights under Sections 14(a)(iii), 14a(iv), 14(d)(iii) and 14(e)(iii) along with Section 51 of the Copyright Act, 1957.

Consequently, present suit was decreed in  favour of the appellants and they were also held entitled to compensation of Rs. 1,00,00,000/-.

 Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 3; Copyright Act, 1957 – Section 14(a)(iii), Copyright Act, 1957 – Section 14(d)(iii), Copyright Act, 1957 – Section 14(e)(iii), Copyright Act, 1957 – Section 14a(iv), Copyright Act, 1957 – Section 51, Copyright Act, 1957 – Section 52A.

Stating that the registration of trademark ‘HELLO’ by the respondents was contrary to the provisions of Section 47(1) (a) of the Trade marks Act, 1999, the appeal of the appellants was allowed

Sunstar Overseas Limited              V/S               Madan Lal

The present rectification petition has been filed by the appellants, Sunstar Overseas Limited for cancellation/removal of registered trade mark No. 1155201 in class 30 registered in the name of the respondents before the Intellectual Property Appellate Board Delhi Registry cum Bench before the Honourable Coram Manmohan Singh, Chairman and Sanjeev Kumar Chaswal, Member. [ORA/309/2013/TM/DEL, Decided On: 26.04.2018]

The appellants Sunstar Overseas Limited, is engaged in the business of processing, export and sale of different varieties of goods falling class 29 and 30 including rice, pulses, spices and other articles of human consumption. According to the appellants their trademark “HELLO” was originally conceived, adopted and used in title and interest since the year 1988. The appellants have also stated that their trademark “HELLO” had acquired enviable reputation in the minds of the purchasing public and the members of the trade to distinguish their products from those of their competitors.

The appellants have filed the present appeal under section 47 of the Trade Marks Act 1999, seeking cancellation of registration of the impugned trademark of the respondents on the ground that the respondents, being the registered proprietor had not made any bonafide use of the registered trade mark No. 1155201 in class 30 which they had registered. It is the further plea of the appellant that the respondents had obtained registration of the trademark ‘HELLO’ merely to block the mark on the Trade Marks Register and it was evident that such act involved bad faith of the registered proprietor.

The present matter was earlier fixed for hearing before the Deputy Registrar IPAB at Delhi and though the respondents were notified about the said hearing they did not appear before the Deputy Registrar.

The appellants have further asserted that it was apparent that despite having been given an opportunity to file the counter statement and evidences the respondents had chosen to remain silent and further according to the appellants the respondent has also not established any bonafide use of the impugned trade mark during the period of 5 years and 3 months prior to the institution of Rectification Petition.

The court in the present appeal stated that after going through the documents submitted by the applicant, in their opinion there had been no bonafide use of the trademark ‘HELLO’ by the respondents and thus the impugned registration was contrary to the provisions of Section 47(1)(a). The court further stated that the registration of the impugned trademark ‘HELLO’ remained on the register without sufficient cause affecting the purity of the Register of Trademarks. The court also highlighted that the respondents despite having been given an opportunity to file the counter statement and evidences chose to remain silent. Thus the court concluded that the registration of trademark ‘HELLO’ was contrary to the provisions of Section 47(1)(a) and accordingly directed the Registrar to remove trademark application within 30 days of the receipt of the order.

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 46(1)(b), Trade Marks Act, 1999 – Section 47, Trade Marks Act, 1999 – Section 47(1)(a), Trade Marks Act, 1999 – Section 57, Trade Marks Act, 1999 – Section 9

Cases Referred: Satnam Overseas vs. Sant Ram and Co. and Anr.  /SC/1207/2013

As the appellants were the prior user and also the owner of the registered trademark ANANDA, the suit was decreed favour of the appellants along with the actual costs

IHHR Hospitality Pvt. Ltd.              V/S               Ananda Resort

The present suit has been filed by the appellants IHHR Hospitality Pvt. Ltd., for permanent injunction restraining infringement of trade mark, passing off, unfair competition, delivery up and recovery of damages in the Honourable High Court of Delhi before Honourable Justice Manmohan. [CS (Comm.) 356/2017 and I.A. No. 5986/2017, Decided On: 06.04.2018]

The appellants, IHHR Hospitality Pvt. Ltd. are the proprietor of the trade mark ANANDA which was adopted by them in 1998 and was registered under Class 42 in the Trade Marks Act, 1999. The appellant’s ANANDA Hotel and Spa Resort has been voted as the world’s No. 1 destination spa by world’s premier travel magazines and the appellants also market and sell a variety of products under their trademark ANANDA. The appellants have further stated that the trademark ANANDA forms a key and essential feature of domain names used by the appellants, i.e., www.ANANDAspa.com and www.ANANDAspainstitute.com.

According to the appellants, upon discovering the website www.anandagoa.com, they had sent a cease and desist notice dated 19th December, 2014 to the respondents, Ananda Resort and the appellants noted that in July-August 2015, the respondent’s website www.anandagoa.com had been deactivated. But it came to appellant’s knowledge in February 2017 that the respondents were promoting and advertising their resort under the mark ANANDA as the finest beach resort in Goa under the domain www.bellagrouphotels.com and www.bellaanandagoa.com. Hence the appellants filed the present suit stating that adoption and use of the appellant’s trademark ANANDA by the respondents constituted to infringement as well as passing off.

The court in the present case opined that the respondents had no real prospect of defending their claim as they had neither entered appearance nor filed their written statement or denied the documents of the appellants. Further, according to the court the appellants were the prior user of the mark and were also the owner of the registered trademark, i.e. ANANDA. Hence in view of the aforesaid, the court decreed the suit in favour of the appellants along with the actual costs.

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

The respondents neither entered appearance nor filed their written statement, hence the suit is decreed in favour of the appellants

Mobile Telesystems OJSC              V/S               Bhagat Singh

Present suit has been filed by the appellants Mobile Telesystems OJSC in the High Court of Delhi before Judge Manmohan against the respondents for permanent injunction, restraining infringement of trademarks, copyrights, passing off, dilution and tarnishment, rendition of accounts, damages and delivery up. [CS (COMM) 371/2018 and I.As. 3872/2015, Decided On: 05.03.2018]

The appellants Mobile TeleSystems OJSC are a company organised and existing under the laws of Russian Federation. The appellants are a well recognised brand in the telecommunications industry across the world and were also recognised as the 89th most powerful brand in the world by Milward Brown in their annual Brandz ranking of 2008 of powerful brands of the world. According to the appellants, they are the registered owner of the trademark MTS, as well as the copyright and common law rights that subsist in the original works.

The appellants asserted that in the month of January 2015, they received information from various market sources that counterfeit mobile phones bearing the appellant’s logo and brand “MTS Striker” were being sold in the markets of Delhi. Pursuant to the information, an investigator visited the respondent’s shop and purchased seven MTS Striker Mobile Phones. Hence the appellants filed the present suit stating that the respondents by adopting an identical and deceptively similar mark for had eroded the distinctiveness of the appellant’s famous brand and were infringing the appellant’s statutory and common law rights. Also the inferior quality of the respondent’s goods posed a threat to the appellants’ brand.

Prior to the present suit the court had on 25th February 2015, granted an ex parte ad interim injunction in favour of the appellants and against the respondents.

With respect to the current appeal the court opined that the respondents had no real prospect of defending the claim as they had neither entered appearance nor filed their written statement or denied the documents of the appellants. Accordingly the suit was decreed in favour of the appellants and against respondents along with the actual costs.

 The appellants had made out a case qua their prayers for injunctions against infringement and passing off, therefore the suit was decreed in favour of the appellants along with costs

Kalanjiyam Cut Piece            V/S               Kalanziam Tex

The suit has been filed for injunction against infringement of the registered trademark and passing off, by appellants Kalanjiyam Cut Piece along with the usual prayers for surrender of offending material, accounts and costs in the High Court of Madras before Judge M. Sundar. [C.S. No. 179 of 2015, Decided On: 14.03.2018]

The appellants, Kalanjiyam Cut Piece had started textile business in the name and style of ‘Kalanjiyam Cut Piece’ in the year 1978. In other words, plaintiff is claiming user of trademarks (TR No. 690216, 1548035 and 1548038) since 1978. The appellants further asserted that they had built a goodwill and reputation for their trading style Kalanjiyam Cut Piece and that their trademarks had attained distinctive and secondary meaning and the public associated the trademarks with the appellants alone.

The appellants state that they came to know about the use of a deceptively similar mark i.e., Kalanziam Tex with regard to the same line of activity by the respondents. Accordingly a legal notice was issued by the appellants and though the respondents had duly received the cease and desist notice dated 04th September 2012, they chose to neither reply nor respond. Hence the appellants filed the present suit.

The court concluded that the appellants had made out a case for injunctions against infringement and passing off and the prayers deserved to be acceded to along with the other prayers for surrender of offending material, accounts etc. The court further asserted that the appellants had been compelled to carry the litigation to its logical end over a period of time and therefore, they were certainly entitled to costs of the suit. Accordingly the suit was decreed with costs.

Cases Referred: Parle Products (P) Ltd. vs. J.P. and Co., Mysore  /SC/0412/1972

 

As the respondents neither responded to the cease and desist notice, nor to the suit summons, the suit was decreed in favour of the appellants along with costs

Adyar Ananda Bhavan Sweets and Snacks  V/S  Sree Keerthi Bhavan

This suit has been filed by the appellants, Adyar Ananda Bhavan Sweets and Snacks alleging infringement of their registered trademark and passing off, before Judge M. Sundar in the High Court of Madras. [C.S. No. 981 of 2017, Decided On: 15.03.2018]

The nucleus of the suit is the appellant’s registered trademark ‘Adyar Ananda Bhavan’ (TR No. 1225607) registered in Class 30. The appellants in the suit, Adyar Ananda Bhavan Sweets and Snacks are is a registered partnership firm running a chain of restaurants specializing in Indian cuisine whose business commenced in the year 1988 as a confectionery. The appellants asserted that by continuous use of their trademark, it had gained enormous goodwill and reputation.

The appellants contended that they came to know some time in August 2017 that their trademark was infringed by the respondents and that the respondents were also guilty of passing off qua logo Adyar Ananda Bhavan.

The court stated that in the light of the comparison made and in the light of plaint averments, as the appellant’s exhibits remained undisputed and also were not refuted by the respondents there was no difficulty in acceding to appellant’s prayers and granting a declaration qua infringement of the trademark. The court also asserted that as the respondents had not chosen to respond to the cease and desist notice, nor to the suit summons thereby resulting in the appellants being compelled to continue and carry on the suit to its logical end, the appellants were also entitled to cost of the suit and accordingly the suit was decreed with costs.

