Madhu Food Products Vs Surya Processed Food

Manner of use of a Trademark is different from its Trademark Registration

Factual Background:

The present case is a legal dispute between Madhu Food Products (the appellant) and Surya Processed Food Pvt. Ltd. (the respondent), centering around allegations of trademark infringement, copyright infringement, and passing off. The respondent, Surya Processed Food, initiated a lawsuit seeking a permanent injunction to restrain Madhu Food Products from using the trademark "HUNT" or any mark that is deceptively similar to "HUNK," a trademark registered and used by the respondent.

Surya Processed Food is engaged in manufacturing and marketing a variety of food products and claimed to have registered its trademark "HUNK" for its goods, accompanied by distinctive packaging and trade dress. It further claimed that it had been using the trademark extensively and had developed significant goodwill and market presence.

On the other hand, Madhu Food Products launched a product under the name "CHOCO HUNT" and adopted packaging that the respondent argued was deceptively similar to its own. This led to the filing of the suit, where Surya Processed Food contended that the use of the trademark "CHOCO HUNT" by Madhu Food Products was an infringement of its registered trademark "HUNK" and amounted to passing off, given the similarity in the trade dress and overall get-up of the products.

Issues of the Case:

The case raised several key legal issues:

Trademark Infringement:

Whether the appellant’s use of the trademark "CHOCO HUNT" infringes on the respondent's registered trademark "HUNK," given the visual and phonetic similarities between the two marks.

Passing Off:

Whether the packaging and trade dress used by Madhu Food Products for its product "CHOCO HUNT" were deceptively similar to the trade dress used by Surya Processed Food for its "HUNK" products, thereby creating a likelihood of confusion among consumers.

Suppression of Material Facts:

Whether Surya Processed Food had suppressed material facts, particularly regarding the appellant’s trademark, during its application for an interim injunction. This issue concerned whether the respondent had performed a comprehensive trademark search or had withheld crucial information from the court.

Contentions of the Parties:

Respondent’s Contentions (Surya Processed Food Pvt. Ltd.):

Surya Processed Food asserted its prior registration and extensive use of the trademark "HUNK" in connection with its food products. It argued that the appellant’s trademark "CHOCO HUNT" was deceptively similar to "HUNK," especially due to the prominent use of the word "HUNT," which could mislead consumers.

The respondent alleged that Madhu Food Products had deliberately adopted similar packaging and trade dress, particularly the use of brown as a primary color, in an attempt to pass off its products as those of the respondent. This, the respondent contended, would result in consumer confusion, leading customers to associate the appellant's products with its own well-known brand.The respondent further asserted that the actions of the appellant were aimed at benefiting from the goodwill associated with its trademark and thus sought relief by way of a permanent injunction.

Appellant’s Contentions (Madhu Food Products):

Madhu Food Products argued that its trademark was "CHOCO HUNT" and not simply "HUNT," and that it had been using this trademark since 2018. The appellant contended that there was no likelihood of confusion between the two marks because the words "CHOCO" and "HUNT" were combined in a way that distinguished it from the respondent’s "HUNK" mark.

The appellant accused the respondent of not conducting a proper trademark search before filing the lawsuit, alleging that the respondent had suppressed material facts, including the appellant’s prior use of its own trademark.

Moreover, the appellant maintained that the color brown was a generic choice for packaging in the food industry and could not be monopolized by the respondent. Thus, the use of brown in its packaging did not amount to infringement or passing off.

Issues Dealt with by the Court:

Trademark Search and Suppression of Facts:

The court evaluated whether Surya Processed Food had adequately conducted a trademark search before initiating the lawsuit and whether any material facts, particularly regarding the appellant’s trademark, were suppressed. The appellant’s claim that the respondent had failed to disclose its trademark "CHOCO HUNT" to the court formed a key part of this issue.

