09 Aug LANDMARK TRADEMARK CASES IN 2022
A mere casual intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trademark for specific article or goods
Blue Dart Express Ltd. V/S Hindustan Petroleum Corp Ltd.
The present suit is filed by the appellants Blue Dart Express Limited, before the Deputy Registrar of Trade Marks, Mumbai, Mr. N. Babu, seeking registration of trademark SMART (word per se) [Decided On: 14.02.2022]
On 26th June, 2000 the appellants Blue Dart Express Limited filed an application, seeking registration of trademark SMART (word per se) under no. 934798 in class 9 in respect of “electric switches, switch gears, cut-outs, plugs, electrical and electronic apparatus, battery charges, films etc.” The appellants have claimed use of the mark since 30/06/1996. The said application was advertised in the trade marks journal no. 1330 dated 15/05/2005 which was made available to the public on 21/09/2005.
On 30/11/2005, the respondents Hindustan Petroleum Corporation Ltd. filed a Notice of Opposition objecting to the registration of trademark SMART. The said Notice of Opposition was served to the appellants and the appellants filed counter statement on 18/09/2006.
The respondents are engaged in the business of refining and marketing petroleum products since the year 1974 and are the second largest refining and marketing oil company in India and one of the three oil majors that dominate India’s energy market. According to the respondents the mark under the impugned application was inherently devoid of any distinctive character and not capable of distinguishing the goods in respect of which the appellants were seeking registration. The respondents submitted that the word SMART is and always has been a part of the English vocabulary from time immemorial and always has been commonly used as a prefix or suffix of their trademarks by different manufacturers and service providers in respect of various products and services. Nobody can claim any exclusive right for the word SMART in respect of any products or services. The respondents submitted that there are a number of products or services available under various trademarks having SMART as a common prefix or suffix. They themselves have been using certain marks like ‘SMART 1’ and ‘SMARTMILES’, both having SMART as a common prefix.
According to the respondents the word SMART per se is incapable of acquiring distinctiveness in respect of any product or service even upon long, continuous usage and consequently, does not qualify for registration as a trademark. The registration of the impugned mark in the name of the appellants will undoubtedly cause inconvenience and hardship to them and other manufacturers in general. Thus the respondents asserted that the appellants were seeking registration of the impugned trademark with the dishonest intention of securing an unfair advantage over all other manufacturers who were using or who may want to use the word SMART as a common prefix or suffix in respect of their products.
The appellants in the present suit have asserted that they are one of the renowned companies engaged in the business of logistics and carriage. The word SMART is used by the company in respect of one of its software, which allows real-time space and revenue management on its aviation network. According to the appellants they have honestly and bonafidely conceived and adopted the trademark consisting and containing the word SMART in the year 1996 and have been using it extensively and continuously in reference to the computer software of the company. Further the goods and trademarks of the appellants and respondents are quite different.
After careful consideration the conclusion drawn in the present suit was that the software technology bearing the impugned mark ‘SMART’ was only used by the appellants within their own premises and for the convenience and benefit of their employees and customers. It is also pertinent to point out that the appellants have not produced any document to show the product bearing the impugned mark, have been sold to any customers or companies nor have they been advertised or disclosed to the public or trade with any commercial intent. Accordingly, a mere casual intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trademark for specific article or goods. Thus it was further highlighted that from the given materials, it is not possible to come to a conclusion that the impugned mark has acquired distinctiveness for registration. Hence, the registration of impugned mark is prohibited under Section 9(1) & 9(2) (a). The claim of proprietorship of the mark by the appellants under Section 18 of the Act is not maintainable and the special circumstances under Section 12 have not been proved by the appellants. Thus having duly considered the materials on record and in view of what has been discussed, the Opposition No. Bom-210185 is allowed and consequently the application is refused.
Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11(3), Trade Marks Act, 1999 – Section 12, Trade Marks Act, 1999 – Section 18, Trade Marks Act, 1999 – Section 18(1), Trade Marks Act, 1999 – Section 9(1), Trade Marks Act, 1999 – Section 9(2); Trade Marks Rules, 2002 – Rule 50
Cases Referred: KELLOGG CO. vs. NATIONAL BISCUIT CO. MANU/USSC/0192/1938; ABERCROMBIE and FITCH CO. Vs. HUNTING WORLD MANU/FESC/0340/1976; Rupee Gains Tele-Times Private Ltd. vs. Rupeea Times MANU/DE/0711/1995; Competition Review (P) Ltd. vs. N.N. Ohja MANU/DE/1268/1995; M/s. Online India Capital Co. Pvt. Ltd. & Anr. vs. M/s. Dimention Corporate MANU/DE/1004/2000; Marico Limited vs. Agro Tech Foods Limited MANU/DE/3131/2010
The respondent agreed not to sell or deal with the public address system or sound equipment under the mark ‘AHUJA’ and has also agreed to hand over the products in his custody to the appellants
Ahuja Radios V/S Neeraj Goel
The present suit is filed by the appellants Ahuja Radios, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of trademark, copyright, passing off, dilution, damages and other reliefs in respect of its trademark ‘AHUJA’. [CS (COMM.) 92/2021, I.As. 2727/2021 and 2729/2021, Decided On: 26.05.2022]
The present suit has been filed by the appellants seeking permanent injunction restraining infringement of trademark, copyright, passing off, dilution, damages and other reliefs in respect of their trademark ‘AHUJA’ which was adopted in 1940 in respect of Public Address Systems and Audio Equipment. The appellants Ahuja Radios are a market leader and the largest manufacturer of such equipment. They are engaged in the development, manufacturing, marketing and export of amplifiers, mixers, microphones and speakers and other audio equipment under the mark ‘AHUJA’. The appellants state that they have large clientele including various government establishments and private establishments, airports, embassies, colleges, universities, cinema halls, auditorium etc. According to the appellants the mark ‘AHUJA’ is a registered trademark since 6th November, 1948. The appellants have further stated that their mark is registered in more than 20 countries in the world including Sri Lanka, Thailand, Indonesia, Jordan, South Africa, Greece, Singapore, Turkey, Saudi Arabia, UAE, United Kingdom and China.
The appellants are aggrieved by the respondent’s adoption of the mark ‘AHUJA’. The respondent M/s. Young Electronics is a sole proprietorship concern of Mr. Neeraj Goel. The appellants acquired knowledge that in January, 2021 the respondent had adopted the mark ‘AHUJA’ and was selling sound equipment systems under the mark AHUJA. The price of the respondent’s products was roughly 50% of the genuine price of the appellant’s products. The present suit was, therefore, filed seeking injunctions and other reliefs.
Vide order dated 22nd February, 2021, the court had granted an ex parte injunction restraining the respondent from using the mark ‘AHUJA’ or the device of AHUJA. Further a Local Commissioner was also appointed who visited the premises of the respondent and had prepared an inventory of approximately 16 devices bearing the mark ‘AHUJA’. The said products were lying under superdarinama with the respondents.
The respondent in the suit has agreed not to sell or deal with public address system or sound equipment under the mark ‘AHUJA’ and has also agreed to hand over the AHUJA branded products in his custody to the appellants. The respondent is also directed to pay a sum of Rs. 1,00,000/- to the appellants, within a period of four weeks. The suit is decreed in the above terms and all pending applications are disposed of.
The absence of any oral or documentary evidence on the side of the respondents and the appellants having proved their suit claim, the appellants were entitled to the relief of permanent injunction
Aqua Pump Industries V/S Subhash Chandra Jain
The present suit is filed by the appellants Aqua Pump Industries, in the Honourable High Court of Madras before Honourable Justice V. Bhavani Subbaroyan, for infringement of trademark and passing off by the respondents. [C.S. No. 509 of 2005, Decided On: 08.06.2022]
The suit has been filed for infringement of trademark and passing off by the respondents. The brief facts of the case as averred in the plaint are as follows: The appellants are manufacturers of different types of electrical motors and pumps. The appellants became registered proprietors of the Trade Mark TEXMO in respect of the goods mentioned above by virtue of the order passed by the Registrar of Trade Marks on 20.04.1998. The appellants have been extensively using the trademark “TEXMO” all over India in respect of the goods allotted to them and according to the appellants they have acquired enormous goodwill. According to the appellants any person using the same mark in respect of those goods or other related goods would result into the public being confused regarding the identity of the goods and its source.