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

The respondents had malafidely copied the appellant’s trademark SPASMO-PROXYVON the present suit was decreed in favour of the appellants

Wockhardt Limited          V/S          Maha Avtar Healthcare Pvt. Ltd.

The present suit has been filed by the appellants, Wockhardt Limited in the High Court of Delhi before Judge Manmohan for permanent injunction restraining infringement of trademark, copyright dilution, unfair competition, for rendition of accounts of profits/damages and delivery up. [CS (Comm.) 694/2018, Decided On: 21.03.2018]

The appellants Wockhardt Limited are the owner of the trademark SPASMO-PROXYVON, which was invented as a distinctive trademark and was registered on 04th August, 1977 under Class 5 of the Trade Marks Act, 1999 and the appellants have been continuously using the said trademark since the year 1977. The appellants have further asserted that they  facture and market their products in distinctive blue colored capsules which are packed in cartons having an eye-catching artistic get-up and that the artistic features constitute original artistic work of which the appellants are the first publisher and lawful owners. According to the appellants the respondents were  manufacturing  and marketing a pharmaceutical product bearing a deceptively similar blister/carton packaging and trademark ‘SPAS PROXIVON’ to that of the appellant’s product SPASMO-PROXYVON. The appellants further contended that being a medicinal product the interest of general consumer would be adversely affected because of selling of medicines which did not have the same amount of refinement and quality as that of the appellants’.

Prior to the present suit the court had vide order dated 16th October, 2015 granted an ex- parte ad interim injunction in favour of the appellants and against the respondents. The court in the current appeal sated that from the evidence on record, it was apparent that the appellant’s SPASMO-PROXYVON trade mark had acquired reputation and goodwill in India and that without any explicit permission or authorization to use the appellant’s trademark and its packaging, the respondents had malafidely copied the trademark SPASMO-PROXYVON and its packaging. Further, as the appellant’s evidence has gone unrebutted, said evidence was accepted as true and correct and consequently, the allegation that the trademark, SPASMO-PROXYVON and its packaging used by respondents amounted to infringement of appellant’s trademark and copyright, was considered correct. The court further concluded that use of the impugned mark and packaging by the respondents was also bound to cause incalculable loss, harm and injury to the appellants and immense public harm. Accordingly, present suit was decreed in favour of the appellants along with the actual costs.

Cases Referred: Ramesh Chand Ardawatiya vs. Anil Panjwani  /SC/0387/2003

The respondents continued to use the appellant’s mark even after termination of their dealership accordingly the suit was decreed with compensatory costs in favour of the appellants

MRF Limited             V/S               Bommidi Raadhakrishna Reddy

This suit has been filed alleging infringement of registered trademarks and copyrights by the appellants MRF Limited, in the High Court of Madras before Judge M. Sundar. [C.S. No. 139 of 2017, Decided On: 28.03.2018]

The appellants MRF Limited are a leading company in India involved in the  manufacturing , marketing and servicing of tyres and tubes under the trademark ‘MRF’ which is used either alone or in combination with other brand names or logos of the appellant. The appellants are the proprietor of the trademark ‘MRF’, which according to them, owing to continuous, uninterrupted and extensive use for the past over 55 years had attained a very distinctive status and reputation.

According to the appellants the respondent was the dealer of the appellants’ for the period from August 2007 to June 2014 and that the dealership was terminated in June 2014. The appellants contend that notwithstanding the termination of the dealership, the respondent continued to use registered trademarks of the appellants as well as the artistic works in the marks. Further though a cease and desist notice dated 20.08.2015 was issued to the respondent and was duly received by him, the respondent chose not to reply. Hence the instant suit was filed by the appellants.

The court in the present case observed that the case was not of using a mark similar to that of appellant’s mark or using a mark that was deceptively similar, it was in fact a case of continuing to use the appellant’s mark even after termination of the dealership. Therefore, according to the court action of the respondents clearly attracted the rigor of infringement of trademark as well as artistic work in copyright. The court further asserted that owing to all that had been set out supra, it was a fit case for awarding exemplary damages of Rs. 10 lakhs particularly in the light of the fact that the respondent who was a dealer, continued to use virtually the registered trademark and copyright of appellants even post termination of the dealership.

Accordingly the suit was decreed with compensatory costs as per Section 35-A of amended CPC.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 16; Code of Civil Procedure, 1908 (CPC) – Section 35-A, ; Commercial Courts, Commercial Division And Commercial Appellate Division Of High Courts Act, 2015 – Section 16

As the respondent’s products are substantially identical to that of the appellant’s product, the suit is decreed in favour of the appellants

Kiran Shoes  facturers       V/S       Maruti Footwear Company

The present suit has been filed by the appellants, Kiran Shoes  facturers in the High Court of Delhi before Judge Manmohan for permanent injunction restraining infringement of registered trademark, passing off, damages, rendition of accounts and delivery up against the respondents. [CS (Comm.) 726/2017, Decided On: 13.03.2018]

The appellants, Kiran Shoes  facturers are a partnership firm registered with the Department of Industries, Nepal, engaged in the business of  manufacturing  and marketing of sports shoes and footwear under the registered trade mark GOLDSTAR with various label marks. The appellants have been involved in the business of  manufacturing  shoes since 1990 and have been officially exporting the same to India since 1997/98.

The appellants asserted that due to the high quality of their product, there was a large demand for the footwear sold under the registered mark GOLDSTAR. According to the appellants in September, 2011, they came to know from various market resources, that the respondents were  manufacturing  and selling sports shoes with an identical trademark, design and get up as that of the appellants’. The appellants contend that the respondents had copied each and every feature of the appellant’s product, i.e. the entire shape and configuration of the shoe including the design of the sole. Further the respondents were also using a visually and phonetically similar mark KLTStar on their product. Thus, as the respondent’s products are substantially identical to that of the appellant’s product, the appellants have filed the present suit for infringement and passing off.

The appellants had also served a cease and desist notice on the respondents on 01st September, 2011 and another notice on 04th April, 2012, which were returned, refused.

On the basis of the documents placed on record the court passed the decree in favour of the appellants along with actual costs.

The respondent was using a highly deceptive offending mark and the respondent’s product and channel of trade were also similar to those of the appellants, therefore the suit was decreed in favour of the appellants

Ultra Tile Pvt. Ltd.     V/S      Shri Ganesh Tiles and Granites

This is a suit filed by the appellants Ultra Tile Pvt. Ltd., in the High Court of Madras before Judge M. Sundar complaining of infringement of a registered trade mark and passing off. [C.S. No. 1045 of 2010, Decided On: 01.03.2018]

The appellants Ultra Tile Pvt. Ltd. have filed the present suit and the nucleus of the suit are two registered trademarks i.e. trademark ‘ULTRA’ with a logo and the wordmark ‘ULTRA’.

The appellants Ultra Tile Pvt. Ltd. are  facturer of all kinds of floor, wall, roof and other tiles and slabs made up of cement and other allied products since 1994. The appellants had adopted the name ‘ULTRA’ as their trade name and have been continuously using the same name from 1994. Further according to the appellants the aforesaid marks have been registered (Reg. No. 700620 and 700622) in Class 19 and are subsisting as of today.

It is submitted by the appellants that during the course of business, they became aware that the respondents were marketing their product, i.e., Tiles, using the appellant’s said trademark, illegally i.e. either independently or in association with other words, such as ‘Ganesh’. The appellants have pleaded that as the respondents were using a similar and highly deceptive offending mark for a same product i.e. Tiles it was a clear case of infringement, furthermore as the respondents were clearly riding on the popularity of the trademark of the appellants’ it was also an indisputable case of passing off.

In the light of the discussions and a careful analysis of the suit file and submissions made, the court opined that there was no doubt that it was a clear case of infringement and passing off as the respondent’s product was same and the channel of trade was same and even the end users come from all strata of society. Thus in all the perspectives of the matter, the court concluded that the appellants were entitled to a decree as prayed for qua infringement of their trademark and passing off. Accordingly the suit was decreed in favour of the appellants along with costs.

As the respondents had dishonestly and fraudulently adopted the appellant’s trademark with the intent to take advantage of and trade upon the goodwill and reputation of the appellants, the suit was decreed in favour of the appellants and against the respondents

The Polo/Lauren Company L.P.              V/S               Varsha and Co.

The present suit has been filed by appellants The Polo/Lauren Company for permanent injunction in the High Court of Delhi before Judge Manmohan, for restraining the respondents from infringement, passing off, damages, delivery up and rendition of accounts. [CS (Comm.) 673/2016, Decided On: 23.03.2018]

The appellants Polo/Lauren Company are engaged in the business of  manufacturing , distribution and sale of a wide range of apparel and clothing for men, women, children and clothing accessories etc. The appellants adopted the trademark POLO in 1967 and have been using the word POLO and the device of POLO PLAYER, in various stylized and artistic formats. The appellants further asserted that they are the registered owner of the aforesaid trademarks under various classes of the Trade Marks Act, 1999 and that the art works involved in the trademarks are original artistic works and the appellants are also the registered owner and proprietor of the copyright therein.

According to the appellants the respondents are engaged in the business of  manufacturing , marketing, selling and trade of readymade clothing and other allied products. According to the appellants in July, 2015, while making a random search of web-sites selling readymade garments and accessories, the appellants came to know that the respondents were selling readymade garments bearing the mark POLO with or without the device of POLO PLAYER through their website www.varshaa.com. The appellants further highlighted that an online purchase of goods bearing the appellant’s trademark from the respondent’s website revealed that the goods were counterfeit. Hence the appellants filed the present suit as the trademark POLO and device of POLO PLAYER adopted by the respondents were identical with and deceptively similar to the appellant’s trademark in each and every respect

Having heard the arguments put forth by the appellants and having perused the documents placed on record, the court was of the opinion that the appellants had proved the facts stated in the plaint and hence the suit was decreed in favour of the appellants and against the respondents along with the actual costs.

