Case BriefsHigh Courts

Karnataka High Court: P. Krishna Bhat J., set aside the impugned order with a direction to the Court to hear and dispose of the applications afresh by giving an opportunity to both sides and in accordance with the law.

The facts of the case are such that the respondent/plaintiff in the original suit is doing business under the name ‘Matru Ayurveda’ since the year 2015 having trademark deceptively similar to the appellant/defendant who started his business in the year 2018 with his trademark ‘Matruveda’, thereby established contacts of the respondent/plaintiff got deceived and she has suffered huge losses. Therefore she prayed for a decree of permanent injunction to restrain the appellant/defendant from infringing respondent/plaintiff established registered trademark ‘Matru Ayurveda’ by using the offending trademark ‘Matruveda’ in the preparation, sale and distribution of herbal products or by using a deceptively similar well established and registered trademark ‘Matru Ayurveda’. A suit and applications under Order XXXIX Rule 1 and 2 CPC was filed wherein temporary injunction was granted and appellant/defendant were restrained from infringing and passing off of the respondent/plaintiff registered trademark. Assailing this order, the instant appeal was filed.

Counsel for the appellant/defendant submitted that the plaintiff had started her business under the tradename and trademark ‘Matru Ayurveda’ which is laid inside a logo and similarly the appellant/defendant had started his business under the tradename ‘Matruveda’ with a logo and there is no such resemblance between the same as will lead any purchaser of the products of either parties to confuse between the same. It was further submitted that he had no opportunity of producing documents in support of his stand that the trademark of the appellant/defendant is not deceptively similar to the trademark of the respondent/plaintiff and further that there were several manufacturers who are using trademarks closely similar to the trademark of the respondent/plaintiff and the defendant with the prefixes ‘Matro’.

Counsel for the respondent/plaintiff submitted that the trademark got registered by the appellant/defendant is subsequent to the registration of the trademark of the respondent/plaintiff. It was further submitted that the respondent/plaintiff is a well-established businesswoman who has been marketing her products ever since the year 2015 and the appellant/defendant had started his business only in the year 2018. It was further contended that on account of the close resemblance of the trademark of the defendant with that of the plaintiff, the business of the respondent/plaintiff has been affected drastically and therefore the appellant/defendant is liable to be injuncted from carrying on his business under the trademark ‘Matruveda’.

The Court observed that as per Section 2 (1) (zb) of the Trade Marks Act, 1999, the ‘trademark’ is totally different from the trade name. There may be cases where trade name is also the trade mark but in very many cases it may not be so.

The Court further observed that in the present case there cannot be any dispute that trade names are only a part of the composite whole of the trade mark. The Court while deciding such cases should have in mind the ‘quintessential common man’ who goes to the neighborhood shop with the idea of purchasing product of his liking. Quoting the Court “Has not the Hon’ble Supreme Court said …in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered…”

The Court thus held that the “impugned order is totally bereft of any discussion of the same. Absent of such discussion, weight of authorities dictate that the impugned order be characterized as perverse and resultantly it is liable to be set aside.”

In view of the above, appeal was disposed off.[N. Dinesh Kumar v. Shweta Khandelwal, Miscellaneous First Appeal No. 790/2021, decided on 15-03-2021]


Arunima Bose, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

Delhi High Court: C. Hari Shankar, J., expressed while addressing a dispute that:

“Where a valid arbitration agreement exists, the decision also underscores the position that, ordinarily, the disputes between the parties ought to be referred to arbitration, and it is only where a clear “chalk and cheese” case of non- arbitrability is found to exist, that the court would refrain from permitting invocation of the arbitration clause.”

The present suit has sought a decree of permanent injunction, restraining the defendants from dealing in electric bikes having a throttle, using “Hero” or any mark deceptively similar as a trademark, brand name or tradename as it infringes the said mark, or result in passing off the defendant’s electric bikes having a throttle as those of the plaintiffs.

Defendants had filed IA 3381/2020 under Section 8 of the Arbitration and Conciliation Act, 1996, seeking reference of the disputes, forming the subject matter of the suit, to arbitration.

Controversy  

Plaintiff 2 claimed to have started its business of electric vehicles and to have launched battery fitted electric cycles and scooters under the well-known trademarks “Hero” and “Hero Electric”.

The said marks were registered under the Trade Marks Rules, 2002. Hero Exports used to be a partnership firm of all the members of the Munjal Group and vide a Family Settlement Agreement, the businesses of the group were divided among 4 family groups designated as – F-1, F-2, F-3 and F-4.

As per the plaintiff Hero Exports along with its business was transferred to F-1 group.

Plaintiffs belong to F-1 Group and defendants to F-4 Group.

Further, it has been submitted that parallelly with the Family Settlement Agreement, a “Trade Mark and Name Agreement” (TMNA), was executed, which assigned the right to use the trademark “Hero”, and its variants, among the Family Groups, in relation to the products and services to which the business of each group catered, to the exclusion of other groups. The plaintiff asserts that the TMNA conferred, on the F-1 group, the exclusive right to use the trademarks “Hero” and “Hero Electric”, and its variants, on all-electric vehicles, including electric bikes.

Partners of Hero Exports incorporated Hero Electric Vehicles (P) Ltd. –Plaintiff 1 to conduct the business of electric vehicles and further it was asserted that Hero Exports gave a license to HEVPL to use the trademarks of Hero Exports in respect of electric vehicles and further to proceed against third parties who sought to infringe the said trademark.

HEVPL has become the single source identifier of electric vehicles sold under the marks “Hero” and “Hero Electric”, and has exclusive statutory and common law rights over the “Hero” and “Hero Electric” trademarks in relation to electric vehicles, which include electric bikes.

Plaint alleged that Lectro was manufacturing and selling electric bikes through Hero Electric under the brand “Hero”.

The plaintiffs espied Lectro selling and promoting throttle assisted electric bikes under the brand name “Hero”. This, according to the plaint, was completely mala fide, as the defendants were aware that the exclusive right to use the trademark “Hero” and “Hero Electric”, for electric vehicles, vested in the plaintiffs, who had built up a reputation in that regard.

Defendants with the above act encroached upon the exclusive contractual statutory and common law rights of the plaintiffs in the trademarks “Hero” and “Hero Electric”.

Analysis

In the Supreme Court decision of Vidya Drolia v. Durga Trading Corpn., (2021) 2 SCC 1,  Court authoritatively expounded on the scope of the jurisdiction of a Court, examining and application under Section 8 of the 1996 Act.