Similarity in Trade Dress and Packaging:

The court had to assess whether the trade dress (i.e., the visual appearance of the product packaging) of the appellant’s "CHOCO HUNT" product was similar enough to the respondent’s "HUNK" products to cause confusion among consumers. This included an analysis of the color schemes, design elements, and overall get-up of the packaging.

Prior Use and Registration:

The court considered the respondent’s claim of prior use and registration of the trademark "HUNK" and weighed it against the appellant’s assertion of independent use of the "CHOCO HUNT" trademark since 2018.

Reasoning and Final Decision:

The court, after carefully considering the evidence presented by both parties, arrived at the following conclusions:

Trademark Search and Suppression of Facts:

The court found that the respondent, Surya Processed Food, had not suppressed any material facts. It noted that the respondent had conducted a trademark search using the "start with" option, which did not reveal the appellant’s trademark "CHOCO HUNT." Therefore, the appellant’s claim of suppression of facts was unfounded.

Similarity in Trade Dress and Packaging:

The court observed that the appellant’s use of the trademark "CHOCO HUNT" prominently displayed the word "HUNT" in a manner that closely resembled the respondent’s "HUNK" trademark. Furthermore, the packaging and trade dress adopted by Madhu Food Products bore striking similarities to those used by Surya Processed Food, particularly in terms of color scheme and layout. The court found that these similarities were likely to cause confusion among consumers, leading them to believe that the two products originated from the same source.

Prior Use and Registration:

The court acknowledged the significantly larger turnover of Surya Processed Food under its registered trademark "HUNK," which reinforced its established market presence. The respondent’s prior use and registration of the "HUNK" trademark were deemed legitimate, and the court held that the appellant’s trademark "CHOCO HUNT" was likely to infringe upon the respondent’s rights.

Manner of use of a Trademark is different from its Trademark Registration:

The court further emphasized that the manner in which a trademark is used in the marketplace is critical in determining the likelihood of confusion. It ruled that, despite the appellant’s registration of "CHOCO HUNT," the way the trademark was presented—particularly the dominant use of "HUNT"—was likely to mislead consumers.

Final Decision:

In light of these findings, the court dismissed the appeal filed by Madhu Food Products and upheld the interim order in favor of Surya Processed Food. The court found no merit in the appellant’s arguments regarding trademark use, trade dress, or suppression of facts. It concluded that the respondent’s rights were infringed by the appellant’s actions, and the similarities between the two trademarks, packaging, and overall product presentation justified the respondent’s claims for protection under trademark and passing-off laws.

Case Citation: Madhu Food Products Vs Surya Processed Food: 08.08.2024: Madhu Food Products Vs Surya Processed Food: 2024:DHC6118: Delhi High Court: Vibhu Bakhru and Sachin Datta, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 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.

KG Marketing India Vs Rashi Santosh

Provisions of Section 340 Cr.P.C. even in relation to documents where forgery are committed prior to filing in a Court proceeding

Background of the Case:

The case in question, KG Marketing India Vs Rashi Santosh Soni & Anr., involves a complex trademark dispute between the appellant, KG Marketing India, and the respondents, Rashi Santosh Soni and another party. The litigation was initiated when the appellant, KG Marketing India, filed a suit, CS (COMM) No.18/2023, asserting its rights over certain trademarks and claiming extensive use and advertising of these marks. The appellant sought judicial relief based on these claims, relying heavily on newspaper advertisements to establish the substantial promotion of its trademarks in the market.

However, the respondents, Rashi Santosh Soni and the second respondent, responded by filing a cross-suit, CS (COMM) No.477/2023, alleging that KG Marketing India had engaged in fraudulent practices to support its claims. The respondents contended that the advertisements presented by the appellant were not genuine but rather fabricated to deceive the court into believing that the appellant had established goodwill and extensive use of the trademarks.

The allegations raised by the respondents led to a more serious question: whether the appellant had deliberately submitted forged documents to support its legal claims, thereby committing an offense under the law, specifically under Section 340 of the Code of Criminal Procedure, 1973 (CrPC), which deals with offenses related to the filing of false statements or evidence in judicial proceedings.

