March – April 2022 Digest of Intellectual Property Cases 

14 May March – April 2022 Digest of Intellectual Property Cases 

March – April 2022  Digest of Intellectual Property Cases 

The balance of convenience is clearly not in favour of granting injunctive relief to the appellants

1. Maria Albert Stanly V/S Diamond Hospital Equipments

The present suit is filed by the appellants M. Maria Albert Stanly, in the Honourable High Court of Madras before Honourable Justice Senthilkumar Ramamoorthy, seeking orders of interim injunction restraining the respondents from directly or indirectly infringing their registered designs. [O.A. Nos. 41 and 42 of 2022 in C.S. (Comm. Div) No. 14 of 2022, Decided On: 14.03.2022]

The appellants are seeking an order of interim injunction restraining the respondent from directly or indirectly infringing their registered designs. The suit is fied by the appellants for permanent injunctions restraining infringement and passing off and for damages. The appellants state that they are a limited company incorporated in the year 2003 and are a leading manufacturer of operating tables and products related thereto. The appellants have highlighted the four registration certificates issued by the Patent Office related to: orthopaedic leg positioning accessory for patient beds (Design No. 334507-003); surgical table with top leg attachment for pelvic surgery (Design No. 347012-002); surgical table with shoulder arthroscopic attachment (Design No. 332970-001); and surgical table with top leg attachment and dynamic hip screw (Design No. 332971-001).

By drawing reference to the respondent’s design in respect of operating tables and accessories thereto, the appellants asserted that the respondent’s design was a fraudulent and obvious imitation of the appellants’ registered designs. The appellants have referred to Sections 2(d) and 22 of the Designs Act, 2000 (the Designs Act) to support the contention that it need not be a replica to establish obvious imitation. The appellants have further contended that the respondent did not provide any particulars with regard to the design or patent registration in respect of their products. Further, the appellants state that the respondents have not filed either opposition or cancellation proceeding and that, in the facts and circumstances, the appellants are entitled to interim relief.

The respondents on the other hand, have submitted that the appellants are not entitled to interim relief because these are designs which were already in the market. By relying upon Section 4 of the Designs Act, the respondents contended that a design which is not new or original or which has been disclosed to the public previously or is not significantly distinguishable from known designs should not be registered. By drawing reference to Section 7 of the Designs Act, the respondents state that the opportunity to oppose arises in the context of the Designs Act only after registration. The respondents contended that operating tables with accessories have been used for decades, including for performing orthopaedic surgeries. Therefore, the appellants cannot claim monopoly rights over designs which are not novel and have been in use for at least two decades. According to the respondents the operating table and the accessories thereto play a functional role and that such functional role decides the placement of such accessories.

The court in the present suit highlighted that the appellants have obtained the design registrations between October 2020 and September 2021. The respondent have placed documents for the consideration of the court, which indicate prima facie that operating tables with accessories which look similar to those used by them have been in use for a long period of time.

When the above facts are considered cumulatively, the balance of convenience is clearly not in favour of granting injunctive relief especially bearing in mind the fact that the respondents have been in business for a reasonable length of time. Hence the court in the present matter concluded that the respondents shall maintain accounts in relation to the operating tables and accessories, which are similar and correspond to the operating tables and accessories over which the appellants have registered designs. Such accounts shall be submitted to this court on quarterly basis. Accordingly, the original application for interim relief is disposed of on the above terms. The respondents are further directed to file their written statement along with counter claim, if any, within two weeks.

Manupatra Reference Number:  MANU/TN/1601/2022

Acts/Rules/Orders: Designs Act, 2000 – Section 2(d), Designs Act, 2000 – Section 22, Designs Act, 2000 – Section 22(3), Designs Act, 2000 – Section 4, Designs Act, 2000 – Section 7

Cases Referred: Midas Hygiene Industries P. Ltd. and Ors. vs. Sudhir Bhatia and Ors. MANU/SC/0186/2004; Tapria Tools Limited vs. Eastman Cast and Forge Limited MANU/MH/0261/2004

The respondents removed the infringing hoardings and advertisements from all the platforms and stopped using the appellants’ well-known trademark

Tata Sons Private Limited V/S Chirag Pramod Shah

The present suit is filed by the appellants Tata Sons Private Limited in the Honourable High Court of Delhi before Honourable Justice Jyoti Singh, seeking permanent injunction restraining the respondents from unauthorisedly using the appellants’ well-known trademarks. [CS (COMM) 80/2021 and I.A. 3470/2022, Decided On: 08.03.2022]

As per the case set up by the appellants in the plaint, they are a company duly incorporated in the year 1917 under the Indian Companies Act, 1913. The appellants and their Group Companies, subsidiaries as well as Companies promoted by them, have laid the foundation in the industrial core sector, textiles, iron and steel, automobiles, etc. and have also branched into computers, computer software, electronics, telecommunications, broadcasting, aerospace, to name a few. The conglomeration of Tata Companies, collectively referred to as ‘House of Tata’, was recently declared to be India’s most valuable brand by ‘Interbrand’.

