03 Feb IPR CASES 2020- INTELLECTUAL PROPERTY#DIGEST OF LANDMARK TRADEMARK, PATENT, COPYRIGHT CASES 2020

The evidence on record clearly showed that the respondents had imitated the registered trademark and copyright of the appellants

Mohamed Aboobacker Chank Lungi Ltd. V/S Exhibition Society Ltd.

The present suit is filed by the appellants Mohamed Aboobacker Chank Lungi  Ltd., in the Honourable High Court of Madras before Honourable Justice Dr. G. Jayachandra, for permanent injunction restraining the respondents from in any manner infringing the appellants’ registered trademark CHANK, SANGU and the device Conch. [Civil Suit No. 55 of 2019 in O.A. Nos. 55 of 57 of 2019 and A. No. 476 of 2019, Decided On: 29.01.2020]

 The appellants’ company is registered under the Indian Companies Act. and is involved in carrying on business in  manufactoring of handloom, textile piece goods, kerchief, lungies, dhoties etc. The appellants’ commenced the said business in the year 1927. According to the appellants they conceived and adopted the trademark “CHANK” with the device of a “CONCH” and it is the house mark and the most well-received mark among the lungi brands in the market.

The appellants state that in order to protect their trademark, they had applied for and obtained registrations of the trade mark CHANK, SANGU-words per se, the device of Conch and also the composite label under the Trademarks Act 1999, in class 24 and 25. The appellants have promoted their product with the trademark “CHANK” with the ‘device Conch’ and copyright of the artistic work through advertisements for nearly half a century and their products are available everywhere. Further by virtue of public acquaintance, the trademarks CHANK/SANGU and the device of Conch have acquired secondary meaning to denote and connote the products of the appellants’ alone. Also, the appellants’ trademark and device have gained high reputation and goodwill among the traders, customers and general public.

According to the appellants during the second week of January 2019, the respondents were found selling products under the trade name SANGU without the permission of the appellants. It is the contention of the appellants that brazen acts of infringement and passing off are committed by the respondents. The appellants state that the label adopted by the respondents was identical to the appellants’ registered trademark and copyright in their artistic work “device of Conch”. Further an overall impression of the respondents’ label conclusively proves beyond doubt that it has been adopted with the sole and unbridled malafide intention to confuse the trade and public.

It is the plea of the appellants that considering the class of customers, channels of trade and the price involved, an ordinary person with average intelligence and imperfect recollection would not be able to distinguish between the appellants’ distinctive CHANK label with the device of Conch with the respondents’ imitative label SANGU also with the device of Conch at its center. Further considering the cheaper price of the product sold by the respondents, there is reasonable apprehension about the quality.

Any substandard product sold imitating the trade mark and the device of the appellants’ would cause damage to the reputation and sale. Hence, the present suit is filed by the appellants for permanent injunction restraining the respondents from in any manner infringing the appellants’ registered trademark CHANK, SANGU and the device Conch by using the identical mark SANGU or any other mark deceptively similar to or a colourable imitation of the appellants’ trademarks SANGU and the device of Conch. The appellants have also prayed for a permanent injunction restraining the respondents from infringing the copyright in the artistic features associated with the appellants’ artistic work ‘Device of Conch’. In addition, the consequential relief of surrender of offending materials and rendition of accounts and damages is also sought.

The court in the present suit stated that from the evidence on record it found that the respondents has imitated the registered trademark and copyright of the appellants by using the word per se SANGU and the device Conch which was deceptively similar to the appellants’ registered trademark and copyright. According to the court any ordinary purchaser with average intelligence and imperfect recollection would be definitely deceived by the product of the respondents as that of the appellants’ product of well known trademark. Hence the prayer for permanent injunctions sought for in the plaint was allowed.

The court highlighted that the Advocate commissioner appointed by the court had already taken inventory of the offending material found in possession of the respondents and the respondents were also directed by the court to surrender the offending materials to the appellants within 60 days from the date of the judgment, failing which, the appellants were at liberty to file appropriate petition for execution. Further in so far as the appellants’ prayer for damages and rendition of accounts was concerned no substantial evidence was led in by the appellants to assess the damages and hence, this relief sought was dismissed.

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

A permanent injunction is granted in favour of the appellants and restraining the respondents

 TTK Prestige Ltd.   V/S   Ayyavu

The present suit is filed by the appellants TTK Prestige Ltd., in the Honourable High Court of Madras before Honourable Justice Dr. G. Jayachandra, for infringement of trademark and passing off alleged to have been committed by the respondents. [C.S. No. 709 of 2019, O.A. Nos. 1111 and 1112 of 2019, Decided On: 13.01.2020]

 

The present suit is filed by the appellants for infringement of trademark and passing off alleged to have been committed by the respondents. According to the appellants the respondents, with modification to the appellant’s product (Prestige Pressure Cooker) are selling them under the trade name “STRAINO”. The appellants state that though the package indicates the content (cooker) being manufactured by the respondents under the name “STRAINO”, the content (cooker) inside the package has the appellant’s trademark “PRESTIGE” and its logo embossed over different part of the cooker. Thus, by making modification in the appellant’s product, the respondents are marketing the product under a different name “STRAINO”.

A private notice was served on the respondents and on receipt of the notice, the respondents appeared and submitted themselves to decree, with an undertaking that, they would not use the pressure cookers  manufactured by the appellants and affix their trade name on the appellant’s product and cause infringement of trademarks or passing off. Further the court on 10.01.2020 appointed an Advocate Commissioner to inspect the respondents’ premises and take inventory and file a report on 13.01.2020. It is further highlighted that the respondent Mr. Ayyavu, was present before the court and gave an undertaking letter that he would not hereafter sell the appellant’s product under his trade name and he would also hand over all the products.

In the light of the submissions made by the respondents, the court was of the view that the suit itself can be disposed of with the following relief to the appellants, i.e. a permanent injunction be granted restraining the respondents from manufacturing, advertising, selling or dealing in any manner with the pressure cooker or any other related product under the trademark PRESTIGE or any other trademark that may be identical/deceptively similar to the trademark PRESTIGE, thereby amounting to infringement of the registered trademarks. The court concluded that the respondents had already handed over all infringing pressure cookers, bearing the appellant’s trademark affixed with the respondents’ trade name and had substantially submitted by the decree, hence according to the court there was to be no costs or damages as claimed by the appellants. With the above observations, the suit was partly decreed and connected applications were closed.

An injunction restraining the respondents from using the registered trademark of the appellants’ “AROKYA” is passed by the court

Hatsun Agro Product Ltd.    V/S          Kamadenu Dairy Farms

The present suit is filed by the appellants Hatsun Agro Product Ltd., in the Honourable High Court of Madras before Honourable Justice Dr. G. Jayachandra, alleging that the appellants’ registered trademark “AROKYA” is infringed by the respondents who are marketing their product under the name “AROGIYAM MILK”. [C.S. No. 517 of 2019, Decided On: 19.02.2020]

 According to the appellants, Hatsun Agro Product Ltd. they adopted the unique trademark “AROKYA”, for their milk and milk products and under the registered trademark “AROKYA”, they are also  manufacturing diairy products like ice creams, dairy whitener, skimmed milk powder, AGMARK Certified Ghee, Cooking Butter, Milk, varieties of curd, paneer and butter milk. The appellants state that they have been in the trade since 1970 and enjoy a good reputation and patronage in the trade and general public.

It is the contention of the appellants that the respondents are infringing their registered trademark “AROKYA” by marketing their product under the name “AROGIYAM MILK” and thereby passing off their products as that of the appellants.

Hence the appellants have prayed for a permanent injunction restraining the respondents from using in any manner whatsoever the “AROKYA” trademark or copying/reproducing the same in any packaging or literature or any colourable imitation or substantial reproduction thereof in any manner whatsoever so as to infringe or cause infringement of the appellants’ trademark. It also pleaded by the appellants that the respondents be directed to surrender to the appellants the entire products with the offending labels, stocks with offending labels together with the blocks and dies, name boards, sign boards etc. for destruction.

The respondents in the suit failed to file a written statement and hence were set ex- parte. Further at the instance of the appellants the court appointed an Advocate Commissioner to visit the respondents’ premises. On 30.11.2019, the Advocate Commissioner inspected the respondents’ premises and submitted his report indicating that the respondents were producing milk products under the name of “AROGIYAM MILK”.

The court in the present suit stated that through clinching evidence, the appellants had proved the case against the respondents in respect of infringement and passing off. Further the respondents’ milk product seized by the Advocate Commissioner during the inspection indicated that the respondents were using the name “AROGIYAM MILK”, which was phonetically similar to the trademark of the appellants’ and passing it off deceptively as if it was the product of the appellants’.