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

The respondents had malafidely infringed the trademarks “SHINE” and “SHINE.COM” of the appellants hence the suit was decreed in favour of the appellants and against the respondents

HT Media Limited           V/S               Sandeep Singh

The present suit has been filed by the appellants HT Media Limited, in the High Court of Delhi before Judge Manmohan, for permanent injunction restraining the respondents for infringement of trademark, copyright, passing off, unfair business practices and rendition of accounts. [CS (Comm.) 284/2017, Decided On: 23.03.2018]

The appellants are a leading media house engaged in print media, radio, internet etc. They acquired the domain name “SHINE.COM” in the year 2007 and formally launched the website in 2008 with respect to recruitment services. It is stated by the appellants that the trademarks “SHINE.COM” and “SHINE” have been registered under various classes with the registrar of trademarks. Further as the appellant’s database on their website www.shine.com, contain original content and was prepared with independent skill and labour, it an ‘original literary work’ falling within the meaning of Section 2(o) of the Copyright Act, 1957.

It is the contention of the appellants that in November 2014, the appellants, through few of their subscribers, came to know that the respondents were using the appellant’s trademark and passing off their services as those of the appellants’. The appellants asserted that the respondents were approaching subscribers, portraying themselves to be representatives of the appellant’s and making false promises of confirmed job opportunities in exchange for money and that the respondents were also making use of email accounts i.e. shinedocuments@outlook.com and shine.urdreams@outlook.com, for communication with the subscribers, in view to mislead subscribers into believing that the respondents were acting on the appellant’s behalf. The appellants also highlighted that investigation revealed that the respondents had subscribed to SHINE.COM in order to gain access to the appellants’ database containing contact details of various candidates and other proprietary information of the appellants.

Prior to the present suit the court had vide order dated 20th March, 2015 granted an ex-parte ad interim injunction in favour of the appellants and against the respondents, which was confirmed vide order dated 9th August, 2016

The court in the present case was of the opinion that, in view of the registrations of the appellants’ mark as well as extensive use over substantial period of time the appellants had truly acquired reputation and goodwill in the marks in India. Further from the evidence on record, it was apparent that without any explicit permission or authorisation to use the appellants’ trademark, the respondents had malafidely infringed the trademarks “SHINE” and “SHINE.COM” of the appellants. Also as the appellants’ evidence has gone unrebutted, the said evidence was accepted as true and correct.

Consequently, the use of that the trademarks “SHINE” and “SHINE.COM” by respondents amounted to infringement of copyright as well as passing off and hence the suit was decreed in favour of the appellants along with costs.

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

Cases Referred: Ramesh Chand Ardawatiya vs. Anil Panjwani  /SC/0387/2003

As the evidence presented by the appellants was cogent, clear and convincing, the suit was decreed in favour of the appellants along with costs

Apollo Hospitals Enterprise Ltd.     V/S     Sri Sai Apollo Pharmacy

This is a suit filed by the appellants Apollo Hospitals Enterprise Ltd. in the High Court of Madras, before Judge M. Sundar, complaining of infringement of a registered trade mark and passing off. [C.S. No. 208 of 2016, Decided On: 01.03.2018]

The appellants Apollo Hospitals Enterprise Ltd. have set up multi-speciality private sector hospitals in India and are involved in providing various health care services, such as hospitals, diagnostic clinics, pharmacies in the name of ‘Apollo Hospital’, ‘Apollo Pharmacy’ and ‘Apollo Clinics’. The appellants state that they adopted a unique trademark ‘Apollo’ for their medical services and have registered their marks ‘Apollo’, ‘Apollo Pharmacy’ and ‘Apollo Hospital’ in different classes and that the registration of the trademarks are subsisting and valid as of today.

The main complaint in the suit by appellants is that a similar and deceptive trademark by the name and style of Sri Sai Apollo Pharmacy is being used by the respondents for the same service, i.e., pharmacy. According to the appellants the use of the mark Sri Sai Apollo Pharmacy by the respondents is illegal and that the respondents should not use the appellants registered mark either independently or in association with other words, such as ‘Sri Sai’. Thus according to the appellants the respondents are clearly riding on the popularity of the trademark of the appellants.

The respondents in the suit were duly served and thereafter set ex pate on 4th November 2016.

After careful consideration to the submissions made by the appellants the court stated that as far as the aforesaid rival marks were concerned, there was hardly any difference and hence according to the court it was a clear case of infringement and passing off. Thus the court concluded that the suit was decreed in favour of the appellants along with costs except for the prayer seeking Rs. 25,00,000/- as damages as no evidence had been let in to show quantification of damages by the appellants.

 Super Cassettes Industries Pvt. Ltd. V/S Home Cable Network Pvt. Ltd.

The present suit is filed by the appellants, Super Cassettes Industries in the High Court of Delhi before Judge Jayant Nath, seeking an order of permanent injunction restraining the respondents Home Cable Network Pvt. Ltd. from recording, distributing, broadcasting or in any manner exploiting the cinematograph films, sound recordings, literary works and musical works or any other work that is owned by the appellants including all works whereon the appellants have shown their copyright under Section 52A of the Copyright Act.

The appellants, Super Cassettes Industries Pvt. Ltd. claim to be one of the largest and most reputed music companies in the country involved in the production and marketing of video cassettes, CDs, television sets, etc. under the brand name “T-SERIES”.

It is pleaded by the appellants that the respondents were broadcasting to the public sound recordings, lyrics and musical compositions and audio visual songs and other works of the appellants through their cable network, namely, ‘HOME DIGITAL’ and ‘HOME CINEMA’ without a license and infringing the copyrights of the appellants. Furthermore the appellants also contended that the respondents had not only declined to pay the license fee to the appellants but also had shown even intention of continuing to commit similar infringements. Further the appellants stated that they had also suffered monetary losses on account of the acts of the respondents.

As the evidence of the appellants went unrebutted, the court passed the decree in favour of the appellants and also awarded them Rs. 10,00,000/- as damages. Further the appellants were also entitled to simple interest @ 10% per annum from the date of decree till recovery, by the court.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VIII Rule 10; Copyright Act, 1957 – Section 52A

LACOSTE               V/S               Aman Jain

The appeal is made by appellants LACOSTE in the High Court of Delhi before Judge Jayant Nath, seeking a decree of permanent injunction restraining the respondent Aman Jain from using the trade mark LACOSTE and Crocodile Device or any other mark or trademark deceptively or confusingly similar to the said trademark.

The appellants state that they are the registered proprietor of LACOSTE (Stylized) and Crocodile Device in India and that the brand was launched in India in October 1993.

The appellants asserted that in the last week of August, 2014, they received information about large production of counterfeit LACOSTE garments in Ludhiana, Punjab and on investigation, it was revealed that a large amount of counterfeit garments were packed and stocked in the respondent’s premises which were kept there for distribution in the domestic market. The appellants contended that the use of trademark LACOSTE and Crocodile Device by the respondent amounted to infringement of the appellant’s well zknown and registered trademark LACOSTE and Crocodile Device and was also causing irreparable harm and injury to the appellants.

As the respondent had not filed a written statement, the court on basis of the evidences submitted by the appellants passed the decree in favour of the appellants and against the respondent. The court further directed that the counterfeit goods seized by the Local Commissioner be destroyed and the appellants were also entitled to litigation costs.

 Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VIII Rule 10; Code of Civil Procedure, 1908 (CPC) – Order XXIII Rule 3

Grasim Industries Limited V/S Grasim Electricals and Switch Gear Pvt. Ltd.

The appeal has been made by appellants Grasim Industries Limited in the High Court of Delhi before Judge Manmohan, for a permanent injunction restraining the respondents Grasim Electricals and Switch Gear Pvt. Ltd. from infringing the trademark, passing off, dilution and damages.

It is been averred that the appellants are a part of the business house Aditya Birla Group which is a US $ 40 billion corporation and is in the league of Fortune 500 companies. The appellants have acquired statutory registrations in the mark GRASIM in India in various classes.

The appellant state that the respondents are engaged in the  facture and marketing of electrical and switch gear products under the name of ‘Grasim Electrical & Switch Gear Pvt. Ltd’. According to the appellants the respondents have adopted their trademark to project a nexus and affiliation with the appellants and have no valid justification for adoption of the impugned trademark.

Having perused the record put forth by the appellants the court stated that due to extensive use over substantial period of time, the appellant’s Grasim mark had truly acquired reputation and goodwill in the marks globally as well as in India. Further according to the court, from the evidence on record, it was apparent that without any explicit permission or authorisation to use the appellant’s trademark and trade name, the respondents had malafidely copied the trademark GRASIM. Accordingly the court concluded that the use of the impugned mark by the respondents was bound to cause incalculable losses, harm and injury to the appellants and immense public harm and hence the suit was decreed in favour of the appellants along with the actual costs incurred by them.

Cases Referred: Ramesh Chand Ardawatiya vs. Anil Panjwani  /SC/0387/2003

Superon Schweisstechnik India Limited     V/S     Geetech India

The present case is filed in the High Court of Delhi before Judge Manmohan, by appellants Superon Schweisstechnik India Limited.

The appellant’s are the registered proprietor of the trademark / trade name ‘SUPERON’ in class 9 and 35, having coined, conceived and adopted the same in 2004 with respect to  facture of world class industrial consumables such as stainless steel welding electrodes, stainless steel wires, stainless pickling products etc. The appellants have stated that they are also the proprietors of the copyright in the artistic work of the trademark ‘SUPERON’.

According to the appellants, the respondents have unauthorisedly and illegally, adopted the trade mark/ trade name ‘SUPER SS’ in respect of identical goods. It is asserted by the appellants that the impugned trademark of the respondents is identical with and deceptively similar to the appellant’s trademark and that the unwary purchasers are bound to be deceived in purchasing the respondent’s impugned goods under the impression that some vital link exists between the appellants and respondents. Further according to the appellants as the respondent’s goods are of sub-standard and inferior quality they are resulting into tarnishing the hard earned goodwill and reputation of the appellant’s.

The court in the present case concluded that the respondents had no real prospect of defending the claim as they had neither entered appearance nor filed their written statement or denied the documents of the appellants. Thus in view of the above and the local commissioner’s report dated 25th October, 2017 wherein infringing goods were seized, the present suit was decreed by the court in favour of the appellants and against the respondents along with the actual costs.

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

Aero Club             V/S               Sahibjeet and Ors.

The appeal is made by appellants Aero Club in the High Court of Delhi before Judge Manmohan.

The relevant facts of the present case are that the appellants are engaged in the business of  manufacturing , selling and exporting footwear, apparel and lifestyle products under the trademarks WOODLAND, WDL, the TREE DEVICE and the Woodland Label for almost 25 years. The appellants further state that they are the registered proprietor of the mark WOODLAND and the Leaf device  used on the heel of the shoe in Class 25. Further the according to the appellants the TREE DEVICE   and the Woodland Label are original artistic works within the meaning of Section 2(c) of the Copyright Act, 1957.

