Tag: #Trademarks

– Report by Parvati Arun

It was held by the High Court of Delhi in the case of  CAMPUS ACTIVEWEAR LIMITED versus  RAM SHANKAR GARG & ORS. that the plaintiff has failed to prove the criteria for reaching the status of passing off products. The case presented here was the plaintiff’s claim of violation of deceptive business practices through violation of intellectual property rights.

FACTS:

➢ The plaintiff, Campus Active Limited, practices the business of manufacturing footwear of a wide range and has registered proprietorship over the title of “CAMPUS” in various formats ( also referred to as “ registered marks”, which are later made to sell with the same marks. 

➢ The issue here arises due to the use of formative marks by the defendant “impugned marks” ) Ram Krishna Garg’s establishment, M/s Baba Footwear, which is similar to that of the marks used by the plaintiff which are also used for manufacture and sale of footwear.

➢ The plaintiff’s predecessor-in-title adopted the establishment in 1990 and chose to add several variations of a cursive logo( red and grey tones) as a registered mark for Campus Activewear Limited in 1997. The rights over these marks have been allotted to the plaintiff in question and some formalities were launched to change the name in the records of the Trademark Registry. The plaintiff was also said to own a proprietorship over registered logos of blue and greyish tones.

➢ The proprietor, Ram Chandra Garg who has been treated as Defendant no 1 in this matter owns and has sole proprietorship over M/s Baba Footwear, his establishment which has been treated as  Defendant no 2, and also has ownership over the logo “CAMPS” which has a cursive design above the letters which is used on footwear manufactured and produced by the establishment. 

➢ This design was adopted in 1980 and further, in 1996, they modified the logo in a stylized manner which was formed using the first name of the proprietor in Devnagri script “र” by placing it above the word “CAMPS”.

➢ Defendant no 3 has been prosecuted as a dealer of the impugned goods.

PLAINTIFF’S CONTENTIONS:

➢ The Senior Counsel for Plaintiff, Ms. Kirti Uppal claimed that the registered marks of the plaintiff have been in use since 1984 which has also led to the establishment acquiring substantial goodwill.  Moreover, the plan also has obtained protection in foreign countries which lead to the recognition of their registered mark as a well-known trademark.

➢ The Plaintiff obtained their registration for the trademark “CAMPS” on 12^th November 1990 while defendant no 1 and 2 got their registration for the impugned mark only in 2001 thus leading to a huge time difference between both the establishments adopting the registered mark and the impugned mark. The plaintiff also leveled claims stating that their unique logo was imitated by the defendant leading to business losses.

➢ There is also the issue of similarity in terms of pronunciation of “CAMPUS” and “CAMPS” adopted by the plaintiff and defendant respectively with an inverted red double tick on top of the letter ‘M’ hurting the prospects of the plaintiff in conducting business as well as the chances of riding on their previous goodwill as well.

➢ The actions of the plaintiff have led to loss for the plaintiff. The plaintiff’s side presented evidence from the defendants’ website through screenshots showing that they have imitated the registered trademark as well as engaging in the selling of counterfeit goods.

DEFENDANTS’ CONTENTIONS:

➢ Defendants no 1 and 2, were represented by Mr. Avneesh Garg who contended that the defendants were using the trademark “CAMPUS” since 01^st October 1980 despite being registered on 22^nd October 2001. He also further claimed that the plaintiff started using their mark “ CAMPUS” recently and it was only after the registration of their particular mark was done by the defendant.

➢ To counter the claims of similarities between the two marks, the defendants’ side argued that their mark had superior rights because of prior use.

➢ The allegation of infringement which was raised by the plaintiff would be countered by Section 34 of the Trademarks Act, 1999 which states about protection granted due to prior use of a mark, therefore, making the plaintiff’s market share irrelevant. The defendant’s side also presented proof regarding the plaintiff using the mark on a proposed to-be-used basis and also that of a similarly termed mark “ CAMPS” as well further substantiating their arguments of the plaintiff riding on the defendants’ goodwill.

COURT’S DECISION:

The Court has established that the plaintiff has not suffered any damage leading to irreparable harm/injury, therefore, displaying the lack of a prima facie case thus proving that the adoption of the impugned mark was done in good faith and failure on the part of the plaintiff to prove the test of passing off.

