Key Decisions on Trademark Violation and Passing Off

In establishing trademark infringement, the essential criterion is demonstrating that the infringing mark is either identical or deceptively similar to the registered mark. Conversely, in proving passing off, it becomes imperative to illustrate that the marks are either identical or deceptively similar in a manner likely to mislead or cause confusion, thereby harming the business of the concerned company.

When a trademark is licensed, its protection is confined to specific product types, and legal action for infringement can be taken solely within the scope of these goods. On the other hand, in passing off actions, the similarity between the marks need not be exact; they can be similar or even different.

Landmark Case: DM Entertainment v. Baby Gift House and Ors.

Daler Mehndi, a prominent Indian composer, lyricist, and singer, established D.M. Entertainment Pvt. Ltd. in 1996, with “DM” representing his initials. The company aimed to support Daler Mehndi’s career, raise funds for charitable causes, and finance the DALER MEHNDI GREEN DRIVE project. Daler Mehndi assigned all his advertising, commercial endorsement, and related privileges to the company.

The case emerged when the defendants were selling dolls resembling Daler Mehndi’s likeness, imported from China, and featuring a playback of some of his compositions. D.M. Entertainment filed a case in the Delhi High Court, asserting that importing and selling such dolls constituted a clear violation of Daler Mehndi’s right to control the commercial use of his persona.

Upon examining the case and the claims put forth by D.M. Entertainment, the Court held the defendants accountable for breaching the right of publicity, false endorsement, and passing off. The defendants received a permanent injunction along with nominal damages. As they did not contest the plaintiff’s lawsuit, the decision was rendered ex parte.

MILMET OFTHO INDUSTRIES AND ORS. V. ALLERGAN INC.

The respondents sought an injunction to prohibit the use of the “OCUFLOX” mark in connection with eye care products, claiming to be the first to use this trademark globally, starting on September 9, 1992. The appellants also marketed a product named “OCUFLOX,” an herbal preparation with CIPROFLOXACIN HCL for treating eye and ear infections.

During the litigation, it was revealed that the respondent’s product was not being sold in India, where the appellants had launched their product. Consequently, the respondents were deemed ineligible for an injunction. The Single Judge’s decision from the High Court was overturned in the respondents’ appeal, establishing their priority in the business and granting them the right to an injunction.

The Supreme Court, in line with the principles outlined in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., emphasized the need for meticulous examination in cases involving medicinal products. It highlighted the potentially severe consequences of confusion over marks on medicinal products.

The Court observed that a conflict could arise between the use of a mark in India and its use by another entity outside India. It stressed the importance of preventing an anomalous situation where a globally identified mark for a drug could coexist with an equivalent mark for a similar drug sold in India.

In this particular case, the Supreme Court noted the identical labels and emphasized that if the respondents were the first to introduce the mark in the global market, the significance of respondents not using the label in India would be negligible.

COCA-COLA CO. V. BISLERI INTERNATIONAL PVT. LTD.

The defendant in this case is Bisleri International Pvt. Ltd., formerly known as Acqua Minerals Pvt. Ltd., which belonged to the Parle group of enterprises. Under a master agreement for India exclusively, the defendant gave The Coca-Cola Company, by the ownership rights, formulation rights, know-how, and reputation of their products, including THUMS UP, LIMCA, GOLD SPOT, CITRA, and MAAZA. This is only a case involving the Maaza product.

In early 2008, the defendant became aware that the plaintiff had applied for the trademark registration of Maaza in Turkey. Subsequently, in late 2008, the defendant issued a legal notice to the plaintiff, revoking the license arrangement and terminating all rights, whether expressed directly or indirectly.

In response, the plaintiff initiated a legal action, seeking a permanent injunction, damages for handing off, and the annulment of the plaintiff’s irrevocable agreement. Additionally, the plaintiff accused the defendant of unauthorized production of Maaza base ingredients by a third party in India, claiming infringement on its exclusive right to use the lawfully registered trademark.

On October 15, 2008, the court issued an order prohibiting the defendant, along with their agents and associates, from using the trademark, as well as from preparing and producing Maaza base ingredients for beverages like Maaza.

The order also restrained the defendant from disclosing any Maaza know-how formulations to any party. The defendant contested the court’s jurisdiction to hear the case, but the plaintiff presented sufficient grounds for the court to assert jurisdiction.

The plaintiff argued that the defendant conducts business within the court’s jurisdiction and has the unlawful intent to use the infringing trademark within its jurisdiction, as evidenced by the Delhi Edition of Times Of India and the defendant’s legal notice to the complainant. This information supports the plaintiff’s request for the court to uphold its decision.

The plaintiff’s evidence and documentation indicate that the defendant not only harbored the intention but was also actively involved in business dealings with various domestic and international corporations, including those in Australia and the United States. The court emphasized the well-established legal principle that exporting any product for sale within the country of origin constitutes trademark infringement.

