Glaxo Smithkline Pharma Pvt. Ltd. Vs Cactus Pharma Pvt. Ltd.

Delhi High Court Grants Ex-Parte Injunction in Trademark Dispute Between Glaxo Smithkline and Cactus Pharma

Delhi High Court has granted an ex-parte decree in favor of Glaxo Smithkline Pharma Pvt. Ltd. in their trademark dispute against Cactus Pharma Pvt. Ltd. The case, titled Glaxo Smithkline Pharma Pvt. Ltd. Vs Cactus Pharma Pvt. Ltd., centered around the alleged infringement of the trademark “CEFTUM”.

Background of the Dispute:

Glaxo Smithkline (Plaintiff) is the registered proprietor of the trademark “CEFTUM”, which pertains to an oral prodrug of ‘cefuroxime’, a cephalosporin antibiotic. The plaintiff conceived and adopted the trademark in 1986 and secured its registration under application No. 455064 for pharmaceutical and veterinary preparations in Class 5. The “CEFTUM” products were launched in 1991, and over the years, several variants such as “CEFTUM 500” and “CEFTUM 250” have been introduced.

Allegations Against the Defendant:

The plaintiff filed the suit in response to the defendants’adoption and use of the trademarks “CEFTUS” and “CEFBACTUM”, which were alleged to be deceptively similar to “CEFTUM”. The plaintiff argued that such use was likely to cause confusion among consumers, potentially leading to mistaken identity and misuse.

Court Proceedings and Injunction:

On July 26, 2023, the Delhi High Court, upon a prima facie assessment of the plaintiff's application and accompanying documents, issued an ex-parte ad-interim injunction restraining the defendants from using the contested trademarks. The defendants failed to file a written statement within the condonable period of 120 days, resulting in the closure of their right to do so by the Joint Registrar on February 19, 2024.

Judgment and Order:

In light of the defendants' failure to contest the suit, the Court decreed in favor of the plaintiff under Order 13 A of the Commercial Court Act, 2015. The judgment, delivered by Hon'ble Judge Sanjeev Narula on May 17, 2024, effectively upheld the plaintiff's claims, providing relief against the unauthorized use of the similar trademarks.

Case Title: Glaxo Smithkline Pharma Pvt. Ltd. Vs Cactus Pharma Pvt. Ltd.

Judgment/Order Date: 17.05.2024

Case No. CS Comm 497 of 2023

Neutral Citation: 2024:DHC:4671

Name of Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Arun Krishnan M. Vs. Cure and Care Therapeutics

Activities of defendant in a different Area is not a ground for defending in Trademark Dispute

Introduction:

Trademark disputes often revolve around the potential for consumer confusion between similar marks, particularly when the products or services involved are closely related. This article examines a recent appeal case where the defendant's activities in a different geographical area were argued as a defense in a trademark dispute. The appeal was filed against the order passed by the Additional District Judge-II, Manjeri, in I.A.No.2/2022, under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, in O.S.No.5/2021.

Background of the Case:

The dispute centers around the trademarks ‘CILNICURE’ and ‘CILNICUE’, both associated with medicinal products used for treating blood pressure. The plaintiff, who had obtained trademark registration for ‘CILNICURE’ on August 8, 2017, filed for a temporary injunction against the defendant to prevent the sale and manufacture of a similar product under the name ‘CILNICUE’. The defendant, who registered the trademark ‘CILNICUE’ on September 7, 2021, contested this injunction.

Phonetic and Visual Similarity:

The primary issue at hand is the high degree of resemblance between the trademarks ‘CILNICURE’ and ‘CILNICUE’. Both marks share a significant phonetic similarity, raising a substantial risk of consumer confusion. Given that both products are used for treating blood pressure, any mistake in medication could have serious health implications. The court noted that the only difference between the trademarks is the absence of the letter 'R' in ‘CILNICUE’, which does not suffice to eliminate the risk of confusion.

Geographical Argument by the Defendant:

The defendant argued that their product, ‘CILNICUE’, was marketed exclusively in the districts of Thiruvananthapuram, Kollam, Pathanamthitta, and Thrissur, while the plaintiff's product, ‘CILNICURE’, was primarily sold in the Malabar area. The defendant claimed that this geographical separation should negate the possibility of confusion and thereby serve as a valid defense against the injunction.