The appellants state that they came to know that the respondents had filed a trademark application for the registration of the trademark TEXIMO on 05.09.2003 claiming user of the mark TEXIMO since 01.01.2013 in respect of all types of pumps and motors and parts. The appellants immediately filed opposition to the said application and the opposition is pending disposal before the Trade Mark Registry at Ahmedabad.
It is the contention of the appellants that the respondents have adopted the deceptively similar trademark TEXIMO solely for the purpose of exploiting the commercial goodwill of the appellants. The appellants state that the respondents know very well the quality pumps and motors manufactured and marketed by the appellants using the trademark TEXMO and hence the respondents have adopted the mark TEXIMO with respect to identical and related goods that are sold across the same counter. According to the appellants it is a calculated attempt to infringe the registered trademark of the appellants’ and pass off the respondent’s goods as the goods of the appellants’. Hence, in the above circumstances, the appellants are entitled to the relief of permanent injunction against the respondents.
It is also highlighted in the suit that various steps were taken to serve notice on the respondents, but the respondents neither represented nor filed vakalat.
Hence on perusal of the documents marked on the side of the appellants the court asserted that it was made clear that the appellants were the registered proprietors of the trademark “TEXMO” and that they have been using said trademark in their products even prior to the year 1999. Further in the absence of any oral or documentary evidence on the side of the respondents to show that the respondents have not supplied any goods or materials using the similar trademark “TEXIMO” in their products, the court was of the view that the appellants had proved their suit claim and they were entitled to the relief of permanent injunction against the respondents. Accordingly, the suit was decreed in favour of the appellants.
The balance of convenience lies in favour of the appellants and irreparable injury would be caused to them if the respondents are not restrained
Colorbar Cosmetics Pvt. Ltd. V/S Faces Cosmetics India Pvt. Ltd.
The present suit is filed by the appellants Colorbar Cosmetics Private Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, for grant of an ad interim injunction. [CS (COMM.) 228/2022, Decided On: 11.05.2022]
The case of the appellants is that they adopted the mark ‘VELVET MATTE’ in respect of cosmetics being, inter alia, lipstick, lip gloss, liquid pre-makeup base, lip color, lip liner, in the year 2009 as a sub-brand/mark under the umbrella brand/house mark ‘COLORBAR’. The appellants are the registered proprietor of the mark ‘VELVET MATTE’ bearing Registration No. 3370299 in Class 3. Various variants of the mark have also been used by the appellants.
The respondents in the suit are a Canadian company which is also engaged in the business of manufacturing and selling cosmetic products. The respondents have used the identical mark ‘VELVET MATTE’ in respect of an identical class of products i.e., lip gloss, lipsticks, and other cosmetics. Upon acquiring knowledge of the respondents’ use of the mark ‘VELVET MATTE’, the appellants had issued a cease and desist notice to the respondents on 16th November, 2021. Vide Reply dated 9th December, 2021, the respondents did not agree to comply with the requisition of the appellants, and argued that the mark ‘VELVET MATTE’ is common to trade and descriptive, as also, that there are several distinguishing factors between the appellants’ and respondents’ products.
The court heard both the parties and perused the documents. The first and the foremost fact which is noticed by the court is that the respondents have made a submission on the last date stating that they are willing to give up the mark ‘VELVET MATTE’. However, upon change of counsels, there appears to be a rethinking and the said statement is sought to be resiled from.
The respondents have submitted that the appellants are using the mark ‘COLORBAR VELVET MATTE’ whereas the respondents were using the mark ‘FACES CANADA VELVET MATTE’. In the opinion of this court, this fact, by itself, would not make a difference inasmuch as a large quantum of sales are on e-commerce platforms and when one searches for the mark ‘VELVET MATTE’, the respondents’ products may also be thrown up in search due to the use of the said mark. Further the court also highlighted that the respondents had also applied for the registration of the mark ‘VELVET MATTE’, and hence, the respondents cannot be allowed to argue that the said mark is generic or descriptive or common to the trade. Therefore, the respondents are stopped from claiming the same. Further it also important to note that the manner in which the respondents have sought to resile from the statement made on the last date of hearing shows that the intention of the respondents is merely to gain time and avoid the injunction.
