Infringement of a trademark
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This article is written by Ronika Tater, from the University of Petroleum and Energy Studies, School of Law. In this article, she discusses the relevance and the definition of trademark law with the support of recent case laws.

Introduction

The basic aspect of trademark law is to eliminate confusion and safeguard the original marks thereby protecting the consumer interest. In recent times, the COVID-19 has led to a surge in the supply of drugs, vaccines, and other medical equipment. Considering this, there have been many disputes regarding trademark infringement for such medicines and hence, there is an urge for granting protection whenever a registered trademark is infringed against a person who is not a registered holder and uses it in the course of his trademark identical to the trademark as that to the originally registered trademark even if the business is similar or not. Also, such cases cause deception and confusion leading to misrepresentation in the minds of the public thus leading to defeating the basic aspect of the trademark case. Hence, the judgment of the below-mentioned cases is essential to have a better understanding of intellectual property law.

What is trademark

A trademark is a mark of uniqueness and a way of identifying a new product or service and it is not just a logo, but it includes word, phrase, letter, number, special character, icon, sound, smell, size, the quality of packaging, the quantity or a combination of all these. The primary objective of the trademark law is to protect and prevent the rights of the person or group of persons or company who manufacture goods and sells and the unique service provided by them from the fraudulent invasion from others with similar trademarks. In the case Dau Dayal v. State of Uttar Pradesh (1958), the Supreme Court stated that the trademark is “there to protect the uniqueness and the quality of an invention made by a particular person and giving him the right to have a benefit from his effort”. In India, the Trademark law is governed by the Trade Marks Act of 1999.

Infringement of a trademark

Section 27(1) of the Trademarks Act, 1999 provides that a trademark holder shall be entitled to initiate a legal proceeding against anyone to prevent or recover damages for the infringement of a registered trademark. Infringement happens when someone else uses the registered trademark of the owner without his permission or consent. Trademark infringement claims comprise the issues of likelihood of confusion in the circumstances where the consumers are likely to be confused or misled about marks being used by two or more parties. In such a circumstance, the plaintiff needs to show that due to the similar marks many consumers are likely to be confused or misled about the source of the product that bears these marks. On the other hand, dilution is a concept in trademark law forbidding the use of a famous or well-known trademark in such a way that it would lessen its distinctness and uniqueness.

What constitutes an infringement of the trademark

Section 29 of the Trademarks Act states infringement of trademark and the main ingredients as per Section 29(1) of the Act is below-mentioned:

  • The plaintiff’s mark must be registered as per the Act.
  • The defendant’s trademark must be identical or similar to that of the plaintiff’s registered mark.
  • The defendant has either taken any essential feature of the mark or whole of the mark and then made some alteration.
  • The defendant uses the trademark for trade with goods and services.
  • The defendant trademark must be in printed form.
  • The defendant uses the trademark without the permission of the user causing it to be unauthorized.

In the recent case of Cutis Biotech v. Serum Institute of India (2021), the plaintiff coined the word ‘COVISHIELD’ in respect of pharmaceutical and other related products as mentioned by the trademark register. However, the defendant has also coined the similar trademark ‘COVISHIELD’ used for manufacturing a vaccine for preventing COVID-19 and the plaintiff has no connection with the vaccine for human use. The defendant also claimed that there is no possibility of any confusion in the minds of an ordinary person with average intelligence to distinguish between the two products. Hence the court in this case held:

  1. Visual appearance when compared as a whole, the product is different.
  2. No prima facie intention on the part of the defendant to create confusion in the mind of the public and further, there seems to be no likelihood to cause injury or divert business of the plaintiff or to harm the reputation or goodwill of the plaintiff.
  3. Plaintiff did not approach the court with clean hands.

The Bombay High Court dismissed the appeal and concluded the following:

“A temporary injunction directing Serum Institute to discontinue the use of mark ‘Covishield’ for its vaccine will cause confusion and disruption in the vaccine administration program of the State”. This means that granting an injunction would affect on a large scale beyond the parties of the suit.

Arudra Engineering (P) Ltd. v. Patanjali Ayurved Ltd., 2020

In Arudra Engineering (P) Ltd. v. Patanjali Ayurved Ltd. (2020), (Coronil case) the Madras High Court headed by Justice C.V. Karthikeyan by an order granted a temporary injunction and restrained “Patanjali ” from using the word ‘CORONIL’ as the plaintiff had already registered a trademark as early as 1993 and it is still valid. However, later on, the case was referred to the division bench of the Madras High Court who set aside the order on the basis that there was no prima facie case of infringement for the trademark.