Court's Analysis and Decision:

The court rejected the defendant's argument, emphasizing that geographical limitations in the marketing of a product are not a valid defense in trademark disputes. The court underscored several key points in its analysis:

Potential for Market Expansion:

The court recognized that the defendant's business could expand beyond its current geographical confines. It is unreasonable to assume that the defendant will restrict their trade to specific districts indefinitely.

Consumer Confusion:

The risk of consumer confusion remains irrespective of current market boundaries. Pharmacists and consumers might still misread or misunderstand prescriptions, given the high phonetic similarity between ‘CILNICURE’ and ‘CILNICUE’. This is particularly critical in the pharmaceutical industry, where such confusion could lead to significant health risks.

Market Overlap:

The court noted that trademark protection is not confined to specific geographical areas unless explicitly stated. Therefore, the plaintiff's business does not need to be restricted to the Malabar area to avoid the risk of passing off due to the defendant's use of a deceptively similar trademark.

Conclusion:

The court's decision to uphold the temporary injunction against the defendant underscores the principle that geographical separation does not mitigate the potential for consumer confusion in trademark disputes. The ruling reaffirms the importance of protecting trademarks to prevent public deception and ensure consumer safety, particularly in the pharmaceutical sector. The decision also highlights that businesses cannot rely on current market boundaries as a defense in trademark disputes, as markets are dynamic and constantly evolving.

Case Title: Arun Krishnan M. Vs. Cure and Care Therapeutics

Judgment/Order Date: 29.05.2024

Case No. FAO 117 of 2022

Neutral Citation: 2024:KER:35199

Name of Court: Kerala High Court

Name of Hon'ble Judge: G.Girish, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

YC Electric Vehicle Vs Saksham Trading Company

Delhi High Court Grants Ex-Parte Ad Interim Injunction in Favor of YC Electric Vehicle Against Saksham Trading Company

In a decisive ruling, the Delhi High Court has issued an ex-parte ad interim injunction in favor of YC Electric Vehicle, a prominent manufacturer of electric vehicles, against Saksham Trading Company. The plaintiff, a partnership firm established in 2014, has made significant strides in the electric vehicle industry, particularly with their trademarks 'YATRI' and 'YC' used for E-Rickshaws.

Background and Claims

YC Electric Vehicle alleged that Saksham Trading Company had blatantly copied their trademarks 'YATRI' and 'YC' by adopting the confusingly similar marks 'YATRA' and 'YS' for identical goods. The plaintiff contended that this unauthorized use by the defendant was a direct infringement of their trademarks and constituted an attempt to capitalize on YC Electric Vehicle's established market presence and reputation.

In addition to the current use of 'YATRA' and 'YS', the defendant had also filed multiple trademark applications (nos. 6284673, 6284674, 6284675, 6284676, and 6284677) for 'YATRA' formative marks on a 'proposed to be used' basis. YC Electric Vehicle promptly filed oppositions against these applications, demonstrating their commitment to protecting their intellectual property rights.

Court's Findings:

Upon reviewing the case, Hon'ble Judge Anish Dayal determined that the plaintiff had presented a compelling prima facie case for the grant of an ex-parte ad interim injunction. The court recognized the potential for irreparable harm to YC Electric Vehicle's business and brand if the injunction was not granted. Furthermore, the balance of convenience was found to favor the plaintiff, given the likelihood of consumer confusion and damage to their market reputation.

Implications and Analysis

The court's recognition of the plaintiff's established use of 'YATRI' and 'YC' since 2014 reinforces the importance of protecting well-known trademarks from infringement and unfair competition.

Conclusion

The Delhi High Court's decision to grant an ex-parte ad interim injunction in favor of YC Electric Vehicle against Saksham Trading Company is a critical step in upholding trademark rights and preventing unfair competition. As the case progresses, it will be closely watched by stakeholders in the electric vehicle industry and the broader business community for its implications on trademark law and brand protection.

Case Title:YC Electric Vehicle Vs Saksham Trading Company

Judgment/Order Date: 27.05.2024

Case No. CS(COMM) 442/2024

Neutral Citation: NA

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Hell Energy Magyarorazagkft Vs National Internet Exchange of India

Delhi High Court Grants Ex-Parte Ad Interim Injunction to Hell Energy in Trademark Infringement Case

Delhi High Court has granted an ex-parte ad interim injunction in favor of Hell Energy Magyarország Kft., the registered proprietor of the trademark "HELL" in Class 32, in respect of energy drinks. The plaintiff holds multiple international registrations for their marks, establishing a strong global presence.