The appellants asserted that in September 2017, it came to their knowledge that a large number of counterfeit products bearing their mark WOODLAND, the TREE DEVICE and the Woodland Label were being sold in the markets of Delhi by the respondents. The appellants contend that the adoption and use of their trademark WOODLAND, the TREE DEVICE and the Woodland Label by the respondents constitute infringement and passing off and is likely to deceive the customers into believing that the products are authentic products of the appellants. Hence the appellants filed the present suit.

In case of the present suit the court opined that, the respondents had no real prospect of defending the claim as they had neither entered appearance nor had filed a written statement or denied the documents of the appellants. Accordingly the suit was decreed in favour of the appellants along with the actual costs.

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

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

Indiabulls Housing Finance Ltd.   V/S   www.Indiabulls.org

The present case is filed by the appellants, Indiabulls Housing Finance Ltd. in the High Court of Delhi before Judge Manmohan, praying for an injunction against the respondents for illegally adopting and using the appellants’ registered trademark INDIABULLS.

The appellants are the original inventors, registered proprietors and prior users of the trade mark “INDIABULLS” and its derivatives. They adopted the trademark INDIABULLS in January 2000 and own the registration of the trademark INDIABULLS in class 9 since the year 2004 for the software and other application programmes, which is valid and subsisting. Further the appellants are also providing their services online through their website, having the domain name www.indiabulls.com.

According to the appellants, the respondents are unauthorisedly and illegally adopting and using the appellants’ registered trade mark INDIABULLS and using the domain name www.indiabulls.org for providing financial services

Keeping in view the above averments, in the opinion of the court, the respondents have no real prospect of defending the claim as they have neither entered appearance nor filed their written statement or denied the documents of the appellants. Thus stating that the appellants are the prior users of the mark, domain name and are the owners of the registered trademark, i.e. INDIABULLS, the suit is decreed in favour of the appellants along with the actual costs.

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

UPL Limited                 V/S                    Pradeep Sharma

The present appeal is made by appellants UPL Limited, in the High Court of Delhi before Judge Mukta Gupta, wherein the appellants claim of infringement of their three patents and seek an order of interim injunction in their favour.

The appellants, UPL Limited are engaged in the  facture and sale of insecticides, fungicides, fumigant, PGR and rodenticides and claim to be the owner of three process and product patents i.e. IN 225 titled “a process of preparing a chemically stable synergistic herbicidal composition” which is a process patent, IN 130 titled as “a chemically stable synergistic herbicidal composition” which is a product patent and IN 551 titled as “a stable synergistic herbicidal composition” which is both a product and process patent.

The appellants state that they became aware from the market sources and field executives that the respondents were participating in a tender floated by Directorate of Industries & Enterprises Promotion, U.P. for  facture and supply of a herbicidal composition and that the respondents had also applied for registration under Section 9 of the Insecticides Act 1968 for a composition which was the composition as per the patents of the appellants.

The appellants claim that they alone have the right to  facture and sell the patented composition in the form of granules and that the respondents are liable to be injuncted from infringing the appellant’s patents.

The court on perusal of records and arguments put forth by both the parties stated that the respondents had not been able to able to demonstrate invalidity of the suit patents of the appellants and that a pre-grant opposition to the patent of the appellants had already been dismissed by the Appellate Board. According to the court the appellants had made out a strong prima facie case in their favour and the balance of convenience too lied in favour of the appellants.

Consequently, the respondents were restrained by the court from making, selling, advertising and importing or in any other manner, directly or indirectly, commercializing in any product that infringed the appellant’s registered patents, as prayed for in the application.

Acts/Rules/Orders: Insecticides Act, 1968 – Section 9(3); Patents Act, 1970 – Section 10(4), Patents Act, 1970 – Section 10(4) (c), Patents Act, 1970 – Section 107, Patents Act, 1970 – Section 11(1), Patents Act, 1970 – Section 117G, Patents Act, 1970 – Section 3(d), Patents Act, 1970 – Section 3(e), Patents Act, 1970 – Section 47, Patents Act, 1970 – Section 64, Patents Act, 1970 – Section 8

Cases Referred: Raj Parkash vs. Mangat Ram Chowdhry and Ors.  /DE/0152/1977; Shogun Organics Ltd. vs. Union of India and Ors.  /KE/1313/2013; Strix Limited vs. Maharaja Appliances Limited  /DE/2174/2009; Bristol-Myers Squibb Company and Ors. vs. J.D. Joshi and Ors.  /DE/1889/2015; F. Hoffmann-La Roche Ltd. and Ors. vs. Cipla Ltd.  /DE/3672/2015; Cipla Limited vs. Novartis AG and Ors.  /DE/0608/2017; Telemecanique & Controls (I) Limited vs. Schneider Electric Industries SA  /DE/1264/2001; S.P. Chengalvaraya Naidu (dead) by L.Rs. vs. Jagannath (dead) by L.Rs. and others  /SC/0192/1994; Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries  /SC/0255/1978; UCB Farchim SA vs. Cipla Ltd. and Ors.  /DE/0297/2010; Franz Xaver Huemer vs. New Yash Engineers  /DE/0015/1997.

 

Al Buheira Lacnor Dairies Co. Limited   V/S   Ramesh Verma

The appeal is made by appellants Al Buheira Lacnor Dairies Co. Limited in the Intellectual Property Appellate Board Delhi Registry Cum Bench before Manmohan Singh and Sanjeev Kumar Chaswal.

The appellants are a company based in United Arab Emirates (UAE) engaged in the business of  manufacturing , marketing and exporting juices, nectars, drinks, milk products and tomato paste for several years with exports to over 30 foreign markets under the trademark “LACNOR”.  The appellants had filed for registration of the said trademark in India vide Application No. 1414787 in Class-29 in respect of milk and dairy products and vide Application No. 1414788 in Class-32 in respect of natural drinks made from fruits, all kinds of naturals juices made from fruits and vegetables.

According to the appellants while processing their application, they became aware of the fact that their trademark was cited as being conflicting mark. Further enquiry revealed that the respondents had obtained registration of an identical label mark LACNOR with identical artistic features as of the applicant’s mark LACNOR in respect of identical goods in Class 29.

According to the appellants, the respondents had adopted the impugned trademark LACNOR in an identical manner with intent to exploit and cheat the unwary and innocent purchasers and to create deception, confusion amongst the public and trade and thereby cause injury to the appellant’s goodwill and reputation in the market.

Further as per registry record the respondents had not filed any counter statement and had failed to set up a case, by bringing any material or documents to justify the adoption of the mark LACNOR which was identical to the appellant’s trademark and had also not been able to justify as to how they had hit upon an identical mark as an imitation of the trademark of the appellants.

Thus keeping in view the arguments put forth by both the parties, the Appellate Board concluded that the registration of the impugned trademark “LACNOR” (Reg. No. 927139 in Class 29) was granted contrary to the provisions of Sections 9, 11, 12, 18, 47 & 57 under the Trade Marks Act, 1999 and Rules  and as such the present original rectification application deserved to be allowed thereby directing the Registrar of Trademarks to rectify the registered trademark No. 927139 in Class 29 from the Trademark Register in order to maintain the purity of the Trademark Register. The Appellate Board further directed that a copy of the above order be sent to the Registrar of Trademarks in order initiate necessary steps for removal of the trademark “LACNOR” having registered trademark No. 927139 in Class 29 within 15 days from the receipt of this order.

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 12, Trade Marks Act, 1999 – Section 12(3), Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 33, Trade Marks Act, 1999 – Section 47, Trade Marks Act, 1999 – Section 57, Trade Marks Act, 1999 – Section 9

Cases Referred: M.P. Jewellers vs. New M.P. Jewellers  /IC/0077/2005; Kanshiram Surinderkumar a firm vs. Thakurdas Deoomal Rohire and Ors.  /MH/0235/1982

Kalpesh R. Jain             V/S               Mandev Tubes Private Limited

The present appeal is filed by the appellants, Kalpesh R. Jain in the High Court of Bombay before Judges S.C. Dharmadhikari and Bharati H. Dangre, against an earlier order and judgment delivered by the learned single Judge of this court stating that the respondents (who were the appellants in the original suit) had demonstrated a prima facie case and that the court was persuaded to grant the notice of motion in their favour.

The facts of the original case are:

The respondents (who were the appellants in the original suit) Mandev Tubes Private Limited were engaged in the business of  manufacturing , supplying and distributing copper tubes for the last 45 years and had developed a substantial goodwill and reputation in the copper tube industry. The respondents had conceived of a unique, novel and original shape and configuration for their tubes and the uniqueness and novelty in the design lied in one end of the tubes possessing an expanded bell-shaped like ending. The respondents had applied for registration of this novel and original design under the Designs Act, 2000 and the Registrar had issued a certificate of registration in favour of the respondents (Design No. 224751).

In the original suit it was the claim of the respondents that in February 2015, the respondents learnt from trade sources that there were fraudulent and obvious imitation of their products being sold in the market, and that the appellants (who were the respondents in the original suit) were  manufacturing  the said tubes thereby infringing the respondent’s rights. Accordingly the respondents had prayed for prayed for a perpetual order and injunction, restraining the appellants from infringing in any manner respondent’s registered design and in any manner passing off of its design and tubes as those of the respondent’s.

The learned single Judge in the original suit, had an opportunity to have a look at the samples of the two products placed before him and recorded a finding that he was not able to notice any difference nor was he able to identify as to which product belong to whom. The Judge also highlighted the fact that there was an undeniable novelty and originality to the respondent’s design. Further the appellants (i.e. the respondents in the original suit) had been unable to show any use by them or anybody else prior to the respondents and hence the respondents were found to have made a prima facie case. Thus the learned single Judge found the balance of convenience in favour of the respondents (i.e. the appellants in the original suit) and expressed that an irreparable prejudice would be caused if the injunction was refused.

It is this order, which is impugned in the present appeal.

The facts of the present case are:

The court in the present suit perused the material placed on record by the appellants and the respondents and also the impugned judgment delivered by the learned single Judge. The court concluded that the learned single judge has rightly observed that when both the two products were placed together, it was not possible to spot any difference with naked eyes. Further the court also highlighted that though the appellants had vehemently argued that the design conceived by the respondents of which they were granted registration, was not novel and original, the learned single Judge has rightly observed that no material was brought by the appellants on record showing any prior publication or lack of novelty.

