Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a case where application was filed under Order 39 Rules 1 and 2 read with Section 51 of the Civil Procedure Code, 1908 (Code) in a trademark and copyright infringement suit, the Single Judge Bench of Jyoti Singh, J. Passed an Order granting ex-parte ad-interim injunction to American Eagle and restraining Ektarfa Garments from selling any counterfeited products.

Background

Plaintiffs incorporated in United States of America (USA), were owned subsidiaries of a common parent company, American Eagle Outfitters, Inc. (collectively called ‘plaintiff’), which had been engaged in business of designing, marketing, and selling readymade clothing, footwear, fashion accessories and related goods, around the world, including India. Plaintiff used one or more eagle device marks on readymade clothing, fashion accessories and related goods and services, such as retail store services and online retail store services. Plaintiff had obtained trade mark registrations for its trade marks in over 65 countries.

Plaintiff stated that by virtue of the provisions of the law in USA, they are the claimant in the copyright in its trademark and were entitled to protection in India by virtue of Berne Convention, 1886 and the International Copyright Order, 1999. Plaintiff was the first owner of copyright in trademark by virtue of the Copyright Act, 1957 and was also the owner of ‘FLYING EAGLE’ Device Mark in India. Moreover, plaintiffs’ goods bearing their trade marks were sold in over 1300 retail stores including India and were also sold through www.ae.com website. Further, plaintiff had spent huge amount of money on its advertising initiatives and over the years, the American Eagle Outfitters mark had come to be commonly known as American Eagle.

Submissions on behalf of the Plaintiff

It was submitted that defendants were engaged in the business of manufacturing, selling/offering for sale counterfeit readymade clothing bearing plaintiff’s marks. Moreover, plaintiff’s ‘American Eagle’ mark also featured in the product description of the counterfeit clothing offered for sale on defendant’s website www.ektarfa.co.in/www.ektarfa.com, mobile app and social media pages such as Facebook, Instagram, etc.

Counsel for the plaintiff contended that plaintiff was a registered proprietor of its trademark in various clauses, therefore, considering the goodwill of the plaintiff’s mark, any unauthorized use by the defendants of identical or deceptively similar mark would lead to trade mark infringement. Further, defendants were clearly misrepresenting the customers and deceiving them into believing that there was a trade connection between the plaintiffs and the defendants, with a view to free ride on plaintiff’s reputation. It was also submitted that plaintiff has a copyright in the original artistic work in the ‘Eagle Device’, which was the most prominent element of defendant’s mark and thus there was an infringement of the copyright under Section 51 of the Copyright Act, 1957.

Analysis, Law, and Decision

The Court opined that plaintiff had made out a prima facie case for grant of ex parte ad interim injunction and plaintiff was likely to suffer irreparable harm if the injunction is not granted. Thus, the Court held that “defendants, their partners, managers, employees, agents, dealers, licensees, companies, retailers, wholesalers, distributors or any persons/entities that were under the control of the Defendants or were related or affiliated to the Defendants, as the case may be, and all others, acting for and on behalf of the Defendants, were restrained from manufacturing, marketing, offering for sale and selling, whether directly or indirectly, and whether on the Internet or otherwise, any goods, including, in particular, readymade garments, bearing the plaintiff’s marks ‘American Eagle Outfitters’ and ‘American Eagle’ and marks that incorporate the plaintiff’s marks or any other mark that was identical/deceptively similar in any manner whatsoever, amounting to trademark infringement, copyright infringement and passing off the trademarks of the plaintiff, till the next date of hearing”.

[Retail Royalty Company v. Ektarfa Garments, 2022 SCC OnLine Del 3882, decided on 14-11-2022]


Advocates who appeared in this case :

For the Plaintiff(s): Advocate Urfee Roomi;

Advocate Janaki Arun;

Advocate Anubhav Chhabra;

Advocate Ayush.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a case where Club Factory was involved in the sale of various unauthorized/ counterfeited products, bearing the registered marks of Louis Vuitton, the Single Judge Bench of Prathiba M. Singh, J. awarded costs of Rs. 20 lakhs in favour of Louis Vuitton, though the bill placed on record showed a total claim of over Rs. 32 lakhs.

Background

The present matter had been listed for 3-11-2022, for ex-parte evidence in respect of the relief of damages. However, counsel for the plaintiff submitted that owing to certain sensitivity, the plaintiff only wished to press for costs and not for damages, even though, the suit was decreed in Louis Vuitton Malletier v. Futuretimes Technology India Private Limited, 2022 SCC OnLine Del 888, qua permanent injunction.

The decree that had been passed was as follows:

  1. a decree for permanent injunction was passed in favour of the plaintiff and restraining the defendants from importing, manufacturing, warehousing, selling and/or offering for sale, advertising, directly or indirectly dealing, in any manner, in any goods, including facemasks, etc. bearing the registered trade marks “LOUIS VUITTON”, “LV” logo, Toile monogram pattern, Damier pattern and/or LV Flower pattern or any similar trade mark amounting to an infringement of registered trade marks, on any platform whatsoever, including its website www.clubfactory.com, mobile apps, social media platforms, etc;

  2. doing any other act which amounted to passing off of the defendant’s products as those of the plaintiff;

  3. using trade marks, patterns, labels, logos or devices, which were identical or deceptively or confusingly similar to the plaintiff’s trade marks “LOUIS VUITTON”, the “LV” logo, the “Toile monogram” pattern, the Damier pattern and/or the LV Flower patterns (the said trade marks) or any similar trade marks so as to misrepresent the quality/ origin of their goods and from taking unfair advantage of the plaintiffs reputation and goodwill in the said trade marks or any similar trade mark thereby causing dilution and tarnishment of the plaintiff’s trade marks.

