This article is written by Rebecca Dias, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws, from LawSikho.

Introduction

Trademark refers to differentiating aspects or marks used among others by a legal entity, firm, individual, trade and business. What makes it the “pièce de résistance” of such economic actors is the loyalty and goodwill is summons. Consumers are able to identify a certain brand in the market place because of it. 

Having a registered Trademark gives the owner a right to prosecute anyone who wrongfully uses it as their own being neither the proprietor or licensee. Such circumstances give rise to “Trademark Infringement”. Even if the Trademark is not registered, the owner or such other person under their authority can file a suit for “Passing Off”. 

The “ ®” symbol is used to give caution that the words, phrases, logo, etc. preceding it is a registered trademark. Before such registration it is prohibited. The “TM” mark indicates that an application for Trademark registration of the word, phrase, logo, etc., is under consideration. 

In India, trade mark is codified under the Trade Marks Act, 1999. Additionally, we also follow common law principles being a common law country. Therefore, legal remedies exist for the violations of passing-off and infringement.

Passing-off essentially is a civil wrong i.e. a tort,  to protect trade marks that are unregistered. It aims to protect the goodwill established by a person, product, business, service etc.  The trade mark symbolises a standard that is expected from such person, product, business, service etc. This type of violation entails false representation by some other of the original owner or authorised person as the case may be.  The trade mark need not be registered for a civil or criminal action against such violation. Infringement refers to violation of the rights bestowed upon a person, business s the case may be, who is the registered user. In line with common law principles, protects the rights vested in a prior user against such registered user.  Section 135 of the Trade Marks Act, 1999 empowers the court to grant an injunction in a suit for passing-off or infringement. 

Landmark Cases 

• Nippon Steel & Sumitomo Metal Corporation (hereafter referred to as “NMC”) vs. Kishor D Jain and Another (hereafter referred to as “KDJ”).

Court: High Court of Bombay

Highlight: Trademark infringement dispute with an award of Rupees 5 Crores.

NMC filed a lawsuit against the KDJ for selling counterfeit iron pipes which appeared to be similar to the plaintiff, NMC’s products. A suit for a permanent injunction was filed by Yanbu Steel Company from Saudi Arabia. Yanbu Steel sourced the products of KDJ being it to be manufacture by NMC. Further, KDJ supplied the pipes to Yanbu Steel along with falsified certificates bearing the trademark and logo of NMC, claiming that they were sent by NMC.

An ex parte ad interim injunction was passed by the Hon’ble Court which put a restraint on KDJ from infringing on the NMC’s registered trademarks. Receivers were appointed according to visit KDJ’s premises to seize other infringing products including unbranded pipes and electronic records identical to NMC. The nature of NMC’s products demand high level of quality check due to the inherent nature of their use. The Hon’ble Court observed negative impact on the goodwill and reputation of NMC and India. 

Justice SJ Kathawalla awarded costs of Rupees five crores upon request of NMC. KDJ was ordered to pay the amount to the Tata Memorial Hospital, Mumbai. This hospital is known for its centre for cancer treatment and research. Lastly, KDJ had to provide personal undertakings that intimated every entity who were in the position of Yanbu Steel about the true nature of the supplied pipes. 

• Crocs Inc (hereafter referred to as “Crocs”) vs. Bata India limited, Liberty Shoes Ltd. and Ors. (hereafter referred to as “Bata”).

Court: High Court of Delhi.

Highlight: When design can constitute a trademark. 

Initially Crocs filed for a design infringement but it was noted that design upon which the suit was filed was not found to be new or original. Therefore, Crocs moved forward for an injunction based on “passing off of trademark” which is a Common law ground.Crocs failed to show the Hon’ble Court any additional feature apart from the design which can be used as a trademark. While interpreting the Design Act, 1872 the Hon’ble Court stated that the legislative intent of the Act is to grant limited monopoly by design registration and after the term of registration, it should be open for anyone to use the said design.

Further, it was held that a registered design cannot constitute a trademark. It has to be proved that there are features apart from those registered as a design in addition to which it is used as a trademark accompanied by goodwill. These additional features can be protected as a trademark. Ordinarily an action of infringement can be filed if there is a copy of a registered design.

• Exxon Mobil Corporation (hereafter referred to as “Exxon”) vs.  Exoncorp Private limited (hereafter referred to as “Exoncorp”).

Court: High Court of Delhi.

Highlight: Granted permanent injunction for infringement of trademark and categorized all IT services under a single category of services for the purpose of trademark infringement.

