This article is written by Purvi Khandelwal who is pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Trademark infringement has recently become the crime similar to pocket picking as small business owners are over desirous to achieve fame and money in no time and thus some of them choose to ride upon the already established goodwill of market players rather than building their own. In the quest of earning more without efforts such owners adopt the existing trademarks either exactly or modifying it in a way that is difficult to be differentiable.
And thus began the trademark war which forms the most trending topic of the 21st Century and the coming future.
Amongst the many matters that reach the Courts only some are able to bring out certain new interpretations of the existing provisions of the acts and statutes and those are worth reading.
In this article, few historic cases of trademark infringement are discussed that will be a read to treasure and will also try to bring out the highlights that forms the crux of the bulky judgments that shall be able to quench your thirst for knowledge without burdening your eyes after a long day at work and also without needing much of your time so that you have few minutes or hours more to chat with your family or watch another episode of your favorite show.
- PATEL FIELD MARSHAL AGENCIES LTD. V P.M. DIESELS LTD– The Field Marshal Case
The case where the SC was to adjudicate upon the Sections 46, 56, 107 and 111 of the Trade and Merchandise Marks Act of 1958 for infringement of the Registered Trademark “FIELD MARSHAL” owned by P.M. Diesels Ltd governed by the said Act where Section 46 says that if a trademark is registered without good intentions of using it or and the same has not been used continuously for five years, it can be removed from the register and Section 56 empowers the Tribunal to cancel the Registration of the Trademark if it is proved that any provisions have been contravened or any condition left unfulfilled on the basis of which the Registration was granted. Section 107 says that the application to challenge the Registered Trademark lays to High Court and not to the Registrar and Section 111 mandates the stay of suit if the application for rectification is pending before the Registrar or High Court for 3 months prior to commencement or if commenced, then for 3 months before the Facts are framed by the Court.
On basis of the above mentioned sections, the Court had to decide whether the Rectification proceedings instituted by the Appellant on the Respondents were acceptable or not when the Appellants contended that the rectification rights lies with the aggrieved person and such rights are granted by the trial Court.
The Supreme Court here favored the Respondents and held that the questions of validity of registration are to be decided by the Tribunal and not the Civil Court as well as the decision of the Tribunal will be binding on the Civil Court. It was also held that if the parties do not approach the Tribunal for rectification after the order of the Civil Court then the parties relinquish the plea to rectification and the intent of Section 111 was clarified by the Apex Court saying that by enacting such section 111 legislature seeks to address the question of invalidity in the first instance and once the plea of rectification has been raised and settled with, the suit shall proceed with other issues.
- TOYOTA JIDOSHA KABUSHIKI KAISA V. M/S PRIUS AUTO INDUSTRIES LTD.
Who is Prius (Prior)?
The instant case was basically the one that once again brought out the age old principle that the trademark rights are territorial and not global and where the Supreme Court also described and explained the two most important doctrine of the Trademark Law helpful in determining the rightful owner of the Trademark “PRIUS” in question- Universality Principle and Territoriality Doctrine. The extract from the remarkable Judgment by J. Gogoi is as follows:
“ If goodwill or reputation in the particular jurisdiction (in India) is not established by the plaintiff, no other issue really would need any further examination to determine the extent of the plaintiff’s right in the action of passing off that it had brought against the defendants in the Delhi High Court. Consequently, even if we are to disagree with the view of the Division Bench of the High Court in accepting the defendant’s version of the origin of the mark ‘Prius’, the eventual conclusion of the Division Bench will, nonetheless, have to be sustained. We cannot help but also to observe that in the present case the plaintiff’s delayed approach to the Courts has remained unexplained. Such delay cannot be allowed to work to the prejudice of the defendants who had kept on using its registered mark to market its goods during the inordinately long period of silence maintained by the plaintiff.”
To know more about Trademark please visit
- PARAMOUNT SURGIMED LIMITED V PARAMOUNT BED INDIA PRIVATE LIMITED & ORS
Who’s to climb the Mount?
A clear case where the principle of ‘He who comes to equity must come with clean hands’ was disrespected by the Plaintiff who obtained interim injunction by not mentioning true details and was subsequently overruled by Justice Inderjeet Kaur where the Defendants were allowed to continue trading and manufacturing the hospital beds under the name of Paramount so as to prevent the irreparable loss and damage to their business which they had built up over the years.
- RAJEEV SAUMITRA V. NEETU SINGH & ORS.
What if the owner becomes an infringer?
