Descriptive Trademark , not entitled for protection A Case Study

Descriptive and Generic Trademark are considered to be poor Trademark. Though descriptive Trademark can be granted protection provided the party concern establishes the secondary significance. However generic Trademark can not be entitled to protection. Hence it is always advisable that a business man should avoid using those trade marks which are descriptive and generic in nature. Here are few case study where Descriptive and Generic Trademark were declined the relief of injunction.

 i.1977 SCC OnLine Mad 72 : AIR 1978 Mad 336: Nestle's Products (India) Ltd. Vs P. Thankaraja and another. 

 Applicant’s Trademark applied for was INSTEA in relation to Tea. 

The Court observed that first impression of the word INSTEA was that the word had something to do with tea and had something to do with instant. 

The Court equated the word INSTEA in relation to Tea with telescoped expression like “artsilk” for artificial silk, “Comintern” for communist international. 

ii. 1942 (54) RPC 127 Coca Cola of Canada Limited Vs Pepsi Cola of Canada Ltd. 

Trademark PEPSI COLA of the Defendant was registered in CANADA since 1906. 

Expression COLA was name of beverage itself. 

More than 31 others Parties were having Trademarks registrations containing the word COLA as suffix. 

iii. 1996 RPC 281 British Sugar PLC Vs James Robertsons & Sons Limited. 

Trademark of Plaintiff was SILVER SPOON TREAT. While Defendant was using the Trademark ROBERTSON’S TOFEE TREAT. 

Word Treat was written in very small font by the Defendant. 

iv. 2007 (35) PTC 697 (Bomb) Asian Paints Limited Vs Home Solutions 

Injunction was declined in Asian Paints Judgement on the ground that Trade mark HOME SOLUTIONS was descriptive and common to trade. 

v. 2010 (44) PTC 515 (Del) (DB) Rich Products Corporation & Anr Vs Indo-Nippon Foods Limited. 

The court held the Plaintiff’s Trade Mark WHIP TOPPING to be generic in relation to non dairy Topping. 

Trademark of the Plaintiff was RICH’S WHIP TOPPING while trademark of Defendant was BELLS WHIP TOPPING. 

Word BELLS was very prominently displayed on the Defendants packaging . 

The Plaintiff has failed to show any distinctiveness to the word WHIP TOPPING separately. 

vi. 2009 (39) PTC 627 (Del) Lowrenbrau AG and another Vs Jagpin Breweries Ltd. 

Plaintiff’s whole of the Trademark LOWENBRAU was disclaimed in registered Label in which device of Lion was also there. 

Plaintiff has not given Sales figure in India. 

Plaintiff’s Sales was intermittent and at miniscule label in India. 

Plaintiff and Defendant were both using the trademark LOWENBRAU for 100 years. 

The Defendant was protected being honest and concurrent user. 

vii. 2010 (MIPR) (3) 273: 2010 (44) PTC 381 (Del) Stokley Van Camp Inc. Vs Heinz India Pvt. Ltd. 

Plaintiff’s Trademark was REHYDRATE REPLENISH REFUEL in relation to ready to Drink. 

Defendant’s Trademark was REHYDRATES REPLENISHES RECHARGES. 

 Plaintiff asserted that the expression used by the Defendant to describe its product, is similar to Plaintiff’s expression. 

Defendant’s use of expression was held to be honest. 

viii. 2010 (44) PTC 736 (Del) (DB) Marico Limited Vs Agro Tech Foods Limited. 

Plaintiff’s Trademark was LOSORB in relation to Oil while Defendant’s Trademark was LOW ABSORB. 

Defendant were using expression LOW ABSORB TECHNOLOGY with their Trademark SUN DROP in much bigger font. 

Defendant was using the expression LOW ABOSRB as a part of Sentence as “WITH LOW ABSORB TECHNOLOGY”. 

Term LOW ABSORB TECHNOLOGY was defined under Rule 26A of the Prevention of Food Adulteration Rules 1955 . 

Plaintiff had filed a trade mark application bearing no. 1012561 dated 28.05.2001 for registration of its mark LOW ABSORB. 

ix. 2020(84) PTC 395 (Mad) (DB) ITC Limited Vs Nestle India Limited. 