Bench observed that the decision in Vidya Drolia has been followed by this Court as well as by other High Courts.

Further while discussing the principles that emerged from the above decision, Court stressed upon criterion (viii), which as follows:

(viii) The scope of examination by the Court exercising jurisdiction under Section 8 or under Section 11, is prima facie in nature. The Court is not to enter into the merits of the case between the parties. It is only to examine whether the dispute is prima facie arbitrable under a valid arbitration agreement. This prima facie examination is intended to weed out manifestly and ex facie non-existent or invalid arbitration agreements or non-arbitrable disputes, thereby cutting the deadwood and trimming off the side branches, in cases where the litigation cannot be permitted to proceed. The proceedings are preliminary and summary in nature and should not result in a mini-trial. Unless there is a clear case of non-existence of a valid arbitration agreement, or of the dispute being ex facie non-arbitrable, tested on the above parameters, the court should leave these aspects to be decided by a competently constituted arbitral tribunal. Relegation to arbitration should be regarded as a rule, and resolution by the civil court, where a valid arbitration agreement exists and is sought to be invoked by one of the parties, as an exception. The expression “chalk and cheese situation”, as used by this Court has, in this background, been approved by the Supreme Court. “When in doubt,” says Ramana, J., in his concurring opinion, “refer”. (Having said that, the “doubt”, in my view, has to be real and substantial, and not merely an escape route to avoid examining the issue in perspective.) 

Adding to the above, Bench stated that while examining the aspect of arbitrability of the dispute, or the existence of a valid arbitration agreement binding the parties, in exercise of Section 8, Court has to always remain alive to the fact that it is exercising the very same jurisdiction which the Arbitral Tribunal is empowered to exercise.

“…where the Court finds the case to be “chalk and cheese”, and where referring the matter to the arbitral process would be opposed to public interest or public policy, and a futility ex facie, that the Court should nip the request for referring the dispute to arbitration in the bud.”

Bench agreeing with Mr Akhil Sibal stated that the dispute between the plaintiffs and the defendants required a holistic appreciation of the FSA and the TMNA, their various covenants and the interplay, in order to adjudicate on the rights conferred on the various family groups.

Adding to the above, court stated that the disputes between parties are ex-facie arbitrable in nature, seen in the light of the provisions of the FSA and TMNA.

The controversy, in the present case, does not relate to grant, or registration, of trademarks. The trademarks already stood granted, and registered, prior to the FSA and TMNA.

The dispute is regarding the Family Group to which the rights to use the said trademarks, in connection with electric cycles and e-cycles had been assigned, by the FSA and TMNA.

Bench in view of the above stated that the dispute does not fall under any of the categories of disputes excepted by the Supreme Court, from the arbitral umbrella.

The right that the plaintiffs seek to assert, in the plaint, is clearly against the F-4 group, and the F-4 group alone, and not against the whole world.

The dispute is clearly inter-se amongst two Family Groups, pillowed on the rights emanating from the Family Settlement Agreement and Trade Mark and Name Agreement and essentially alleged infraction of the terms of the FSA and TMNA, not of the provisions of the Trade Marks Act.

The right asserted by the plaintiffs is not a right that emanates from the Trade Marks Act, but a right that emanates from the FSA and the TMNA, and is not asserted vis-à-vis the whole world, but is asserted specifically vis-à-vis the F-4 Family Group.

In view of the above discussion, Court decided that it would be more appropriate if the petitioner were to present the present plaint before the Arbitrator and seek any interim or interlocutory relief as it may choose under Section 17 of the 1996 Act.

Hence, the suit shall be referred to Arbitration, parties would be at liberty to appoint the arbitrator/arbitrators in accordance with the covenants of the FSA and TMNA and or approach the Court.[Hero Electric Vehicles (P) Ltd. v. Lectro E-Mobility (P) Ltd., 2021 SCC OnLine Del 1058, decided on 02-03-2021]


Advocates before the Court:

For the plaintiffs: Mr Sudhir Chandra, Sr. Adv. with Mr Ankur Sangal, Mr Sahil Narang, Ms. Pragya Mishra and Ms Richa Bhargava, Advs.

For the Defendants: Mr Akhil Sibal, Sr. Adv. with Mr Vikas Mishra, Ms Malini Sud, Mr Nikhil Chawla, Ms Shriya Mishra, Advs.

Case BriefsHigh Courts

Andhra Pradesh High Court: R. Raghunandan Rao, J., addressed a matter wherein the law relating to Trade Mark and Passing off was highlighted wherein the trademarks of the parties are similar or identical.

Permanent Injunction was sought by the respondent to restrain the appellant from infringing on the trademarks or passing off trademarks held by the respondent and further sought for damages, rendition of accounts under the Trademarks Act, 1999 and infringement of Copy Rights Act, 1957 against the appellant.

Background

Plaintiff had been carrying on the business of manufacture of white lime wash and distributing and selling the same under the flagship brand name Surya and the device mark of “Rising Sun”.

Plaintiff had been using the mark “Surya” in collocation with various other words and in a combination with the device “Rising Sun with seven rays”.

Unique, uncommon and distinctive features of the trademarks “SURYA” and logo “SUN” are an inventive combination.

Plaintiff submitted that under the common law and as a result of extensive prior usage since 1985, vested rights in the Trademark “SUN” as a logo and “SURYA” as a word and to protect the same have already filed Trademark Applications and the same is pending.

Plantiff’s case was that the plaintiff’s mark came to obtain recognition among the general public relating to the standard and quality of the products of the plaintiff and is recognized all over the country.

Hence, plaintiff claimed that its mark “Surya” which is recognized all over the country would be treated as a well known mark defined under Section 2 (zg) of the Trademarks Act, 1999.

Plaintiff filed a criminal complaint against the defendant on knowing that he was indulging in illegal activity by selling its products by adopting the name “Surya Magica White”.

But the stated criminal complaint was not acted upon, which compelled the plaintiff to file a private complaint which again came to be pending, therefore plaintiff approached the Court.

Defendants’ use of the essential features of the plaintiff mark demonstrates that his instent was to utilise the goodwill of the plaintiff by deceiving the general public.

Analysis, Law and Decision

Bench reviewed the law relating to Trade Marks.

While reviewing the same, Court stated that the Act regulates the recognition of trade marks, their registration and protection.