In April 2024, Hell Energy discovered that their trademarks were being misused by individuals operating under the domain names “hellenergypvt.com” and “hell-energy.in.” These imposters allegedly used email addresses associated with these domains to defraud the public by offering fake distributorships for Hell Energy products.

Based on the evidence and pleadings, the court found that the plaintiffs had prima facie established their ownership of the "HELL" trademark and its derivatives, along with the associated goodwill. The provided screenshots and other materials clearly demonstrated the misuse of the plaintiffs’ registered trademarks by the imposters.

Judge Sanjeev Narula, evaluating the case, noted that Hell Energy had made a compelling prima facie case. The court recognized the potential for irreparable harm to the plaintiffs if an ex-parte ad interim injunction was not granted. Consequently, the balance of convenience was deemed to lie in favor of the plaintiffs.

As a result, the court issued an ex-parte ad interim injunction, restraining the defendants from using the disputed domain names and any associated email addresses until the next hearing. This order aims to prevent further fraudulent activities and protect the integrity of Hell Energy’s trademark.

Case Title:Hell Energy Magyarorazagkft Vs National Internet Exchange of India
Judgment/Order Date: 30.05.2024
Case No. CS(COMM) 494/2024
Neutral Citation: NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

DS Afrifoods Pvt. Ltd. Vs Singhal Enterprises

Delhi High Court Grants Ex-Parte Ad Interim Injunction in Favor of DS Afrifoods Pvt. Ltd. in Trademark Dispute with Singhal Enterprises

In this case the Delhi High Court has granted an ex-parte ad interim injunction in favor of DS Afrifoods Pvt. Ltd., the proprietor of the trademarks “DOONMALAI” and its trade dress/packaging, against Singhal Enterprises for the alleged use of a deceptively similar mark, “DOODHMALAI,” for identical products.

DS Afrifoods Pvt. Ltd. has been using the trademark “DOONMALAI” since June 1, 1986, for their rice products, and their trademarks and labels are currently pending registration in Class 30 before the Trademarks Registry. In addition to trademark rights, the plaintiff claims copyright over the artistic work comprising these labels.

The plaintiff brought the suit against Singhal Enterprises, alleging that the defendant's mark “DOODHMALAI” is phonetically, visually, and structurally similar to “DOONMALAI.” Furthermore, the defendant has allegedly replicated the make and design of the plaintiff’s products. The court noted that the previous business relationship between the parties suggests that the defendant's adoption of the impugned mark and packaging may be intended to leverage the plaintiff’s established market reputation.

In the court’s prima facie opinion, the defendants appear to be passing off their goods as those of the plaintiff. This conclusion is supported by the plaintiff’s detailed sales figures presented in the plaint. Judge Sanjeev Narula found that the plaintiff has made a convincing prima facie case, demonstrating that an ex-parte ad interim injunction is necessary to prevent irreparable loss to the plaintiff. The balance of convenience was also deemed to favor the plaintiff.

As a result, the Delhi High Court issued an ex-parte ad interim injunction, prohibiting Singhal Enterprises from using the “DOODHMALAI” mark or any similar variants until the next hearing. This order aims to protect the plaintiff's trademark rights and prevent consumer confusion in the market.

Case Title: DS Afrifoods Pvt. Ltd. Vs Singhal Enterprises

Judgment/Order Date: 30.05.2024

Case No. CS(COMM) 477/2024

Neutral Citation: NA

Name of Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Dominos IP Holder Vs MG Foods

Ex-Parte Ad Interim Injunction Granted in Favor of Domino's in Trademark Infringement Case Against MG Foods

The plaintiffs, Domino’s IP Holder, have successfully secured an ex-parte ad interim injunction against MG Foods for trademark infringement. The plaintiffs, renowned for their “DOMINO’S” mark since 1965, have established an extensive global presence with over 20,500 stores in more than 90 countries. In India, Domino's maintains a robust online ordering platform through their domain www.dominos.co.in, operational since 2007.