Plaintiff’s Trade mark was SUNFEAST YIPPEE MAGIC MASALA. 

Defendant’s Trademark was MAGGI XTRA-DELICIOUS MAGICAL MASALA. Plaintiff’s Trade mark was not a registered Trademark. 

The Defendants have proved user by various third parties use of packaging containing the word MAGIC MASALA. 

The Court declined the injunction by observing that Plaintiff was using the term MAGIC MASALA only in order to indicate the kind of product. 

x. 2021 (86) PTC 437 (Del).Phone Pe Private Limited Vs. Ezy Services 

The Hon’ble Court held that the Plaintiff could not claim exclusivity on the word “PE” suffix as it was merely part of registered trade mark. 

Meaning of “PE” itself pay. 

Plaintiff and Defendant both were indulged in the activities of online payment. 

Disclaimer: This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein. 

Ajay Amitabh Suman,IPR Advocate, Hon'ble High Court of Delhi.

Email: ajayamitabh7@gmail.com, Ph No: 9990389539

Confronting Photocopies of documents during cross examination

These questions often arises, whether during the course of cross examination, the witness can be confronted with the photocopies of the documents or not? What happens, in case the witness denies the same? What options may be available to such parties. Here are few case law study throwing some light on this aspect.

RVE Venkatachala Gounder Vs Arulmigu Viswesaraswami & VP Temple and Anr.

Civil Appeal No. 10585 of 1996

Date of decision- 08-10-2023

Hon'ble Supreme Court of India

(2003) 8 SCC 752

R.C.Lahoti and Ashok Bhashin, H.J.

The photocopies of the original documents, upon confrontation, were admitted as evidence Exts A-30, A-34 without any objection from the other side.

T  High Court reversed the judgment and decree of the courts below and held that no reliance could be placed on them. Documents being Photostat copies could not be admitted in evidence without producing the originals.

In the second appeal the Ld. counsel for the defendant, relying on judgment of Roman Catholic Mission Vs State of Madras submits that: 

The objection should be taken when the evidence is tendered and once the document has been admitted in evidence and marked as an exhibit, the objection that it should not have been admitted in evidence or that the mode adopted for proving the document is irregular cannot be allowed to be raised at any stage subsequent to the marking of the document as an exhibit. The latter proposition is a rule of fair play. 

Failure to raise prompt and timely objection amounts to waiver of the necessity for insisting on formal proof of a document, the document which is itself sought to be proved being admissible in evidence. Acquiescence would be no bar for raising the objection in a superior court. 

Judgment and decree of the High Court is set aside and that of the trial court as confirmed by the first appellate court is restored. 

Relevant Paras- 6, 7, 15, 20, 23, 24, 34.

Thus in this case the Hon’ble Supreme Court of India has endorsed the decision of Ld. Trial Court where by photocopies of the document was allowed to be exhibited.

Dhuwalia Plastics Vs H. Venkatesh

Civil Revision Petition/595/2022

Date: 26.10.2022

High Court of Telangana at Hyderbad

Sambasiva Rao Naidu, H.J. 

DW1 was confronted with the photocopy of a document without any signature or authentication. Marked document Ex. A20 (On the basis of RVE VenkatachalaGounder Vs ArulmiguViswesaraswami& VP Temple and Anr.)  

·    It was marked subject to objection, which can be decided at the time of filing disposal of the suit thereby no illegality being in marking the document.  

·  The court observed; The ld counsel for defendant has raised objection with regard to marking of the Ex. A20, as the objection with regard to mode of proof of Ex. A20, thereby, by following judgment of Gounder case and Bipin Shantilal Panchal, wherein under the Hon’ble Supreme Court has formulated whenever, objection with regard to mode of proof of document ‘other than stamp duty and registration is raised, the document ‘can’ be marked subject to objection, accordingly marked to subject to objection.  

·  The trial court can make a note of objection raised during the evidence taking stage regarding the admissibility of any material or item of oral evidence, and mark the objected document tentatively as an exhibit in the case subject to such objections to be decided at the last stage in the final judgment.  

·   Observations made by the Hon’ble Apex Court in Bipin Shantilal Panchal Vs Gujarat and Anr, trial court is directed to decide the objection about the admissibility of Ex. A20 while disposing the main suit. 