Hence the court, in the present suit passed the following decree, i.e. an injunction restraining the respondents from using the registered trademark of the appellants’ “AROKYA” or in any other name phonetically similar to that of “AROKYA” in their product, which shall amount to colourable imitation or substantial reproduction. The respondents were also restrained by way of injunction from in any manner using the appellants’ trademark “AROKYA” and passing off the respondents’ product as that of the appellants’ product. The respondents were directed by the court to surrender the impugned infringed products in their possession and a preliminary decree was passed regarding rendition of true and faithful accounts of the profits. Accordingly, the suit was allowed with costs.

 The permanent injunction relief sought by the appellants against the respondents was granted and the respondents were also directed to surrender all the infringed materials in their possession

ITC Limited   V/S   Shree Devi Match Industries

The present suit is filed by the appellants ITC Limited, in the Honourable High Court of Madras before Honourable Justice Dr. G. Jayachandra, alleging infringement and passing off appellants’ product by the respondents. [Civil Suit No. 561 of 2016 in A. No. 175 of 2020, Decided On: 18.02.2020]

 The appellants state that, they are a well established business house carrying on business in diverse fields including  manufacturing and sale of safety matches under various trademarks inter alia, CHEETA FIGHT, HOME LITES, THREE MANGOES, AIM, SHIP and KAPAS. These trademarks of the appellants’ have acquired immense goodwill and reputation owing to the high quality of goods  manufactured and marketed by them.

The present suit pertaining to the appellants’ trademark THREE MANGOES. According to the appellants they have designed a distinguished, unique and eye catchy label consisting of distinctive features bearing the words THREE MANGOES written in a stylish font represented within a special artistic background, with the image representation of THREE MANGOES and the unique colour combination of red and yellow to arrive at a distinctive get up and trade dress.

The appellants state that the trade mark and its artistic work in the label THREE MANGOES was adopted in an honest and bona fide manner to distinguish their goods from that of the competitors and the proprietor right over the said artistic work in the label THREE MANGOES vest only with the appellants.

During the month of July 2016, the appellants come to know that several manufacturers in the District of Vellore specifically at Gudiyattam Taluk were manufacturing and marketing matchboxes under a deceptively similar mark THE MANGOES and/or GREEN MANGOES bearing identical artistic work, colour scheme get up and layout of the appellants’.

Hence the appellants filed the present suit praying for a permanent injunction restraining the respondents from infringing their registered trademark/label THREE MANGOES by  manufacturing, selling and/or distributing matches under the almost identical mark THE MANGOES or GREEN MANGOES or any other similar or identical or deceptively similar mark and artistic work and in any other manner whatsoever. The appellants have also prayed that the respondents be ordered to surrender to the appellants, for destruction, all goods and material containing the trademark THE MANGOES or GREEN MANGOES or any other mark similar or identical to appellants’ registered trade mark THREE MANGOES and that the respondents be ordered to pay to the appellants a sum of Rs. 50,00,000/- (Rupees Fifty lakhs only) as damages for committing acts of infringement of trademark and passing off.

The court-appointed Advocate Commissioners to inspect the premises of the respondents to find out whether there was any infringed material in the respondents’ premises and it is pertinent to point out that the Advocate Commissioners appointed, submitted their reports substantiating the allegations of the appellants regarding infringement of their copyright and trademark. The respondents too had not filed a written statement and had also admitted the possession of infringed products and had given undertaking not to carry on the trade of the infringed products. Hence in such circumstances, there was no compelling reason why the claim should not be disposed of.

Accordingly the court in the present suit granted the permanent injunction relief sought by the appellants against the respondents and the respondents were also directed to surrender all the infringed materials in their possession to the appellants. The appellant’s plea for seeking damages of Rs. 50,00,000/- against the respondents was dismissed for want of proof. Though, a preliminary decree was passed in favour of the appellants directing the respondents to render true and faithful account of profits earned by them by use of trademark THE MANGOES or GREEN MANGOES for matches, for ascertaining loss of profit.

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

The appellants had clearly made out a case for grant of an injunction, as the respondents were violating the rights of the appellants’ in their trademark as well as copyright

Starbucks Corporation   V/S   Copamocha Cafe and Restaurant

The present suit is filed by the appellants Starbucks Corporation, in the Honourable High Court of Delhi before Honourable Justice Mukta Gupta, praying for a decree of permanent injunction restraining the respondents from infringing the appellants’ registered trademark “FRAPPUCCINO”. [CS (COMM) 676/2019, Decided On: 28.02.2020]

 The appellants in the present suit have prayed for a decree of permanent injunction restraining the respondents from infringing the appellants’ registered trademark “FRAPPUCCINO” or any other deceptively similar mark in relation to their goods, services and business, rendition of accounts, delivery and possession of impugned goods, menu cards and stationery and damages to the tune of Rs. 2,00,01,000/-.

The appellants state that they are a company organized and existing under the laws of the State of Washington, United States of America. The appellants’ company was incorporated as “STARBUCKS CORPORATION” in the year 1985 and has since then opened 30,848 retail stores over 81 countries around the world.

The appellants adopted the registered trademark “FRAPPUCCINO” in respect of cold beverages since 1994 and the same is widely popular throughout the world as the appellants’ handcrafted cold beverages. The appellants also sell  bottled “FRAPPUCCINO” beverages in various countries in different flavours, some of the varieties include Coffee, Mocha and Vanilla. The appellants’ mark “FRAPPUCCINO” is registered in over 185 countries and territories in relation to various goods and services.

The appellants further claim that their registered trademark “FRAPPUCCINO” has continuously and extensively been used by them and is recognized as a well-known trademark falling within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999. Further courts of different jurisdictions have given decisions in favor of the appellants’ company upholding their registered trademark as a well-known mark.

It is the grievance of the appellants that, in the third week of January 2019 it was brought to their notice that the respondents were operating a cafe/restaurant by the name of “Copamocha Cafe and Restaurant” in Thirissur, Kerala and whereunder they were selling various cold beverages under the name/mark “FRAPPUCCINO” which were identical and deceptively similar to the appellants’ handcrafted beverage items sold under the registered trademark “FRAPPUCCINO”. According to the appellants the mark “FRAPPUCCINO” has been adopted by the respondents with the malafide intent to derive benefits from the existing reputation and goodwill of the appellants’ company.

The appellants have further highlighted that the reference to the registered mark “FRAPPUCCINO” has also been made in the electronic menu cards of the respondents’ restaurant for the identical beverage flavors as offered by the appellants.

The appellants thereafter sent cease and desist notices on 24th January 2019 and 18th February 2019 inter alia requesting the respondents to adopt a different name for their cold beverages which is not similar to the appellants company’s registered mark. The said notices were duly delivered however the appellants did not receive any response from the respondents.

Further upon making inquiries, the appellants’ company learnt that the respondents were still using the impugned mark on the menu cards and invoices. Accordingly, the appellants attempted to make telephonic contact with the respondents and in March, 2019 the appellants’ call was answered by a person claiming to be the Manager of the respondents’ who informed the appellants that efforts were being made to remove all references to the impugned mark and said that a months’ time was needed to finalize the revisions. But on expiry of the one-month period requested by the opposite party,  an inquiry by the appellants resulted into them finding that the references to the impugned mark still remained unchanged.

The court in the present suit asserted that from the pleadings of the appellants’ and the documents along with necessary certificates enclosed with the plaint, the appellants had clearly made out a case for grant of injunction, as the respondents were violating the rights of the appellants’ in their trademark as well as copyright. The court also awarded cost of Rs. 7,34,100/- in favour of the appellants and against the respondents.

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

The respondents were to be restrained from infringing the appellants’ registered trademarks

Bajaj Electricals Limited      V/S          Pappu Farishta

The present suit is filed by the appellants Bajaj Electricals Limited, in the Honourable High Court of Bombay before Honourable Justice B.P. Colabawalla, seeking to move for ex-parte ad-interim reliefs against the respondent. [LD/VC/IA/1/2020 in LD/VC/132-A/2020, Decided On: 06.07.2020]

 The appellants are a Public Limited company duly incorporated under the Indian Companies Act, 1913 and deemed to exist within the purview of the Companies Act, 2013. They are a part of the Bajaj conglomerates of businesses and industries, one of the oldest business groups in India. The appellants state that they have diversified business interests and are inter alia engaged in  manufacturing, marketing and selling of various consumer household appliances and industrial goods and services. The appellants further state that in or about January 1961, they honestly, independently and in a bona fide manner adopted and commenced use of the trade mark/name BAJAJ in relation to their goods and services and had also applied for and secured several trade mark registrations of its BAJAJ marks across numerous classes viz. Class 7, 8, 9, 11, 16, 21, 35, 37, 41, 42 and 45.

According to the appellants, goods and services bearing the trade name, BAJAJ have accrued large sales and have acquired tremendous reputation and goodwill. Further the appellants are also the owner of the domain name www.bajajelectricals.com registered by them in the year 1997.

The appellants state that, in or about the second week of June 2020, while conducting an online public search, they came across the respondents’ impugned trade mark ‘bajajonline.com’ bearing application Nos. 3636543 and 3636544 in Classes 35 and 41, respectively. The appellants state that upon conducting an investigation into the respondents’ activities, they learnt that the respondents were operating a wholesale and retail readymade clothing and apparel store at Raipur and were selling male, female and kids multi brand clothing/apparel under the impugned mark ‘bajajonline.com’.

