Case BriefsHigh Courts

Delhi High Court: Rajiv Sahai Endlaw, J. dismissed a suit filed for refraining the makers of the movie Khandani Shafakhana from releasing the said movie on the ground that it infringes the plaintiff’s proprietary rights.

The plaintiff is an Ayurvedic Sexologist practicing in New Delhi. He claimed that his father, Hakin Hari Kishan Lal, had coined the logo/trademark/brand Khandani Shafakhana and had been in existence from as long as back as 1925. It was claimed that the same constituted plaintiff and his family’s proprietary material. It was also claimed that the Khandani Shafakhana device mark was registered with the Trade Marks Registry. On this basis, it was alleged that the makers of movie Khandani Shafakhana were infringing their proprietary rights. However, it may be noted that the said device mark was not in use for the last 18 years.

Senior Advocate Harish Malhotra, representing the plaintiff submitted that the abandonment of the said device mark was not voluntary and that it could be revived at any time. Rejecting this submission, the High Court noted that the abandonment was under an Order 33 Rule 3 CPC application, and was of plaintiff’s own violotion. It was not pleaded that there was any force or compulsion on the plaintiff to sign the application.

Discussing the proprietary rights claimed by the plaintiff, the Court observed:

“Moreover, while the use of 18 years prior to the institution of the suit, by the father of the plaintiff, of the words “Khandani Shafakhana” is in relation to his professional clinic, the use by the defendants is of the said words as a title to a film. The words “Khandani Shafakhana” singly as well as used in conjunction with each other are generic words. Both are words of Hindi / Urdu language. While the word “Khandani” connotes familial or clannish, the word “Shafakhana” means a hospital or a clinic. Used together, the words convey a family hospital or a family clinic. A bare search of the internet, discloses the word “Khandani” being used, with„Pakode Wala? for vending street food, with „Rajdhani? for a restaurant, with „Sherwani? for a clothing store.Certainly, one person even if running his medical clinic in the name and style of “Khandani Shafakhana”, cannot prevent another, from using the generic word“Khandani” or “Shafakhana” for a hospital or a medical clinic.”

A screening of the movie was arranged for the Court and the plaintiff and after watching the same, Justice Endlaw recorded in the present Judgment:

“I had risen after viewing the film thinking that it presents a golden opportunity to the plaintiff and other practitioners in the field, to, though till now found publishing their advertisements in local newspapers, approach the larger cross section of the society on the subject of need to impart sex education and for lifting the stigma and taboo attached to sexual diseases/disorder/dysfunction and treatment thereof and to commence a countrywide dialogue from the platform offered by the film.”

After discussing the principles culled out from various judicial precedents on the subject, the Court was of the view that the plaintiff was not entitled to the relief of permanent or mandatory injunction or for recovery of any damages from the defendant, as claimed. Resultantly, the suit brought by the plaintiff was dismissed.[Vijay Abbot v. Super Cassettes Industries (P) Ltd., 2019 SCC OnLine Del 9458, decided on 29-07-2019]

Hot Off The PressNews

The World Intellectual Property Organization (WIPO) has launched a new artificial intelligence (AI)-powered image search technology that makes it faster and easier to establish the distinctiveness of a trademark in a target market.

Earlier-generation image search tools primarily determine trademark image similarity by identifying shapes and colors in marks. WIPO’s new AI-based technology improves on this technology by using deep machine learning to identify combinations of concepts – such as an apple, an eagle, a tree, a crown, a car, a star – within an image to find similar marks that have previously been registered.

The new technology results in a narrower and more precise group of potentially similar marks, facilitating greater certainty in strategic planning for brand expansion into new markets. With fewer results to scrutinize, this also translates into labor-cost savings for trademark examiners, attorneys and paralegals, industry practitioners and researchers.

WIPO’s new AI search technology leverages deep neural networks and figurative elements classification data from the Madrid System for the International Registration of Marks and from large trademark offices.

All users can access the AI search technology for free through WIPO’s Global Brand Database, where it has been fully integrated into the database search engine.


[Press Release dt. 26-03-2019]

[Source: WIPO]

Corp Comm LegalExperts Corner

In today’s digital world, the internet is probably the most intrusive and effective way to make yourself known and available to the global community. In the last decade or so, online advertising has become the easiest way for corporates to advertise their products and services. The internet’s ability to find, attract and target customers is unmatchable.