Thus keeping in view the records put forth, the present court refused to interfere with the order passed by the learned single Judge and resultantly, the present appeal was dismissed.

 Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VII Rule 11; Code of Civil Procedure, 1908 (CPC) – Order XLI Rule 27; Designs Act, 2000 – Section 11, Designs Act, 2000 – Section 19, Designs Act, 2000 – Section 19(1)(e), Designs Act, 2000 – Section 19(b), Designs Act, 2000 – Section 2, Designs Act, 2000 – Section 2 (d), Designs Act, 2000 – Section 2(d), Designs Act, 2000 – Section 2(g), Designs Act, 2000 – Section 22, Designs Act, 2000 – Section 22 (3), Designs Act, 2000 – Section 22(3), Designs Act, 2000 – Section 4; Indian Penal Code 1860, (IPC) – Section 479

Cases Referred: Mukund Ltd. vs. Mumbai International Airport and Ors.  /MH/0178/2011; Maya Appliances Private Limited and Ors. vs. Butterfly Gandhimathi Appliances Ltd.  /TN/0161/2017; Asian Rubber Industries 69, Najafgarh Road, New Delhi-110 015, Reliance Footwear Pvt. Ltd.; 388-389, Part-A, MIE Bahadurgarh, Dist. Jhajjar, Haryana-124 507, Rexona Footwear Pvt.Ltd. 388-389, Part-A, MIE Bahadurgarh, Dist. Jhajjar, Haryana-124 507 and Hawa Traders, 311/313, Ibrahim Rahimtullah Road, Appellants Mumbai-400 003 vs. Jasco Rubbers, 8/51, Moonalingal, Calicut-673 032 and Manpasand Footwear, Tambe Maidan, Near Jain Mandir, Kurar Village, Malad (E), Mumbai-400 097  /MH/0459/2012; Bharat Glass Tube Limited vs. Gopal Glass Works Limited  /SC/2096/2008; Whirlpool of India Ltd. vs. Videocon Industries Ltd.  /MH/0639/2014; Ram Bali vs. State of Uttar Pradesh  /SC/0345/2004

The Coca-Cola Company         V/S         Glacier Water Industries Ltd.

Present suit has been filed by appellants The Coca-Cola Company, in the High Court of Delhi before Judge Manmohan, for permanent and mandatory injunction and damages for infringement of the appellants’ registered trademark, passing off and unfair competition, against the respondents.

The appellants are one of the largest soft drinks companies in the world, engaged in the  facture and sale of concentrates and beverage bases. It is averred by the appellants that they adopted and launched the trade mark KINLEY in India in 2001, as a brand of high quality bottled water, and also adopted and launched the trade mark KINLEY in more than 35 other countries as a brand of carbonate water. The appellants are the registered proprietor of the arbitrary mark KINLEY in class 32.

The appellants state that they came across the use of the mark KINLEY by the respondents, in relation to water purification systems, where the respondents falsely claimed that they had launched their water system in collaboration with the appellant’s Indian subsidiary, The Coca Cola India Pvt. Ltd., whereas, in fact, no such collaboration existed.  The appellants further revealed that the respondents were not only openly advertising their product, and that the mark KINLEY was displayed prominently on their advertising and promotional material but also that the respondents had applied for registration of the mark KINLEY bearing Application No. 2329491 in Class 11.

With reference to the above case the court had vide order dated 29th April, 2013, granted an ex-parte ad interim injunction in favour of the appellants and against the respondents.

The court in the present case concluded that from the evidence on record, it was apparent that without any explicit permission or authorisation to use the appellants’ trademark KINLEY, the respondents had dishonestly and malafidely used the KINLEY trademark of the appellants, in relation to their water purification systems. Consequently, according to the court the allegation that the trademark KINLEY used by the respondents, amounted to infringement and passing off of the appellants’ trademark stood proved. Accordingly, present suit was decreed against the respondents.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order I Rule 10; Code of Civil Procedure, 1908 (CPC) – Order XIV Rule 14; Code of Civil Procedure, 1908 (CPC) – Order XX Rule 5

 

Cable News Network Inc.              V/S               Manoranjana Sinh

The appellants have filed the current petition before the Intellectual Property Appellate Board Delhi Registry Cum Bench before Manmohan Singh and Sanjeev Kumar Chaswal on the grounds of Bad-Faith adoption under Section 57 of the Trade Marks Act, 1999 against the impugned mark ‘GNN’ and its wrong registration.

The appellants Cable News Network Inc. are a leading 24 hour news and information cable television network providing live coverage and analysis as well as of breaking news and topical in-depth interviews and have a number of trademarks registered in their name.

The appellants have contended that the respondents have adopted the impugned mark ‘GNN’ which is confusingly and deceptively similar to the appellant’s trademark ‘CNN’, with bad faith intention as the rival marks are extremely similar. According to the appellants the respondents have clearly displayed unlawful intent to trade upon the goodwill and reputation associated with the appellant’s trademark ‘CNN’ and hence the registration of the impugned mark is contrary to Section. 9(2) (a) of the Trade Marks Act, 1999 as the respondent’s mark has been adopted with an intention to deceive and cause confusion in the minds of the public. The appellants have further pleaded that the registration of the respondent’s mark is contrary to the provisions of Sections 11(1), 11(2), 11(3), 11(4) and 11(10) of the Trade Marks Act.

Further as per registry record the respondents did not file any counter statement with supporting documents nor did they appear on listed dates, thus the respondent had failed to show their inclination to set up their case, or justify the adoption of a mark that was identical to the appellant’s trademark.

The Appellate Board stated that it was clear from the submission made by the appellants that the respondents had adopted the impugned mark ‘GNN’ which was confusingly and deceptively similar to the appellant’s trademark ‘CNN’ obviously with bad faith intention. From an overall comparison of the marks, it was apparent that the rival marks were extremely similar and would lead to a likelihood of association with the appellant’s brand ‘CNN’. Thus keeping in view of facts and circumstances, the Board opined that the registration of the impugned trademark ‘GNN’ having registered trademark No. 1907034 in Classes 38 & 41 was contrary to the provisions of Sections 9, 11, 12, 18, 47 & 57 under the Trade Marks Act, 1999 and Rules and hence the present rectification application was allowed.

Consequently the Registrar of Trademarks was also directed by the Board to rectify the registered trademark No. 1907034 in Classes 38 & 41 from the Trademark Register in order to maintain the purity of the Trademark Register.

 Acts/Rules/Orders: Trade Marks Act, 1999 – Section 10, Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 11(1), Trade Marks Act, 1999 – Section 11(10), Trade Marks Act, 1999 – Section 11(2), Trade Marks Act, 1999 – Section 11(3), Trade Marks Act, 1999 – Section 11(4), Trade Marks Act, 1999 – Section 12, Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 18(1), Trade Marks Act, 1999 – Section 2(1)(zg), Trade Marks Act, 1999 – Section 46, Trade Marks Act, 1999 – Section 47, Trade Marks Act, 1999 – Section 57, Trade Marks Act, 1999 – Section 57(2), Trade Marks Act, 1999 – Section 9, Trade Marks Act, 1999 – Section 9(2)(a)

Cases Referred: Ciba Ltd. vs. M. Ramalingam and S. Subramaniam trading in the name of South Indian  manufacturing  Co. and Anr.  /MH/0021/1958; Cable News Network, Inc. vs. Anshu Jain and Ors.  /DE/4181/2017

SOS Pharma                    V/S               SAS Pharmaceuticals

The current appeal is made by appellants SOS Pharma in the High Court of Delhi before Judge Prathiba M. Singh, against an earliar decree and judgment by which a permanent injunction was granted against the appellants and in favour of the respondents.

The appellants, SOS Pharma state that they had filed an application for a device which uses the letter ‘S+S’ in a square form with the words ‘SOS Pharma’ below the same. Further according to the appellants the trademark application filed by them was prior to the trademark application filed by the respondents.

According to the respondents in the present suit, their mark ‘SAS Pharmaceuticals’ is a registered trademark and stands for Subhash and his son Sandeep who are the promoters of the company. The respondents further assert that both the parties were involved in the same business i.e. ayurvedic medicines and hence the use of an identical mark was bound to cause confusion and hence have submitted that the impugned decree be liable to be upheld.

The appellants after hearing some arguments agreed to change the name and mark of their firm as “Save our Soul Pharma” instead of “SOS Pharma” and further submited that they be given time to change over the name/mark.

After hearing the parties, the court summarised that, it was clear that the respondent’s mark “SAS Pharmaceuticals” was a registered trademark and that the parties were engaged in selling Ayurvedic products and that “SOS Pharma” was likely to create confusion with “SAS Pharmaceuticals”. The court further highlighted that since the appellants had agreed to change their mark/name from “SOS Pharma” to “Save our Soul Pharma”, the impugned judgment and decree was to be modified with the consent of the parties as accordingly:

The appellants being permitted to use “Save our Soul Pharma” as the firm’s name and as trademark

The appellants be permitted to use the “S+S” device as contained in the trade mark application. However, in place of “SOS Pharma”, the words “Save our Soul Pharma” be used both as a trademark and as a tradename

The appellants be permitted to use the present name ‘SOS Pharma’ till the end of the financial year 2018-19 i.e. 31st March, 2019

The appellants shall file an application under Form TM 16 within a period of eight weeks from today with the Registry of Trade Marks, amending their device in conformity with the present order. Upon the said application being filed, the Trade Mark Registry shall take the same on record and dispose of the opposition proceedings. The application of the Defendant shall then proceed for registration with the device of S+S along with ‘Save our Soul Pharma’

The appellants shall not adopt or use any name for their pharmaceutical preparation which is identical or deceptively similar to the respondent’s trademark “SAS Pharmaceuticals”. However, as contained above, the appellants shall be entitled to use “Save our Soul Pharma” in the device

Subject to the above undertakings being complied with by the appellants, the respondents shall not press for the relief of damages or rendition of accounts or costs

The court further directed that appellants shall, by 15th March, 2019 write a letter intimating the respondents that they had changed their name/mark in all their products from “SOS Pharma” to “Save our Soul Pharma”. Accordingly, the impugned judgment and decree was modified and the appeal was disposed.

