Kabushiki Toshiba Appliances Vs Toshiba Appliances Co

Appropriateness of Defendant’s Explanation for Trademark Adoption in "Kabushiki Kaisha Toshiba Vs Tosiba Appliances Co" case

Introduction:

Trademark disputes hinge on the originality of a mark and the intent behind its adoption. In the case of Kabushiki Kaisha Toshiba v. Tosiba Appliances Co., the defendant, Tosiba Appliances, presented an explanation for adopting the trademark "TOSIBA" that was deemed improper by the court. This article analyzes the defendant’s justification, the court’s assessment of the evidence, and the broader implications for trademark law.

Plaintiff's Case:

Kabushiki Kaisha Toshiba, the Plaintiff's case is that it is a globally recognized corporation that owns the trademark "TOSHIBA," under which it sells various electronic and electrical goods. The trademark was conceived in 1939 and registered in India in 1953 across multiple classes. The plaintiff argued that the "TOSHIBA" mark is distinctive, with significant goodwill in India, and that the defendant's use of the similar "TOSIBA" mark constitutes trademark infringement.

Defendant's Case:

The defendant, Tosiba Appliances Co., claimed that it adopted the "TOSIBA" trademark independently in 1974, with no knowledge of the plaintiff’s prior registration. According to the defendant, the mark was created as a tribute to the founder’s mother, affectionately known as "Toshi Bai." They contended that the trademark was devised as a homage and had been continuously used since 1975, acquiring substantial recognition in the market.

The Defendant’s Explanation: Improper Justification?

The Explanation’s Content:

During the deposition, the defendant, through DW-1 (the proprietor), stated that "TOSIBA" was inspired by the proprietor's mother, Ms. Sumitra, who was reverently called "Toshi Bai." The term "Bai" was deemed unsuitable for a business name, especially in the context of electrical goods, leading to its modification to "Ba," which is a term of respect in Gujarati.

Court’s Examination of the Justification:

The court found several inconsistencies in the defendant's narrative:

Lack of Corroboration:

The defendant failed to provide convincing evidence that Ms. Sumitra was indeed known as "Toshi Bai." No family members or documents corroborated this claim, raising doubts about the truthfulness of the explanation.

Inconsistencies in the Story:

The court noted that the defendant did not satisfactorily explain the omission of the letters 'H' and 'I' from "Toshi Bai" to form "TOSIBA." The justification that "Ba" was used as a term of respect was questioned, especially since the defendant's testimony concerning the existence of daughters-in-law at the time of adoption was found to be implausible.

Lack of Logical Consistency:

The defendant’s explanation of modifying "Bai" to "Ba" due to respect appeared forced and lacked a logical connection to the business context. The court viewed this as an attempt to retroactively justify the adoption of a mark that was deceptively similar to the plaintiff's trademark.

Court’s Conclusion:

The court concluded that the defendant's explanation for adopting "TOSIBA" was not credible. The inconsistencies and lack of corroboration indicated that the narrative was contrived to provide a veneer of legitimacy to what was essentially an act of trademark infringement.

Infringement of Plaintiff's Trademark:

Legal Framework:

Under Section 29(1) of the Trade Marks Act, 1958, the unauthorized use of a trademark that is identical or deceptively similar to a registered trademark constitutes infringement. The plaintiff argued that the defendant's "TOSIBA" mark was deceptively similar to "TOSHIBA," causing confusion among consumers and diluting the distinctiveness of the plaintiff's brand.

Court’s Finding:

The court agreed with the plaintiff, holding that the defendant's use of "TOSIBA" amounted to trademark infringement. The marks were phonetically and visually similar, leading to a high likelihood of confusion. The court emphasized that the defendant's adoption of the mark was not in good faith and lacked honest concurrent use.

Passing Off: The Unsuccessful Claim:

Plaintiff’s Argument:

The plaintiff also sought to establish a passing-off claim, arguing that their "TOSHIBA" mark had a transborder reputation in India prior to the defendant’s adoption of "TOSIBA." They asserted that the defendant's use of the similar mark would deceive consumers into believing that the goods originated from the plaintiff, thereby damaging their reputation.

Court’s Conclusion:

The court found that the plaintiff failed to provide sufficient evidence of their trademark's transborder reputation in India before the defendant’s adoption of "TOSIBA." As a result, the passing-off claim was not sustained.

