Case BriefsHigh Courts

   

Delhi High Court: In a suit filed seeking permanent injunction restraining the Defendants, their partners or proprietors, principal officers, servants, agents and distributors and all others acting on its behalf, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in any manner with products including but not limited to tobacco products, pan masala products, confectionary and/or any other goods and/or services using the mark RAJNI PAAN, RAJNIPAAN, infringing plaintiffs’ trademarks RAJNI, RAJNIGANDHA including trade dress and any other mark deceptively similar, Jyoti Singh, J., held that defendants are guilty of infringement by dishonestly adopting nearly identical trademark and identical packaging, trade-dress, etc., and have chosen to deliberately stay away from the proceedings, despite service, for which repeated efforts had been made by the Plaintiffs.

It is the case of the Plaintiffs that they are a part of the Dharampal Satyapal Group (DS Group), which is a multi-diversified conglomerate, founded in the year 1929 and have a strong presence in high growth sectors such as Food & Beverages, Confectionary, Hospitality, Mouth Fresheners, Pan Masala, Tobacco, Agro Forestry, Rubber Thread and Infrastructure.

The Conflicting marks are as follows:

Plaintiffs label

Defendants label

Counsel for plaintiff submitted that the RAJNIGANDHA products being Plaintiffs’ flagship product and the world’s largest selling premium flavoured pan masala are sold in a unique packaging having a distinct layout, getup and colour scheme.

An ex-parte ad interim injunction has been granted by this Court in favour of the Plaintiffs and against the Defendants vide order dated 29-11-2018. Order sheets indicate that there was no appearance on behalf of Defendants 3 and 4, despite service through several modes, including dasti.

In Dharampal Satyapal Limited v. Suneel Kumar Rajput, 2014 SCC OnLine Del 687, the Court declared the mark “Rajnigandha” as a well-known trademark, under Section 2(1)(zb) r/w Section 2(1)(zg) of the TradeMarks Act, 1999.

The Court noted that the Plaintiffs are registered proprietors of the trademark RAJNIGANDHA and have filed the Certificate of Registration in this regard which is valid and subsisting. No evidence to the contrary has been produced by the Defendants who chose to abstain from the proceedings.

The Court further noted that having analyzed the competing marks and the impugned label/packaging, it is clear that there is deceptive similarity between them as the packaging of the impugned product, has been designed in an identical colour scheme, font and labels, to give an overall look and feel of the Plaintiffs’ products under the RAJNIGANDHA marks, which has been done intentionally to trade off the significant goodwill and reputation of the Plaintiffs in their RAJNIGANDHA marks.

Thus, the Court held that Defendants have mischievously and deliberately adopted a deceptively similar mark and have only replaced ‘GANDHA’ with ‘PAAN’ with an intention to ride upon goodwill and reputation established by the Plaintiffs as the goods are allied and cognate and the triple identity test is satisfied as the trademark is nearly identical and the trade channels are identical with the same consumer base.

[Dharampal Satyapal Limited v. Youssef Anis Mehio, 2022 SCC OnLine Del 3307, decided on 27-09-2022]


Advocates who appeared in this case:

Mr. Pravin Anand, Ms. Vaishali Mittal and Mr. Shivang Sharma, Advocates for plaintiff

Defendants 1 and 2 ex-parte vide order dated 19-09-2022.

Defendants 3 and 4 ex-parte vide order dated 15-07-2019.

Suit decreed qua Defendants 5 and 6 vide order dated 06-02-2019


*Arunima Bose, Editorial Assistant has put this report together.

Case BriefsHigh Courts

   

Delhi High Court: In a suit filed for injunction by the Plaintiff restraining the Defendant from selling, offering for sale, advertising or promoting any product under the trademark ‘APPLEPLANT’ or any trademark similar to Plaintiff’s trademark ‘APPLESTREE’, which may cause confusion and deception in the market, leading to passing off Defendant’s goods as those of the Plaintiff, including products in similar packaging, get-up, trade dress as well as infringement of copyright in the artistic work comprised in Plaintiff’s label, Jyoti Singh, J., restrained the defendants as the plaintiff has made out a prima facie case for grant of injunction as well as balance of convenience also lies in favour of the Plaintiff who has been using the trademark since the year 2018, i.e., prior in point in time to the Defendant who has dishonestly chosen to adopt a deceptively similar trademark in 2019 in respect of identical goods, with a view to pass off his goods as that of the Plaintiff.

