Annual litigation report 2004

Intellectual Property
Litigation Report
2004
CONTENTS
• Counterfeiting of Cartier products restrained Cartier International B.V v Choosy corner Name of firm not determinative of its statusZuko Engineers v Ministry of Commerce & Industries • Deception/confusing similarity not found in use of United Breweries Ltd. v Khodays Brewing and Infringement of Mitsubishi pen design restrained Mitsubishi Pencil Co. Ltd. v Flair Pen TRADEMARKS
deceptively similar to Wockhardt's 'ANALGON'.
Wockhardt limited v Patiala Medical Agencies • Action for Infringement and Passing off does not lie only against the manufacturer but also against any party • Infringing use of the ‘DUNHILL’ trademark/trade Lalli Enterprises v Dharam Chand & Sons Alfred Dunhill Ltd. v Dunhill Securities Ltd. • Aftek Infosys and Jupiter Infosys restrained from using • Injunction by quia timet action appropriate and Infosys Technologies Ltd. v Aftek Infosys Ltd. & Mars Incorporated v Kumar Krishna Mukherjee • Mere incorporation of famous trademark/tradename • Allegations of Misrepresentation and Passing Off of the in a company name does not create any right Pizza Hut International LLC., Pizza Hut Inc. and ICC Development (International) Ltd. v Arvee Tricon Restaurants (India) Pvt. Ltd. v Pizza Hut • Misuse of logo, title and other copyright elements of Time Warner Entertainment Company v A K Das television serial in domain name and websiterestrained • Bharat Business Channel restrained from using the Celador Productions Ltd. v Gaurav Mehrotra abbreviation BBCBritish Broadcasting Corporation v Bharat Business • No monopoly over words that are publici juris USV Limited v Systopic Laboratories Ltd. K. M. RAO, R. BARMA, R. SIRCAR, A. K. CHATTERJEE, M. ISLAM, S. MUKHERJEE, I. S. BHATTACHARYA S. GHOSH, S. K. GUE, J. V. RAGHAVAN, S. MANI V. J. SINGH, D. K. CHAUDHRY, S. CHOWDHURY S. S. DATTA, P. PRASAD, M. MAHARAJ, V. HARAN P. BOSE, J. MUKHERJEE, S. JOSEPH, S. BANERJEE Intellectual Property Litigation Report
INDIA l July 2004
• Not allowing parties to establish rival claims by leading • The addition of a geographical suffix does not sufficiently alter the underlying mark to which it is added to create • ‘NOVERAN’ found infringing 'VOVERON' Honda Motor Company Limited v Lokita Enterprise • Trademark/name having transborder reputation is • Order granting registration and subsequent cancellation protected against trademark infringement in India of trademark, found in contravention of law Yahoo Inc. v Sarda Trading Company DCW Home Products Ltd. v Deputy Registrar of • Trademark Office directed to call for search report for • Passing off of CASTROL and INDROL marks and Bio-chem Pharmaceutical Industries v Astron Castrol Ltd. v Auto Link Sales Corporation • Use of 'Kohinoor' as a trademark permissible Sant Ram & Co. v Satnam Overseas Philips India Ltd. v Philips Infotech Ltd. • Use of domain name similar to trademark considered • Phonetic and visually similar mark found infringing Frito Lay India v Shivdeep Food Products Pvt. Ltd. Red Bull GmbH v Bayer Shipping & Trading Ltd. • Phonetically similar word found deceptive COPYRIGHTS
Chanel Ltd. v Sunder Chemicals Agarbati Works(P) Ltd. • Delay in bringing action for copyright infringement is • 'PLAYBOY' trademark and 'rabbit head' logo are not sufficient to defeat grant of injunction Midas Hygiene Industries Pvt. Ltd. v Sudhir Bhatia Playboy Enterprises International Inc. v Advance • Delhi High Court rules against infringement of copyright • Prima facie case essential for grant of injunction Fenner (India) Limited v Farms and Farms (India) Heineken Brouwerijen B V. v Som Distilleries & • Godrej & Boyce restrained from infringement of • Prior use of similar trademark does not necessarily N Rangaswamy v Godrej & Boyce Manufacturing East African (I) Remedies Pvt. Ltd. v Wallace • Proprietary right in a geographical trademark/name Godrej & Boyce Manufacturing Co. Ltd. v N cannot be claimed after transfer of property Bloomfield Tea Co. Ltd. v Bagaria Business (P) Ltd. • Rectification for non-use of trademark is erroneous Star India Pvt. Ltd. v Leo Burnett (India) Pvt. Ltd. • Logo is an artistic work protected by the Copyright Act Hardie Trading Ltd. v Addisons Paint and Chemicals ICC Development International v Ever Green • Reputation in 'MAC' trademark not established • Publication of copyrighted work in breach of agreement McDonald’s Corporation v MacGilz Fast Food • SmithKline Beecham seeks permanent injunction against The Chancellor Masters & Scholars of the University of Oxford v Orient Longman Pvt. Ltd. Smith Kline Beecham Plc. v Lalitbhai Patel • Zee TV restrained from airing serial in violation of • Stray adoption of internationally famous invented word Honda Motor Co. Ltd. v Mr. Charanjit Singh & Ors Visit our Internet Site at www.dpahuja.com
2004 D.P. Ahuja & Co., India
Intellectual Property Litigation Report
INDIA l July 2004
Name of firm not determinative of its status
[Renewal of Patent – Writ of mandamus – Fee for individual – Sole proprietor – Petition disposed]
Zuko Engineers v Ministry of Commerce & Industry
Delhi High Court (July 24, 2002)
The Petitioner, Zuko Engineers, sought a writ of mandamus directing the defendant to accept the renewal fee
for renewal of patent in the category of individual, as he is the sole proprietor of the concern. The defendant
countered that since the name of the patentee is Zuko Engineers, the fee has to be paid for legal entity other than
individual. The Honorable Court held the defendant’s view as erroneous as the name of a concern
cannot be determinative of whether the concern is a proprietorship or a partnership firm and hence,
directed the defendant to charge the fee from the petitioner for the renewal of patent that is applicable
to individual.