Delay, Laches, and Acquiescence:

Defendant’s Argument:

The defendant argued that the plaintiff had delayed in filing the lawsuit and had, by their inaction, acquiesced to the defendant's use of the "TOSIBA" mark.

Court’s Ruling:

The court rejected this argument, stating that the defendant failed to demonstrate that the plaintiff had unduly delayed the legal proceedings or acquiesced to the use of the mark. The court emphasized that the long duration of the case was due to the complexity of the issues involved and not due to any fault of the plaintiff.

Relief Granted:

The court issued a permanent injunction restraining the defendant from using the "TOSIBA" trademark or any other deceptively similar mark. In recognition of the infringement and the protracted nature of the lawsuit, the court awarded the plaintiff nominal damages of Rs. 15,00,000/- and recoverable costs.

Conclusion:

The case of Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. highlights the importance of a credible and consistent explanation for the adoption of a trademark, particularly when faced with allegations of infringement. The defendant’s failure to provide a plausible and corroborated explanation for adopting the "TOSIBA" mark played a crucial role in the court’s decision. This case serves as a reminder to businesses that the justification for a trademark’s adoption must be honest, well-documented, and capable of withstanding legal scrutiny.

Case Citation:Kabushiki Toshiba Appliances Vs Toshiba Appliance Co:16.08.2024 : CS(OS) 55/2006: 2024: DHC: 6178: Delhi High Court: Sanjeev Narula: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Lacoste Vs Crocodile International Pte Ltd

Analysis of Standalone Saurian Device Registration Vs. Composite Saurian Device Registration: The Lacoste Vs. Crocodile International Case

Introduction:

The case of Lacoste Vs Crocodile International brings to the forefront the nuanced differences between standalone device registration and composite device registration, highlighting the critical importance of specific trademark registration strategies in defending intellectual property rights.

Background of the Dispute:

The dispute centers around the famous "crocodile" device, a symbol strongly associated with Lacoste, a renowned French clothing brand. Lacoste, alongside its Indian licensee, Sports and Leisure Apparel Ltd., brought a lawsuit against Crocodile International Pte Ltd. and Crocodile Products Pvt. Ltd., alleging trademark infringement and copyright violation concerning their iconic crocodile device.

Lacoste's contention was that Crocodile International’s use of a similar saurian (crocodile) device on their apparel products constituted a deliberate imitation of Lacoste’s registered trademark, thereby infringing upon their intellectual property rights. Crocodile International, however, defended its use by claiming a concurrent use agreement with Lacoste, dating back to the 1980s, that supposedly allowed both parties to use their respective crocodile devices in certain territories, including India.

Lacoste’s Case: Standalone Saurian Device Registration

Lacoste's arguments were built upon two primary intellectual property rights:

Copyright in the Artistic Work:

Lacoste asserted ownership of the copyright in the artistic representation of the crocodile device, which was first introduced in 1927. This device was registered in India in 2002, but Lacoste's association with the device predates even this registration, strengthening their claim to exclusive rights.

Trademark Rights:

Lacoste emphasized that it had been the registered proprietor of the standalone crocodile device as a trademark in India since 1983. The long-standing use and recognition of this device in India, Lacoste argued, provided them with exclusive rights to its use, precluding others, including Crocodile International, from employing a similar mark without consent.

Crocodile International’s Defense:

Composite Saurian Device Registration:

Crocodile International's defense hinged on a different interpretation of the rights associated with the "crocodile" device:

Historical Use and Registration:

Crocodile International claimed that it had adopted and used its version of the "crocodile" trademark since 1947, with registrations in several countries, including India as early as 1952. This long history of use, according to Crocodile International, gave them legitimate rights over their crocodile device.

Co-Existence Agreement:

Central to Crocodile International's defense was the assertion of a co-existence agreement with Lacoste, first established in 1983 and allegedly extended in 1985. This agreement, according to Crocodile International, allowed both parties to use their respective crocodile devices in certain territories, including India.

Composite Device Registration:

Crocodile International further contended that their rights were tied to a composite saurian device, which included the crocodile mark as part of a larger design. They argued that this composite registration should protect their use of any saurian device similar to Lacoste's.

Court’s Findings: Standalone Vs. Composite Registration:

The court's analysis centered on the distinction between standalone device registration (as in Lacoste’s case) and composite device registration (as in Crocodile International’s case). The ruling provided critical insights into how trademark rights are interpreted when different entities claim ownership over similar or related marks.