Submission

Counsel for plaintiff contended that the impugned trademarks NUAPPLEPLANT /, are identical/deceptively similar to Plaintiff’s trademark APPLESTREE and Defendant has also slavishly copied the packaging/get-up/trade dress. The rival products are identical i.e. Abrasive Papers, Abrasive Sand, Abrasive Rolls, Abrasive Paper/Paste etc. and the trade channels being identical and the class of consumers being same, there is every likelihood that consumers will be confused into believing that the products of the Defendant emanate from the Plaintiff, amounting to passing off and violation of Plaintiff’s common law rights.

The conflicting marks are as follows:

Plaintiff’s label

Defendant’s label

Issue 1: Whether Plaintiff can make a claim of passing off against the Defendant in view of the latter being a registered proprietor of the impugned trademark?

Placing reliance on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, N.R. Dongre v. Whirlpool Corporation, 1995 SCC OnLine Del 310, Century Traders v. Roshan Lal Duggar & Co., 1977 SCC OnLine Del 50, the Court noted that the Plaintiff would have to prima facie establish that use of the trademark APPLESTREE was anterior to the use of the impugned marks by the Defendant.

The Court further noted that the invoices filed by the Plaintiff do reflect sales of the products in question under the trademark APPLESTREE with effect from 01-01-2018 and there cannot be a scintilla of doubt that this is prior to the year of user of the Defendant, i.e., 2019 and thus, it can be prima facie held that Plaintiff is the prior user of the trademark APPLESTREE with respect to Abrasive Papers etc.

Issue 2: Whether the Plaintiff is able to prima facie establish her claim of passing off against the Defendant?

As per Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, the necessary ingredients required to be established for passing off are (a) misrepresentation by a trader in the course of trade to prospective customers; and (b) deliberate and calculated intent to encash upon and cause damage to the reputation and goodwill of the other trader.

Placing reliance on Kirorimal Kashiram Makreting & Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill, 2010 SCC OnLine Del 2933 and Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl. Mills, 2009 SCC OnLine Del 1690, the Court noted that a perusal of the rival marks shows that APPLE is a prominent part of the trademark of the Plaintiff and copying the prominent part, especially when the competing products are identical, would lead to deceptive similarity. Defendant has copied the essential part of Plaintiff’s trademarks and has merely added the suffix PLANT as well as a prefix NU thereto.

Further placing reliance on Greaves Cotton Limited v. Mr. Mohammad Rafi & Ors., 2011 SCC OnLine Del 2596 and K.R. Chinna Krishna Chettiar v. Shri Ambal and Co., Madras and Another, (1969) 2 SCC 131, the Court noted that the impugned mark NUAPPLEPLANT is deceptively similar to Plaintiff’s mark APPLESTREE when compared and seen visually.

Issue 3: Do the marks also have semantic similarity?

The Court observed that not only there is a visual similarity in the competing marks but the two are also similar in idea i.e. semantic similarity.

In semantics, there are broadly three sense relations:‘Hyponyms’, ‘Synonyms’ and ‘Antonyms’. Placing reliance on Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 and Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, the Court stated that the words in the English language system are so related that they form a complete lexical system and a grouping, i.e., genus and species. As an illustration, under this concept, purple, pink, white, brown, violet etc. would fall under the genus ‘colours’ and similarly, knives, spoons, forks would have a semantic relationship with the genus ‘cutlery’.

Thus, the Court opined that the words PLANT and TREE are a classic example of synonymy where reading one would bring to the mind of a purchaser the other, which he may have seen as a part of the trademark on an earlier occasion but is unable to decipher the difference on account of imperfect recollection. This confusion will be enhanced where the two trademarks are used for identical products and class of purchasers and trade channels are identical. A purchaser with average intelligence and imperfect recollection would go by the overall and first impression of the trademark and the similarity in idea is likely to cause confusion.

Decision

The Court concluded that a comparative study of the packaging/label/outer carton of the Plaintiff’s product with that of the Defendant’s product would show that the background of both is a dark pink color, the color combination is pink and white, both have image of an apple on the label and in my view, the similarities outweigh the trivial dissimilarities.