Infringement of Mitsubishi pen design restrained
[Similar Design – Likelihood of confusion – Injunction granted]
Mitsubishi Pencil Co. Ltd. v Flair Pen
Delhi High Court (January 2003)
Petitioners, Mitsubishi Pencil Co. Ltd., and its sole distributor Linc Pen & Plastic Ltd. filed a suit against Flair
Pens for infringement and passing off of Mitsubishi’s design of the model ‘UniBall Vision Elite’. The Honorable
Court granted an ex parte interim injunction and held that similarities in design created likelihood of
confusion and deception among the customers as to the source and origin of the Flair pens.
TRADEMARKS
Action for Infringement and Passing off does not lie only against
the manufacturer but also against any party involved in the
infringement chain
[Infringement – Passing off action – Not necessary to produce cash memos of clandestine sales]
Lalli Enterprises v Dharam Chand & Sons
Delhi High Court (September 22, 2002)
Plaintiff, Lalli Enterprise filed a suit for infringement of copyright and passing off against the defendant, Dharam
Chand & Sons. The learned Single Judge dismissed the suit without issuing summons to the defendant on the
ground that the suit is against the manufacturer of the infringed article and the defendant is not the manufacturer,
there were no cash memos of sale and therefore, the court did not have territorial jurisdiction in the matter. The
Plaintiff, filed an appeal against the said order. The Honourable Delhi High Court, set aside the impugned
order and held that, it is incorrect that an infringement action lies only against the manufacturer of the
goods; it can lie with any party involved in the infringement chain. Secondly, production of cash memos
is not necessary as clandestine sales are often without cash memos and summons are to be issued to
the defendant at this stage as the averments in the plaint are to be seen and evidence is required to
be led to determine territorial jurisdiction.
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INDIA l July 2004
Aftek Infosys and Jupiter Infosys restrained from using the
Trademark/Trade name ‘INFOSYS’
[Trademark/tradename INFOSYS v JUPITER INFOSYS and AFTEK INFOSYS – Unauthorised use of trademark
– Passing off – Damage to reputation and goodwill – Interim injunction granted]
Infosys Technologies Ltd. v Aftek Infosys Ltd. and Jupiter Infosys Ltd.
Delhi High Court (December, 2002)
Petitioner, Infosys Technologies Ltd., sought injunctive relief against Defendants, Aftek Infosys Ltd. and
Jupiter Infosys Ltd., for unauthorised use and passing off of the trademark/trade name 'Infosys'. Both the
Defendants and the Plaintiff are in the same line of business, hence it was alleged that there was likelihood of
confusion and deception leading to damage of reputation and goodwill of the Plaintiff. The Honorable Court
passed an interim order restraining the Defendants from using the ‘INFOSYS’ trademark and passing
off the trade name as well.
Allegations of Misrepresentation and Passing Off of the Cricket
World Cup trademarks dismissed
[World Cup Trademarks – Suit for Temporary injunction – Passing off – Absence of prima facie case – Application
dismissed]
ICC Development (International) Ltd. v Arvee Enterprises & Others
Delhi High Court (January 2003)
Plaintiff, ICC Development International Ltd., filed a suit for temporary injunction restraining defendants,
Arvee Enterprises & Ors. from publishing any advertisement associating themselves with the plaintiff in any
manner whatsoever. The defendants countered that the word ‘World Cup’, is a generic word and is not protected
by any international treaty or domestic law. The Honourable Court held that the plaintiff had failed to make
out a prima facie case for grant of an ad interim injunction and dismissed the application.
Amendment is a discretionary matter
[Trademark HBO – Amendment of plaint – No change in nature of suit – Amendments allowed when necessary]
Time Warner Entertainment Company v A K Das
Delhi High Court (December 20, 2002)
The Plaintiff, Time Warner Entertainment filed for an amendment in their plaint on the ground that the HBO channel
was not available on cable television in India at the time of filing of the infringement and passing off suit. The
Honourable Court allowed the application and held that amendment is a discretionary matter and should
be allowed when necessary for the purpose of determining the real questions in a controversy. It would
not cause any prejudice to the defendants in this case as it does not change the nature of the suit.
Bharat Business Channel restrained from using the abbreviation
BBC
[Trademark BBC – Identical abbreviation – Deliberate attempt to damage reputation and goodwill – Prima facie case]
British Broadcasting Corporation v Bharat Business Channel
Delhi High Court (February 2003)
Petitioner, British Broadcasting Corporation filed a suit to restrain Bharat Business Channel from using
its abbreviation and registered trademark ‘BBC’. The plaintiff contended that the adoption of the identical
abbreviation was a deliberate attempt by the defendant to tread upon the reputation and goodwill of the BBC.
The Honourable court ruled ex parte, restraining the Bharat Business Channel from using the
trademark BBC.
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2004 D.P. Ahuja & Co., India
Intellectual Property Litigation Report
INDIA l July 2004
Counterfeiting of Cartier products restrained
[Trademark CARTIER – Registered Trademark – Infringement – Passing off – Permanent injunction]
Cartier International B.V. v Choosy Corner
Delhi High Court (September 5, 2002)
Plaintiff, Cartier International, proprietors of the registered trademark CARTIER, filed a criminal complaint
and a suit for permanent injunction against defendant, Choosy Corner to restrain manufacture and sale of
counterfeit goods under the ‘CARTIER’ trademark. Granting an ex parte decree of permanent injunction
in favour of the plaintiff, the Honourable Court, permanently restrained the defendants from
manufacturing and selling goods with the trademark ‘Cartier’ and from using the ‘Cartier’ logo in any
manner that could infringe the trademark or copyright of the plaintiff.