The defendant’s defense was summarily dismissed due to the court finding their representations to be prima facie false. Consequently, the Honorable Court issued a temporary injunction against the defendant based on the aforementioned reasons. The court asserted that there exists a prima facie argument favoring the plaintiff, along with a balance of convenience, and highlighted that without the injunction, the plaintiff would endure irreparable harm and injury.

In light of these considerations, the judge declared the defendant’s repudiation of the agreement void, thereby restoring all trademark rights of Maaza to the plaintiff.

CADILA HEALTH CARE LTD. V. PHARMACEUTICALS

This occurrence marks a pivotal moment in the history of passing off for unregistered trademarks. Passing off actions can be pursued even in the absence of trademark registration. Such actions are grounded in the principle that no one has the entitlement to represent their products as those of another. In simpler terms, individuals are prohibited from selling their goods or services under the pretense of being associated with someone else. Both the Appellant and the Respondent in this case were pharmaceutical companies that had taken over the business of the Cadila Group following its restructuring under the Companies Act.

Both companies were granted the right to use the term “Cadila.” The Appellant company, in particular, pioneered a drug for the treatment of cerebral malaria named “Falcigo” and received approval for its nationwide marketing from the Drugs Controller of India in 1996.

The Respondent was also granted authorization to market medications for cerebral malaria under the name “Falcitab” in 1997. The Supreme Court deliberated on various factors, including the readability of doctors’ prescriptions, the potential for unintended confusion due to deceptive similarities, and the necessity for caution in cases involving medications treating the same condition but having distinct compositions. The court defined a reasonable ordinary person as someone with average intelligence and a less-than-perfect memory.

Despite both medications being categorized as Schedule L drugs, requiring a prescription for purchase in hospitals and clinics, the Court acknowledged the possibility of confusion among medical professionals dispensing these drugs.

The Honorable Supreme Court ultimately determined that there was a risk of passing off, characterizing it as a case of dishonest resemblance. This decision was reached after a thorough examination of the provisions outlined in the Trademarks Act, 1999, and Section 17-B of the Drugs and Cosmetics Act, 1940.

PARAMOUNT SURGED LIMITED V. PARAMOUNT BED INDIA PRIVATE

In 1987, the defendant, a Japanese corporation, successfully registered the PARAMOUNT mark for its hospital bed business in multiple countries, excluding India. The plaintiff, who obtained licensing rights on January 14, 2002, has ownership of the PARAMOUNT mark under clause 10 and class 20. The dispute centers around the use of the PARAMOUNT trademark for hospital beds. The plaintiff contends that it incorporated the term PARAMOUNT into its corporate name in 1993 and has been actively engaged in the production and distribution of intensive care hospital beds in India since that period.

Previously, the court issued an ex-parte order prohibiting the defendant from using the PARAMOUNT label. Discontent with this ruling, the defendant appealed to have the interim injunction lifted, asserting that the ex-parte order was secured by withholding crucial evidence.

Upon examination of the documents submitted by the defendant, the court discovered evidence indicating that the defendant had been promoting its hospital bed sales under the name PARAMOUNT in India since 2002. The court highlighted that the plaintiff, through opposition filed in 2009 and email exchanges, was well aware of the defendant’s presence in the Indian market.

The court concluded that the matter wasn’t a question of delayed court action but rather an incorrect plea presented to the court. Granting an injunction would bring the defendant’s company, known to the plaintiff, to a halt, resulting in irreparable harm and injury that might not be compensable at a later date. Consequently, the court overturned the ex-parte interim injunction previously issued in favor of the plaintiff.

Toyota Japan, Kisosha, Kaisha, V-Prius Automotive Industries

In a Supreme Court decision, the appellant asserted ownership of the well-known marks Toyota, Innova, and Prius. The claim alleged that the respondents were marketing auto parts and accessories in India using the appellant’s registered marks, particularly the mark “PRIUS.” Despite having no registration for the label ‘PRIUS’ in India, the respondents had obtained registration for the same in 2001.

Contrastingly, the appellant contended that their label ‘PRIUS’ had been registered in various other countries since 1990. The Division Bench of the Delhi High Court, in a January 12, 2017 order, emphasized that although ‘PRIUS’ was recognized as a well-known mark outside India, the trans-border reputation of the mark needed to be established within India.

The Court ruled in favor of the respondents, citing the appellant’s failure to furnish the necessary evidence demonstrating the well-known status of the ‘PRIUS’ mark in India. Discontented with this decision, the appellant filed a special leave petition.

In an order dated December 14, 2017, the Supreme Court upheld the decision in favor of the respondents. The Court concurred with the Division Bench’s conclusion, asserting that the mark “PRIUS” lacked adequate goodwill, credibility, or popularity in Indian markets. Consequently, the appellant did not possess the essential attributes of a prior user’s right to successfully pursue a passing-off action against the registered owner.