Ferrero SPA                   V/S               Piyush Devangan

The current case is an appeal made by the appellant Ferrero SPA in the High Court of Delhi before Judge Jayant Nath, seeking a decree of permanent injunction restraining the respondents Piyush Devangan from dealing in any manner with confectionery products under a mark and name which is a look alike of the appellant’s registered trademark FERRERO ROCHER.

The appellant in the suit is one of the 4 biggest confectionery producers worldwide and is ranked amongst the top 50 most reputable companies in the world. The appellants state that their products are amongst the best known confectionery products in the world. Further according to the appellants, consumers and the trade alike identify and recognize their products from a distance owing to the distinct and stunning packaging style of FERRERO ROCHER chocolates.

The appellants contended that it was through a market survey that they became aware of the respondents  manufacturing  and selling look alikes of the appellant’s FERRERO ROCHER chocolate under the name D-Lizie. The appellants further contended that the respondents had not only copied the trade dress of the individual pieces of the FERRERO ROCHER chocolates but have also copied the overall getup and the unique aspects of the packaging of the appellant’s said product.

Prior to the present suit the respondents were served but none appeared and hence they were proceeded ex-parte on 29th April 2015. Keeping in view the averments in the plaint and the evidence led by the appellants the court opined that it was quite clear that the respondents were infringing the statutory and common law rights of the appellants with respect to the said products and hence accordingly, a decree was passed by the court, in favour of the appellants and against the respondents and the appellants were also entitled to cost as per the bill of cost filed by them.

 

Ahilya Vedaant Education Welfare Society   V/S   K. Vedaant Education Soc.

In the case in hand, the appellants Ahilya Vedaant Education Welfare Society have prayed for permanent injunction in the High Court of Madhya Pradesh before Judge Rohit Arya, restraining the respondents from issuing groundless threats of legal proceedings, declaration and damages under section 142 of the Act, 1999.

The appellants run a school under the name ‘VEDAANTA THE GLOBAL SCHOOL’ wherein they are the proprietor of the copyright. The appellants have also filed application (3450411, 3465105, 3465106 and 3467936 in class 41) for registration of the said representation of the trademark and institution name under the Act, 1999 in respect of educational services and the said applications are pending adjudication.

The respondents K. Vedaant Education Society claim to be the proprietor of the representation of the trademark and institution name, ‘VEDAANT’, alleged to be registered under the Act, 1999 in respect of play, pre-school, nursery school, kids club, etc.

The present suit is filed as the appellants received threats of dire consequences from the respondents in case the appellants did not stop using the representation of the trademark and institution name. It is pleaded by the appellants that the respondents have been using an entirely different representation of trademark and institution name in relation to their services and that there is no comparison between the two monograms in the context of shape, size, color or graphics and that it is not capable of causing any kind of confusion or deception in the minds of the public at large.

Hence the appellants state that the groundless threats issued by the respondents have given rise to filing of the instant injunction proceedings against the respondents.

In the above circumstances, in the opinion of the court, sufficient relevant pleadings have been placed on record milling the requirements of Section 142 of the Trade Marks Act, 1999 to bring the action for injunction. The court further opined that the trial court appeared to have been impressed with the contention of the respondents that the trademark “Vedaant” since was registered in their name, though disputed and denied by the appellants, the alleged use thereof by the appellants for educational services would tantamount to infringement of trade mark and hence concluded that the suit was barred by law. But the present court highlighted that the trial Court had neither appreciated the provisions of section 142 of the TM Act, 1999 in right perspective nor applied the principles of settled law in the context of jurisdiction of the court under Order 7 rule 11(d) CPC. Hence, according to the present court the impugned order was palpably erroneous in the eyes of law and, therefore, could not be sustained. Thus in view of the above, the appeal made by the appellants was allowed and the impugned order by the trial court was set aside. The trial Court was further directed to decide the suit on merits and in accordance with law.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VII Rule 11; Code of Civil Procedure, 1908 (CPC) – Order VII Rule 11(d); Code of Civil Procedure, 1908 (CPC) – Section 96; Trade Marks Act, 1999 – Section 107, Trade Marks Act, 1999 – Section 142, Trade Marks Act, 1999 – Section 2(zb), Trade Marks Act, 1999 – Section 29

Cases Referred: Bhau Ram vs. Janak Singh and Ors.  /SC/0584/2012; Prem Lala Nahata and Anr. vs. Chandi Prasad Sikaria  /SC/7070/2007; P.V. Guru Raj Reddy and Ors. vs. P. Neeradha Reddy and Ors.  /SC/0132/2015; Radhika Prasad vs. Nuruddin Khan and Ors.  /MP/0297/2005; Kuldeep Singh Pathania vs. Bikram Singh Jaryal  /SC/0074/2017; Sumat Prasad Jain vs. Sheojanam Prasad (Dead) and Ors. and State of Bihar  /SC/0413/1972

Bombay Plaster Industries           V/S     Jagdamba Plaster

The present appeal is made in the High Court of Rajasthan before Judge Pratap Krishna Lohra by appellants Bombay Plaster Industries, wherein the appellants have preferred two separate appeals under Order 43 Rule 1(r) read with Section 104 CPC to assail order dated 17th of March 2017, passed by Addl. District Judge No. 4, Bikaner (for short, ‘learned trial Court’), rejecting its applications, for temporary injunction in two suits for perpetual and mandatory injunction, by a common order.

The appellants complained about infringement of their intellectual property rights (IPR), emanated from Trade Marks Act, 1999 and Copyright Act, 1957, instituted civil suits against the respondents for perpetual and mandatory injunction, on the ground that they were  facturer of plaster of paris and had got registration of the said product under the Act of 1999 and Act of 1957 with the label ‘Hi-Tech’.  According to the appellants the respondents were imitating their trademark and label by using a deceptively similar mark and label ‘I-Tek’ on their goods i.e. plaster of paris. Hence the appellants had prayed for grant of perpetual injunction in mandatory form against the respondents. But the learned trial court, after hearing arguments of rival parties, , rejected both the applications of appellant for temporary injunction stating that the appellants had failed to make out a prima facie case in their favour.

The present court too upon examining the impugned order stated that it was unable to find any error much less manifest error of law and facts for exercising appellate jurisdiction enshrined under Order 43 Rule 1 CPC in both the appeals.  Accordingly both the appeals were dismissed by the court.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order II Rule 3; Code of Civil Procedure, 1908 (CPC) – Order XLIII Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XLIII Rule 1(r); 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 104; Code of Civil Procedure, 1908 (CPC) – Section 151; Copyright Act, 1957 – Section 72; Specific Relief Act 1963 – Section 41(h)

Cases Referred: Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories  /SC/0197/1964; Ciba Ltd. vs. M. Ramalingam and S. Subramaniam trading in the name of South Indian  manufacturing  Co. and Anr.  /MH/0021/1958; T.V. Venugopal vs. Ushodaya Enterprises Ltd. and Anr.  /SC/0169/2011; Indian Performing Rights Society Ltd. vs. Sanjay Dalia and Ors.  /SC/0716/2015; S. Syed Mohideen vs. P. Sulochana Bai  /SC/0576/2015; Laxmikant V. Patel vs. Chetanbhat Shah and Anr.  /SC/0763/2001; Heinz Italia and Anr. vs. Dabur India Ltd.  /SC/2133/2007; Parle Products (P) Ltd. vs. J.P. and Co., Mysore  /SC/0412/1972; Societe Des Produits Nestle vs. Continental Coffee Ltd.  /DE/6737/2011; Kaira District Co-operative Milk Producers Union Ltd. vs. Bharat Confectionery Works (REGD).  /DE/0513/1993; Messer Holdings Ltd. vs. Shyam Madanmohan Ruia and Ors.  /SC/0425/2016; Rameshchandra Paliwal vs. Sima and Company  /RH/0547/2017; Pandit Kulfi and Cafe vs. Pandit Kulfi  /RH/1535/2015; Maheshwari Tea Company Pvt. Ltd. vs. Vijay Agencies  /RH/0449/2016; Sabko Industries vs. Avon Emery Industries  /RH/1183/2007; M/s. Bengal Waterproof Limited vs. M/s. Bombay Waterproof  manufacturing  Company and Another  /SC/0327/1997; Skyline Education Institute (Pvt.) Ltd. vs. S.L. Vaswani and Anr.  /SC/0009/2010; Dhodha House vs. S.K. Maingi  /SC/2524/2005; Dabur India Ltd. vs. K.R. Industries  /SC/2244/2008; Mohan Lal, Proprietor of Mourya Industries vs. Sona Paint & Hardwares  /DE/1254/2013; Wander Ltd. and Anr. vs. Antox India P. Ltd.  /SC/0595/1990; Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.  /SC/0199/2001.

Ansari Bilal Ahmadlal Mohd.   V/S   Shafeeque Ahmed Mohammed Sayeed

This appeal is directed by appellant Ansari Bilal Ahmadlal Mohd in the High Court of Bombay before Judges N.H. Patil and R.G. Ketkar, against an earlier order passed by the learned Single Judge of in favour of the respondents Shafeeque Ahmed Mohammed Sayeed.

The respondents Shafeeque Ahmed Mohammed Sayeed had filed a Suit for infringement of registered trademark, being a label mark of “SUKOON OIL” bearing registration No. 1421905 in class 03 and also 1377947 in class 05. The Suit was filed for infringement of copyright in “SUKOON” label. According to the respondents the appellants in the present case, Ansari Bilal Ahmadlal Mohd had made an application for registration of “HEENA SUKOON OIL” device mark claiming user since 1st June, 2012 being engaged in the  manufacturing , marketing and selling of a similar Ayurvedic medicine which was deceptively similar to the respondents label NAGEENA SUKOON OIL. Here in the learned Single Judge of this Court had granted prayer clauses of the Notice of Motion in favour of the respondent.

Hence the present appeal is made by the appellants.

Taking into consideration the records placed before the court, the registration obtained by the respondents and the label marks, the court stated that that the respondents has prima-facie established that the appellant’s label mark ‘HEENA SUKOON OIL’ was deceptively similar to the respondent’s product, known and styled as ‘NAGEENA SUKOON OIL’. The court also asserted that the respondents had placed on record convincing material to show that they had been dealing with their product since the year 1993. The court further highlighted that during the course of hearing it was submitted that majority of consumers of these products were labourers from Bhiwandi area. Thus the test to be applied in the case was of a person of average intelligence and imperfect recollection. Accordingly on the basis of the same, the court stated that the device or label mark had to be seen in its entirety and after taking into consideration the facts of the case, a decision had to be arrived at as to whether the mark of the appellant’s was deceptively similar to that of the respondent’s.