Deception/confusing similarity not found in use of 'BLACK LABEL'
on beer products
[Tradename BLACK LABEL – Suit for interim injunction – Passing off action – Difference in label – Application
denied]
United Breweries Ltd. v Khodays Brewing and Distilling Industries Ltd.
Karnataka High Court (January 21, 2002)
Plaintiff, United Breweries Limited, filed a suit against defendants, Khodays claiming trademark infringement
and passing off. Contrary to the allegation of the plaintiff, it was proved that only the name “Black Label” is
registered and is distinctly mentioned only on the product that it is sold in West Bengal, under the name “Kalyani
Black Label”; whereas it was clear from the documents produced by the defendant, that they are manufacturing
and selling beer under the brand “Hercules Black Label Super Strong Beer” and the word “Hercules” is
registered. The Honourable Court held that the Trial Court had correctly rejected the application for
injunction as on comparison of the two labels it is clear that they cannot be said to be deceptive nor
cause any confusion in the minds of the consumers.
Drug trademark 'PLAGON BOLUS' found deceptively similar to
Wockhardt's 'ANALGON'
[Trademark PLAGON BOLUS v ANALGON – Permanent injunction – Infringement action – Deceptive similarity
– Injunction granted]
Wockhardt Limited v Patiala Medical Agencies
Delhi High Court (January 24, 2003)
Plaintiff, Wockhardt Ltd., filed a suit seeking permanent injunction against Patiala Medical Agencies on the
ground of deceptive similarity in trademarks. The Honourable High Court granted a permanent injunction
restraining the defendants from selling products under the trademark ‘Plagon Bolus’ and packaging
similar to Wockhardt’s ‘Analgon’.
Infringing use of ‘DUNHILL’ trademark/trade name restrained
[Trademark DUNHILL – Registered trademark – Passing off – Confusion and deception – Damage to reputation
– Permanent injunction]
Alfred Dunhill Ltd. v Dunhill Securities Ltd.
Delhi High Court (April 2003)
Plaintiff, Alfred Dunhill Ltd. sought a permanent injunction to restrain infringement of the registered trademark
'DUNHILL', passing off and rendition of accounts against defendant, Dunhill Securities. The plaintiff
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INDIA l July 2004
contended that DUNHILL was a registered trademark and has a worldwide reputation. The use of the trademark
by the defendant had caused immense confusion, deception, loss of reputation and goodwill to the plaintiff. The
Honourable Court passed an injunction restraining the defendants from advertising, dealing in or
using the plaintiff’s trademark ‘Dunhill’.
Injunction by quia timet action appropriate and essential to
prevent future harm
[Trademark MARS – Suit for permanent injunction – Registered Trademark – Injunction by Quia Timet Action]
Mars Incorporated v Kumar Krishna Mukherjee
Delhi High Court (October 30,2002)
Plaintiff, Mars Inc. filed a suit for permanent injunction against the defendant, Kumar Krishna Mukherjee
for adopting and thereby, infringing their registered trademark 'MARS' in regard to food products, passing off
of goods and resultant loss of goodwill and reputation. The Honourable Court granted an injunction by *Quia
Timet Action and held that the plaintiff’s apprehension that the defendant may start manufacturing in
the food sector under the same tradename, is a real and tangible possibility and as they will suffer a
greater hardship than the defendant, the misconception of the defendant about the importance of the
trademark and trade name has to be erased before they start their business.
* Quia Timet - It is a Latin word which means "because he fears or apprehends". In legal terminology it has been defined as an action
by which a person may obtain an injunction to prevent or restrain some threatened act being done which, if done, would cause him substantial
damage and for which money would be no adequate or sufficient remedy.
Mere incorporation of famous trademark/tradename in a company
name does not create any right
[Trademark/Tradename PIZZA HUT – Infringement – Passing off – Transborder reputation – Use – Balance of
convenience]
Pizza Hut International LLC., Pizza Hut Inc. and Tricon Restaurants (India) Pvt.
Ltd. v Pizza Hut India Pvt. Ltd.
Bombay High Court (July 26, 2002)
Plaintiffs, Pizza Hut International, Pizza Hut Inc. and Tricon Restaurants sought injunctive relief against
Defendants Pizza Hut India Pvt. Ltd. for infringement and passing off of its distinctive and reputed trademark/
trade name PIZZA HUT. Granting the injunction, the Honourable Court held that the defendant was
incorporated with the sole intention of trading on the plaintiff’s well established and worldwide
reputation and their famous mark/logo. Mere incorporation cannot constitute use of the words as a
trademark especially as the defendant has no goodwill or reputation in India.
Misuse of logo, title and other copyright elements of television
serial in domain name and website restrained
[Distinctive logo and symbol – Use of logo on defendant’s website – Deceptive similarity – Copyright infringement]
Celador Productions Ltd. v Gaurav Mehrotra
Delhi High Court (January 18, 2002)
Plaintiff, Celador Productions Ltd., filed a suit for permanent injunction against defendant Gaurav Mehrotra
restraining him from running a website using the domain name “crorepatikaun.com”1 with logos, names and
identical photographs of the presenter of the plaintiff. The Honourable Court granted an ex parte injunction
restraining the defendant from operating and hosting any website using similar domain name and from
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INDIA l July 2004
offering on line games based on the format and design with the distinctive features of the TV program
of the plaintiff, “Kaun Banega Crorepati”2.