Exxon is inter alia in the business of petroleum, oil products, research and an IT service company. In this matter Exoncorp another company was using the mark “EXON” as a trademark for IT services.  Exoncorp argued against the injunction stating that the Hon’ble Court did not have territorial jurisdiction in the matter and that the services of both the parties were different. Exoncorp was based in Chennai with no office in Delhi. The Hon’ble Court held that both the marks of the parties almost mirrored each other. It held that Exxon was entitled to protect its mark in also respect of IT services.

Further, it held that in this period of time IT is inherent in many areas of business. All IT services were put under this umbrella term therefore all kinds of IT services were considered to be of like nature. In the end Exxon was given an injunction the Hon’ble Court addressed the jurisdictional question and held that such services have universal presence thus its use falls with the jurisdiction of the Hon’ble Court 

• Bigtree Entertainment Private Limited (hereafter referred to as “Bigtree”) vs. D Sharma and Anr. (hereafter referred to as “DS”).

Court: High Court of Delhi.

Highlight: Denial of exclusivity for a generic term. 

Bigtree owns “BOOKMYSHOW” while DS owns “BOOKMYEVENT” they both inter alia facilitate online ticketing. The question before the Hon’ble Court among others was whether Bigtree can get the exclusive rights over “BOOKMY” (hereinafter referred to as “BM”).

Bigtree submitted that it had acquired the right in the trademark BM and it had become synonymous with its brand thus being an essential part of its trademark highlighting “BOOKMYSHOW” and “BOOKMY” was pending at the time of the suit. While DS argues that BM was a generic term especially in their industry and hence cannot be trademarked.

The Hon’ble Court denied Bigtree an injunction. It ruled against the above submissions and that BM is a common term in English being descriptive in nature of the industry of operation. The Hon’ble Court also noted that the font style and appearance of the marks are quite district. Thus, enabling the customer in identification.

• Milmet Oftho Industries and others (hereafter referred to as “MOI”) vs. Allergan Inc. (hereafter referred to as “AI”)

Court: Hon’ble Supreme Court Cases 

Highlight: Registration conundrum 

MOI used the trademark “OCUFLOX” for its product.  They claimed that, in August 2003 the United States based Food and Drug Administration had granted its trademark application for registration but the trademark registration in India was pending since September, 1993.MOI further claimed that the name for their eye and ear medicine was derived from a combination of the terms “ocular”, meaning relating to eyes or vision or sight and “ciprofloxacin hcl” an antibiotic drug used in the medicine.

AI claimed that the medicine “OCULFOX” was the mark under which their medicine was sold. This name was derived from the use of the compound “ofloxacin” in the product.  AI obtained an ex-parte injunction for passing-off against MOI in 1996 which was vacated in 19997. By an appeal this matter was placed before the Hon’ble Supreme Court, placed reliance on the doctrine of trans-border reputation for this matter and extended the protection to AI citing that they were first in the market from a global perspective and therefore, whether or not they were first in the Indian market was therefore not important. This case also laid down that products in the field of health care and medicine should be free from deception and confusion of any kind, and be treated with great judicial scrutiny while keeping public welfare and interest in the mind.

• Arsenal Football Club (hereafter referred to as “AFC”) vs. Matthew Reed (hereafter referred to as “MR”)

Court: Hon’ble High Court of Justice of England and Wales  

Highlight: Trade mark being a sign of origin.   

AFC had in 1989 registered two trademarks, which it sold through its authorised stores as “official products”. MR sold football among others reproducing Arsenal’s trademarks. MR also sold some official products. But the rest was sold under a disclaimer which explained that only products marked with official labels were the official Arsenal merchandise. 

The Hon’ble High Court of Justice of England and Wales had denied both the allegations of passing off and trademark infringement as they concluded that there was no actual confusion, due to the labelling.; Additionally, the sings on the products attached by MR were perceived by the general public as “badges of support” and not indications of source.

The Hon’ble High Court of Justice of England and Wales referred certain questions to the Hon’ble European Court of Justice which held that it is irrespective of whether the marks were understood as a badge of support for AFC, and that MR jeopardised the “guarantee of origin” principle, which is essentially the matter of trademark. Therefore, Arsenal was entitled to sue for infringement.

• Christian Louboutin Sas (hereinafter referred to as “CL”) v.  Abubaker (herein after referred to as “AB”) (2018) 250 DLT 475 

Court: Hon’ble High Court of Delhi 

Highlight: Sole trade mark. 