Keyword advertising is one of the main tools that a lot of companies have been using to expand their internet presence. This form of advertising allows the products of the companies to appear on the search results of the customer when they search a particular phrase on the search engines. This has been triggered by the help of the search engines like Google and Yahoo which have created keyword advertisement programs that allow the advertisers to purchase certain words or phrases that would lead to their product.

For e.g., if a person was opening a new NGO in Dehradun and wanted to advertise the NGO on Google, the first step would be to create an online advertisement for the NGO. Thereafter, the person would choose certain terms that would lead to the advertisement being shown on Google. The person might purchase those words to lay the framework for keyword advertising.

The problem that surrounds the increasing use of keyword advertising is that of trademark violations. This field though requiring a lot of attention is still highly unsettled due to lack of sufficient and clear law or judicial understanding. The principle reason for the same deficiency is that most cases of keyword advertising do not reach court and are settled by the parties outside it.

The problem arises when companies buy keywords that are trade marks of unrelated third parties or even their competitors. This is done to allow its product to be shown on the search engine when the customers search for its competitors’ marks. To put it into context for instance like in the first example, the person opening the new NGO purchases Child Rights as a keyword, it may show the NGO advertisement every time a person searched Child Rights and You (CRY). Now, this seems to be an excellent move by the advertisers because the established keyword CRY will garner more views than its newly established NGO’s keywords.

This practice of using another company’s name in advertisements is also known as piggybacking and is often practised by companies in disguise to manipulate customers. The general idea that exists in judicial decisions is that the advertisers can bring in action if there is a confusion caused among consumers. While analysing trade mark violations with respect to keyword advertisements, the courts have mostly held that the “likelihood of confusion” is not obvious. However, this being a grey area has attracted a lot of diverse opinions by intellectual property rights (IPR) experts. Different courts have given different judgments in this regard. The courts have mostly restrained from holding the search engines liable for allotting such keywords. However, a conclusive determination on the issue is still awaited. Thus, let us analyse the “likelihood of confusion” in keyword advertisements.

The Trade Marks Act, 1999 deals with the legal issues related to trade mark infringement in India. It is defined as an infringement of exclusive rights attaching to a trade mark without the authorisation of the trade mark owner or any licensee.[1] There are two types of remedies available to the owner of a trade mark for unauthorised use of its imitation by a third party. These remedies are an action for passing off in the case of an unregistered trade mark and an action for infringement in case of a registered trade mark. Moreover, there also exists a jurisdictional issue with regard to the competence of national courts to hear matters relating to keyword advertisements and the liability of search engines.

The essential function of trade mark law is to secure the real identity of any product. It is to provide a product with a secondary meaning which distinguishes it from other products. The “likelihood of confusion” is instrumental in determining whether a trade mark violation has taken place. This research is significant because there is no uniform standard with regard to the trade mark violations by the use of keyword advertisements. Therefore, the existing problem in relation to keyword advertisements is whether it has all the essentials of trade mark violations. Moreover, whether the search engines shall be liable for selling such keywords is another issue that exists today.

The issue of keyword advertising and the related trade mark infringement is still evolving in India as there is no binding decision on the same. The major reason for the lack of judicial authority over the same is that there are no particular laws and regulations that are governing keyword advertising. Development in the law on keyword trade mark infringement will enable the courts to analyse and rule on them effectively. However, with the increasing scope of online advertisements, the number of infringement suits is increasing worldwide. Most jurisdictions have refrained from ruling in favour of trade mark infringement or contributory infringement of search engines. As it was seen in Portakabin Ltd. v. Primakabin BV[2] decided by the European Court of Justice (ECJ) in 2010, the tide is still in the favour of advertisers in such disputes.