Thus, the Court held that the adoption of the impugned trademark by the Defendant is dishonest and viewing the two trademarks, it is clear that an attempt has been made by the Defendant to pass off his goods under the impugned trademark by coming as close as possible to the Plaintiff’s packaging/label in terms of colour combination, background colour, graphics, etc.

[Vinita Gupta v. Amit Arora, 2022 SCC OnLine Del 3249, decided on 28-09-2022]


Advocates who appeared in this case:

Mr. N. Mahabir, Mr. Abhishek Saini and Mr. P.C. Arya, Advocates, for the Plaintiff;

Mr. Umesh Mishra, Mr. Junaid Alam and Mr. Nishant Mahtta, Advocates, for the Defendant.


*Arunima Bose, Editorial Assistant has put this report together.

Case BriefsDistrict Court

Rohini Court, Delhi: In a suit filed seeking ad interim injunction against defendant restraining defendant from using tag line ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ against plaintiff tag line / ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ with respect to detergent powder, soap etc. under trade mark Ghari, Gurdeep Singh, J. restrained the defendant from using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trade mark/ label/ punch line/ tagline/ literary work ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ or any other trade mark/ label/ punch line/ tagline/ literary work which are identical with and / or confusingly or deceptively similar to plaintiff’s trademarks/ label/ punch line/ tagline/ literary work / ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ in relation to their impugned goods and business of manufacturing, trading, procuring, supplying, distributions, import and export of all kinds of jewellery and other allied and cognate goods and services or from doing any other acts or deeds amounting to or likely to infringing plaintiff’s registered trademarks and copyright; and passing off its goods and business as that of the goods and business of the plaintiff.

The plaintiff is a company engaged in the business of manufacturing and marketing of washing soap, detergent powder, detergent cake, Salt, Shampoo, Hair oil, Toothpaste, Moisturizer, Shaving Cream, Liquid Hand Wash, Floor Cleaner, Liquid Detergent, Toilet Cleaner and other allied and cognate goods. In 1988, the plaintiff adopted and started using trademark/punch line/tagline/ literary work ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ on its said goods and business.

The grievance of the plaintiff is that the that defendant is engaged in the business of manufacturing, trading, procuring, supplying, distributions, import and export of all kinds of Jewelry and other allied and cognate goods & services and has started using the trademark/labels/punch line/tagline/ literary work ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ in relation to its impugned goods and business.

The Court noted that mark of the plaintiff is well established and on account of wide publicity of trademark, the tagline is identified with the goods coming from the house of plaintiff and it has acquired distinctiveness on account of long user and extensive publicity through celebrities / film stars like Mr. Amitabh Bachan and Nagarjun.

On the contention by the defendant that that trademark /tagline of the plaintiff is descriptive in nature and therefore it cannot be Protected, the Court noted that It does not lie in the mouth of the defendant as defendant has himself applied for registration of the same type of mark which according to them are descriptive and therefore, they cannot take advantage of the descriptive Mark.

On the contention by the defendant that adoption of tagline is not identical as their taglines means ‘first check and then trust’ whereas tagline of the plaintiff means ‘first use and then trust’, the Court observed that if one reads in Hindi, it will immediately remind / attract his attention to the tagline of the plaintiff and mere change of one word does not in any manner show that tagline/mark is different.

The Court remarked that the tag line ‘PEHLE CHECK KAREN PHIR VISHWAS KAREN’ is identical and deceptively similar to tag line ‘PEHLE ISTEMAL KAREN PHIR VISHWAS KAREN’ which is likely to cause confusion amongst the purchasing public and trader that goods under the trademark are also coming from the house of the plaintiff.

Thus, the Court held that a prima facie case of infringement of trademark, copyright and passing off is made out in favour of the plaintiff and balance of convenience is also lying in its favour as well as irreparable loss in terms of goodwill would be caused to the plaintiff if no interim injunction is passed in its favour.

[RSPL Limited v. GTM Jewellery Mart, 2022 SCC OnLine Dis Crt (Del) 39, decided on 20-09-2022]


Counsel for plaintiff: Anil Kumar Sahu

Counsel for defendant : Kapil Yadav


*Arunima Bose, Editorial Assistant has put this report together.