  4. Directed Department of Telecommunications and Ministry of Electronics and Information Technology to issue instructions to all ISPs to block the website www.clubfactory.com, so that the same was not accessible through VPN or other platforms.

Decision

The Court noted that the bill of costs placed on record showed that the total cost claimed was Rs. 32,29,416 but after considering the facts, the Court awarded Rs. 20,00,000 as costs to the plaintiffs.

[Louis Vuitton Malletier v. Futuretimes Technology India Private Limited, 2022 SCC OnLine Del 3862, decided on 3-11-2022]


Advocates who appeared in this case :

For the Plaintiff(s): Advocate Pravin Anand;

Advocate Dhruv Anand;

Advocate Nimrat Singh;

Advocate Udita Patro.

competitive exam
Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Frankfinn Aviation Services Private Limited (‘plaintiff’) seeking permanent and mandatory injunction restraining the Defendant inter alia from infringement of trademark ‘FLY HIGH’, passing off, unfair competition, dilution and for rendition of accounts, Jyoti Singh, J., vacates an interim injunction order passed against the defendants and held that the defendant is not using the expression ‘FLY HIGHER’ as a trademark with an intent to deceive, misrepresent or confuse members of the public but is rather used in the manner being descriptive of its services and for purpose of promotion and advertisement.

The Plaintiff claimed being the original adopter, user as well as registered proprietor of the trademark ‘FLY HIGH’, which was coined and adopted in the year 2004 and has been continuously, extensively and uninterruptedly used for imparting training in hospitality, aviation, travel management and customer services, with largest network of state-of-the-art centres across India as well as in Dubai.

The grievance of the Plaintiff is that the Defendant, who operates its full-service airline under the trademark, for promoting its services under the mark ‘FLY HIGHER’ on various online platforms and social media websites has in a brazen and blatant manner copied the registered trademark of the Plaintiff ‘FLY HIGH’ and is using the same for allied and cognate services. Defendant also uses the trademark ‘FLY HIGHER’ as a hashtag on its website and services of the parties to the lis pertain to the same sector, i.e., aviation, confusion. An ex parte ad interim injunction dated 21-01-2022 has been granted in favour of the Plaintiff by the present Court.

The Court noted that the plaintiff is a registered proprietor of the trademark ‘FLY HIGH’ and thus by virtue of provisions of Section 28(1) of Trade Marks Act, 1999, it has a statutory right to use the mark exclusively as also seek protection against infringement by third parties.

Issue 1: Whether the registration of the trademark FLY HIGH by the Plaintiff can prevent the Defendant from using FLY HIGHER?

On perusal of the screenshot given below, the Court noted that the defendant is using the phrase FLY HIGHER in conjunction with its well-known trademark VISTARA and the logo.

The Court further noted that as per legislature, ‘trademark’ and ‘mark’ has two different connotations and in order to qualify as a trademark it must be capable of distinguishing the goods and services of one person from the others and it must be used or proposed to be used in relation to goods or services for indicating a connection, in the course of trade, between the goods or services and the person having the right to use the mark either as a proprietor or as a permitted user. Trademarks, therefore, are intangible assets of the proprietors, which serve as ‘source identifiers’, instantly connecting the goods/services with the proprietor thereof.

Placing reliance on Cadila Health Care Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd., 2009 SCC OnLine Del 2786, Bata India Limited v. Chawla Boot House, 2019 SCC OnLine Del 8147 and Red Bull AG v. Pepsico India Holdings Pvt. Ltd., 2022 SCC OnLine Del 969 the Court noted that if the Defendant can demonstrate that its use of the allegedly infringing trademark is not as a trademark but merely descriptive of its goods, it can escape the rigours of Section 29 of Trade Marks Act, 1999.

The Court remarked that the Plaintiff and Defendant operate in an entirely different field and industry. Defendant is operating a full-service Airline under its well-known trademark, while the Plaintiff is engaged in running a training Institute under the FRANKFINN mark.

The Court concluded that the defendant is right in stating that the phrase FLY HIGHER is only used in conjunction with its well-known mark VISTARA and with a sole purpose of advertising and promoting its scheduled Airline operating under and is not used as a trademark. Thus, the Court based on various documents placed on record held that FLY HIGHER is a generic term and common to aviation services and does not serve as a source identifier to distinguish Defendant’s goods and services from its competitors, and cannot be termed as a ‘Trade Mark’, as defined under the Act.

Issue 2: Whether there is a likelihood of confusion as to the origin of the services offered by the Defendant?

The Court noted that the underlying ethos of an infringement action under Section 29 of the Act is: (a) proprietary rights of a registered owner; and (b) public interest. Therefore, a very important ingredient of an action of infringement is the likelihood of confusion and/or association amongst the intending purchasers.

The Court further noted that the plaintiff’s target audience are people seeking soft skills training in the travel, tourism, hotel management and Aviation sector with the hope of possible employment opportunities while Defendant’s customers comprise travellers who choose to fly with Vistara Airlines. It further opined that the defendant’s customers comprise well-informed discerning people, who would not choose to travel with Vistara airlines, based on Plaintiff’s repute in the training Institute.

Thus, the element of likelihood of confusion or members of the public or trade associating the services offered by the Defendant as emanating from the Plaintiff, is lacking in the present case as ingredients of Section 29(1) and (2) Trade Marks Act, 1999 are not satisfied.

The Court held that the way the phrase FLY HIGHER is being used by the Defendant does not appear to be with an intent to deceive, misrepresent or confuse members of the public and the prominent use of the well-known trademark in conjunction with the phrase FLY HIGHER further defies any intent of the Defendant to misrepresent, contrary to the stand of the Plaintiff. Hence, Plaintiff has failed to establish a prima facie case of passing off against the Defendant.

The Court vacated the ex parte ad interim injunction order granted by this Court vide order dated 21-01-2022.