The plaintiffs raised concerns regarding the activities of defendant No.1, MG Foods, which has been operating in various regions of Punjab, specifically Jalandhar, Nakodar, Goraya, and Mehatpur. The defendant was found to be using a phonetically and visually similar mark, ‘DONITO’S,’ to sell identical products such as pizzas and burgers. This similarity has led to allegations of trademark infringement.

Hon'ble Judge Anish Dayal, presiding over the case, found sufficient grounds to grant the plaintiffs’ request for an ex-parte ad interim injunction. The court acknowledged that the plaintiffs had established a prima facie case and that the balance of convenience favored them. Additionally, the court noted that the plaintiffs would likely suffer irreparable harm if the injunction was not granted.

As a result, the court issued an ex-parte ad interim injunction in favor of the plaintiffs, prohibiting the defendants from using the deceptively similar mark ‘DONITO’S’ until the next hearing. This order aims to prevent any further potential harm to the plaintiffs' brand and business operations.

Case Title: Dominos IP Holder Vs MG Foods

Judgment/Order Date: 31.05.2024

Case No. CS(COMM) 517/2024

Neutral Citation: NA

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Akzo Nobel Coating International BV Vs JK Cement

Role of Imagination Test and Competitors' Need Test in Trademark Disputes

Introduction:

In this case of ‘WEATHERSHIELD,’ used by the plaintiff for paints and coatings, versus ‘JK SUPER STRONG BUILD SAFE WEATHER SHIELD,’ used by the defendant for cement and building and construction materials, the court’s reliance on the “degree of imagination test” and “competitors’ need test” provides a detailed illustration of these concepts in action. This article examines the application of these tests and the court’s rationale in determining trademark infringement, leading to the interim relief granted to the plaintiff.

Background:

The plaintiff’s mark ‘WEATHERSHIELD’ has been in use since the 1970s and is registered in over 91 countries. In India, it holds registrations dating back to 1995. In contrast, the defendant applied for registration of ‘JK SUPER STRONG BUILD SAFE WEATHER SHIELD’ in September 2019 for building and construction materials, including cement. Upon discovering the defendant’s applications, the plaintiff initiated a legal dispute, arguing potential infringement and confusion due to the similarity of the marks.

Imagination Test and Competitors’ Need Test:

The court utilized two key tests to assess the distinctiveness and protectability of the plaintiff’s mark: the degree of imagination test and the competitors’ need test. These tests are interrelated and help determine whether a mark is descriptive or suggestive, and thus, the extent of protection it deserves.

Degree of Imagination Test:

This test evaluates how much imagination is required for consumers to associate the mark with the product. A mark requiring a high degree of imagination is less likely to be considered descriptive and more likely to be protected. In this case, the court noted that ‘WEATHERSHIELD’ is a unique and distinctive combination of common words ‘weather’ and ‘shield’. The term does not appear in dictionaries, underscoring its distinctiveness. The combination suggests a product that protects against weather, but this association is not immediately obvious, necessitating a higher degree of imagination.

Competitors’ Need Test:

This test assesses whether competitors need to use the term to describe their goods. If a term is essential for competitors to describe their products, it is likely to be considered descriptive and less protectable. The court found that the defendant had numerous alternative ways to convey the idea of weather protection without using the exact term ‘WEATHERSHIELD’. Alternatives such as ‘all weather protection’, ‘weather protector’, or ‘weather guard’ could effectively communicate the same message without infringing on the plaintiff’s mark.

Application to the Case:

The court observed that the defendant’s use of ‘WEATHER SHIELD’, with or without a space, and its placement on packaging indicated an intent to use it as a distinctive trademark rather than merely a descriptive term. This was evident from the manner of its presentation on packaging and in advertisements. Additionally, both products—cement and paints—are complementary in the construction industry and often purchased by the same group of consumers, including home builders, contractors, and masons.

Complementary Goods and Trade Channels:

The court highlighted that both cement and paints are used in construction and are often sold through the same trade channels, such as hardware and paint shops. This complementary relationship and common market channels increase the likelihood of confusion among consumers if identical or similar marks are used for both products. Thus, the court found that the concurrent use of ‘WEATHERSHIELD’ and ‘WEATHER SHIELD’ would likely lead to confusion, warranting interim relief in favor of the plaintiff.