The appellants have averred that they are the owners and registered proprietors of well-known trademarks TATA as well as ‘T’ within a circle device mark and various other TATA formative marks by virtue of priority in adoption, long, continuous and extensive use as well as advertising and the reputation consequently accruing thereto in the course of trade. The appellants have also highlighted that the Registry acknowledges the aforementioned trademarks as well as the device as well-known trademarks within the meaning of Section 2(1)(zg) read with Section 11(6) of the Trade Marks Act, 1999.

According to the appellants on 23.10.2013, they entered into a formal agreement by way of a Letter of Intent, with the respondents whereby the appellants agreed to provide integrated design consultancy services to the respondents for their project titled ANA Realty, located at District Thane, Maharashtra. The appellants state that they had never authorised or allowed the respondents to use their well-known trademarks TATA in any manner whatsoever. In December 2020, the appellants came to know that respondents were unauthorizedly using the appellants’ well-known trademark TATA on their hoardings as well as on their online pages such as their website i.e. www.anarl.com and other social networking pages such as Instagram, Facebook etc. The appellants endeavoured to amicably resolve the matter with the respondents by sending letters/emails as also telephonically, but despite such efforts, the respondents did not refrain from infringing the appellants’ trademarks and copyrights, constraining the appellants to file the present suit.

Hence the appellants filed the present suit seeking an order for permanent injunction restraining the respondents from directly or indirectly dealing in any business unauthorisedly using the appellants’ well-known trademark TATA, thereby amounting to infringement of the appellants’ registered trademark. The appellants have also plead for delivery up of all the goods bearing the impugned mark/device to the authorized representatives of the appellants for the purposes of destruction.

The court had on 24.02.2021, passed an ad-interim injunction against the respondents.

The respondents in the suit have removed the infringing hoardings and advertisements from all the platforms and have stopped using the appellants’ well-known trademark TATA as well as the ‘T’ within a circle device. Further the appellants are ready to forgo their claims for damages and costs, in the event that the respondents are willing to suffer an injunction.

In light of the aforesaid, the present suit is decreed in favour of the appellants and against the respondents, with no orders as to costs and damages, in light of the appellants foregoing the claim for costs and damages and the respondents willing to suffer an injunction.

Manupatra Reference Number:  MANU/DE/0820/2022

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

Balance of convenience lies in favour of the appellants and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted

Aktiebolaget Volvo V/S Lamina Suspension Products Limited

The present suit is filed by the appellants Aktiebolaget Volvo in the Honourable High Court of Delhi before Honourable Justice Jyoti Singh, for permanent injunction restraining infringement of trademark, passing off, damages, delivery, etc. [CS (COMM.) 152/2022, Decided On: 08.03.2022]

Present application has been filed by the appellants for grant of ex-parte ad interim injunction restraining the respondents, from using the appellants’ trademarks ‘VOLVO’ and ‘FMX’ and any other mark confusingly or deceptively similar thereto, in relation to leaf springs and other parts used in heavy vehicles or any other goods or services, in any manner, including on its websites www.laminasprings.com and www.laminasuspension.com and social media accounts, including www.indiamart.com, amounting to infringement and dilution of the appellants’ registered trademarks ‘VOLVO’, ‘FMX’ and from passing off its products as emanating from the appellants. It is prayed in the plaint that a decree of permanent injunction be passed to restrain the respondents from using the mark ‘VOLVO’ and ‘FMX’ or any other mark which is deceptively similar to the appellants’ registered trademarks’ ‘VOLVO’ and ‘FMX’ and which would infringe the appellants’ registered trademark nos. 361886, 1404133, 1930763, 3249588, 3251273, 763280, 1384891, 1466300, 1759085, 1759086, 1759087, 1759088, 1759089, 2119694 and 1870312 and other trademark registrations.

The appellants state that they adopted the trademark VOLVO in 1915 and are an international automotive and transport vehicle group. According to the appellants they are world leader in heavy commercial vehicles and occupy a prominent position as producer and distributor of a premium range of cars. The appellants have further highlighted that their trademark ‘Volvo’ has been declared as a well-known mark as defined under Section 2(l)(zg) of the Trade Marks Act, 1999 by a Division Bench of the Bombay High Court and as a result, they are entitled to the high degree of protection conferred under law, across all classes, including against disparate products and services.