[Frankfinn Aviation Services Private Limited v. Tata Sia Airlines Ltd., 2022 SCC OnLine Del 3550, decided on 28-10-2022]


Advocates who appeared in this case:

Mr. Chander M. Lall, Senior Advocate with Mr. Kapil Midha, Ms. Versha Singh and Ms. Ananya Chug, Advocates for the Plaintiff;

Mr. Akhil Sibal, Senior Advocate with Ms. Kruttika Vijay, Mr. Aditya Gupta, Mr. Mukul Kochhar and Ms. Asavari Jain, Advocates for the Defendants.


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Oravel Stays Limited doing business as OYO Rooms (plaintiff) is seeking damages and permanent and mandatory injunction with respect to the defamatory articles written and published by Nine Network Private Limited (defendants), Mini Pushkarna, J., granted an ad-interim injunction in favour of the plaintiff and restrained defendants including their servants, agents, representatives, employees and other constituents from making, publishing and disseminating or publishing any false, defamatory, disparaging and misleading statements or articles pertaining to the plaintiff.

The plaintiff is a well-known and reputed brand in the global hospitality space and the Indian startup ecosystem. It came to the plaintiff’s attention that defendants in reckless disregard for the plaintiff’s reputation and goodwill, have consistently published articles on their website which has mass viewership having libelous, scandalous, and defamatory comments against the plaintiff. The said articles that have been published contain false, unsubstantiated, and disparaging claims against the plaintiff.

Thus, the Court on perusal of articles pertaining to money laundering, proceedings pending in Karnataka, FIR (First Information Report) lodged in Chandigarh, insolvency proceedings against the plaintiff company and tax evasion etc. noted that the plaintiff has been able to make a prima facie case in its favour for grant of ad-interim injunction as the balance of convenience is in favour of the plaintiff and irreparable harm and injury would be caused to the plaintiff if an interim injunction is not granted.

The Court restrained defendants including their servants, agents, representatives, employees, and other constituents from making, publishing, and disseminating or publishing any false, defamatory, disparaging, and misleading statements or articles pertaining to the plaintiff.

The Court further directed the defendants to immediately take down all the defamatory articles made and published and disseminated on their website i.e., inventiva.co.in

[Oravel Stays Limited v. Nine Network Private Limited, 2022 SCC OnLine Del 3597, decided on 14-10-2022]


Advocates who appeared in this case :

Mr. Jayant K. Mehta, Senior Advocate with Mr. Raghav Sabharwal and Mr. Raghav Bhatia, Advocates for the Plaintiff;


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In an application filed by the plaintiff seeking permission to file rectification/cancellation petition against registrations of Defendant’s trademark ‘TRAVELXP’ in different classes, Jyoti Singh, J., adjourned the proceedings for a period of three months, to enable the plaintiffs to take appropriate steps, in accordance with law, to raise the plea of invalidity by preferring rectification proceedings, before the appropriate forum.

The present suit was instituted by the plaintiffs seeking permanent injunction against the defendant for inter alia infringing plaintiffs’ trademark ‘TRAVELEX’ as well as passing off. Plaintiffs 1 and 2 are companies incorporated under the laws of United Kingdom while Plaintiff 3 is incorporated under the Companies Act, 1956. Plaintiffs claim to have adopted the mark TRAVELEX in 1976 for providing services in relation to currency exchange business including supplying currency online at airports, shopping malls, for financial institutions etc. In India, plaintiffs have obtained registrations for the trademark TRAVELEX in Classes 16, 35 and 36.

An ex parte ad interim injunction was granted in favour of the Plaintiffs by the Court, observing that the rival marks bear visual and phonetic resemblance and the services offered by the Plaintiffs relating to foreign exchange go hand in hand with the services of the Defendant.

Counsel for defendant submitted that the pleadings in the plaint do not contain material particulars sufficient to frame an issue of invalidity as required by law under Order XIV CPC, even if the plaint is read. It further submitted that even the amended plaint does not contain the required particulars under Sections 47 and 57 of Trade Marks Act, 1999 rather, generic statement has been made that registrations have been obtained fraudulently by the Defendant, with no material particulars of the alleged fraud.

The Court noted that the present application is to be decided in accordance with the provisions of Section 124 of Trade Marks Act, 1999. At this stage, the Court is only required to render a prima facie view regarding tenability of the plea of invalidity of Defendant’s registered trademark.

The Court further noted that on a plain reading of Section 124(1)(b)(ii) of Trade Marks Act shows that two ingredients are required to be met for an Applicant to succeed viz:

(a) plea of invalidation; and

(b) prima facie tenability.

The Court observed that the plea of invalidity of registration of Defendant’s trademark is not set out in the plaint, as according to the Plaintiffs, this fact was disclosed in the written statement. Plaintiffs thereafter sought amendment of the plaint, which was allowed and therefore, for the purpose of the present application, it is the amended plaint which requires to be examined.

It was further observed that from a perusal of the amended plaint, it is evident that Plaintiffs have pleaded regarding deceptive similarity with an intent to obtain undue monetary benefits based on the substantial goodwill and reputation attached to Plaintiffs which brings the Court to the conclusion that the pleadings are sufficient to lay a foundation for the plea of invalidity as required under Section 124 of Trademarks Act.

Thus, the Court opined that looking at the plea of invalidity raised by the Plaintiffs on account of the alleged phonetic and visual similarity between the rival trademarks and the commonality of activity, which view is supported by the interim orders granted by this Court on 25-01-2016 and 09-05-2016, the plea of invalidity is prima facie tenable.

The Court remarked that no doubt, the injunction orders passed by this Court are only interim orders, but they continue to operate till date and reflect the prima facie view of the Court and that, at this stage, the Court is only examining if the plea of invalidity raised by the Plaintiffs is prima facie tenable and the final decision on the validity of registration of the impugned mark will be taken only in the rectification petition, when filed.