1. Literal translation from Hindi "Millionairewho.com".
2. Literal translation from Hindi "Who will become a Millionaire".
No monopoly over words that are publici juris
[Trademark PIO v PIOZ – Interim Injunction – Passing off action – Words not similar – Publici Juris – Injunction
denied]
USV Limited v Systopic Laboratories Ltd.
Madras High Court (July 11, 2003)
The Plaintiff, USV Ltd., filed an application for an injunction restraining the defendant, Systopic Laboratories,
from using the trademark “PIO” in any form and manner. The Honorable Court refused to grant an
injunction and held that, as per the Indian Drug Report, many drugs using the chemical Pioglitazone
Hydrochloride as an ingredient for treatment of Diabetes, use the word “PIO”, hence the word is
publici juris* and the applicant has no monopoly over it. Moreover, the words, “PIO” and “PIOZ” are
phonetically dissimilar and also the cartons are different, hence it cannot be said that the two are
identical.
* Publici Juris - It is a Latin term which means "of public right"
Not allowing parties to establish rival claims by leading evidence
is disregard of legal procedure
[Trademark ENERGIC – Suit for infringement and passing off – Dismissed by trial court – Parties not allowed to
establish rival claims by leading witness – Wrong-legal procedure]
J K Goe v Grow-On Marketing Ltd.
Delhi High Court (January 20,2003)
Plaintiff, J.K. Goe, had filed a suit for infringement and passing off against the defendant, Grow-On Marketing,
in the Trial Court which dismissed the case for concealment of facts on part of the plaintiff and maintained
that “Energic” was not a coined word and was publici juris. The Delhi High Court held that the plaintiff’s
suit was disposed off in disregard of legal procedure and in violation of the rights of the parties to
establish their rival claims. The impugned judgment therefore becomes unsustainable and is set
aside. The suit shall be revived and be dealt with and disposed of under law, afresh.
‘NOVERAN’ found infringing 'VOVERAN'
[Trademarks NOVERAN v VOVERAN – Infringement – Passing off action – Permanent Injunction]
Novartis AG v Ishwar Lal Jain
Delhi High Court (October 9, 2002)
Plaintiff, Novartis AG, filed a suit against defendant, Ishwar Lal Jain, for permanent injunction, restraining
the infringement of trademark and copyright and also restraining passing off of the goods by the defendant as
that of the plaintiff's and rendition of accounts and handing over of infringing goods. The Honourable Court
granted perpetual injunction in favour of the plaintiff and held that the defendant has adopted the
trademark “Noveran” which is virtually identical to the plaintiff's registered trademark “Voveran”,
and a packaging which is an imitation in terms of get up, lay out and color scheme with an intention
to pass off its product as that of the plaintiff's.
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INDIA l July 2004
Order granting registration and subsequent cancellation of
trademark, found in contravention of law
[Trademark CAPTAIN COOK – Registration – Cancellation – Notice of opposition not served to petitioner – Order
set aside]
DCW Home Products Ltd. v Deputy Registrar of Trademarks
Bombay High Court (July 25, 2002)
Petitioner, DCW Home Products filed an application against the order of cancellation of registration of
"CAPTAIN COOK" trademark by the Deputy Registrar of Trademarks. The Petitioner had applied for
registration of their trademark “CAPTAIN COOK”, in respect of iodised salt. The Deputy Registrar of
Trademarks issued a certificate of registration of the trademark to the petitioner. Thereafter, Vishal Salt
Industries issued a notice to the Deputy Registrar objecting to registration of the trademark on the ground that
they had already lodged a notice of opposition, hence the certificate of registration could not be granted without
deciding their notice of opposition. The Deputy Registrar found that the claim of Vishal Salt Industries was true
and canceled the Certificate of Registration. The Honorable Court set aside the impugned order of
cancellation and held that the Deputy Registrar had caused injury to the petitioner on the ground that
the notice of opposition was not served on the petitioner. Hence the grant and subsequent
cancellation of registration is in contravention of law.
Passing off of CASTROL and INDROL marks and original labels
restrained
(Trademark CASTROL v INDROL – Permanent Injunction – Infringement and passing off action – Registered
Trademarks – Injunction granted ex parte)
Castrol Ltd. v Auto Link Sales Corporation
Delhi High Court (September 9,2002)
Plaintiff, Castrol Ltd. filed a suit for permanent injunction against the defendant, Auto Link Sales
Corporation. The plaintiff contended that they were the owners of the registered trademark, “CASTROL” and
“INDROL” and the defendants had made use of a deceptively similar trademark and logo for their products.
The Honourable Court granted an ex parte injunction and held that the plaintiff’s trademark has been
infringed and it is apparent that the defendants are trying to pass off their goods as that of the plaintiff’s,
thereby causing deception and confusion.
PHILIPS tradename protected
[Tradename PHILIPS – Famous name – Registered Trademark – Unauthorised use would lead to confusion]
Philips India Ltd. v Philips Infotech Ltd.
Regional Director, Dept. of Company Affairs, Madras (April 28, 2003)
Plaintiff, Philips India Ltd., filed an application for issuance of directions to the defendant, Philips Infotech
Ltd., for change of name as the trademark/tradename “Philips” is globally known and recognized and
unauthorized use of the trademark/tradename would lead to confusion. The Regional Director granted the
application and directed the defendant to delete the word “Philips” from its existing name within three
months from the date of the order.
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Phonetic and visually similar mark found infringing
[Trademark KURKURE – Slogan - Infringement – Phonetic and visual similarity – Permanent injunction]
Frito Lay India v Shivdeep Food Products Pvt. Ltd.
