landmark judgments of trademark infringement and passing off

DIFFERENCE BETWEEN INFRINGEMENT AND PASSING OFF

In order to prove infringement, it is only necessary to show that the infringing mark is identical or deceptively similar to the registered mark, while in order to prove passing off, it is necessary to show that the marks are identical or deceptively similar in a way that is likely to mislead or create confusion, causing harm to the company’s business. When a trademark is licensed, it is only for a certain type of products, and therefore protection can be limited to these goods and infringement action taken, while in a passing off action, the defendant’s goods do not have to be identical; they can be similar or even different.

DM ENTERTAINMENT V. BABY GIFT HOUSE AND ORS.

Daler Mehndi is a well-known Indian composer, lyricist, and singer. In 1996, he formed D.M. Entertainment Pvt. Ltd., the plaintiff in this case, with the letters DM standing for the name Daler Mehndi’s initials. The company was founded to help Daler Mehndi advance his career while also raising funds for charities and causes, as well as to finance the DALER MEHNDI GREEN DRIVE project. Daler Mehndi delegated to the Company all of his advertising, commercial endorsement, and other associated privileges. Toy and gift shops in various parts of Delhi were named as defendants in the case. They were selling dolls that were supposedly imitated and similar to Daler Mehndi’s likeness. The dolls had been imported from China and were being sold in India. The dolls could sing a few lines from some of Daler Mehndi’s compositions in addition to getting his features. D.M. Entertainment, enraged by the defendants’ actions, filed a case in the Delhi High Court, claiming that the importation and selling of such dolls or pictures, which could sing a few lines from the artist’s compositions, were a clear violation of Daler Mehndi’s right to monitor the commercial use of his persona. The Court found the defendants responsible for breach to the right of publicity, false endorsement, and passing off after examining the facts of the case and D.M. Entertainment’s claims. The defendants were given a permanent injunction as well as nominal damages. Since the defendants did not appeal the plaintiff’s lawsuit, the decision was made ex parte.

MILMET OFTHO INDUSTRIES AND ORS. V. ALLERGAN INC.

Pharmaceutical companies were the appellants. A pharmaceutical corporation was also a respondent. Respondents filed an injunction seeking to stop the use of the mark “OCUFLOX” in connection with eye care products. Respondents claimed to have been the first to use the trademark OCUFLOX Globally. They claimed to have used this mark for the first time on September 9, 1992. The Appellants also sold “OCUFLOX,” a herbal preparation containing CIPROFLOXACIN HCL for the treatment of eye and ear infections. The Respondent’s product was not being marketed in India at the time of the litigation, and the Appellants had launched the product in India, so the Respondents were not entitled to an injunction. The order of the Single Judge of the High Court was overturned in the Respondents’ appeal. The Respondents were found to be the first in the business and so entitled to an injunction. When the case was brought before the Supreme Court, the Court followed the directives and guidelines set out in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. , which claimed that

“In respect of medicinal products it was held that exacting judicial scrutiny is required if there was a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products.”

The Supreme Court observed:

• There may be a conflict between the use of the mark by one entity in India and the use of the mark by another entity outside of India.

• If a mark for a drug is identified with the Respondents globally, an anomalous condition would arise if an equivalent mark for a similar drug was permitted to be sold in India.

• In this case, the labels are identical. If they were first in the world market, respondents who did not use the label in India would be insignificant.

COCA-COLA CO. V. BISLERI INTERNATIONAL PVT. LTD.

Bisleri International Pvt. Ltd., formerly Acqua Minerals Pvt. Ltd., was a member of the Parle group of industries and is the defendant in this case. The defendant sold the plaintiff (The Coca-Cola Company) the trade marks, intellectual property rights, formulation rights, knowhow, and goodwill of their goods THUMS UP, LIMCA, GOLD SPOT, CITRA, and MAAZA, among others, under a master agreement for India only. This case is solely about the Maaza product. Many of the above-mentioned rights were permanently transferred to the plaintiff as a result of this agreement, while the defendant maintained all such rights in respect of all other countries where it had been registered except India. The defendant learned in early 2008 that the plaintiff had applied for trademark registration of Maaza in Turkey, and in late 2008, the defendant sent the plaintiff a legal notice revoking the license arrangement and terminating all rights expressed directly or indirectly. In response, the plaintiff filed a lawsuit seeking a permanent injunction, damages for handing off, and the revocation of the plaintiff’s irrevocable agreement. In addition, the plaintiff accused the defendant of unauthorised production of some Maaza base ingredients by a third party in India. Plaintiff claimed that the defendant is infringing on its exclusive right to use its lawfully registered trademark.