Prior Adoption and Use:

The court noted that Crocodile International did not specifically plead prior adoption and use of the standalone saurian device that Lacoste was contesting. This omission was significant because it confined Crocodile International’s claims to the composite device that formed part of their registered trademarks. This composite registration, however, did not automatically confer rights over any and all variations of saurian devices, especially those not part of the registered composite marks.

Lacoste’s Standalone Rights:

The court found that Lacoste’s registration of the standalone crocodile device in 1983, coupled with its prior use, gave them a strong legal footing. This early registration and continued use established Lacoste's rights over the standalone device, which predated Crocodile International’s claimed use of a similar device by several years.

Impact of Co-Existence Agreements:

While Crocodile International relied on the 1983 Agreement and the 1985 Letter, the court concluded that these documents did not authorize Crocodile International to use the standalone saurian device in India. The co-existence agreement was interpreted as applying only to specific marks and territories, and did not extend to a blanket right to use any saurian device resembling Lacoste's trademark in India.

Conclusion: The Court’s Ruling:

Based on the evidence presented, the court granted a permanent injunction restraining Crocodile International from using the contested saurian device in India. The ruling emphasized the distinction between rights conferred by standalone and composite trademark registrations.

Lacoste’s longstanding registration and use of the standalone crocodile device provided a robust basis for their claims, while Crocodile International’s defense, centered on a composite mark and co-existence agreements, was insufficient to override Lacoste's trademark rights in India. The court’s decision reinforces the importance of clear and distinct trademark registrations, particularly in cases where similar devices are in use by different parties.

Implications of the Ruling:

This ruling has broader implications for trademark law, particularly in industries where logos and symbols are central to brand identity. Companies must be diligent in securing and maintaining trademark registrations for all variations of their key marks, not just composite designs. Additionally, this case highlights the need for clear, detailed agreements in co-existence arrangements to prevent future disputes over trademark rights in overlapping territories.

The Lacoste Vs. Crocodile International case serves as a vital precedent for understanding how courts may interpret trademark rights in the context of similar or identical devices, especially when those rights are tied to specific forms of registration. It underscores the necessity for businesses to strategically manage their trademark portfolios to safeguard their brand identities in an increasingly competitive global market.

Case Citation: Lacoste Vs Crocodile International Pte Ltd:14.08.2024 : CS(COMM) 1550/2016: 2024:DHC:6150: Delhi High Court: Sanjeev Narula: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Whitehat Education Technology Pvt. Ltd. Vs Aniruddha Malpani

Trademark Jurisdiction Based on Accessibility of Tweets

Introduction:

The case of WhiteHat Education Technology Private Limited v. Aniruddha Malpani presents a critical examination of the legal principles governing trademark jurisdiction, particularly in the context of the digital age where online content such as tweets can have far-reaching implications. The High Court of Delhi’s decision to uphold its jurisdiction over a case based on the accessibility of defamatory tweets within its territorial limits has significant ramifications for how courts interpret jurisdiction in cases involving online defamation, trademark infringement, and unfair competition.

Background of the Case:

In this case, WhiteHat Education Technology Private Limited, a prominent educational technology company (hereinafter referred to as the "plaintiff"), filed a suit against Aniruddha Malpani (hereinafter referred to as the "defendant"), seeking a permanent injunction to restrain the defendant from defaming the plaintiff, infringing on its trademarks, and causing unfair competition, among other reliefs. The defendant, a resident of Mumbai, had allegedly posted tweets that were disparaging towards the plaintiff and were accessible to users in Delhi, where the plaintiff has a significant customer base.

Defendant’s Challenge to Jurisdiction:

The defendant, in response, filed an application under Order VII Rule 11 of the Code of Civil Procedure, 1908, seeking the rejection of the plaint on the grounds of lack of jurisdiction. The defendant's primary argument was that both parties were residents of Mumbai, Maharashtra, and that no cause of action arose within the territorial jurisdiction of the Delhi High Court. This argument was based on the traditional understanding of jurisdiction, which is typically determined by the location where the cause of action arises or where the parties are located.