READ FULL JUDGMENT: https://bit.ly/3ZQU66x

-Report by Harshit Yadav

The present case of DR. REDDYS LABORATORIES LIMITED versus RIKON PHARMACEUTICALS PVT. LTD. is a legal settlement agreement between two parties regarding a trademark dispute that was settled with the intervention of the Delhi High Court Mediation and Conciliation Centre. The settlement agreement outlines the terms and conditions that both parties have agreed to abide by, and the judgment confirms that the suit is decreed in terms of the settlement agreement, which shall be binding on both parties. The plaintiff is entitled to a refund of court fees, if any, deposited by them.

FACTS:

The parties involved in this case were disputing over the ownership and use of a trademark named “NISE” and “RIKONISE”. The plaintiff was the owner of the trademark “NISE”, which they claimed was being infringed upon by the defendant’s use of the trademark “RIKONISE”. The defendant was manufacturing and using the mark ‘RIKONISE-P’ or ‘NISE-P’ in medicinal and pharmaceutical preparations of suspension syrups for domestic sale in India and for export.

ISSUES RAISED:

Whether the defendant’s use of the mark “RIKONISE-P” infringed upon the plaintiff’s exclusive proprietary rights in the trademark “NISE”.
Whether the defendant’s use of the mark “RIKONISE-P” constituted passing off of their goods as that of the plaintiff’s.
Whether the plaintiff was entitled to damages, the account of profits or any other relief for the alleged infringement and passing off.
Whether the parties could reach a settlement agreement that would resolve the dispute between them.

PLAINTIFF’S CONTENTIONS:

The plaintiff claimed that they had exclusive proprietary rights in the trademark “NISE” and that the defendant’s use of the mark “RIKONISE-P” in medicinal and pharmaceutical preparations of suspension syrups for domestic sale in India and for export was an infringement of their trademark rights. The plaintiff further contended that the defendant’s use of the mark “RIKONISE-P” was likely to cause confusion among consumers and constitute passing off of their goods as that of the plaintiff.

DEFENDANT’S CONTENTIONS:

The defendant, on the other hand, denied that their use of the mark “RIKONISE-P” amounted to infringement of the plaintiff’s trademark rights or passing off. The defendant claimed that the mark “RIKONISE-P” was distinctive and not deceptively similar to the plaintiff’s mark “NISE”. The defendant also argued that they had been using the mark “RIKONISE-P” for a long period of time without any objection from the plaintiff and that their use of the mark was honest and in good faith.
The parties also contested whether the plaintiff was entitled to any damages, the account of profits or any other relief for the alleged infringement and passing off.
Finally, the parties attempted to resolve their dispute through mediation, with the Delhi High Court Mediation and Conciliation Centre intervening to facilitate the settlement agreement. The contention was whether the settlement agreement was acceptable to both parties and could resolve the dispute between them.

JUDGMENT:

The dispute was resolved with the intervention of the Delhi High Court Mediation and Conciliation Centre, and a settlement agreement was reached between the parties. The terms of the settlement agreement were as follows:

1. The defendant acknowledged the plaintiff’s exclusive proprietary rights in the trademark “NISE” and agreed not to challenge the plaintiff’s statutory and proprietary rights directly or indirectly in India or globally.
2. The defendant confirmed that they had stopped manufacturing and using the mark ‘RIKONISE-P’ or ‘NISE-P’, directly or indirectly in medicinal and pharmaceutical preparations of suspension syrups for domestic sale in India or for export, as per the directions passed by the Hon’ble High Court of Delhi vide order dated 22/07/2022 in CS (COMM) No. 495 of 2022.
3. The defendant confirmed that they had manufactured tablets and capsules under the mark ‘RIKONISE-P TABLETS’ for domestic sale in India and that they had agreed to stop the manufacture and use of tablets under the mark ‘RIKONISE-P TABLETS’.
4. The defendant agreed not to manufacture any fresh batch of products bearing the mark ‘RIKONISE-P’ and ‘RIKONISE-P TABLETS’ and declared that any further production would make them liable for cost and damages.
5. The defendant confirmed that they did not have in stock any further products, packaging, or printed material bearing the mark ‘RIKONISE-P TABLETS’ and ‘RIKONISE-P’ in India, and any unused printed material would be destroyed by the defendant at their own cost.
6. The defendant agreed not to use in future any mark containing the mark “NISE” or “NICE”.
   The defendant undertook to apply to cancel their registration for the mark “RIKONISE” in class 5 within 30 days of recording of these settlement terms.
7. The defendant undertook not to adopt any mark in future that is identical or deceptively similar to the plaintiff’s mark “NISE” or carry out any such activities as may be likely to cause confusion or deception amounting to, passing off their goods under captioned Trademark as and for that of the plaintiff.
   

