trademark infringement case study in india

Intellect Vidhya Solutions Law LLP

An Outlook on Famous Trademark Infringement Cases in India

• December 13, 2022

The implementation of the TRIPS agreement resulted in significant changes in how governments enforced intellectual property rights. As a result, business owners and entrepreneurs began to place a premium on their brand names and trademarks. The increase in the number of applications for trademark registration coincided with an increase in the number of infringement cases, in which tiny enterprises attempted to replicate and profit off the goodwill and repute of previously existing trademarks.

This eventually led to higher courts taking infringement cases and setting precedent for future cases to follow. This article also provides a summary of famous trademark infringement cases in India that have served as a model for similar lawsuits.

Table of Contents

Famous Trademark Infringement Cases in India

Here are some examples of trademark infringement cases from India that illustrate the nuances of the relevant legislation.

1. Yahoo! Inc. v. Akash Arora & Anr: One of the earliest cases of Cybersquatting in India

This case is one of the most famous trademark infringement cases in India. In addition to trademark infringement, it is often asked that the case of Yahoo! Inc. V. Akash Arora belongs to which dispute outside trademark infringement? The correct response is ‘Cybersquatting’; this is one of the earliest known instances of cybersquatting.

Factual Background

Yahoo INC., the plaintiff, was the owner of the trademark “Yahoo” and the domain name “yahoo.com,” both of which were widely recognized brands in the minds of consumers around the world providing internet services. In addition Yahoo was a registered company since 1995, having registered trademarks in various countries except India.

Akash Arora, the defendant in the particular case simultaneously started using the domain name ‘yahooindia.com’ for the similar kind of services India. Yahoo Inc. sought an interim injunction to prevent from using the domain name ‘yahooindia.com’ or any name similar to its own.

Decision of the Court

The court determined that Akash Arora was liable for infringing the “Yahoo” trademark and restricted him on the basis that he was using a deceptively similar domain name and delivering services similar to those of Yahoo Inc., which constituted cybersquatting. This ruling was based on the premise that a company’s goodwill resides primarily in its name and trademark, and especially so in the instance of Yahoo Inc. Yahoo Inc. was awarded the passing-off remedy.

2. Amazon v. Happy Belly Bakes: Trademark Rights of small business owners against the Giant ones

Shisham Hinduja founded Happy Belly Bakes in 2008, a women-owned business that sells baked items like cakes, brownies, cookies etc. It has owned the trademark for the name ‘Happy Belly’ since 2016, (before it was known as Regalar and it switched to Happy Belly Bakes in 2010).

Happy Belly Bakes used the trademark since its inception in 2008. It sued Amazon for selling bakery items, snacks, and dairy under the same brand name. 

In 2016, the bakery began receiving calls asking if their products were available on Amazon. However, the website of the e-commerce giant revealed that Happy Belly was Amazon’s own brand for selling bakery products. Tootsie LLC filed the trademark application on behalf of the e-commerce firm, arguing that while Happy Belly Bakes only operated in Bengaluru, Amazon sold the products worldwide.

Decision of the Court 

The court held that Amazon had infringed the trademark of Happy Belly Bakes. The court gave verdict in favour of Happy Belly Bakes against Amazon. It took four years for Happy Belly to get justice but at the end they were able to protect their trademark against the tech giant – Amazon. While the small businesses struggle to get justice against giant enterprises, this case of Happy Belly Bakes showed that the infringement laws are for all and are common.

3. The Coca-Cola company v. Bisleri International Pvt. Ltd: Assignment of Trademarks

Coca-Cola v. Bisleri case study is amongst the major trademark infringement cases in India. The plaintiff is the largest soft drink brand in the world, with a presence in 200 countries, whereas the defendant is a very well-known Indian brand recognized for its bottled water. In September 1993, the defendant sold the plaintiff the rights to the soft drink MAAZA. In March 2008, the plaintiff submitted a trademark application for the name “MAAZA” in Turkey. In September 2008, the defendant sent the plaintiff a legal notice revoking the licensing agreement and announcing its desire to begin using the trademark in India. Both directly and indirectly, the defendant was involved in the manufacture, sale, and exportation of MAAZA-branded items.

A temporary injunction was issued against the defendant. The Honorable Court decided that the plaintiff had both a prima facie case and a favorable balance of conveniences. The rejection of the trademark was deemed invalid, and the plaintiff was given complete trademark rights for the soft drink MAAZA. It was determined that the defendants were responsible for trademark infringement.

4. Daimler Benz Aktiengesellschaft & Anr. v. Hybo Hindustan: Dilution of Well-known trade marks

In this case, an undergarments shop used the term ‘Benz’ in the title of the brand, as well as a logo that looked suspiciously similar to the logo created and used by the car company. The famous three-star ring of Mercedes Benz which is very popular across the globe was used by the defendant for selling undergarments. The defendant was using a three-pointed human being in a ring as his logo. The plaintiff got to know this and filed the case against the defendant.

It was held by the court that this is a clear infringement of the trademark as the three-star ring of the Mercedes is a well-known mark and is widely known across the world for the cars. Therefore, the defendant was refrained from using this mark by an injunction. The court in this case had acknowledged the trademark’s international reputation, remarking that almost no one would ever fail to associate the word “Benz” with the car. As a result, no one can claim that he was unaware of the use of the mark “Benz” which is popularly known to have in relation to automobiles.

5. Starbucks Corporation v. Sardarbuksh Coffee & Co.: Rule of Dominant Feature of a Trademark

In this specific case, the meaning and fundamental nature of a trademark were reaffirmed; namely, that a trademark is a one-of-a-kind identifier and distinguishing feature for both the customer and the company in question.

