Zydus Healthcare Limited Vs Flipkart Internet Pvt. Ltd & Ors

Dealing with Unidentified Counterfeiters on E-Marketing Platforms

Introduction:

The rise of e-commerce has revolutionized the world of marketing, offering businesses a global reach and convenience for consumers. However, this digital landscape has also given rise to a significant challenge for rights holders - the sale of counterfeit products by anonymous sellers on e-marketing platforms. The identification of these counterfeiters can be challenging, as they do not have a physical presence. In response to this issue, various High Courts have taken measures to combat counterfeiting on e-marketing platforms. This article explores a recent order from the Hon'ble High Court of Delhi and its potential implications for right holders in the fight against counterfeiters.

The Case: Counterfeiting of CUTICOLOR Products:

The case in question revolves around the sale of counterfeit "CUTICOLOR" products on e-marketing platforms. The plaintiff, a leading Indian Pharmaceutical Company, claimed to have coined and adopted the mark "CUTICOLOR" in July 2016 for pharmaceutical preparations and cosmetic products. Furthermore, the plaintiff held a registered trademark for "CUTICOLOR" in class 5, effective from November 12, 2017. The plaintiff initiated legal proceedings as they were aggrieved by the sale of counterfeit products bearing the mark "CUTICOLOR" on the platform of Defendant.

The plaintiff's case was based on the fact that unknown defendants, who concealed their identities as fake sellers, were selling counterfeit hair color products with the same "CUTICOLOR" mark. These counterfeit products were packaged to mimic the plaintiff's legitimate products.

Interim Measures by the Hon'ble High Court of Delhi:

In response to the plaintiff's grievances, the Hon'ble High Court of Delhi issued a series of interim measures to address the issue of counterfeiting on e-marketing platforms. These measures aim to empower right holders to combat counterfeiters effectively:

Take Down of Infringing Listings:

The court ordered the immediate removal of all infringing listings of counterfeit products from the e-marketing platform. This step prevents the sale of counterfeit goods to unsuspecting consumers.

Preventing Future Counterfeiting Listings:

In addition to taking down existing infringing listings, the court directed the e-marketing platform to promptly remove any future listings of counterfeit products when notified by the plaintiff. This proactive measure helps in preventing further counterfeit sales.

Disclosure of Seller Information:

"One of the most significant aspects of this order is the requirement for the e-marketing platform to provide the plaintiff with the identities and contact information of the persons who have posted counterfeit listings. This includes names, addresses, phone numbers, email IDs, GST, PAN, and bank account details. This information is crucial for tracking down and pursuing legal action against the counterfeiters."

Implications and Significance:

The Hon'ble High Court of Delhi's interim measures in this case are significant for several reasons. They provide right holders with a practical mechanism to combat counterfeiting on e-marketing platforms:

Effective Deterrence:

The immediate take down of infringing listings and the threat of revealing counterfeiters' identities act as a powerful deterrent against counterfeiting. Sellers engaged in such activities may think twice before continuing.

Preventative Measures:

The court's order also addresses the need for proactive measures. By allowing the plaintiff to report and request the removal of future counterfeit listings, the court acknowledges the continuous nature of this problem and provides a means to tackle it promptly.

Disclosure of Identities:

The most groundbreaking aspect of this order is the requirement for the e-marketing platform to disclose the identities of counterfeit sellers. This information enables right holders to take legal action against the counterfeiters, thereby offering a more robust mechanism for enforcement.

The concluding Note:

The fight against unidentified counterfeiters on e-marketing platforms is an ongoing challenge for right holders. The recent order from the Hon'ble High Court of Delhi in the CUTICOLOR case represents a significant development in addressing this issue. By combining immediate take down measures, proactive prevention of future listings, and the disclosure of seller identities, this order equips right holders with a more effective arsenal to combat counterfeiting in the digital realm.

The Case Law Discussed:

Date of Judgement/Order:27/09/2023

Case No. CS (COMM) 674/2021

Neutral Citation No: N.A.

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge:C Hari Shankar, H.J.

Case Title: Zydus Healthcare Limited Vs Flipkart Internet Pvt. Ltd & Ors

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Cable News Network Inc Vs Ctvn Calcutta Television Network Pvt. Ltd.

Carry on business under Section 20 (b) CPC and Cause of Action under Section 20 (c) CPC in the context of defendant's activity through web site

Background:

In a recent case before the Hon'ble High Court of Delhi, the provisions of Section 20 (b) and Section 20 (c) of the Civil Procedure Code (CPC) were examined in the context of online activities carried out by the defendant through a website. The court's ruling shed light on the distinct treatment of online activities concerning the "carry on business" clause of Section 20 (b) CPC and the "cause of action" provision under Section 20 (c) CPC.

Background of the Case:

The case revolved around a plaintiff who had been established in 1980 for the purpose of operating a news channel in English under the renowned brand CNN, complete with the distinctive CNN logo. The defendant, located in Calcutta, was also involved in the operation of a news channel and had adopted and commenced using a CN Logo that, according to the plaintiff, infringed upon their trademark rights associated with the CNN Logo. Subsequently, a lawsuit was filed by the plaintiff against the defendant on the grounds of trademark infringement.

One of the central questions that arose in this case was whether the defendant's online services, accessible in Delhi through their website, satisfied the requirements of Section 20 (c) CPC or Section 20 (b) CPC. Section 20 (c) CPC deals with the jurisdiction of the court in cases where a part of the cause of action has arisen. Section 20 (b) CPC, on the other hand, pertains to the jurisdiction of the court when the defendant carries on business within its territorial limits.

Distinct Treatment of Section 20 (c) and Section 20 (b) CPC:

The court, in its ruling, emphasized a crucial distinction between online activities in the context of Section 20 (b) CPC and Section 20 (c) CPC.

1. Cause of Action under Section 20 (c) CPC:

The court made it clear that "mere accessibility of a website, without the possibility of concluding a commercial transaction through it, does not constitute part of the cause of action within the meaning of Section 20 (c) CPC."

In other words, the mere fact that a website can be accessed in a particular jurisdiction is insufficient to establish that a part of the cause of action has arisen in that jurisdiction.

This interpretation aligns with the principle that a cause of action is typically related to the specific events or circumstances that give rise to a lawsuit. In the context of online activities, the mere availability of a website to users in a particular jurisdiction is not, in itself, indicative of the cause of action originating in that jurisdiction.

A plaintiff must demonstrate that the essential elements of the cause of action, such as trademark infringement in this case, have occurred within the territorial limits of the court's jurisdiction and for this commercial transaction has to happen through the defendants' website , which was missing in this case.

2. Carry on Business under Section 20 (b) CPC:

In contrast, the court observed that Section 20 (b) of the CPC would be applicable to the case. This is because the defendant, in addition to their website, also conducted business through various online channels, including a Facebook page, Instagram page, Twitter account, and YouTube channel. These channels were accessible to consumers in Delhi and, through these channels, the defendant was deemed to be carrying on business within the meaning of Section 20 (b) CPC.

The court's rationale for this differentiation was that "when a defendant operates through multiple online platforms and engages with consumers in a particular jurisdiction, they can be considered as carrying on business in that jurisdiction. This is because such online presence, when aimed at attracting and interacting with consumers, can be seen as actively participating in the commercial activities of that region."

The Concluding Note:

The Hon'ble High Court of Delhi's ruling in this case provides essential guidance on the interpretation of the terms "carry on business" under Section 20 (b) CPC and "cause of action" under Section 20 (c) CPC in the context of online activities conducted through a website. The ruling emphasizes that the mere accessibility of a website, sans any commercial activity, does not establish a part of the cause of action, and the actual business operations conducted through various online channels determine the applicability of Section 20 (b) CPC.

The Case Law Discussed:

Date of Judgement/Order:28/04/2023

Case No. CS (COMM) 309/2021

Neutral Citation No: 2023:DHC:2862

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge:C Hari Shankar, H.J.

Case Title: Cable News Network Inc Vs Ctvn Calcutta Television Network Pvt. Ltd.:

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Mex Switchgears Pvt. Ltd. Vs Vikram Suri

Introduction:

The case in question revolves around a crucial legal matter: whether service can be effectively conducted via email in a trademark opposition proceeding. Trademark opposition proceedings are integral for protecting intellectual property rights, and determining the validity of service through email has significant implications for the trademark litigation process. In this case, the Appellant did not provide an email address when specifying the address for service. Despite this, service was carried out via email, leading to an appeal before the Hon'ble High Court of Delhi.

The Hon'ble High Court of Delhi's Verdict:

The crux of this case lay in whether email service was legally recognized and permissible in trademark opposition proceedings when a party did not supply their email address for service. The Hon'ble High Court of Delhi provided a nuanced response to this question.

The court opined that email service does not constitute valid service in trademark opposition proceedings, but only in cases where parties have not provided their email addresses, as was the situation in the present case. This verdict upholds the principle that service methods must align with the information provided by the parties involved. In the absence of an email address, traditional modes of service should be employed. While observing so , the Hon'ble High Court of Delhi stated that In view of the express wordings of Section 143 of the Trade Marks Act, the Registry would be duty-bound to effect service only at such address, and effecting service or any other address would not be service at all. 

However, the Hon'ble High Court of Delhi went a step further by clarifying that when parties do provide their email addresses for service, email service cannot be employed in trademark opposition proceedings. This clarification stems from the fundamental notion that when parties provide their email addresses, they expect service through the means they have specified, rather than alternative methods. This affirms the importance of respecting the parties' choices in communication.

Analysis

The Hon'ble High Court of Delhi's ruling can be dissected into several crucial components:

1. Alignment with Parties' Information: The verdict underscores the importance of aligning service methods with the information provided by the parties. In cases where email addresses are not disclosed, the court permits email service as an alternative. This ensures that parties are served according to the details they have provided, upholding fairness and procedural accuracy.

2. Respect for Parties' Choices: The court's clarification that email service is impermissible when parties do provide email addresses is pivotal. It respects the autonomy of the parties in deciding how they wish to be served, and this principle is consistent with the broader notion of due process in legal proceedings.

3. Technological Advancements and Legal Frameworks: This case highlights the ongoing adaptation of legal procedures to the advancements in technology. Email has become a prevalent means of communication, and the court's decision acknowledges this while ensuring that established legal norms are not compromised.

The Concluding Note:

The case surrounding service through email in trademark opposition proceedings raises essential questions about the integration of technology into the legal system. The Hon'ble High Court of Delhi's verdict strikes a balance between leveraging technological tools for efficiency and safeguarding the parties' rights and choices. It underscores the need to adapt legal procedures to the digital age while maintaining due process and adherence to established norms.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. C.A.(COMM.IPD-TM) 69/2022 

Neutral Citation No: 2023:DHC:7588

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge:C Hari Shankar, H.J.

Case Title: Mex Switchgears Pvt. Ltd. Vs Vikram Suri 

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Psychotropics India Ltd Vs Syncom Healthcare Ltd.

Introduction:

When a decree has been granted to the plaintiff in a lawsuit pertaining to trademark infringement, one might assume that the matter has been resolved definitively. However, what if the defendants persist in manufacturing and selling infringing products even after the decree? 

This is a situation where the decree holder seeks a remedy through the initiation of execution proceedings. But, how can an instantaneous remedy be imposed to curtail the infringing activities of the judgment debtor? The answer lies in the appointment of a Local Commissioner in an execution proceeding, as highlighted by a significant ruling from the Hon'ble High Court of Delhi.

The Case at Hand:

In a case that came before the Hon'ble High Court of Delhi, the judgment debtor continued to sell infringing products even after a decree had been issued in favor of the plaintiff. In response, the judgment holder filed an application under Order 26 Rule 9 of the Code of Civil Procedure (CPC) seeking the appointment of a Local Commissioner during the execution proceeding. The primary purpose of this appointment was to seize the infringing products in possession of the judgment debtor. However, the Trial Court rejected this application, leading to challenge before the Hon'ble High Court of Delhi through a Civil Miscellaneous Main Petition.

Applicability of Order XXVI Rule 18A CPC:

The Hon'ble High Court of Delhi, in its deliberations, invoked Order XXVI Rule 18A of the CPC to underscore that the provisions of Order XXVI are not limited to the main suit but extend to execution proceedings as well. This interpretation lays the foundation for utilizing the mechanism of a Local Commissioner in the execution phase to achieve a swifter resolution of issues pertaining to the enforcement of court orders.

Significance of Appointing a Local Commissioner in Execution Proceedings:

In the context of execution proceedings following a decree in trademark infringement cases, the Hon'ble High Court of Delhi highlighted the critical role played by a Local Commissioner. The importance of this appointment can be analyzed from two key perspectives.

1. Ensuring Thorough Investigation:

One primary function of a Local Commissioner is to guarantee a comprehensive investigation into the activities of the defendant. This is particularly relevant in cases of trademark infringement, where the depth of the inquiry is essential to establish the extent of the violation. The Local Commissioner's involvement ensures that the court possesses a complete understanding of the defendant's actions.

2. Effective Enforcement of Court Orders:

Secondly, the appointment of a Local Commissioner serves as a mechanism to enforce court orders effectively. It provides a structured process to report and address any violations promptly. In cases where monetary damages might be a component of the final judgment, the presence of a Local Commissioner becomes even more crucial. The commissioner's involvement ensures that the court can efficiently handle issues related to damages, if warranted, in a systematic and timely manner.

:Crucial Role in Trademark Infringement Matters:

In trademark infringement cases, the significance of appointing a Local Commissioner becomes particularly evident. If Local Commissioners are not appointed in execution petitions, especially when continuous violations of the judgment or decree occur, the effectiveness of permanent injunctions granted during the initial decree is compromised. This is especially relevant in trademark infringement, where brand owners' rights and the interests of consumers and the general public are at stake.

For example, in cases involving medicinal preparations, the absence of Local Commissioners in execution proceedings can result in patients unwittingly purchasing products bearing infringing trademarks. This poses potential harm to their health and is contrary to their interests. By allowing for the appointment of Local Commissioners in execution petitions, the court can promptly and effectively address trademark infringement issues, safeguarding the rights of the decree holder and protecting the broader interests of society.

The Concluding Note:

In conclusion, the case before the Hon'ble High Court of Delhi underscores the pivotal role that Local Commissioners can play in execution proceedings following a decree in trademark infringement cases. The appointment of a Local Commissioner not only ensures a comprehensive investigation into the defendant's activities but also facilitates the enforcement of court orders. This mechanism becomes especially crucial when trademark infringement cases involve continuous violations and where the interests of consumers and the general public are at risk. By allowing for the appointment of Local Commissioners in execution petitions, the court can swiftly and effectively address trademark infringement issues, thereby upholding the rights of the decree holder and safeguarding the broader interests of the society.

The Case Law Discussed:

Date of Judgement/Order:30/09/2019

Case No. CM M 1409 of 2019

Neutral Citation No: N.A.

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge:Prathiba M Singh, H.J.

Case Title: Psychotropics India Ltd Vs Syncom Healthcare Ltd.

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Puma SE Vs Ashok Kumar

Decree of Damages and the Role of the Local Commissioner's Report in Trademark Infringement Cases

Introduction:

This article discusses the significance of the Local Commissioner's report in assessing damages in a trademark infringement case, with reference to a recent judgment by the Hon'ble High Court of Delhi.

The PUMA Trademark Infringement Lawsuit:

The Plaintiff in this case filed a lawsuit against the Defendants, alleging trademark infringement and passing off. The Plaintiff asserted proprietor rights in the well-known PUMA trademark, as well as the iconic leaping cat device. The Defendants were found to be selling counterfeit PUMA products, leading to the infringement suit. The Defendants were initially restrained ex-parte, and as they failed to file a written statement, the suit was decreed in favor of the Plaintiff.

Assessing Damages:

In the aftermath of the decree in favor of the Plaintiff, a key question emerged: how should damages be evaluated based on the evidence available? This is where the role of the Local Commissioner's report becomes crucial.

The Hon'ble High Court of Delhi relied on a recent judgment in "M L Brother LLP v. Mahesh Kumar Bhrualal Tanna [CS(COMM) 126/2022]". The judgment cited Order 26, Rule 10(2) of the Civil Procedure Code (CPC), which stipulates that the report of the Commissioner and the evidence taken by the Commissioner shall be evidence in the suit and shall form part of the record. This provision establishes the evidentiary value of the Local Commissioner's report.

"In light of this legal provision, the Hon'ble High Court of Delhi confirmed that the Local Commissioner's report can be considered as evidence in the case, thereby enabling the court to rely on it for the purpose of assessing damages."

The Local Commissioner's Report:

The court turned to the Local Commissioner's report to evaluate the damages suffered by the Plaintiff due to the Defendants' infringing activities. The report revealed critical information, including the Defendant's average weekly sales and the duration of their involvement in the infringing business.

According to the report, the Defendant's average weekly sale amounted to 200 pairs of shoes, resulting in a weekly revenue of Rs. 40,000 and a monthly revenue of Rs. 1,60,000. The Defendant informed the Local Commissioner that they had been engaged in this infringing business for the last two years. Accordingly, the report estimated that the unauthorized 'PUMA' marked shoes had been sold for a total of 24 months, with a total revenue of Rs. 38,40,000.

The Hon'ble Court observed that considering the costs of raw materials and other expenses were approximately 50% of the revenue, the Defendant was found to have made a profit of approximately Rs. 18 to Rs. 19 lakhs.

Decree of Damages:

Based on the information provided in the Local Commissioner's report, the Hon'ble High Court of Delhi awarded a decree of damages. The court ordered the Defendants to pay Rs. 10 lakhs as damages, in addition to an extra cost of Rs. 2 lakhs.

The Concluding Note:

The recent judgment in this case, emphasizing the evidentiary value of the Local Commissioner's report, demonstrates the importance of reliable evidence in calculating damages in such cases. It underlines the courts' ability to use comprehensive reports to assess the financial harm incurred by the plaintiff and, in doing so, ensures that justice is served in trademark infringement disputes.

The Case Law Discussed:

Date of Judgement/Order:20/10/2023

Case No. CS(COMM) 703/2017

Neutral Citation No: 2023:DHC:7696

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge:Prathiba M Singh, H.J.

Case Title: Puma SE Vs Ashok Kumar

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Dharampal Satpal Limited Vs Basant Kumar Makhija

Section 124 of Trademarks Act 1999 and Contents of Replication

Introduction:

Section 124 of the Trademarks Act 1999 plays a crucial role in determination of prima facie invalidity of trademark registration. This article explores the legal intricacies of Section 124 and delves into the question of whether the contents of a replication can be considered in adjudicating an application under this section.

Section 124 of the Trademarks Act 1999:

Section 124 of the Trademarks Act 1999 provides the framework for addressing the issue of trademark invalidity raised by a plaintiff in response to a defendant's assertion of rights based on the registration of their trademark. When a defendant raises the Defense of Section 30(2)(e) of the Trademarks Act 1999, they are essentially claiming the right to use their registered mark as a defense against charges of infringement and injunction.

The Legal Conundrum:

A critical question arises regarding the procedural steps a plaintiff must take to invoke Section 124 when a defendant utilizes Section 30(2)(e) as their defense strategy. The key debate revolves around whether a plaintiff can raise the issue of invalidity in the replication or if they are required to amend the initial plaint.

The Defendant's Argument:

In a specific case before the Hon'ble High Court of Delhi, the defendant argued that the plea concerning the invalidity of their registered trademark should be incorporated into the original plaint. They contended that the averments contained in the replication could not constitute "pleadings" regarding the registration's invalidity. To support their stance, the defendant relied on the judgment of Travellers Exchange Corporation Ltd. v. Celebrities Management Pvt. Ltd. (2023) 93 PTC 425.

The Court's Interpretation:

The Hon'ble High Court of Delhi interpreted the provision of Section 124(1)(b) differently in response to this argument of defendant. "The court emphasized that a Section 30(2)(e) defense involves the defendant's assertion of rights derived from the registration of their trademark. The latter half of Section 124(1)(b) specifies that the plaintiff can plead the invalidity of the defendant's trademark registration. It became evident that the provision was designed to address a challenge by the plaintiff only when the defendant asserts rights stemming from the registration."

Consequently, the court ruled that the plaintiff's occasion to plead the invalidity of the defendant's trademark, as per Section 124(1)(b), arises exclusively when the defendant raises a Section 30(2)(e) defense. This interpretation allowed the Hon'ble High Court of Delhi to consider the contents of the replication and enabled the plaintiff to proceed with their application under Section 124 of the Trademarks Act 1999 by framing an additional issue of the invalidity of the defendant's registered trademark.

The Concluding Note:

The case before the Hon'ble High Court of Delhi underscores the significance of a meticulous interpretation of trademark laws, especially in situations where a defendant raises the Defense of Section 30(2)(e). Section 124 of the Trademarks Act 1999 clarifies that a plaintiff can indeed raise the issue of trademark invalidity in the replication, provided that the defendant has asserted rights deriving from the registration.

The Case Law Discussed:

Date of Judgement/Order:17/10/2023

Case No. CS(COMM) 806/2017

Neutral Citation No: 2023:DHC:7667

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title: Dharampal Satpal Limited Vs Basant Kumar Makhija

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Himalaya Wellness Company Vs Abony Healthcare

In case of Dishonest adoption, similarity of trademark has to be seen , even if it is less

Introduction:

Trademark infringement cases often hinge on the balance between the similarity of trademarks and the element of dishonesty by the alleged infringer. In a recent case involving the trademarks "LIV.52" and "LIV.55 DS, LIV 999" the court's decision shed light on the significance of dishonesty and how it can tilt the scales in favor of the plaintiff, even if the similarity between the trademarks is not substantial.

The Case Overview:

The case at hand involves a dispute between the plaintiffs and the defendants regarding the use of the mark "LIV.52." Plaintiff 2 had obtained registration of this trademark with registration number 180564 dating back to July 10, 1957. The plaintiffs alleged that the defendants infringed upon their trademark by using the mark "LIV.55 DS and LIV 999" for a similar liver tonic. Furthermore, the defendants' packaging bore a trade dress strikingly similar to that of the plaintiffs.

The Court's Observations:

The court began by scrutinizing the trade dress of both parties. A mere glance at the packaging of the plaintiffs and the defendants revealed that the latter had intentionally replicated the trade dress of the former. This included the thin orange border at the top, the central white strip, and the green lower half of the bottle/package. The lettering, written in white with similar fonts, also resembled that of the plaintiffs. Even when analyzing the wordmarks in isolation, "LIV.52" and "LIV.55 DS and LIV 999" were unmistakably deceptively similar.

The Importance of Dishonesty:

In trademark infringement cases, the element of dishonesty plays a pivotal role. When the court is prima facie convinced that the defendant has intentionally copied or imitated the plaintiff, the presumption arises that the Defendant has successfully confused consumers. This presumption stems from the belief that the defendant's actions were driven by dishonesty. "When dishonesty on the part of the defendant is evident, the court's focus shifts towards the similarities between the trademarks, even if these similarities are not extensive."

In the case under consideration, the court observed that the defendant's trademarks, "LIV.55" and "LIV.999," were deceptively similar to the plaintiff's trademark "LIV.52." The court's ruling was influenced by the apparent dishonesty of the defendant in replicating the plaintiff's trade dress and trademark. Consequently, the suit was decreed in favor of the plaintiff.

The Concluding Note:

This case serves as a pertinent illustration of the legal principles governing trademark infringement cases. Dishonesty on the part of the alleged infringer can weigh heavily in favor of the plaintiff. When the court discerns that the defendant has deliberately copied or imitated the plaintiff, it presumes that consumer confusion is inevitable. In such instances, the court's attention is directed towards the similarities between the trademarks, even if they are not overwhelmingly alike.

The Case Law Discussed:

Date of Judgement/Order:17/10/2023

Case No. CS(COMM) 476/2021

Neutral Citation No: 2023:DHC:7668

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title: Himalaya Wellness Company Vs Abony Healthcare

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539