Colgate
Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Colgate Palmolive Company (‘plaintiff’) seeking permanent injunction, restraining infringement of trademark COLGATE, copyright, trade dress etc. against unknown Defendants who are responsible for importing a container in India having products bearing marks which are deceptively/ confusingly similar to the Plaintiffs’ mark, Prathiba Singh, J., denied injunction in view of the statement made by the Central Board of Indirect Taxes & Customs (CBITC) Defendant 2 having not permitted imports of the impugned products in India.

The Plaintiffs are the manufacturers and sellers of oral health care, personal care, household surface care and fabric care products including toothpaste under the well-known mark ‘COLGATE’, which was adopted in 1806. ‘COLGATE’ is one of the leading products in the oral healthcare segment, across the world, as also, in India.

The grievance of the Plaintiffs is that, in October, 2021, a container containing approximately 3,600 pieces of infringing toothpaste, bearing the mark/name ‘CONAETE COOL-ICE’ had been shipped from Yiwu City to Ningbo Port (China), and finally the container was to be discharged at Mundra Port, India It is averred that the products in the said container were named as ‘CONAETE COOL-ICE’, and are nearly identical or confusingly/deceptively similar to the Plaintiffs’ product – ‘COLGATE MAX FRESH’, as also the carton Packaging. The distinctive colour scheme, blue and red colour combination with a white cap, bold font, as also the placement of the various features, has been copied.

The Court noted that on 30-11-2022, Defendant 2, had assured that the customs department would not allow the import of the impugned goods found in the impugned container. Defendant 2 while the hearing of the present suit submitted that the import of the contents of the said container into India, has not been permitted by the custom authorities.

The Court observed that the import of goods which violate Intellectual Property Rights is governed by the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 (hereinafter “IPR Rules”). As per the said rules, import of any counterfeit products or products which violate IP rights of trademark owners, copyright owners, etc., is not permissible. The customs authorities have to, upon a complaint received from any IP owner, or on its own accord, form an opinion qua the infringement of the IP rights. Upon forming an opinion, the import or sale of products which violate the rights of IP owners including trademark, copyright, etc., would have to be stopped by the customs authorities.

Thus, the Court held that in view of the import had been stopped by the customs authorities, the injunction is also not required to be passed, but the Plaintiffs are free to take action in accordance with law, either in India, or in other foreign jurisdictions.

[Colgate Palmolive Company v. John Does, 2022 SCC OnLine Del 3105, decided on 26-09-2022]


Advocates who appeared in this case :

Mr. Pravin Anand, Mr. Saif Khan,Mr. Achuthan Sreekumar and Mr. Rohil Bansal, Advocates, for the Plaintiff;

Mr. Anurag Ojha, Sr. Standing counsel and Mr. Deepak Somani, Advocates, for the D-2.


*Arunima Bose, Editorial Assistant has put this report together.

Bombay High Court
Case BriefsHigh Courts

   

Bombay High Court: In a case filed by Atomberg Technologies Private Limited (‘plaintiff’) seeking temporary injunction as Polycab India Limited (‘defendant’) has a blatantly infringed by creating replica and/or reproduction of the overall design, shape, configuration, get-up of the Plaintiff’s Atomberg Renesa Ceiling Fan, R I Chagla, J. granted injunction against defendants as there is prima facie infringement of the Plaintiff’s registered design and passing off is made out as well as the balance of convenience also lies in favour of the Plaintiff and unless the reliefs as prayed is not granted, the Plaintiff will suffer irreparable loss, harm and injury.

Plaintiff is engaged in the creation of the novel and original designs for its products which involve inter-alia making of product drawings based on which mould / tool drawings are made and finally the moulds / tools are built. One of the products manufactured and sold by the Plaintiff is a Ceiling Fan named “Atomberg Renesa Ceiling Fan” which has a unique, innovative, distinctive, original and novel design formerly known as “Atomberg Gorilla Renesa Ceiling Fan” having technically sound and efficient quality and features, but also comprises inter-alia of overall unique, novel and distinctive shape and configuration having attractive and aesthetic appeal which is pleasing to eye of the consumer/ customer.

According to the Plaintiff, in or about the last week of August 2022, the Plaintiff’s representative learnt about the Defendant’s is selling fan on Flipkart and Amazon among others under the name Polycab Wizzy / Polycab Wizzy BLDC 1200 MM having shape, configuration, design and aesthetic appeal that is identical with and/or a fraudulent imitation and/or obvious imitation of the shape, configuration, design of the Plaintiff’s Atomberg Renesa Ceiling Fan for which the Plaintiff has secured design registration.