It is contented by the appellants that they became aware of the respondents’ activities during July 2021, through credible market sources that the said respondents were engaged in manufacturing, selling and dealing in a wide array of leaf springs and automobile leaf springs under the marks ‘VOLVO’ and ‘FMX’ identical to the registered trademarks of the appellants. Further investigations revealed that the respondents were supplying their infringing goods under the mark ‘VOLVO’ and ‘FMX’ across India via direct orders and also through e-commerce portal India Mart.

The investigators of the appellants thereafter contacted the respondents for ordering the infringing goods bearing the marks ‘VOLVO’ and ‘FMX’ and, pursuant to telephonic conversations and email correspondence, were successful in placing an order of the said infringing goods. The said infringing goods were duly delivered in Delhi on 8th November, 2021 and were confirmed on inspection to be non-genuine products which did not emanate from the appellants. The Plaintiffs have a strong apprehension that the respondent’s products are inferior in quality in comparison to the original products manufactured by the appellants.

The act of the respondents in using an identical mark as the appellants’ registered trademarks ‘VOLVO’ and ‘FMX’ prima facie tantamounts to infringing the statutory and common law rights of the appellants.

According to the court the appellants have made out a prima facie case. Balance of convenience lies in favour of the appellants and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

Accordingly, an ex parte ad interim injunction is granted against the respondents restraining them from using the appellants’ trademarks ‘VOLVO’ and ‘FMX’ or any other mark confusingly or deceptively similar thereto till the next date of hearing. Further the respondents were directed to file a statement of accounts and assets on affidavit within a period of 2 weeks from service of notice of the present application. The respondents were also restrained from disposing of or dealing with their assets in a manner which may adversely affect the appellants’ ability to recover damages (as may be computable), costs or other pecuniary remedies.

Manupatra Reference Number:  MANU/DE/1101/2022

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XI Rule I(4); Code of Civil Procedure, 1908 (CPC) – Order XXVI Rule 9; 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; Trade Marks Act, 1999 – Section 2(l)

Cases Referred: Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (India) MANU/MH/0076/1997

Irreparable loss would be caused to the appellants if an ex-parte injunction was not passed in their favour and the loss to the public would also be incalculable

Dabur India Limited V/S Ashok Kumar

The present suit is filed by the appellants Dabur India Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction and damages in respect of infringement of their various intellectual properties, including the trademark ‘DABUR’. [CS (Comm.) 135/2022, Decided On: 03.03.2022]

The grievance in the present plaint is that there are various domain names and websites, who have started using the mark ‘DABUR’ and depicting various products of ‘DABUR’. These websites are https://www.daburdistributor.com, https://daburdistributorships.in, etc. The said websites portray themselves to be the appellants, and call for the franchisees and distributors to register themselves for being appointed as agents for selling DABUR products. On one of the websites, payment to the tune of Rs. 25,000/- is also being sought from such franchisees and distributors for registering themselves.

It is the plea of the appellants that the names of the parties, who have registered these domain names, are not clear and none of the details, including the telephone number or address of the said registrants are available; hence directions may be passed against the various Internet Service Providers.

The court in the present suit observed that the internet era has brought various challenges to IP owners and this case is a reflection of the same. The mark ‘DABUR’ is a well-known trademark in India, having been coined, way back in 1884. Thus, it is an Indian brand which is more than 150 years old and has become a household name. Over the years, the appellants have been a leading manufacturer and seller of a large variety of products to the Indian public and the products belonging to the appellants are also exported abroad. The goodwill in the appellants’ mark and business is, thus, unquestionable. Under these circumstances, the use of the aforementioned domain names and the hosting of websites using the same, in a manner so as to deceive the general public as also small businesses, who may be enticed into seeking franchisees and distributorships, using the mark DABUR, ought not to be permitted. The legal rights of the appellants are severely affected by the use of the mark ‘DABUR’, as also various logos of the various products and images thereof. Moreover, apart from the rights of the appellants, which are being infringed, it would also not be in public interest to permit these domain names and websites to operate, so as to continue to deceive and cheat the general public in India and abroad.

The court was convinced that the appellants had made out a prima facie case for the grant of ex-parte injunction and the balance of convenience too was in favour of the appellants. Irreparable loss would be caused to the appellants if an ex-parte injunction was not passed in their favour and the loss to the public would also be incalculable.

The court further observed that the practice of hiding or masking the details of the Registrants who hold domain names is increasingly resorted to by persons who register such domains which impinge upon owners of trademarks and names. Such Registrants seek to enjoy domain name registrations and host websites, in a concealed or a hidden manner, without disclosure of their identity. Whenever any person or entity registers a mark, name, company, firm etc., the identity of such person is openly available. However, in the case of domain names, this is not so. It appears that disabling of privacy protect feature may be essential to ensure that the identity of the persons registering domain names.