Starbucks registered their word mark ‘STARBUCKS’ and corresponding logo as a trademark in India in 2001. The Defendants established their business in 2015 under the name ‘Sardarbuksh Coffee & Co.’ Sardarbuksh’s logo was a turban commander’s face with wavy lines on the sides surrounded by a circular black band. Through a letter of demand, the Plaintiff requested that the Defendants change the logo in 2017. In response, the Defendant simply changed the colour scheme to black and yellow and resumed operations. The Defendant began operations under the same name in May 2018. The Defendant and Plaintiff provide comparable goods and services. The plaintiff filed a suit against Sardarbuksh in the Hon’ble High Court of Delhi as a result of the preceding events. The plaintiffs sued the defendants for trademark infringement by using a deceptively similar mark.

The Delhi High Court relied on the National Sewing Thread Co. decision. Ltd vs James Chadwick & Bros Ltd , which stated that in order to determine whether a trademark was deceptively similar, the court had to put itself in the shoes of the customers.

The Delhi High Court concluded, using the aforementioned case that a man of ordinary intelligence might be confused, and thus it is deceptively similar.

6. Mondelez India Foods Private Limited (formerly Cadbury India Ltd.) V. Neeraj Food products: Attempt to free ride on the goodwill of well-known trademarks using deceptively similar marks

The plaintiff, Cadbury India Limited, filed a lawsuit seeking permanent and mandatory injunction against the defendant’s deceptively identical mark and goods/products. The plaintiff alleged that the defendant sold chocolate with the trademark ‘JAMES BOND’ that was deceptively similar to their trademark ‘Cadbury GEMS’ with similar packaging and was inspired by Cadbury’s famous fictional character & registered copyright ‘GEMS BOND’ from the plaintiff’s advertising campaign in the late 1980s and early 1990s.  The plaintiff also alleged that the defendant is trying to create confusion in the mind of consumer so as to free ride on the goodwill of the former.

The Delhi High Court upheld the decision in the favour of the plaintiff. In addition to the relief of a permanent and mandatory injunction granted to the Plaintiff, the court awarded the Plaintiff damages in the amount of Rs. 10 lakhs.

7. Cadila Healthcare Ltd. V. Cadila Pharmaceuticals: Trademark should be read in its entirety

 Factual Background

The appellant (Cadila Healthcare) and the defendant (Cadila Pharmaceuticals) were two pharmaceutical companies that introduced medicine for the treatment of cerebral malaria. The appellant launched the medicine in style and name of ‘ Falcitab’ and the respondent launched it in the name ‘ Falcigo’ . Cadila Healthcare filed the lawsuit after discovering that Cadila Pharmaceutical is using the mark “ FALCITAB ” which is similar to their mark “FALCIGO”; and that Cadila Pharmaceutical registered the mark for a similar medicine. In this lawsuit, Cadila Healthcare sought an injunction prohibiting Cadila Pharmaceutical from using a mark that is deceptively similar and likely to cause confusion amongst the consumers.

The Hon. Supreme Court held that even though the drug is to be prescribed by the medical practitioners and sold directly to hospitals, the possibility of the confusion between the two cannot be disregarded.

The Supreme Court also held that there are certain principles that need to be followed in the case of deciding the mark as a deceptively similar. They are as follows:

• To check the nature of the marks which includes word marks composite marks etc.
• To check ideological and phonetic similarity
• To check the similarity of nature, performance, and character of applicants
• To identify the class of consumers etc.

8. Toyota Jidosha Kabushiki Kaisha v. M/S Prius Auto Industries Ltd. – Trans-border reputation of Trademarks  

The plaintiff, Toyota alleged that the defendants, Prius Car Industries, a supplier of auto parts and accessories, infringed upon its registered ‘Toyota,’ ‘Toyota Innova,’ ‘Toyota Device,’ and ‘Prius’ Trade Marks. The plaintiff petitioned the Trade Mark Registry for cancellation of the defendants’ registered mark, and filed suit on the grounds that the defendant was using their “well-known mark” without their permission, resulting in an unfair benefit to the plaintiff’s reputation and goodwill. On the other hand, The Plaintiff did not register the “Prius” trademark in India, and its Prius automobile was not introduced in India until 2009, much after the Defendant registered the “PRIUS” trademark in India in 2002.

The Supreme Court determined that “likelihood of confusion” and the differentiating powers of a man of average intelligence would be a more appropriate standard for proving a passing-off activity, which can only be proven by evidence, which the Appellants failed to offer. Toyota Jidosha Kabushiki-trademark petition was dismissed after the Supreme Court ruled that trademark rights are territorial and not universal and that actual proof is required to establish a company’s reputation and goodwill in a territory.

9. Nandhini Deluxe v. Karnataka Co-Operative Milk Producers Federation Ltd. – no one can claim an exclusive right or monopoly over an entire class of goods

The respondents, Karnataka Co-operative Milk Producers, had been using the mark for milk and related products registered under class 29 since 1985. Appellant Nandhini Deluxe is a restaurant chain in Karnataka that used the mark in 1989. The Appellant has applied for registration of the said mark in class 29 for meat, fish, poultry, meat extracts, preserves, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats, salad dressings, and so on. The registrar approved the registration of the mark ‘Nandhini’ as distinct from the existing mark. The IPAB and the High Court of Karnataka both found the marks ‘Nandini’ and ‘Nandhini’ to be deceptively similar, with the only difference being the letter ‘H’ between the two marks.