Plaintiffs fan

Defendants fan

The Court noted that visually the rival goods are nearly identical and prima facie, it appears that the Defendant has blatantly copied, created a replica and/or reproduced the overall design, shape, configuration, get up of the Plaintiff’s Atomberg Renesa Ceiling Fan. The design of the impugned fan is nothing but an imitation of the Plaintiff’s registered design and the adoption and/or use thereof cannot be matter of coincidence and/or honesty.

It further noted that the members of the trade and public upon coming across the Defendant’s impugned fan are bound to be put in a state of wonderment and are likely to be confused and deceived into believing that the fans offered by the Defendant are those of the Plaintiff and are originating from the Plaintiff and are connected in the course of the trade with the Plaintiff.

The Court thus granted the prayer sought.

[Atomberg Technologies Private Limited v. Polycab India Limited, 2022 SCC OnLine Bom 2845, decided on 14-09-2022]


Advocates who appeared in this case :

Mr. Hiren Kamod a/w Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Rohan Lopes Mr. Anees Patel and Mr. Prem Khullar i/b Legasis Partners for the Plaintiff;

Mr. Vinod Bhagat a/w Ms. Prachi Shah, Ms. Fatema Kalolwala, Mr. Atif Sayyed and Mr. Karan Khiani i/by G.S. Hegde and V.A. Bhagat for the Defendant.


*Arunima Bose, Editorial Assistant has put this report together.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Vasundhara Jewelers Private Limited (‘plaintiff’), praying for an ad-interim injunction restraining the defendant from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using, in relation to any jewelry any other allied and cognate goods including but not limited to textiles, textile goods and fabrics, under the impugned marks or deceptively similar to the plaintiff’s trademarks i.e., ‘VASUNDHRA’ family of marks, Navin Chawla J. rejected prayer for injunction and held that merely because the plaintiff deals in jewelry items, which by themselves are more costly thereby resulting in a higher turnover for the plaintiff, will not give a better right to the plaintiff over an otherwise a common name in India.

The plaintiff-company was established on 28-10-1999 and has its jewellery showroom at Pitampura, New Delhi. It is also engaged in the services of popular Indian celebrities like Ms. Prachi Desai and Ms. Shweta Tewari. The goods of the plaintiff are regularly showcased at various fashion events like Lakme Fashion Week’ where the actress Ms. Jahnvi Kapoor was the showstopper for the fashion designer Punit Balana, in which she wore the jewellery of the plaintiff.

The plaintiff asserts that it is only around April, 2022 that it came across the publication of the defendant 1’s impugned mark/logo ‘VASUNDHRA FASHION’/ in Class 25, for goods being ‘textile, textile goods and fabrics.

The plaintiff asserts that the mark adopted by defendant 1 is deceptively similar to the ‘VASUNDHRA Marks’ of the plaintiff.

The Division Bench of this Court in Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd., 2011 SCC OnLine Del 288, reiterated that the distinctiveness to which the registered proprietor of a mark can lay a claim is to what it has gotten registered as a whole and such registration cannot possibly give an exclusive statutory right to such proprietor qua a particular word of common origin.

Placing reliance on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC), the Court observed that the plaintiff does not have a registration in the word mark ‘VASUNDHRA’, while has obtained registration in the various marks of which ‘VASUNDHRA’ is an essential part, and it would have to be looked into for determining the balance of convenience and the effect thereof.

The Court opined that the goods of the plaintiff and the defendant 1 are not identical, however, can be said to be remotely cognate to each other. But, when compared as a whole, though phonetically the two marks are identical, visually they are different as the plaintiff’s mark has a symbol ‘V’ along with the word ‘VASUNDHRA’, while the defendant 1 has a picture of a leaf along with the word ‘VASUNDHRA Fashion’.

The Court enlisted reasons for the difference between the two marks

  1. Defendant 1 herein claims to have two manufacturing units, four warehouses, and seven offline stores. Its goods are available also online at Flipkart and Meesho, where the plaintiff is not present.

  2. The goods of the defendant 1 are aimed at persons belonging to the lower strata who are looking for cheaper garments while the goods of the plaintiff are claimed to be designer jewellery aimed at persons belonging to the higher strata of the society.