The ECJ ruled in favour of Primakabin’s use of trademarked keywords while stating that:

A specialist reseller of second-hand goods under another person’s trade mark cannot be prohibited from using that mark to advertise to the public its resale activities unless the resale of those other goods risks seriously damaging the image which the proprietor has succeeded in creating for its mark.[3]

With regard to the search engines liability, it was seen in Victor Andrew Wilson v. Yahoo! UK Ltd.[4] that search engines cannot be held liable for the use of trademarked advertisements. The UK Court had opined that the search engine was not using the trade mark of the claimant and it was being used by the people who were browsing the term “Mr Spicy”. Thus, similar to the stand in the Netherlands, the UK Courts have also ruled in favour of the advertisers. Moreover, in France, the Court has held that Google is merely performing a technical and passive role and thus it cannot be held liable[5]. As the search engine is not working for its own communication, but the communication of the customers, the liability shall only arise when Google is asked to take off the infringing keyword and it refrains from doing so.[6]

The ECJ has held that there are four main cumulative conditions that must be shown to prove trade mark infringement. In order for trade mark infringement to occur, all four components shall be satisfied:[7]

(i) the use must be in the course of trade;

(ii) the use must be made without the consent of the trade mark owner;

(iii) this use must relate to identical or similar products or services; and

(iv) the use must affect the functions of the mark.

Given the aforementioned grounds of trade mark infringement, keyword advertisements of the trade mark words may as well constitute trade mark infringement of the registered trade mark. Such tactics are invariably undertaken by rival companies involved in similar trade as of that of the trade mark owner. The rival companies use trademarked words as keywords without taking permission from the owner. This, therefore, is a dishonest practice and involves a use of symbol or mark that has been registered by another party. Further, most of the times, these companies produce products or provide services that are close substitutes of each other and thus keyword advertisements relate to identical and similar products and services.

Another question that merits an answer is whether the use of such keywords amount to loss to the owner of the trade mark. It has been argued that given the level of internet literacy, an average internet user does not know the difference between search results and advertisements and it is likely that a user will go to a link of other advertisers mistaking it to be the trademarked products advertisement. However, this argument does not stand given the increasing scope of online advertisements and online shopping. The internet has become the biggest platform for the exchange of goods and services. A lot of customers browse for particular products in the internet and are confused due to the advertisements of the rival companies. Since, it is the first advertisement that appears on the search result, more often than not, the customers end up landing on their websites.

It must be noted here that mostly, the new rival brands are trying to use the keywords of renowned trade marks to market their products are producing similar products or services. As these products or services are close substitutes of each other, the customers might be swayed to purchase the new companies’ goods or services as the newly marketed products are mostly cheaper in the market. Further, the customers become aware of the existence of such a rival brand and therefore the exclusivity of the trade mark owner does not remain the same and they may face substantial dip in their sales and profits. The initial confusion affects the economic gains of trade mark registration.

We conclude by saying that trade mark violation of trademarked keywords constitutes an infringement of trade mark by the rival advertiser. However, with regard to the liability of search engines, it shall depend upon the recognition of the trade mark. If it is too widely renowned trade mark for instance “Coke”, then the search engines should be held liable for putting it in the suggestion box for keywords. Sooner or later, such matters may start landing before appropriate courts for redressal and the uncertainty over this issue may then be settled by providing a conclusive determination.


[1]    Dr B.L. Wadhwa, Law relating to Intellectual Property Rights, 4 (Universal Law Publication Co), 303-305, (2010).

[2]    Case C-558/08, order dated 8-7-2010 : ECLI:EU:C:2010:416.

[3]    Portakabin Ltd. v. Primakabin BV, Case C-558/08, order dated 8-7-2010 : ECLI:EU:C:2010:416.

[4]    2008 EWHC 361 (Ch).

[5]    Google France SARL v. Louis Vuitton Malletier SA, Case C-236/08, order dated 23-3-2010 : ECLI:EU:C:2010:159,.

[6]    Ibid.

[7]    Ibid.

Case BriefsHigh Courts

Delhi High Court: Pratibha Singh, J., while allowing the suit brought by Sun Pharma Laboratories Ltd., passed an order injuncting Ajanta Pharma Ltd. from selling any medicinal preparations, nutritional food supplements or any other preparations for human consumption for treating any illnesses or diseases under the trademark GLOTAB or any other mark identical or deceptively similar to the Sun Pharma’s mark GLOEYE.

The dispute between the plaintiff and the defendant was is in respect of two products used by patients of the age-related dimness of vision and diabetic retinopathy. They are sold under the trademarks GLOEYE and GLOTAB, respectively. Both are ocular medicines. Since they contain plant extracts, they are termed as “nutraceuticals” under Section 22 of the Food Safety and Standards Act, 2006.