Delhi High Court (February 4, 2003)
Plaintiff, Frito Lay, filed a suit seeking permanent injunction restraining defendant, Shivdeep Food Products
Pvt. Ltd., from infringing the plaintiff's trademark KURKURE and packaging design for a snack product, in the
latter's adoption of the deceptively similar name "Kurram Kurram" for a similar product with a imitative pack,
and from copying the plaintiff's slogan "Bindaas Fun" by adopting the slogan "Bindaas Snack". The Honourable
court granted the injunction and restrained the defendant from using “Kurram Kurram”* with the letter
“K” and also from using slogans deceptively similar to that of the plaintiff.
Phonetically similar word found deceptive
[Trademarks CHANEL v SHANELLE – Phonetically similar names – Injurious to goodwill & reputation –
Infringement and Passing off action – Interim Injunction granted]
Chanel Ltd. v Sunder Chemicals Agarbati Works (P) Ltd.
Delhi High Court (October 1, 2002)
Plaintiff, Chanel Ltd., filed a suit for interim injunction against defendant, Sunder Chemicals Agarbati Works
(P) Ltd. on the grounds of infringement and passing off, through use of the word “Shanelle” which is phonetically
similar to the plaintiff's trademark “Chanel”. The Honourable Court granted the injunction in favour of the
plaintiff and held that the fact that the trademark of the plaintiff is registered itself confers on the
plaintiff an absolute right of injunction as soon as the infringing mark is shown to be capable of
deceiving or causing confusion.
'PLAYBOY' trademark and 'rabbit head' logo are protected by
transborder reputation
[Trademark PLAYBOY and Rabbit head device – Infringement – Transborder reputation – Damage to reputation
and goodwill]
Playboy Enterprises International Inc. v Advance Cosmetic and Research Centre
Delhi High Court (February 2003)
Plaintiff, Playboy Enterprises International Inc., filed suit alleging trademark infringement and seeking
injunction restraining defendant, Advance Cosmetic and Research Centre from manufacturing and selling
perfumes with the Playboy trademark and the ‘rabbit head’ logo. In the absence of the defendant’s response,
the Honourable Court upholding the transborder reputation of the 'Playboy' trademark, ruled ex parte
that the defendants are restrained from using the 'Playboy' trademark and logo and also from
manufacturing and selling perfumes under the said trademark. The court also granted an injunction
and appointed commissioners to raid the premises of the defendant and take into custody all infringing
products.
Prima facie case essential for grant of injunction
[Suit for interim injunction – Infringement action – Deceptive similarity – No prima facie case – Injunction refused]
Heineken Brouwerijen B V. v Som Distilleries & Breweries
Delhi High Court (January 29,2003)
Plaintiff, Heineken Brouwerijen, filed an application for interim injunction against defendant, Som
Distilleries for infringement of trade dress of its Heineken beer cans. The Honourable Court refused to
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INDIA l July 2004
grant injunction and held that “Heineken” beer is brewed in Holland and is not available in India
off the shelf. Rather the product is being marketed here only in cans, that too, in duty free shops,
star hotels and big clubs and the clientele at these places would ask for the beer by its brand name
rather than by the color of the label. Hence there is no chance of an ordinary purchaser being
deceived merely by the look or color of the label. In comparison, the product of the defendant is
an indigenous product, brewed and bottled in India, and therefore, it is not possible to hold on to
the contention that the defendant is trying to pass off its products as that of the plaintiff.
Prior use of similar trademark does not necessarily create balance
of convenience
[Trademarks RIVOX v REVOX – Deceptively similar trademarks – Both marks pending registration – Use of
trademark by plaintiff was sporadic – Defendant’s adoption of trademark is bona fide]
East African (I) Remedies Pvt. Ltd. v Wallace Pharmaceuticals Ltd.
Delhi High Court (April 1, 2003)
Plaintiff, East African Remedies Pvt. Ltd. filed an application seeking an ad interim injunction against
defendant, Wallace Pharmaceuticals Ltd., restraining use of the trademark “Rivox” or any other trademark
deceptively similar to it. The Honorable Court did not grant the injunction and held that the Plaintiff is
not a continuous and regular user of the trade mark and has not acquired any goodwill in the market.
In comparison, the defendant has been continuously using the trademark “Revox” and has acquired
a goodwill and reputation and the sales of its product has been substantial in the preceding years.
Therefore, the balance of convenience lies in favour of the defendant, as they will suffer irreparable
loss and injury if the injunction is put in force.
Proprietary right in a geographical trademark/name cannot be
claimed after transfer of property
[Trademark/Tradename BLOOMFIELD – Temporary injunction – Passing off trademark/name – Transfer of
property as a going concern – Cessation of ownership – No proprietary right]
Bloomfield Tea Co. Ltd. v Bagaria Business (P) Ltd.
Calcutta High Court
Plaintiff, Bloomfield Tea Co., applied for temporary injunction restraining defendant, Bagaria Business (P)
Ltd. from passing off the trademark/tradename ‘Bloomfield’. The defendant countered that the plaintiff had
ceased to own the property hence no proprietary right in the associated trademark/tradename can be claimed.
Moreover the plaintiff had sold the property as a ‘going concern’ and the defendant had acquired it likewise
and it is a settled legal position that a ‘going concern’ passes its title along with its goodwill. The Honourable
Court dismissed the plaintiff's injunction application and held that the plaintiff, having failed to
establish a *prima facie case, is not entitled to get any order of injunction restraining the defendant
from using the word ‘Bloomfield’.
* Prima Facie - It means "so far as it can be judged from the first disclosure".