The Court concluded that it would be open to the Defendant to defend its registrations on all grounds available in law, including alleged dissimilarity of marks which carry suffixes, if any and the services offered by the respective parties.

The Court noted that the issues have not been framed in the suit, but deemed it appropriate to frame an issue necessary for disposal of the present application and thus, frames an issue “Whether the registrations of the Defendant’s mark TRAVELXP under application nos. 2015719 in class 16; 3415619 and 2827560 in class 35; 1791996 and 4193598 in Class 38; 1793715, 3415616 and 2827562 in Class 39 and 2015720 in Class 43 are invalid and liable to be cancelled/rectified? OPP”

The Court held that in view of the provisions of Section 124(1)(b)(ii) of Trade Marks Act, 1999, proceedings are adjourned for a period of three months, to enable the plaintiffs to take appropriate steps, in accordance with law, to raise the plea of invalidity by preferring rectification proceedings, before the appropriate forum.

[Travellers Exchange Corporation Limited v. Celebrities Management Private Limited, 2022 SCC OnLine Del 3528, decided on 20-10-2022]


Advocates who appeared in this case :

Mr. J. Sai Deepak, Ms. Sangeeta Goel, Mr. Mohit Goel, Mr. Sidhant Goel, Mr. Aditya Goel, Mr. Karmaya Dev Sharma and Mr. R. Abhishek, Advocates, for the Plaintiff;

Mr. Jayant Mehta, Senior Advocate with Mr. Abhishek Puri, Ms. Surbhi Gupta, Mr. Abhishek Tiwari and Mr. Amrit Singh, Advocates, for the Defendants.


*Arunima Bose, Editorial Assistant has reported this brief.

Case BriefsHigh Courts

   

Bombay High Court: In a suit filed by Pidilite Industries Limited (plaintiff) seeking ad-interim reliefs against defendants for selling adhesive products by the name “FIXO KWIK”, which is deceptively similar to the mark of the plaintiff, not only in the placement of the words used in the mark but also the designing of the packet in which the adhesive is sold, the same being a colourable imitation or a substantial reproduction of the original packet of the plaintiff, Manish Pitale, J., restrained defendants from manufacturing, marketing, selling, advertising, offering to sell or dealing in the impugned Products bearing the FIXO KWIK Mark and/or Label/Packaging, or any other marks/labels/ trade dresses/packaging identical with or similar to FEVI KWIK registered marks. Counsel for plaintiff submitted that the plaintiff is a world-renowned business entity in the field of adhesives and sealants construction and paint chemicals, automotive chemicals etc., and that the present plaint is concerned about the product “FEVI KWIK”, which is a cyanoacrylate adhesive / instant adhesive. It is stated that the mark “FEVI KWIK” was conceived and adopted in the year 1987 by the plaintiff and has been continuously in use since 1991.

The Court noted that a bare perusal of the two marks would show that the mark being allegedly used by the defendants is prima facie deceptively similar to the registered trademark of the plaintiff. There is sufficient material placed on record to show that prima facie the mark allegedly being used by the defendants would have the tendency of causing confusion in the mind of a purchaser.

The Court further noted that the overall impression created by the product allegedly brought into the market by the defendants has the effect of confusing the consumers and it can be said that prima facie the defendants seem to be committing the act of passing-off.

The Court remarked that the use of the word ‘KWIK’ and the sentence ‘ONE DROP INSTANT ADHESIVE’ along with the image of a globe create deception and it is found that there is a likelihood of consumer being confused when the defendants’ product is placed before him.

The Court thus held that the plaintiff would continue to suffer irreparable loss if the injunction is not granted and therefore, the balance of convenience is clearly in favour of the plaintiff.

[Pidilite Industries Limited v. Fixo Industries, Commercial IP Suit No. 6245 of 2022, decided on 10-10-2022]


Advocates who appeared in this case :

Mr. Hiren Kamod a/w. Mr. Nishad Nadkarni, Mr. Aasif Navodia and Ms. Khushboo Jhunjhunwala i/b. Khaitan & Co. for Applicant / Plaintiff

Mr. Fakhruddin Khan a/w. Mr. Salman and Ms. Saima for Defendants.


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

Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Super Cassettes Industries Private Limited, seeking permanent injunction restraining infringement, passing off, rendition of accounts, damages, etc., against the Defendant – Tata Motors Ltd., and having informed the Court regarding the parties reaching settlement, Prathiba Singh J., recorded the settlement term between the parties wherein the Defendant has acknowledged the rights of the Plaintiff in the ‘T-Series/T. Series’ marks, and the Plaintiff has acknowledged the Defendant’s rights in the mark ‘T’, ‘Tata Motors’ and the Tata logo.

It was submitted by Counsels for the parties that the parties have settled their disputes amicably and an application under Order XXIII Rule 3 CPC has been jointly filed by the parties.

The Court noted that the defendant has acknowledged the rights of the Plaintiff in the ‘T-Series/T.Series’ marks, and the plaintiff has acknowledged the Defendant’s rights in the mark ‘T’, ‘Tata Motors’ and the Tata logo. They have also agreed not to challenge each other’s respective trademarks registrations. In addition, the Defendant has undertaken not to use the mark ‘T-Series/T.Series’, in respect of automobile products, and has also agreed to remove the content bearing the impugned marks on the website, and other online social media platforms.

[Super Casettes Industries Private Limited v. Tata Motors Limited, 2022 SCC OnLine Del 3367, decided on 26-09-2022]


Advocates who appeared in this case :

Mr. Neel Mason, Mr. Ankit Rastogi, Ms. Chamanpreet Kaur, Mr. Siddhart Vardhman and Mr. Parva Khare, Advocates, for the Petitioners;

Mr. Sanjeev Sindhwani, Sr. Advocate with Ms. Nandini Gore, Mr. Yashwant Gaggar and Mr. Karanveer Singh Anand, Advocates, for the Respondents.