Given the limited online visibility during that period, the Court deemed the evidence submitted by the appellant, such as advertising in foreign magazines and information availability on internet portals, as an unreliable basis to establish the requisite goodwill and credibility of the product in India at the relevant time (in 2001).

N.R. DONGRE vs. WHIRLPOOL CORPORATION

In this legal dispute, Whirlpool Corporation filed a lawsuit against the defendants, alleging trademark infringement. The company sought to restrain them from producing, selling, advertising, or using the WHIRLPOOL mark in connection with their products. The case revolved around the manufacture, sale, and marketing of washing machines bearing the WHIRLPOOL trademark.

Whirlpool’s argument was grounded in its prior use of the WHIRLPOOL mark and its cross-border reputation, suggesting that all products under the WHIRLPOOL mark were associated with the plaintiff. The Court ruled that the term “usage” in the Trade Marks Act, 1999, should be broadly interpreted and doesn’t necessarily require physical presence in India. Use in India can also include the presence of a trademark on the Internet and publication in foreign magazines and journals with circulation in India.

Consequently, the Court held that a rights holder could pursue a passing-off case based on the trans-border credibility of the trademark, without the need for the products or the mark’s use in India. It suffices if the rights holder has established a reputation and goodwill in India for the mark through advertising or other means.

STARBUCKS CORPORATION vs. SARDARBUKSH COFFEE & CO.

On August 1, 2018, the High Court of Delhi granted interim relief in the case of Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors. The court directed the defendants to use the name “Sardarji-Bakhsh” for their upcoming outlets before the final hearing on September 27, 2018. Post-hearing, the defendants opted to change the name of all their locations to “Sardarji-Bakhsh Coffee & Co.” In 2001, the plaintiff registered the STARBUCKS word mark and a logo featuring a “crowned maiden with long hair” in India.

The defendants initially used a logo distinct from Starbucks’, incorporating a circular black band with the words “SARDARBUKSH COFFEE & CO.” and an image of a turbaned Commander with wavy lines extending from the sides, reversing the color scheme. Following a demand letter from Starbucks in 2017, the defendants updated their logo and color scheme to black and yellow.

Despite these changes, Starbucks sued the defendants for using the trade name “Sardarbuksh.” The High Court of Delhi directed the defendants to change their store name for 20 yet-to-open stores on August 1, 2018, allowing them to maintain the name “Sardarbakhsh Coffee & Co.” for existing stores. Terms and conditions were exchanged on September 27, 2018, and recorded by the High Court of Delhi.

It was determined that all locations would be renamed “Sardarji-Bakhsh Coffee & Co.,” and if a third party used the term “Bakhsh,” the claimant had the right to take legal action against such a violator.

M/S CASTROL LIMITED & ANR. v. IQBAL SINGH CHAWLA & ANR.

Castrol Limited initiated legal proceedings against the Defendants for marketing 4T oil using the “Lumax Active” trademark. They alleged infringement of the separately licensed “Castrol Active” trademark owned by Castrol Limited. The Plaintiffs, Castrol Limited, sought remedies related to their trade dress, packaging copyright, and container design.

The Plaintiffs argued that the Defendants replicated their trade dress, bottle design, label layout, and color scheme, leading to claims of trademark infringement, copyright infringement, and a pass-off lawsuit. The Court noted that a comparison of the Plaintiff’s “Castrol Active” and the Defendant’s “Lumax Active” did not reveal a misleading resemblance when considering trade dress, color scheme, packaging, style, layout, shape, and configuration separately.

Although the competing trademarks were deemed distinct, the Court uncovered the Defendants’ dishonesty through their adoption of the very same trade dress. The Court stipulated that the injunction would not affect the Defendants’ rights if they used the term “Active” in an entirely different trade dress, color scheme, packaging, style, layout, or shape and configuration.

Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd

This affirmed that the prior overseas adoption of a mark could take precedence over its prior use in India. The plaintiffs, a globally recognized company, owned the H&M trademark, first registered in the United Kingdom in 1985.

Additionally, they claimed the plaintiffs had not entered India with their goods when the defendants introduced the HM MEGABRANDS trademark in 2011. The defendants argued that the term “Megabrands” sufficiently distinguished their products from the plaintiffs’ brand, “H&M.”

The court rejected the legitimacy of the defendant’s use of the trademark HM MEGABRANDS. It acknowledged the similarity in the red and white color scheme and anticipated consumer confusion due to the term “Megabrands” implying a “big brand,” aligning more closely with H&M.

The court emphasized the plaintiffs’ earlier adoption of the mark in 2005, contrasting with the defendant’s adoption in 2011, which was a crucial factor. The court deemed the introduction of plaintiffs’ goods in India at a later date irrelevant, reasoning that increased international travel and cultural exchange made customers aware of top brands worldwide.

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