Protection of Trade Marks is defined in Section 2(1)(zb):

“Trade Mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and 

(i) in relation to ChapterXII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted use, to use the mark whether with or without any indications of the identity of that person, and includes a certification trade mark or collective mark.

The primary purpose of the a trade mark is to indicate the source of the goods/services that are sold in the market.

Whenever and wherever if there is an attempt to deceive buyers about the source of goods/services with usage of an identical or similar Trade Mark the law would assist the proprietor of the trade mark to protect his identity as the only supplier of the said goods/services.

Section 29. Infringement of registered trademarks:

Bench added to its analysis that there could be a case of infringement where there is similarity in the trade mark or where trademarks are identical, leading to confusion in the mind of the buyer that the goods being purchased by him under the offending trade mark are the goods being produced or sold by the proprietor of the original trade mark.

Test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing of actions.

Question that generally needs to be answered by the Court in a Trade Mark case, filed as an action of passing off or an action for infringement:

Whether a buyer would get confused between the goods of the Defendant and the plaintiff because of the usage of the offending trademark by the defendant?

In regard to the instant case, Bench noted that an action for infringement and passing off, both have been sought.

For passing off action, plaintiff failed to produce any evidence of the quantum and length of sales, reputation or goodwill built, therefore no action for passing off can be looked into.

Action for infringement

For the said action, plaintiff has to demonstrate that his trademark is registered and the defendant’s trademark is similar enough to the plaintiff’s trademark which would in result create confusion in the minds of the buyers.

In the present case, the trademark of the plaintiff is registered, both the parties are selling goods which are falling in the same category.

In view of the above, the only question that remains is:

Whether they are creating confusion in the minds of the buyers?

Court stated that the plaintiff has claimed that he has a trade mark in the name “Surya”, which is a generic word which connotes “Sun”.

In the above-stated circumstances, plaintiff/respondent cannot contend that he has a trademark on the name “Surya”.

In the present case, however, the plaintiff submitted that the mark is “Surya” written in a specific style with a specific foreground and background.

Even though, there cannot be a trade mark in the name “Surya” there could always be a trade mark in a particular stylistic way of using the word “Surya”.

Since the trademarks exhibited by plaintiff had been the words “Surya Cem or Surya Agrilline” etc., the trademark would have to be construed as a collocation of both the words Surya and Cem or Surya Lime or mortar etc.

Perusal fo the above discussion would depict that the trade mark of the defendant would show that there are differences in the manner in which the word “Surya” is depicted.

Hence, it can’t be said that the trademarks of the plaintiff and the defendant are identical or totally similar.

Supreme Court’s decision in Ruston & Hornsby Ltd. v. Zamindara Engineering Company, (1969) 2 SCC 727, it was held that in any action for infringement where the defendant’s trade mark is not the exact mark on the register but something similar to it, the test of infringement is the same as in an action for passing off.

Bench added to its observations that in the instant case, there is a possibility of a buyer going to the shop and asking for Surya cem and get confused by the mark of the defendant and accept the product of the defendant as it would be sold as Surya Blue or Surya ujala.

In light of the Delhi High Court decision of Surya Agro Oils Ltd. v. Surya Coconut Oil Industries, 1994 SCC OnLine Del 266, it will be held that there is every likelihood that buyers would tend to get confused and plaintiff would be entitled to an injunction as granted by trial court.

In view of the above, CMA was dismissed. [Gaurav Polymers v. Delight Chemicals (P) Ltd., 2020 SCC OnLine AP 1484, decided on 20-11-2020]


Advocates for the Parties:

Advocate for the petitioner: Advocate, K V Raghu Veer

Advocate for the respondent: Advocate, Ashok Ram Kumar

Case BriefsSupreme Court

Supreme Court: The 3-judge bench of L. Nageswara Rao, Hemant Gupta* and Ajay Rastogi, JJ has held that the High Court is not obliged to frame substantial question of law, in case, it finds no error in the findings recorded by the First Appellate Court.

The Court was hearing the case relating to suit for permanent injunction wherein the High had dismissed the second appeal without framing any substantial question of law. It was contended before the Court that framing of substantial question of law is mandatory in terms of Section 100 CPC and hence, the matter should be remitted back to the High Court for determination of the substantial question of law framed by the appellants.

On this, the Court explained that Sub-section (1) of Section 100 CPC contemplates that an appeal shall lie to the High Court if it is satisfied that the case involves a substantial question of law. The substantial question of law is required to be precisely stated in the memorandum of appeal. If the High Court is satisfied that such substantial question of law is involved, it is required to formulate that question. The appeal has to be heard on the question so formulated. However, the Court has the power to hear appeal on any other substantial question of law on satisfaction of the conditions laid down in the proviso of Section 100 CPC.

Therefore, if the substantial question of law framed by the appellants are found to be arising in the case, only then the High Court is required to formulate the same for consideration. If no such question arises, it is not necessary for the High Court to frame any substantial question of law.

“The formulation of substantial question of law or reformulation of the same in terms of the proviso arises only if there are some questions of law and not in the absence of any substantial question of law.”

It was the case of the appellants that the First Appellate Court had ordered that the question of jurisdiction of Civil Court would be decided first, however the appeal was decided without dealing with the said issue., thereby causing serious prejudice to the rights of the appellants. Similarly, the application under Order XLI Rule 27 of the Code was not decided which was again prejudicial to their rights.

The Court, however, found that such substantial questions of law did not arise for consideration. The issue of jurisdiction was not an issue of fact but of law. Therefore, it could very well be decided by the First Appellate Court while taking up the entire appeal for hearing.

It was noticed that the suit was simpliciter for injunction based upon possession of the property, hence, the said suit could be decided only by the Civil Court as there is no mechanism prescribed under the Land Revenue Act for grant of injunction in respect of disputes relating to possession. The Civil Court has plenary jurisdiction to entertain all disputes except in cases where the jurisdiction of the Civil Court is either expressly or impliedly barred in terms of Section 9 CPC. Since there is no implied or express bar of jurisdiction of the Civil Court in terms of Section 9 CPC, the Civil Court has plenary jurisdiction to decide all disputes between the parties.

Hence, it was held that the High Court did not commit any illegality in not framing any substantial question of law while dismissing the appeal filed by the appellants.