The settlement agreement was binding on both parties, and the Delhi High Court decreed the suit in terms of the mediation settlement agreement. The plaintiff was entitled to a refund of court fees, if any, deposited by them. The settlement agreement resolved the trademark dispute between the parties amicably and avoid prolonged litigation.

READ FULL JUDGMENT: https://bit.ly/3l05MFr

Introduction

Sir John Salmond has defined ‘Right’ as an interest recognized and protected by a rule of justice. It is an interest in respect of which there is a duty and the disregard of which is ‘Wrong’.¹

He further has explained that a ‘Legal right’ is an interest recognized and protected by rule of law and violation of which would be a ‘Legal Wrong’.

Now coming to Intellectual property rights; these are those ‘Legally Protected Exclusive Rights’ awarded to the creators for their intellectual creations. When these rights are violated then cases are filed to get legal remedy. In this article, have tried to gather 10 landmark judgments where intellectual property rights were infringed.

Types of Intellectual Property

Before diving any deeper we first need to know what does intellectual property means and what its types are.
The World Intellectual Property Organization (U.N.) defines ‘Intellectual Property as the Creation of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce.²

The above definition gives an overall idea that intellectual properties are more than one and have different rights associated with them. Generally, there are 7 kinds of Intellectual property rights. They are patents, Copyright, Trademarks, Industrial Designs, Geographical Indications, Plant Varieties, and Semiconductor Integrated Circuits. For example, patents are issued for inventions while copyrights are given for literary and artistic works.

Landmark Cases on Intellectual Property Rights

Below is a list of landmark judgments on Intellectual property rights passed by the courts in India.

1. Bajaj Auto Ltd. v.TVS Motors Comp. Ltd. (2010) Madras HC³

This case relates to a controversy that had arisen over the unauthorized use of patented DTS-i technology. In this case, the plaintiff Bajaj Auto prayed for issuing a permanent injunction for stopping the defendant’s TVS Motors from using its patented technology in any form and had also sought damages from them. The issue here was related to using of twin spark plug technology inside the internal combustion engine by the defendant.

In this case doctrine of pith and marrow also known as the doctrine of equivalents was applied. The doctrine applies to situations where despite there is no apparent literal infringement been committed still, an infringement occurs due to the product or process infringing the patent has a structure or performs a function that is very similar and analogous to an element already been claimed in the patented invention and thereby performs same things in the same way as the patented element and achieves the same results.

A purposive construction was given to understand if the ‘novel feature’ constitutes ‘pith and marrow’ or not i.e. if the new feature constitutes claimed by the plaintiff in their patent is an essential feature of the invention or not.

This case is also important because in this case the apex court has made several observations and made certain directions regarding the speedy disposal of cases related to intellectual property. The Supreme Court has directed to hear intellectual property cases on a day-to-day basis and to decide the cases within 4 months from the date on which they were filed.

2. Novartis v. Union of India (2013) SC⁴

In this case, Novartis Pharmaceutical Company has applied for patenting a drug ‘Gleevec’ which was rejected by the Indian patents office. Novartis challenged all the rejections in the apex court.

It was held by the Supreme court that the substance that was sought to be patented by Novartis was a modification of an already known drug that was in the public domain since 1993 thus it lacks novelty requirement under patent law. As well Novartis has also not shown any evidence of any therapeutic efficacy of its modified medicine over the already existing drug which is a mandatory condition under section 3 (d) of Patents Act, 1970.

The court thus held that there was no invention done and a mere discovery of an already existing drug does not amount to invention. The application was accordingly dismissed by the court.