Relevant paras-  2, 5, 8 

The photocopy of the document was allowed to be exhibited, subject to be its admissibility to be decided at the final stage of the suit. 

Mr. Anil Madan Vs Mr. RK Madan &Ors

CS(OS)/1184/2005

Date:21.08.2009

Court: High Court of Delhi

Anil Kumar, H.J. 

·   Photocopy of an unattested affidavit dated 31^st March 2005 was exhibited asPW1/D III during cross examination of the plaintiff. 

The plaintiff was confronted by the defendant no.1 with documents including Exhibit PW1/D1. Exhibit PW1/D1 is the photocopy of the computation of the income of the accounting year ending on 31^st March 2003 and the balance sheet as on 31^st March 2003.  

·    Copy of the current account of M/S Satguru Enterprises exhibited as PW1/DW1 for the period from 1^st March 1997 to 31^st March 1998. 

Relevant paras- 16, 17, 21 

Thus in this case, the Hon’ble High Court of Delhi has even relied upon the photocopies of the documents which were also allowed to be exhibited during the course of cross examination. 

A Sreedharan Vs Dr.Bijoydas

RCR No. 232 of 2019

03.03.2021

Hon’ble High Court of Kerala at Ernakulam

 Online Ker 1091: 2021 AIR CC 1162

A. Hariprasad and Ziyad Rahman AA, JJ.

During cross-examination of PW1, he was confronted with the photocopy of the document based on which the relationship of the parties commenced. As PW1 admitted the execution, it was marked as Ext B1

According to respondents counsel, Ext B1 document, based on which the said arrangement had commenced is not a lease agreement but on the other hand it is a deed of license .

Relevant paras- 6 

Where a party admits the photocopy a documents, then it can off course be exhibited and relied upon as has been done in the present case. 

Telecommunications Consultants India Ltd and Anr Vs Anil Bhasin and Anr

CM(M)/1162/2021

15.12.2021

Hon’ble High Court of Delhi

Amit Bansal, H.J.

2021 SCC Online Del 5359

The witnesses of the petitioners were confronted with photocopies of the document upon which they did not comment anything as the counsel for the petitioners, subsequently, filed for summoning of documents from the respondent

The Commercial Court has rightly noted that the need to summon the aforesaid documents by way of an application arose because the witness of the petitioners took objection to the documents during evidence, as the copies produced by the respondent no. 1 during evidence were photocopies

Relevant paras- 8, 9, 11, 13 

In this case, as the witness refused to comment upon the photocopies of the documents , the Plaintiff filed the application for taking the same on record and this was rightly been allowed to be taken on record. 

From the afore mentioned case laws, following case laws emerges: 

i. The Photocopies of the documents can be confronted to a witness during the course of cross examination. 

ii. In case the photocopies are admitted then it can be exhibited. 

iii.In case of objection, it can be exhibited subject to objection. 

iv. However admissibility of such objected document has to be decided at the final stage of the suit. 

v.The Party would also been having an opportunity to file the afore mentioned documents as additional documents.

Disclaimer:

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein. 

Written By: Ajay Amitabh Suman,

IPR Advocate, Hon'ble High Court of Delhi.

Email: ajayamitabh7@gmail.com, Ph No: 9990389539

The Ultimate dilemma of Law

The paradoxical nature of justice is that while it aims to be fair and just, it is often influenced by social, political, and economic factors. The system can be biased against certain individuals or groups based on their race, gender, or social status. 

Studies have shown that people of color are more likely to be convicted of crimes and receive harsher sentences than their white counterparts, highlighting the racial biases that exist within the justice system. 

Though People comes in court seeking Justice in Black in white. What comes out of that, is beyond their expectations. It's because of the paradox which prevails in the justice delivery system.

Lawyers’ and judges’ subjective perceptions and interpretations also play an important role in shaping the objectivity of law. Lawyers and judges are not objective or neutral actors; they are human beings with biases, values, and perspectives that shape their understanding and application of the law.

A judge’s interpretation of a constitutional provision, such as the right to privacy, may differ depending on their political ideology, personal experience, and moral beliefs, for example. Similarly, even if the law is impartial and neutral, a lawyer’s argument in a criminal case can be influenced by their client’s race, gender, or socioeconomic status. 