[Kirpa Ram v. Surendra Deo Gaur,  2020 SCC OnLine SC 935, decided on 16.11.2020]


*Justice Hemant Gupta has penned this judgment 

Case BriefsHigh Courts

Punjab & Haryana High Court: While deciding an appeal filed by the petitioner against the order passed by the Additional District Judge, Raj Mohan Singh, J., allowed the appeal setting it aside.

Petitioner has filed the instant appeal against the order dated 31-07-2020 vide which the application filed by the petitioner under Order 41 Rule 5 CPC for a stay of operation of judgment and decree dated 06-03-2020 was dismissed. Suit for permanent injunction filed by the petitioner was dismissed by the trial Court.

In the appeal filed by the petitioner against the judgment and decree dated 06-03-2020, the interim injunction has been declined on the ground that the petitioner is also a co-sharer in the suit land and suit for a permanent injunction is not maintainable against other co-sharer.

Counsel for the petitioner, Harsh Chopra cited the judgment delivered in the case of Bachan Singh v. Swaran Singh, 2000 SCC OnLine P&H 233 and Puran Singh v. Kuldeep Singh, 2018 SCC OnLine P&H 1966 He further submitted that in a situation where the value or utility of the property is diminished, a co-owner can seek an injunction to prevent the same from happening.

In view of the facts, circumstances and arguments advanced the Court allowed the appeal and set aside the order dated 31-07-2020. The Court also directed the parties to maintain the status quo during the pendency of the appeal.[Dalip Singh v. Surinder Jain, 2020 SCC OnLine P&H 1624, decided on 08-10-2020]


Yashvardhan Shrivastav, Editorial Assistant has put this story together

Case BriefsHigh Courts

Delhi High Court: V. Kameswar Rao J. rejected an application for permanent injunction by a pharmaceutical company against a rival brand, seeking an order to restraint it from infringing its registered trade mark.

The plaintiff had trademarked the terms ‘TCV’ and ‘TypbarTCV’ in 2012 in relation to a revolutionary Typhoid vaccine for children. They averred that the defendants began promoting a similar Typhoid vaccine, named ‘ZYVAC-TCV’ in late-2018, which was similar, if not identical, in composition to their product. Consequently, they filed for a permanent injunction against the defendants, seeking to prevent them from infringing its trademark, rendition of accounts/ damages and delivery, etc. The plaintiffs, claiming to be a leading manufacturer of specialised vaccines in India with a significant global presence, contended that the launch of the defendant’s vaccine is a flagrant infringement of their trademarked ‘TCV’ and that the publication and intended launch of a similar product with the ‘TCV’ trademark is confusing and, therefore, inherently a misrepresentation to the consuming public.

The defendants denied the plaintiffs claims by pleading that their mark, ‘ZYVAC-TCV,’ when considered as a whole is entirely different from the plaintiffs’ mark and that its essential feature is ‘ZYVAC.’ Moreover, the term ‘TCV’ is generic and descriptive of a category of vaccine called ‘Typhoid Conjugate Vaccine,’ which is not entitled to legal protection. They refute the plaintiff’s trademark by alleging that another entity had applied for the registration of the ‘TCV’ trademark in 2009, and the plaintiffs are, therefore, not the creator nor the prior user of the mark as claimed.

High Court accepted the defendant’s plea claiming that ‘TCV’ was a ‘descriptive adjective’ and could not receive any protection under the law, citing literature of WHO and previous judgements of the Delhi High Court where it had repeatedly held that the first use of a descriptive word as a brand mark would not entitle such a user to exclusively treat/register it as a trademark. As far as the similarity of the two competing product names are concerned, the learned Judge found that after excluding ‘TCV’ as a trademark, the terms ‘TYPBAR’ and ‘ZYVAC’ appear to have no deceptive similarity or reasonable probability for confusion between the words either phonetically or visually. Similarly, there was found to be no deceptive similarities in the packaging of the two products. Since the plaintiffs did not deny the defendant’s contention that they were not the first ones to adopt the words ‘TCV,’ the Court found the earlier entity responsible for coining the term in 2009 and used the existence of third parties selling medicinal products with the term ‘TCV’ as a sign that different products with this term can coexist in the market without confusion. The Court rejected the plaintiff’s application citing insufficient grounds for granting interim relief.[Bharat Biotech International Ltd. v. Optival Health Solutions (P) Ltd., 2020 SCC OnLine Del 852 , decided on 26-05-2020]

Case BriefsHigh Courts

Bombay High Court: B.P. Colabawalla, J., held that,

“Trade Mark ISKCON has come to enjoy a personality that is beyond the mere products/services rendered thereunder and the recognition, reputation and goodwill of the said trade mark ISKCON is no longer restricted to any particular class of goods or services.”

Permanent Injunction

Plaintiff had sought permanent injunction to restrain the defendants from infringing the plaintiff’s registered trademarks, passing off and other reliefs.

A decree of declaration has also been sought that the plaintiff’s trademark ISKCON is a ‘well-known trade mark’ in India.

Director of Defendant 2 has give an undertaking that the defendants will not use the trad mark / name ISKCON by itself or as a part of the trade mark / name or in any manner whatsoever including the impugned expression “Formerly known as ISKCON”.

Advocate for the plaintiff submitted that apart from the above-stated declaration, plaintiff is also entitled to a declaration that its trademark ISKCON is a well-known trademark in India.

Plaintiff has made applications/secured registrations in respect of the trade mark ISKCON and/or marks containing ISKCON as one its leading, essential, distinctive and prominent feature in respect of various goods/services/classes.

Plaintiff has been regularly, openly, continuously, uninterruptedly and extensively using the said mark ISKCON in respect of various goods and services since at least the year 1971 with a view to distinguish the goods/services bearing the said mark ISKCON from those of others.

Further the Counsel for the petitioner also submitted that parameter required to be taken into consideration for a well-known trademark as per Sections 11(6) and 11(7) of the Trade Marks Act, 1999 are fulfilled in the present case.

Decision

It is clear that ISKCON is a coined trade mark of the Plaintiff, that is to say that the said term ISKCON did not exists prior to the Plaintiff’s adoption and use of the same and thus it deserves the highest degree of protection.

Plaintiff has been diligently safeguarding and protecting its rights in the said trade mark ISKCON and has initiated proceedings before various forums against the misuse of its trade mark ISKCON and been successful in enforcing its rights in its mark ISKCON.

Hence in Court’s opinion, plaintiff’s trade mark ISKCON satisfies the requirements and tests of a well-known trade mark as contained in Sections 11(6), 11(7) and other provisions of Trade Marks Act.