Decision of Court

The case was ultimately heard by the Supreme Court, which determined that the marks are not deceptively similar after a thorough examination of both. The court noted that there is only a phonetic similarity between the two marks Nandini/Nandhini. Aside from that, the logos for both marks are distinct. The phrase ‘Deluxe’ was used by the restaurant and is followed by the words ‘the real spice of life,’ whereas the mark Nandini has no suffixes or prefixes. The Supreme Court concluded that no one can claim an exclusive right or monopoly over an entire class of goods, especially when the trademark is not used with respect to all of the goods in that class. Finally, the appellant ‘Nandhini Deluxe’ was granted permission to use the mark after removing milk and milk products from their class description.

10. Amritdhara Pharmacy V. Satya Deo Gupta: Monopoly over the generic terms can’t be allowed & the concept of honest concurrent use.

The respondent, Satya Deo Gupta, submitted an application to register the name “Lakshmandhara”, which has been in the business of selling and preparing medicinal items since 1923. “Amritdhara” the appellant company Amritdhara Pharmacy, objected the registration of the term Lakshamandhara on the grounds that it is likely to mislead and confuse clients due to the appellant’s trademark Amritdhara, which has been in the same line of business since 1901. In response, the defendant filed a counter-affidavit claiming concurrent usage on the basis that they had been using the mark since 1923.

Decision of the Courts

The Registrar of Trademarks determined that Amritdhara and Lakshmandhara are sufficiently similar to cause confusion. The Allahabad High Court on appeal, granted the respondent’s appeal, allowing registration of the mark “Lakshmandhara” while denying the appellant’s appeal and stating that the marks are dissimilar. The court also ruled that the words “Amrit” and “Dhara” cannot be monopolized because they are part of the common language. The High Court discovered insufficient grounds to deny the Lakshmandhara trademark registration. The case was then brought before the Supreme Court on appeal.

The Supreme Court reversed the High Court’s decision that Amritdhara and Lakshmandhara are comparable marks. The court relied on the comparison of marks test and stated that the question of comparing two marks should be viewed from the perspective of a man with average intelligence and defective recall.

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Food Plating and Copyright Protection in India

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While talking about Trademark law regime, the principle of ‘continuous use’ plays a crucial role in shaping the validity and enforceability of trademark rights. In India, similar to many other jurisdictions, one of the most known ways to establish the exclusive rights over a trademark is through continuous and consistent usage of the mark in commerce or in course of trade. Even if the formal registration is not granted, a trademark can still be protected based on its consistent use in the market. This article explores the principle of continuous use under Indian trademark law, its significance, and how it impacts the protection and enforcement of trademarks. What is the Principle of Continuous Use? The principle of continuous use in trademark law refers to the long and consistent use of a trademark by its owner in the course of trade in business. The continuous and uninterrupted use of the trademark assists in establishing the goodwill and reputation of the brand in the market. The older a trademark, the greater its reputation and goodwill. The Trademarks Act, 1999, acknowledges the importance of continuous use by offering protection to both registered and unregistered trademarks. The primary aim of this principle is to ensure that the rights over a trademark belong to the entity that has genuinely used the mark in commerce over time. The Legal Foundation of Continuous Use in India According to Indian trademark law, Section 34 of the Trademarks Act, 1999, addresses the principle of continuous use, highlighting the concept of “prior use.” This section states that a registered trademark owner cannot prevent any individual or business from continuing to use a mark if they have been using it consistently since before the trademark was registered. This provision is crucial as it emphasises use rather than registration. 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According to Indian trademark law, a mark needs to be used continuously in trade so as to retain its enforceability. Failure to do so can open the door for third parties to challenge the ownership of the trademark. 3. Reputation and Goodwill The longer you use a trademark, the more related goodwill and recognition will be gained that are important elements for every brand. A business expands sufficient identity allowing consumers to relate the brand with quality, trustworthiness or in a specific product or service. A trademark that has been used continuously over time under Indian law may qualify as a “well-known trademark” and receive additional protection, even in categories where it is not even directly used. 4. Protection for Unregistered Trademarks In the case of unregistered trademarks, continuous use is especially important. While unregistered marks are not protected under the Indian Trademarks Act, they may still be safeguarded by utilizing English common law rights called “passing off.” In as action of passing off, long time use would help the plaintiff establish that their mark has gathered good will and that the defendant’s use of a similar mark would likely deceive consumers and cause harm to their business. Proving Continuous Use Having continuous use and proving the same are two different things. Mentioned below are the kinds of documents that can be furnished in order to prove the continuous use of a particular trademark: Challenges to Continuous Use While continuous use is a strong principle in Indian trademark law, it does come with certain challenges: Relevant Case Laws The Supreme Court made clear that the rights of prior users are stronger than trademark registration. So just because a trademark is registered does not mean the original user of that domain cannot infringe on your rights. The court decided in Peps’ favour, indicating that a mark can still receive protection even if it is descriptive, provided it has acquired distinctiveness through ongoing use. Conclusion The principle of continuous use serves as a fundamental aspect of trademark law in India, offering protection to businesses that have consistently used their trademarks over the years, regardless of registration status. It ensures that the true owner of a trademark is the one who has consistently utilised it in commerce, rather than simply the one who registered it first. Indian trademark law seeks to promote fairness and preserve the goodwill that businesses build around their brands by emphasising use rather than formal registration. It is essential for both businesses and individuals to consistently use their trademarks in order to protect their rights and avoid potential legal conflicts.