  3. The goods of defendant 1 are in Classes 24 and 25, in which the plaintiff does not have any registration.

  4. The area of operation of the plaintiff and the defendant 1 is also distinct; with the plaintiff being in Delhi, while the defendant 1 being predominantly in the State of Gujarat.

He Court remarked that as the plaintiff is dealing in jewellery, its turnover may sound enormous, but that alone may not be sufficient to, at least at this stage, presume that the mark has obtained such reputation and goodwill so as to be associated only with the plaintiff and for even other goods.

On the contention raised by the plaintiff that defendant has used its popular store mark ‘VASUNDHARA’ in a particular style in one of its stores, counsel for defendant assured that the said mark will never be used in the future.

Thus, the Court held the plaintiff has not been able to make out a prima facie case for grant of prohibitory interim injunction against the defendant 1.

[Vasundhara Jewelers Pvt Ltd. v. Kirat Vinodbhai Jadvani, 2022 SCC OnLine Del 2996, decided on 21-09-2022]


Advocates who appeared in this case:

For plaintiff: Mr. Sagar Chandra, Mr. Prateek Kumar, Ms. Shubhie Wahi, Ms. Sanya Kapoor, Mr. Parrek & Ms. Aarushi Jain, Advs.

For defendant: Mr. Raghavendra M. Bajaj, Mr. Anshuman Upadhyay, Mr. Naseem & Mr. Prashant, Advs. for D-1.


*Arunima Bose, Editorial Assistant has put this report together.

Case BriefsHigh Courts

Delhi High Court: In a case where Dominos IP Holder LLC, popularly known as Dominos (‘plaintiff’) was seeking protection of the mark ‘Domino’s Pizza’, and the accompanying device mark, logo mark, as also the marks ‘Cheese Burst’ and ‘Pasta Italiano’, its popular dishes as Defendant 1 was using a deceptively similar logo, mark, and trade name – ‘Dominick Pizza’ along with other registered trademarks, such as ‘Cheese Burst’ and ‘Pasta Italiano’, Prathiba M Singh J. granted an ex-parte ad interim injunction in favor of the plaintiffs as prima facie case is established, balance of convenience lies in favour of the plaintiff and irreparable injury would be caused if the injunction is not granted.

The two conflicting marks are:

It is interesting to note that Plaintiff 1 company was founded in Michigan, USA, when Tom Monaghan, along with his brother James Monoghan, purchased a pizza store by the name “DomiNick’s Pizza”, owned by Mr. Dominick DiVarti. But, in the year 1965, the Monaghan’s purchased two more restaurants, and changed the name to Domino’s Pizza. Since then, Plaintiff 1 has continually adopted the mark ‘Domino’s Pizza’.

However, Defendant 1, being Dominick Pizza, through its proprietor Mr. Sandeep Kumar Sharma, has three outlets i.e., one in Indirapuram, Ghaziabad, Uttar Pradesh, the second one at Raj Nagar Extension, Ghaziabad, Uttar Pradesh, and lastly in Nakodar, Mehatpur, Punjab. Defendant 1 is also unauthorizedly using the Plaintiffs’ other registered trademarks, such as ‘Cheese Burst’ and ‘Pasta Italiano’.

The Court noted that the Defendants have used the name ‘Dominick Pizza’, which is nothing but the identical historical name of the Plaintiff’s store. Thus, it is clear that the name ‘Dominick’ is integrally and historically associated with the Plaintiffs, and the use of an identical name as the founder/predecessor of the Plaintiffs in a similar logo form for pizzas would be confusing and deceptive in nature. The dishonesty in the adoption is further strengthened by the fact that the Defendants are copying various flavour variants of the Plaintiffs, such as ‘Cheese Burst’ and ‘Pasta Italiano’.

The Court further noted that on perusing the record, it is made clear that the competing marks are deceptive of each other. The manner of the listings of the Defendant 1 on various social media platforms and online ordering platforms and reviews of the consumers on Google Reviews concludes that the name and business of the Defendant 1 is being confused as that of the Plaintiffs’ outlets resulting in severe disrepute and dilution of the Plaintiffs’ mark and business.