Manupatra Reference Number:  MANU/DE/0936/2022

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

Cases Referred: UTV Software Communication Ltd. and Ors. vs. 1337X to and Ors. MANU/DE/1244/2019

A permanent injunction was granted restraining the respondents and they were directed to withdraw the trademark applications filed

Prakash Pipes Limited V/S Bauchhaar Poly Industries

The present suit is filed by the appellants Prakash Pipes Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking a permanent injunction against the respondents’ use of the mark ‘PRAKASH’. [CS (COMM) 548/2021 and I.A. 14166/2021, Decided On: 06.04.2022]

The appellants have filed the present suit seeking permanent injunction against the respondents’ use of the mark ‘PRAKASH’ for PVC pipes and other related goods, as also reliefs for passing off, delivery up, rendition of accounts and further damages. The case of the appellants is that, they adopted the mark ‘PRAKASH’ and its corresponding logos in the 1980s and the said mark has come to be associated with high quality PVC products such as PVC pipes, PVC water storage tanks, PVC tubes and fittings etc. The appellants have registered the trademarks ‘PRAKASH’, ‘PRAKASH GOLD’ and other variants, including the logos, in Classes 9, 17, 20 and 35 and the copyright for one of the artistic works is also registered vide Registration No. A-55155/98.

In October, 2021, the appellants discovered that the respondents had commenced using the mark ‘PRAKASH’, ‘PRAKASH PREMIUM’ and PRAKAS’ in a similar logo style for their PVC products, in a similar trade dress/colour combination/writing style/label/get up. Upon further inquiries, the appellants also learnt that the respondents had applied for the trademark registration of the mark PRAKASH PREMIUM’ by Application bearing No. 4903662 in Class 17 on a ‘Proposed to be Used’ basis. According to the appellants it was a clear deliberate action on the part of the respondents to use the mark ‘PRAKASH’ and encash upon the goodwill of the appellants.

The court, vide order dated 29th October 2021, had injuncted the respondents restraining them from using the trademarks ‘Prakash’, ‘Prakas’, ‘Prakash Gold’ etc. or any other mark that was identical or deceptively similar to the appellant’s trademark. Thereafter, the respondents had entered appearance and submitted that they had already stopped using the mark ‘PRAKASH’ and ‘PRAKASH GOLD’, etc. The respondents also submitted that they were inclined to settle the matter amicably. However, the mediation did not prove to be fruitful and hence, the matter was listed.

Considering the exclusive rights of the appellants in the mark ‘PRAKASH’ as also its various derivative marks, the logo and the copyright registration, the court was of the opinion that it was a fit case for grant of permanent injunction restraining the respondents from using the mark ‘PRAKASH’, ‘PRAKASH GOLD’, and the accompanying logos in any form whatsoever in respect of pipes, fittings, storage tanks, PVC products and any other PVC products or allied goods or construction materials or any other products having the same trade channel.

Accordingly, the suit was decreed in favour of the appellants. The respondents were directed to withdraw the trademark applications which they may have filed. Further considering the blatant infringement of the appellants’ marks and the costs incurred, it was deemed fit to direct the respondents to pay a sum of Rs. 5,00,000/- as costs to the appellants. The same was to be paid in two instalments: the first instalment of Rs. 2,50,000/- shall be paid on or before 30th May 2022, and; the second instalment of Rs. 2,50,000/- shall be paid on or before 30th October, 2022, as agreed between the parties.

Manupatra Reference Number:  MANU/DE/1126/2022

 

The present case would not be one for an ad-interim injunction, due to the fact that the RT-PCR test kits would not be confused in any manner with the ‘Omeprazole’ tablets or capsules

Mankind Pharma Ltd. V/S Tata Medical and Diagnostics Ltd.

The present suit is filed by the appellants Mankind Pharma Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking permanent injunction for infringement of trademark, rendition of accounts, delivery up, damages, etc. [CS (COMM) 192/2022 and I.As. 4838-40/2022, Decided On: 30.03.2022]

The appellants Mankind Pharma Limited has filed the present suit seeking permanent injunction for infringement of trademark, rendition of accounts, delivery up, damages, etc. The appellants claim to be the 5th largest pharmaceutical company in India with a large range of medicinal and pharmaceutical preparations. In the present suit, the appellants seeks to protect their registered trademark ‘OMIPURE’ bearing registration no. 1588335 dated 8th August, 2007 which was adopted by the appellants in the year 2007. According to the appellants the registration is valid and subsisting in the name of the appellants.

The grievance of the appellants in the present case is that in January 2022, they came across certain material on the internet, including advertisements and newspaper articles, that the respondents, Tata Medical and Diagnostics Ltd. intended to launch RT-PCR test kits under the trademark ‘OMISURE’ for detection of the Omicron variant of Covid-19.