Issue of the Case:

The primary issue before the court centered on the authenticity of the newspaper advertisements submitted by KG Marketing India. The appellant claimed that these advertisements, which were presented as evidence of trademark promotion, were genuine and formed the basis for their trademark claims.

In contrast, the respondents contended that these documents were forged and fabricated, and that KG Marketing India had committed an offense by submitting these false documents along with a false Statement of Truth, which accompanied their suit. The filing of a false Statement of Truth under Order VI Rule 15A of the Code of Civil Procedure (CPC) is a serious offense and can lead to criminal liability under Section 340 of the CrPC if the court finds that false evidence or documents have been intentionally produced.

Therefore, the key legal question before the court was whether the appellant’s conduct in submitting allegedly forged advertisements amounted to an offense under Section 340 of the CrPC and whether the court had the jurisdiction to initiate proceedings against the appellant for filing a false Statement of Truth.

Contentions of the Parties:

Appellant's Contentions: KG Marketing India, the appellant, maintained that the court lacked jurisdiction to initiate proceedings under Section 340 of the CrPC. Their primary argument was based on the fact that the forgery and fabrication of the documents, if any, occurred before the institution of the legal proceedings. The appellant argued that since the documents were fabricated prior to the commencement of the lawsuit, Section 340 could not be invoked.

In support of this contention, the appellant relied on various judgments of the Supreme Court, which, according to them, restricted the court’s ability to take action under Section 340 CrPC unless the offense had been committed during the course of judicial proceedings. The appellant argued that any alleged forgery or falsification of evidence that took place before the initiation of the suit could not be the subject of criminal proceedings under this provision.

Respondents' Contentions: The respondents, Rashi Santosh Soni and the other party, vigorously opposed the appellant's submissions. They asserted that KG Marketing India had submitted forged documents to bolster its trademark claims, which amounted to a deliberate attempt to mislead the court. According to the respondents, the filing of false evidence with a fraudulent Statement of Truth violated the sanctity of judicial proceedings and constituted an offense under Section 340 of the CrPC, regardless of when the forgery occurred.

The respondents argued that once false documents had been introduced into the legal process, the court was well within its rights to take cognizance of the offense and initiate proceedings against the appellant for perjury and forgery. They urged the court to reject the appellant’s technical defense regarding the timing of the forgery and hold KG Marketing India accountable for attempting to deceive the court.

Issues Dealt with by the Court:

The court had to address several critical issues:

Authenticity of the Newspaper Advertisements: The court had to determine whether the newspaper advertisements submitted by KG Marketing India as evidence of its trademark promotion were indeed genuine or whether they were fabricated, as alleged by the respondents.

Jurisdiction under Section 340 CrPC: The court also had to resolve the question of whether it had the jurisdiction to initiate proceedings under Section 340 CrPC if the forgery or fabrication of evidence occurred before the legal proceedings commenced. This raised the issue of whether the timing of the offense (before or during the legal proceedings) affected the court’s power to act under Section 340.

Filing of False Statement of Truth: The court was also called upon to determine whether the appellant had filed a false Statement of Truth, and if so, what legal consequences would follow from this act, particularly in the context of trademark litigation.

Reasoning and Final Decision:

After a thorough examination of the evidence and the arguments presented by both sides, the court concluded that KG Marketing India had indeed submitted forged and fabricated documents in support of its claims. The court held that the evidence clearly indicated that the appellant had fabricated newspaper advertisements to mislead the court into believing that their trademarks had been widely promoted.

The court rejected the appellant's contention that it lacked jurisdiction to act under Section 340 CrPC merely because the forgery occurred before the initiation of the legal proceedings. The court held that once forged documents were introduced into the court’s record, it had the authority to take action under Section 340 CrPC, irrespective of when the forgery occurred. The court emphasized that the filing of a false Statement of Truth, accompanied by forged documents, constituted an offense under Section 340 CrPC, which warranted the initiation of criminal proceedings against the appellant.