The court concluded that a strong prima-facie case of passing off has been made out by the respondents and that it did not notice any arbitrariness in the view adopted by the learned Single Judge. Stating that the issues had been dealt with, by the learned Single Judge in a reasonable and judicious manner the present court dismissed the appeal as there was on merit in the same.

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 2(zd), Trade Marks Act, 1999 – Section 30(2), Trade Marks Act, 1999 – Section 35

Cases Referred: Wander Ltd. and Anr. vs. Antox India P. Ltd.  /SC/0595/1990; Laxmikant V. Patel vs. Chetanbhat Shah and Anr.  /SC/0763/2001; Alaknanda Cement Private Limited vs. Ultratech Cement Limited  /MH/1428/2011; Automatic Electric Limited vs. R.K. Dhawan and Anr.  /DE/0412/1994; Corn Products Refining Co. vs. Shangrila Food Products Ltd.  /SC/0115/1959; The Indian Hotels Company Ltd. and Anr. vs. Jiva Institute of Vedic Science and Culture  /DE/0892/2008; Pidilite Industries Limited vs. Jubilant Agri & Consumer Products Limited  /MH/0019/2014; Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories  /SC/0197/1964.

Kleenage Products (India) Private Limited   V/S   The Registrar of Trade Marks

The present suit is filed by appellants Kleenage Products (India) Private Limited in the High Court of Bombay before judges R.M. Borde and R.G. Ketkar, praying for issuance of Writ of Prohibition or any other Writ or direction in the nature of prohibition prohibiting the respondent i.e. The Registrar of Trade Marks from removing the trademark ‘KLITOLIN’ under No. 379894 from the records of the register of trademarks maintained by the Registrar.

The appellant has pleaded for quashment of the directions issued by the respondent whereby the appellant’s trademark, has been removed from the register or is not being permitted to be restored or renewed.

The appellant states that the trademark ‘KLITOLIN’ was renewed from time to time from 21.08.1988 to 21.08.2009, but inadvertently, the appellant did not tender application for renewal thereafter.

It is the contention of the appellant that the respondent also failed to issue the requisite mandatory notice in Form O-3 to the registered proprietor under Section 25(3) of the Trade Marks Act, 1999, in the absence of issuance of which the trademark in question cannot be removed from the register.

The court in view of the arguments put forth by the appellant asserted that the contentions raised by the appellant in the instant petition deserved to be allowed and accordingly the Writ Petition was allowed. The respondents were directed by the court to consider the application tendered by the appellant for renewal of the trademark subject to payment of requisite fees.

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 25(3)

Cases Referred: Malhotra Book Depot vs. Union of India & Ors.  /DE/6847/2011; Union of India & Ors. vs. Malhotra Book Depot  /DE/0562/2013.

Shanthi Thiagarajan                        V/S               K.E. Gnanavelraja

The current suit is an appeal made by appellant , Shanthi Thiagarajan in the High Court of Madras against a judgment and order passed by the learned Single Judge rejecting their application for an order of interim injunction, inter alia, restraining the respondents,  K.E. Gnanavelraja from releasing the film “Thaana Serntha Koottam”.

The appellants are a proprietor firm engaged in the business of production and distribution of cinematograph films. According to the appellant by an agreement dated 19th August 2013, Viacom assigned rights to re-make the film ‘Special 26’ in four regional languages, namely, Tamil, Telugu, Malayalam and Kannada to the plaintiffs. Later, in September 2016, the appellants entered into an agreement with M/s. RPP Film Factory for assigning of the re-make rights of the film ‘Special 26’ in Tamil and Telugu and on 23rd September 2016, M/s. RPP Film Factory executed an agreement assigning their remake rights to the respondents, K.E. Gnanavelraja.

The main contention of the appellants is that the agreement between them and M/s. RPP Film Factory had lapsed by reason of non-compliance of provisions thereof and in particular, the requirement to commence production of the remake film within 21.09.2017. Thus according to the appellants the agreement having lapsed, the remake rights reverted back to the appellants and the appellants alone had the right to remake the film.

The court stated that the appellants had been prima facie negligent and obviously not been vigilant in protecting their rights. The court in the above case concluded that it found no ground to interfere with the judgment passed by the learned Single Judge and therefore the appeal was dismissed.

Castrol Limited             V/S               Iqbal Singh Chawla

The appellants have filed the present suit in the High Court of Delhi before Judge Sanjeev Sachdeva, seeking a decree, restraining the respondents from selling, marketing, packaging  in respect of the industrial oil, engine oil, lubricants and grease under the trade mark ‘LUMAX ACTIVE’ or any other trade mark, which is deceptively similar to the appellants’ trade mark ‘ACTIV’.

The appellants, Castrol Limited are the registered proprietor of the trademark ‘CASTROL’ and claim to have adopted the trademark ‘ACTIV’ in the year 1999. The appellants stated that the trademark ‘ACTIV’ was registered with the Registrar of Trade Marks (Reg. No. 838183) in Class-4 in respect of industrial oils, lubricants, lubricating oils and greases, fuels and non-chemical additives for fuels etc. The appellant also claims to be the owner of the trade dress and the copyright under Section 2(c) of the Copyright Act, 1957 in the packaging, which includes the container that acts as the trade dress for the appellant’s product.

According to the appellant in the month of December, 2010, the appellant learnt that respondents were selling 4T oil under the trade mark ‘LUMAX ACTIVE’, which according to the appellant was a blatant infringement of the appellant’s registered trademark. The respondents were also imitating the get up, layout and features of the packaging of the appellant’s product by adopting red, white and green colours on the label in an identical manner and also the shape and configuration of the bottle thereby leading to infringement of appellant’s trade dress rights including infringement of copyright and passing off. The respondents too filed their written statement contending that the appellants were not using the mark ‘ACTIV’ independently but were using the same in conjunction with the mark ‘CASTROL’. Further, it was contended by the respondents that the word ‘ACTIV’ is descriptive being common dictionary word.

In view of the arguments put forth by both the parties the court opined that if one were to examine the respective trademarks ‘CASTROL ACTIV’ of the appellant and ‘LUMAX ACTIVE’ of the respondents in conjunction with the trade dress, colour scheme, packaging, design, layout, shape and configuration, it was clear that the adoption of the trademark ACTIVE by the respondents – in an identical trade dress, colour scheme, packaging, design, layout, shape and configuration – was clearly dishonest and was to encash upon the goodwill and reputation of the appellant. Thus according to the court clearly, the respondents had designed their packaging and label keeping in mind the packaging and label of the appellant’s.

Thus the court decreed the suit in favour of the appellant and against the respondents and a decree in the sum of Rs. 2,00,000/- was passed in favour of the appellant and the respondents were also issued directions to deliver up to the appellant the infringing material comprising of the infringing label and the packaging etc. The court also entitled the costs of the suit to the appellant.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order IX Rule 9; Code of Civil Procedure, 1908 (CPC) – Order XVII Rule 17; Copyright Act, 1957 – Section 2(c).

Three-N-Products Pvt. Ltd.   V/S    Kairali Exports

The appellants Three-N-Products Pvt. Ltd. have filed the subject suit in the High Court of Delhi before Judge Sanjeev Sachdeva, seeking inter alia the relief of permanent injunction for passing off, infringement of trademark, rendition of account against the respondents Kairali Exports.

The appellants claim to be the registered proprietor of the mark “AYUR” in various classes having adopted the mark in the year 1984 and the same being used by them continuously and uninterruptedly. According to the appellant, the respondents Kairali Exports had adopted a mark “AYURVASTRA” which was identical and similar to the appellant’s trademark “AYUR”. It was further contended by the appellants that the mark ‘AYUR’ was an invented word and has no meaning whatsoever and was associated only with the goods of the appellant.

The respondents in their written statement contended that their mark and that of the appellant’s was different. According to the respondents the appellants had no exclusive right in the word “AYUR” per se as the word “AYUR” was a word of very distinctive character and was an abbreviation of the word ‘AYURVEDA’ which signifies products of Ayurvedic qualities. Hence accordingly, the respondents asserted that, in view of Section 17 of the Trademarks Act, the appellants cannot obtain exclusive proprietary rights over the word “AYUR”.

The court on basis of the arguments put forth by both the parties stated that the claim of the appellants that word “AYUR” was invented and adopted by them, ex-facie appeared to be incorrect. According to the court the word “AYURVEDA” was a Sanskrit term comprising of two words – ‘AYUR’ and ‘VEDA’. Thus the court asserted that the appellant having adopted a mark, which is generic or descriptive, cannot claim legal protectability for the mere asking. Further on perusal of the marks of both the appellants and the respondents the court further stated that it was apparent from the mark of the respondents that it was completely distinct and different from the trademark of the appellants. The court thus concluded that the appellants had failed to establish a prima facie case in their favour and the balance of convenience too was not in favour of the appellant for the grant of an ad-interim injunction. Hence in view of the above, the appellants were not entitled to an injunction and accordingly, the application was dismissed by the court.

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; Trade Marks Act, 1999 – Section 17, Trade Marks Act, 1999 – Section 17(1), Trade Marks Act, 1999 – Section 17(2)

Cases Referred: Three-n-Products Pvt. Ltd., 3030, Street No. 4, Ranjit Nagar, New Delhi-110008 vs. Yashwant and Ors.  /DE/1268/2001.

RSPL Limited                   V/S               Prithvi Chemicals

Present suit has been filed by appellants RSPL Limited, in the High Court of Delhi before Judge Manmohan, seeking a permanent injunction restraining infringement of trademark, copyright, passing off, delivery up and rendition of accounts etc. against the respondents.

The appellants in the suit RSPL Limited, are an established business concern, engaged in the trade and business of  manufacturing  and selling of different kinds of washing soaps and detergents and their ‘GHARI’ Detergents brand is one of the well known brands in the FMCG market. The appellant adopted the trademark GHARI in the year 1975 and has registrations for the mark GHARI in Classes 1 to 34 of the Trade Marks Act, 1999. The appellant is also the registered proprietor of the copyright involved in the artistic work namely the getup, lettering style, colour scheme, placement of words, artistic features etc. of the GHARI trademark.