It is the contention of the appellants that the impugned mark ‘bajajonline.com’ is identical /deceptively similar to their well-known and registered BAJAJ marks and labels. According to the appellants, the respondents’ actions not only infringe the statutory rights of the appellants in their registered trademarks but also amount to passing off. Also the appellants state that the respondents have adopted and are using the impugned trade mark with the sole intention of riding upon the said goodwill and reputation of the appellants. Hence the appellants are seeking to move for ex-parte ad- interim reliefs against the respondents.

The court in the present suit stated that the material produced before it, prima facie, showed that the appellants were the proprietors of the well-known and registered BAJAJ marks and labels and that the same had acquired substantial goodwill and reputation. Further according to the court there was no matter of doubt that the impugned trademark and domain name ‘bajajonline.com’ used in respect of the impugned goods/services of the respondents was nearly identical, and deceptively similar to the appellants’ registered BAJAJ marks and labels.

In the opinion of the court the similarity between the rival trademarks and rival trade names cannot be a matter of coincidence. The court stated that the possibility of confusion and deception amongst the public due to the use of the impugned trade mark by the respondents was very high and likely. Thus in the above circumstances, a strong prima facie case for the grant of ad-interim reliefs was made out. The balance of convenience was also in favour of the appellants and unless reliefs as prayed for were granted, the appellants were likely to suffer irreparable injury.

Thus in view of the above the court passed the ad-interim order that, pending the final hearing and disposal of the suit, the respondents were to be restrained from infringing the appellants’ registered trademarks by using the impugned name/mark ‘bajajonline.com’ or the impugned domain name/website/account ‘www.bajajonline.com’ or any other mark/name/website, that was deceptively similar to the appellants’ registered trademarks or which contained the word ‘BAJAJ’.

The provisions of Rule 33 of the Trade Marks Rules, 2017 had not been complied with and the appellants were also able to make out a strong prima facie case in their favour

F.K. Bearing Group Co. Ltd.   V/S   Vinod Kumar

The present suit is filed by the appellants F.K. Bearing Group Co. Ltd., before the Intellectual Property Appellate Board Delhi Registry cum Bench, before Honourable Justice Manmohan Singh, J. (Chairman) and Dr. Onkar Nath Singh, Member (T), seeking a stay on the two registrations of respondents. [ORA/108/2020/TM/DEL, ORA/117/2020/TM/DEL, M.P. No. 78/2020, ORA/108/2020/TM/DEL and MP No. 79/2020 in ORA/117/2020/TM/DEL, Decided On: 10.07.2020]

 The appellants, F.K. Bearing Group Co. Ltd., ever since their inception in 1969, have  been engaged in the  facturing and marketing of ‘bearings’ sold under their trademark ‘FK’. This trademark was later in 1993 converted into a distinctive artistic logo. The appellants state that they also own and maintain their website www.fk- bearing.com since 05.09.2001.

The appellants state that they are the registered proprietor of the trademark FK in more than 80 countries of the world such as USA, EU, Australia, Mexico, Singapore, New Zealand, Malaysia, Israel, China etc. and are also the registered proprietor of the trademark in India since 2004. The trademark of the appellants’ is registered in India under No. 1329050 dated 30.12.2004 for ‘bearings’ and other bearing related goods in Class 07.

It is the contention of the appellants that the respondents who were earlier agent/distributor of the appellants, engaged in the resale of the Applicant’s products bearing the trademark FK had obtained registration for the identical trademark in respect of identical/similar goods as that of the appellants. The appellants state that they had learnt that the respondents had managed to obtain the said registration behind the back of the appellants. The impugned identical trademark of the respondents was registered under No. 1989336 in respect of identical/similar goods.

According to the settled principle of law, under the provisions of Rule 37 (2) of the Trade Marks Rules, 2002 (Now Rule 33 of the Trade Marks Rules, 2017) read with Section 11 of the Trade Marks Act, 1999 the Registry is obliged to cause a search to be made amongst the registered/pending trademarks for the purpose of ascertaining whether there exist on record any earlier identical/similar trademarks to the mark sought to be registered in respect of identical/similar goods and that where the subsequent mark is registered in contravention to the said provisions then the effect of such registrations are liable to stay.

Keeping in view the above provisions, the board in the present case stated that from the record and facts stated above it was evident that the appellants were the prior user and prior adopter. According to the board, the logo F.K. appeared to have been adopted by the appellants from their corporate name. Further, as per the admission of the respondents, they had been using the mark since 2000 while the user claimed by the respondents while obtaining registration was 2009. Also, the reply filed by the respondents did not help their case in view of earlier use.

According to the board the provisions of Rule 33 of the Trade Marks Rules, 2017 (Earlier Rule 37 (2) of the Trade Marks Rules, 2002) has not been complied with and the appellants were also able to make out a strong prima facie case in their favour and against the respondents. Thus, the board concluded that till the rectification petition is finally decided, the operation of two registrations of respondents’ in class 12 shall remain stayed.

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11; Trade Marks Rules, 2002 – Rule 37 (2); Trade Marks Rules, 2017 – Rule 33

Cases Referred: Zee Telefilms Ltd. and Anr. vs. Asia Today Ltd. and Ors.   7487/2007

As there was no case, for grant of any interim injunction, staying the release of the film “Lootcase”, the application was dismissed

Vinay Vats   V/S   Fox Star Studios India Pvt. Ltd.

The present suit is filed by the appellant Vinay Vats, in the Honourable High Court of Delhi before Honourable Justice C. Hari Shankar, seeking a restraint on the release of the film “Lootcase”. [I.A. 6351/2020 in CS(COMM.) 291/2020, Decided On: 30.07.2020]

 The appellant in the present suit claims to be the author and consequently, the first copyright owner, of a script for a film titled “Tukkaa Fitt”. The script was written in 2010-2011 and was registered with the Film Writer’s Association, Mumbai on 14th March, 2011. The appellant states that he was approached by the Director of M/s. AAP Entertainment Limited, in 2011, for permission to utilize the script and make a motion picture “Tukkaa Fitt”. According to the appellant, the production of the film “Tukkaa Fitt” was completed in November 2012 but the release of the film was halted. Despite this fact, it is further asserted by the appellants that the trailer of the film “Tukkaa Fitt” was released on YouTube and other public media platforms in March, 2011 and that the work of the appellants has been in the public domain since then. The appellant states that on 18th July, 2020, his assistant informed him of the release of the film “Lootcase” on 31st July 2020.

The main contention of the appellants is that on viewing the trailer of the film “Lootcase” the appellant was shocked to find substantial similarities between the plot of the said film “Lootcase” and his script. Thus, it is on this foundation that the appellants is seeking an interim injunction, restraining the release of the film “Lootcase”, to be released tomorrow, i.e. 31st July 2020.

The respondents in the suit have claimed that the appellant’s plea is completely bereft of any foundation and have also criticized, severely, the act of the appellant in moving this court at the last minute, obviously with a view to arm-twist the respondents and secure gains for himself. The court in the present suit made the observation that a comparison of the salient features of upcoming film “Lootcase”, as manifested from the trailer of the film, vis-a-vis appellant’s script, reveal that there are considerable features in the appellant’s script, which are missing in the trailer and there are certain elements of the story as reflected in the trailer, which are not to be found in the script of the appellant. Further another reason for not acceding to the prayer of the appellant for grant of ad interim injunction highlighted by the court was that, the trailer of the film “Lootcase” was released on 16th July, 2020 and the promos of the film “Lootcase” had been in the public domain since June, 2019. Thus according the court either which way, there was no justification on the part of the appellant for having approached the court on the eve of the release of the film “Lootcase”, slated to be released tomorrow, i.e. 31st July, 2020 and seeking injunction against such release.

Thus in view of the above the court concluded that there was no case, whatsoever, for grant of any interim injunction, staying the release of the film “Lootcase”, twenty-four hours before it is due for release and application was dismissed.