3. F. Hoffman-La Roche Ltd. v. Cipla Ltd. (2012) Delhi HC⁵

This case has arisen over a dispute where Cipla has filed a patent application for a generic drug ‘Erlopic’ which was manufactured using a polymorphic compound of Erlotinib Hydrochloride. While patent for Erlotinib Hydrochloride was already been given to another company Roche. Therefore, Roche has filed an infringement application against Cipla. But Cipla claimed that it had not used Erlotinib Hydrochloride in its medicine ‘Erlopic’ but had only used a polymorphic compound of Erlotinib Hydrochloride.

It was finally held that Cipla has infringed the patent of Erlotinib Hydrochloride granted to Roche as any preparation of a polymorphic compound of Erlonitibactually first does involve the manufacturing of Erlotinib Hydrochloride. The patent application of Erlotinib Hydrochloride also has stated that its compound form can exist in different polymorphic forms and any such forms will be covered by its patent.

4. Bayer Corporation vs Union of India (2014) Bombay HC⁶

Bayer Corporation patented a cancer medicine ‘Nexavar’. Indian patent office exercised its rights and granted a compulsory license of Nexavar to Natco Pharma. Ltd. for producing a generic version of it. The patent office has also directed Natco to pay royalties to Bayer, to donate 6000 free medicine to the public, to manufacture the medicine locally, and to sell the medicine only in India and not to assign manufacturing of it to others.

Meanwhile, Bayer was manufacturing the same medicine for a comparatively higher price than what Natco offered to the public. Aggrieved by the patents controller’s decision Bayer moved to IPAB (Intellectual property appellate board) and filed an application which got rejected. Bayer now filed an appeal before the board which was also rejected.

Bayer Corp. then filed an appeal before The Bombay High Court which held that compulsory licensing of life-saving drugs falls within the right of the Indian patents office as well as the rule of making available of patented drugs at an affordable price for the general public should be maintained as per section 82(1)(b) under The Patents Act, 1970. The judgment passed by The Bombay High Court was later upheld by The Supreme Court.

5. Yahoo! Inc. v. Akash Arora &Anr(1999) Delhi HC⁷

This case relates to unauthorized registration and use of internet domain names that are similar and identical to registered trademarks and service marks also known as ‘Cyber Squatting’.

In this case, the defendant was using a domain name ‘Yahoo India’ which was extremely identical to that of the plaintiff’s ‘Yahoo!’. It was held that the defendant’s ‘Yahoo India’ has the potential to confuse and deceive internet users into believing that both are the same and belong to the same ‘Yahoo!’. The court explained that a disclaimer in this regard by the defendant to make people aware is not sufficient and it is immaterial if the term ‘Yahoo’ has a dictionary meaning as over the years Yahoo! has already acquired ‘distinctiveness’ and ‘uniqueness’ as required under the trademark law. The High Court has also held that domain names on the internet are used by business groups for the same purpose as any trademark or service mark.

6. Clinique Laboratories LLC &Anr v. Gufic Ltd. &Anr. (2009) Delhi HC⁸

This case relates to the infringement of trademark and passing off i.e. selling goods by falsely misrepresenting the goods to belong to some other.

In this case, Plaintiff had a registered trademark ‘Clinique’ and it came to know about a similar trademark ‘Derma Cliniq’ registered by the defendant. The plaintiff then filed a petition for cancellation/rectification before the Registrar of Trademarks. The plaintiff later filed an application before the court for an injunction regarding infringement of its trademark by the defendant and for restraining the defendant from passing off its goods as that of the plaintiff’s.

However, under section 124 (1) of The Trademarks Act, 1994 any suit for infringement should be stayed by the court till the cancellation/rectification petition is finally decided and disposed of by the Registrar of Trademarks. The plaintiff thus filed for a stay of the present suit and had sought permission to apply for removal of the trademark from the trademarks register which was registered by the defendant.

But, at the same time section 124 (5) of The Trademarks Act, 1994 makes a provision where the court has the authority to pass an interlocutory order. Thus, the court exercising this power held that it has the authority to pass interlocutory orders in the form of injunction, attachment of property, the appointment of a receiver, order for account keeping, etc. if is prima facie convinced of invalidity of a registered trademark.