Furthermore, legal reasoning is not purely deductive or logical, but requires some creativity and judgement as well. Lawyers and judges must make decisions and use discretion when applying legal principles to the facts of a case, which can result in conflicting interpretations and outcomes.

The difficult problem of law extends beyond the interpretation and application of the law to the legislative process itself. Lawmaking is a complicated and iterative process of negotiation, compromise, and consensus-building that reflects society’s diverse interests and perspectives. 

Legislators’ and stakeholders’ subjective perceptions and interpretations shape the content and form of law, making it a reflection of societal values and norms.

For example, in the United States, the legalisation of same-sex marriage was the result of a long and arduous process of social and political activism, legal advocacy, and legislative action that reflected changing societal attitudes towards LGBTQ+ rights.

To summarise, the hard problem of law is a multifaceted and complex challenge that reflects the tension between the objective nature of law and the subjective experiences and interpretations of those who apply it.

Lawyers’ and judges’ subjective perceptions and interpretations play a critical role in shaping the objectivity of law, making legal reasoning and decision-making a complex and nuanced exercise. 

To address the hard problem of law, we must recognise and embrace the complexity and diversity of legal practise while also promoting greater transparency, accountability, and ethical behaviour in the legal profession.

The paradoxical nature of the justice delivery mechanism is a complex issue that requires a nuanced understanding of the social, political, and economic factors that influence the system. While the justice system aims to be fair and just, it is often influenced by biases, fails to address the root causes of crime, and can be difficult for individuals to access.

More over people should also recognise this inherent paradox. What they expect ,is the absolute truth, which can not be posibble. This inherent delimma is inseparable part and parcel of the justice delivery system and people should be liberal enough to just accept it.

Macleods Pharmaceuticals Limited Vs Union of India and Others

Judgment date: 15.02.2023
Case No: Writ Petition No. 1517 of 2022
Neutral Citation No.
Name of Court: High Court of Judicature at Mumbai
Name of Hon'ble Justice: S.V. Gangapurwala and Madhav V Jamdar HJ
Case Title: Macleods Pharmaceuticals Limited Vs Union of India and Others

The Party: Petitioner namely Macleods Pharma was the registered Proprietor of Trademark OFLOMAC under No.838726 in class 05, while Respondent No.4 namely Sun Pharma is the party who has filed rectification Petition before Intellectual Property Appellate Board bearing ORA/66/2014/ TM/MUM seeking cancellation of Petitioner's afore mentioned registered Trademark.

The Judgement Assailed:
The Subject Matter Writ Petition was filed against impugned Judgement dated 15.02.2023 of IPAB where by registered Trademark of the Petitioner namely OFLOMAC was cancelled at the behest of cancellation Petition filed by the Respondent No.4 claiming to be prior registered proprietor and prior user of the Trademark OFRAMAX.

The Relevant Registration of Parties:
Petitioner's Registered Trademark: OFLOMAC under No.838726 in class 05 is dated 28.01.1999.

Registration of Respondent No.4: OFRAMAX in class 05 dated 30.08.1989.

Trade Mark was cancelled on the ground of deceptive similarity.

The Judgement of Hon'ble Division Bench:

The Hon'ble Division Bench, High Court of Judicature at Mumbai was pleased to reject the subject matter Writ Petition. While doing so, few important observation made by the Hon'ble Division Bench are as follows:

1. Even Doctors are not immune to confusion.

2.While Comparing two trade marks, the test of English People would not apply in India as unlike English People, in India , there are various languages and people in India are not that much educated as In England.

3.The Point of similarities of trademarks has to be weighed with respect to man of average intelligence having imperfect recollection.

4.While dealing with medicinal preparation, the test is not that doctors who prescribed medicine, but the test is the patients who are going to purchase the medicine.

5. Confusion and deception may also occur in relation to prescription drug.

6.The decisions given in interlocutory applications do not decide cases conclusively.Hence tha same is not binding.

7.Limitation Act is not applicable to the cancellation petitions.

8.The substance of Application has to be seen and not the provisions mentioned therein. Though Section 151 CPC was mentioned in the Application, however it was in fact meant to be application under Section 124 of Trade Marks Act 1999.

9.The cancellation Petition was filed prior to filing of Application under Section 124 of TM Act. The Rectification Petition was still held to be maintainable.