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Rectification for non-use of trademark is erroneous when special
circumstances exist for such non-use
[Trademark SPARTAN VELOX and device – Rectification – Non user of trademark – Special circumstances]
Hardie Trading Ltd. v Addisons Paint and Chemicals Ltd.
Supreme Court of India (September 12, 2003)
Acting on defendant, Addisons Paint and Chemicals', action for cancellation of plaintiff, Hardie Tradings
trademark comprising of the words 'SPARTAN' and 'SPARTAN VELOX' and a picture of the upper body
of a helmeted warrior carrying a shield and a spear, and rectification of the Register, the Registrar ordered
the rectification. Plaintiff, Hardie Trading, filed an application against the order. The Calcutta High Court
granted the application on the ground that there were no special circumstances for non use of the trademark
over the period in question. Based on the facts placed before it the Supreme Court of India held that the
conclusion of the Calcutta High Court and the Joint Registrar that there were no special
circumstances was erroneous, as the evidence on record shows that it was not economically
possible for the plaintiff to put its goods in the Indian market due to the restrictions imposed by the
Import Trade Control Policies for the relevant years.
Reputation in 'MAC' trademark not established
[Tradename McDONALD v MACGILZ – Suit for interim injunction – Action for infringement and passing off –
Similarity of trademarks – Reputation not established – Injunction rejected]
McDonald’s Corporation v MacGilz Fast Food
Punjab & Haryana High Court (October 24, 2002)
Plaintiff, McDonald’s filed a suit for perpetual injunction against defendant, MacGilz Fast Food for
infringement of trademark and passing off. The Honourable Court rejected the application for injunction
and held that the registration applications of the plaintiff for the word “Mac” were pending, hence, it
was too early to accept the claim of the plaintiff and consequently injunct the defendant from using the
aforesaid name.
SmithKline Beecham seeks permanent injunction against
infringement of trademark and copyright
[Trademarks ZENTEL v LETNEZ – Permanent Injunction – Infringement of trademark and copyright –
Pharmaceutical trademarks – Intention to deceive apparent – Decree of permanent injunction granted]
SmithKline Beecham Plc. v Lalitbhai Patel
Delhi High Court ( February 17, 2004)
The plaintiff SmithKline Beecham is engaged in the manufacture, marketing and distribution of various
pharmaceutical preparations including a product with the brand name ZENTEL, which is an invented word
having no dictionary meaning. The plaintiff sought injunctive relief on the ground that defendant Lalitbhai
Patel had adopted the trademark LETNEZ in relation to a similar product with deceptively similar packaging
and thereby infringed the trademark and the copyright of the plaintiffs. The Honorable Court held that the
trademark adopted by the defendant is the reverse form of the trademark of the plaintiff. As
products contain the same pharmaceutical ingredient and would be sold to the same class of
purchasers, close identity and similarity between the two trademarks is established and the
intention to deceive is apparent. Hence a decree of permanent injunction is granted against the
defendant.
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Stray adoption of internationally famous invented word does not
give legal right
[Trademark HONDA – Passing off – Use – Reputation – Invented word – Common surname – Honest concurrent
use – Stray adoption – Prima facie case]
Honda Motor Co. Ltd. v Mr. Charanjit Singh & Others
Delhi High Court (November 28, 2002)
Plaintiff, Honda Motors of Japan, sought injunctive relief against defendants Mr. Charanjit Singh and
others from passing off the famous trademark and trade name 'Honda' on pressure cookers. Defendants
countered that 'Honda' is a common surname and that the Plaintiff had not used the mark 'Honda' in India
independently. The Honourable Court dismissed the defendants' allegation and held that the
defendants had adopted the well known mark 'Honda', to trade off the goodwill and reputation
vested in the mark. Further, stray adoption of an invented word does not give legal right. The
plaintiff has a prima facie case and the defendants' continued wrongful use of the mark gives rise
to a recurring cause of action.
The addition of a geographical suffix does not sufficiently alter the
underlying mark to which it is added to create a right
[Trademark HONDA v Domain name hondaindia.com – Domain name Domain Name <hondaindia.com> -
Complainant using several domain names consisting of the word HONDA – Respondent claiming to have adopted
the name for future use – Respondent registered and used the name in bad faith – Directions given to transfer
domain name to complainant]
Honda Motor Company Limited v Lokita Enterprise
WIPO Arbitration and Mediation Center, Administrative Panel Decision (August 8, 2003)
The complainant Honda Motor Company was incorporated with the name HONDA as the key and principal
feature of its business name and also as its trademark since its inception. It hosts and maintains a large number
of websites throughout the world with domain names consisting of the word ‘honda’ including the domain name
<hondacarindia.com>. When the complainant found that the respondent Lokita Enterprises registered the
domain name <hondaindia.com>, the complainant sought arbitration on the ground that the respondent’s
domain name was identical to the trademark of the complainant. It was intended to project a message to
surfers/consumers that the respondent is a subsidiary and/or associate company of the complainant in India.
The respondent has no trademark rights or legitimate interests in respect of the domain name at issue due to
the complainant’s long prior use of the mark and HONDA is not the legal name of the respondent. The Panel
held that the addition of the name of a geographical suffix to a trademark such as the addition of
‘India’ to HONDA is a common way of indicating subdivisions of global enterprises and does not
sufficiently alter the underlying mark to which it is added. Complainant’s trademark is famous
around the globe. A user of the internet on seeing the domain name “<hondaindia.com>” is likely
to assume that the complainant is the sponsor of or is associated with the website of Honda. The
respondent is deliberately attempting to create a likelihood of confusion for the Internet users. The
respondent has not used the name in connection with a bona fide offering of goods or services, has
not been commonly. The respondent therefore has no rights or legitimate interests in the domain
name at issue and hence the domain name, <hondaindia.com> is to be transferred to the
complainant.