 CL is widely known for its signature “RED SOLE” high-heeled shoes with a registered trademark of it in India. AB at that time was a sole proprietor bearing name M/s VERONICA. AB had sold its shoes with that signature red sole under the trademark “VERONICA”. Therefore, CL instituted a suit at the Hon’ble High Court of Delhi. Ultimately, the Hon’ble court held that the signature red sole of the CL cannot be considered as a trade mark under the provisions of Sections 2(m) and 2(zb) of the Trade Marks Act, 1999. Further, the benefit of the proviso to Section 9(1) of the Act read along with Section 32 of the Act would be available to the red colour which the CL claimed to be the exclusive owner of. 

• Yahoo! Incorporated (hereinafter referred to as “YI”) vs. Akash Arora and Another (hereinafter referred to as “AA”) 1999 (19) PTC 201 (Del)

Court: Hon’ble High Court of Delhi 

Highlight: First decision for the protection of intellectual property rights on the internet/ Landmark judgement on cybersquatting. 

The Hon’ble High Court of Delhi held that, a “domain name” functioned like a trade mark and therefore it was entitled to the same protection. As the domain names of the YI was ‘Yahoo!’ and AA was ‘Yahoo India!’. Both domain names were phonetically similar and otherwise identical. Therefore, the possibility of confusion to internet users was very high who might draw connection between both being somehow related. The disclaimer utilised by AA was not adequate protection against such deceptive similarity. It was also irrelevant even if the term “yahoo” was in the dictionary.  The matter was ruled in the favour of YI as the domain name “Yahoo!” was widely associated it.

• DM entertainment (hereinafter referred to as “DM”) vs. Baby Gift House and Others (hereinafter referred to as “BG”) MANU/DE/2043/2010.

Court: Hon’ble High Court of Delhi 

Highlight: Merchandising. 

Daler Mehndi, at that time was a pop-star. DM was primarily created to manager his career as his stardom grew. The cause of dispute is that BG sold miniature toys of Daler Mehndi cashing out on his stardom. Aggrieved by this act DM filed for permanent injunction before the Hon’ble High Court of Delhi against BG. DM was assigned all the rights, titles and interests in the personality of Daler Mehndi along with the trade mark, “Daler Mehndi”. Hence, the use by BG was unauthorised and unlicensed. Thereby infringing the right to publicity of Daler Mehndi and passing-off. Section 29 of the Trademark Act, 1999 provides that use of any mark, in course of trade which is identical or deceptively similar to a registered mark but if a person is not entitled or licensed to use such mark shall be deemed to infringe the rights of registered person, as the case may be.

After considering the submissions of both the parties the Hon’ble court held that right to publicity of Daler Mehndi was infringed. BG was held to be liable for false endorsement and passing-off as they capitalised on the trade mark by unauthorised means which was likely to cause confusion in the minds of the purchasers. But it was also pointed out at freedom of speech under the Constitutions permitted expression of famous persons/ celebrities in a parody, caricature etc.

•  Glenmark Pharmaceuticals Limited (hereinafter referred to as “GPL”) vs. Curetech Skincare and Another (hereinafter referred to as “CS”) 2018 (76) PTC 114 (Bom).

Court: Hon’ble High Court of Bombay 

Highlight: Merchanting. 

GPL manufactures and sold the product under the trademark of CANDID- B which was an anti-fungal cream. CS was a contracted as a manufacturer for Galpha Laboratories, which was the proprietor of a drug similar to GPL which Galpha Laboratories sold under the trade name Clodid – B.  The product had similar artwork and packaging. Aggrieved by this GPL filed a suit against the CS alleging infringement of their trade mark before the Hon’ble High Court of Bombay. The Hon’ble court opined that CS had copied the trade mark of GPL, and therefore infringed the GPL’s mark.

The Hon’ble Court held that that Galpha Laboratories had infringed the intellectual property rights of the GPL and reprimanded the practices of using substandard products by CS. Additionally, it also awarded exemplary damages amounting to Rs. 1.5 Crore. Upon the request of GPL these damages were donated to the Kerala Chief Ministers Distress Relief Fund.  This cost aimed to deter such behaviour from manufacturers keeping public health, interest and welfare as the primary consideration in matters of healthcare and medicine. Thus, reinforcing the onus on the manufacturers to maintain quality and above all safety in such matters. 

Conclusion

The above cases show the importance of courts in interpreting the law and protecting the intellectual property in the market. The trust bestowed in the trade mark signifies the blind faith of a consumer.  In matters of construction and healthcare, for example, this is of great significance. Hence, trade marks need to be protected and rights originating from them needs to be enforced. 

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