When it comes to the creation of Intellectual property the concept of “work for hire” plays a pivotal role, especially in the domains of copyright and patent law. This legal principle determines who holds the ownership of intellectual property created in the course of employment or under a contractual agreement. While the idea of “work for hire” may seem straightforward, its implications can be complex and vary significantly between different types of IP, such as copyrights and patents. This article explores the concept of “work for hire” in the context of Indian law and how it affects ownership and rights related to copyright and patents. What is “Work for Hire”? The concept of “work for hire” refers to a situation where a person or entity, typically an employer or contractor, hires an individual (an employee or an independent contractor) to create a specific piece of intellectual property, and as a result, the ownership of the work is automatically assigned to the hiring party. In the Indian IP context, work for hire influences two major areas: 1. Copyrights (for creative works like writings, music, films, software, etc.) 2. Patents (for inventions and innovations). The way “work for hire” operates under Indian law differs slightly in each of these categories, and understanding these distinctions is crucial for creators, employers, and businesses alike. Work for Hire in Indian Copyright Law Legal Framework In India, copyright is governed by the Copyright Act, 1957. Under this Act, the principle of “work for hire” is enshrined in Section 17, which deals with the ownership of copyright. Generally, the author or creator of a work is the first owner of the copyright. However, there are exceptions to this rule, one of the most significant being works created under employment or commission, which are considered “works for hire.” Ownership of Copyright According to Section 17 of the Copyright Act, the employer or commissioning party will be the first owner of the copyright in the following cases: 1. In the Course of Employment: If a work is created by an employee in the course of their employment, the employer is deemed the first owner of the copyright, unless there is an agreement to the contrary.   2. Commissioned Work: If a work is created on commission for a specific purpose, the party commissioning the work will own the copyright unless there is an agreement to the contrary. In the case Khemraj Shrikrishnadass v. M/s Garg & Co., the court addressed the issue of copyright ownership concerning work for hire under Indian law. The court held that in the absence of a contract stating otherwise, when an author creates a work at the request of another party for remuneration, the copyright typically passes to the person who commissioned the work. This reinforces the general principle that unless an explicit contract exists, the employer or commissioner becomes the first owner of the copyright in such works created during employment or as commissioned assignments. Moral Rights Even though the employer or commissioning party owns the copyright, the creator still retains moral rights under Indian law, including the right to claim authorship and prevent modifications that could harm the creator’s reputation. Work for Hire in Indian Patent Law Legal Framework In India, patent rights are governed by the Patents Act, 1970. Unlike copyright, where the work-for-hire principle is relatively clear, patent law presents a more nuanced situation. Ownership of a patent typically depends on the terms of employment and whether the invention was created within the scope of the inventor’s duties. Ownership of Patents There is no automatic “work for hire” rule for patents in India as there is in copyright law. Instead, the inventor is considered the “first owner” of the patent and the ownership of inventions depends on the terms of the employment contract or a specific assignment agreement. This means that while an employee is the actual inventor, ownership of the patent can only be transferred to the employer through a written contract or agreement. Furthermore, there is always a separate debate about the inventions created by the employee during the course of employment and since the inventor (employee in this case) is the first owner of the patents the Employers are advised to always execute a assignment agreement in place. 1. In the Course of Employment: If an employee invents something as part of their job duties (e.g., researchers, engineers), the employer generally owns the patent subject to the assignment agreement. 2. Outside Employment Duties: If an employee invents something unrelated to their job description and outside the use of company resources, the employee may have the right to the patent. The case of Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd. (2014) revolves around a dispute concerning intellectual property rights in the context of patent law and “work for hire.” The case involved the question of whether the inventions and patents developed by Kavasmaneck, a key employee of Gharda Chemicals, belonged to him individually or to the company. The court ruled in favor of Gharda Chemicals, affirming that the inventions created by Kavasmaneck during his tenure with the company fell under the “work for hire” doctrine, as they were made in the course of his employment and used the company’s resources. This case highlights the importance of employment agreements and the principle that inventions made by employees in the scope of their work duties are typically owned by the employer Comparing Copyright and Patent Work for Hire While the concept of work for hire is prevalent in both copyright and patent law, there are some key differences: 1. Automatic Ownership:    – In copyright, the employer or commissioner is typically the automatic owner unless there is an agreement to the contrary.    – In patent law, ownership depends on the employment context and the existence of a clear agreement, as the inventor is the first and original owner by default. 2.   Scope of Work:    – In   copyright, almost any work created within the course of employment may fall under work

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5 Landmark Trademark Infringement Cases of 2022

The year 2022 has been an extremely important year for the development of trademark jurisprudence in India. There have been various landmark judgements which have not only highlighted cardinal principles of trademark law but have also given a nuanced understanding of how Courts interpret statutory trademark provisions. Mentioned below are some crucial judgements passed in the year 2022 on matters dealing with trademark infringement .

Renaissance Hotel Holdings Inc. V. B. Vijaya Sai And Others (19 th January 2022)

  This case was an appeal by the Plaintiffs, who were owners and proprietors of the trademark “Renaissance”, against the judgement passed by the Karnataka High Court. The Appellant had initially filed a suit restraining the Respondent from using the trademark “Sai Renaissance” along with any other trademark similar or identical to the Appellant’s trademark. Considering that the Appellant and the Respondent were operating in the hospitality industry, this case had a nuanced approach towards understanding the legislative intent behind Section 29 of the Trade Marks Act, 1999 (“the Act”). The Appellant had been using the mark since 1981 and had gained popularity due to resources employed in advertisements and promotional activities. Having found that the Respondent was operating hotels under the name “Sai Renaissance” in Bangalore, they alleged that this was an infringement of their trademark and sought damages.

