Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J., allowed the suit filed by Bennett Coleman for restraining the defendant from infringing its trademark, copyright, etc. in channel name TIMES NOW.

The defendant was using the channel name NATIONAL TIMES NOW. The plaintiff, popularly known as Times Group company, has been in the media industry since 1838. It runs several publications including Times of India and Economic Times. It is also India’s largest media conglomerate, popularly known as Times Network which owns and operates several channels including TIMES NOW. It was submitted that the plaintiff’s mark TIMES NOW had acquired distinctiveness and have become source identifier of plaintiff’s business. Moreover, the petitioner is the registered owner of the said mark-channel name.

The High Court, while deciding the instant application filed under Order XIII Rules 2, 4 and 6 CPC seeking a summary judgment, duly considered the submissions made on behalf of the petitioner. The plaintiff also submitted that TIMES NOW form a dominant and essential part of the name of plaintiff’s channels, and the defendant’s channel name NATIONAL TIMES NOW is deceptively similar to the names of various channels and websites of the plaintiff. On bases of the fact that the plaintiff was a registered user of the trademark in question, and noting the fact that the defendant neither entered appearance nor filed its written statement, the Court was of the view that the defendant did not have any real prospect of defending the claim. Accordingly, the suit was decreed in favour of the plaintiff and against the defendant. [Bennett Coleman and Co. Ltd. v. M. Akram Pasha, CS (COMM) No. 828 of 2018, dated 08-08-2018]

Case BriefsSupreme Court

Supreme Court: The Bench comprising of A.K. Sikri and Ashok Bhushan, JJ., allowed a civil appeal filed against the judgment of Karnataka High Court, whereby the decision of Intellectual Property Appellate Board cancelling the registration of appellant’s trademark was upheld.

Respondent was a cooperative of milk producers who sold milk and milk products under the mark NANDINI. It has registration of the mark under Classes 29 and 30 of Schedule IV to the Trade Mark Rules, 2002. The appellant, on the other hand, adopted the mark ‘NANDHINI’ for its restaurants and applied for registration of the said mark in respect of various foodstuff sold by it. Registration of the mark was allowed in favour of the appellant by the Deputy Registrar of Trade Marks. Respondent objected that the mark was deceptively similar to that of the respondent’s, and was likely to deceive the public or cause confusion. According to the respondent, it had exclusive right to use the said mark and any imitation thereof by the appellant would lead the public to believe that the foodstuff sold by the appellant were, in fact, that of the respondent. The respondent appealed to the IPAB against the decision of Deputy Registrar, which was allowed. Subsequently, the writ petition filed by the appellant thereagainst was dismissed by the High Court.

The Supreme Court proceeded in the matter on the presumption that NANDINI trademark of the respondent had acquired distinctiveness. The fulcrum of the dispute was whether the registration of mark ‘NANDHINI’ in favour of the appellant would infringe the rights of the respondent. The Court, after considering the facts, found it difficult to sustain the order, as it did not find the two marks deceptively similar. Applying the principles laid down in National Sewing Thread Co. v. James Chadwick and Bros., AIR 1953 SC 357, to the instant case, the Court found that the visual appearance of the two marks was different and they relate to different products. Further, looking at the manner in which they were traded, it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant to that of the respondent. The Court held that the use of the mark ‘NANDHINI’ by the appellant in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trademark of the respondent. Therefore, the impugned order was held to be unsustainable in the law which was accordingly set aside. The appeal was, thus, allowed and order of the Deputy Registrar granting registration in favour of the appellant was restored. [Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., 2018 SCC OnLine SC 741, dated 26-07-2018]

Hot Off The PressNews

European Court of Justice: An appeal filed by Nestlé, chocolate maker, arguing for registration of the trademark in the shape of KIT KAT chocolate bar, was dismissed.

Two giants of the chocolate industry, Nestlé and Cadbury, have fought for more than a decade over the trademark in the shape of the four-fingered chocolate bar. In 2002, Nestlé applied for trademarking KIT KAT in Europe. The application was not only for the bar embossed with KIT KAT logo but also for the shape of the bar itself- four trapezoidal bars aligned on a rectangular base. The EU Trademark Office granted Nestlé’s application. In 2007, court battle began over the trademark in the shape of the bar. The question was whether the brand had become distinctive enough to deserve its trademark- that its shape alone was how people recognize the snack.

ECJ in its ruling, essentially dismissed Nestlé’s claim, by observing that it is not enough to prove that a product has become iconic in a significant part of EU, it has to be proven across all the markets of the block. The Court directed the EU Trademark Office to reconsider its decision.

[Source: BBC]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Rajiv Sahai Endlaw, J. rejected plaintiff’s interlocutory application in the suit seeking to restrain respondent-Apple Inc. from using the mark ‘SPLITVIEW’ in relation to any of its software products.