The court issued an order on October 15, 2008 barring the defendant, his agents, and allies from using the trademark, as well as the preparation and production of maaza base ingredients for beverages like maaza. It also prohibited the defendant from disclosing any Maaza know-how formulations to anybody. As the defendant has challenged the court’s jurisdiction to hear the case, the plaintiff has established sufficient grounds for the court to do so. The defendant conducts business within the court’s jurisdiction, and the defendant has the unlawful intention to use the infringing trademark within its jurisdiction, as specified in the Delhi Edition of Times Of India and the same may be deduced from the defendant’s legal notice to the complainant. of the court’s decision. The plaintiff’s evidence and records show that the defendant not only had the intention, but was also engaged in business with other domestic and foreign corporations such as Australia and the United States. The court stated that it is well-established law to consider exporting any product or products for sale within the country from which the goods are exported, and that this would be considered trademark infringement. The defendant’s defense was dismissed outright because their representations to the court were prima facie false. Finally, the Hon’ble Court issued a temporary injunction against defendant for the reasons mentioned above. The court stated that there is a prima facie argument in favor of the plaintiff, as well as the balance of convenience, and that if an injunction is not given, the plaintiff will suffer irreparable harm and injury. As a result, the defendant’s repudiation of the agreement was declared void by the judge, and all of Maaza’s trademark rights were returned to the plaintiff.

CADILA HEALTH CARE LTD. V. PHARMACEUTICALS

The event is a watershed moment in the history of unregistered trademark passing off. Passing off action is possible in the case of unregistered trademarks. The passing off action is based on the premise that no one has the right to portray his products as someone else’s goods. To put it another way, a man is not allowed to sell his goods or services under the guise of being that of another person. Both the Appellant and the Respondent were pharmaceutical companies that had taken over the Cadila Group’s business after it was restructured under the Companies Act. The right to use the word Cadila was given to both firms. The Appellant company first developed a drug to treat cerebral malaria under the brand name “Falcigo” and was given permission to market it across India by the Drugs Controller of India in 1996. The Respondent was also given permission to market drugs for cerebral malaria under the name “Falcitab” in 1997. The Supreme Court considered a number of factors, including the legibility of doctors’ prescriptions, the risk of unintentional misunderstanding due to misleading similarities, and the need for vigilance when dealing with medications that treat the same condition but have different compositions. The definition of a reasonable ordinary person was described as someone with a poor memory and average intelligence. Even though both medications are Schedule L drugs, which means they can only be purchased with a prescription in hospitals and clinics, the Court recognized that there may be some misunderstanding among medical professionals dispensing the drugs. The Hon’ble Supreme Court concluded that there was a risk of passing off and that it was a case of dishonest resemblance after reviewing the provisions of the Trademarks Act, 1999 and Section 17-B of the Drugs and Cosmetics Act, 1940.

PARAMOUNT SURGIMED LIMITED V. PARAMOUNT BED INDIA PRIVATE

The defendant, a Japanese corporation, registered the PARAMOUNT mark in 1987 for its hospital bed business, and the mark is registered in other countries but not in India. Plaintiff is the licensed owner of the mark label PARAMOUNT under clause 10 (surgical, medical, dental, etc.) and class 20 (furniture, mirrors, picture frames, etc.) since 14.01.2002. The dispute centered on the use of the PARAMOUNT trademark for hospital beds. The Plaintiff claimed in this case that the word PARAMOUNT was first used as part of its corporate name in 1993, and that it has been producing and distributing intensive care hospital beds in India since then. An ex-parte order had previously been issued prohibiting the Defendant from using the label PARAMOUNT. The Defendant, enraged by the ex-parte decision, lodged an appeal to get the interim injunction lifted. The ex-parte subpoena, according to the Defendant, was obtained by concealing relevant evidence.

