Four Pillars Enterprises Co. Vs Mahipal Jain and Ors

Trademark Use and Infringement: Licensee Use and Consumer Perception

Introduction:

In a recent case before the Hon'ble High Court Delhi, the issue of trademark infringement arose concerning the use of marks similar to the plaintiff's registered DEER Brand device. This article delves into the nuanced legal analysis undertaken by the court, particularly focusing on the significance of licensee use in determining trademark infringement.

Background:

The plaintiff, a Taiwanese company established in 1954, specializes in manufacturing adhesive tapes and labels under the registered trademark DEER Brand device.

The defendants, accused of infringing the plaintiff's trademark rights, utilized marks such as REINDEER BRAND and REINDEER WONDER for identical goods, namely insulating tapes. The dispute centered on the alleged confusion caused by the similarity between the plaintiff's DEER mark and the defendants' marks.

Trademark Use and Licensee Rights:

A pivotal contention raised by the defendants was the alleged disuse of the plaintiff's DEER marks since 2011. However, the court rejected this argument, emphasizing that use by the plaintiff or its licensee, Avatack, constitutes trademark use. The court recognized the validity of trademark use through licensees, reinforcing the principle that trademark rights extend to authorized users who maintain the quality standards associated with the mark.

Consumer Perception and Likelihood of Confusion:

The court dismissed the defendants' assertion that the DEER and REINDEER marks signify different animals, emphasizing that trademark infringement is assessed from the perspective of consumers, not zoologists.

The critical factor in determining infringement lies in the likelihood of confusion among consumers of average intelligence and imperfect recollection. Given the similarity between the marks and the identity of goods, consumers are likely to be confused regarding the origin of the products, thereby establishing prima facie infringement under Section 29(2).

Identical Goods and Similarity of Marks:

The court observed that the defendants' use of marks for identical goods catered to the same consumer segment and distribution channels as the plaintiff's products.

The similarity between the marks, coupled with the identical nature of the goods, heightened the potential for confusion among consumers. Consequently, the court concluded that the conjoint effect of similarity in marks and identity of goods prima facie established trademark infringement.

Case Title: Four Pillars Enterprises Co. Vs Mahipal Jain and Ors
Order Date: 07.03.2024
Case No. CS Comm 472 of 2023
Neutral Citation:2024:DHC:2478
Name of Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

RSPL Limited Vs Agarwal Home Products

Unveiling Bad Faith in Trademark Adoption

Introduction:

The concept of bad faith in the adoption of trademarks is a critical facet of intellectual property law, aimed at safeguarding the rights of trademark owners and preventing unfair competition. This article provides a comprehensive analysis of a recent judgment by the Hon'ble High Court of Delhi, which decreed a suit in favor of the plaintiff, emphasizing the presence of bad faith in the defendant's adoption of a trademark.

Background:

The dispute revolves around the trademark "GHADI" owned by the plaintiff, who is engaged in the manufacture and sale of detergents, soaps, and related products. The defendant, operating under the trademark "AGRA GHADI YAL," is alleged to have infringed upon the plaintiff's rights by using a mark that bears striking resemblance to the plaintiff's well-known trademark. The plaintiff sought a permanent injunction restraining the defendant from further infringement and passing off identical goods.


Recognition of Well-Known Trademark:

The plaintiff's trademark "GHADI" and its formative variants were recognized as well-known trademarks by the Trade Mark Office, underscoring the extensive goodwill associated with the brand. This recognition strengthens the plaintiff's position and underscores the need for heightened protection against unauthorized use.

Elements of Bad Faith:

The Hon'ble High Court of Delhi meticulously analyzed the visual and typographic similarities between the plaintiff's trademark and the defendant's mark. The replication of essential visual features, including color scheme and typographic style, coupled with the prominent positioning of the word "GHADI," indicates a deliberate attempt by the defendant to capitalize on the plaintiff's brand identity.

The addition of secondary elements such as "AGRA" and "YAL" in a smaller font does not diminish the likelihood of consumer confusion but rather exacerbates it by reinforcing the association with the plaintiff's trademark. This calculated strategy suggests a lack of good faith on the part of the defendant, aiming to exploit the established reputation of the plaintiff's brand for commercial gain.