Under these circumstances, the court is convinced that the appellants have made out a prima facie case for grant of an ad interim injunction. The balance of convenience lies in favour of the appellants and irreparable injury would be caused to the appellants if the respondents are not restrained.
Accordingly the respondents shall stand restrained from manufacturing, selling and offering for sale cosmetics and other allied products under the mark ‘VELVET MATTE’ or any other mark identical or deceptively similar to the appellants’ mark VELVET MATTE, till the next date of hearing. Further if there are any listings of the impugned products of the respondents on e-commerce platforms, the respondents shall take steps to take down these listings within a period of one week from today.
Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXIII Rule 3; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Trade And Merchandise Marks Act, 1958 [repealed] – Section 28
Cases Referred: Automatic Electric Limited vs. R.K. Dgawan & Anr. MANU/DE/0461/1999; Prakash Roadline Ltd. vs. Prakash Parcel Service (P) Ltd. MANU/DE/1078/1991; P.M. Diesels vs. S.M. Diesels MANU/DE/0636/1994
An ad interim ex parte injunction restraining the respondents from using the appellant’s registered and well-known trademark VOLTAS and the VOLTAS Logo was granted
Voltas Limited V/S Ashok Kumar
The present suit is filed by the appellants Voltas Limited, in the Honourable High Court of Delhi before Honourable Justice Dinesh Kumar Sharma, seeking permanent injunction restraining the respondents from infringing the appellants’ registered trademark(s) through use of the registered and well-known trademarks VOLTAS and the VOLTAS Logo. [CS (COMM.) 438/2022, I.As. 9790/2022, 9791/2022, 9793/2022 and 9794/2022, Decided On: 20.06.2022]
It has been submitted that the present suit has been filed seeking permanent injunction restraining the respondent from infringing the appellant’s registered trademark(s) through use of the registered and well-known trademarks VOLTAS and the VOLTAS Logo on the website www.myvoltascare.com, passing off the impugned website as that of the appellant’s, dilution and tarnishment of the appellants trademark.
The appellants submit that they have an established trademark, goodwill and reputation in their favour and have further alleged that the entire business of the respondent through the impugned website www.myvoltascare.com is based on the infringement of the appellant’s right in their well-known trademarks VOLTAS and its logo and that there is no legitimate aspect to the business of respondents through the impugned website www.myvoltascare.com.
The appellants have also averred that they have been continuously and consistently using the trademark and trade name ‘VOLTAS’ since 1954 which is a coined mark possessing the distinctiveness of an invented word, for their own business activities.
It has been alleged by the appellants that the respondents have copied identically the entire look, feel, colour scheme, photographs of the appellant’s website and therefore, the respondents are intentionally and dishonestly defrauding customers by projecting themselves to be the appellants. The appellants also had an investigation conducted in the matter which confirmed their allegations. It has been further submitted that the appellants also received various complaints from the customers. According to the appellants the respondents have tried to copy the look and feel of the appellant’s website by using the same images and text along with the appellant’s trademarks on the impugned website to pass off its goods and to defraud customers.
The court in the present suit stated that, having heard the submissions made the court considered that the appellants had a good prime facie case in their favour and the activities of respondents were causing irreparable loss and injury to the appellants. The balance of the convenience also was in favour of the appellants.
The court in the present suit granted an ad interim ex parte injunction restraining the respondents from using the appellant’s registered and well-known trademark VOLTAS and the VOLTAS Logo and any mark deceptively similar to the appellant’s trademark directly or indirectly or using the impugned website, www.myvoltascare.com, or doing any other act amounting to infringement of the appellants registered trademarks.