Therefore, Court held that trade mark ISKCON is a well-known trade mark in India within the meaning of Section 2(1) (zg)of the Trade Marks Act, 1999. [International Society for Krishna Consciousness (ISKCON) v. Iskcon Appaeral (P) Ltd., 2020 SCC OnLine Bom 729 , decided on 26-06-2020]

Case BriefsHigh Courts

Rajasthan High Court: Arun Bhansali J., quashed and set aside the order of the trial court since the trial court erred in rejecting the petition seeking to implead them as a party to the suit.

The present writ petition was filed by the petitioners being aggrieved against the order passed by the Civil Judge. The respondent-plaintiff had filed a suit for declaration of easementary rights and permanent injunction in relation to the right of way and sought permanent injunction by impleading the State as well as the Tehsildar as party defendants to the suit. They had filed an application with the submission that the land in question was a cremation ground and various mausoleums of their ancestors were situated therein and thus they are seeking to be impleaded as party defendants to the suit. The Trial Court after hearing the parties came to the conclusion that the land in question belongs to the State and therefore there were no necessity of applicants being impleaded as party defendants.

The advocate representing the petitioner, Teja Ram submitted that the trial court was not justified in rejecting the application filed by the petitioners, inasmuch as admittedly the land in question was Gair Mumkin Samshan and was being used by the petitioners as the cremation ground.

The advocate representing the respondents, Roshan Lal contended that the trial court was justified in rejecting the application.

The Court upon perusal of the materials available on record stated that the trial court was not justified in rejecting the application on the ground that the land did not belong to the petitioner since the residents of the area had an interest in that land. The Court opined that the trial court should have taken a comprehensive view of the matter and observed that “…the suit was being contested on part of the defendants also was an indicator towards the nature of interest being taken by the State in defending the suit and, therefore, the rejection of application was not justified.” [Hansa Ram v. Moda, 2020 SCC OnLine Raj 276, decided on 17-02-2020]

Case BriefsHigh Courts

Chhattisgarh High Court: Sanjay K. Agrawal, J., allowed a second appeal against the order of the trial court as well as the First Appellate Court whereby the suit brought by the plaintiffs (respondents herein) for declaration of title, permanent injunction, partition and possession of the suit property was decreed.

It is pertinent to note that during the pendency of the said suit, affidavit-evidence under Order 18 Rule 4 CPC (recording of evidence) was filed by the plaintiffs. On two subsequent dates when the matter was posted, the plaintiff — Kunti Bai — was partly cross-examined. However, after that, she could not appear before the trial court though the matter was fixed for evidence from time to time. Ultimately, her opportunity to lead evidence was closed and thereafter, the suit was decreed in favour of the plaintiffs.

The question for consideration of the High Court was whether the affidavit-evidence of the Kunti Bai, which was not subjected to cross-examination, could be said to be “evidence” within the meaning of Section 3 (interpretation clause) of the Evidence Act.

The Court was of the opinion that a careful perusal of Section 3 would show that the affidavit is not included in the definition of “evidence”, and can be used only if the Court permits it for sufficient reasons. An affidavit can be termed to be an “evidence” within the ambit of Section 3 only in those cases where the same is filed at the instance or under the direction of the Court or law specifically permits for proof of anything by affidavit. Thus, the filing of an affidavit or one’s own statement, in one’s own favour, cannot be regarded as sufficient evidence for any Court.

Reliance was placed on Ayaaubkhan Noorkhan Pathan v. State of Maharashtra, (2013) 4 SCC 465, wherein the Supreme Court had held that affidavit can be relied upon when the deponent is available for cross-examination in terms of Order 18 Rule 4 CPC. The High Court held that: “Thus, it is now well settled that affidavit is not evidence within the meaning of Section 3 of the Evidence Act unless an opportunity to effectively cross-examine to the person(s) examined is given to another side as provided in Order 18 Rule 4(2) of the CPC.”

In the instant case, since the defendants did not get a proper opportunity to cross-examine Kunti Bai, the court held that the affidavit filed by her under Order 18 Rule 4 remained an affidavit and did not turn into evidence. In such view of the matter, the impugned order was set aside and the matter was remanded back to the trial court to give an opportunity to the defendants to cross-examine Kunti Bai and other prosecution witnesses. [Premlal v. Kunti Bai, 2019 SCC OnLine Chh 107, decided on 11-09-2019]

Case BriefsHigh Courts

Delhi High Court: Sanjeev Narula, J. while addressing a matter in respect to trademark infringement and in lieu of that seeking a permanent injunction, discussed the concept of “acquiescence” by relying on ample of cases.

In the present case, the plaintiff sought a permanent injunction restraining the defendant from adopting and using:

  • Trademark/trade name ‘Make My travel’, MMT (letter mark) and the tag line ‘Dreams Unlimited (Impugned ‘wordmarks’);
  • The MakeMyTravel Logo, which includes the infringing word marks namely, MMT and Dreams Unlimited
  • Their domain name <makemytravelindia.com>;

The above are all stated to be violative of the plaintiff’s statutory and common law rights in its own trademarks –

  • MAKEMYTRIP
  • MMT
  • The tag lines MEMORIES UNLIMITED and HOTELS UNLIMITED.

The case of the plaintiff is that, it has presence all across India and several other countries around the world including in the United States of America, the United Arab Emirates and Mauritius. Over the years, the plaintiff has expanded its range of products and services beyond online travel bookings.

Plaintiff, through its primary website, www.makemytrip.com and other technology-enhanced platforms including application-based mobile platforms, etc., offers an extensive range of travel services and products, both in India and abroad.

After changing its trade name to include the words, “MakeMyTrip” on August, 2, 2000, plaintiff has been continuously and uninterruptedly using the trademarks MakeMyTrip and MMT, the MakeMyTrip Word Mark as well as the MMT letter mark. Tag Line “Memories Unlimited” and “Hotels Unlimited”, have also been continuously and uninterruptedly used by the plaintiff.

Plaintiff has earned immense reputation and goodwill on account of extensive and continuous use by the plaintiff. In order to add further distinctiveness and brand recall to its MakeMyTrip Word Mark, plaintiff has conceived, adopted and used various catchy and stylized logos, all of which contain the MakeMyTrip Word Mark, as their essential feature.

Hence, any unauthorized use of the MakeMyTrip Marks and/or any other deceptively similar mark would violate the Plaintiff?s statutory and common law rights and an effort to ride upon the immense reputation and goodwill garnered by the Plaintiff in its MakeMyTrip Marks.

