Case BriefsHigh Courts

Karnataka High Court: A Single Judge Bench comprising of L. Narayana Swamy, J. dismissed a miscellaneous first appeal while vacating the injunction passed against the respondent prohibiting him from using the trademark ‘PATIL FRAGRANCES’.

The appellant filed a suit against the respondent for infringement and passing off its trademark and trade name ‘PATIL AND PATIL PARIMALA WORKS’ by using identical and deceptively similar trade name. An application for interim injunction was also filed to restrain the respondent from using the name ‘PATIL FRAGRANCES’ during pendency of the suit, which was granted. Thereafter, the respondent too filed an IA for vacating the injunction which was allowed and thereby the injunction was vacated. The appellant filed the instant appeal impugning the order passed by the XVII Additional City Civil Judge vacating the injunction granted initially against the respondent.

The High Court, in order to decide the appeal, weighed the matter to find out in whose favour lies the balance of probabilities. The Court found that the appellant and the respondent belonged to the same family; they used the same surname; the respondent was a former employee and the brother of the appellant; various members of the family use the surname ‘PATIL’ for conduct of their business. The credential of the respondent having the same name was verified by various government documentary proofs. Relying on Section 35 of the Trade Marks Act, the Court held that even a registered user or a registered trademark proprietor cannot interfere with the bona fide use by a person of his own name. Accordingly, the Court held that it was not a case of infringement of trade mark, but it was a clear case of bona fide use of his name by the respondent. In such circumstances, the Court dismissed the appeal and upheld the impugned judgment vacating the injunction passed against the respondent. [Somashekar P. Patil v. D.V.G. Patil, MFA No. 2707 of 2018 (IPR), dated 8.5.2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Mukta Gupta, J.  declared the French designer Christian Louboutin’s ‘red sole’ shoes as a well-known trademark and directed two footwear traders in Delhi’s Karol Bagh to pay compensation to the luxury brand owner for infringing the trademark for over a year and a half. The defendants had also been selling the shoes through online platform.

The Court had observed that the plaintiff has been a well-known luxury brand with presence in over 60 countries including India and has been using its ‘red sole’ trademark extensively and continuously since 1992. [Christian Louboutin SAS v. Pawan Kumar, 2017 SCC OnLine Del 12173, decided on 12.12.2017]

Case BriefsHigh Courts

Delhi High Court: While disposing of a passing off action, the Single Bench of Pradeep Nandrajog, J. held that to establish trans-border reputation of a trademark, it is to be proved that the trademark had reputation in foreign jurisdictions, and it was within the knowledge of public at large in the domestic jurisdiction, due to its reputation abroad.

In 1997, the automobile company Toyota launched World’s first hybrid car “Prius” in Japan. Toyota had obtained registration of the trademark Prius in different jurisdictions abroad. Toyota contended that the Appellants had passed off its trademark Prius and had dishonestly obtained its registration in India. Though the car was not sold in India, a trans-border reputation in the trademark was claimed on the strength of news articles, and publications. Toyota also pleaded that the appellants had been selling automobile parts using its registered trademarks, Toyota, and Innova. Appellants admitted using the words Toyota and Innova on the packaging material, but contended that the use was not as a trademark, but to inform the consumers that automobile parts were compatible with motor vehicles manufactured by Toyota. Concerning the trade mark Prius, appellants pleaded that since they were the first to manufacture ‘Add on Chrome Accessories’ in India, they considered the Hindi words ‘Pehla Prayas’ (first attempt) for their business. They added that since a trademark has to be catchy, they searched dictionaries for a word that can be associated with ‘Pehla Prayas’, and they chanced upon the word Prius, which means ‘prior’ or ‘former’.

The Court noted that the event of Prius’ launch was reported as a news item in different countries including India but not with such prominence that the public at large became aware of the same. It also observed that the public confidence in the Prius car was feeble since the car had been recalled many times. Thus, the Court concluded that no trans-border reputation had been established by Toyota in the trademark Prius. It further added that the appellants were entitled to inform the consumer that the auto parts were adapted for use in Toyota cars, in conformity with Section 30(2)(d) of the Trade Marks Act, 1999. The Court also found that the appellant’s justification for adopting the trademark Prius was logical and credible, and held that if a word is publici juris and a person gives good justification as to how he appropriated it, unless the testimony of the person is discredited, a Court would have no option but to accept the statement made on oath. [Prius Auto Industries Ltd v. Toyota Jidosha Kabushiki Kaisha, 2016 SCC OnLine Del 6405, decided on December 23, 2016]

Case BriefsSupreme Court

Supreme Court: Interpreting Section 125 of the Trademarks Act, 1999, the bench of Kurian Joseph and F. Nariman, JJ, stating that Section 124 is of great importance in interpreting Section 125 of the Act, explained that Section 124(1) refers only to the plaintiff and defendant of a suit for infringement, and Section 124(1)(ii) specifically refers to the “party concerned” who will apply to the Appellate Board for rectification of the register. Similarly, Section 125 also refers only to the “plaintiff” and the “defendant” in a suit for infringement of a registered trademark.

Based on the above observation, the Court held that an application for rectification of the register can either be made by the defendant who raises a plea in the suit that the registration of the plaintiff’s trademark is invalid, or by the plaintiff who questions the validity of the registration of the defendant’s trademark in a situation where the defendant raises a defence under Section 30(2)(e) of the Act.

It was further held that Section 125(1) would only apply to applications for rectification of the register, and not to the exercise of suo motu powers of the Registrar under Section 57(4) of the Act. It was explained that in Section 125(1), the width of the expression “Section 57” is cut down by the expression “and an application for rectification of the register”. Such rectification applications are referable only to Sections 57(1) and (2) and not to the suo motu power of the Registrar under Section 57(4). [Jagatjit Industries Ltd. v. Intellectual Property Appellate Board, 2016 SCC OnLine SC 58, decided on 20.01.2016]

High Courts

Bombay High Court: In a case of alleged infringement of a trademark, a bench comprising of  SJ Kathawala, J granted an interim injunction restraining a firm from marketing an edible oil brand on the grounds that the name was similar to an established product. The court said that merely adding a suffix to a popular name can’t be the basis of a new trademark. In the present case, the plaintiff had acquired registration of the trademark ‘RISO’ in 2012. The plaintiff alleged that the impugned trademark ‘RISO-LITE’ of the defendant was deceptively similar to its mark ‘RISO’. The Counsel for the defendant argued  that ‘RISO’ was an Italian name for rice and hence it was descriptive in nature and can be freely used by anyone. The Court however rejected this contention stating though it is true that certain words are often borrowed from a foreign language and commonly used in India but ‘RISO’ is not one such word which is commonly used in India, and cannot be held as descriptive in the Indian context. The defendant further contended that the plaintiff had not honestly adopted and conceived the said trademark ‘RISO’ since there were other marks, already using the word ‘RISO’, existing in the market, namely “RISONA” and “RISOLA”. However, the court held that the defendant in the present case has not been able to show that the prior marks ‘RISONA’ or ‘RISOLA’ have actually been used or that they have a reputation or market of their own and thereby granted interim injunction in favour of the plaintiff. Kamani Oil Industries Pvt. Ltd vs. Bhuwaneshwar Refineries Pvt. Ltd., Notice of Motion No. 139 of 2014, decided on May 9, 2014

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