Thus, the Court granted ex-parte ad interim injunction against Defendant 1, its proprietors, partners, directors, officers, servants, agents, franchisers and all others acting for and, on its behalf, and are restrained from advertising, selling, offering for sale, marketing etc. any product, packaging, menu cards and advertising material, labels, stationery articles, website or any other documentation using, depicting, displaying in any manner whatsoever, the impugned marks ‘Dominick Pizza’, ‘Cheese Burst’ and ‘Pasta Italiano’ or any other marks or devices/logos which are identical or confusingly/deceptively similar to the Plaintiff’s registered trademarks.

[Dominos IP Holder LLC v. Dominick Pizza, CS (Comm) 587 of 2022, decided on 29-08-2022]


Advocates who appeared in this case :

Mr. Pravin Anand, Mr. Shantanu Sahay, Ms. Imon Roy and Mr. Apoorv Bansal, Advocates, for the Plaintiff;

None, for the Defendant.


*Arunima Bose, Editorial Assistant has put this report together.

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: In a case where permanent injunction was sought against use of Royal Champs, a Gwalior Distilleries Private Limited product (‘defendants’), selling whiskeys under a deceptively similar name and label design and using the goodwill of Royal Stag, a Seagram India Private Limited product (plaintiffs), Navin Chawla, J. decided the issue in favour of Royal Stag and direct defendants to pay damages of Rs 20 lakhs.

Royal Stag is a well-known whiskey sold under the label of SEAGRAM since 1995 by the company Seagram India Private Limited. In December 2001, Pernod Ricard SA (parent company of plaintiffs) acquired a part of Seagram group but continued to trade alcoholic beverages under SEAGRAM marks.

The trademark ROYAL STAG is a coined trademark, having no significance or meaning in common parlance, and no correlation to the character or quality of whiskey marketed there under. It was also stated by the plaintiffs that it constitutes an ‘original artistic work’ within the meaning of Section 2(c) of Copyright Act, 1957 (‘Copyright Act’).

The plaintiffs filed the present suit praying inter-alia for a decree of permanent injunction restraining the defendant, its directors, assigns in business, distributors, licensees and dealers from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in whiskey or any other alcoholic beverages under the impugned trade mark/logo/label SEAGRAM’S and/or ROYAL CHAMP or any other trade mark/logo/label as may be deceptively similar to the trademarks of the plaintiffs that is SEAGRAM’S or SEAGRAM’S logo or ROYAL STAG or its label amounting to infringement of trade marks registrations of the plaintiffs, passing off, unfair competition, as also infringement of copyright of the plaintiffs. The plaintiffs also prayed for rendition of accounts of profits earned by the defendant or in the alternative, a decree of Rs. 20 Lakh (Rupees Twenty Lakh only) and the costs of the suit.

Deceptive Similarity

The ROYAL STAG label comprises of a cream background with a prominent device of a thick swirling ribbon downwardly in burgundy and golden colours and the trademark ROYAL STAG represented upon the burgundy surface of the ribbon in bold cream colour letterings; and the SEAGRAM Marks depicted at the top of the label as also the bottom.

Placing reliance on Mondelez India Foods Pvt Ltd v. Neeraj Food Products, (2022) SCC OnLine Del 2199, the Court noted that in the present case, the goods of the plaintiffs and defendant are identical, that is whiskey. The mark of the defendant is deceptively similar to that of the plaintiffs. The test to be applied for judging the claim of infringement and passing off is of an unwary consumer with average intelligence and imperfect recollection.

The Court applied the above test to note that mere use of the word ‘CHAMP’ instead of ‘STAG’ is not sufficient to distinguish the two marks, especially when combined with the overall get up of the label. The goods are sold over the counter and an unwary consumer is likely to confuse one for the other.

The Court observed that the plaintiffs have also been able to establish a long, continuous use of its trademarks and held that the mark of the defendant is deceptively similar to that of the plaintiffs and clearly intended to deceive the unwary consumer. The defendant is, therefore, guilty of passing off its goods like that of the plaintiffs.

The Court further held that the label of the defendant is a colourable and slavish imitation of the plaintiffs’ ROYAL STAG label and also amounts to copyright infringement under Section 51 read with Section 55 of the Copyright Act.

The Court remarked “the adoption by the defendant of the trademarks ROYAL CHAMP and the deceptively-similar logo to the SEAGRAM logo of the plaintiffs was clearly intended to deceive the unwary consumer and to ride on the reputation and goodwill of the plaintiffs.”