Consumer Confusion and Mistaken Connections:

The overarching impression created by the defendant's use of the impugned trademark is one that closely resembles the plaintiff's product, thereby increasing the risk of consumer confusion. The deliberate imitation of key elements heightens the potential for mistaken connections between the two sources, posing a threat to the integrity of the plaintiff's brand and diluting its distinctiveness in the marketplace.

Conclusion:

The judgment of the Hon'ble High Court of Delhi underscores the significance of identifying and penalizing instances of bad faith in trademark adoption. The meticulous analysis of visual elements and the overall commercial impression created by the defendant's mark elucidates the calculated nature of the infringement, emphasizing the need for stringent enforcement of intellectual property rights.

Case Title: RSPL Limited Vs Agarwal Home Products
Order Date: 15.03.2024
Case No. CS Comm 486 of 2023
Neutral Citation:2024:DHC:2439
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Shree Giriraj and Co Vs Gagan Pagrani Proprietor Plastica Industries

Interactive Websites and Trademark Jurisdiction

Introduction:

The intersection of e-commerce platforms and trademark jurisdiction presents complex legal challenges, as demonstrated in the case under consideration. This article critically examines the implications of selling goods through interactive websites in the context of trademark disputes, focusing on the recent decision of the Hon'ble Division Bench regarding the jurisdictional aspect in a trademark infringement case.

Background:

The dispute centers around the alleged infringement of the trademark "SHAKTI & SHAKTI LENO" by the appellant, who operates under the name of Shree Girirajji & Company. The respondent, engaged in the manufacturing and sale of various bags and related products under the said trademark, accuses the appellant of adopting a similar label, "SUPER SHAKTI LENO," and a device mark for its goods. Additionally, the respondent contends that the appellant sells these goods through an interactive website hosted on www.indiamart.com.

Jurisdictional Challenge:

The appellant, seeking to challenge the jurisdiction of the Commercial Court, invoked Order XXXIX Rule 4 of the Code of Civil Procedure, 1908. However, the Court rejected this application, leading to the appellant's appeal before the Division Bench. The crux of the jurisdictional argument revolves around whether the Commercial Court has the authority to adjudicate disputes arising from online sales activities.

Online Sales and Trademark Infringement:

The central issue pertains to whether the appellant's use of similar trademarks on its goods sold through the interactive website constitutes trademark infringement. While the appellant denies selling goods bearing the impugned trademarks through the website, the absence of a specific denial in the written statement raises questions about the veracity of this claim. The Hon'ble Division Bench observed this discrepancy and emphasized the need for clarity regarding the goods sold via the online platform.

Applicability of Trademark Law to E-commerce:

In contemporary commerce, online platforms serve as significant channels for sales and distribution. However, this digital landscape complicates traditional notions of jurisdiction and enforcement of intellectual property rights. Courts worldwide grapple with issues of territorial jurisdiction, online presence, and the extraterritorial reach of trademark laws concerning e-commerce activities.

Conclusion:

The dismissal of the appeal by the Division Bench underscores the significance of clarifying the jurisdictional scope concerning online trademark infringement disputes. The evolving nature of e-commerce necessitates a nuanced understanding of jurisdictional principles to effectively address trademark violations in the digital sphere. This case highlights the imperative for clear legal frameworks and judicial interpretations to navigate the complex terrain of interactive websites and trademark jurisdiction, ensuring equitable resolution of disputes in the online marketplace.

Case Title: Shree Giriraj and Co Vs Gagan Pagrani Proprietor Plastica Industries
Order Date: 14.03.2024
Case No. FAO (COMM) 47/2024
Neutral Citation:2024:DHC:2230
Name of Court: Delhi High Court
Name of Hon'ble Judge: Vibhu Bakhru and Tara Vitasta Ganju H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

LOREAL S.A. Vs Ravi Gandhi-DB

The Interplay Between Trademarks and Trade Names

Introduction:

The relationship between trademarks and trade names, or corporate names, often raises intricate legal questions concerning the rights and limitations of parties involved. This article delves into a recent case before the Hon'ble Division Bench of the High Court of Delhi, wherein the issue of incorporating a trademark into a company or trade name was scrutinized.