In addition, the court dismissed the appellant's argument that they had been compelled to file a false Statement of Truth due to a prior forgery, calling this defense "unacceptable" and lacking in merit. The court concluded that such a submission could not excuse or justify the appellant's conduct in producing false documents before the court.

Finally, the court upheld the learned Single Judge’s decision directing the Registrar General to lodge a complaint with the concerned Judicial Magistrate for the initiation of appropriate criminal proceedings against KG Marketing India under Section 340 CrPC. The court found no merit in the appellant’s appeal and accordingly dismissed it, reaffirming the principle that parties who submit false evidence or documents in judicial proceedings must face legal consequences, regardless of the timing of the offense.

Conclusion:

The court’s ruling in KG Marketing India Vs Rashi Santosh Soni & Anr. serves as a strong reminder that the sanctity of judicial proceedings must be preserved, and those who attempt to deceive the court by submitting forged documents will be held accountable under the law. The decision underscores that Section 340 CrPC applies not only to offenses committed during the proceedings but also to forged or false evidence introduced into the record, regardless of when the forgery occurred. By dismissing the appellant’s technical defense, the court sent a clear message that the filing of false Statements of Truth and fabricated documents will not be tolerated in the legal system.

Case Citation: KG Marketing India Vs Rashi Santosh: 23.08.2024: RFA(OS)(COMM) 16/2024: 2024:DHC6385:Delhi High Court: Vibhu Bakhru and Sachin Datta, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 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.

Container Corporation of India Vs Shivalaya Construction

Maintainability of Appeal in Commercial Dispute against Order Rejecting Application under Order 7 Rule 11 CPC

Background of the Case:

The case before the High Court of Delhi revolved around an appeal filed by Container Corporation of India Limited (the "Appellant") against an order dated November 16, 2022, passed by a learned Single Judge. The Appellant was the defendant in a suit instituted by M/S Shivalaya Construction Company Private Limited and another party (the "Respondents"). The primary contention of the Appellant before the Single Judge was that the Respondents' suit was barred by limitation, and accordingly, the Appellant had sought the dismissal of the suit by filing an application under Order VII Rule 11 of the Code of Civil Procedure, 1908 (CPC).

Order VII Rule 11 of the CPC empowers a court to reject a plaint if, among other reasons, it is evident from the statements made in the plaint that the suit is barred by law, including the law of limitation. However, the learned Single Judge dismissed the Appellant's application seeking rejection of the plaint on the grounds of limitation, leading to the filing of the present appeal under the Commercial Courts Act, 2015.

Issue of the Case:

The primary issue before the Division Bench of the High Court was the maintainability of the appeal filed by the Appellant under the Commercial Courts Act, 2015. The Appellant challenged the rejection of its application under Order VII Rule 11 CPC on the grounds that the Respondents' suit was time-barred and ought to have been dismissed.

In essence, the Court was tasked with determining whether an appeal could be sustained against an order dismissing an application under Order VII Rule 11 CPC in the context of a commercial dispute governed by the provisions of the Commercial Courts Act, 2015.

Contentions of the Parties:

Appellant's Contentions: The Appellant argued that the appeal was maintainable and placed heavy reliance on the Supreme Court's judgment in Shah Babulal Khimji v. Jayaben D Kania & Anr. In this case, the Supreme Court had held that an appeal under the Letters Patent could be maintained against certain interlocutory orders, even if the order was not specifically enumerated under Order XLIII Rule 1 CPC.

The Appellant argued that, notwithstanding the absence of specific provisions in Order XLIII Rule 1 CPC allowing an appeal against the rejection of an Order VII Rule 11 application, the Letters Patent Appeal (LPA) route was available for the present case.

