CASE LAWS-TRADE MARK

KAIRA DISTRICT COOPERATIVE MILK

PRODUCERS UNION LTD AND ANR. V/S.
MAA TARA TRADING CO. AND ORS
In this case, the Calcutta High Court passed an interim order
against the Defendants, restraining them from using the
trademark ‘Amul’ in connection with their products. The
case was instituted by Kaira District Cooperative Milk
Producers Union Ltd., who are the proprietors of the
trademark ‘Amul’. It was contended in the plaint, that the
Defendants incorporated the ‘Amul’ trademark with a
deceptively similar font in the labels of candles marketed by
them, which was alleged to be an act of trademark
infringement.
The Plaintiffs pointed out that the ‘Amul’ trademark was
recognised as a well-known mark by the Trademark Registry,
and as the Defendant’s products were being sold at cake
shops and confectionaries, there exists a high likelihood that
consumers would associate such infringing products with the
Plaintiff. The Calcutta High Court passed an order of
temporary injunction restraining the Defendants from using
the ‘Amul’ mark until the disposal of the suit.
Citation: Kaira District Cooperative Milk
Producers Union Ltd and Anr. V/S. Maa Tara
Trading Co. and Ors. [G.A./1/2020 in
CS./107/2020], Decided by the Calcutta High
Court on 22nd March, 2021
SONY CORPORATION VS. K.
SELVAMURTHY
In this case, Sony Corporation filed a trademark
infringement suit claiming dilution of its well-known SONY
trademark against a sole proprietor running a tours and
travels business under the name, Sony Tours and Travels.
After analyzing the facts before it, the District Court came
to the conclusion that the Defendant did not take unfair
advantage of, or cause detriment to the distinctive
character or repute of the Plaintiff’s SONY mark.
The Court came to this conclusion as Sony Corporation’s
business is limited to electronics and media, which could
be differentiated from the tours and travels business of
the Defendant. The Court also noted that the use of the
word, Sony by the Defendant did not cause any confusion
among the consumers. It also took note of the inordinate
delay of the Plaintiff in approaching the Court, and
granted Defendants Rs. 25, 000/- as costs.
Citation: Sony Corporation Vs. K. Selvamurthy,
Decided by Bangalore District Court on 18th June,
2021.
SUN PHARMACEUTICAL INDUSTRIES
LIMITED VS CIPLA LIMITED
In this case, the Respondent/Plaintiff filed a suit for a
permanent injunction before the Madras High Court against
the Applicant/Defendant for infringement of its copyright and
trademark. The Court herein, granted an interim injunction in
favour of the Respondent/Plaintiff. Henceforth, the
Applicant/Defendant filed three applications with a plea to
vacate the interim relief granted on grounds of urgency. The
plea was based on the fact that the drugs were of a huge
amount, carried an expiry date of 1 year, and were in demand
because of the ongoing pandemic as they helped in relieving
the Covid-19 symptoms.
The Court held that the Respondent/Plaintiff had made out
a prima facie case for continuance of the interim order as
the balance of convenience continued to be in their
favour. While holding so, the Court pointed out that they
cannot allow a party to violate another person’s IPR,
notwithstanding the fact that the country was facing an
unprecedented medical emergency. The Court upheld the
interim order and held that it shall continue to remain in
force subject to the final decision of the suit.
Citation: Sun Pharmaceutical Industries Limited
vs. Cipla Limited … Decided by Madras High Court
in May, 2021
V GUARD INDUSTRIES LTD VS SUKAN
RAJ JAIN & ANR.
In this case relating to allegations of “V Guard” trademark
infringement, the Defendants argued against the
territorial jurisdiction of the Delhi High Court as Plaintiff
and Defendants did not have their principal businesses in
Delhi. The alleged infringing products were being offered
for sale, advertised, and sold through online portals.
After reviewing the facts, the Court came to the conclusion
that it had the territorial jurisdiction because the product
bearing the mark was advertised and sold in Delhi through
online means and held that, if some part of cause of action has
arisen at a place where the Plaintiff has its branch/subordinate
office, Courts at that place will have jurisdiction to entertain a
suit against infringement and passing off. In other words, the
occurrence of cause of action or any part thereof, at a place, is
held to be a determining factor, both under Section 20 CPC,
and Section 134 of the Trade Marks Act, to attract jurisdiction
of the court at such place. ”
Citation: V Guard Industries Ltd vs Sukan Raj Jain
& Anr., Decided by Delhi High Court on 5 July,
2021.
ITC LIMITED VS MAURYA HOTEL
(MADRA) PVT LTD
In this case, the Madras High Court allowed the Plaintiff to
add a relief for trademark infringement to a passing off
suit based on subsequent registration of the trademark by
the Plaintiff. The Court in the case pointed out that adding
a relief is permitted, and helps in avoiding multiplicity of
suits.
It also stated that the outcome might be different if the
application was for conversion of the plaint from the relief
of passing off to infringement.