The Respondent contended that “Renaissance” was not a coined or inventive word but rather generic and was used honestly and concurrently by the Respondent since 15 years. The Trial Court restrained the Respondent from using the mark, but on the other hand, no damages were awarded. On appeal to the High Court, it was held that there was no proof that any unfair advantage was taken or harm caused to the Appellant’s reputation. The Supreme Court, thus, delved deep into the legislative intent behind Sections 29, 30, and 31 of the Act. Regarding the test under Section 29 of the Act, they opined that the Appellant need not prove actual damage if the trademarks are identical or similar, and so is the class of goods and services catered to by both parties. The High Court had erroneously held that even though infringement had been established, actual deception and damage were not proved.

Section 29(4) and Section 30(1) of the Act were read contextually and in its entirety rather than focusing on a specific part of the provision, contrary to the stance taken by the High Court. The Supreme Court was clear in its interpretation that in such cases, the Court would operate on the presumption that it is likely to cause confusion on the part of the public. Thus, in infringement actions, once it is found that the Respondent’s trade mark is identical to the Appellant’s registered trade mark in the same or similar class of goods and services, the Court cannot go into an enquiry of whether the infringement was likely to deceive or cause confusion .

Pernod Ricard India Private Limited V. Frost Falcon Distilleries Limited (2 nd March 2022)

This case discussed the importance of the anti-dissection test in considering the trademark as a whole. However, it was distinct due to its emphasis on the dominant part test. The Plaintiff alleged that the Defendant’s mark “Casinos Pride”, the label, the design of the bottle in which the Defendant sold its product and the package in which the bottle was packed,  all infringed the Plaintiff‘s registered trademarks “Blender’s Pride” and “Imperial Blue”.

The Plaintiff also sought relief under passing-off. On this question, the Court highlighted the three determinative questions to decide on questions of passing-off , i.e., whether the Plaintiff‘s product had come into existence prior to commencement of user by the defendant, whether the Plaintiff had acquired goodwill in the property by the use of the mark in question and whether the disputed mark or getup had become distinctive of the plaintiff‘s goods or services.

Both the parties belonged to the segment of Indian Made Foreign Liquor, catering to the same customers. The Plaintiff contended that they acquired a secondary meaning and became source identifiers due to continuous and extensive use of the mark. Further, by previous judgements, “Blenders Pride” and “Imperial Blue” are recognised as well-known marks. The Defendant averred that the mark was generic, descriptive, and laudatory. Thus, the Plaintiff could not claim exclusivity unless the word acquired a secondary meaning in the minds of the consuming public. Further, there was no phonetic, visual or other similarity.

The important consideration, in this case, was that of deceptive similarity. To establish deceptive similarity , the test is whether the entirety of the proposed trademark would cause deception or confusion in the minds of persons accustomed to the existing trademark. However, there is an exception to the anti-dissection rule. In cases where a part of the composite mark is a dominant part of the mark, the anti-dissection rule heeds the dominant part test. Here, the term “Pride” was a successor to the word “Blenders”. “Pride” per se was laudatory and generic, thus not capable of being treated as distinctive.

The right of the Plaintiff as under Section 17 of the Act pertaining to the mark “Blenders Pride” as a whole. The Plaintiff had no exclusivity over the term “Pride”. Discerning the dominant part of this mark would require the plain glance test. Using the plain glance test, the Court opined that there was no exclusivity regarding the word “Pride” as a part of “Blenders Pride”. Thus, there was no infringement. It was also held that prima facie, there was no deceptive similarity vis-à-vis the mark “Imperial Blue” as well.

RPG Enterprises Limited V. Riju Ghoshal Trading As RPG (21 st March 2022)

This case reemphasises and highlights the various important principles of Indian trademark law . The Plaintiff’s mark was an acronym derived from the initials of its founders. Due to their popularity in various sectors and the use of the mark, the term “RPG” became a source identifier and acquired a secondary meaning. The Defendant’s use of the trademark containing ‘RPG’ as its only leading, essential and prominent feature in respect of their services thus gave rise to the question of infringement. The Defendant alleged that their mark was a logo mark, being inherently distinctive due to differences in style, the combination of words, colors etc.

Since abbreviations of a name can also constitute a trade mark, for example, KSB Properties, H&M Hennes & Mauritz AB etc., the Court proceeded to determine infringement . Certain factors, such as the extent of knowledge of the RPG mark, its recognition by the relevant public, the duration of the use of the RPG marks, the extent of the products in relation to which the RPG mark is being used, the extent and duration of advertising and promotion of the RPG mark etc., were important determinants to hold that the mark was well-known and had acquired secondary meaning.

Ascertaining the question of deceptive similarity, the Court summarized the principles by stating that the matter rests on first impression itself, at the stage of interim as well as final relief. Trademarks are remembered by general impressions or by some significant detail than by any photographic recollection of the whole. The question is whether the distinguishing or essential feature of the Defendant’s trademark contains the same distinctive or essential feature or conveys the same idea as that of the Plaintiff’s mark. On the point of deceptive similarity, the approach is from the point of view of a man of average intelligence and imperfect recollection. Therefore it is important that instead of microscopic examination, both the visual and the phonetic tests are taken into account. Marks must be compared as a whole on the question of whether the Defendant’s mark is likely to cause deception or confusion in the minds of persons accustomed to the existing trade mark. Lastly, the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be considered.

Further, as for determining infringement, the following test was enumerated as per Section 29(4):

i) The person using the impugned mark is neither a registered proprietor in relation to the goods and services for which the mark is registered nor is using it by way of permitted use ii) The impugned mark must be used in the course of trade and has to be either similar to or identical with the registered mark iii) The impugned mark is used for goods or services different from those for which registration has been granted, and does the registered trade mark have a reputation in India iv) The use of the impugned mark is without due cause and takes unfair advantage of the distinctive character of the registered trade mark.