Plaintiff’s Contention: Accessibility of Tweets as a Basis for Jurisdiction

The plaintiff countered the defendant's application by arguing that the tweets in question were not only accessible in Delhi but were also targeted at the plaintiff's customers in the region, thereby causing direct harm to its business interests. The plaintiff asserted that since the tweets were accessible within the territorial jurisdiction of the Delhi High Court, the court had the authority to entertain the suit. The plaintiff also emphasized that the defendant's actions had a direct effect on its customer base in Delhi, thus establishing a cause of action within the court's jurisdiction.

Court’s Analysis and Ruling:

After carefully considering the submissions from both parties and reviewing relevant case law, the High Court of Delhi dismissed the defendant's application. The court found that the plaintiff's averments in the plaint sufficiently established that a cause of action had arisen within the territorial jurisdiction of the Delhi High Court. The court also noted that the defendant did not dispute the accessibility of the tweets within the jurisdiction of the court.

In its analysis, the court relied heavily on the principle that jurisdiction can be established in cases where the wrongful act, such as defamation or trademark infringement, has a direct and substantial impact within the territorial limits of the court. The court observed that the tweets had a direct impact on the plaintiff's customer base in Delhi, which was sufficient to establish jurisdiction.

The court also distinguished this case from previous precedents cited by the defendant, noting that those cases did not involve specific pleadings regarding the accessibility of online content and its impact within a particular jurisdiction. In this case, the plaintiff had made clear and specific pleadings regarding how the tweets were accessible in Delhi and how they had harmed its business interests in the region.

Implications of the Ruling:

The court's ruling in this case has significant implications for the interpretation of jurisdiction in cases involving online defamation and trademark infringement. By upholding the jurisdiction of the Delhi High Court based on the accessibility of tweets within its territorial limits, the court has set a precedent for how jurisdiction can be established in the digital age.

This ruling underscores the importance of accessibility and impact in determining jurisdiction, particularly in cases where the alleged wrongful act is committed online. It highlights that courts are willing to adapt traditional principles of jurisdiction to the realities of the digital age, where online content can have a global reach and impact.

The decision also serves as a cautionary tale for individuals and entities engaging in online activities, particularly on social media platforms. It reinforces the notion that online actions can have legal consequences in multiple jurisdictions, especially if the content is accessible and has a direct impact within those jurisdictions.

Conclusion:

The High Court of Delhi's decision in WhiteHat Education Technology Private Limited v. Aniruddha Malpani represents a significant development in the area of trademark jurisdiction, particularly in the context of online defamation and trademark infringement. The court's ruling affirms the principle that accessibility and impact are key factors in determining jurisdiction, and it highlights the need for courts to adapt to the challenges posed by the digital age.

As online content continues to play a central role in commercial activities and brand reputation, this case serves as an important reminder of the legal responsibilities that come with engaging in online discourse. The ruling not only provides clarity on the issue of jurisdiction but also reinforces the importance of protecting trademark rights and reputations in the digital marketplace.

Case Citation: Whitehat Education Technology Pvt. Ltd. Vs Aniruddha Malpani:08.08.2024 : CS Comm 518 of 2020: Delhi High Court: Saurabh Banerjee: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Termo ISI Sistemleri Ticarat Vs Registrar of Trademark

This is a judgment from the High Court of Delhi, dated July 30, 2024, in the case of TERMO ISI SISTEMLERI TICARET VE SANAYI ANONIM SIRKETI (Appellant) versus REGISTRAR OF TRADE MARKS (Respondent), under C.A.(COMM.IPD-TM) 14/2023. The appellant, a Turkish company established in 1967, sought to challenge the conditions imposed by the Registrar of Trade Marks on the registration of its trademark application no. 4553823 in Class 35. The appellant has been using the trademark "Ecostar" since 2006 globally and since 2007 in India, and has secured domain names and registered the trademark in various classes.

The Trade Mark Registry raised objections under Section 11 of the Trade Marks Act, 1999, citing the likelihood of confusion with similar marks. The appellant responded, stating that their trademark is a distinctive device mark and requested a hearing before any adverse decision. The Registrar allowed the application with the condition that the mark be used as substantially represented, with no exclusive rights over any of the words.

The appellant argued that the condition imposed was unnecessary and contrary to Section 18(5) of the Trade Marks Act. They also claimed the benefit of Section 12 of the Act, as they had registrations in other classes. The respondent's counsel supported the impugned order, stating that the appellant is estopped from claiming rights over the word "Ecostar" in a non-stylized form, per Section 17(1) of the Act.