10.Under Section 124 of Trade Marks Act, only prima facie tenability of issue of invalidity has to be seen.

11. In writ jurisdiction , jurisdiction of court is very limited. It interferes with the order assailed, where it can be seen that there has improper excercise of jurisdiction by the lower authority.


DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman
Patent and Trademark Attorney
Hon'ble High Court of Delhi.
Email: ajayamitabh7@gmail.com,
Ph No: 9990389539

M M Kariappa Vs Advance Magazine Publishers Inc

Judgment date:10.11.2022

Case No. Regular First Appeal No. 106 of 2015

Name of Court: High Court of Karnataka at Bengaluru

Name of Hon'ble Justice: M I Arun, H.J.

Case Title: M M Kariappa Vs Advance Magazine Publishers Inc

Respondent’s Trademark: VOGUE

Respondent’s Product: Magazine Publications

Respondent’s Registration is in class 16.

Respondent’s claimed user: Since 1892

Appellant’s Trademark: VOGUE

Appellant’s Product: Running a training Institute under the name of VOGUE Institute of Fashion Technology.

Appellant is the Defendant and Respondent is the Plaintiff in the subject matter Suit. The Appellant has filed the subject matter Suit against the Appellant seeking the relief of permanent injunction against use of Trademark VOGUE in relation to Fashion Training Institute. This Suit was decreed in favour of the Respondent and against the Appellant. It is against this decree, the subject matter Appeal has been preferred by the Appellant.

The Hon’ble High Court of Karnataka , has allowed the Appeal on the following main grounds:

i. The Appellant admitted that VOGUE is an internationally reputed fashion Magazine. Even trademark VOGUE used by the parties were same. Still relief of Infringement and passing off declined for the reasons mentioned herein below.

ii. The Court further observed that the Respondent does have trademark registration in class 16, which does not cover the services of Appellant. Hence infringement of Trademark can not be granted.

iii. The claim of passing off was also declined and VOGUE magazine is not subscribed by large number of people and that too that limited section of society are generally aware about the fashion.

iv.The class of purchasers who purchases the magazine are well informed about the Respondent and hence there can not be possibility of confusion and deception in the market.

v.The Persons who join the Appellant’s institute are in fact informed persons and it is highly unlikely that they would get confused.

vii. Thus relief of infringement as well as passing off both was denied and resultantly the Appeal was allowed. 

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors in perception , and presentation of the case, including clerical errors.

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HS Sahni Vs Mukul Singhal

Judgment date: 10.11.2022

Case No. FAO (COMM) 88/2021

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Vibhu Bakhru and Amit Mahajan H.J.

Case Title: HS Sahni Vs Mukul Singhal

 

Appellant's Trademark:  M.G. and MGI

Appellant's business and Services: manufacture and trade of wide range of automobile fittings, control cables and spare parts and other allied goods

Appellant's Claimed user: Since 1989

Respondent’s  Trademark: MG CABLE

Defendant's business:

manufacture and trade of automobile components such as clutch cables, front brake cables, rear brake cables, choke / starters etc.

 

Respondent's claimed user: 1996

HS Sahni is referred to as the Appellant and Mukul Singhal is referred to as the Respondent.

The Hon’ble Division Bench was pleased to grant injunction in favour of the Respondent/Cross Appellant and against the Appellant on the following grounds:

i. Though Appellant claimed to be prior user of the Trademark since 1989 and filed invoice since 1989, still on the said invoices, several other brands namely RONAK, ATOMAX , WIREPOOL , DATSUN etc were mentioned.

ii. The invoice of actual use of MG and MGI was since the year 2017.

iii. Appellant’s Trademark application was subsequent to that of the Respondent.

iv. Respondent produced invoice since 2001.

v. In the year 2013, the Respondent obtained copyright registration. In the year 2019, the Appellant also for obtaining identical label.

vi. Thought Appellant was registered proprietor in class 12 and Respondent was registered proprietor in class 06.

vi. Court held that classification of goods are not criteria for deciding the similarity of the products.

vii. This registration granted to the Respondent in class 06 would inure to the benefit of the Respondent.

viii. The Appellant has failed to prove any use prior to 2017. While Respondent has established user since 2001.   

 

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared  in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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