The Court opined that the intention of the legislature was to afford stronger protection to marks having a wide reputation and goodwill, where the condition to provide a likelihood of confusion would be removed. Thus, marks were held to be deceptively similar, and the Defendant had infringed the mark of the Plaintiff.

ITC Ltd. v. Central Park Estates Private Ltd., (14 th November 2022)

This case was a landmark in ascertaining the importance of well-known marks as per Indian law, with a parallel discussion on the principle of territoriality and famous marks doctrine under US law. The Plaintiff’s registered trademark, “Bukhara” was used in respect of a famous restaurant which had acquired goodwill and had been in the hospitality business since 1975. Consequently, the Defendants adopted the mark “Balkh Bukhara” for their restaurants. The Plaintiff’s primary contention was that “Bukhara” was a well know mark under Section 2(zg) of the Act, and hence, should be awarded protection under Section 11(2) of the Act.

Indian jurisprudence is at an advanced stage with regard to well-known marks and has also recognized the transboundary reputation of foreign marks. Previously, marks have been awarded protection under common law principles even before the incorporation of the statutory provisions as per international best practices. Due to this, the Court opined that considering the overwhelming evidence provided by the Plaintiff, the trademark “Bukhara” was beyond well-established.

The Court also looked at the decision of the US Court of Appeals, in a suit filed by ITC for infringement of their trademark. The US Court, as per the principle of territoriality in American trademark law, had held that ownership of a mark in one country would not confer exclusive rights to the said mark in another country. More so, the famous marks doctrine was uncertain considering only one decision had recognised it. Therefore, ITC was unsuccessful in protecting the mark in the US.

Contrary to this, in India, that the Plaintiff’s trademark enjoyed substantial goodwill and reputation among Indians as well as foreigners who travelled to India and carried back the said reputation. India also recognizes transborder reputation and the `well- known mark’ doctrines, both in its judicial decisions and in statutes. Thus, the US Courts judgements were not applicable in this case, and the mark was determined to be a well-known mark.

Sun Pharmaceuticals Industries V. Dwd Pharmaceuticals Ltd., (22 nd November 2022)

This case emphasises the clean hands doctrine vis-à-vis trademark law. The Plaintiff’s claimed that they adopted and coined the trademark “Forzest” in 2003. Subsequently, the Defendant had filed an application for the mark “Folzest”, and both the parties were operating in the same class of goods and services. The Plaintiffs emphasised that since the suit pertained to pharmaceutical goods, the threshold of confusion was low. This resulted in the deceptive similarity test becoming stringent and public interest becoming paramount.

In response to the Plaintiff’s contention that their trademark had been infringed, the Defendant asserted that certain material facts were concealed by the Plaintiff from the Court. The Defendant was a leading manufacturer in the industry, a registered proprietor of the mark “Zest” and had a family of trademarks registered with “Zest” forming a part of them.

The Court held that the Plaintiff must come with clean hands while approaching the Court, putting forth all facts without any concealment. However, it is interesting to note that even though the Court deemed that there was no candid disclosure by the Plaintiff, the case was not dismissed at the threshold. This was primarily due to the fact that it pertained to pharmaceutical goods .

Pharmaceutical goods require the larger public interest to be taken into account and not just the rights of the private litigants. In such cases, even a remote possibility that there would be a likelihood of deception can led to disastrous consequences. Therefor despite not approaching the Court with clean hands, the Plaintiff was entitled to an ad-interim relief on the basis that they were the prior users and the two marks were deceptively similar.

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TRADEMARK INFRINGEMENT IN INDIA: ANALYSIS OF CASES AND LEGAL IMPLICATIONS – Aravamudhan G & Nithin K

India is well known for its highly competitive business environment, moreover after the pandemic [covid] India became an attractive manufacturing hub, as a result of many MNCs entering the market as well as the Indian startup economy crossed the major milestone as it added the hundredth unicorn club in 2022. In such a crucial situation infringement of intellectual property rights becomes the biggest threat. The pharmaceuticals, information technology, consumer goods, and e-commerce industry has built a simple and clear path for trademark infringement not only in India, all across the world. This research paper focuses on several trademark infringement cases in India.

Intellectual Property Rights, Trademark, Infringement

INTRODUCTION

As is well known, In India the trademarks are protected under Trademark Acts, 1999. This Act establishes the Law governing trademark registration, protection, and penalties for infringement. The term infringement of registered trademark has been defined exclusively under section 29 of the Trademark Acts, 1999.

Trademark infringement is defined as the unauthorized use of a trademark or service mark. This may be related to a product or service and may cause confusion, deception, or misunderstanding about the actual entity from which the product or service is based. Trademark owners may take legal action if they believe that their registered trademark is infringed. If the trademark infringement is proved before the court, the concerned court may pass an injunction order against the defendant to use the trademark which is related to the plaintiff, and may award monetary compensation in certain circumstances.

BURDEN OF PROOF

In the case of the trademark, it’s the plaintiff’s responsibility to prove any trademark violation. The honorable Supreme Court addressed the issue of burden of proof in an action for trademark infringement in the DUTTA SHARMA V. NAVARATNA PHARMACEUTICALS LABORATORIES case

In these cases, the court held that the ‘’course of trade’’ the question of whether there has been an infringement is to be decided by the comparison of the two marks. Where the two marks are identical no question arises, but when the two marks are not identical the only proof lies with the party bringing the lawsuit in a case involving trademark infringement.