Plaintiff’s case was that it commenced use of the mark GLOEYE in July 2005 and it was their registered mark. The defendant was also using the mark GLOTAB for the same purpose, i.e. medicine used by patients for the age-related dimness of vision and diabetic retinopathy. Incidentally, defendants mark was also a registered mark. The defendant was using the said trade mark since 2013. The plaintiff filed the present suit for an interim injunction.

Since both the trademarks were registered, the case for infringement of trademark could have been maintainable; thus,  the suit proceeded on the principles of “passing off”, as recognised under Section 27(2) of the Trade Marks Act, 1999. The High Court considered the question — is the test for infringement and passing off for nutraceutical products the same as the test applicable for pharmaceuticals?

Kapil Wadhwa, Devyati Nath and Deepika Pokharia, Advocates representing Sun Pharma, submitted that it was a clear prior user of the said mark by atleast 8 years. Mr Wadhwa submitted that the fact that the composition of two products is different enhances the chances of confusion, especially in products that are consumed for the same ailments. Per contra, Senior Advocate Sandeep Sethi, Jayant Mehta, Afzal B. Khan and Suhrita Majundar, Advocates appearing for Ajanta Pharma, resisted the suit. Mr Mehta submitted that both the products are prescription drugs, and the prefix ‘GLO’ is common to the trade. In addition, Mr Sethi submitted that since there had been no confusion for the last 6 years, this was not a case for grant of interim injunction.

The High Court found that nutritional food supplements and nutraceuticals are akin to medicines and pharmaceutical preparations. Reliance was placed on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 for the proposition that — “in respect of medicines and pharmaceuticals deception and confusion need to be avoided.”

Holding that the tests laid down in Cadila case were fully applicable to the present case, the Court observed: “the mere fact that these products are nutritional food supplements or nutraceuticals and are not pharmaceuticals in the strict sense is not convincing enough for adoption of a less stringent test … The mere fact nutraceuticals are termed so, as they contain ingredients derived from plants, does not mean that a lenient test needs to be adopted in respect of these products. The effects of the products and the consumers of the products all being similar in nature, the test applicable to pharmaceutical products would be applicable even to nutraceuticals. The Court, thus, rejected the defendant’s contention that the decision in Cadila case was not applicable.

Comparing the two products, the Court found that while both products are used for similar medical conditions and are anti-oxidant retinopathy drugs, there are marked differences between the two products. The Court was of the view that the two products were used for treating similar medical conditions, and it was not possible to accept the defendant’s explanation that it was a bona fide adopted of the mark GLOTAB. Moreover, the following were the factors which persuaded the Court to hold that the defendant’s mark was deceptively similar to that of the plaintiff’s mark:

a) ‘GLOTAB’ and ‘GLOEYE’ have the same prominent prefix, namely, ‘GLO’;

b) The Plaintiff’s product ‘GLOEYE’ is a tablet. ‘TAB’ is nothing but a short form for ‘tablet’;

c) The composition of these two products is different though both are ocular medicines.

d) The suffixes ‘EYE’ and ‘TAB’ in fact do not sufficiently distinguish the two products – and in fact, enhance the chances of confusion;

e) Both are nutritional food supplements. Both contain bilberry extract, but the remaining ingredients are different;

f) The chances of ‘GLOTAB’ being prescribed in place of ‘GLOEYE’ or a patient being dispensed with ‘GLOTAB’ in place of ‘GLOEYE? is quite high and cannot be eliminated

It was also observed that: “the settled law in passing off is that of probability or likelihood of confusion and not actual confusion. In Cadila, the Supreme Court has warned that in case of products used for the same ailments but with different composition, a more stringent test needs to be adopted.”