Conclusion:

The application of the imagination test and competitors’ need test in this trademark dispute underscores the importance of evaluating the distinctiveness of a mark and the necessity for competitors to use similar terminology. The court’s detailed analysis in favor of the plaintiff highlights how these tests are used to protect trademarks that are unique and do not impose undue restrictions on competitors. This case reaffirms that trademarks requiring a higher degree of imagination and not essential for describing competitors’ products are afforded greater protection, ensuring fair competition and consumer clarity in the marketplace.

Case Title: Akzo Nobel Coating International BV Vs JK Cement
Judgment/Order Date: 28.05.2024
Case No. CS(COMM) 212/2023
Neutral Citation: 2024:DHC:4694
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Chryscapital Advisers Vs Raj Lal Kumari

Delhi High Grants Ex-Parte Interim Injunction in Favor of Chryscapital Advisers Against Fraudulent Use of Trademark

Introduction On May 29, 2024, the High Court of Delhi granted an ex-parte ad-interim injunction in favor of Chryscapital Advisers in the case titled *Chryscapital Advisers Vs Raj Lal Kumari* (Case No. CS(COMM) 475/2024). The Hon'ble Judge Sanjeev Narula presided over the matter, which addressed the unauthorized and fraudulent use of the trademark "CHRYSCAPITAL" by the Defendants. This decision underscores the importance of trademark protection and the judiciary's role in upholding intellectual property rights against deceptive practices. Background of the Case Chryscapital Advisers, the Plaintiff, has been using the trademark "CHRYSCAPITAL" since 1999. This mark, along with "CHRYS," has been registered and integrated into the company’s identity, including domain names, establishing a solid foothold in the investment and advisory industry. The Plaintiff alleged that the Defendants were fraudulently claiming an affiliation with Chryscapital Advisers, operating a deceptive trading investment business, and promising unrealistic returns to the public. This misuse aimed to capitalize on Chryscapital’s well-established reputation and goodwill. Legal Framework and Issues The primary legal issues revolved around trademark infringement and passing off. Trademark infringement involves the unauthorized use of a mark that is identical or confusingly similar to a registered trademark, causing likely confusion about the origin of goods or services. Passing off is a common law tort used to enforce unregistered trademark rights, where a defendant’s misrepresentation leads the public to believe that their goods or services are those of the plaintiff. Court's Analysis and Findings The Court, upon examining the facts, concluded that: 1.Trademark Validity and Use: Chryscapital Advisers had a long-standing use and multiple registrations of the trademarks "CHRYS" and "CHRYSCAPITAL," affirming their proprietary rights. 2.Defendants’ Misrepresentation: The Defendants were found to be dishonestly using the Plaintiff’s trademarks, falsely claiming affiliation with Chryscapital, and promising high returns to investors. This was seen as a deliberate attempt to exploit Chryscapital's goodwill. 3.Likelihood of Confusion and Deception: The Court recognized that the Defendants’ actions were likely to deceive the public, causing confusion and potentially leading to financial harm for those misled by the fraudulent claims. 4.Immediate Relief Justification: Given the urgency and the potential for continued deception and damage, the Court deemed it necessary to grant an ex-parte ad-interim injunction. This immediate relief was crucial to prevent further misuse of the trademarks and protect the Plaintiff's business reputation. Ex-Parte Ad-Interim Injunction An ex-parte ad-interim injunction is a temporary measure granted without the presence of the Defendants, aimed at providing immediate relief to the Plaintiff. This is typically granted when there is a clear case of urgency or potential for irreparable harm. In this case, the Court restrained the Defendants from using "CHRYS," "CHRYSCAPITAL," or any deceptively similar marks in any manner. Conclusion:

The High Court of Delhi's grant of an ex-parte ad-interim injunction in favor of Chryscapital Advisers is a significant legal development in the realm of intellectual property protection. By swiftly addressing the unauthorized and deceptive use of the "CHRYSCAPITAL" trademark, the Court has underscored the critical role of judicial oversight in protecting trademarks and preventing fraud.

Case Title: Chryscapital Advisers Vs Raj Lal Kumari

Judgment/Order Date: 29.05.2024

Case No. CS(COMM) 475/2024

Neutral Citation: NA

Name of Court: High Court of Delhi

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539