Acts/Rules/Orders: Copyright Act, 1957 – Section 61

Cases Referred: R.G. Anand vs. Delux Films and Ors.  /SC/0256/1978 /SC/0256/1978; MRF Limited vs. Metro Tyres Limited   2037/2019  2037/2019; Shree Venkatesh Films Pvt. Ltd. and Ors. vs. Vipul Amrutlal Shah and Ors.  /WB/1465/2009 /WB/1465/2009; Dashrath B. Rathod and Ors. vs. Fox Star Studios India Pvt. Ltd. and Ors.  /MH/0490/2017

The Court deemed it necessary to pass an ex parte ad-interim injunction in favour of the appellants and against the respondent

Indiamart Intermesh Limited   V/S   Akash Verma

The present suit is filed by the appellants Indiamart Intermesh Limited, in the Honourable High Court of Delhi before Honourable Justice Mukta Gupta, seeking permanent injunction against the respondents and restraining them from violating the rights of the appellants in their mark/ logo i.e. INDIAMART by infringing the rights of the appellants in the trademark and copyright as also passing off the activities of the respondents as that of the appellants’ thereby tarnishing the image of the appellants. [CS (COMM) 255/2020, I.A. 5590/2020 (under Order XXXIX Rule 1 and 2 CPC), I.A. 5591/2020 (under Section 151 CPC), I.A. 5592/2020, I.A. 5593/2020 (under Order XI Rule 1 (4) Commercial Courts Act), I.A. 5594/2020 and I.A. 5595/2020, Decided On: 14.07.2020]

 The appellants in the present suit have stated that they are running the business of integrated electronic business to business (B2B) portal, which provides an internet based marketplace with free and paid listings of various industry/product/services since the year 1996. In the year 1996 itself, the appellants adopted the mark INDIAMART and have been using the same for their goods and services. The appellants also have the registration of the mark INDIAMART in various classes besides registration of their domain name <indiamart.com>. The appellants run their Business to Business platform through their web portal www.indiamart.com and also run a mobile application whereby any company or individual can advertise their products and seek buyers for their goods and services.

According to the appellants they came to know from the members of the public about the illegal and fraudulent use of their name and trademark by a third party whose name from one of the duped customers based on the account in which the money was deposited was revealed as Akash Verma. Grievance of the members of the public who had approached the appellants was that in the name of INDIAMART, the respondent was using the website of the appellants to dupe the innocent customers. It is also a contention of the appellants that the respondent was also misleading the members of the general public by providing his fake identity card portraying himself as an employee of the appellants’ and using brochures, letter pads with the same ID and Logos as that of the appellants.

Hence the appellants filed the present suit seeking permanent injunction against the respondent restraining him from violating their rights in their trademark and copyright as also passing off the activities of the respondent as that of the appellants’ and thereby tarnishing the image of the appellants. Considering the averments made in the plaint and the applications and also the documents filed therewith, according to the court it was evident that it was not only a case of cheating the appellants but also the innocent gullible customers, who got trapped into the allurements of the respondent. Thus the court deemed it necessary to pass an ex parte ad-interim injunction in favour of the appellants and against the respondent.

  Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 3; Code of Civil Procedure, 1908 (CPC) – Section 151

To enable the learned District Judge to expeditiously comply with the directions in this judgment, the present court directed the parties to mark appearance before the District Court and the Registry was directed to re-transmit the records to the District Court

Sajeev Kumar   V/S   Rajeev

The present suit is filed by the appellant Sajeev Kumar, in the Honourable High Court of Kerala at Ernakulam before Honourable Justice Devan Ramachandran, seeking a decree of prohibitory injunction restraining the respondents from infringing the appellants’ registered trade mark. [F.A.O. No. 73 of 2019, Decided On: 14.07.2020]

 The appellant in the present suit is seeking a decree of prohibitory injunction restraining the respondnet from infringing his registered trademark. The appellant states that he had commenced his business under the name and style ‘Jewel Hut’ in the year 2004 and that he applied for registration of the trademark in such name, which finally led to its registration on 13.08.2009.

The appellant asserts that the respondent was his close relative and in such capacity was allowed to assist him, so as to enable him to learn the business. However, subsequently, their relationship got strained and in the year 2018, the respondent attempted to begin a business of his own. The appellant alleges that on 22.01.2019, the respondent commenced a similar business at Peroorkada Junction, adopting the name ‘Jewel Hunt’, which was indubitably intended to create confusion in the minds of the customers and to pass off his i.e. the respondent’s products as being sold by ‘Jewel Hut’. The appellant further submits that, he published a caution notice in Mathrubhumi Daily having circulation in Thiruvananthapuram District but since the respondent inaugurated his shop on 22.01.2019 with the deceptive name, the appellant was constrained to approach the District Court by filing the suit on 24.01.2019 for interim injunction against the respondent from using the name ‘Jewel Hunt’ in violation of the appellant’s registered trade mark, but the court issued an impugned order declining to grant the said relief.

The court in the present suit assessed the impugned order of the learned District Judge, wherein the learned judge states that since the shop of the respondent did not function in the vicinity of the appellant’s shop, the phonetic similarity of the names used by them would be of no concern to the appellant. It is further stated in the impugned order that ‘the possibility of confusion among the customers on account of phonetics similarity may arise when the respondent broadcasts or transmits the word ‘Jewel Hunt’ through radio or channel and that unless and until there is evidence to show that the respondent has made the advertisement through the radio or T.V. Channel, the possibility of misleading the consumers by way of phonetics similarities does not arise at all. The present court opined that these findings of the District Judge were ineluctable without any legal basis and were hinged on personal opinion, which could not be the sole basis for denial of an order, as sought for by the appellant. The court further asserted that the views of the earlier order cannot obtain the approval of this court, as it appeared even in the written statement of the respondent, that the appellant had obtained the trade mark as early as on 13.08.2009. Further according to the court at least prima facie, there were some merits in the contentions of the appellant that the word ‘Jewel Hut’ and ‘Jewel Hunt’ were similar, if not deceptively so. When the respondent had chosen to use the name ‘Jewel Hunt’ knowing fully well that the appellant was already in possession of the registered trade name ‘Jewel Hut’, it was up to the respondent to explain how he could have done so.

Thus in the afore circumstances and without entering into the merits of any of the disputes between the parties, the present court was of the firm view that the District Court must reconsider the application filed by the appellant, taking note of the various judgments of the Hon’ble Supreme Court and that of this Court and pass appropriate orders thereon, as expeditiously as possible, but not later than one month from the date of receipt of a copy of this judgment. The present court also stated that even though, at this time, the appellant insisted that this court issue an interim order of injunction against the respondent, the court was choosing not to do so, since it was sure that the learned District Judge would consider the application and pass appropriate orders thereon and that this court do not propose to influence its decision in any manner by granting any interim order.

Thus in order to enable the learned District Judge to expeditiously comply with the directions in this judgment, the present court directed the parties to mark appearance before the District Court on 03.08.2020 and the Registry was directed to re-transmit the records to the District Court urgently.

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

Cases Referred: Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.  /SC/0199/2001 /SC/0199/2001; Bengal Waterproof Limited vs. Bombay Waterproof  facturing Company and Ors.  /SC/0327/1997 /SC/0327/1997; Midas Hygiene Industries P. Ltd. and Ors. vs. Sudhir Bhatia and Ors.  /SC/0186/2004 /SC/0186/2004; Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel and Ors.  /SC/3725/2006 /SC/3725/2006; Power Control Appliances and Ors. vs. Sumeet Machines Pvt. Ltd. and Ors.  /SC/0646/1994

As the respondent was infringing on the registered trademark of the appellant, the suit is decreed with costs

Anees Ahmed V/S    Raja

The present suit is filed by the appellant M. Anees Ahmed, in the Honourable High Court of Madras before Honourable Justice C.V. Karthikeyan, seeking a permanent injunction restraining the respondents from in any manner infringing the appellants’ Trade Mark and Trading style. [C.S. No. 648 of 2019, O.A. Nos. 1009 and 1010 of 2019, Decided On: 24.07.2020]

 The appellant states that his great grandfather Hasan Baig was a cook in the kitchen of the Nawabs of Arcot. He became popular and thereafter started his own hotel under the name “AMBUR STAR BRIYANI” in the year 1890. Substantial goodwill was built particularly with respect to the extraordinary quality and unique flavor and taste in the preparation of Briyani. Since Ambur was a commercial business centre and also transit point for Bangalore, Tirupati, Salem, Pondicherry and Chennai, the hotel Ambur Star Briyani acquired extensive popularity. The appellants have also registered the Trade Mark Ambur Star Briyani on 01.08.2018.

The grievance of the appellant is that the respondent has started a hotel business on 27.10.2019 under the name “DINDIGUL STAR BRIYANI”. It is claimed mainly is the contention of the appellants that the respondent is attempting to deceive the  general public that the hotel Dindigul Star Briyani is actually part of the business of Ambur Star Briyani. According to the even the red sofa/chair and white table have also been copied by the respondent.

The appellant have also raised an apprehension that their hard-earned reputation would be spoiled by the substandard food served by the respondent. It is in view of these facts that the appellant has filed the suit seeking the relief of permanent injunction to protect the Trade Mark and trading style “AMBUR STAR BRIYANI” and also seeking accounts of profits and to surrender the stock of unused offending goods and also for costs of the suit.

The respondents were served and had chosen not to participate in the judicial proceedings and accordingly were set ex parte on 28.11.2019.