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

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.

Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by Indian Hotels Company Limited (‘plaintiff’) is a part of the well-known ‘TATA’ Group of Companies, along with its subsidiaries, is engaged in the business of hotels and hospitality services in India branded under the names/marks being ‘TAJ’, ‘SeleQtions’, ‘GINGER’, and ‘VIVANTA’, seeking permanent injunction restraining infringement of its registered trademark ‘VIVANTA’, used in respect of hospitality services including hotels and resorts, both in India and abroad, Prathiba Singh, J., granted permanently restrained GRAND VIVANTA Vacations Private Limited (‘defendant’) from using the mark/name VIVANTA/VIVAN or any other mark/name which is deceptively similar to that of the Plaintiff’s mark – VIVANTA with or without prefix or suffix in respect of any of its resorts, hotels, restaurants or any other combination for its hospitality services, resorts, hotels, restaurants or any other related services. The defendants agreed to adopt new marks as GRAND VIHAN Vacations Private Limited and/or GRAND VIHAN.

The grievance of the Defendant is a company known by the name ‘Grand Vivanta Vacations Private Limited’ located at New Delhi, running a resort under the name ‘The Lazy Haven Resort, Jim Corbett National Park, Kyari Bandobasti, Tehsil Ramnagar, Uttarakhand’. The Defendant promotes the mark ‘VIVANTA’ on various social media platforms, including Facebook, Instagram, YouTube and has a mobile application on Play Store by the same infringing name.

The registered mark is

The infringing mark is:

Counsel for plaintiff submitted that that the Defendant was incorporated in the year 1987 and was earlier using the name ‘NAP Polymers Specialties Private Limited’ claimed to be dealing in polymers. However, in February, 2021, the name of the Defendant was changed to ‘GRAND VIVANTA Vacations Private Limited’.

The Plaintiff acquired information about the Defendants’ infringing activities sometime in June, 2021 when some customers informed the Plaintiff, along with numerous consumer complaint online alleging that the Defendant and its representatives were duping the general public by collecting huge sums of money for holiday packages and also misusing the name ‘VIVANTA’, which was found, upon investigation, to be substantive.

The Court has already granted an ad-interim injunction order dated 18-08-2022 and appointed a Local Commissioner. According to the report submitted by LC, it was evident that the Defendant was prominently using the name GRAND VIVANTA as a name/mark on its main banner as also on its hoardings.

An interim application was filed under Order XXXIX Rule 4 of the Code of Civil Procedure by the defendant wherein it was submitted that it being a start-up that is approximately one year old, it is willing to make suitable changes to its name by altering the word VIVANTA in GRAND VIVANTA Vacations Private Limited.

The name first suggested was GRAND VIVAN by the defendant which was rejected by the plaintiffs and later mutually arrived at adoption of GRAND VIHAN.

Thus, the Court permanently injuncted the defendant from using the mark/name VIVANTA/VIVAN or any other mark/name which is deceptively similar to that of the Plaintiff’s mark – VIVANTA with or without prefix or suffix in respect of any of its resorts, hotels, restaurants or any other combination for its hospitality services, resorts, hotels, restaurants or any other related services.

The Court further restrained the defendant from using the domain name www.grandvivanta.com and directed to transfer it in in favour of the Plaintiff within one week.

The Court further permitted the defendant to use the name GRAND VIHAN, for its resort, online platform as well as on its mobile application.

[The Indian Hotels Company Limited v. Grand Vivanta Vacations Private Limited, 2022 SCC OnLine Del 3104]


Advocates who appeared in this case :

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

Mr. Abhishek Malhotra and Mr. Rommel Khan, Advocates, for the Defendant.


*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.

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.

competitive exam
Case BriefsHigh Courts

   

Delhi High Court: In a case filed by TATA Sons Private Limited (‘Appellants’) seeking an ad-interim injunction against the respondents from using its registered trademark “TATA” for business purposes, a Division Bench of Mukta Gupta and Manoj Kumar Ohri, JJ. granted ex-parte ad-interim injunction restraining the respondents, their partners or proprietors from manufacturing, selling, offering for sale, supplying, advertising, or unauthorizedly using the appellant’s well-known trademark TATA, or any other deceptively similar mark thereto as part of the name of their digital token/cryptocurrency TATA Coin/$TATA or as part of their corporate name/domain name and websites ‘www.tatabonus.com’/social media pages amounting to infringement/passing off.

Factual Background

The appellant was incorporated in the year 1917 having the trade name/trademark “TATA”, derived from the surname of its founder-Shri Jamsetji Nusserwanji Tata. Allegedly, the respondents are businesses registered in the United Kingdom and the United States, which are using their trademark for doing online trading in cryptocurrency through their website(s) ‘www.tatabonus.com’ and ‘www.hakunamatata.finance’. It is further alleged that the websites are accessible in India and are in fact accessed by visitors from Delhi on daily basis.

A suit was filed seeking injunction but the Single Judge did not doubt the appellant’s entitlement to file the plaint in Delhi, yet he doubted his extraterritorial jurisdiction to injunct the overseas parties by way of ad-interim order, as there was no evidence of the respondents’ targeting the customers in India to sell their digital and physical merchandise and the Indian traffic on the respondents’ website was found to be too scant to call it an interactive website, which is an essential factor recognized Indian Courts for attracting territorial jurisdiction in the cases of online trade.

Principles surrounding Territorial Jurisdiction in Online Trade via Internet websites

A question came up for consideration in the case of Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780, that,

For the purposes of a passing off action, or an infringement action where the plaintiff is not carrying on business within the jurisdiction of a court, and in the absence of a long-arm statute, in order to satisfy the forum court that it has jurisdiction to entertain the suit, the Plaintiff would have to show that the Defendant “purposefully availed” itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the plaintiff within the forum state.