Facts

The plaintiff is a private limited company registered under the Companies Act, 1956 and is engaged in the business of chemical cleaning and manufacturing of material handling systems and polymeric epoxies for various factories not only in India but also abroad such as Srilanka, Oman Philippines, Vietnam, Singapore, and others. It has also registered the trademark ‘CORONIL- 92 B’ for its product for industrial cleaning, chemical preparations for industrial use and the plaintiff has been extending it from time to time as per the law. The background behind the name for the trademark has been made as their product is in liquid form used by heaving industrial machinery to prevent corrosion to reduce depreciation in the values of the units during industrial use. The company deals its product with several huge industrial units such as BHEL, NTPC Limited, Reliance Industrial Ltd, Indian Oil Corporation, and other such companies. The defendant on the other side has prepared medicine with the trademark name for its product ‘CORONIL’ for the cure of the COVID-19 or as an immunity booster to prevent cough and cold which is essential for the country today.

Issue 

The main issues raised among the parties were whether the registered trademark of the plaintiff can be protected under Section 29(4) of the Trademark Act. Section 29(4) of the Act states “that a registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which: 

  1. Is identical with or similar to the registered trademark; and 
  2. Is used with goods or services which are not similar to those for which the trademark is registered; and 
  3. The registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trademark.”

Hence, to prove a case of trademark infringement in the case of similar goods and services, all the above-mentioned conditions need to be fulfilled to prove whether or whether not there is a case of trademark infringement:

  1. Whether the registered trademark ‘CORONIL’ of the plaintiff can be protected under section 29(4) of the Trademarks Act, 1999?
  2. Whether the defendants were infringing the plaintiff’s registered mark under section 29(4) of the Trademarks Act, 1999?

Order by the court

The Madras High Court on August 6, 2020, put an order that the plaintiff has established a substantial reputation for their product in India and also outside the country, and its sales are affected using the trademark Coronil. On the other hand, the defendant claims that successful clinical trials have been conducted for their product but the details for the said test has not been available and also stated that the defendant product has been banned in the State of Maharashtra and the State of Uttarakhand due to the effectiveness of the medicine claimed by the defendant. It is also noted that several complaints have been made against the defendant’s product in the market. 

Further, the Madras High Court has accepted the plaintiff’s remark on Section 29(4) of the Trademarks Act for granting protection of their registered trademark which has been infringed by the defendant who is not a registered proprietor and uses identical or similar trademark nonetheless the business is similar or not. This order is essential to understand the law stated under Section 29(4)  of the Trademarks Act and protect the interest of the registered owner having a similar or identical name of the product. As in the present case, the similarity in the name is clear. The name and the spelling used by the defendant are the same and the law is clear on the point that the plaintiff has a registered trademark Coronil and the registration still exists. Nonetheless, the defendant can go to the market with his product but with a different name.

Judgment

The division bench of the Madras High Court after looking at the facts and circumstances of the case relied on the case of Rhizome Distilleries Private Limited v. Union of India (2012), where the owner of the registered trademark “Imperial Blue” applied “Rhizome’s Imperial Gold” before the Intellectual Property Appellate Board. The board held that the registration of the word “Imperial Gold ” is in contravention of Section 11 of the Trademark Act. It also observed that composite marks are to look as whole rather than breaking the markup of their parts, this is known as the anti-dissection rule. Therefore, the defendant and the plaintiff have to obtain separate registration for each part of the trademark separately to maintain the case of infringement. 

Further, it is essential to note that both the plaintiff and the defendant are dealing with different classes of consumers and there is no case made out for infringement even if the primary objective of the likelihood of confusion was one of the main criteria under Section 29(4) of the Trademarks Act. Hence, the August 6, 2020 order has been set aside which was passed by Justice CV Karthikeyan who had allowed a trademark infringement claim by Chennai-based Arudra Engineering Pvt. Ltd. The division bench of the Madras High Court set aside a single judge order restraining Patanjali Ayurved from using the trademark ‘CORONIL’ as a cure to Coronavirus or immunity booster product by stating that there was no prima facie case of trademark infringement against Patanjali under Section 29(4)  of the Trademarks Act.

Conclusion

It is essential to note in the instant case, that registration has been granted to the plaintiff over the label with words and alpha numerals as a composite mark and not as a word for ‘CORONIL’ itself. Thus, the fact put by the defendant on the trademark of its product ‘CORONIL’ as an immunity booster to prevent cold and cough in the prevalent Covid-19 times does not take unfair advantage of nor dilutes the distinct character of the plaintiff trademark. Hence, for Section 29(4)  of the Trademarks Act, neither the defendant nor the plaintiff can claim monopoly over the word “CORONIL” as it was registered as a part of the composite mark.

References

 


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