The court on the present suit asserted that it was clear that the respondent was infringing on the registered trademark of the appellant. Thus in view of all these facts, the suit is decreed with costs as assessed under Section 35 of the amended CPC along with the following reliefs i.e. granting a permanent injunction restraining the respondent from in any manner infringing or passing off the appellant’s trademark and trading style “AMBUR STAR BRIYANI” by using the offending trademark and trading style “STAR BRIYANI” or any other mark or marks which are similar or in any way deceptively similar or a colourable imitation of the appellant’s trademark  “AMBUR STAR BRIYANI”.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35; Trade Marks Act, 1999 – Section 23(2)

The appellants were maintaining very good reputation and goodwill with respect to their goods and if the respondents were allowed to use the mark TEXMO, it would ultimately affect the goodwill and reputation of the appellants

Aqua Pump Industries   V/S   N. Raju

The present suit is filed by the appellants Aqua Pump Industries, in the Honourable High Court of Madras before Honourable Justice P. Velmurugan, seeking a permanent injunction restraining the respondents or anyone claiming through them from  facturing, selling, offering and advertising for sale using the Trade Mark TEXMO. [C C.S. No. 956 of 2005, Decided On: 23.07.2020]

 The appellants are  manufactures of different types of electrical motors and pumps, since 01.04.1974. The appellants state that they became registered proprietors of the trademark TEXMO by virtue of the order passed by the Registrar of Trade Mark on 20.04.1998. The appellants have been extensively using the trademark TEXMO as registered all over India continuously and substantially and have also acquired enormous goodwill in respect of the goods on which TEXMO trademarks are affixed.

The appellants state that they came to know from the Trade Mark Journal No. 1327 (S) 4 dated 24.01.2005 that the respondents had filed a trademark application for the registration of the trademark TEXMO and had also claimed proprietary right to use the mark TEXMO for all types of HDPE pipes, polythene pipes & PVC pipes used for irrigational purposes included in class 17. The appellants state that they filed objections to the said applications for registration of the trademark and that the objections were pending disposal before the Trade Mark Registry, Chennai.

According to the appellants the respondent have adopted the identical trademark TEXMO solely for the purpose of exploiting the commercial goodwill attached to the mark TEXMO for pipes, polythene pipes and PVC pipes used for all irrigational  purposes. The appellants state that the respondents know very well the quality pumps and motor  manufactured and marketed by the appellants and are hence using the trademark TEXMO with respect to the same goods that are sold for the similar purposes. It is the contention of the appellants that the respondents are knowingly exploiting the commercial goodwill attached to the appellants’ trademark TEXMO. According to the appellants, it is a calculated attempt to infringe the registered trademark of the appellants and passing off the respondents’ goods as the goods of the appellants.

Hence the appellants filed the present suit for permanent injunction restraining the respondents or anyone claiming through them of  facturing, selling, offering and advertising for sale products using the trademark TEXMO. The respondents in the suit had chosen not to appear before the court and file the written statement and remained ex parte. Further, despite the suit summons being served on them they did not appear before this court.

The court in the present suit stated that on perusal of the averments made in the plaint and also after the examination of the documents filed, it was clear that the appellants were  manufacturing different types of electrical motors and pumps and had also registered the trademark TEXMO. Further the respondents had filed a Trade Mark application for the registration of the trademark TEXMO before the Registrar of Trademark and the same was pending. According to the court the appellants were maintaining very good reputation and goodwill with respect to their goods and if the respondents were allowed to use the mark TEXMO, it would ultimately affect the goodwill and reputation of the appellants. Thus considering the aforesaid circumstances, the court was of the view that the appellants were entitled to get decree as prayed for.

The suit was decreed with costs as assessed under Section 35 of the amended CPC and a permanent injunction restraining the respondents, from in any manner infringing or passing off the appellants’ trademark and trading style

Thalappakatti Naidu Anandha Vilas Biriyani Hotel V/S Thalapakattu Biriyani

The present suit is filed by the appellants Thalappakatti Naidu Anandha Vilas Biriyani Hotel, in the Honourable High Court of Madras before Honourable Justice C.V. Karthikeyan, seeking permanent injunction restraining the respondents from  in any manner infringing the appellant’s Trade Mark and Trading style. [C.S. No. 300 of 2019, O.A. Nos. 480 and 481 of 2019, Decided On: 24.07.2020]

 The appellants Thalappakatti Naidu Anandha Vilas Biriyani Hotel, Chennai, have filed the present suit claiming that during 1957, Mr. P. Nagasamy Naidu alias Thalappakatti Naidu, had commenced hotel business for preparation and serving Biriyani at Dindigul. It is claimed that the grandfather of the appellant sported a Thalappa and was therefore known as Thalappakatti Naidu and the hotel was known as Thalappakatti Naidu Anandha Vilas Biriyani Hotel. According to the appellants their hotel business has acquired enormous popularity for the quality, flavour and the preparation of Biriyani in the name of Thalappakatti Naidu Biriyani. The appellants further claim that the hotel business has acquired extensive goodwill and reputation and is also very famous and has been referred in several Tamil magazines.

The appellants have claimed that they are the prior users and have been using the aforementioned name and mark atleast from the year 1999, though there is evidence to show that they have been using it from the year 1957. The appellants also highlighted that they have on occasions issued notices to various users for offending their trademark Thalappakattu and in several suits the court had granted protection to the appellants from infringement.

It is the contention of the appellants that the respondents have adopted an identical trademark and trading style “Thalappakatti”, to deceive the general public and under these circumstances, the appellants have approached the Court seeking the reliefs.

The respondents though served, have decided not to participate in the judicial proceedings and were set ex-parte on 06.01.2020. In view of the facts presented before the court, the suit was decreed with costs as assessed under Section 35 of the amended CPC along with the following reliefs namely, a permanent injunction restraining the respondents, from in any manner infringing or passing off the appellants’ trademark and trading style “Thalappakatti” “Thalapakattu” or any other mark or marks which are similar or in any way deceptively similar or a colourable imitation of the appellants’ trademark “Thalappakatti Biriyani hotel”.

 

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

The prayer made by the appellants in the petition is allowed and the trademark no. 2263031 is removed from the Register

Bloomberg Finance L.P.   V/S   Bloomberg Developers Pvt. Ltd.

The present suit is filed by the appellants Bloomberg Finance L.P., before the Intellectual Property Appellate Board Chennai, before Honourable Justice Manmohan Singh (Chairman) and Dr. Onkar Nath Singh, Member (T), seeking removal of trademark from the register or rectification of the register. [ORA/290/2012/TM/CH, Decided On: 21.08.2020]

 

The current suit has been filed for removal of trademark from the register or rectification of the register with reference to Registration No. 2263031 dated 9 January 2012 for the trademark BLOOMBERG (Label) in respect of “services for providing food and drink; temporary accommodation in Class 43 registered in the name of BLOOMBERG DEVELOPERS PRIVATE LIMITED.

The appellants for Rectification herein, are a multinational financial news corporation and a trusted leader in global business and financial information, founded in 1981 by Mr. Michael R. Bloomberg. The appellants’ predecessor adopted and first used the expression “BLOOMBERG” in 1987 as its trademark, trade name, and corporate identity. The appellants are a subsidiary of Bloomberg L.P. The appellants state that their products and services reach millions of people worldwide through a variety of international, multi-lingual media outlets, including BLOOMBERG TELEVISION and BLOOMBERG RADIO programming, BLOOMBERG NEWS and the highly popular website at www.bloomberg.com. In India, “Bloomberg UTV” was launched in 2008 as a 24-hour English language business and financial broadcast news outlet. Further in India, the appellants are using the BLOOMBERG trademark at least since 1996, when their wholly-owned Indian subsidiary Bloomberg Data Services (India) Private Ltd. was established. Also the appellants are the proprietor of numerous BLOOMBERG / BLOOMBERG formative marks that are either registered or pending in various classes, the earliest of which was registered since 1994.

It is the contention of the appellants that the Registered Proprietor, herein the respondent has obtained registration of the impugned mark BLOOMBERG by making false claims of proprietorship and misleading statements. The impugned mark is identical to the appellants’ prior adopted, registered and well-known trademark BLOOMBERG, and deceptively similar to the appellants’ other BLOOMBERG formative trademarks. According to the appellants, the Registered Proprietor is wrongly and unlawfully claiming proprietorship of the mark which actually belongs to the appellants. The appellants have highlighted that the impugned registered trademark is already causing and will continue to cause deception among the public, including the likelihood of blind association with the appellants’ products and services. Hence, according to the appellants, unless the subject trademark is expunged from the trademark register forthwith, the impugned registered trademark being identical to the appellants’ stated well-known marks stands in utter violation of Sections 11(2) and 11(3) of the Trade Marks Act.

The appellants have also filed the suit infringement before the High Court and have got the decree for permanent injunction against the respondents, restraining them from using the mark Bloomberg in any manner. Thus in the light of the above, the prayer made by the appellants in the petition is allowed and the trademark No. 2263031 is removed from the Register.