The appellants then addressed a cease-and-desist notice to the respondents on 11th January 2021 which is stated to have been delivered on 13th January, 2021 asking the respondents to desist from using the mark ‘OMISURE’ and any other trademark which was similar to the appellants’ mark ‘OMIPURE’ in relation to any medical testing kits, and medicinal and pharmaceutical perpetrations. However, no reply was received. Thereafter, the respondents launched the RT-PCR testing kit under the trademark ‘OMISURE’.

According to the appellants the use of the mark ‘OMISURE’ for a diagnostic kit would be infringement of the appellant’s registered trademark under Section 29(2) of the Act as also under Section 29(3) of the Trade Marks Act, 1999. It is further submitted that apart from mere confusion on the part of the public, there is also a likelihood of ‘Blurring’ by association between the two products, inasmuch as the consuming public getting an impression that the product under the mark ‘OMISURE’ is associated or related to the appellants.

On the other hand, the respondents have submitted that their trademark ‘OMISURE’ is derived from the Omicron variant of Covid-19 that the diagnostic kit detects. The respondents state that they are a well known company and their mark ‘TATA MD CHECK RT-PCR OMISURE’ has to be read together and the word ‘OMISURE’ cannot be read in isolation. The respondents have also asserted that they have been supplying large volume of test kits across the country as also to the WHO. Thus, in public interest the sale of the respondents’ product under the mark ‘OMISURE’ ought not to be restrained.

The court in the present suit highlighted that a perusal of Section 29(2) of the Act shows that Section 29(2)(a),(b),(c) of the Act stipulates different varieties of confusion which can take place under Section 29(2) of the Act. If the trademarks are identical and the goods/services covered by the registered trademarks are also identical, then there is deemed confusion as per section 29(3) of the Act. However, in the present case, perusal of the two marks in question, i.e., ‘OMIPURE’ and ‘OMISURE’ shows that the marks are not identical. Moreover, pharmaceutical and medical preparations for which the appellants’ mark is registered is not the product for which the respondent is using the mark i.e., diagnostic kits. Thus, this would not be a case of identical mark or identical goods.

The court asserted that the respondents’ product being a RT-PCR test kit to test Omicron variant of the Covid-19 is claimed to be a breakthrough innovation which has been developed in India. Further the court also highlighted that the respondents’ mark ‘OMISURE’ was for a RT-PCR kit used in laboratories for the purpose of detecting whether the omicron variant is present in the swab sample or not. Thus the test kit of the respondents sold under the mark ‘OMISURE’ is used in laboratories for diagnosing the Omnicron variant and not sold openly by chemists to the consuming public. On the other hand, the appellants’ product ‘OMISURE’ is used for the purpose of gastro-intestinal ailments.

According to the court Covid-19 was omnipresent and courts were no exception. Disputes relating to trademarks and patents in respect of Covid-19 products have reached the doors of courts. In such cases, the court has to strike a balance between the rights of the individual and the public interest and apply the law to the facts and circumstances of each case. While the phonetic similarities between these two marks were clearly perceptible, the present case would not be one for an ad-interim injunction, due to the fact that the RT-PCR test kits ‘TATA MD CHECK RT-PCR OMISURE’ would not be confused in any manner with the ‘Omeprazole’ tablets or capsules of the appellants’ sold under the mark ‘OMIPURE’.

Thus considering the overall facts and circumstances of the case, the following directions were issued by the court:

Proper accounts shall be maintained by the respondents of the sale of ‘TATA MD CHECK RT-PCR OMISURE’ test kits and the same shall be filed bi-annually by them in the form of an affidavit of a senior official duly authorised by a Board Resolution. If the respondents intended to launch any RTPCR test kits or any other diagnostic kits for use in households and for sale across the counter in future, they would have to ensure that no mark, identical or deceptively similar to ‘OMIPURE’ was used. The test kits under the name ‘TATA MD CHECK RT-PCR OMISURE’ may continue to be manufactured and sold subject to the above conditions.

Manupatra Reference Number:  MANU/DE/1030/2022

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 29(2), Trade Marks Act, 1999 – Section 29(3)

Cases Referred: Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. MANU/SC/0199/2001; Caterpillar Inc. vs. Mehtab Ahmed and Ors. MANU/DE/1067/2002

The respondents were restrained from in any manner dealing in medicinal preparations under the impugned mark UROCOL or any other trademark, deceptively similar to the appellants’ trademark

Sun Pharma Laboratories Ltd. V/S Trugen Neurosciences Pvt. Ltd.

The present suit is filed by the appellants Sun Pharma Laboratories Ltd., in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, for permanent injunction restraining infringement of trademark and passing off and seeking protection of the mark ‘URSOCOL’. [CS (Comm.) 695/2021 and I.A. 17351/2021, Decided On: 28.03.2022]

The present suit for permanent injunction restraining infringement of trademark and passing off has been filed by the appellants seeking protection of their mark ‘URSOCOL’ which was adopted by them in 2003. The appellants state that their mark ‘URSOCOL’ is registered under Registration No. 1119429 for Medicines & Pharmaceutical preparations in Class 5 since 17th July, 2002.