Thus, being aggrieved by the adoption and use of the Infringing Mark and Infringing Domain Name, the Plaintiff, through its Counsel, issued a cease and desist notice requisitioning the Defendant to, inter alia, cease all use of the Infringing Marks and Infringing Domain Name.

It was further submitted that, infringement and passing off of plaintiff’s marks is proved by the following factors:

  • Phonetically, visually, structurally and conceptually the competing marks are identical and/or deceptively similar.
  • Identity of the idea: The mark MakeMyTravel and MakeMyTrip are combination of three words, where the first two words are identical and last word “travel” and “trip” convey the same meaning, idea and concept
  • Nature of goods and services in respect of which the trademarks are being used are identical.
  • Class of purchasers likely to use services of the Plaintiffs and the Defendants is the same.

Defendant’s submissions were as follows:

Plaintiff and its officials were aware that defendant had incorporated a company by name of Make My Travel (India) Private Limited since the year 2010-2011.

During the years 2011-2017, plaintiff and defendant entered into business transactions and on occasions, money was transferred from the account of defendant to that of the plaintiff, thus plaintiff despite being aware of the same did not raise any objection.

Further adding to the above, it has been stated that, since the very beginning. The defendant company was using the letter marks MMT in all its email accounts and other communication and the plaintiff along with its officials was aware of the same.

On May, 17th, 2018, a temporary ad-interim injunction was granted in favour of the plaintiff, according to which the following would be applied on the defendants:

“restraining the Defendant from using in any manner whatsoever, selling, offering for sale, advertising directly or indirectly dealing in any products or services under the infringing marks, namely Make My Travel (word per se), MMT (letter mark). Dreams unlimited (tag line), www.makemytravelindia.com and Make My Travel logos or any other trademark/trade name/trade dress or logo/device, which is identical to and/or deceptively similar to and/or plaintiffs MakeMyTrip logo marks, namely, MakeMyTrip (word mark), MMT (letter mark) and Memories Unlimited and Hotels Unlimited (tag line).”

Decision of the Court and its Analysis

The main relief sought in the above view was of permanent injunction and the Court has been thus called upon to deliberate the question as to whether the same should be confirmed or vacated.

While deciding the application at the preliminary stage, plaintiff under Order 39 Rule 1 & 2 as also the application of the Defendant under Order 39 Rule 4, the court has to keep in mind the well-settled principles governing the grant of injunction viz. prima facie case; balance of convenience and the harm or injury likely to be caused on account of the impugned acts of the Defendant.

High Court while taking reliance on several Supreme Court decisions, laid down the test which is to be applied while evaluating the question regarding the infringement. In F. Hoffman La Roche v. Geofferey Manners, (1969) 2 SCC 716, Supreme Court held that,

“True test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.”

Referring to the decision in the case of, Amritdhara Pharmacy v. Satyadev Gupta, AIR 1963 SC 449, Court held that for deceptive resemblance, two important questions that need to be kept in mind are:

  • who are the persons that the resemblance must be likely to deceive or confuse and
  • what rules of comparison are to be adopted in judging whether such resemblance exists;

In the above-stated case of the Supreme Court, it was held that,

“confusion is perhaps an appropriate description of the state of mind of a consumer who on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether the impression is not due to imperfect recollection.”

Court while dealing with the present matter stated that while the first two words of the marks MakeMyTrip and MakeMyTravel are identical, last words, TRIP and TRAVEL are similar and convey the same idea.

Defendant’s tag line DREAMS UNLIMITED is deceptively similar to the Plaintiff’s taglines HOTELS UNLIMITED and MEMORIES UNLIMITED second word in the tag lines is identical, the first words DREAMS, MEMORIES and HOTELS, when considered in the context of travel and holiday-related services, may be used in the same context or idea.

In view of the above-stated decisions, Court stated that the plaintiff has a strong prima facie case and the balance of convenience also lies in its favour. In case the defendant is permitted to continue to use infringing marks, grave and serious prejudice is likely to be caused to the plaintiff.

Court added to its observation that, the adoption of the mark by the defendant is without any cogent explanation and it prima facie appears to be dishonest.

On perusal of the orders passed by the Court in the case of MakeMyTrip (India) Pvt. Ltd. v. Orbit Corporate Leisure Travels (I) Private Limited, Court stated that in the said case, there was an agreement between the defendant’s predecessor-in-interest and the plaintiff, and this crucial factor prevailed upon the Court to accept the plea of acquiescence. In the present case, there is no such agreement on record, the plea of acquiescence is premised merely on the basis of email communications exchanged with booking customer care executives.

In Dr Reddy’s Laboratory Ltd. v. Reddy Pharmaceuticals Ltd., 2013 SCC OnLine Del 3626, the Court took note of the fact that the owners of trademarks or copyrights cannot be expected to run after every infringer and thereby remain involved in litigation at the cost of their business time, but can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.

Concept of “Acquiescence”

Acquiescence is a species of estoppels, a rule in enquiry and a rule of evidence and it is essential to the Acquiescence Doctrine that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter’s detriment, confident in the knowledge that the former is not asserting his rights against the violator.

Thus, the Court held that defendant has no justification for the use of the infringing marks, except for the plea of suppression and acquiescence, both of which would require further and deeper scrutiny and examination during the course of the trial.

“Irreparable loss would be caused to the plaintiff if the defendant is not restrained from using the impugned marks.”

Hence, injunction order dated 17-05-2018 is made absolute and shall continue to operate during the pendency of the present suit. [Make My Trip (INDIA) (P) Ltd. v. Make My Travel (INDIA) (P) Ltd., 2019 SCC OnLine Del 10638, decided on 18-10-2019]

Case BriefsHigh Courts

Delhi High Court: Pratibha M. Singh, J. while addressing a petition concerning the protection of the trademark ‘DA MILANO’, issued certain guidelines for the online intermediaries involved and held as follows:

“Role of Facebook and Instagram, insofar as posts put up by concerned third parties is governed by the Information Technology (Intermediaries Guidelines) Rules, 2011. Considering the provisions of the stated guidelines, online platforms which claim to be intermediaries not performing any active role in the posting of such information by 3rd party alleged infringers, have a duty only to take down the posts which are brought to their notice by plaintiff in terms of Section 79(3).