The court, after hearing both parties and reviewing the documents and case laws cited, found that the appellant had consistently stated it did not claim rights over the word "Ecostar" in a non-stylized form. The court held that the Registrar's condition was a mere recording of the appellant's stance and not an unnecessary condition or disclaimer. The court also rejected the appellant's arguments regarding Section 18(5) and the benefit of Section 12, stating that the appellant could not change its stance at the appellate stage.

The court concluded that the Registrar had exercised discretion judicially and reasonably, and the appellant failed to make a case for interfering with the impugned order. The appeal was dismissed as lacking merit.

Case Citation: Termo ISI Sistemleri Ticarat Vs Registrar of Trademark:30.07.2024 : C.A.(COMM.IPD-TM) 14/2023/2024: Delhi High Court: Saurabh Banerjee: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Amarchand Mangaldas Vs John Doe

The plaintiff, Shardul Amarchand Mangaldas & Co., filed the suit on the basis of their intellectual property rights in the "SAMCO" trademarks and related copyrighted material. These rights include:

Trademark Rights: The plaintiff has registered trademarks under the Trade Marks Act, 1999, which gives them the exclusive right to use these marks in relation to their goods and services. The defendants' alleged use of identical or deceptively similar marks infringes upon these rights.

Copyright Rights: The plaintiff has copyrights in their original works, which may include their logos, website content, and other creative expressions. The defendants' alleged unauthorized use of these copyrighted materials infringes the plaintiff's copyrights under the Copyright Act, 1957.

Passing Off Rights: The plaintiff has the right to protect its goodwill and reputation in the market. The defendants' alleged actions of passing off their services as those of the plaintiff could mislead the public and damage the plaintiff's goodwill, which is actionable under common law principles.

Personality Rights: The plaintiff also claims that the defendants are using the name and photograph of the plaintiff's Executive Chairman, Dr. Shardul S. Shroff, without permission. This unauthorized use could infringe on the personality rights of Dr. Shardul S. Shroff and the plaintiff's firm.

The plaintiff's suit is primarily based on the infringement of these intellectual property rights, seeking to enforce their exclusive rights to use their trademarks and copyrighted material, and to prevent the defendants from passing off their services as those of the plaintiff.

Having considered the document on record, the Court granted an ad interim injunction restraining the defendants from using the plaintiff's trademarks, name, and photograph in any manner. It directed the defendants to block certain email IDs and furnish details associated with them. The court also allowed the plaintiff to publish a public notice informing the public about the false communications and the filing of the suit.

Case Citation: Shardul Amarchand Mangaldas Vs John Doe:12.08.2024 : CS(COMM) 680/2024: Delhi High Court: Mini Pushkarna: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Mrt Music Vs Paramvah Studios Private Limited

In the High Court of Delhi, M/S MRT Music has filed a suit against Paramvah Studios Private Limited and others in case CS(COMM) 680/2024. The plaintiff seeks to restrain the defendants from infringing its copyright, claiming damages and an accounting of profits due to the unauthorized use of its works.

The plaintiff alleges that the defendants used two of its copyrighted songs without permission in a Kannada-language film titled "Bachelor Party," which is currently available on an OTT (Over-The-Top) platform owned by defendant no. 3. The plaintiff, which is a prominent regional music company in India, boasts a vast repertoire of copyrighted works, including the two songs in question. These songs are not only significant to the plaintiff's catalog but also represent a critical source of revenue for the company.

Despite the plaintiff’s attempts to negotiate a licensing agreement for the songs, the discussions between the parties failed to yield any results, leading to a breakdown in negotiations. The plaintiff contends that the defendants proceeded to use the songs without obtaining the necessary licenses, thereby infringing upon its copyright. This unauthorized use has not only deprived the plaintiff of potential earnings from licensing fees but has also harmed its reputation in the music industry.

In response to the plaintiff's allegations, the court conducted a preliminary examination of the case and found a prima facie case in favor of the plaintiff. Consequently, the court issued an order directing the defendants to deposit ₹20 lakhs as an interim measure to secure the plaintiff's potential claims for damages. Additionally, the court mandated the defendants to remove the infringing content related to the copyrighted songs from their Instagram handle, effectively curtailing the ongoing infringement while the case is being adjudicated.

Case Citation: Mrt Music Vs Paramvah Studios Private Limited:12.08.2024 : CS(COMM) 680/2024: Delhi High Court: Mini Pushkarna: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.