Placing reliance on Uflex Ltd. v. State of TN (2022) 1 SCC 165 and Intel Corporation v. Dinakaran Nair 2006 SCC OnLine Del 459, as also, in terms of the Commercial Courts Act, 2015 and the Delhi High Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual Property Division Rules, 2022, the Court directs the defendants to pay damages amounting to Rs. 20 Lakh.

[Austin Nichols & Co Inc v. Gwalior Distilleries Private Limited, 2022 SCC OnLine Del 2498, decided on 18-08-2022]


Advocates who appeared in this case :

Mamta Jha, Abhijeet Rastogi & Vishesh Kumar, Advocates, for the Plaintiffs;


*Arunima Bose, Editorial Assistant has put this report together.

Case Briefs

Telecom Disputes Settlement & Appellate Tribunal (TDSAT): The Coram of Justice S.K. Singh (Chairperson) and A.K. Bhargava (Member) while considering the factors of deceptive similarity, allowed this petition.

In the instant case, the petitioner, a broadcaster of “News & Current Affairs” television channel was authorized to use the name and logo of “Harvest Television Network Private Limited” under an MOU. The petitioner applied for a change in name and logo from “Harvest TV” to “Tiranga TV”.

By a letter, the petitioner communicated to the respondent of a deposit of Rs 75,000 for processing fees for the said change and also sought urgent permission for it. Thereafter, the petitioner was served with a legal notice from “Harvest Television Network Private Limited” to discontinue any mark or logo bearing resemblance to “Harvest TV”. Due to the legal action, the name and logo of “Harvest TV” ceased to be available to them. Therefore, the petitioner could not run its Television channel.

Counsel for the petitioner, Amit Sibal contended that for the change in name and logo, there is no requirement to seek approval and/or permission from the respondent.

While the petition was still pending, the Tribunal ordered petitioner to continue using the name and logo “Harvest TV”. The petitioner was called upon to ask whether its proposed name and logo “Tiranga TV” does not violate any provisions of the Emblems and Names (Prevention of Improper Use) Act, 1950, Flag Code of India, 2002 or the Trademarks Act, 1999. The Tribunal considered the fact that the name “Tiranga” itself does not violate any provisions of the aforesaid Statutes. Furthermore, the Counsel for the petitioner voluntarily undertook not to use saffron and green which is there in the emblem of Tiranga TV until the issue is finally decided.  The petitioners were allowed to use the name without using the colours as an interim arrangement.

After the interim order was made, the petitioner started telecasting with a changed logo, not the original one for which it sought approval.

Counsel for the respondent, Vikramjit Banerjee, Addl. Solicitor General submitted that the name Tiranga TV with the logo appears to have a colorable imitation with that of the Indian National Flag. Moreover, the respondent – Ministry of Information & Broadcasting submitted that provision of processing fee is to discourage a large number of requests for change in names and other forms of changes.

By an Office Memorandum, Department of Consumer Affairs, Emblem Names had objected to the use of the logo “Tiranga TV” under Section 3 of the Act of 1950. The Counsel for the petitioner contradicted this by submitting that Section 3 makes a distinction between name and logo; pointed out that there many companies whose name starts with “Tiranga” and had been approved too. Furthermore, the counsel submitted that another news channel – “India Ahead” uses the three colours in the Indian National Flag.

After analyzing the facts and circumstances of the case and submission of the parties, the Tribunal while observing the present case cited a judgment of the High Court of Andhra Pradesh – Ravikant Shinde v. Gujarat Heavy Chemicals Ltd., (2003) 45 SCL 89 (A.P.)  where the Court decided upon an issue that whether the manufacture of “Kitchen Salt” in the name of “ Dandi” could be permitted for commercial use. The Court found out that the pictorial exposition is similar to that of Mahatma Gandhi taken at “Dandi March” and the inclusion of the name of Mahatma Gandhi in the Schedule of the Act of 1950 violates Section 3 of the said Act. Therefore, the Tribunal agreed that the use of “Tiranga TV” with the logo of saffron and green will amount to colourable imitation of Indian National Flag.

The Tribunal observed that impugned order in respect of name and logo opted at first choice is correct but struck aside in respect of other options but permitted the use of name and logo of “Tiranga TV” without the colours Saffron and Green.[Veecon Media & Broadcasting (P) Ltd. v. Union of India, 2019 SCC OnLine TDSAT 80, decided on 01-07-2019]