OVERALL SIMILARITY IS SUFFICIENT

The trademark must be analyzed as a whole for misleading resemblance.’’ Deceive or cause of confusion’’ are the two important factors that are taken into consideration by the court for deciding the similarity of two competing trademarks. In 1972, The Honorable Supreme Court gave a clear expression on overall similarity in the case name called PARLE PRODUCTS V. JP & CO LTD

In this case, the court held that the broad and basic elements of two marks are taken into consideration to determine if one mark is deceptively similar to another mark. The keeping of infringement marks and infringing mark side by side to find out the necessary differences in design is not necessary. The Supreme Court believes that it is not necessary to specify how many points are similar and how many are different. Instead, it might suffice if the contested mark is sufficiently similar to the registered mark generally to make someone who normally deals with one mistakenly believe the other if it were presented to them.

BRAND NAME AND BRAND POSITIONING

During the infringement trial, the consent court not only observes [consider] the prefix and suffix of a both brand name and products name, but it also considers the brand logo and its color, the reputation of the brand among the public, and how much amount the brand spent on advertisement and publicity things. From the earlier stage, the cases related to the infringement of brand name and positioning become the biggest threat to intellectual property rights, as a result, the court gives more focus and attention to it and laid down principles in its judgment, which are as follows,

4.1 FEVICOL V. TREVICOL

( Pidilite Industries Pvt.Ltd V. Mittes Corporation And Anr.)

Fevicol has been on the market since 1960, and the trademark was filed in the same year. It sold a lot of units, and Pidilite spent a lot of money on advertising and promotion for the brand. Pidilite sues the makers of Trevicol, a competing product. In 1985 the trademark Trevicol was first used. In 1987, a lawsuit was filed. In both marks, the suffix ‘’VICOL’’ was used. Prefixes ‘’FE’’ and ‘’TRE’’ was the only one that differed. However, when both were said together, they sounded very similar. The names of the companies, Pidilite and Mitees, were typed in the same way. Both marks had a blue lettering style that was nearly identical. The Fevicol mark has elephants pulling aside a sphere, in Trevicol there had been ships in the location of the elephants. The customers of each of those merchandise blanketed a massive section of the illiterate populace like carpenters or civil contractors.

In the view of above, The Judgement was concluded as:

Both phonetically and aesthetically, the two markings were deceptively similar. The packet’s color scheme and appearance were nearly identical, and the general public was likely to be misled. Trevicol was found illegal and was phased out after Fevicol won the case.

4.2 STARBUCKS COFFEE V. SARDARBUKSH COFFEE

This a humorous yet intriguing instance in which the well-known Starbucks was victimized by the clever brains of Indian trademark infringers, who used Sardar instead of Star in such a deceptive and large-scale manner that people were led to believe they were owned by the same person. The court, on the other hand, granted the defendant the right to use a modified version of the trademark Sardar Baksh to Sardarji Baksh, as well as the right to sue anyone who uses Baksh in the future.

COMPARATIVE ADVERTISING IN CERTAIN CASES LEADS TO INFRINGEMENT

In certain cases, comparative advertising that discredits a competitor’s trademark or trade name is not permitted. In the PEPSI V. COCA-COLA PVT LMT case, the Delhi High Court exclusively stated that

• Intent of commercial
• Manner of commercial
• Storyline of commercial

Out of the above the manner of the commercial is very important, a tradesman or company can claim that his products are the best or better in the market however, the tradesman cannot disparage or degrade the competition goods nor can he term them bad or inferior based on comparison.

INTENTION TO DECEIVE IS NOT NECESSARY

It is something drastically vary from the penal laws, In penal laws intention is a very important aspect but in trademark infringement cases the intention is not necessary even though the defendant knowingly infringed the registered trademarks that don’ttake into consideration by the honorable court. As a KIRLOSKAR DIESEL RECON LTD V. KIRLOSKAR PROPERTIES LTD., the supreme court made the following observations on ‘’passing off action, the plaintiff is not necessary to prove the fraudulent intention on the part of the defendant.’’ Therefore, the established legal principle is that fraud is not a need for passing off a claim. As stated quite explicitly by the supreme court IN LAXMIKANT PATEL V. CHETANBHAI SHAH casewhere there is a likelihood of confusion in a business an injunction is to be granted even if the defendants adapted the name innocently. As well as the Honorable Supreme Court described the three elements of passing off action

• Reputation of goods
• Probability of deception; and
• Likelihood of deception’’

According to section 135 of the Trademark Acts 1999, in a suit for ‘infringement’ or ‘passing off of the trademark, ‘the aggrieved party may obtain the following reliefs;

• Injunctions

Injunction relief is an effective remedy to prevent infringement of a registered trademark or disclosure of a registered or unregistered trademark, as a court-issued injunction prevents a person from proceeding further. The trademark owners prevent unauthorized use of trademarks by appealing for prohibition injunction by court order. Injunctive remedies allow trademark owners to prohibit others from using similar trade mark and prevent others from monetizing the reputation and goodwill gained by theirtrademarks.

Similarly in MAHENDRA & MAHENDRA PAPER MILLS LTD V. MAHINDRA & MAHINDRA LTD The plaintiff’s name, Mahindra & Mahindra, and the defendant’s trade name Mahendra & Mahendra is practically an exact match in terms of phonetics, appearance, and structural similarity. Mahendra & Mahendra’s trade name is misleadingly similar to Mahindra & Mahindra’s trade name, hence the supreme court maintained the High Court’s injunction order prohibiting the defendant from using the trade name ‘’Mahendra & Mahendra’’ in the plaintiff’s favor.

HONDA MOTORS CO. LTD V. CHARANJIT SINGH & ORS.

Charanjith Singh & Ors used the Honda trademark for vehicles and power equipment. The plaintiff has built a worldwide utilizing the trademark Honda for its cars and power equipment over the five decades. While the defendant only began using the mark for its pressure cookers. The court ruled that the defendant’s use of the trademark for its pressure cooker has the effect of tarnishing the plaintiff’s reputation around the world because consumers may purchase the defendant’s product believing to be from the same sources as Honda of Japan. Defendants were prohibited from using Honda’s trademark.