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2004 D.P. Ahuja & Co., India
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INDIA l July 2004
Trademark/name having transborder reputation is protected
against trademark infringement in India
[Trademark YAHOO – Trademark infringement – Misappropriation of goodwill and reputation – Passing off]
Yahoo Inc. v Sarda Trading Company
Delhi High Court (February 2003)
Plaintiff, Yahoo Inc., filed a suit for trademark infringement against defendant, Sarda Trading Company. The
Plaintiff maintained that they had license for the 'Yahoo' mark and the defendant was passing off its goods as
that of Yahoo Inc.'s and were damaging the goodwill and reputation of the trademark/name ‘Yahoo’. The
Honourable court ruled that the defendant be restrained from marketing, distributing or selling tea
under the trademark/trade name ‘YAHOO’.
Trademark Office directed to call for search report for
pharmaceutical trademarks
[Trademarks BIOCILIN v BICILLIN – Trademark Application – Dismissal of Opposition – Confusion and deception]
Bio-Chem Pharmaceutical Industries v Astron Pharmaceuticals
Delhi High Court (January 15,2003)
The appellant, Bio-Chem Pharmaceutical Industries, proprietors of the trademark ‘Biocilin’ appealed
against the dismissal of their opposition to the registration of defendant, Astron Pharmaceuticals deceptively
similar trademark ‘Bicillin’. The Honourable Court, setting aside the order of the Registrar, allowed
Bio-Chem’s appeal and ruled that the phonetic similarity between the two trademarks was apparent
and would cause confusion. The Court decided that the Trademark Office should take precaution
by calling for an official search report from the Drug Controller pertaining to trademarks relating
to medicines.
Use of 'Kohinoor' as a trademark permissible
[Trademark KOHINOOR – Honest user – Not a coined word – Usage possible – Registration possible]
Sant Ram & Co. v Satnam Overseas
Delhi High Court (September 11, 2003)
Plaintiff, Sant Ram & Co. filed a suit against the Defendant, Satnam Overseas, opposing the registration and
use of the word “Kohinoor”, in relation to rice. The Honorable Court allowed the registration and held that
evidence on record proves that the defendant honestly adopted the word ”Kohinoor” as its
trademark. The word “Kohinoor” is not a coined word, but is the name of a precious diamond , hence
any person could pick up the word and use the same as its mark for product manufactured by it under
a bona fide belief that he is entitled to use the same.
Use of domain name similar to trademark considered to be
infringement
[Trademark REDBULL v Domain Name myredbull.com – Registered trademark – Infringement – Deceptive
similarity – No rights – Used in bad faith – Domain name to be transferred to the plaintiff]
Red Bull GmbH v Bayer Shipping & Trading Ltd.
WIPO Arbitration and Mediation Center, Administrative Panel Decision (June 3, 2003)
Complainant, Red Bull GmbH, filed an application against the use of the domain name <myredbull.com> by the
defendant, Bayer Shipping and Trading. The Administrative Panel granted the application in favour of
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the complainant and held that the domain name registered by the respondent is identical and
confusingly similar to the trademark of the plaintiff. The respondent has no legitimate rights to that
domain name which has been registered and used in bad faith, hence the respondents domain name
should be transferred to the plaintiff.
COPYRIGHTS
Delay in bringing action for copyright infringement is not sufficient
to defeat grant of injunction
[Allegation of Infringement – Registered mark – Intention to pass off – Laches – Interim Injunction]
Midas Hygiene Industries Pvt. Ltd. v Sudhir Bhatia
Supreme Court of India (January 22, 2004)
The appellant, Midas Hygiene filed an application for interim injunction against defendant Sudhir Bhatia for
infringement of copyright and passing off. The Honorable High Court granted the injunction and restrained the
defendant from infringing the appellant’s copyright. The respondents appealed to the Division Bench who vacated
the injunction on the ground of delay and laches in filing the suit. The plaintiff then filed an application against the
vacated injunction to the Supreme Court. The Honorable Supreme Court set aside the impugned order
and restored the injunction and held that the Division Bench had erred in vacating the injunction
merely on the ground of delay and laches as it is an established point in law that in cases of
infringement, an injunction must follow. Delay in bringing action is not sufficient to defeat grant of
injunction.
Delhi High Court rules against infringement of copyright in logo
[Copyright Infringement – Use of similar logo – Malafide intention apparent – Decree of perpetual injunction]
Fenner (India) Limited v Farms and Farms (India) Ltd.
Delhi High Court (March 26, 2004)
Plaintiff, Fenner (India) Limited filed a suit seeking decree for perpetual injunction against defendant Farms
and Farms (India) Ltd. for infringement of copyright and passing off. The plaintiff is a user of the registered
trademark “Fenner” and the logo of “F&F inverted in square” in India, which has acquired tremendous
reputation amongst the general public and has generated substantial and valuable goodwill.
The defendant markets farmlands and private orchards with the logo of “F&F inverted in square”, exactly
similar to the plaintiff’s logo. The defendant copied all the distinctive and essential features of the plaintiff’s
logo including get up, layout and design. The plaintiff alleged that such adoption displays the mala fide
intentions of the defendant, with a view to encroach upon the reputation and goodwill of the plaintiff.
The Delhi High Court passed a decree for perpetual injunction against the defendant restraining
them from infringement of copyright in the disputed logo and held that the logos of the plaintiff and
the defendant are substantially identical and that the defendant has dishonestly adopted the
plaintiff’s logo with a view to give an impression to the general public that the goods being sold by
the defendant are in fact the goods of the plaintiff.