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
As the rejection of appellant’s mark was not sustainable, the trademark application of the appellant proceeded for advertisement in the trademark journal with condition
Radico Khaitan Ltd. V/S Registrar Trade Marks
The present suit is filed by the appellants Radico Khaitan Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, challenging the rejection of trademark application No. 2387452 for the registration of the word mark “EFKAY’S XXX RUM” in class 33. [C.A. (COMM. IPD-TM) 32/2022, Decided On: 18.05.2022]
This is an appeal filed by the appellants Radico Khaitan Ltd. challenging the rejection of the trademark application No. 2387453, for the registration of the mark “EFKAY’S XXX RUM (Device)” in class 33. The appellants are aggrieved by the order dated 22nd June, 2020 passed by the Senior Examiner by which the review petition filed by the Appellant has been dismissed. The said review petition was filed seeking review of the order dated 19th July, 2018 vide which the trade mark application of the Appellant bearing no. 2387453 for the registration of the mark “EFKAY’S XXX RUM (Device)” in class 33 was rejected.
The background of the case is that, the appellants had filed an application for the registration of the mark “EFKAY’S XXX RUM (Device)” dated 20th August, 2012. An examination report dated 12th December, 2013 was issued by the Trade Mark Registry. The report raised objections on relative grounds of refusal under Section 11 of the Trade Marks Act, 1999. In response to the aforesaid examination report, the appellants filed their reply on 26th April, 2016. A user affidavit was also filed by the appellants claiming user in the device mark in question since April, 1987 through its predecessor. However, the mark was refused registration vide order dated 19th July, 2018 on the ground that the mark was identical/similar to earlier trademarks for the same or similar goods and services.
The appellants sought review of the order dated 19th July, 2018. However, the said review petition was also rejected vide the impugned order dated 22nd June, 2020. Hence, the present appeal.
The appellants state that the “EFKAY’S” marks which have been cited belong to the original proprietor Mr. Noshir K. Irani and M/s. Yezdi Distilleries. It is submitted by the appellants that the registrations for “EFKAY’S” cited in the examination report stands registered in favour of the appellants in view of assignment deed dated 29th March, 2012. It is further asserted by the appellants that no monopoly is being sought by them in the words “XXX RUM”.
In the opinion of the court, no monopoly can be granted on the individual words/terms “RUM” or “XXX” or in the descriptive matter contained in the label. Thus, the distinctive feature of the appellant’s mark would merely be the word “EFKAY’S”, assigned in favour of the appellants. Thus in view of the above position, the court was of the opinion that the rejection of appellant’s mark was not sustainable as the mark “EFKAY’S” belongs to the appellants. Accordingly, the court in the present suit concluded that the trademark application of the appellants shall proceed for advertisement in the trademark journal, with the condition -‘No exclusive rights in the words “XXX RUM”, either jointly or otherwise as also in the descriptive matter contained in the label’. The court stated that the mark shall be advertised with the above condition, within a period of four months and the observations in this order shall not in any manner prejudice any opposition proceedings, if commenced against the application in question. The present appeal was disposed of in the above terms and all pending applications were also disposed of.
Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 9; Trade Marks Rules, 2017 – Rule 36 (1)
The appellants are entitled to the prayers made by them and accordingly, the suit is decreed in favour of the appellants
Netsweeper Inc. V/S Netsweeper Technologies Private Limited
The present suit is filed by the appellants Netsweeper Inc., in the Honourable High Court of Madras before Honourable Justice Senthilkumar Ramamoorthy, for permanent injunctions to restrain the respondents from infringing the appellant’s corporate name ‘NETSWEEPER’ and from passing off the respondents’ products as that of the appellant’s. [Civil Suit (Comm. Div) No. 334 of 2018, Decided On: 08.06.2022]
The suit was filed for permanent injunctions to restrain the respondents from infringing the appellants’ corporate name ‘NETSWEEPER’ and from passing off the respondent’s products as that of the appellant’s. The appellants have also prayed for damages in a sum of Rs. 1,00,00,000/-. In spite of service of summons on the respondents, they did not enter appearance.
The appellants state that they are a company incorporated in the year 1999 under the laws of Ontario, Canada, and engaged in the business of Internet content filtering and web threat management. According to the appellants, the trademark ‘NETSWEEPER’ was registered by them under classes 9 and 42 in Canada and USA in the year 2003 and 2006, respectively. The trade mark was subsequently renewed on 14.02.2017 and 18.11.2016, respectively. Further, the Plaintiff states that it is in the process of applying for registration of the said trade mark in India.