Damages are the compensations awarded to the plaintiff by the defendant for the legal injury caused by him to the plaintiff. Damages are the notional compensation paid to the plaintiff irrespective of the actual amount of loss suffered by the plaintiff. The honorable Delhi High Court, the case named Prestige Housewares LTD V. Dinesh Gupta stated thatThe respondent was not only prohibited from using the trade name PRESTIGE to sell pressure cooker spare parts because it was confusingly similar to the trade name PRESTIGE belonged to the plaintiff.In this instance, the plaintiff was not only successful in stopping the defendant from using the trademark PRESTIGE but also received a settlement of Rs 25,000/- in damages and Rs 35,000/- in court costs.

In conclusion, trademark infringement poses a significant threat to intellectual property rights in India, particularly in industries such as pharmaceuticals, information technology, consumer goods, and e-commerce. The burden of proof lies with the plaintiff to establish trademark violation, and overall similarity between trademarks is a crucial factor in determining infringement. The court considers various aspects, including brand name, brand positioning, and comparative advertising, in infringement cases. Intent to deceive is not a requirement for trademark infringement, and the court can grant reliefs such as injunctions to protect the rights of trademark owners. It is essential for businesses to understand the legal framework and take necessary measures to safeguard their trademarks in India.

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Trademark Infringement: Delhi High Court Issues Permanent Injunction In Favour Of Tobacco Company Which Owns 'Marlboro' Cigarettes

Sanjana dadmi.

5 Dec 2024 5:45 PM IST

The Delhi High Court has issued permanent injunction in favour of Philip Morris Brands SARL, an American tobacco company, against trademark and copyright infringement of its cigarette packs.

Philip Morris adopted the trademark 'MARLBORO' for its cigarette packs in 1924. It started selling cigarettes bearing the said mark in India through a trading company in 2003.

It also uses other marks for its cigarette packs such as 'ROOFTOP' and 'SMOOTHFLO', which are registered marks.

Philip Morris sought a permanent injunction against defendant no.1, a shop selling cigarettes and other tobacco products and defendant no. 2, the shop's owner.

Philip Morris stated that it came across cigarette packs being sold by the shop under the name counterfeit 'MARLBORO ADVANCE COMPACT'. When it conducted an investigation, it found that the warehouse was supplying the counterfeit products to the shop.

It submitted that the counterfeit cigarette packs bore the same code, whereas, its genuine products contained a unique code on each cigarette pack.

On 13 July, 2023, the Court had granted an ex parte ad interim injunction, restraining the defendants from dealing in any products bearing Philip Morris' trademarks.

It had also appointed a Local Commissioner to visit the shop. On visiting the premises, the Local Commissioner found packs of cigarettes with trademarks 'MARLBORO' trademark.

Justice Amit Bansal proceeded ex parte with the case as the written statements were not filed within the stipulated time.

The Court noted that despite serving the defendants, they did not enter an appearance.

It observed that all the averments made in the plaint have to be admitted since no written statement was filed.

The Court stated that the suit does not merit any trial and invoked Order VIII Rule 10 CPC, which empowers the court to pronounce judgment against a party if no written statement has been filed by the party within the required time.

Comparing Philip Morris' products with the counterfeit products, the Court observed that the cigarette packs were identical in terms of colour combination and arrangement of letters, marks and figures.

Noting the defendants replicated the contents, colour scheme and packing of the 'MARLBORO' and 'ROOFTOP' trademarks, the Court said that a case of trademark and copyright infringement was made out.

It stated that the defendants took an unfair advantage of the reputation and goodwill of Philip Morris' trademarks. The defendants also deceived the consumers by suggesting an association with Philip Morris, it added.

The Court held that a case of passing-off was also made out.

The Court thus issued a permanent injunction in favour of Philip Morris, restraining the defendants from dealing in any products bearing Philip Morris' trademarks, packaging or using the labels/artistic works.

Case title: Philip Morris Brands Sarl vs.M/S Rahul Pan Shop & Ors. (CS(COMM) 462/2023 & I.A. 12451/2023)

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Trademark Cases in India

What is a deceptively similar trademark, 7 trademark cases on similarity of goods and services in india, 1. parle products pvt. ltd. v jp & co, 2. proctor and gamble v joy creators , 3. sony corporation vs. k. selvamurthy, 4. starbucks corporation v. sardarbuksh coffee & co, 5. mondelez india foods private limited (formerly cadbury india ltd.) v. neeraj food products, 6. vishnudas trading v. vazir sultan tobacco co. ltd. , 7. himalaya drug company vs s.b.l limited, how to avoid the trademark cases in india, trademark cases in india - consequences & penalties, civil consequences:.

• Injunction:  The aggrieved party may seek a court order to restrain the infringer from using the deceptive mark, effectively stopping them from doing business under it.
• Damages:  The court can order the infringer to compensate the trademark owner for the financial losses incurred due to the infringement. This can include lost profits, damage to brand reputation, and legal expenses.
• Accounts of Profits:  The court may order the infringer to surrender all profits earned through the use of the infringing mark.

Criminal Consequences:

• Imprisonment: The Indian Trade Marks Act of 1999 prescribes imprisonment of up to 3 years for intentionally using a deceptively similar trademark. In case of subsequent offenses, the imprisonment term can be extended to 5 years.
• Fine: The infringer may be liable to pay a fine of up to Rs. 2 lakhs, which can be extended to Rs. 3 lakhs for subsequent offences.

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