Holding that the nutraceuticals ought to be treated on par with pharmaceuticals, and applying the principles laid down in Cadila case, the Court held that Sun Pharma was entitled to an interim injunction. For all the above reasons, Ajanta Pharma was restrained as already mentioned above. Since Ajanta Pharma’s manufacturing license was of 2013, it was permitted to sell existing stock of its products and packaging under the mark GLOTAB subject to filing quarterly accounts of the same.[Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd., 2019 SCC OnLine Del 8443, decided on 10-05-2019]

Case BriefsHigh Courts

Bombay High Court: The Division Bench comprising of B.R. Gavai and Riyaz I. Chagla, JJ. partly allowed an appeal filed against the judgment allowing notice of motion restraining appellant from inter alia (i) telecasting or broadcasting or otherwise howsoever communicating to the public or publishing two Television Commercials (impugned TVCs) or any part thereof or any other advertisement of a similar nature in any language or in any manner causing the impugned TVCs or any part thereof or any other advertisement of a similar nature to be telecast or broadcast or communicated to the public or published in any manner and (ii) disparaging or denigrating the plaintiff’s KWALITY WALL’S products or the plaintiff’s business in any manner whatsoever.

Factual matrix of the case states that, plaintiff-Hindustan Unilever Limited (HUL) are one of India’s well-known and reputed company in the FMCG sector. Plaintiff states that “KWALITY” has been a well recognised brand in India, having been in the market for over 70 years and was acquired by the plaintiff before entering into the business of ice creams and desserts in India and KWALITY has been used along with plaintiff’s own global brand WALL’S as KWALITY WALL’S.

“KWALITY” enjoys a special status in the eye of public being a very popular trade mark.

Plaintiff’s state that the two impugned Television Commercials (TVCs) advertised by defendant 1 and 2 had an effect of disparaging the frozen desserts, majority of which are manufactured and marketed by the plaintiff. In the said TVCs, it is shown that the product of Defendant 1 is manufactured by using 100% milk whereas frozen desserts are manufactured by using Vanaspati. The point of concern placed by the plaintiff is that Vanaspati is considered to be having bad effects on the health of the consumers and plaintiff is not using Vanaspati, in fact it uses edible vegetable oil in its products. Further, the plaintiff has stated that as far as frozen desserts are concerned, they contain a small amount of edible vegetable oil. However, the impugned TVCs depict that frozen desserts contain 100% Vanaspati oil. The said TVCs are not permissible in law.

Defendants stand:

According to the defendants, the advertisements did not show product of the plaintiff, however only a comparison between the product of the defendants and the frozen desserts. The contention of the defendants was that at least 30% of the manufacturers of the frozen desserts use Vanaspati.

Learned Single Judge’s decision:

It had granted an order of injunction, due to which the aggrieved filed the present appeal.

Detailed contentions of the parties:

Learned Counsel Mr Kadam on behalf of Appellant/Defendant 1 stated that as far as the first TVC was concerned, the word used by the defendants was ‘Vanaspati’, and since plaintiff had an objection to use the word ‘Vanaspati’, the same was omitted in subsequent advertisement with the word ‘Vanaspati tel’ meaning ‘edible vegetable oil’.

Perusal of the complaint made by the plaintiff to ASCI i.e. Advertisement Standard Council of India would show that the objectionable word for them was ‘Vanaspati’. Therefore, it was submitted that defendants omitted the word ‘Vanaspati’ and substituted the same with ‘Vanaspati tel’, which is in fact used by the plaintiff in its product, the grievance could not survive. To determine whether a particular TVC disparages the product, Court needs to apply the “test of an ordinary person with reasonable intelligence”, but the procedure adopted by learned Single Judge was not permissible in law.

“While considering the advertisement, rival is not expected to be hypersensitive to the advertisement.”

Injunction passed also bars the appellant from even airing similar advertisement without defining the scope thereof. At the most, injunction passed should have been in respect of the TVCs which were impugned in the suit. It has been stated that the learned Single Judge has gone far ahead and granted injunction in the widest possible terms.

Counsel for the respondent Mr Chinoy stated that if TVCs are seen in its entirety, the impression that the ordinary person with reasonable intelligence would get is that, the product of the appellant is manufactured by using only milk whereas, frozen dessert, in which market, the Respondent 1/plaintiff holds majority shares, is manufactured by using ‘Vanaspati’. Further, it was stated that, “Insofar as puffing up of the product of the appellant is concerned, nobody could have objection, even if an untrue statement is made. However, the advertisement carrying the message which disparages the product of the competitors, would not be permissible in law.”

The present appeal is an appeal against the grant of injunction in favour of the plaintiff.