As both rival trademarks were neither deceptively similar nor identical, all grounds raised were unnecessary and irrelevant and consequently the petition was dismissed

Red Bull AG   V/S      Reddy’s Laboratories Limited

The present suit is filed by the appellants Red Bull AG, before the Intellectual Property Appellate Board Chennai, before Honourable Justice Manmohan Singh (Chairman) and Dr. Onkar Nath Singh, Member (T), seeking removal of trade mark no. 1058481 in class 09 registered in the name of the DR. Reddy’s Laboratories Limited. [M.P. No. 49/2015 in ORA/262/2015/TM/CHN, Decided On: 25.08.2020]

 The appellants state that they have honestly adopted the mark/tagline “GIVES YOU WINGS” and the same has been used in conjunction with the appellant’s well-known Red Bull trademarks and the tagline “GIVES YOU WINGS” is used in promotional and advertising material as well. In addition, the appellants have also adopted the device of wings in their various print and media commercials showing animated characters  which include animals, human, etc. with wings. The appellants state that they are pioneer in using such a unique concept for their promotional and advertising material and due to the extensive publicity, the concept of an animal/human acquiring wings after consumption of the Red Bull Energy Drink has become exclusively associated with Red Bull. The appellants state that they are the registered proprietors of the mark GIVES YOU WINGS in India.

According to the appellants, recently their attention was drawn to a trademark under registration no. 1058481 dated 12th November, 2001 for the trademark YOUR WINGS TO LIFE (Word) (hereinafter referred to as the ‘impugned mark’) in the name of Dr. Reddy’s Laboratories Limited, in respect of goods under class 09.

The appellants state that the impugned registration obtained by the respondents was an unwarranted hardship on the appellants, who had an honest and bona fide use of the trademark GIVES YOU WING of which the appellants were the rightful proprietor throughout the world. The respondents in interest and title have not used the trademark YOUR WINGS TO LIFE for the goods in respect of which it stands registered since almost 15 years and does not have any intention to do the same. According to the appellants it was obvious that such registration had been obtained malafidely with the ulterior motive to make undue gain from the appellants. Hence the present application has been filed by the appellants for removal of trademark no. 1058481 in class 09 registered in the name of the DR. Reddy’s Laboratories Limited.

The board in the present suit stated that both rival trademarks were neither deceptively similar nor identical with. Thus as both the trademarks were not similar, in view of the board the appellants were not aggrieved within the meaning of section 47 of the Trade Marks Act. Hence all grounds raised were unnecessary and irrelevant and consequently the petition was dismissed.

 Acts/Rules/Orders: Trade Marks Act, 1999 – Section 47, Trade Marks Act, 1999 – Section 47 (1)

A prima facie case had been made out by the appellants and the balance of convenience too was in their favour

Aqua Pump Industries   V/S   Ashok Kumar Jaiswal

The present suit is filed by the appellants Aqua Pump Industries, in the Honourable High Court of Madras before Honourable Justice C.V. Karthikeyan, seeking protection of the registered mark ‘AQUA GROUP’. [O.A. Nos. 564 and 565 of 2020 in C.S. No. 299 of 2020, Decided On: 05.11.2020]

 The appellants in the present suit claim the right over the registered trademark ‘AQUA GROUP’ and in support of their statement have also filed the Trademark Registration drawing specific attention to the registration of the word mark ‘AQUA GROUP’. The appellants state that they are  facturers of different types of Electric Motors and Pumps. According to the appellants they adopted the unique mark ‘AQUA GROUP’ and have been continuously and uninterruptedly using the mark since its adoption.

The appellants claim that, the mark ‘AQUA GROUP’ exclusively belongs to them and that they have also built up substantial goodwill and reputation. It is the contention of the appellants that the respondents have been using the mark ‘AQUA GROUP INDUSTRIES’ for their products and that they have been trading the products under the name ‘AQUA GROUP INDUSTRIES’. This is the cause for institution of suit, seeking protection of the registered mark ‘AQUA GROUP’. The appellants have highlighted that the respondents had actually applied for registration of the word mark ‘AQUA GROUP INDUSTRIES’ and that the status of the same is “objected”, also the Trade Mark Registry had  not registered the said mark. The appellants have further stated that they have no objection for the respondents using the mark ‘Aqua Marshal’, but that the respondents cannot pass off their products under the name ‘AQUA GROUP INDUSTRIES’, particularly, when the mark ‘AQUA GROUP’ has been registered in favour of the appellants.

The court in the present suit concluded that a prima facie case had been made out by the appellants and in view of the goodwill and reputation established by the appellants, the court held that the balance of convenience too was in favour of the appellants and that they would be put to loss and hardship, if the respondents continued to market their products under the name ‘AQUA GROUP INDUSTRIES’. Thus in view of these facts, an order of interim injunction as prayed for was granted by the court.

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

As the appellants had made out a case for grant of relief, accordingly, the suit was decreed as prayed for with costs

 –A.D. Padmasingh Isaac   V/S   AACHI’S Village Restaurant

The present suit is filed by the appellants A.D. Padmasingh Isaac, in the Honourable High Court of Madras before Honourable Justice C.V. Karthikeyan, seeking a Judgment and Decree against the respondents primarily from using the registered trademark ‘Aachi’ and for consequential reliefs. [C.S. No. 132 of 2020, O.A. Nos. 179, 180 of 2020 and A. No. 1236 of 2020, Decided On: 23.11.2020]

 The appellants have filed the present suit under Sections 27(2), 29, 134 and 135 of the Trade Marks Act, 1999, read with the relevant provisions of the Original Side Rules of the Madras High Court and the Code of Civil Procedure, 1908, seeking a Judgment and Decree against the respondents, primarily from using the registered trademark ‘Aachi’ and for consequential reliefs.

According to the appellants they are the proprietor of the trademark ‘Aachi’ and claim that they have registered the word mark ‘Aachi’ both in India and several other countries. The appellants state that they have been using the mark from the year 1995 and also claim that substantial goodwill and reputation has been established. The appellants have obtained registration of the trademark ‘Aachi Chettinad Restaurant’ with respect to Food Preparation of Human Consumption, coffee, tea, and such other beverages and also preparations made from bread, biscuits, cakes, pastry and confectionery, ice and also have obtained registration for the mark of the ‘Aachi Kitchen’ in respect of restaurants, providing of food and drink and such other services.

The respondents are said to be running the hotel under the name ‘Aachi’s Village Restaurant. It is the contention of the appellants that the name of the respondent’s hotel is identical to the appellants’ registered trade mark. According to the appellants that respondents have deliberately copied their trade mark with the intention to encroach the goodwill and reputation created by the appellants. It is also been stated that the general public would mistake the restaurant of the respondents to be an undertaking of the appellants’. Thus it is under these circumstances that the suit has been filed seeking the relief as stated above.

The respondents had been served with the suit summons but since there was no representation, they were set ex parte on 16.10.2020. The court in the present suit stated that in view of the registrations of the trademark ‘Aachi Kitchen’ and ‘Aachi Chettinad Restaurant’, the continuation of the respondents’ restaurant using the mark ‘Aachi’ would cause confusion in the minds of the general public who would certainly get the impression that the restaurant of the respondents was actually a branch or another undertaking of the appellants. Further though the suit summons had been served, the respondents had taken a conscious decision to abstain from participating in the judicial proceeding. Thus the balance of convenience was certainly in favour of the appellants.

Thus the court concluded that the appellants had made out a case for grant of relief sought in the suit. Accordingly, the suit was decreed as prayed for, with costs.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35; Trade Marks Act, 1999 – Section 134, Trade Marks Act, 1999 – Section 135, Trade Marks Act, 1999 – Section 27(2), Trade Marks Act, 1999 – Section 29

The appellants were likely to suffer irreparable injury and the balance of convenience too was in favour of the appellants hence an ad-interim order against the respondents was granted

Parle Products Pvt. Ltd.   V/S   Future Consumer Ltd.

The present suit is filed by the appellants Parle Products Pvt. Ltd., in the Honourable High Court of Bombay before Honourable Justice K.R. Shriram, pressing for ad- interim reliefs against the respondents for infringement of the appellant’s copyright combined with a cause of action for passing off. [Interim Application (L) No. 4133 of 2020 in Commercial IP Suit (L) No. 4130 of 2020, Decided On: 09.10.2020]

 It is stated that appellants are carrying on the business of  manufacturing and selling of biscuits including but not limited to confectionaries, wafers, cakes etc. and that they have been recognized as the most chosen fast-moving consumer goods or FMCG brand since 2010. According to the appellants they began  manufacturing and marketing biscuits under the marks “MONACO”,”KRACKJACK” and “HIDE & SEEK”, in the years 1939, 1971 and 1996 respectively. Further to secure their statutory rights in the “MONACO”, “KRACKJACK” and “HIDE & SEEK” trademarks the appellants applied for and secured trademark registration in respect of the same under the Trade Marks Act, 1999.

The appellants state that in or about the months of July 2013, July 2014 and May 2017 the appellants created the latest packaging used in respect of their “MONACO”, “KRACKJACK” and “HIDE & SEEK” products, respectively. The appellants also state that they have been openly, continuously and extensively using their packaging and have taken efforts to popularize their products bearing the packaging.

