Groundless Threats of Legal Proceedings: An Analysis under the Trade Marks Act, 1999
by Jawad Shaikh* and Aparna Chaturvedi**
Trade Marks Act
Bombay HC grants temporary injunction to Metro Brands Ltd. for mark ‘MOCHI’ against mark ‘DESIMOCHI’; declares ‘MOCHI’ as a well-known mark
Every trade mark registration is separate and independent and a disclaimer in one registration cannot be read or imported into another. In comparing marks as a whole, mere addition of a generic prefix by defendant will not negate the actionable similarity between the rival marks where defendants’ mark contains whole of applicant’s mark (particularly the distinctive/leading/memorable/essential feature).
‘Amul is a well-known mark’; Delhi High Court restrains Bio Logic and Psychotropics India Pvt Ltd from using mark similar to ‘AMUL’
No plausible explanation was provided by the defendants as to why the trade mark ‘AMUL’ was adopted. No written statement was filed on behalf of the defendants. The conduct of the defendants highlighted their mala fide and dishonesty in adopting the same mark, as that of the plaintiffs’.
Delhi High Court temporarily restrains Star Hospitality from using mark ‘SOCIAL’; grants interim injunction to Impresario Entertainment and Hospitality (P) Ltd.
“An average consumer with an imperfect recollection is likely to be deceived into thinking that the plaintiff has opened a new ‘SOCIAL’ outlet in Vadodara, Gujarat where the defendant is operating its outlet.”
Delhi High Court grants interim injunction against T-Series from using “Aashiqui” title in their proposed film
The term “Aashiqui” does not describe the general category of goods or services (films) but instead functions as a distinctive brand identifier for the Aashiqui Franchise.
‘Associate Managers appointed u/S. 3(2) of Trade Marks Act are not empowered to pass quasi-judicial orders’; Calcutta HC
The Registrar dealing with an application under the Trade Marks Act is a quasi-judicial and delegation of power under Section 3(2) is an administrative power and as such the Associate Managers are not empowered to pass quasi-judicial orders.
‘Ordinary common man will be confused’; Bombay HC grants ad-interim injunction to Glenmark Pharmaceuticals for mark “ZITA-MET” against Gleck Pharma’s mark “XIGAMET”
The Court stated that physicians, doctors, and chemists are knowledgeable in their field, however they are not infallible, and in respect of medicinal and pharmaceutical products there cannot be any leeway for mistakes, since even a possibility of a mistake may prove fatal to the consumers.
Obligation to stay proceedings in contingencies spoken of in S.124(1) of the Trade Marks Act does not stand obviated consequent to abolition of IPAB: Delhi High Court
Notwithstanding the abolition of IPAB and the power of rectification reverting to the High Court, a Trial Judge would have to stay in its hands once it is apprised of pendency of a rectification.
‘Fair and Handsome’ v. ‘Glow and Handsome’; Calcutta HC rules in favour of Emami in Passing Off Dispute Against Hindustan Unilever
Unfair advantage through conscious adoption of a competitor’s mark leads to potential confusion and deception”
‘AMUL’ has gained wide, comprehensive and nation-wide reputation; its protection transcends all classes having been declared a well-known mark: Delhi HC
“What is striking, in this case, is that Respondent 1 has produced no document whatsoever which would prove their use since 1957, as claimed.”
‘Right to use one’s name on one’s goods cannot be compromised’; Delhi HC denies injunction to Jindal Industries for mark ‘JINDAL’ against mark ‘RN JINDAL SS TUBES’
“The risk of having others bona fide using ‘JINDAL’ as a name for their products, and in the marks used on their products, is a risk that plaintiff consciously took, when it obtained registration of the mark ‘JINDAL’.”
Delhi High Court grants interim injunction to TiE Inc for its mark ‘TIE’/ ‘TiE Global’/ ‘THE INDUS ENTREPRENEUR’
“Balance of convenience lies in favour of plaintiff, and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.”
Delhi High Court denies interim injunction to Khadi and Village Industries Commission in a trade mark infringement dispute
“The terminus ad quem, by which date the plaintiff has to prove the acquisition of the requisite goodwill and reputation for a plea of passing off to succeed, is the date of commencement, by the defendant, of the rival mark.”
[Trade mark infringement] Madras High Court directs Registrar to notify the mark ‘Royal Enfield’ in register of well-known marks
Madras High Court said that in respect of the motorcycle industry, the trade mark ‘Royal Enfield’ is well-known, not only in India, but also in abroad. Their annual reports also prove that their turnover runs into several hundreds of crores of rupees and they have carved a niche for themselves in the motorcycle industry.
Beyond the Grave: Exploring the Legality of Posthumous Publicity Rights
by Dr Pratima Narayan*
‘CruzOil’ being a composite mark is excluded from Section 9(1)(b) of the Trade Marks Act and is registrable: Delhi High Court
The mark having a combination of words and devices had to be considered as a whole for the purposes of grant of registration.
Police not allowed to seal factory premises under Section 115 of Trade Marks Act: Bombay High Court
Bombay High Court explained that there is no power vested in the police under Section 115(4) of Trade Marks Act, 1999 to seal the factory premises, where the incriminating articles are situated.
Arbitrability of Intellectual Property Rights’ Disputes: An Affirmative Step
by Yash Vardhan Garu and Hetvi Mehta