The court held that identical and similar trademarks, though registered later; can be challenged by the owner of an earlier registered trademark. The court further held that pending rectification/cancellation petition or infringement suit the court is allowed to pass such interim orders as it deems necessary and proper. The court therefore upon being primarily convinced about the invalidity of the registration of the defendant’s trademark restrained the defendant from using its registered trademark till the disposal of a rectification/cancellation petition by the Registrar of Trademarks.

7. Star India Pvt. Ltd. v. Moviestrunk.com &Ors. (2020) Delhi HC⁹

In this case, Plaintiff Star India was a film production and distribution company while the defendant owned online streaming websites. The case relates to unauthorized streaming of the plaintiff’s film on the defendant’s streaming website. The plaintiff filed a suit for infringement of copyright.

The Delhi High Court held the defendant liable for infringement of copyright of plaintiff work for streaming its copyrighted content without the knowledge and consent of the plaintiff. The Court granted injunction and damages and thus Plaintiff’s exclusive right to exploitation was re-ensured.

8. Marico Limited v. AbhijeetBhansali(2020) Bombay HC¹⁰

In this case, the defendant who is a YouTuber and a social media influencer has made objectionable and disparaging comments on ‘Parachute hair oil’ in one of his videos and has used the parachute hair oil bottle in his video.

The plaintiff Marico Ltd. who is the owner of Parachute Oil Brand has applied for the removal of the video on the grounds that the YouTuber through his video has harmed the goodwill of the company and has also violated its trademark ‘Parachute’.

The court while interpreting Section 29 of The Trademarks Act, 1999 held that defendant has violated the exclusive trademark rights of the plaintiff by not seeking prior permission or consent of the plaintiff, and thus, the court ordered the removal of video.

9. Bajaj Electricals Ltd. v. Gourav Bajaj &Anr.(2020) Bombay HC¹¹

In this case, the plaintiff was a duly incorporated company and a part of Bajaj Group conglomerates of businesses and industries. The defendant was a person who had the word ‘Bajaj’ as title in his name. The defendant in his 2 electrical stores and website had used the name ‘Bajaj’. He has also used the expression ‘Powered by: Bajaj’ on his product labels.

The plaintiffs proved that their name has become a well-known mark over several decades and therefore only they are now entitled to use it and not the defendant or anybody else. The defendant claimed legitimate use of his name but, the plaintiffs also proved the malafide intention of the defendant over the use of the name on the labels of his products where he has tried to deceive people by using the name ‘Bajaj’ in such a way that made people believe as if his products are endorsed by The Bajaj Group.

The court agreed with the grounds raised by the plaintiffs and thus passed an interim injunction against the use of the trademark by the defendant on their products as well as in their domain name.

10. ISKON v. Iskon Apparel Pvt. Ltd. (2020) Bombay HC¹²

The plaintiff ISKON has filed the case on infringement of its trademark by the defendant, where the defendant has used the word ‘ISKON’ on its products and has also passed off his brand. The plaintiff has also sought to get their trademark declared as a well-known mark.

It was held that the defendant has clearly infringed the trademark of the plaintiff and has also passed off his brand by deceiving people and giving them a false belief that its products are associated with the plaintiff. The court also held that plaintiff’s trademark has satisfied all the criteria to become a well-known mark.

References

1. Page 281 Book: Studies in Jurisprudence and Legal Theory by Dr. N. V. Paranjape
2. https://www.wipo.int/about-ip/en/
3. https://indiankanoon.org/doc/248352/
4. https://indiankanoon.org/doc/165776436/
5. https://indiankanoon.org/doc/123231822/
6. https://indiankanoon.org/doc/28519340/
7. https://indiankanoon.org/doc/1741869/
8. https://indiankanoon.org/doc/99626708/
9. https://www.casemine.com/judgement/in/5e55cdc49fca193984fd7305
10. https://indiankanoon.org/doc/79649288/
11. https://indiankanoon.org/doc/101671569/
12. https://indiankanoon.org/doc/83405343/

Written by Naman Practising Advocate at Patna High Court and student at Gujarat National Law University.