It is stated that in the second week of September 2020, the appellants came across the respondents’ impugned biscuits bearing the marks “CrackO”, “Kracker King and “Peek- a-Boo” and having trade dresses/packaging which were identical and deceptively similar to or a substantial reproduction of appellants’ packaging.

It is the contention of the appellants that the respondents have intentionally stocked their impugned products on the shelves alongside the appellant’s products. According to the appellants a bare perusal of the respondents’ impugned products bearing the impugned trade dresses/packaging clearly reveals that the respondents have copied each and every element of the appellants’ packaging including the layout, colour combination, placement and all distinctive elements and features to the last millimeter. Hence it is submitted by the appellants that the respondent’s use of the impugned trade dresses/packaging amounts to infringement of the appellants’ copyright and passing off.

The court in the present suit stated that having heard the submissions in detail and perused the record prima facie it appeared that the appellants were the owners of the copyright in the packaging used in respect of their “MONACO”, “KRACKJACK” and “HIDE & SEEK” products and had acquired substantial goodwill and reputation in the same. A comparison of the rival products hardly left any doubt about the manner in which the respondents had blatantly copied the appellant’s packaging/labels. The court asserted that the labels/ packaging of the respondents’ “CrackO”, “Kracker King” and “Peek-a- Boo” products were a reproduction of appellants’ packaging used in respect of their “MONACO”, “KRACKJACK” and “HIDE & SEEK” products. According to the court it was apparent that respondents must have had the appellants’ products before them while designing the impugned packaging as the similarity in the rival packaging/labels could not be a matter of coincidence.

Thus in these circumstances, according to the court a strong prima facie case for the grant of ad-interim reliefs was made out. Unless reliefs as prayed for were granted, the appellants were likely to suffer irreparable injury. The court concluded that the balance of convenience too was in favour of the appellants and that there were no equities in favour of the respondents. Accordingly an ad-interim order against the respondents was granted.

Further in view of the COVID-19 pandemic and the protective measures enforced by the Government, the court appointed Adv. Shrinivas Bobde as the Court Commissioner and as representative of the Court Receiver, Bombay High Court to enter in the premises of the respondents at any time of the day or night (even on Sundays and holidays), to seize and take charge and control of the impugned products bearing the impugned packaging, records (printed and electronic), account books showing  facture, stock and sale of the impugned goods bearing the impugned packaging in possession and control of the respondents. The Court Commissioner was to submit his report to this court on or before 27th November 2020. Further the respondents were to file their Affidavit-in- Reply within four weeks and Rejoinder if any within two weeks thereafter.

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

The respondent’s mark “FACEBAKE” was deceptively similar to the appellants’ trademark hence the respondent was restrained from using the mark

Facebook, INC   V/S   Noufel Malol

The present suit is filed by the appellants Facebook, INC, in the Honourable High Court of Delhi before Honourable Justice Rajiv Shakdher, stating that the respondent was degrading the appellant’s well-known trademark and causing confusion in the minds of the public. [CS (COMM.) 499/2020, Decided On: 12.11.2020]

The appellants in the present suit aver that they have the exclusive statutory and common law rights in various registered word marks and device marks, such as FACEBOOK and which contain inherently distinctive ‘f’ logos.

 

The appellants claim that the respondent, who is the proprietor of a concern going by the name M/s. Facebake, is engaging in the business of selling confectionaries such as cakes, biscuits, cookies etcetera and articles like watches, under the mark “FACEBAKE” and also operating a website i.e. www.facebake.in. It is the contention of the appellants that the respondent is degrading their well-known trademark and is causing confusion in the minds of the public at large as to the source of the respondents’ products.

The court in the present suit stated that having heard the appellants, it was of the view that the appellants had, at least at this stage, established a prima facie case in their favour. Further given the fact that the appellant’s trademark “FACEBOOK” was known world-over, the balance of convenience also appeared to be in favour of the appellants. The court stated that if interim relief is not granted, the appellant’s legal rights and business interests will get impacted. Accordingly, the court issued summons in the suit and notice in the captioned application to the respondents via all means including email. Also in the meanwhile, the respondent, his agents and employees were restrained from using the mark “FACEBAKE” or any other mark, which was deceptively similar to the appellants’ trademark. Furthermore, the respondent was also restrained from operating his website i.e. www.facebake.in.

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

The respondents, who are in a similar line of business, cannot be permitted to infringe the registered trademark of the appellants’ by marketing their soaps under the name CHANDRIKA

Wipro Enterprises Ltd.   V/S   Kerala Khadi and Village Industries

The present suit is filed by the appellants Wipro Enterprises Limited, in the Honourable High Court of Madras before Honourable Justice C.V. Karthikeyan, seeking a Judgment and Decree against the respondents for permanent injunction restraining them from  manufacturing, selling and advertising their products of soaps and toiletry provisions under the Registered Trade Mark CHANDRIKA. [C.S. No. 580 of 2011, Decided On: 29.10.2020]

 The appellants have been filed the suit taking advantage of Sections 27(2), 29, 134 and 135 of the Trade Marks Act, 1999 read with relevant provisions of the Original Side Rules and the Code of Civil Procedure seeking a Judgment and Decree against the respondents for permanent injunction restraining them from  manufacturing, selling, advertising or offering for sale their products of soaps and toiletry provisions under the Registered Trade Mark CHANDRIKA and also from passing off their products as if they are the products of the appellants and for consequential reliefs of surrendering to the appellants all materials under the name CHANDRIKA and for preliminary decree for accounts and for costs of the suit.

 

The appellants are a Company incorporated under the Companies Act 1956 carrying on business for almost 60 years in  manufacture and sale of a wide range of retail consumer products and have been marketing their soaps and other products under the Trade mark CHANDRIKA.  It is the contention of the appellants that the respondents have been using the appellants’ trademark CHANDRIKA for their own product, namely, soaps. Thus claiming that the trademark of the appellants’ has been directly infringed and that the respondents are also passing off their products as if they are the products of the appellants’, the suit has been filed. The suit summon was issued to the respondents but as they did not appear, they were set ex-parte on 16.08.2019.

In case of the present suit, in view of the overwhelming oral and documentary evidence proving registration of the trademark CHANDRIKA and also the usage of the appellants of the trademark CHANDRIKA, the court asserted that, the respondents, who were in a similar line of business cannot be permitted to infringe the registered trademark of the appellants’ by marketing their soaps under the name CHANDRIKA. Accordingly, the suit was decreed as prayed for, with costs.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35; Trade Marks Act, 1999 – Section 134, Trade Marks Act, 1999 – Section 135, Trade Marks Act, 1999 – Section 27(2), Trade Marks Act, 1999 – Section 29

The appellant having permitted the shooting of the movie Chakra to go on cannot after its completion come forward with the application hence the application was dismissed

Ravindran V/S M. Anandan

The present suit is filed by the appellants R. Ravindran, in the Honourable High Court of Madras before Honourable Justice P.T. Asha, for an interim injunction restraining the respondent from directing the story and script of a film. [O.A. No. 430 of 2020 in A. No. 2105 of 2020, Decided On: 15.10.2020]

 It is case of the appellant, who is the distributor based out of Chennai that the respondent herein, who is a Debutant Director had approached him with a story and script and liking the concept put forward by the respondent, the appellant had entered into a Director engagement agreement dated 29.08.2018 with him. The appellant had paid a sum of Rs. 1,00,000/- by way of cheque on the same date.

The appellant contends that all of a sudden to his shock and surprise, the trailer of the film Chakra was released on 27.06.2020. The storyline was the same as the one agreed between him and the respondent under the Director Engagement Agreement dated 29.08.2018. The film was also directed by the respondent herein, which according to the appellant was in totally breach of the terms of the Director Engagement Agreement, dated 29.08.2018. The appellant states that after having entered into the agreement, the respondent had clandestinely entered into an agreement with the production unit of the actor and has proceeded to direct the movie. Therefore, it is further submitted that the appellant is entitled to the relief as prayed for. The court in the present suit stated that the appellant had paid a sum of Rs. 1,00,000/- as claimed by them in their affidavit and beyond a one-line story nothing further has moved. But the fact that the movie, Chakra was due for shooting had been published in the Chennai Times, dated 14.09.2019. A gist of the storyline was also provided. Further The Indian Express in its publication dated 16.11.2019 had stated that the shooting was well in progress. According to the court, the applicant is a producer and distributor of repute and by no stretch of imagination can he feign ignorance about the news. The appellant having permitted the shooting of the movie Chakra to go on cannot after its completion come forward with this application. Further the affidavit is totally bereft of averments required for granting an order of attachment. Hence as a result, the application was dismissed.

 Acts/Rules/Orders: Copyright Act, 1957 – Section 18

The suit was decreed against the respondents with costs as they had shown scant regard for the sanctity of the judicial proceedings

Vijay Vision   V/S   Zee Telugu, Zee Tele Films Ltd.