The above-mentioned guidelines along with Section 79(3) of the IT Act have been interpreted by a very significant Supreme Court case of Shreya Singhal v. Union of India, (2015) 5 SCC 1, “to mean that “any information received by the platforms would be by means of a Court order”.

In Shreya Singhal case, pertaining to Section 79 (3)(b), following was held which is relevant in respect to the present matter:

“Section 79(3)(b) has to be read down to mean that the intermediary upon receiving actual knowledge that a court order has been passed asking it to expeditiously remove or disable access to certain material must then fail to expeditiously remove or disable access to that material. This is for the reason that otherwise it would be very difficult for intermediaries like Google, Facebook, etc. to act when millions of requests are made and the intermediary is then to judge as to which of such requests are legitimate and which are not.”

The facts in the present case are that the plaintiff who claims to be the owner of ‘DA MILANO’ filed a suit against the Defendants 1 to 4 in respect to seek permanent injunction, restraining infringement of trademark and passing off and under Section 74 of IT Act, 2000 seeking protection of the trademark ‘DA MILANO’.

It has been further stated that, Defendants 1 to 4 are alleged infringers who have posted on “Facebook” and “Instagram” advertising and offering to sell products bearing the mark ‘DA MILANO’. Plaintiff while seeking a permanent injunction against infringers impleaded the stated online platforms to ensure that posts comprising the infringing marks are taken down.

Trial Court, had sought the personal appearance of Facebook and Instagram in the present matter. Therefore, the grievance was the direction of personal appearance of the representatives of Facebook and Instagram.

Senior Counsel, Parag Tripathi, submitted that his clients are willing to comply with interim order which has already been passed and since the said defendants are not contesting the matter on merits against the plaintiff and are merely intermediaries; their personal presence is not required.

High Court on perusal of the facts and the guidelines mentioned above along with relying on the Supreme Court case of Shreya Singhal v. Union of India, (2015) 5 SCC 1, agreed on the fact that the stated platforms are mere intermediaries and have no active role in the matter, which therefore demands no personal appearance. Further, the following directions were issued:

  • Plaintiff shall inform Instagram and Facebook whenever they came across use of the mark ‘DA MILANO’ either in word form, logo or in any other form on their platforms.
  • Once such information is received, as per Rule 3(4) of the 2011 Guidelines, the said posts shall be taken down, within the timelines prescribed.
  • If platforms have any doubt as to the violative or offending nature of posts, they shall intimate the plaintiff.
  • Upon any order being passed by a Court of competent jurisdiction, the same shall be intimidated to the platform, which shall abide by the said order.

Thus, the suit is decreed against Facebook and Instagram in the above terms. [Facebook Inc. v. Surinder Malik, 2019 SCC OnLine Del 9887, decided on 28-08-2019]

Case BriefsHigh Courts

Madhya Pradesh High Court: Prakash Shrivastava, J., dismissed the revision petition filed by the respondents under Section 115 CPC where they challenged the order of the Trial Court, whereby their application for rejection of plaint under Order 7 Rule 11 CPC was rejected.

The respondents had filed the suit for declaration and permanent injunction, wherein the petitioners had filed the application for rejection of plaint which has been dismissed by the impugned order. The petitioner argued that he was carrying his business on the suit property and earlier had filed a writ petition before the High Court. The Court issued directions relating to map and permission to construct Pakka shop and for non-compliance of the said contempt was also filed, therefore, the present suit was not maintainable and the trial court had committed an error in rejecting the application under Order 7 Rule 11 CPC.

The respondent submitted that post the passing of the order in Writ Petition and Contempt Petition, a lot of development has taken place and the order of the Trial Court does not suffer from any error.

The Court held that the plaint can be rejected under Order 7 Rule 11 CPC if the defendant is able to point out that any of the grounds which are mentioned in Rule 11 exists on the basis of the plaint averment. The petitioners could not point that there is any bar in entertaining the suit before the Trial Court. Merely on the basis of the order in the writ petition and in the contempt petition the plaint cannot be rejected on the ground that it does not disclose any cause of action, when otherwise in the plaint cause of action has been disclosed. The Trial court had rightly taken note of the fact that the materials on which the petitioners were placing reliance upon cannot be considered for rejection of plaint under Order 7 Rule 11 CPC. There was no illegality in the order passed by the Trial Court and the revision petition was found to be devoid of any merit and was dismissed. [Purshottam v. Murlidhar, 2019 SCC OnLine MP 2099, decided on 22-08-2019]

Case BriefsHigh Courts

Orissa High Court: Dr A.K. Rath J., quashed the order passed by Civil Judge (Junior Division) and order by Tahsildar due to fraudulent practices of the parties in a consolidation matter.

In the present case, a plot of land came into the purview of consolidation operation, wherein the Opposite Party 1 filed a consolidation revision before the Commissioner. The Commissioner had remanded the matter to the Consolidation Officer for effecting a compromise. The Opposite Party 2 had filed a compromise petition along with a trace map for partition and the Consolidation Officer had allotted 1/3rd of land to each in accordance with the trace map. The Opposite Party 2 had filed another application before the Tahsildar for the conversion of the agricultural land into a homestead.

Senior Advocate, Rajat Kumar Rath and Advocate, Sandipani Nayak representing the petitioners, submitted before the High Court that the trace map which was submitted by the Opposite Party 1 was a fraudulent copy. He put forth that the copy was forged and was an imaginary vertical sketch map; therefore the orders passed by the respective authorities were based on fabricated factual scenarios. The Senior Advocate also placed reliance on two apex court decisions which were discussed by the High Court in its order.

The Advocate representing the Opposite Party 1, Bikram Rath submitted that they were constrained in filing for a permanent injunction due to the disturbed possession in the land by the Opposite Party 2.