Decision of the High Court in the instant matter with in-depth analysis on the aspect of ‘disparagement’:

The bench stated that first impression upon seeing the advertisement one would get is that the product of the appellant, ice cream is manufactured by using 100% milk, whereas frozen desserts are manufactured by using 100% Vanaspati or Vanaspati tel.

“For deciding the question of disparagement, Court will have to take into consideration intent of the commercial, manner of the commercial and storyline of the commercial and the message sought to be conveyed by the commercial.”

Further, it was noted that it is clear on perusal of the TVCs that the manner in which the advertisement is aired, message that is sought to be given is that the frozen desserts are manufactured by using only Vanaspati tel which is harmful for the health. Therefore, the appellant cannot be permitted to air the advertisement which disparages the product of its competitors.

“While hyped-up advertising may be permissible, it cannot transgress the grey areas of permissible assertion, and if it does so, the advertiser must have reasonable factual basis for the assertion so made.”

Bench opined that the view taken by the learned single judge bench stating the TVCs to be disparaging in nature requires no interference. Though blanket injunction is not required as the entire TVC is not of objectionable nature. The appeal was thus partly allowed. [Gujarat Co-Operative Milk Marketing Federation Ltd. v. Hindustan Unilever Ltd., 2018 SCC OnLine Bom 7265, decided on 13-12-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, J. passed a permanent injunction decree against the defendants, restraining them from using the trademark “AAJ TAK AAMNE SAAMNE”; “AAJ TAK”; “aajtakaamnesaamne.com” or any other trademark deceptively or phonetically similar to registered trademark “AAJ TAK”.

In the present case, the plaintiffs filed the suit for permanent injunction against the defendants for infringement and passing off trademark “AAJ TAK” or any other trademark deceptively similar to plaintiffs registered trademark “AAJ TAK” in relation to magazine, newspaper, journal etc.

The contentions as placed upon by the plaintiffs were that they were the registered owner of immensely popular trademark “AAJ TAK” which has been licensed to Plaintiff 2 for running a 24 hour Hindi news channel. Defendant 1 was an individual who claimed to own, print and publish fortnightly magazine “AAJ TAK AAMNE SAAMNE”. Plaintiffs came to know recently of the infringement and violation of their trademark by the defendants when they received an email through defendant’s employee.

Further, the plaintiff submitted that the act of the defendant was not only dishonest, illegal and malafide but clearly infringed upon the intellectual property rights of the plaintiffs. Plaintiff 1 was the registered proprietor of the trademark “AAJ TAK” along with various other composites in various classes which were mentioned in the plaint within the meaning of Section 2(zg) of Trade Marks Act, 1999. The said trademark “AAJ TAK” had earned the status of a “Well-Known Trademark”. Defendants were clearly trying to ride and encash the goodwill earned by the plaintiffs over a long period of use.

Therefore, the High Court was of the view that the averments made in the plaint and the unrebutted evidence filed by the plaintiffs established that they were the registered proprietor of the said trademark “AAJ TAK”, thus they had a statutory right to the exclusive use of the same. A decree of permanent injunction was passed in favour of the plaintiffs due to the clear violation of their rights and lacking bonafide on the part of the defendants. [Living Media India Ltd. v. Mandeep Kaur, CS (COMM) 990 of 2016, decided on 16-11-2018]

Case BriefsInternational Courts

Court of Justice of the European Union: The General Court comprising of A.M. Collins, President, M. Kancheva (Rapporteur) and J. Passer, JJ. allowed the name of a place to be used as a trademark in order to promote the town as a tourist destination.

Devin in Bulgaria was known by its spa town not only to the people of Bulgaria but also to the neighboring countries. Its name was also linked with mineral water which covered this contested mark. The plea here consisted of two parts, the first relating to the degree of recognition by the relevant public of the word ‘Devin’ as a geographical name, and the second relating to the link between the contested mark and mineral water.

The applicant contended that being a touristically viable place does not warrant or wholly suffice that the customers beyond borders having a knowledge about it will eventually relate the goods with the place. Also relevant foreign public only knows the main attractions in Bulgaria and Devin was not one of them as its reputation confines itself only to its waters. It was to be considered that an average consumer of mineral water in the EU does not have a high degree of specialization in geography or tourism and there was no evidence to corroborate the fact that such a consumer identifies the word ‘Devin’ as a geographical place in Bulgaria.