In a passing off or infringement action, where the defendant is sought to be sued on the basis that its website is accessible in the forum state, what is the extent of the burden on the Plaintiff to prima facie establish that the forum court has jurisdiction to entertain the suit? Plaintiff would have to plead this and produce material to prima facie show that some commercial transaction using the website was entered into by Defendant with a user of its website within the forum state resulting in an injury or harm Plaintiff within the forum state.

In Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., 2018 SCC OnLine Del 8260, a Single Judge bench of this Court further held that what is relevant for determination in an action for infringement and/or passing off is where the injury has been caused to the plaintiff, as the place where deception has been caused to customers or is likely to be caused, by the offending product of the defendant shall certainly have jurisdiction.

Observations and Analysis

Placing reliance on Lifestyle Equities CV and another company v. Amazon UK Services Ltd, [2022] EWCA Civ 552, the Court noted that even if a website is not directed at customers in a particular country, the fact that they are not restricted by the website to have access to it is enough to characterize it as targeting. Targeting need not be a very aggressive act of marketing aiming at a particular set of customers. The mere looming presence of a website in geography and the ability of the customers therein to access the website is sufficient, in a given case.

Thus, a White Paper, issued by respondent 1 where, in the list of programs pursued by respondent 1, there is a fund called ‘India Development and Relief Fund’ along with other social media printouts, shows respondents’ looming presence in the virtual world over India, including in the territorial jurisdiction of this Court.

Therefore, the fact that the people behind the offending website are stated to be UK nationals of Pakistani origin does make the motives suspicious, given the popularity of the TATA brand among the people from the Indian subcontinent. It is not unreasonable to infer that the objective of respondent 1 could be to target the unsuspecting Indian origin public by doing trade in the name of “TATA”.

The Court opined that in India, the trademark TATA is embedded in the subconsciousness of the public and is only relatable to TATA group of companies. The way trademark “TATA” has been lifted and adopted as it is by the respondent, without even an attempt to disguise it with a prefix or a suffix to claim distinctiveness, appears to be unscrupulous and with an intention to deceive the public by selling inferior and dubious products in the name of TATAs.

Decision

The Court held that as far as the domain name www.hakunamatata.finance is concerned, Hakunamatata is a generic word, and the word “TATA” has fully coalesced in the word Hakuna Matata. It does not cause any deception or confusion. There is only partial phonetic overlap with the word “TATA” in Hakunamatata. Thus, the appellant cannot prevent the adoption by others of names that naturally have alphabets TATA embedded in them.

The Court held that the appellant has a good prima facie case to seek an injunction, as far as the website www.tatabonus.com, crypto products by the name of $TATA, or any other product of respondent 1 being sold on the website www.hakunamatata.finance under the name TATA is concerned.

The Court directed respondents 1 and 3 to immediately take down the website parked on the domain ‘www.tatabonus.com’ and to put the said domain on hold till the pendency of the application, with an exception, that use of domain name ‘www.hakunamatata.finance’ by respondent 1 is not prohibited, at this stage.

Further, it directed respondent 4 is to delist the TATA Coin/$TATA and/or any other crypto-assets bearing the mark “TATA” or another deceptively similar mark thereto, from the networks/platforms operated by respondent 4 including Binance Smart Chain and Binance community.

[TATA Sons Private Limited v. Hakunamatata TATA Fopunders, 2022 SCC OnLine Del 2968, decided on 19-09-2022]


Advocates who appeared in this case:

Mr. Pravin Anand, Mr. Achuthan Shreekumar and Mr. Rohil Bansal, Advocates, for the Appellants;

None, for the Respondents.


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

Case BriefsHigh Courts

   

Delhi High Court: In a suit filed by plaintiff (‘Carlsberg Breweries A/S’) seeking ad interim injunction against Tensberg Breweries Industries Pvt Ltd (‘defendants’) claiming, that they have adopted deceptively similar mark and is marketing its beer in deceptively similar bottle so as to cause confusion in the minds of the general consumers, Navin Chawla, J. granted ad interim injunction as prima facie, the shape of the bottle and the Can adopted by the defendants appears to be deceptively similar to that of the plaintiff; with the same color green for the bottle, and green/white for the Can as well as the placement of the marks, the appearance of the deceptively similar crown, also prima facie reflects the intention of the defendants to come as close to the plaintiff’s mark as possible.

It is the case of the plaintiff that the plaintiff is the registered proprietor of the mark ‘CARLSBERG’, which was first registered in India on 09-07-1949 and the first sale in India under the said brand was made by the plaintiff in the year 1904. However, defendant 1 has been incorporated on 22-07-2022 and is engaged in the business of manufacturing and selling alcoholic and non-alcoholic beverages.

Defendant 2 is an importer of the beer bearing the impugned Mark/label. Defendant 3, claiming itself to be the proprietor of the mark “TENSBERG”, has applied for seeking registration of the same in the word mark and also in the device mark. Defendant 4 is a company incorporated on 01-04-2022 and is engaged in the business of manufacturing and selling of beer with the impugned mark and label in India.

The plaintiff asserts that the defendant 5 is in the business of manufacturing, brewing and exporting of beer bearing the marks “TENSBERG” and under the impugned trade dress from Nepal to India, while the defendant 6 is the Indian subsidiary registered on 06-01-2021.

The conflicting marks are

The Court noted that prima facie, the mark of the plaintiff and the defendants appear to be deceptively similar. There is phonetic similarity between the same.

The Court further noted that there can also be no doubt of the plaintiff being the proprietor and prior adopter of the mark ‘CARLSBERG’ and with its registration, having a better right over the defendants, who on their own case, adopted the said mark in India only in 2018, and do not hold registration in the said mark.