The suit was filed after discovering that the respondents had incorporated a company under the corporate name ‘NETSWEEPER’ on 13.07.2017. The appellants assert that the above act amounts to passing off of the appellant’s goodwill and reputation.
On examining the plaint, proof affidavit it is clear that the appellants have established that they are the registered proprietor of the Trademark in Canada and USA under classes 9 and 42. Even though they have not registered the trademark in India, the common law remedy of passing off is available to the appellants under Section 134(1)(c) of the Trademarks Act, 1999. Consequently, the appellants are entitled to the prayers made by them. Accordingly, the suit is decreed in favour of the appellants and the respondents are directed to pay the appellants a sum of Rs. 3,00,000/- (Rupees three lakhs only) as costs, which includes court fees of about Rs. 1,59,000/-, lawyer’s fees and other costs.
Acts/Rules/Orders: Trade Marks Act, 1999 – Section 134(1)
The appellants had made out a prima facie case for grant of an injunction and the balance of convenience too was in the favour of the appellants
Kerzner International Limited V/S Vikas Aggarwal
The present suit is filed by the appellants Kerzner International Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking protection of its trademark ‘ATLANTIS’ used in respect of entertainment services, hotels, resorts and other connected services. [CS (COMM.) 321/2022 and I.As. 7580-84/2022, Decided On: 13.05.2022]
The appellants Kerzner International Limited have filed the present suit seeking protection of its trademark ‘ATLANTIS’ used in respect of entertainment services, hotels, resorts and other connected services. It is the case of the appellants that they are one of the world’s renowned and leading global service provider engaged in management, development and operation of destination resorts, luxury resort hotels, etc. The appellants adopted the mark ‘ATLANTIS’ in 1994. The appellants have stated that their resorts are unique, ocean-themed destinations offering a wide variety of entertainment experiences. The appellants own and operate the website www.atlantis.com for providing information about the ‘ATLANTIS’ properties around the world which is stated to be registered in their name since 1993.
The mark ‘ATLANTIS’ has been applied for registration in India and internationally. In India, the appellants own various registrations in Classes 35, 36, 39 and 41 and have also registration in Class – 42 under the trademark number 1416284.
The case of the appellants is that they came across the respondents’ application bearing no. 4694972 in the trademark journal wherein the respondents sought to register the trademark ‘ATLANTIS PARK BALLROOM’ under class 43 in respect of services for providing food and drink, and temporary accommodation. The said application was filed on 9th October, 2020 with user claim since December, 2017. Accordingly, a legal notice was addressed on behalf of the appellants on 9th March, 2021 calling upon the respondents to give up the use of the mark ‘ATLANTIS PARK BALLROOM’. The respondents replied on 25th March, 2021 claiming that their mark is distinctive and that the services provided by them are completely different from the services of the appellants and their trade channels are also unrelated. The respondents also took the stand that the appellants do not enjoy any reputation in India as their mark is being used in the Bahamas.
A further notice was addressed by the appellants on 8th April 2021, however, the same did not evince any positive reply from the respondents.
It is highlighted that the application of the respondents is objected to under section 11 of the Trade Marks Act, 1999. The respondents are using the said mark in respect of a banquet hall and the services offered are entertainment, conventions and other bookings made for social events. The services of the respondents and the appellants are clearly overlapping and are allied services. The mark ‘ATLANTIS’ is the prominent feature of the respondents’ mark and name. It is settled law that it is not improper to identify elements and features of marks that are more or less important for the purpose of analysis in cases of composite marks.
The court asserted that every convention centre or hotel has a ballroom so the use of the word ‘Ballroom’ along with the mark ‘ATLANTIS’ does not in any manner distinguish it from the appellants’ mark. Thus, the present is the case of use of an identical mark for identical services.