The Court was of the view that for the general interest, the trademark could be allowed but with a caveat that by means of safeguard the exclusive right of the applicant for the contested mark shall be limited as it was a necessary balance between the rights of the proprietors and the interests of third parties which allows the registration of trademarks. Accordingly, the descriptive use of the name ‘Devin’ was permitted.[Devin AD v. EUIPO, T-122 of 17, dated 25-10-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Jayant Nath, J. decreed a suit for permanent injunction by invoking the provisions of Order 8 Rule 10 CPC.

The plaintiff was involved in broadcasting activities such as news reporting, producing TV shows and other media content in various parts of the world. It was submitted that its first presence in India could be traced back to 1994 and through various media including a YouTube channel, under the name CBS, it had acquired distinctiveness in the Indian market. In March 2017, the plaintiff came in across defendant’s YouTube channel CBN NEWS which was identical to plaintiff’s trademark. A cease and desist notice was served on the defendant but to no avail. Hence, the present suit was filed.

Before the High Court, the parties requested that they would like to settle the matter through mediation but no settlement could be arrived at. It was pertinently noted that the defendant failed to file a written statement. The plaintiff filed an application under Order 8 Rule 10 CPC. The Court referred to its earlier decision which discussed the scope of Order 8 Rule 10 CPC in commercial suits particularly under the new Commercial Courts, Commercial Division and Commercial Appellate Division of the High Court Act, 2015. The rule had been inserted to expedite the process of justice. If the defendant fails to pursue his case or does so in a lackadaisical manner by not filing written statement, the Court should invoke provisions of Order 8 Rule 10 CPC and decree such cases. In the view of the Court, the instant was a suitable case to pass a decree in favour of plaintiff and against the defendant. Accordingly, a decree of permanent injunction as prayed for by the plaintiff was passed. [Christian Broadcasting Network Inc. v. CBN News (P) Ltd.,2018 SCC OnLine Del 11666, dated 30-08-2018]

Case BriefsTribunals/Commissions/Regulatory Bodies

Customs Excise & Service Tax Appellate Tribunal (CESTAT): This appeal was filed before V. Padmanabhan, Member (Technical) against the decision of Commissioner of Customs who upheld the order of Adjudicating Authority imposing duty on the appellants.

Facts of the case are such that a search was conducted during which Departmental Officer found and seized goods i.e. automobile parts as specified in the 3rd Schedule of the Central Excise Act with brand name ‘VIKING’ and “VIZA’ from both appellant’s premise. Show cause notices were issued by the adjudicating Authority to the appellants after the investigation were concluded. They were alleged with manufacture of goods which did not belong to them and thus were not entitled to the benefit of the Small Scale Exemption. It was stated that they were supposed to pay duty along with interests and penalties. Adjudicating officer’s order was challenged before the Commissioner where it was upheld and hence this appeal before the Tribunal was filed.

Appellants showed their respective trademark registration document that ‘VIKING’ and ‘VIZA’ were registered trademarks of the appellants hence they were entitled to SSI benefit. Appellants contended that respondent seized both the appellants’ goods in a consolidated way which was later denied by respondent. Respondent while negating the contentions of appellants stated that appellant were liable to pay duty as they were involved in activity of packing and affixing brand name which amounts to manufacture of a good and thus they cannot seek the benefit of SSI. They submitted that appellants need to pay duty for goods belonging to other appellant which was found on their premises.

 Tribunal was of the view that appellants were liable to pay duty for those goods labeled with other appellant’s trademark. Both the appellants were given benefit of SSI with respect to the goods under their respective brand names and for goods having brand names of the other appellant they were liable to pay duty. Tribunal ordered Adjudicating authority to requantify the duty demanded. [Vee Kay Enterprises v. Comrr. of Excise, 2018 SCC OnLine CESTAT 870, decided on 24-09-2018]

 

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J. decreed a suit for grant of a permanent injunction against the defendant for infringement of plaintiff ’s trademarks.