The Court remarked that Beer bottles and cans are not bought with minute scrutiny but in a more casual manner. Applying the test of an unwary consumer with imperfect recollection, the two marks and their trade dress, prima facie appear to be deceptively similar and likely to deceive and confuse such Consumer.

The Court opined that it is not only the use of the mark alone but also get-up of the product, that is, bottle and the Can which prima facie indicates the intent of the defendants to ride on the reputation and goodwill of the plaintiff, thereby, causing confusion and deception to the mind of unwary consumers.

The Court thus held that the plaintiff has been able to make out a good prima facie case in its favour. The balance of convenience is also in favour of the plaintiff and against the defendants. The plaintiff is likely to suffer grave irreparable injury if an ad-interim injunction is not granted in favour of the plaintiff and against the defendants.

[Carlsberg Breweries A/S v. Tensberg Breweries Industries Pvt Ltd., 2022 SCC OnLine Del 2966, decided on 16-09-2022]


Advocates who appeared in this case:

Mr. Rishi Bansal, Mr.S.K. Bansal, Mr.Krishan Gambhir, Mr. Aditya Rajesh, Mr. Neeraj Bhardwaj, Advocates, for the Carlsberg;

Mr. Chander M. Lall, Sr. Adv. With Mr. Kameshwar Nath Mishra, Mr. Mimansak Bhardwaj, Mr. Sunny, Mr. Rangeen, Ms. Ananya Chug, Advocates, for the Tensberg.


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

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: In a suit filed by Nikhil Chawla (‘plaintiff’) for its brand COOK STUDIO in the nature of threat application seeking declaration of non-infringement of the registered trademark COKE STUDIO by Coca Cola Company (‘defendant’), Prathiba M Singh, J. recorded the settlement terms arrived at between the parties through mediation and decreed the suit.

The Plaintiff is the proprietor of the firm trading as “The Chawla Group” and is stated to be running a very popular online platform called ‘COOK STUDIO’ engaged in the activity of blogging, production of video films, training, etc., particularly relating to cooking.

The Plaintiff has received notices from the Defendant who is the owner of the registered trademark named ‘COKE STUDIO’ calling upon him to desist from using the mark COOK STUDIO for his culinary related blog.

The summons was issued in the suit to the Defendant and the parties were referred to mediation before the Delhi High Court Mediation and Conciliation Centre for an amicable resolution, wherein they arrived at settlement.

A joint memo dated 12-09-2022 recorded the terms agreed between the parties as under:

“1. Plaintiff shall adopt the mark “Cook Pro 6” instead of the mark “Cook Studio” for the channels and platforms where the latter mark has been under use and shall completely transition to the mark “Cook Pro 6” and abandon the use of “Cook Studio” by 30th November, 2022.

2. Defendant shall not object to, nor otherwise interfere in any manner with the Plaintiff’s use of the mark and iterations of “Cook Pro 6” and shall also not object to or interfere with any application made by the Plaintiff for the registration of the mark “Cook Pro 6” whether in India or elsewhere.

3. The Plaintiff shall withdraw all trademark registration applications relating to “Cook Studio” and consequently withdraw the captioned suit.

4. The Defendant agrees that these terms shall only be limited to those channels/pages operated by the Plaintiff under the mark “Cook Studio” and shall not prejudice/affect the right of the Plaintiff in respect of any other product, service and/or channel or past/prior acts.

5. These terms shall have prospective effect from the date ascribed herein below.”

The Court noted the settlement terms arrived at between the parties and were found to be lawful.

Placing reliance on Nutan Batra v. Buniyaad Associates, 2018 SCC OnLine Del 12916, the Court further directed the complete Court fee to be refunded to the Plaintiff.

[Nikhil Chawla v. The Coca Cola Company, 2022 SCC OnLine Del 2861, decided on 12-09-2022]


Advocates who appeared in this case :

Mr. Adarsh Ramanujan, Mr. Lzafeer Ahmad and Ms. Skanda Shekhar, Advocates, for the Plaintiff;

Mr. Naval Kartia and Mr. Akshay Bhardwaj, Advocates, for the Defendant.


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

Case BriefsHigh Courts

Delhi High Court: In a trademark infringement suit filed by a company namely, Impresario Entertainment and Hospitality Pvt Ltd. (‘plaintiff’) running a well-known restaurant, SOCIAL against the offending trademark SOCIAL 75 (‘defendant’), Jyoti Singh J. granted ex parte ad-interim injunction, as the impugned trademark is deceptively similar to the registered trademark of the Plaintiff.

It is the case of the Plaintiff that it is running various well-known restaurants and coffee shops including Smoke House Deli, Salt Water Cafe, Le Kebabiere, The Tasting Room, Prithvi Cafe, Flea Bazar and Social. Plaintiff commenced business in the year 2001 and since then various restaurants have opened under different names including ‘SOCIAL’. Plaintiff is recognized as a provider of high-quality services and is a well-known name in the hospitality industry.

The plaintiff contended that Defendant is the sole proprietor of the restaurant with the offending trademark ‘SOCIAL 75′ in Jamshedpur.

The Point of similarity claimed is as under

1.The trademark ‘SOCIAL’ is copied in its entirety by the Defendant;

2. The trademark ‘SOCIAL 75′ is being represented in color orange by the Defendant, which is identical to the color used by the Plaintiff for representing ‘SOCIAL’;

3. The manner of suffixing the trademark ‘SOCIAL’ with another phrase, in this case being ‘75′ is identical to the Plaintiff’s concept, the only difference being that the Plaintiff prefixes the trademark ‘SOCIAL’ usually with the name of the area in which the restaurant/bar is located;

4. The services provided by the Plaintiff and Defendant are identical and have the same target audience.

The plaintiffs further contended that Plaintiff is a prior adopter and user of the registered trademark ‘SOCIAL’ and its variants and use of the impugned mark by the Defendant amounts to infringement under Section 29 of the Trade Marks Act, 1999. It is clear that the adoption of a deceptively similar trademark by the Defendant is aimed at misrepresenting to the general public that the source of these goods is the Plaintiff.