Background:

The case under consideration revolves around the use of the trademark "MABELLE" by the defendants in their company name and business communications. Initially, an injunction was issued restraining the defendants from using the trademark on any of their products. However, a subsequent modification by the District Judge permitted the defendants to include "MABELLE" as part of their company name and in their business communications, leading to an appeal filed by the plaintiff.

Analysis

The central question before the Hon'ble Division Bench was whether the modification of the injunction was justified, allowing the defendants to incorporate the trademark into their company name. The Bench's analysis hinged upon various legal provisions, primarily focusing on the intersection between trademark law and company law.

Section 16 of the Companies Act, 2013:

The Division Bench highlighted Section 16 of the Companies Act, 2013, which does not confer an absolute right to use words forming part of a corporate name. This provision underscores that the Central Government may initiate rectification proceedings if a registered proprietor of a trademark contends that a corporate name is identical or substantially similar to their registered trademark. Thus, the mere inclusion of "MABELLE" in the defendant's company name does not automatically absolve them of trademark infringement.

TM Act 1999:

Additionally, the Division Bench referenced Section 29(6)(d) of the Trademarks Act, 1999, which governs the use of trademarks in the course of trade. This provision prohibits the unauthorized use of a mark that is identical or deceptively similar to a registered trademark, even if used as part of a company or trade name. Therefore, incorporating "MABELLE" into the defendant's business communications or company name without authorization falls within the purview of trademark infringement.

Conclusion:

In light of the legal provisions and principles elucidated above, the Hon'ble Division Bench rightly concluded that the defendants should be restrained from using the trademark "MABELLE" as part of their company name. The decision underscores the importance of safeguarding trademark rights and preventing unauthorized use, even within the context of corporate nomenclature. This case serves as a precedent clarifying the limitations on incorporating trademarks into trade names or corporate identities without proper authorization, thereby upholding the integrity of trademark law.

Case Title: LOREAL S.A. Vs Ravi Gandhi-DB

Order Date: 07.12.2022

Case No. FAO (COMM) 116/2023

Neutral Citation:NA

Name of Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Crompton Greaves Consumer Electricals Ltd. Vs V Guard Industries Ltd.

Section 29 (4) Trademarks Act 1999 and prima-facie satisfaction of goodwill

Introduction:

In the dispute between V GUARD and CROMPTON over the marks "PEBBLE" and "CROMPTON PEBBLE," Section 29(4) of the Trademarks Act, 1999, plays a pivotal role. This article provides a detailed analysis of the legal aspects surrounding the dispute, considering the arguments presented by both parties and the court's decision.

Section 29(4) of the Trademarks Act, 1999:

Under Section 29(4) of the Trademarks Act, 1999, prima facie goodwill suffices for establishing trademark infringement. This provision allows registered trademark users to file suits for infringement even if the goods and services aren't similar, provided certain conditions are met.

Specifically, the mark used by the defendant must be identical or similar to the registered trademark, and the registered trademark must have a reputation in India. Additionally, the use of the mark by the defendant should take unfair advantage of or be detrimental to the distinctive character or reputation of the registered trademark.

Facts of the Case:

The dispute between V GUARD and CROMPTON revolves around the use of the mark "PEBBLE." V GUARD claims exclusive rights to the mark for water heaters, electric water heaters, heating coils, and electric water geysers since 2013. CROMPTON began using the mark "CROMPTON PEBBLE" for electric irons since October 2020. CROMPTON argues that their mark is visually, phonetically, and structurally different from V GUARD's mark and that the use of the mark does not cause confusion.

Court's Analysis and Decision:

The court observed that the marks "PEBBLE" and "CROMPTON PEBBLE" are visually, phonetically, and structurally identical, with "PEBBLE" being the dominant part of both marks. The court upheld the order restraining CROMPTON from using the mark.