Citation : ITC Limited vs Maurya Hotel (Madra) Pvt
Ltd, Decided by Madras High Court on 22nd July,
2021
RELIANCE INDUSTRIES LIMITED AND
ANR. VS ASHOK KUMAR
In this case, Reliance Industries Limited, the Plaintiff,
found a hardware fittings and bathroom accessories
retailer using their well-known mark ‘JIO’ and hence filed a
trademark & copyright infringement suit before the
Bombay High Court. The Defendant on 11th June, 2021
had filed two applications for registration of the mark JIO
and pirated artwork which were advertised, claiming use
since 16th December, 2016.
The court noted that the Defendant not only copied
Plaintiffs’ mark, logo and artwork but also added an image
of a leaping jaguar which violated Jaguar Land Rover’s
intellectual property as well. The Plaintiffs filed an interim
application praying for injunction against Defendant’s use
of its copyright and trademark until the final disposal of
the suit. The Court was of the opinion that an
overwhelming prima facie case and balance of convenience
lied in Plaintiffs’ favour, and irretrievable prejudice would
be caused if the reliefs sought were denied.
Hence, the court granted a temporary injunction and gave
the Defendant the liberty to apply for a variation,
modification or recall of the order after 7 days’ notice to
the Plaintiffs’ Advocates. Finally, the court listed the
matter hearing on further ad-interim relief on 30th
September, 2021.
Citation: Reliance Industries Limited And Anr. Vs
Ashok Kumar, Decided by Bombay High Court on
23rd August, 2021
SONY PICTURES NETWORK INDIA PVT.
LTD. V/S THE STATE OF MAHARASHTRA
& ANR.
In this case, an FIR was filed by Karad Urban Co-operative
Bank (KUCB) for defamation by the web series ‘Scam 1992:
The Harshad Mehta story,’ which aired on SonyLIV App. The
FIR accused Sony Pictures Network India Pvt. Ltd. and
others of offences punishable under Section 500 of IPC and
Sections 102 and 107 of the Trade Marks Act, and Sections
66C and 43(b) of the Information Technology Act. In its FIR,
the bank alleged that in the third episode of the web series,
a logo displayed in the background resembled its trademark,
causing severe damage to its financial, commercial and
social reputation.
Aggrieved by the FIR the accused filed two criminal writ
petitions seeking a stay on investigations. The Bombay
High Court heard both the matters jointly wherein the
petitioners sought the stay on three grounds. Firstly, as
per Section 115(4) of the Trade Marks Act, 1999,
investigation couldn’t be done by an officer below the
rank of Deputy Superintendent of Police, but the said FIR
was being investigated by a police inspector.
Secondly, alleged offence under Section 500 of IPC was
non-cognizable could not be investigated by police on the
basis of an FIR. Lastly, that the web series did not come
within scope of Trade Marks Act, 1999 based on Prateek
Chandragupt Goyal Vs. The State of Maharashtra & Anr,
wherein same court held that mere use of trademark in
an article does not amount to false application. Convinced
by all the three grounds the Court stayed the
investigations until the next date of hearing i.e., 17th
September, 2019.
Citation: Sony Pictures Network India Pvt. Ltd. v/s
The State of Maharashtra & Anr. Decided by
Bombay High Court on 23rd August, 2021.
AGATHA CHRISTIE LIMITED VS
REGISTRAR OF TRADE MARKS.
In this case, Agatha Christie Limited filed a trademark application
for the mark, “And Then There Were None.” The Registrar rejected
the application, and the Agatha Christie Limited appealed. The
Delhi High Court came to the conclusion that there was no ground
based on which the mark could have been rejected under the
Trademarks Act, 1999, as the mark was not descriptive and
because no similar marks were existing on the Register. It also
pointed out that the mark was distinctive, and asked the Registrar
to register the mark.
Citation: Agatha Christie Limited vs Registrar Of
Trade Marks, Decided by Delhi High Court on 8
December, 2021.
N. RANGA RAO & SONS PRIVATE LTD. V.
SREE ANNAPOORNA AGRO FOODS
The Plaintiff, engaged in the business since 1948, was a
leading manufacturer and supplier of incense sticks and
other allied products. It held several trademarks, of which
the mark ‘CYCLE’ was in dispute in this case. The
Defendant herein adopted the mark ‘CYCLE’ concerning
edible oil. Plaintiff claimed that the mark was immensely
popular and owing to its wide turnover and extensive
sales and promotional activities, the trademark CYCLE was
a well-known mark.
The Plaintiff filed the suit under Sections 27, 28, 29, 134
and 135 of Trade Marks Act, 1999 and claimed that
Defendant intended to take undue advantage of its
reputation and goodwill. It was further claimed that such
use caused unwarranted confusion among the public and
amounted to clear infringement of Plaintiff’s registered
trademark.