After reviewing the documents filed by the Defendant, the Court determined that the Defendant has been promoting his hospital bed sales company in India under the name PARAMOUNT since 2002. The opposition filed in 2009, as well as emails exchanged, clearly demonstrated that the Plaintiff was fully aware of the Defendant’s existence in the Indian market. The Court determined that this is not a case of reaching the court late, but rather of approaching the court with an incorrect request. If an injunction is issued, the defendant’s company, which the plaintiff was well aware of, will come to a halt; irreparable damage and injury will be sustained by the defendant, which may not be paid at a later date. As a result, the court reversed the ex-parte interim injunction issued in Plaintiff’s favor earlier.

TOYOTA JIDOSHA KABUSHIKI KAISHA V PRIUS AUTO INDUSTRIES

The appellant claimed ownership of the well-known marks Toyota, Innova, and Prius in this Supreme Court decision, and that the respondents were selling auto parts and accessories in India using the appellant’s registered marks, especially the mark “PRIUS.” In India, the appellant had no registration for the label ‘PRIUS,’ while the respondents had a registration for the same since 2001. The Appellant, on the other hand, argued that their label ‘PRIUS’ had been registered in a number of other countries since 1990. Even though ‘PRIUS’ was a well-known mark outside of India, the trans-border prestige of the said mark had to be proven in India, according to the Division Bench of the Delhi High Court in an order dated January 12 2017. The Court ruled in favor of the Respondents because the Appellants failed to include the requisite proof to show that the mark ‘PRIUS’ was already well-known in India. The Appellant had filed a special leave petition after being aggrieved by the said order.

The Supreme Court ruled in favor of the Respondents in an order dated December 14, 2017, stating that the Appellants had failed to provide sufficient evidence of their’reputation’ in the Indian market. The Court agreed with the Division Bench’s decision, holding that the mark “PRIUS” had not acquired sufficient goodwill, credibility, or popularity in Indian markets to confer on the appellant the requisite qualities of a prior user’s right to successfully sustain a passing off action even against the registered owner/respondents. Due to the restricted online visibility at the time, the Court held that the evidences submitted by the appellant, namely advertising in foreign magazines and availability of information on internet portals, would not be a safe basis to prove the presence of the requisite goodwill and credibility of a product in India at the relevant time (in 2001).

N.R. DONGRE V. WHIRLPOOL CORPORATION

In this case, Whirlpool Corporation sued the defendants for trading off, seeking to prevent them from making, selling, advertising, or otherwise using the WHIRLPOOL mark as part of another mark in connection with its products. The appeal concerned the manufacturing, selling, and marketing of washing machines bearing the WHIRLPOOL trademark. Whirlpool’s argument was based on its previous usage of the WHIRLPOOL mark as well as a trans-border credibility, implying that all products sold under the WHIRLPOOL mark were marketed by the Plaintiff. The Court held that the word “usage” under the Trade Marks Act, 1999 has taken on a broad sense and does not always imply the products’ physical presence in India. Use in India is also described as the presence of a trademark on the Internet and publication in foreign magazines and journals with a circulation in India.

As a result, the Court held that a rights holder can bring a passing off case against an infringer based on the trademarks’ trans-border credibility, and that the existence of the products or the use of the mark in India is not needed. It is sufficient if the rights holder has established a reputation and goodwill in India for the mark through advertising or other means.

STARBUCKS CORPORATION V. SARDARBUKSH COFFEE & CO.

On August 1, 2018, the High Court of Delhi granted interim relief in Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., ordering the defendants to use the name “Sardarji-Bakhsh” for their 20 fresh, upcoming outlets before the suit’s final hearing on September 27, 2018. After the hearing, the defendant decided to change the name of all of its locations to “Sardarji-Bakhsh Coffee & Co.” In India, the plaintiff registered the STARBUCKS word mark and the logo depicting a “crowned maiden with long hair” in 2001. In India, the plaintiff registered the STARBUCKS word mark and the logo depicting a “crowned maiden with long hair” in 2001. The defendants started their company in 2015, calling it “Sardarbuksh Coffee & Co”—“Sardar” is a Hindi word that means “Commander,” and “Buksh” is a Hindi word that means “Pardon.” The defendants formed a private limited company called “Sardar Buksh Private Limited” in May of 2018 and have been operating under that name since then. Both the complainant and the defendants offer the same goods and services. In contrast to the Starbucks logo, the defendants used a logo consisting of a circular black band with the words “SARDARBUKSH COFFEE & CO.” and a device of a turbaned Commander with wavy lines extending from the sides, as well as reversing the color scheme. Following a demand letter from Starbucks Corporation in 2017, the defendants updated their logo and color scheme to black and yellow, and began trading under the current logo seen below. Despite this, the defendants were sued by Starbucks Corporation for using the trade name “Sardarbuksh.” The defendants were ordered by the High Court of Delhi to change their store name from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.” for 20 stores that had not yet opened on August 1, 2018, but the court allowed them to keep the current name “Sardarbakhsh Coffee & Co.” for their remaining stores. The parties exchanged terms and conditions on September 27, 2018, and the High Court of Delhi recorded them. It was also decided that the defendant would rename all of its locations “Sardarji-Bakhsh Coffee & Co.” Furthermore, it was explained and decided that if a third party uses the word “Bakhsh,” the claimant would have the right to sue such a violator.