Analysis of Court's Decision:

The court's decision aligns with the principles of Section 29(4) of the Trademarks Act, 1999. Despite the differences in the goods sold under the respective marks, the similarity between the marks and the dominance of "PEBBLE" in both were sufficient grounds for granting the injunction. The court's interpretation emphasizes the importance of considering the overall impression created by the marks and the potential for confusion among consumers.

Conclusion:

The V GUARD v. CROMPTON dispute illustrates the application of Section 29(4) of the Trademarks Act, 1999, in resolving trademark infringement cases. The court's decision underscores the significance of visual, phonetic, and structural similarity between marks in determining infringement. This analysis reaffirms the legal framework governing trademark disputes and the courts' role in protecting the rights of trademark owners.

Case Title: Crompton Greaves Consumer Electricals Ltd. Vs V Guard Industries Ltd.
Order Date: 06.03.2024
Case No. FAO(OS) (COMM) 153/2022
Neutral Citation:2024:DHC:1852-DB
Name of Court: Delhi High Court
Name of Hon'ble Judge: Vibhu Bakhru and Amit Mahajan, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

GM Modular Vs Mayur Electromeck

Sales Tax Assessment and Trademark Use

Introduction:

The intersection of trademark law and commercial activities is often a complex terrain, especially when it comes to proving the use of a trademark in commerce. The case at hand, involving the Petitioner and Respondent No. 1, revolves around the registration of the trademark "GMW" for PVC insulating wires and cables, directly challenging the rights asserted by the Petitioner over the "GM" brand variants. The crux of the matter lies in whether Respondent No. 1 has adequately demonstrated the genuine use of the trademark in question, as required by trademark law.

Prior Use and Market Confusion:

The Petitioner, relying on prior use, contends that the registration of the "GMW" mark infringes upon their proprietary rights, leading to market confusion. This confusion not only dilutes the distinctive character of the "GM" brand but also impacts the goodwill cultivated by the Petitioner in the electrical goods and services sector. Such arguments highlight the significance of protecting established trademarks from unauthorized use that could jeopardize their distinctiveness and reputation in the market.

Legal Analysis of the Court's Decision:

The Hon'ble High Court of Delhi, in its decision, rectified the trademark registration after scrutinizing the evidence presented by both parties. Central to the Court's decision was the assessment of whether Respondent No. 1 had sufficiently demonstrated the commercial use of the "GMW" mark. Despite the registration being granted in 2007, the Court observed a lack of concrete evidence indicating its commercial utilization since then.

The Court meticulously analyzed the evidence provided by Respondent No. 1, including income tax returns, sales figures, advertisement expenses, and an ISO certificate. However, none of these pieces of evidence conclusively established the actual use of the "GMW" mark in trade. Sales figures attributed to a different mark, "MAYUR," and the absence of substantial promotional material featuring the contested mark undermined Respondent No. 1's claims.

Legal Implications of Sales Tax Assessment and Sales Figures:

Of particular significance is the Court's ruling regarding the non reliance on sales tax assessment and sales figures to establish trademark use. Despite Respondent No. 1's attempt to bolster their case using such financial data, the Court deemed it insufficient. This ruling underscores the stringent standards imposed by trademark law when it comes to proving genuine use in commerce.

Cancellation under Section 47 of the Trademarks Act:

In light of the lack of compelling evidence corroborating the use of the "GMW" mark in trade, the Court held Respondent No. 1 liable for cancellation under Section 47 of the Trademarks Act. This section empowers the authorities to cancel a trademark registration if it remains unused for a continuous period, thereby preventing the proliferation of dormant trademarks that could potentially impede genuine market competition.

Conclusion:

The case serves as a pertinent example of the rigorous scrutiny applied by courts in trademark disputes, especially concerning the substantiation of trademark use in commerce. Despite the availability of various financial documents, including sales tax assessments and sales figures, the Court emphasized the need for concrete evidence directly linking the trademark to commercial activities.

Case Title: GM Modular Vs Mayur Electromeck

Order Date: 11.03.2024

Case No. C.O. (COMM.IPD-TM) 276/2022

Neutral Citation:2024:DHC:2411

Name of Court: Delhi High Court

Name of Hon'ble Judge:Sanjeev Narual, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539