The present suit is filed by the appellants Vijay Vision, in the Honourable High Court of Madras before Honourable Justice C.V. Karthikeyan, seeking a declaration that the appellants are the copyright owner of the movies “Ranarangam”, “Kumkumathilakam” and “Dharmathamudu”. [C.S. No. 862 of 2008, Decided On: 05.11.2020]

 The present suit has been filed by the appellants seeking a declaration that the appellants are the copyright owner of the movies “Ranarangam”, “Kumkumathilakam” and “Dharmathamudu” with exploitation rights for commercial and non – commercial purposes for theatrical and non-theatrical medias, including Video rights, world Satellite rights, Cable TV rights, DVD and such other rights including web based technology rights and also broadcasting rights in All India Radio and other stations and any other rights including the future scientific advancement and technological rights for the territories of entire world including India for a period of 99 years from 31.01.2001 and for a permanent injunction restraining the respondents from infringing the rights of the appellants over the said movies and for costs of the suit.

According to the appellants the respondents were the producer of the Telugu movies “Ranarangam”, “Kumkumathilakam” and “Dharmathamudu” and on 31.01.2001 by way of a written agreement, the respondents had assigned their exclusive copyrights in the said movies in favour of the appellants for exploitation in all forms. The contention of the appellants is that the respondents had illegally telecasted one of the movies, namely, “Ranarangam”. Thus according to the appellants as they had the exclusive copyright over the said movies, the respondents should be prevented from telecasting the same. It is under these circumstances that the suit has been filed.

The court in the present suit sated that in the instant case, the respondents were the producer and the first owner of the copyright of the three Telugu movies mentioned above. A copyright owner can assign such copyright under Section 18 of the Act and in the present case, such assignment had been effected and the appellants had become the copyright owner with respect to the three movies, “Ranarangam”, “Kumkumathilakam” and “Dharmathamudu”.

The court concluded that the suit was decreed as prayed for as against the respondents with costs. In so far as the costs were concerned, in view of the fact that the respondents had shown scant regard for the sanctity of the judicial proceedings by deliberately avoiding appearance, the court held the appellants entitled to costs as determined under the amended Section 35 of the Code of Civil Procedure as applicable to the Commercial Division of the High Court. Further the registry was delegated by the Court to determine the costs as per the Bill of Costs submitted by the appellants in accordance with Section 35 CPC as amended by the Commercial Courts Act 2015. The appellants were specifically entitled to the fees and expenses of the witnesses, the legal fees and expenses incurred and for any other expenses incurred in connection with the judicial proceedings and also for recovery of the actual Court fees paid into Court.

 

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Section 35; Copyright Act, 1957 – Section 13, Copyright Act, 1957 – Section 17, Copyright Act, 1957 – Section 18, Copyright Act, 1957 – Section 2(d), Copyright Act, 1957 – Section 2(uu)

Keeping in view the balance of convenience lying in favour of the appellants, a limited ad-interim injunction was required to be passed

Whitehat Education Technology Pvt. Ltd. V/S Aniruddha Malpani

 The present suit is filed by the appellants Whitehat Education Technology Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Mukta Gupta, seeking permanent injunction restraining the respondents from defamation, infringement of trademark, dilution and tarnishing of trademarks, disparagement, damages, unfair competition etc. [CS (COMM) 518/2020, I.A. 10952/2020 (under Order XXXIX Rule 1, 2 CPC), I.A. 10953, 10954/2020 (under Order XI Rule 1 (4) Commercial Courts Act) and I.A. 10955/2020, Decided On: 24.11.2020]

 The present suit has been filed by the appellants Whitehat Education Technology Private Limited (in short, ‘Whitehat’) impleading Aniruddha Malpani as the respondent, inter alia¸ seeking permanent injunction restraining the respondent from defamation, infringement of trademark, dilution and tarnishing of trademarks, disparagement, damages, unfair competition etc.

The appellants claim to be a start-up company teaching children the Coding, helping them build Games, Animations and Apps. According to the appellants, they have developed a Proprietary Coding Curriculum focused on product creation and imparting lessons through live, interactive online classes. The appellants state that, free classes are given to the students and on satisfaction, the students can then enrol themselves where there is no time-limit for the classes and even after availing few classes, if the students want to opt out, the balance fee is refunded on the same day. Further even the teachers recruited by the appellants are vetted by a rigorous 4-step selection process to intake only top 1% of applicants and are assessed on their ability to deliver classes, to manage students of the corresponding age group and to teach the contents.

As in November 2020, the appellants claim that they have over 9800 employees, out of which, 5300 are salespersons besides 11000 teachers. The appellants also own and operate a website under the domain name www.whitehatjr.com registered on 23rd May, 2018 and claim to have a strong presence on the social media. The appellants have registered trademarks ‘WHITE HAT JR’ both as a word mark and device marks.

According to the appellants, the respondent is an IVF specialist and founder of the angel investment firm Malpani Ventures and has invested in several start-ups dealing in educational technology such as ‘Bibox’, which also appears to provide services to students aged 8-14 years on innovative subjects like animation, website development and app development, as well as online training in Mathematics and Science. It is the contention of the appellants that, in late September 2020, the appellants came across the respondents’ posts on Twitter referring to the registered trademarks of the appellants’ ‘WHITE HAT JR’ and issuing statements/posts amounting to defamation/disparagement/trademarks’ infringements, dilution and tarnishment of their trademarks.

The respondent in the suit has claimed that the present suit is not maintainable before this court for want of territorial jurisdiction, and has further stated that he has not caused any defamation or derogation for which the respondent needs to file his affidavit to present the correct facts. Keeping in view the facts of the case, the court concluded that a limited ad-interim injunction was required to be passed on the prima facie case shown by the appellants, resulting in an irreparable loss to the appellants, as also keeping in view the balance of convenience lying in favour of the appellants. Accordingly, an ad-interim injunction was granted in favour of the appellants and against the respondents, restraining the respondent from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the appellants, their management or the employees. Further, the respondent was directed to take down the some of the tweets within 48 hours of the passing of this order.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order VII Rule 10; Code of Civil Procedure, 1908 (CPC) – Order VII Rule 11; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2

The respondents were restrained by the temporary order and injunction from using the impugned mark or any other marks containing the word “SERO”

Savla Corporation    V/S        Aristo Apparels

The present suit is filed by the appellants Savla Corporation, in the Honourable High Court of Bombay before Honourable Justice G.S. Patel, seeking an action in trademark and copyright infringement combined with a cause of action in passing off. [Decided On: 16.12.2020]

 The present suit is an action in trademark and copyright infringement combined with a cause of action in passing off. The appellants in the suit are a registered partnership firm engaged in  facturing garments and fashion apparels, including readymade men’s wear. They started their business in 1971. The appellants claims to be a popular fashion brand and say that they have carved out a niche for themselves in this industry for the quality of their products including shirts, trousers and denim attire. The appellants have various trademarks such as “SERO”, “FREEZONE”, “FUNTONES”, and “MARRY ME” and they use these marks in India and in certain overseas jurisdictions as well.

The respondents in the suit, Aristo Apparels are a sole proprietorship concern of one Kanji Patel, also engaged in the same industry.The contest in this matter is about the two rival marks, SERO, registered to the appellants and the mark or label adopted by the respondents i.e. ‘SERON’.The appellants’ mark has a tilted oval device with a white border. In this is inset a stylized cursive ‘S’ looping on itself, one part of it is shaded a deep red and another part is in deep blue and the respondents’ artwork, inset in circle – albeit with a black border – and a stylized cursive ‘S’ shape has one part of it in deep red and the rest is either in black or deep blue.

It is the contention of the appellants that the respondents were aware of the appellant’s mark. In September 2020, the appellants came to learn of the respondent’s activities in selling products in the same category under the impugned mark SERON. The appellant’s marketing team made a trap purchase on 19th September 2020. On a further search in the records of the Register of Trade Marks, the appellants saw that the respondents had applied for registration of the SERON label mark in class 25, the very class in which the appellants enjoys prior registration.

The court in the present case asserted that there was no doubt that the appellants had made out a sufficient prima facie case. The respondent’s mark was confusingly and deceptively similar to that of the appellants’ and prima facie, it appeared that the respondents were trading on the appellant’s goodwill and reputation. According to the court there was a definite structural, phonetic and visual similarity between the appellant’s mark and the respondent’s mark. Further there was no doubt that the artwork in which the appellants were enjoying copyright had been lifted and used with only the most minor and irrelevant modifications by the respondents.

Thus an ad-interim order was passed and the respondents were restrained by the temporary order and injunction of this Honourable Court, from using in any manner directly or indirectly the impugned mark or any other marks containing the word “SERO” together or by itself or with any other word or device. The respondents were also restrained from substantially reproducing, copying, imitating by any means and medium, the artistic work in which copyright subsists in favour of the appellants so as  to prevent infringement of the copyright in the artistic work vesting with the appellants. Further a Court Receiver/Commissioner, High Court, Bombay was to be appointed with power to break open and take physical possession thereof from the respondent of all  the goods containing the impugned mark and was to submit report to this court by 23rd January 2021.

 

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