The grievance of the appellants is that in December 2021, they came across respondents’ product called ‘UROCOL’ which was being sold in Delhi and also on various e-commerce platforms as well as being promoted on Facebook. The appellants found from the packaging of the said medicine that the respondents were engaged in the manufacturing and marketing of the said medicine bearing the mark ‘UROCOL’ and was used for the same ailment which the appellants’ product ‘URSOCOL’ cures.

According to the appellants, the respondents’ use of the mark ‘UROCOL’ constitutes infringement of the appellants’ registered trademark, passing off, as also unfair competition.

Upon the filing of the present suit, an ad-interim injunction was granted by the court vide order dated 23rd December, 2021 restraining the respondents from manufacturing, selling, directly or indirectly dealing in medicinal preparations under the impugned mark UROCOL or any other trademark, deceptively similar to the appellants’ trademark URSOCOL thereby amounting to infringement of their registered trademark and also from passing off, unfair competition, declaration, damages, delivery up, etc. Further a Local Commissioner was also appointed by the court to visit the premises of the respondents and make seizure of the infringing products.

The report of the Local Commissioner filed on record showed that the mark ‘UROCOL’ was being used by the respondents on their products.

The respondents entered appearance and submitted that they have agreed to give up the mark ‘UROCOL’ and stop manufacturing and marketing of their pharmaceutical preparations under the said mark and have also agreed to pay a sum of Rs. 1,50,000/- as litigation costs to the appellants.

In view of the above stand of the respondents, the suit is decreed in favour of the appellants. Further considering the amount of stocks seized from the respondents’ premises, the respondents were further directed to pay a sum of Rs. 2,00,000/- as litigation costs to the appellants. The respondents were also directed to destroy the packaging of the products bearing the infringing mark seized by the Local Commissioner, in the presence of the representative of the appellants. In view of the fact that costs of Rs. 2,00,000/- had been awarded to the appellants, as also the fact that the parties had resolved their disputes amicably, the appellants did not press for the relief of damages.

Manupatra Reference Number:  MANU/DE/0988/2022

Cases Referred: Munish Kalra vs. Kiran Madan and Ors. MANU/DE/1279/2019

The respondents’ adoption of an almost identical mark ‘MOBOL’ was clearly dishonest and mala fide, as appellants’ ‘MOBIL’ mark was more than 150 years old and in the same field

Exxon Mobil Corporation V/S Mobol Armour Corporation LLP

The present suit is filed by the appellants Exxon Mobil Corporation, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, seeking protection of their trademark ‘MOBIL’ which is being used for lubricants internationally since 1882. [CS (COMM) 696/2021, Decided On: 24.03.2022]

The present suit has been filed by the appellants Exxon Mobil Corporation, seeking protection of their trademark ‘MOBIL’ which is being used for lubricants internationally since 1882. The appellants are engaged in the manufacturing and sale of petroleum and related products in more than 160 jurisdictions in the world. According to the appellants the mark ‘MOBIL’ is stated to be a globally renowned mark.

The appellants have filed the present suit against the respondents as they have adopted and started using the mark ‘MOBOL’ in respect of similar products. The respondents have incorporated an LLP by the name ‘MOBOL ARMOUR CORPORATION LLP’ and have applied for a trademark registration of the mark ‘MOBOL’ on 23rd January, 2019. The appellants further state that the respondents obtained the trademark registration in July 2019 and started using the said mark for lubricants. The respondents also stated using the domain name: http://www.mobol.in/.

The respondents in the present suit have submitted that they started using the mark only after the registration was granted and, after the filing of the suit, the respondents stopped the using the mark ‘MOBOL’, since 1st April, 2021 onwards. According to the respondents they suffered losses and were in fact willing to suffer an injunction and had no intention to continue the use of the mark ‘MOBOL’.

The court perused the records and the documents placed, as heard the submissions made by both the parties. Insofar as the use of the mark ‘MOBOL’ was concerned, there was no doubt in the mind of the Court that the same was almost identical to the appellants’ renowned trade mark ‘MOBIL’. According to the court the respondents’ adoption was clearly dishonest and mala fide, as ‘MOBIL’ was a mark which was more than 150 years old in the same field of industrial oils, greases, lubricants, etc. Thus clearly, the respondents cannot be unaware of the mark ‘MOBIL’ and its reputation. Also the various orders placed on record showed that the mark ‘MOBIL’ had been protected repeatedly.