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Godrej & Boyce restrained from infringement of copyright in
design
[Interim Injunction – Allegation of infringement – Interim injunction granted – Appeal to Division Bench – SLP to
Supreme Court – Trial Court directed to expedite proceedings]
N Rangaswamy v Godrej & Boyce Manufacturing Co. Ltd.
Madras High Court (August 29,2002)
Godrej & Boyce v N Rangaswamy
Madras High Court, DB (November 7,2002)
Godrej & Boyce Manufacturing Co. Ltd. v N Rangaswamy
Supreme Court of India (January 17, 2003)
N Rangaswamy, filed an application for interim injunction against Godrej & Boyce restraining them from
infringing his copyright on design of a pilfer proof locking system for liquid transportation and also from using
and adopting his copyright wholly or in part by making representations to any third parties while canvassing
for sale. The High Court of Madras held that, N Rangaswamy has made out a prima facie case and the balance
of convenience being in his favour, Godrej & Boyce has to be restrained. Godrej & Boyce, appealed against
the order to the Division Bench, Madras High Court, but the Court upheld the earlier judgment. Godrej & Boyce
then appealed to the Supreme Court, which held that, by consent of the parties, the orders of the
Division Bench and the Trial Court are set aside and the application filed by the respondent -
plaintiff is disposed off by directing the appellant to maintain separate accounts of the sales of the
debated locking system which are to be submitted with the Assistant Registrar of the High Court
every six months. The trial of the suit should be heard and disposed of as expeditiously as possible
by the Trial Court.
Idea cannot have a copyright
[Title - Infringement – Injunction application – Two productions entirely different – No action for infringement]
Star India Pvt Ltd. v Leo Burnett (India) Pvt. Ltd.
Bombay High Court (September 24,2002)
Plaintiff, Star India filed a suit for copyright infringement against defendant Leo Burnett Pvt. Ltd., stating that
there was substantial copying from their serial “Kyun Ki Saas Bhi Kabhi Bahu Thi”1 in the latter's commercial
advertisement titles "Kyun Ki Bahu Bhi Kabhi Saas Banegi"2 promoting a detergent powder; and that
considerable damage is being occasioned to the plaintiff due to continuous act of infringement of copyright. The
defendants contended that their work is a commercial advertisement of 30 seconds and not a film. Furthermore,
the two works are entirely different and one cannot be considered to be a copy of the other. The Honourable
Court refused to grant an injunction and held that when seen and compared, the two works prima facie
are different and there is no evidence of substantial copying or similarity between the two. The
question of infringement of any copyright of the plaintiff’s television serial, therefore, does not arise.
Literally translated from Hindi - "Because the mother-in-law was once a daughter-in-law" Literally translatd from Hindi - "Because the daughter-in-law will, at some time, become a mother-in-law" Logo is an artistic work protected by the Copyright Act
[Artistic Work – Copyright – Use is infringement – Injunction granted]
ICC Development International v Ever Green Service Station
Delhi High Court (January, 2003)
Plaintiff, ICC international, filed a suit seeking temporary injunction against the defendant, Ever Green
Service Station for copyright infringement of the logo and mascot of the plaintiff. The Honourable Court
granted an ex parte injunction on use of the logo by the defendants and held that they had failed to
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INDIA l July 2004
make a prima facie case, showing that in the course of a promotional campaign, they could use the
logo denoting black and white stripes of the zebra, especially in view of the fact that the logo is in
the nature of an artistic work, protected under the Copyright Act.
Publication of copyrighted work in breach of agreement restrained
[Publication – Existing agreement – Existing interim injunction – Copyright infringement – Injunction made
absolute]
The Chancellor Masters & Scholars of the University of Oxford v Orient Longman
Pvt. Ltd.
Delhi High Court (December 19, 2002)
Petitioner, Chancellor Masters and Scholars of the University of Oxford, filed a suit for permanent
injunction restraining defendant, Orient Longman from publication of a copyrighted work in breach of
agreement. The defendant under a subsisting agreement with the plaintiff had undertaken not to publish any
work on the same subject which might be regarded as conflicting with the copyrighted works of the plaintiff
without his consent. The defendants tried to renege from the agreement and printed similar books with intent
to sell to the same readership segment as that of the plaintiff without his consent. An ex parte ad interim
injunction was already in force against them on the same issue. The Honourable Court granted a
permanent injunction and held that the balance of convenience in the case is in favour of the plaintiff
who is likely to suffer irreparable injury if the ex parte ad interim injunction order is not confirmed.
Zee TV restrained from airing serial in violation of Copyright
[Television serial – Copying of concept and story – Violation of copyright restrained]
Sundial Communications v Zee Telefilms Ltd., & Another
Mumbai High Court (March 27, 2003)
Plaintiff, Sundial Communications, filed suit alleging that defendant, Zee TV, had copied the story and concept
of its serial ‘Krish Kanhaiyya’ in the latter's similarly titled serial "Kanhaiyya" and thereby, attempted to
misrepresent the plaintiff's serial as their own. The defendant contended that there are many dissimilarities
between the two serials. The Honourable Court after viewing both the serials restrained Zee TV from
airing its serial and held that the Plaintiff’s copyright has been violated in terms of form, manner,
arrangement and expression of the idea.
Intellectual Property Litigation Report 2004 l INDIA is for circulation among the clients and associates of
D.P. AHUJA & CO. This publication is not intended to be exhaustive and should not be acted upon without obtaining specific
advice. Whilst every effort has been made to ensure accuracy, no responsibility can be accepted for errors and omissions,
however caused. For further information, please contact us. We would welcome opinions, suggestions and queries.
2004 COPYRIGHT D.P. AHUJA & CO., INDIA This publication is copyright. No part may be reproduced or transmitted by any process or means without prior written permission.
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