According to the court the appellants had made out a prima facie case for grant of an injunction. The balance of convenience was in the favour of the appellants and if relief was not granted at this stage, irreparable loss would be caused to the appellants. However, considering the fact that the respondents may have made various bookings of the banquet hall for third parties, the court was of the opinion that the respondents be restrained partially at this stage. Hence, the respondents were restrained from making any fresh bookings in their banquet which was run under the name ‘ATLANTIS PARK BALLROOM’ till the next date of hearing. This would however not impede the respondents from providing services in respect of bookings already made by them.
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; Commercial Courts Act, 2015 – Section 12A; Trade Marks Act, 1999 – Section 11
Cases Referred: South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. MANU/DE/2574/2014
The application of the appellants is permitted to proceed for advertisement before acceptance with conditions
Mankind Pharma Limited V/S The Registrar of Trade Marks
The present suit is filed by the appellants Mankind Pharma Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, challenging the impugned order passed by the Senior Examiner of Trade Marks by which the review petition filed by the appellant was dismissed. [C.A. (COMM. IPD-TM) 52/2022, Decided On: 18.05.2022]
The present appeal was filed before the IPAB and has been received by this court, pursuant to the Tribunals Reforms Act, 2021. The appellant has filed the present appeal challenging the impugned order dated 2nd August, 2019 passed by the Senior Examiner of Trade Marks by which the review petition filed by the appellant was dismissed. The said petition was filed by the appellant seeking review of order dated 20th December, 2018 vide which the trademark application of the appellant bearing no. 2457850 for registering the word mark “DON’T WORRY” in Class- 3 was rejected. The said application was in respect of the goods and services including: ‘Bleaching Preparations and Other Substances for Laundry Use; Cleaning, Polishing, Scouring and Abrasive Preparations; Soaps; Perfumery, Deodorants, Essential Oils, Cosmetics, Hair Lotions etc.’
The reasoning given for the rejection of the mark in the order dated 20th December, 2018 was that the trademark applied for was objectionable under Section 9/11 of the Act and accordingly the application was refused. A review petition was preferred against the said order by the appellant and the review petition was dismissed by the Senior Examiner of Trade Marks on 2nd August 2019.
A perusal of the reasoning given by the Senior Examiner shows that the ground for rejection of the application was that the mark “DON’T WORRY” was devoid of any distinctive character and was descriptive in nature. The Senior Examiner also noted that the mark “DON’T WORRY” was being used by the appellant for Sanitary Napkins in Class 5.
The appellant has submitted that they have various registrations for the mark “DON’T WORRY” with or without the prefix “Mankind’s” in Classes – 1,5,31,32,35,44. It is further submitted that there is no reason which has been given by the Senior Examiner of Trade Marks for the rejection of appellant’s application and hence according to the appellant, the mark ought to be permitted to proceed for registration.
On a query by the court, it is submitted that the mark is being used by the appellant in respect of sanitary napkins and therefore the present application is a bona fide application by the appellant. The words “DON’T WORRY” being the registered trademark of the appellant in other classes, there can be no reason for refusing the application in question, even though it is on a ‘proposed to be used’ basis.
In the opinion of the court, the application on ‘proposed to be used’ basis in Class 3 cannot be rejected merely on the ground that words “DON’T WORRY” are devoid of distinctive character. The said mark would be an arbitrary or a suggestive mark in respect of goods falling in Class 3. Accordingly, the court was of the view that the application ought to be permitted to proceed for advertisement before acceptance on the following terms and conditions:
The application shall be associated with the trademarks of the appellant “MANKIND’S DON’T WORRY” registered in Class-1 and Class-5 bearing nos. 2520512 and 2332721 respectively. The use of the mark in Class 3, if any, shall be with the word ‘MANKIND’S’ and the registration shall not grant any exclusive rights in the words ‘DON’T’ and ‘WORRY’ separately or conjointly in respect of unrelated products and services.
The court further stated that the application of the appellant shall be advertised before acceptance in the Trade Mark Journal within a period of four months and that the observations in this order shall not in any manner prejudice any opposition proceedings, if commenced against the application.