The court in the present suit opined that the respondents be restrained by an order of permanent injunction, from using the mark or name ‘MOBOL’ or any other mark or name identical or deceptively similar to the appellants’ mark ‘MOBIL’ in respect of any products including for industrial oil, greases, lubricants, etc. The respondents were also restrained from using the word ‘MOBOL’ as part of their incorporated name for the LLP. Accordingly, the respondents shall apply for either a name change of the LLP or closure of the LLP within a period of one month from today. Further the court also directed that the trademark registration be cancelled as the same was identical and deceptively similar to the registered trademark ‘MOBIL’ of the appellants’. The domain name www.mobol.in registered by the respondents be transferred in favour of the appellants.

Further, since the respondents had already agreed to give up the use of the mark ‘MOBOL’, no further order of damages or delivery up are being passed. However, in the facts and circumstances of this case, the court deems it fit to direct the respondents to pay a sum of Rs. 1 lakh towards costs. Also as the matter has not proceeded to trial, the appellants were granted a refund of 50% of the court fees. The present suit was decreed accordingly.

Manupatra Reference Number:  MANU/DE/0965/2022

The mark ‘SALON PROFESSIONAL’ was allowed to be proceeded for advertisement subject to the word mark ‘SALON PROFESSIONAL’ being replaced by the device mark used by the appellant

Modicare Limited V/S Registrar of Trademarks

The present suit is filed by the appellants Modicare Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, challenging the impugned order dated 26th February, 2021 passed by the Registrar of Trademarks rejecting the appellant’s application for the registration of their trademark. [C.A. (COMM. IPD-TM) 8/2022 and I.A. 744/2022, Decided On: 04.04.2022]

The present appeal under section 91(1) of the Trade Marks Act, 1999 has been filed by the appellant challenging the impugned order dated 26th February, 2021 passed by the Registrar of Trademarks rejecting the appellant’s application for the registration of trademark ‘SALON PROFESSIONAL’ in Class 3. Objection was raised by the Registry under sections 9(1)(b) of the Act on the ground that the mark consists of words which may serve in trade to designate the kind, quality, intended purpose and other characteristics of the goods. The application has further been objected to under section 11(1)(b) of the Act on the ground of similarity of mark and goods covered, in relation to an earlier trademark.

The appellants state that they are one of India’s leading direct selling companies offering 350 plus products under 14 different products categories.

The case of the appellants is that they adopted the mark ‘SALON PROFESSIONAL’ in 2003 along with their flagship house mark ‘MODICARE’. The trademark ‘MODICARE SALON PROFESSIONAL’ is already registered in the name of the appellants, bearing number 3308621 dating back to 13th July, 2016 for various products in Class 3. Along with the said mark, the appellants had simultaneously applied for the registration of the mark ‘SALON PROFESSIONAL’ without the ‘MODICARE’ mark for products in Class 3. According to the appellants, the mark ‘SALON PROFESSIONAL’ is a combination of two unique words ‘SALON’ and ‘PROFESSIONAL’, thus, as a whole it creates a totally distinct mark which is exclusively associated with the appellant. It is further stated by the appellants that, since said mark has been openly, extensively, and continuously used by them from 2003, they are entitled to registration of the said mark.

The court in the present suit asserted that a perusal of the manner in which the appellant was using the mark ‘SALON PROFESSIONAL’ showed that the said mark has been used in a logo form. Since the mark which is in use by the appellant is a device mark in a logo form, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words ‘SALON’ and ‘PROFESSIONAL’, constituting the mark.

The appellants have submitted that they are willing to modify the word mark to a device mark.

Thus, considering the long use of the mark by the appellants and the fact that the mark ‘MODICARE SALON PROFESSIONAL’ has already been registered in their favour the, the court directed that the device mark be proceeded for advertisement in the category of ‘advertised before acceptance’, subject to the following directions: The mark ‘SALON PROFESSIONAL’ bearing application no. 3308620 in class 3 shall be associated with the mark ‘MODICARE SALON PROFESSIONAL’ bearing trade mark no. 3308621 in Class 3. The association shall also be mentioned in the advertisement of the trademark. The word mark ‘SALON PROFESSIONAL’ in application no. 3308620 would be replaced by the device mark used by the appellant. The necessary form for the said purpose shall be filed by the appellant within a period of 6 weeks with the Trademark Registry along with other necessary forms. The design/logo mark shall proceed for advertisement subject to the condition that there would be no exclusive rights in the words ‘SALON’ or ‘PROFESSIONAL’.

Thus, subject to the above conditions, the mark was directed to proceed for advertisement and thereafter, if there was no opposition, the mark would proceed for registration.

Manupatra Reference Number:  MANU/DE/1071/2022

Acts/Rules/Orders: Trade Marks Act, 1999 – Section 11(1), Trade Marks Act, 1999 – Section 9(1), Trade Marks Act, 1999 – Section 91(1)

he trademark ‘MARC HEAVEN’ was directed to be cancelled and the register was liable to be rectified by the removing/expunging of the said mark

Blue Heaven Cosmetics Private Limited V/S Deepak Arora

The present suit is filed by the appellants Blue Heaven Cosmetics Private Limited, in the Honourable High Court of Delhi before Honourable Justice Prathiba M. Singh, under Sections 47, 57 and 125 of the Trade Marks Act, 1999 seeking cancellation/rectification of the trademark/device mark pronounced as ‘MARC HEAVEN’. [C.O. (COMM. IPD-TM) 9/2021 and I.As. 11908-09/2021, Decided On: 06.04.2022]

The present petition has been filed by the appellants M/s. Blue Heaven Cosmetics Pvt. Ltd. under Sections 47, 57 and 125 of the Trade Marks Act, 1999 seeking cancellation/rectification of the trademark/device mark/label pronounced as ‘MARC HEAVEN’. The impugned mark is registered in the favour of the respondent, Mr. Deepak Arora, bearing trade mark application no. 4111088 in Class 03 from 08th March, 2019.

The appellants state that their company is engaged in the business of manufacturing, marketing and trading in a range of cosmetic products and that they are the registered owner of the word mark “BLUE HEAVEN”, its formative marks as well as the device mark since 1972. According to the appellants they hold both statutory and common law rights in the mark on account of long, open and exclusive user in the mark “BLUE HEAVEN” and its various formative marks/variants. The appellants further contend that the products bearing the mark “BLUE HEAVEN”, are identified and associated exclusively with the appellants and no one else and the mark of the appellants’ is claimed to be a distinctive indicium of the appellants and their business.

The appellants are aggrieved by the grant of registration of the mark “MARC HEAVEN”, written in blue color to the respondents and upon the same coming to the knowledge of the appellants, the present rectification application has been filed for the cancellation of the mark “MARC HEAVEN”.

According to the appellants, the respondents have adopted an almost identical mark for an identical class of goods which also have the same trade channels. The respondents are using the blue logo and ‘Heaven’ in an identical manner which are the essential and prominent features of the appellants’ mark “BLUE HEAVEN”. The appellants relay on, Section 9(2)(a) of the Act to argue that if a mark is of such nature as is likely to cause confusion or deceive the public, then the same cannot be registered. Further according to them, under Section 11 of the Act, it is submitted that since the appellants’ trademarks were prior registered and prior used, the said mark ought to have been cited against the respondents’ mark in the examination report and the registration ought not to be granted, hence rectification of respondents’ mark is sought in view of Section 57 of the Act.

The respondents in the present suit have filed a cancellation petition against the appellants’ mark 4802221 in class 3, in which it was averred that the marks “BLUE HEAVEN” and “MARC HEAVEN” are identical/deceptively similar.

It is further highlighted in the suit that vide order dated 15th September 2021, a notice was issued to the respondents however the notice was received un-served. Thereafter, repeated attempts were made to serve the respondents and on 2nd March, 2022, they were proceeded ex parte. Even today there was no appearance for the respondents. A perusal of the petition and the averments made therein, clearly showed that the appellants were aggrieved under Section 57(2) of the Act and have the locus standi to maintain the present petition.

The court stated that the appellants were the prior user of the mark “BLUE HEAVEN” in respect of cosmetics goods under class 3 and were aggrieved by the registration of the mark “MARC HEAVEN” by the respondents in respect of the same class of goods. Further the court also pointed out that the respondents’ stand for seeking rectification/cancellation of the appellants’ mark is that the two marks are identical/deceptively similar. Thus, it was a clear admission on behalf of the respondents’ as to the identity/similarity of the marks in question.

In the court’s opinion, under Sections 9 and 11 of the Act, the court had no hesitation in holding that respondents’ mark was wrongly entered in the register and wrongly remains in the register. Accordingly trademark bearing no. 4111088 was directed to be cancelled/removed and the register was liable to be rectified by the removing/expunging of the said mark. The court further asserted that the Registrar of Trademark shall take proper steps for cancelling/expunging the Registration No. 4111088 from the register within six weeks. The current petition along with all the applications was accordingly disposed off.

Manupatra Reference Number:  MANU/DE/1138/2022

Acts/Rules/Orders: Copyright Act, 1957 – Section 14; Trade Marks Act, 1999 – Section 11, Trade Marks Act, 1999 – Section 11(2), Trade Marks Act, 1999 – Section 125, Trade Marks Act, 1999 – Section 47, Trade Marks Act, 1999 – Section 57, Trade Marks Act, 1999 – Section 57(2), Trade Marks Act, 1999 – Section 9, Trade Marks Act, 1999 – Section 9(1), Trade Marks Act, 1999 – Section 9(2)

Cases Referred: South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. MANU/DE/2574/2014

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