Plaintiff 1 was a software developer working as a consultant with Plaintiff 2. It was submitted that ‘SplitView’ was the trademark ascribed to its most successful commercial product, which was well known and widely recognized. The plaintiffs alleged that the defendant Apple Inc. launched an update to their operating software which included a feature named ‘SPLITVIEW’. It was alleged that SPLITVIEW  was functionally identical with plaintiff’s SplitView. In such circumstances, the above-mentioned action was brought by the plaintiffs against the defendant. The defendant contesting the suit submitted that SPLITVIEW or SplitView was a descriptive word and no monopoly could be claimed by the plaintiffs over it. Further, the term SPLIT VIEW was extensively used by other corporations like Microsoft, Samsung, etc.

The High Court considered the controversy and after examining each contention found that plaintiffs were not entitled to any interim relief. The Court noted that it was required to protect the plaintiffs only if it found the defendant to be passing off its goods and services as that of the plaintiffs. That was however not the case of the plaintiffs here. Further, the elements of irreparable injury and balance of convenience were not satisfied to merit grant of an interim injunction on the basis thereof. Accordingly, the interlocutory application was dismissed. [Rohit Singh v. Apple Inc., 2018 SCC OnLine Del 9635, order dated 04-07-2018]

Case BriefsHigh Courts

Calcutta High Court: A Single Judge Bench comprising of Soumen Sen, J., addressed the grievance of the petitioner who has prayed for the passing of “John Doe” order against the respondents who are responsible for the infringement of petitioner’s copyright and trademark.

The brief facts of the case are that the petitioner is involved in the business of  B2B e-commerce portal and since its inception in the year 1996, he had coined and adopted a unique mark known as “INDIAMART” for use in connection with the goods and services falling under various categories. He also claims that he has been using the said mark regularly and also got it registered in various forms as a wordmark, logo mark, label mark, and device mark. The petitioner has furnished all the details for the said registrations.

In regard to the copyright and trademark infringement, petitioner became aware of respondent’s having slavishly imitated the petitioner’s unique mark “INDIAMART” in one form or the other. For the said claim, petitioner’s have successfully disclosed all the copies which show that the petitioner’s mark is being infringed. One of the claims being put forward by the petitioner is that clearly the respondent’s have tried to confuse and deceive the public over the reputation of the plaintiff’s mark. Further, it has been stated by the petitioner that the respondents have infringed the copyright of the petitioner by using the proprietary information/data including such information, etc. which comes under the literary works of the petitioner.

Therefore, the petitioner has demanded the blocking of such websites which clearly are constituting to piracy and violation of the copyright and trademark use of the petitioner and on that note, he has prayed for John Doe orders of injunction.

The Hon’ble High Court, by recording the documents furnished by the petitioner and the fact that respondents have slavishly imitated the trademark of the petitioner which brings the Court to the claim of the petitioner about its goodwill and thereby allowing the relief to the petitioner as prayed for and concluding by giving direction to the petitioner to communicate this order to all the defendants. [Indiamart Intermesh Ltd. v. Ankit; 2018 SCC OnLine Cal 2379; dated 16-05-2018]

Case BriefsForeign Courts

European Court of Justice: In May 2013, Christian Louboutin initiated proceedings before the District Court, The Hague, Netherlands, claiming that Van Haren had infringed the mark at issue. In July 2013, that Court delivered a default judgment upholding in part the claims of Christian Louboutin. Van Haren challenged that judgment before the referring court, the District Court, The Hague, claiming that the mark at issue was invalid on the basis of Article 2.1(2) of the Benelux Convention on Intellectual Property (Trade Marks and Designs). Legal battle over trademarking Louboutin’s signature red-soled high-heeled shoes centred on whether his trademark involved a shape or a colour.

Article 3 of Directive 2008/95 provides grounds for refusal or invalidity of trademark on the grounds inter alia if the sign consist ‘exclusively’ of the shape which results from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods. Similar limitations on trademarks are laid in of Article 2.1(2) of the Benelux Convention. In the application for registration, the mark at issue is described as follows: ‘The mark consists of the colour red (Pantone 18-1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’.

In the context of trade mark law, the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned. The question before the Court was whether the fact that a particular colour is applied to a specific part of the product concerned results in the sign at issue consisting of a shape within the meaning of Article 3(1)(e)(iii) of Directive 2008/95. While pointing out that no definition of ‘shape’ has been provided in the directive the Court found that its meaning has to be understood by considering its usual meaning in everyday language.

Court noted that while it was true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product. It ruled that Article 3(1)(e)(iii) of Directive 2008/95/EC of European Parliament relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe does not consist exclusively of a ‘shape’, within the meaning of that provision. The Court in The Hague will deliver the final ruling on the matter based on the ECJ decision. [Christian Louboutin SAS v. Van Haren Schoenen BV, Case C-163/16, order dated 12-06-2018]

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,2018 SCC OnLine Kar 637, dated 08-05-2018]

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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