Acts/Rules/Orders: Trade Marks Act, 1999 – Section 9; Trade Marks Rules, 2017 – Rule 36(1); Tribunals Reforms Act, 2021 – Section 11, Tribunals Reforms Act, 2021 – Section 9
It is not a case of innocent adoption and the copying and imitation of the appellant’s mark, trade dress, get up, and colour scheme was absolutely deliberate on behalf of the respondents
Blue Heaven Cosmetics Pvt. Ltd. V/S Shivani Cosmetics
The present suit is filed by the appellants Blue Heaven Cosmetics Pvt. Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction restraining infringement of registered trademark, trade dress, copyright, writing style, colour combination, label, packaging, passing off goods, delivery up, rendition of accounts of profits along with further damages. [CS (COMM) 702/2021 and I.A. 17434/2021, Decided On: 18.05.2022]
The present suit has been filed by the appellants seeking permanent injunction restraining infringement of registered trademark, trade dress, copyright, writing style, colour combination, label, packaging, passing off goods, delivery up, rendition of accounts of profits along with further damages.
The appellants M/s. Blue Heaven Cosmetics Pvt. Ltd. are engaged in the business of manufacturing and sale of cosmetics and other allied goods. It is the case of the appellants that the respondents have infringed the rights of the appellants in the registered marks “BLUE HEAVEN” and “BLUE HEAVEN GET BOLD”. The appellants adopted the mark “BLUE HEAVEN” in the year 1972 and have been continuously carrying out trade under the said mark. The appellants further adopted the distinctive mark “BLUE HEAVEN GET BOLD” in the year 2020.
An ex parte ad interim injunction was granted, restraining the respondents; vide order dated 23rd December, 2021. It is highlighted in the suit that none appeared for the respondents, despite repeated service being effected. It is further submitted by the appellants that they received a letter from the respondents stating that they were unaware of the appellants’ copyright and that they would make sure to remove all the boxes and material of this respective product. The respondents stated that it was a sheer case of ignorance on their part and that if in future any product in this design by their firm was found, they would be held liable for such guilty.”
The court in the present suit perused the competing products of the appellants and the respondents which showed that the respondents’ products had a packaging that was virtually identical to that of the appellants. The respondents had copied the various elements including the letter styling, colour scheme, the placement of the various features, the colour combination of the packaging, etc. and had also used various devices and descriptive material on their product which was identical to that of the appellants.
Upon a perusal of the physical products, the court was convinced that the respondents’ product was nothing but a counterfeit of the appellants’ product, though the mark ‘CANDY’ was being used in place of the appellant’s mark ‘BLUE HEAVEN’. However, in the opinion of the court, the same was not sufficient to distinguish the respondent’s product from the appellant’s product. Considering that these were eyeliners and were used by the consumers on their eyes, the standard of quality that was expected in this regard was quite high, and counterfeits/ knock-offs cannot be encouraged. It was also further highlighted by the appellants that the respondents’ products were approved by the Drugs Controller General of India, as no manufacturing dates were mentioned on the packaging of the respondents’ products. In view of the foregoing facts, the court agreed that the respondent’s product was liable to be permanently injuncted from being manufactured and sold.
Thus, the present suit was decreed in terms of the relief of permanent injunction. The court asserted that the copying and imitation of the appellant’s mark, trade dress, get up, and colour scheme was absolutely deliberate on behalf of the respondents. Moreover, the respondents had also chosen to stay away from the proceedings, despite repeated service. In light of the foregoing facts and circumstances of the present case, the court was convinced that this is not a case of innocent adoption, and the court cannot encourage such dishonest conduct on behalf of the respondents. Thus, taking a reasonable assessment of the products which may have been sold by the respondents, the present suit was decreed for Rs. 10 lakhs as damages and in addition, Rs. 2 lakhs were awarded as costs. The respondents were directed to pay the said amount to the appellants within eight weeks, failing which, the appellants were permitted to commence execution proceedings against the respondents.
Cases Referred: M/s. S. Oliver Bernd Freier GMBH & CO. KG vs. M/s. Jaikara Apparels & Anr. MANU/DE/1247/2014; United Coffee House vs. Raghav Kalra and Anr. MANU/DE/2626/2013; The Indian Performing Right Society Ltd. vs. Gauhati Town Club & Anr. MANU/DE/0582/2013
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