The Court held that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction, as the impugned trademark is deceptively similar to the registered trademark of the Plaintiff and the balance of convenience also lies in favour of the Plaintiff and it is thus, likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

[Impresario Entertainment and Hospitality Pvt Ltd., v. Social 75, 2022 SCC OnLine Del 2830, decided on 31-08-2022]


Advocates who appeared in this case :

Ms. Shikha Sachdeva, Ms. Mugdha Palsula and Ms. Shreya Das, Advocates, for the Plaintiff.


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

Delhi High Court
Case BriefsHigh Courts

Delhi High Court: In a suit filed by Sunshine Tea House Pvt Ltd. (‘plaintiff’) for its brand CHAAYOS was seeking permanent injunction restraining infringement of trademark and unauthorized use of trade name etc. relating to the phonetic and ocular similarity between trademarks ‘CHAAYOS’ and ‘CHAIOPS’, Prathiba M Singh J. appointed Mr. Sidharth Chopra (Counsel present in Court) as the Mediator to attempt amicable resolution of disputes between the parties, on finding that there is a possibility of amicable resolution.

The Plaintiff’s brand ‘CHAAYOS’ was established and started operations in the year 2012 and it claims to be the leading chain of Chai Cafes in India operating in various States across the country offering customized Chai in several variants having 200 outlets across the country.

The Defendant adopted the mark ‘CHAIOPS’ for selling tea products through a cafe under the name and style of ‘CHAIOPS’. The case of the Plaintiff is that the Defendant adopted the mark ‘CHAIOPS’ for products and services identical to the Plaintiff’s services and products which is a violation of the Plaintiff’s registered trademark ‘CHAAYOS’.

The parties admitted before the Court that there is no similarity in the device and logo of the parties. The only issue between the parties is regarding the phonetic/ ocular similarity of ‘CHAAYOS’ & ‘CHAIOPS’ marks.

Thus, the Court, realizing a scope of amicable resolution of disputes appointed Counsel Mr. Sidharth Chopra as the mediator. The Court directed the parties to appear before the mediator either virtually or physically.

[Sunshine Teahouse Pvt Ltd. v. MTRM Global Pvt Ltd., 2022 SCC OnLine Del 2831, decided on 06-09-2022]


Advocates who appeared in this case :

Mr. Jayant Mehta, Mr. Ankit Miglani, Ms. Jyoti Nambiar and Ms. Kaveri Rawal, Advocates, for the Plaintiff;

Ms. Swathi Sukumar, Mr. Abhishek Jain, Ms. Sutapa Jana, Ms. Anjali Bisht, Ms. Himangi Kapoor and Mr. Ritik Raguwanshi, Advocates, for the Defendant.


*Arunima Bose, Editorial Assistant has reported this brief.

Delhi High Court
Case BriefsHigh Courts

   

Delhi High Court: In a case filed by Livspace Pte. Ltd. (‘plaintiff 1') and Home Interior Designs E-Commerce Private Limited (‘Plaintiff 2') seeking permanent injunction against the domain name on which a website is being hosted, called www.livspace-reviews.com (‘defendant') where extreme derogatory reviews were written against the plaintiffs which are disparaging and defamatory in nature, Prathiba Singh, J. directed Department of Telecommunications (‘DoT’) and Ministry of Electronics and Information Technology (‘MEITY') to issue blocking orders within 48 hours, and then ensure that the website www.livspace-reviews.com, shall remain blocked till the next date of hearing.

The plaintiffs claim rights in the mark ‘LIVSPACE' and logo since 2013. Plaintiff 2 is the subsidiary of plaintiff 1 and plaintiff 1 conducts all its business in India through the plaintiff 1. The plaintiffs are also users of the domain name www.livspace.com. The said mark ‘LIVSPACE' is used in respect of interior designing services, and the plaintiffs claim to offer one of the world's largest interior design and home renovation platforms that connects interior designers, homeowners and vendor.

The Court noted that the present suit highlights the perils of internet-based businesses. The impugned domain name – www.livspace-reviews.com, is merely one such domain name, which has been registered by an unknown person of whom no details are known. It is not clear as to who has booked the domain name, who has hosted the website, from where the reviews have been collected, and where the content has been developed. None of the details are decipherable from the said website.

The Court further noted that the content is extremely critical of the plaintiffs that could have a serious and deleterious impact on the plaintiffs' business as these are online reviews, for a business that largely operates online. While there can be no doubt that general criticism and review would be permissible in terms of any business, the fact that the entire website, its operations, the persons reviewing, etc., have been totally masked, without any details provided whatsoever, clearly gives the Court the feeling that the same is ingenuine and clandestine.

Thus, the Court observed that while using the trademark ‘LIVSPACE' of the plaintiffs and the trade name, in a surreptitious manner, defendant 1 is intending to cause irreparable harm to the Plaintiffs’ business.

The Court thus directed MEITY and DoT to issue blocking orders against the domain name www.livspace-reviews.com which has been duly complied with by DoT vide notice dated 01-09-2022.

[Livspace Pte. Ltd. v. Livspace Reviews.com, 2022 SCC OnLine Del 2729, decided on 30-08-2022]


Advocates who appeared in this case :

For plaintiff: Mr. Pranjit Bhattacharya, Advocate

For defendant: Ms. Nidhi Raman, CGSC with Mr. Zubin Singh and Mr. Vinod Tiwari, GP for D-4 & 5.


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