The Court stated that the burden was on the Plaintiff to
prove (i) its reputation in India; (ii) that the Defendant
was using the mark without due cause; (iii) that by using
the mark without cause the Defendant took unfair
advantage, or it was detrimental to the distinctive
character or reputation of the Plaintiff’s registered
trademark.
The Court found that the Plaintiff proved only reputation
regarding goods related to incense sticks and failed to
prove that the Defendant was using the mark without due
cause or taking unfair advantage. Further, no evidence
was led by Plaintiff to show that the use of the mark by
the Defendant was detrimental to or caused dilution to
the Plaintiff’s reputation.
The Court noted that though the mark CYCLE was a
common household item and a generic word the
distinctiveness acquired by the Plaintiff was restricted to
the goods for which it had registration, and it could not
obtain a monopoly over the word or claim exclusive right
across other classes of goods. In view of the findings the
Court dismissed the suit.
Citation: N. Ranga Rao & Sons Private Ltd vs Sree
Annapoorna Agro Foods, Decided by Madras High
Court on 18 November, 2016,
GUCCIO GUCCI. VS INTIYAZ SHEIKH
In this case, the Plaintiff, Guccio Gucci S.P.A. filed a suit
for permanent injunction against Defendant, Intiyaz
Sheikh so as to restrain him and persons claiming under
him from infringing its trademark, copyright, passing off,
unfair trade competition, rendition of accounts, delivery
up, etc. The Plaintiff had been advertising its products
bearing its IP, registered in many countries, through
various printed media including newspapers, magazines,
internet and trade journals, leaflets and other promotional
literature.
Plaintiff in its course of market survey came to know that
the Defendant was illegally manufacturing socks using
Plaintiff’s registered “green and red stripes” logo and mark
“Gucci” in its entirety.
The Court had passed an ex-parte ad-interim injunction. At
the later stages of the suit the Court noted that the
Defendant deliberately chose not to participate in the
proceedings despite the pendency. The Court reasoned that
a civil case proceeded on the doctrine of preponderance of
probabilities and not on proof beyond reasonable doubt.
Although mere non−appearance of Defendant could not
be inferred against him, but in view of overall facts,
coupled with the evidence on record along with the report
of local commissioner, the Plaintiff was successful in
establishing the case in its favour. The Court decreed a
permanent injunction against the Defendant and directed
him to handover all the infringing goods to the Plaintiff as
well as pay ₹2,00,000/- and ₹1,66,000/- as costs and
damages respectively.
Citation: Guccio Gucci… vs Intiyaz Sheikh, decided
by District Judge (Commercial Court), Tis Hazari
Court, Delhi on 27th August.
 JUMEIRAH BEACH RESORT LLC VS
DESIGNARCH CONSULTANTS PVT LTD.
In this case, Jumeirah, the hotel and trademark owner of
“Burj Al Arab,” filed a case against a real
estate/construction company, which was using the marks
Burj Noida, Burj Bangalore, Burj Mumbai and so on.
Jumeirah asked for an interim injunction during the
pendency of the suit. The Defendant also had
registrations over its marks, and argued that Jumeirah
does not hold any rights over the word ‘Burj,’ which
means tower.
After reviewing the facts and arguments, the Delhi High
Court allowed the Defendant to use Burj Noida for its
ongoing project, but restrained the Defendant from using
Burj Bangalore, Burj Mumbai and so on. While arriving at
its conclusion, the Court stated that Burj is the essential
part of Jumeirah trademark, and that well knownness of
the mark has to be established on trial.
Citation: Jumeirah Beach Resort Llc vs Designarch
Consultants Pvt Ltd., Decided by Delhi High Court
on 9 November, 2021.
 BACARDI AND COMPANY LIMITED VS
BAHETY OVERSEAS PRIVATE LIMITED &
OTHERS
Bacardi filed a trademark infringement and passing off case
against Bahety with respect to its products sold under the
registered trademark, BREEZER, and its trade dress. The suit
was filed against Bahety’s use of the marks, Freeze and
FreezeMix’ for non-alcoholic drinks, which were being sold in
bottles having design similarities. After looking at the usage of
the marks and bottle designs, the Court came to the conclusion
that Bahety was using the trademark, FreezeMix, by writing it in
a manner similar to Bacardi’s Breezer. According to the Court,
the emphasis was on the word ‘Freeze,’ which was being used in
a prominent manner along with bottles bearing similar designs.
It stated that the bottle of Bahety included a similar
champagne base, ridges and bottle top. Though Bacardi
was selling alcoholic drinks and Bahety, non-alcoholic
drinks, the Court came to the conclusion that there was
infringement as there was consumer association between
the products. The Court went on to grant an interim
injunction in favour of Bacardi restraining Bahety from
using the trademark FreezeMix and related trade dress.
Case citation: Bacardi And Company Limited vs
Bahety Overseas Private Limited & Others,
Decided by Delhi High Court on 12 November,
2021.