The appellants stated that in the first week of March, 2015, it came to their knowledge that the respondents Prithvi Chemicals had dishonestly and unauthorisedly adopted and copied the ‘GHARI’ trademark and trade dress in exactitude and the impugned goods and business of the respondents were also of similar nature as that of the appellant’s. The main contention of the appellants was that the respondents had scanned the complete wrapper of the appellant’s GHARI trademark and trade dress and had merely replaced the Hindi word ‘GHARI’ with the Hindi word ‘GHANTI’ which was visually and phonetically identical in its basic idea and essential feature to the registered trademark of the appellants.

Vide order dated 24th March, 2015 the court had granted an ex-parte ad interim injunction in favour of the appellant and against the respondents and since the respondents did not appear despite service, it was proceeded ex-parte vide order dated 29th May, 2017. Consequently the court in the present case concluded that the respondents had malafidely infringed the trademark GHARI of the appellant and that the mark, logo and label GHANTI used by respondents amounted to infringement of appellant’s trademark and copyright.  Hence the present suit was decreed in favour of the appellant along with costs.

 E.I. Du Pont De Nemours and Company  V/S  Jeetender Kumar Kaushik

The appellants E.I. Du Pont De Nemours And Company have filled the present suit in the High Court of Delhi before Judge Manmohan, against the respondent Jeetender Kumar Kaushik, for injunction damages, trademark infringement, copyright infringement and declaration.

The appellant, E.I. Du Pont De Nemours and Company, is a world renowned global company, having a diverse array of products offerings and ranked at 66th in the Fortune 500 companies. The appellants are the registered proprietor of the well-known brands CORAGEN and DUPONT and the registrations for the above mentioned brands had been renewed from time to time and are valid and subsisting as of date.

The appellants received information of large scale counterfeiting of CORAGEN products and a subsequent survey revealed that there were several counterfeiters of CORAGEN, unauthorized distributors of CORAGEN, as well as  facturers and sellers of the product, hence the present suit was filed by the appellants.

Prior to the present suit the court had granted an ex-parte injunction in favour of the appellant and against the respondents vide order dated 08th August, 2017 and with respect to the present suit, keeping in view the evidence led by the appellant, the court concluded that the respondents had no justification for the adoption and use of a virtually identical trademark and label as that of the appellant and accordingly the suit was decreed against the respondents along with the actual costs.

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

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

Info Edge (India) Ltd.              V/S               Akash Deep

The present suit is filed by appellants Info Edge (India) Ltd., in the High Court of Delhi before Judge Jayant Nath, seeking a decree of permanent injunction against the respondent, Akash Deep from using the mark CVNAUKRI.COM, CVNAUKRI.CO.IN, CVNAUKRI.IN, CVNAUKRI.ORG AND RESUMENAUKRI.COM or any other mark consisting the word NAUKRI as a prefix or suffix.

The appellants are running the country’s number 1 job-seeking website NAUKRI.COM since 1997. According to the appellants by virtue of its extensive and substantial use, the word NAUKRI has acquired a secondary significance and is exclusively identified with the appellants alone. Further the trademark NAUKRI was registered by the appellants in class 9 and 16 since 26th November 1999.

In April, 2013 the appellants became aware that the respondent was operating under the style of CVNAUKRI.COM and was getting in touch with the customers of the appellants and representing himself to be a part of the appellant’s group of companies. Thus according to the appellants the respondent was illegally using the name CVNAUKRI.COM, CVNAUKRI.CO.IN, CVNAUKRI.IN, CVNAUKRI.ORG AND RESUMENAUKRI.COM and creating a false and misleading impression that he was closely associated with the appellants.

Thus it is the contention of the appellants that, the respondent has infringed their trademark and has also carried out acts in a manner which amount to passing off their goods as those of the respondent’s and that the respondent was also infringing the statutory rights of the appellants.

Prior to the present suit the respondent was proceeded ex parte on 12th May 2017 and with regards to the present suit as the various documents, brochures, paper and article cutting submitted to the court affirm that the appellants are the owner of the word NAUKRI, accordingly, a decree is passed in favour of the appellants and against respondent. The appellants are also entitled to recovery of damages of Rs. 5 lacs by the court along with the costs of the proceeding.

 Cases Referred: Info Edge (India) Pvt. Ltd. and Anr. vs. Shailesh Gupta and Anr.  /DE/0735/2002

ITC Ltd.         V/S             Nutrine Confectionery Co. Ltd.

The suit is filed by appellants ITC Ltd. in the High Court of Madras before Judge R. Subramanian, for a permanent injunction restraining the respondents from publishing and telecasting an advertisement which according to the appellants disparages and defames the appellant’s Candyman Lacto Crème Center products.

The appellants entered the confectionery market during the year 2002 and have developed a very wide market and high turnover during the years. According to the appellants the respondents, Nutrine Confectionery Co. Ltd. too are a major confectionery producer.

The appellants contended that during the year 2009 the respondents came up with an advertisement, wherein, apart from claiming that their Nutrine Maha Lacto is only “Asli Lacto” meaning “real lacto”, the advertisement disparaged the product of the appellants in as much as the picture of the toffee in the respondent’s advertisement matched the colour scheme of the appellant’s toffee Lacto Crème Center and the same was depicted as fake toffee or a dupe. The appellants asserted that the respondents were not entitled to claim that their product alone was a true product and the others were fake in an advertisement.

Hence the present suit was filed by the appellants praying for a permanent injunction restraining the respondents from disparaging, denigrating, tarnishing the goodwill and reputation of the appellants in their Lacto Crème Center products by telecasting, broadcasting, publishing or in any other manner making available to the public the impugned advertisement depicting directly or indirectly appellant’s Lacto Crème Center product. The court in the present case opined that the advertisement was, in fact an unfair trade practice on the part of the respondents and that the appellants were entitled to an injunction as prayed for by them. Accordingly the suit was decreed in favour of the appellants and against the respondents.

Acts/Rules/Orders: Constitution Of India – Article 19(1)(a), Constitution Of India – Article 19(2); Consumer Protection Act, 1986 – Section 2, Consumer Protection Act, 1986 – Section 2(1)(r), Consumer Protection Act, 1986 – Section 3; Monopolies And Restrictive Trade Practices Act, 1969 [repealed] – Section 36 A

Cases Referred: Colgate-Palmolive (India) Limited vs. Anchor Health and Beauty Care Private Ltd.  /TN/0980/2008

Levi Strauss & Co.                   V/S               Rajesh Agarwal

The present appeal made by the appellants Levi Strauss & Co. in the High Court of Delhi before Judge Prathiba M. Singh, arises out of an order dated 28th November, 2006 passed by the Ld. Additional District Judge by which the suit filed by the appellants was dismissed.

The appellants had filed a suit for permanent injunction restraining the infringement of trademark, copyright and passing off in respect of the appellant’s trademark “LEVI’S”, “LEVI STRAUSS” derivatives and labels thereof.  The appellants claimed that they were the registered proprietors of the trademarks and that they had been using the trade mark since 1850. According to the plaint, the respondents were selling wearing apparels bearing identical logos and devices as that of the appellant’s and hence the appellant’s had prayed for permanent injunction and damages. Though initially, on 3rd October, 2001 an ex-parte ad-interim injunction was granted in favour of the appellants and a Local Commissioner was also appointed to visit the premises of the respondents located at Hyderabad to make an inventory of the infringing products after hearing the ex-parte arguments vide order dated 28th November, 2006 the suit of the appellants was dismissed. The Learned Additional District Judge, had dismissed the suit on two primary grounds i.e. first that the Local Commissioner, who had seized the infringing goods of the respondents at Hyderabad on 6th October 2001, had not been examined by the appellants and secondly on the ground that no assignment was placed on record to show that the appellant’s company had assigned its marks to Levi’s Strauss India Pvt. Ltd., an affiliate entity of the appellants in India. The present court perused the records of the suit and stated that the impugned judgment passed by the Learned Additional District Judge was erroneous and contrary to law. The court stated that a perusal of the labels and marks used by the respondents left no doubt that the use of the same was completely violative of the appellant’s rights. According to the court it was a classic case of identical copying. The court further asserted that the name of the appellants being misused in the labels along with all the accompanying devices clearly constituted infringement of the registered trademarks of the appellants and that the labels and other brand identifiers used by the respondents too constituted passing off of their products as those originating from the appellants. Accordingly, the impugned judgment dated 28th November, 2006 was set aside and the appellants were entitled to a permanent injunction along with costs.

 Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXVI Rule 10 (2)

Cases Referred: George V. Records, SARL vs. Kiran Jogani and Anr.  /DE/0275/2004; Harbhajan Singh vs. Shakuntala Devi Sharma and Anr.  /DE/0058/1976

Oriental Longman Ltd.                    V/S               Gulmohar Press P. Ltd.

This appeal is made by appellants Oriental Longman Ltd. in the High Court of Delhi before Judge Najmi Waziri, against the impugned order dated 16th July 2005 dismissing the appellant’s suit seeking permanent injunction against the respondents restraining them from infringing the appellant’s registered trademark “GUL MOHAR”, passing off, rendition of accounts of profits and delivery up.

The appellants are a publisher of books and claim that they have published a series of books under the GULMOHAR series which is widely sold and used by school children. The appellants registered their trademark “GULMOHAR” on 13th May 1986 (Reg. No. 453981) in Class 16 for inter alia printed matter, newspapers, periodicals and books, etc.

It was the contention of the appellants that the respondents under the name and style of “GULMOHUR PRESS PVT. LTD.” had used the word “GULMOHUR” as part of their trade name.

According to the appellants the respondents using the word “GULMOHUR” amounted to infringement of their registered trade mark “GULMOHAR”. The appellants highlighted that the aforesaid publication could easily be passed off as a book having been published by the appellants. Hence the appellants had prayed for a permanent injunction against the respondent but their suit was dismissed on the ground that respondents had no intention to deceive. The other reason for dismissal of the suit was that the respondents had used the logo “Gulmohur Press” which was different from the logo of the appellant’s i.e. “GULMOHAR”

The present court, in view of the arguments put forth concluded that the respondents be restrained from using the trademark or trade name GULMOHUR in relation to books or other printed publications as part of their corporate name Gulmohur Press Pvt. Ltd. or any other identical or similar mark to the appellant’s trademark “GULMOHAR” and accordingly the appeal, alongwith pending applications, was disposed off.

 Acts/Rules/Orders: Trade And Merchandise Marks Act, 1958 [repealed] – Section 32; Trade Marks Act, 1999 – Section 21, Trade Marks Act, 1999 – Section 29 (2) (c)

Cases Referred: Laxmikant V. Patel vs. Chetanbhat Shah and Anr.  /SC/0763/2001