M/S CASTROL LIMITED & ANR. V. IQBAL SINGH CHAWLA & ANR.

The Castrol Limited sued the Defendants who were selling 4T oil under the trade mark “Lumax Active,” alleging that they had infringed on the trade mark “Castrol Active,” which was licensed separately in Castrol Limited’s name. The Plaintiffs in this case, Castrol Limited, sought relief in relation to its trade dress, copyright in packaging, and the shape of the container. The Plaintiffs claimed that the Defendants copied the Plaintiffs’ exact trade dress, bottle design, label layout, and color scheme, resulting in trade mark infringement, copyright infringement, and a pass-off lawsuit. The Court stated that if the Plaintiff’s trademark “Castrol Active” and the Defendant’s trademark “Lumax Active” are compared, there does not seem to be any misleading resemblance between the marks when the trade dress, color scheme, packaging, style, layout, shape, and configuration are considered separately. As a result, when the competing trademarks were investigated in accordance with the trade dress, color scheme, packaging, design, style, form, and configuration, it became apparent that the Defendants’ adoption of the trade mark “Active” was simply a deceptive adoption intended to profit from the Plaintiffs’ goodwill and credibility. Even though the Court found that the competing marks were distinct, the Defendants’ dishonesty was exposed by their use of the very same trade dress. The Court did add, however, that the injunction would not affect the Defendants’ rights if they used the word “Active” in entirely different trade dress, color scheme, packaging, style, layout, or shape and configration.

Hennes & Mauritz Ab & Anr V. HM Megabrands Pvt. Ltd.

The High Court of Delhi granted a permanent injunction against the defendants HM Megabrands Pvt. Ltd. & Ors in H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors (May 31, 2018), confirming that prior adoption of a mark overseas can be superior to prior use of the mark in India. The plaintiffs own the trademark H&M, a globally recognized company. In the year 1985, the mark H&M was first registered in the United Kingdom. In 2005, the plaintiffs registered the label in India. In 2011, the defendants began selling garments in India under the name “HM Megabrands,” and on April 11, 2014, they applied for HM MEGABRANDS registration. HM Megabrands was sued by the plaintiffs for trademark infringement and passing off. The defendants claimed that their use of the logo was legitimate and based on the initials of the company’s directors’ names. Furthermore, the defendants claimed that the plaintiffs had not yet reached India with their goods when they introduced the trademark HM MEGABRANDS in 2011. The defendants also claimed that the term “Megabrands” in their name adequately distinguished their products from those of the plaintiffs’ brand, “H&M.”

The court did not accept that the defendants’ use of the trademark HM MEGABRANDS was legitimate. The court acknowledged that the defendant’s red and white color scheme was similar to H&M’s, and that consumers would perceive the additional term “Megabrands” to mean “big brand,” causing more confusion with H&M. The plaintiff’s previous adoption of the mark in 2005, as opposed to the defendant’s adoption in 2011, was also important to the court. The plaintiffs’ goods were later introduced in India, but this was deemed irrelevant. Because of increased “international travel and cultural exchange,” the court reasoned, customers should be conscious of top brands all over the world. As a result, the court barred the defendants from using the trademark HM MEGABRANDS. This decision confirms that in India, prior adoption of a mark outside of India may be preferable to prior use of the mark in India.


Trademark Registration in India
Private Limited Company Registration in India
Trademark Objection in India

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