The High Court, before delving into the matter, discussed the two apex court decision in order to distinguish between when proceedings shall be considered “collusive and fraudulent”. It stated that in Nagubai Ammal v. B. Shama Rao, AIR 1956 SC 593, the apex court had come to a decision that in “collusive proceedings the combat is a mere sham, in a fraudulent suit it is real and earnest.” Thus stating that in collusive proceedings the claim is fictitious in nature whereas, in a fraudulent suit, the claim is untrue. Placing reliance to another two Supreme Court decisions it stated that both in S.P. Chengalvaraya Naidu v. Jagannath, (1994) 1 SCC 1 and Badami v. Bhali, (2012) 11 SCC 574, the Apex Court had stated that a judgment obtained by fraudulent means should be treated with nullity notwithstanding the hierarchy of court, whether superior or inferior court passing the order/decree. It quoted Chief Justice Edward Coke of England, “Fraud avoids all judicial acts, ecclesiastical or temporal.”  The Court upon perusal of documents produced stated that it was evident that the diagram produced in the compromise petition was diametrically opposite to the consolidation case. Therefore, the court quashed both the orders passed by the Civil Judge and Tahsildar, stating that the Opposite party 1 had fraudulently induced the authorities for a favourable order and also provided an option for the Opposite Party 1 to make a fresh application for conversion of land.[Prafulla Kumar Nayak v. Khetramohan Nayak, 2019 SCC OnLine Ori 238, decided on 10-07-2019]

Case BriefsHigh Courts

Jammu and Kashmir High Court: A Bench of Sanjeev Kumar, J. dismissed a petition filed against the order of a Subordinate Civil Judge where the application of the petitioner seeking leave of the court to file additional pleas (replica) was cancelled.

The facts of the case are that a suit was filed by the petitioner for Permanent and Mandatory Injunction restraining the respondent from raising any construction illegally and unauthorizedly to the prejudice of the rights of the petitioner which was pending adjudication before the Subordinate Civil Judge. Respondent then filed his written statement in which he clearly refuted the contents of the plaint. The petitioner with a view to file additional pleading moved an application before the trial court for submitting additional pleadings (replica). The trial court did not find any substance in the application and rejected the same. The ground that was given for rejection was that the petitioner failed to demonstrate any new facts which had come in the written statement and which needed to be refuted or explained.

The Court held that no case was made out for the exercise of the power of superintendence of the Court vested by virtue of Section 104 of the J&K Constitution. The order fell in the realm of discretionary order and unless the discretion was demonstrated to have been exercised with material irregularity, and in ignorance of the settled legal principles it could not be made the subject matter of interference in supervisory jurisdiction. The Petition was thus dismissed. [Abdul Rashid Chalak v. State of J&K, 2018 SCC OnLine J&K 1039, decided on 24-12-2018]

Case BriefsHigh Courts

Orissa High Court: A Single Judge Bench of Dr A.K. Rath, J., allowed the petition which challenged the order of the trial court whereunder the application of the plaintiffs filed under Order 1 Rule 10 CPC to implead the wife of Defendant 1 was rejected.

The facts of the case were that the plaintiffs-petitioners had instituted the suit for permanent injunction and recovery of possession impleading the wife of the defendant as Defendant 2.

The contention of Mr A.P. Bose, Advocate for the petitioners, was that a part of the suit land had been alienated to the wife of the defendant. The said fact came to the knowledge of the plaintiffs after the written statement was filed. The hearing of the suit had not begun. The intervenor was a necessary party to the suit.

The counsel for defendants Mr S. Udgata, submitted that the written statement was filed in the year 2011. But then, the petition for impleadment was filed after a gap of five years. The intervenor was neither necessary nor proper party to the suit.

The Court relied on the case of Razia Begum v. Sahebzadi Anwar Begum, AIR 1958 SC 886, wherein the Apex Court had held that it is firmly established as a result of judicial decisions that in order that a person may be added as a party to a suit, he should have a direct interest in the subject matter of the litigation whether it raises questions relating to movable or immovable property. The suit scheduled land had been alienated to the wife of the defendant. In view of the same, the intervenor was a necessary party to the suit thus the petition was allowed. [Ramesh Chandra Sahoo v. Ranjit Kumar Singh, 2018 SCC OnLine Ori 436, decided on 19-12-2018]

Case BriefsHigh Courts

Delhi High Court: A Single Judge Bench comprising of Pratibha M. Singh, J. decreed a suit in terms of granting a permanent injunction restraining the defendants from selling plaintiff’s counterfeit products.

The plaintiff—Giorgio Armani SpA—is an Italian company that owns various ARMANI marks that makes it one of the leading fashion brands worldwide. The defendants were in the business of organising exhibitions of various high-end designer products including those of the plaintiff. The plaintiff alleged that its products were being sold without authenticity cards or nay price tag and hence the defendant’s activities were likely to cause huge damage to plaintiff’s marks and business. It was also pleaded that since the products did not bear price tags, which could not have been the case if the products were original, they could be easily inferred as being counterfeit.

The High Court perused the record and held that the fact that the defendants were offering for sale products under the various ARMANI marks and holding exhibitions in respect thereof showed that they were well aware of the value of the said marks. Legal position was noted to be that under Sections 29 and 30 of the Trade Marks Act, 1999, causing infringement to a product would also constitute infringement. It was noted that the defendants neither argued nor pleaded that the products were genuine. The fact of missing price tags added credence to the plaintiff’s claim that the products were counterfeit. The activities of the defendant were held to be an infringement of plaintiff’s marks. Therefore, the suit was decreed in terms of granting permanent injunction against the defendants. [Giorgio Armani v. Yogesh Mordani,2018 SCC OnLine Del 12078, dated 03-10-2018]

Case BriefsHigh Courts

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

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

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

Case BriefsHigh Courts

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

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

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

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

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

Case BriefsHigh Courts

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

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

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

Case BriefsHigh Courts

Punjab and Haryana High Court: A Single Judge Bench comprising of Amit Rawal, J., allowed a revision petition which was filed against the order whereby an application submitted under Section 8 of the Arbitration and Conciliation Act, 1996 for resolution of dispute was dismissed by the Trial Court.

The facts of the case are such that a suit was filed by respondent seeking permanent injunction on the property in question. In the suit, respondent was aggrieved by the fact that petitioner had cancelled an agreement for sale of property in furtherance of which respondent had already made payments. Petitioner contested the suit by filing an application under Section 8 of the Act stating any dispute which arises between the parties are to be taken to arbitration. This application was dismissed by the trial court as they found no agreement entered into between the parties. Hence, the petitioner approached the High Court.

The High Court was of the view that a stand-alone agreement, an application submitted by the respondent that contained terms and condition would be considered to suggest that the parties were willing to resolve the dispute by way of arbitration. The Court observed that the suit was not maintainable as the matter was to be resolved by way of arbitration by virtue of Section 8 of the Act. Therefore, the impugned order whereby application filed under Section 8 was dismissed was set aside.[IREO Grace Realtech (P) Ltd. v. Neeru Babbar,2018 SCC OnLine P&H 1205, decided on 01-06-2018]