This is the one of the Case which deals with the provisions of Trademarks Act, 1999 as well as Companies Act, 2013 where one of the Directors of Paramount acted in bad faith and started using the trademark of the Company for personal gains and was subsequently punished by the Court to repay to the Company the undue gain already made. However the present case was decided under Section 166 of the Companies Act, 2013 but the reliance was made on Trademarks Act for the undue use of the Trademark by none other than one of the owner itself.
- M/S BENGAL WATERPROOF LIMITED VS M/S BOMBAY WATERPROOF MANUFACTURING COMPANY & ANOTHER
Where to sue the Duck?
The age old case is still alive with its impactful judgment where the trademark in question was DUCK BACK and was infringed as DACK BACK of which the suit was refused in the Civil Court and High Court as being barred by Order II Rule 2 Sub-rule 3 CPC whose judgment were reversed by the SC saying that both the Court have faltered in Judgment and the instant case shall be tried accordingly.
- COCA COLA VS BISLERI
Who is going to take the “MAAZA”?
Well it is mandatory to mention the famous case of coca cola and bisleri over the trademark Maaza where Bisleri assigned its trademark Maaza to Coca Cola to sell and export products in and from India and immediately after, filed a trademark Application in Turkey. It was held that the rights over the trademark were completely assigned to Coca Cola and Bisleri cannot use the trademark in or outside India.
- WHATMAN INTERNATIONAL LTD V. P MEHTA AND OTHERS
Wait.. How much does a Filter paper Cost?
The famous Indian case where Whatman received a gigantic compensation of 3.85 crores from the Defendant, who traded upon its goodwill and caused damages to various intellectual property rights of Plaintiff in the last 25 years. This was the most trending case where the true value of trademark was realized and the counterfeited filter papers which were the exact copy of Plaintiff’s Filter paper sold under various trademarks by the Defendant and his acts of malafide intentions was permanently stayed.
- ICC DEVELOPMENT (INTERNATIONAL) LTD V ARVEE ENTERPRISES
Who won the World Cup?
This is one of the 2 cases related to Ambush Marketing (trend where Advertising is done through ambushing the event to compete for exposure) in India till date. Here the Plaintiff had the Registration for “ICC CRICKET WORLD CUP SOUTH AFRICA 2003” and logo and the mascot “Dazzler” in India and worldwide and chose to file a suit to stop the Defendant who was advertising as ‘Philips: Diwali Manao World Cup Jao’ and ‘Buy a Philips Audio System, win a ticket to World Cup’. It was held by the Court that World Cup is a generic word and the Defendant has not used the Plaintiff’s Logo or Mascot ‘Dazzler’, neither is the Event of World Cup protected by any International Treaty or Domestic Law, therefore the advertising campaign offering tickets of the Event cannot be held unlawful.
- N.R. DONGRE V. WHIRLPOOL CORPORATION
Pool only to swim..
Another case where the reputation of the trademark was trans-border and the only determining factor that prevented even the registered owner of the Trademark to use the said mark. It was held that WHIRLPOOL has been since long associated only with WHIRLPOOL CORPORATION and in no ways the mark WHIRLPOOL can be dismantled from the same as its reputation extends to India and thus even the Registered user in India cannot be allowed to use the said trademark for the same or similar products.
- STARBUCKS COFFEE V SARDARBUKSH COFFEE
How many Bucks for coffee?
A funny yet interesting case where the famous Starbucks became the victim of smart minds of Indian Infringers where the man used Sardar instead of Star yet in such a deceptive way and on such a large scale that people were made to believe they belong to the same owner. However the Court allowed the Defendant the right to use the modified version of the Trademark Sardar Baksh to Sardarji Baksh and also gave Defendant the chance to Defendant to sue the person who uses Baksh in future.
Trademark Infringement is the issue of the moment and has attracted with it the laws related not only to Intellectual Property but also Tech Laws, Media Laws, Sports Laws, Marketing Laws etc. The Trademark Legal framework has to be a combination of National and International Laws and shall work in consonance with Trans-border Laws where the Judgments from various countries being used as citations shall act as a guide towards framing a new legal structure in India.
- Prof.(Dr.) V.K. Ahuja & Dr. Archa Vashishtha (Eds.), Intellectual Property Rights Contemporary Developments, Published by Thomson Reuters, 2020
- V.J. Taraporevala’s Law of Intellectual Property, Third Edition, 2019, Published by Thomson Reuters
Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join: