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

Krishnendu Ghosh Vs The State Of West Bengal

Wrong Mentioning of Section in Trademark Complaint

Introduction:

The case under discussion involves a petition seeking the quashing of an FIR due to the wrong mentioning of a section of the law by the recording officer at the police station. The petitioner argued that the complaint did not align with the definition of "Copyright" under Section 2(y) of the Copyright Act, while the state contended that the contents of the complaint fell under the ambit of "artistic work" as defined in the same section. This article aims to delve into the legal nuances surrounding the wrong mentioning of sections in FIRs and its implications on the proceedings.

Background:

The FIR was lodged based on a complaint alleging the infringement of trademark and trade description of Diageo products. However, the FIR was registered under Section 63 of the Copyright Act, 1957, instead of the appropriate section of the Trademark Act. The petitioner sought the quashing of the FIR under Section 482 of the Criminal Procedure Code (Cr.P.C) on this ground.

Cognizance of Offence:

 The Hon'ble High Court refused to quash the FIR, emphasizing that the wrong mentioning of a section by the recording officer does not invalidate the contents of the complaint. The court highlighted that the magistrate is not bound by the sections mentioned in the formal FIR or charge sheet but must assess the contents of the complaint and the evidence collected during investigation before taking cognizance of the offence.

Substantive Law Vs. Technical Error:

The case underscores the distinction between substantive law and technical errors in legal proceedings. While adherence to procedural formalities is important, substantive justice should prevail. In this case, the core allegation of trademark infringement remained unaffected by the technical error in mentioning the section.

Interpretation of Statutory Provisions:

The disagreement between the petitioner and the state regarding the applicability of Section 2(y) of the Copyright Act highlights the interpretative challenges posed by statutory provisions. Different interpretations may arise based on the facts and circumstances of each case, necessitating judicial intervention to resolve disputes.

Judicial Discretion:

The court's decision reflects its discretionary power to determine the merit of each case based on the principles of equity and justice. By refusing to quash the FIR, the court ensured that the allegations of trademark infringement were duly examined through the legal process.

Conclusion:

The refusal to quash the FIR underscores the court's commitment to upholding the rule of law while ensuring a fair and impartial adjudication of disputes. Ultimately, the decision reinforces the principle that justice should not be impeded by procedural irregularities but should be guided by the substantive merits of the case.

Case Title: Krishnendu Ghosh Vs The State Of West Bengal

Order Date: 19.03.2024

Case No. C.R.R. 3427 of 2015 

Neutral Citation:NA

Name of Court: Calcutta High Court

Name of Hon'ble Judge: Bibhas Ranjan De, 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

Sulphur Mills Limited Vs Dharmaj Cropguard Limited and another

Relevance of Expert Affidavit in Patent Infringement Cases

Introduction:

In patent infringement suits, the reliance on expert testimony plays a pivotal role in establishing the validity of claims and determining the likelihood of success. However, the issue of whether expert affidavits can be considered without cross-examination has sparked debate within legal circles. This article examines a recent case where the court declined to grant interim relief in a patent infringement suit, inter alia emphasizing the necessity of cross-examination in assessing expert evidence.

Background of the Case:

The subject matter of the suit revolves around the infringement of a patent titled "Novel Agricultural Composition." The original claim in the patent did not mention the conversion of sulphur to sulphate, but later amendments modified the concentration of sulphur as the active ingredient. The defendant argued that the features of the claimed composition were already disclosed in a prior application (App 655), leading the court to decline interim relief in favor of the plaintiff.

Court's Observations:

While declining relief, the court scrutinized the practice of relying on expert affidavits without subjecting the experts to cross-examination. The court expressed doubts regarding the advisability and permissibility of placing reliance on such evidence in patent suits. It emphasized that neither side admitted the veracity of the opposing party's affidavits, and the experts had not been cross-examined. Consequently, the court questioned whether the merits of the case could be decided solely based on untested expert evidence.

The court highlighted the importance of cross-examination in testing the credibility and reliability of expert testimony. Without the opportunity for cross-examination, the court argued, expert affidavits cannot constitute the basis for granting or rejecting interim relief in patent infringement cases.

Legal Analysis:

The reliance on expert evidence is common in patent litigation, where technical complexities often necessitate expert opinion to interpret claims and assess infringement. However, the efficacy of such evidence depends on its thorough examination and testing through cross-examination.

Cross-examination serves as a crucial mechanism for uncovering inconsistencies, biases, or limitations in expert testimony. It allows opposing parties to challenge the expertise, methodology, and conclusions presented by experts, thereby ensuring a fair and robust adjudication process.

In the absence of cross-examination, the reliability and credibility of expert affidavits may be called into question. Unchallenged expert evidence runs the risk of being one-sided and may not provide a comprehensive understanding of the technical nuances at play in patent disputes.

Conclusion:

The case underscores the significance of cross-examination in patent infringement cases and the limitations of relying solely on expert affidavits. Courts must exercise caution when assessing expert evidence and ensure that it undergoes rigorous testing through cross-examination to establish its credibility and reliability.

Case Title: Sulphur Mills Limited Vs Dharmaj Cropguard Limited and another
Order Date: 18.03.2024
Case No. CS(COMM) 1225/2018
Neutral Citation:2024: DHC: 2154
Name of Court: High Court of Delhi
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

Sunpharma Laboratories Limited Vs Narender Kumar and ors

The Ramifications of Copying whole of the Plaintiff's Trademarks

Introduction:

This article delves into a recent legal case concerning alleged passing off, wherein the defendant copied the entirety of the plaintiff's trademark for medicinal eye drops. The case raises important legal questions regarding deceptive similarity, prior use, and the duty of due diligence in trademark disputes.

Background of the Case:

The dispute revolves around the plaintiff's trademark "CAFTA," used for medicinal eye drops containing the compound "ALCAFTADINE." The defendant, on the other hand, introduced a competing product under the mark "CAFTADAY," also containing the same compound. The plaintiff, claiming prior use of the mark "CAFTA" since 2019, alleged passing off by the defendant, whose earliest trademark application dates to 2021 on a 'proposed to be used' basis.

The plaintiff argued that the defendant failed to conduct due diligence and neglected to search the Trade Marks Registry before adopting the mark "CAFTADAY." Additionally, the plaintiff contended that the defendant is estopped from claiming lack of distinctiveness in the term "CAFTA" since they themselves applied for registration of the mark "CAFTADAY."

Court's Observations:

The Hon'ble Court scrutinized the issue of misrepresentation in the case and noted that the defendant's mark "CAFTADAY" completely subsumed the plaintiff's mark "CAFTA." The court emphasized the deceptive similarity between the two marks, highlighting that "CAFTADAY" essentially consists of "CAFTA" and "DAY" as two separate words. This similarity could lead an average consumer of imperfect recollection to confusion between the two marks, thereby supporting the plaintiff's claim of passing off.

Court's Decision:

Based on its observations, the Hon'ble Court restrained the defendants from using the mark "CAFTADAY." The court recognized the deceptive nature of the defendant's mark, which effectively incorporated the entirety of the plaintiff's mark "CAFTA." By issuing the injunction, the court sought to prevent further confusion in the marketplace and protect the plaintiff's rights as the prior user of the mark.

Legal Analysis:

Trademark law aims to protect consumers from confusion and deception while safeguarding the goodwill and reputation associated with established marks. In this case, the defendant's adoption of entire of the plaintiff's trademark "CAFTA" constitutes clear infringement and passing off. By copying the entirety of the plaintiff's mark, the defendant sought to capitalize on the goodwill and reputation built by the plaintiff, thereby causing confusion among consumers.

Conclusion:

The case serves as a reminder of the legal consequences of copying entire trademarks and the need for diligence in trademark adoption. By restraining the defendant from using the mark "CAFTADAY," the court reaffirmed its commitment to upholding the integrity of trademark rights and preventing unfair competition in the marketplace.

Case Title: Sunpharma Laboratories Limited Vs Narender Kumar and ors

Order Date: 21.03.2024

Case No. CS(COMM) 424/2021

Neutral Citation:2024: DHC: 2934

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Anish Dayal, 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

Pidilite Industries Limited Vs Sanjay Jain and another

Implications of Disclaimer Conditions attached to multiple Trademark Registrations

Introduction:

In the case of trademark registrations, sometimes disclaimer conditions are attached, limiting the exclusive rights conferred by the registration. This article delves into a recent legal case involving a rectification application filed under Sections 47 and 57 of the Trade Marks Act, 1999, concerning a trademark bearing the term 'KWIK' and the implications of disclaimer conditions attached to multiple trademark registrations.

Background of the Case:

The case revolves around the rectification application filed for the removal/cancellation of the trademark 'POMA-EX-KWIKHEAL' registered under no. 2223608 in the Register of Trade Marks. The respondent obtained registration for 'POMA-EX-KWIKHEAL' on 16th December 2014, with the claimed user from 1st July 2011. The petitioner, claiming ownership of the mark 'FEVIKWIK' under registration no. 465651 dated 6th January 1987 in class-1, contested the registration of 'POMA-EX-KWIKHEAL' on the grounds of similarity.

Court's Observations:

The Hon'ble Court made critical observations regarding the registration of the petitioner's mark 'FEVIKWIK.' It noted that while the petitioner held registrations for 'FEVIKWIK,' 2 registrations, out of 5, included a disclaimer limiting the exclusive use of the term 'KWIK.'

The limitation explicitly stated that the registration of the trademark shall not confer exclusive rights to the word 'KWIK.' Despite variations in the disclaimer's inclusion across registrations, the Registrar imposed this limitation to maintain the integrity of the register.

The court emphasized that the presence of 'KWIK' in the respondent's registered mark 'KWIKHEAL' did not prevent the respondent from asserting commonality in the term 'KWIK.' It highlighted the distinctiveness and dissimilarities between the petitioner's mark and the respondent's device mark, indicating that the petitioner could not claim a monopoly over the term 'KWIK' and its variations.

Court's Decision:

Ultimately, the Hon'ble High Court of Delhi dismissed the rectification petition. It reasoned that the petitioner's statutory right in the registered mark 'FEVIKWIK' did not confer exclusive rights over the term 'KWIK' due to the disclaimer imposed by the Registrar of Trademarks. Since the petitioner lacked exclusive rights over 'KWIK,' it could not seek rectification against 'KWIKHEAL.' Furthermore, the rectification sought pertained to the respondent's device mark, which exhibited distinctive dissimilarities from the petitioner's mark.

Legal Analysis:

The case underscores the significance of disclaimer conditions in multiple trademark registrations. Multiple Disclaimers serve to clarify that certain elements of a mark lack exclusive protection, thereby preventing monopolization of common terms. In this instance, the registrar imposed a disclaimer on the term 'KWIK' in the petitioner's multiple trademarks 'FEVIKWIK.

Trademark law aims to balance the rights of trademark owners with the need to prevent undue monopolization that could stifle competition and innovation. By attaching disclaimer conditions, the registrar ensures that trademarks with common or descriptive elements do not unduly restrict others from using similar terms in their marks.

Conclusion:

The case highlights the complexities surrounding disclaimer conditions in trademark registrations and their impact on subsequent disputes. While trademark owners may hold statutory rights in their registered marks, disclaimer conditions may limit the scope of those rights, particularly concerning common or descriptive terms.

Case Title: Pidilite Industries Limited Vs Sanjay Jain and another

Order Date: 22.03.2024

Case No. C.O. (COMM.IPD-TM) 371/2022

Neutral Citation:2024: DHC: 2369

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Anish Dayal, 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