It was an admitted fact that the plaintiff was a registered owner of the trademarks SUMEET and SUMEET TRADITIONAL for their power operated kitchen mixies for domestic use. The mark was used by the mother of the director of plaintiff company since 1963. Registration of trademark under Class 7 of the Trade and Merchandise Marks Act, 1958 was granted in 1970 and assigned to the company in 1981. The defendant company was alleged to unauthorisedly sell identical mixies with same trademarks. The parties had earlier entered into an Agreement for Subcontract for manufacture of 2 specific models of mixies. Since the defendant was violating the Agreement by selling goods under the plaintiff’s trademark, the Agreement was terminated. Plaintiff submitted that the use of the said marks by the defendant post-termination of the Agreement was likely to cause confusion and deception amongst the purchasing public.

The High Court perused the record and on appreciation of evidence, the Court was of the view that the suit of the appellant deserved to be decreed. In the opinion of the Court, the triple identity test was satisfied. The test being —

  • Firstly, use of identical or deceptively similar trademark.
  • Secondly, use of trademark in relation to identical goods.
  • Lastly, use of trademark in relation to identical goods having identical trade channels (products sold via same trading channels).

From the evidence on record, according to the Court, it was apparent that despite termination of the Agreement, the defendant malafidely continued to affix plaintiff’s trademark on their product which amounted to infringement of the same. Accordingly, the suit was decreed in favour of the plaintiff with actual costs. [Sumeet Research and Holdings (P) Ltd. v. Sipra Appliances,2018 SCC OnLine Del 11341, dated 14-09-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Manmohan, J. allowed a suit for permanent injunction, restraining the use of plaintiff’s registered trademark SanDisk.

The plaintiff is one of the largest dedicated provider of flash memory storage solutions under the house mark SanDisk. It is a Fortune 500 and S&P 500 company which designs, develops and manufactures data storage solutions in a range of form factors using the flash memory, controller and firmware technologies. It possesses trademark registration for SanDisk in more than 150 countries. It is also a registered proprietor of variety of word marks and device marks in India. The defendant, on the other hand, was an authorized third party, selling counterfeit microSDHC cards bearing the mark SanDisk in locally-printed packaging. The present suit was filed for permanently restraining the defendant from selling the said product and thereby infringing plaintiff’s trademark.

The High Court noted that Order XIII-A of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 empowers the Court to pass a summary judgment, without recording evidence, if it appears that the defendant has no real prospect of defending the claim and there is no other compelling reason why the claim shouldn’t be disposed of. In the Court’s opinion, the defendant had no real prospects of defending the suit as the defendant did not file its written statement despite entering appearance nor denied the documents of the plaintiff. Moreover, the instant was a clear case of infringement of plaintiff’s registered trademark. The Court was of the view that the defendant was using plaintiff’s trademark to trade upon and benefit from the immense reputation and goodwill of the plaintiff’ mark and pass on the products as those of the plaintiff. In view of the aforesaid, the Court allowed the suit with actual costs. [Sandisk LLC v. Memory World,2018 SCC OnLine Del 11243, dated 12-09-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. decreed a suit filed by the plaintiff against the defendant for permanent injunction from using its registered trademark PARAS.

The plaintiff was the registered proprietor of trademark PARAS. The trademark was adopted in 1987 in respect of milk and milk products. It was registered under provisions of Trademark Act, 1999 and Copyright Act, 1956. The defendant, on the other hand, adopted mark PARAS and PARAS GOLD for manufacturing, marketing and trading of fats, milk and dairy products, vanaspati and edible oil, etc. When the plaintiff acquired knowledge of the same, the present suit was filed.

The High Court, on an earlier occasion, had granted an ex-parte injunction against the defendant. In Court’s opinion, the word PARAS has acquired distinctiveness as being associated with the products and business of the plaintiff. The plaintiff’s mark is well known in the area of milk and milk products, and use of the same in respect of edible oils, fats, milk and other products used in the kitchen results in violation of plaintiff’s rights and constitutes passing off. Edible oil, fats, vanaspati oil, etc. are identical as also allied and cognate to milk and milk products. In such circumstances, the Court was of the view that the petitioner had made a case for grant of permanent injunction. Order was made accordingly. [VRS Foods Ltd. v. Prem Chand,  2018 SCC OnLine Del 11055, dated 30-08-2018]

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,2018 SCC OnLine Del 10473, 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, [2018] Bus LR 1411, 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]