Respondents' Contentions: While the document does not specifically detail the Respondents' arguments, it can be inferred that the Respondents opposed the appeal’s maintainability. They likely argued that the appeal was barred by the provisions of the Commercial Courts Act, 2015, specifically under Section 13, which restricts the scope of appeals in commercial disputes to only those orders expressly enumerated as appealable under the CPC or other statutes.

Issues Dealt with by the Court:

The Court's attention was focused on the following key issues:

Maintainability of Appeal under the Commercial Courts Act, 2015: The core issue was whether the rejection of an application under Order VII Rule 11 CPC was appealable under the Commercial Courts Act, 2015. Section 13(1A) of the Act allows appeals from orders of Commercial Courts only if the order is specifically enumerated as appealable under the CPC or any other law.

Applicability of the Letters Patent: The Appellant invoked the doctrine of Letters Patent to argue that the appeal was maintainable under the Letters Patent of the High Court. However, the Court had to examine whether the non-obstante clause in Section 13(2) of the Commercial Courts Act barred such recourse to the Letters Patent.

Precedents Governing Maintainability: The Court relied on precedents, including the judgment of the Supreme Court in Kandla Export Corporation & Another v. OCI Corporation & Another, which interpreted Section 13 of the Commercial Courts Act. The Supreme Court had made it clear that the scope of appealable orders under the Commercial Courts Act was restricted, and only those orders enumerated under the CPC or other statutes could be appealed.

Reasoning and Final Decision:

The Court extensively examined the provisions of the Commercial Courts Act, 2015, and relevant judicial precedents to arrive at its conclusion.

Scope of Appeals under Section 13(1A) of the Commercial Courts Act: The Court noted that Section 13(1A) of the Act clearly limits the right of appeal in commercial disputes to orders expressly mentioned as appealable under the CPC or any other applicable law. The rejection of an application under Order VII Rule 11 CPC was not among the orders specifically enumerated as appealable under Order XLIII Rule 1 CPC or under Section 37 of the Arbitration Act, 1996.

Precedent from Kandla Export Corporation: The Court relied on the Supreme Court’s judgment in Kandla Export Corporation to fortify its reasoning. In that case, the Supreme Court had held that appeals in commercial disputes were restricted by the provisions of the Commercial Courts Act, and the non-obstante clause in Section 13(2) of the Act barred recourse to the Letters Patent.

Applicability of Letters Patent: The Court dismissed the Appellant's reliance on Shah Babulal Khimji, holding that the doctrine of Letters Patent was not applicable in light of the Commercial Courts Act. The Act contains a non-obstante clause in Section 13(2), which explicitly overrides any other law to the contrary, including the Letters Patent.

Additionally, the Court referred to a Coordinate Bench's decision in Odeon Builders Private Limited v. NBCC (India) Limited, where it was held that the Letters Patent route is unavailable due to the overriding effect of Section 13(2) of the Commercial Courts Act.

Previous Division Bench Decisions: The Court also referred to its own previous decision in Bhushan Oil and Fats Private Limited v. Mother Dairy Fruit and Vegetables Private Limited, where a similar issue of maintainability was dealt with. In that case, the Division Bench had dismissed an appeal on identical grounds, holding that no appeal lay from an order rejecting an application under Order VII Rule 11 CPC in a commercial dispute.

Conclusion:

In light of the above reasoning, the Court held that the appeal was not maintainable under the Commercial Courts Act, 2015. The rejection of the Appellant's application under Order VII Rule 11 CPC did not fall within the category of orders that could be appealed under the provisions of the CPC, the Arbitration Act, or any other statute governing commercial disputes. The appeal was accordingly dismissed, reaffirming the principle that the right of appeal in commercial disputes is limited and only those orders expressly enumerated as appealable can be challenged before the Commercial Appellate Division of the High Court.

Case Citation: Container Corporation of India Vs Shivalaya Construction: 21.08.2024:FAO(OS) (COMM) 43/2023: 2024:DHC6539-DB:Delhi High Court:Vibhu Bakhru and Sachin Datta, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 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.

Rebanta Healthcare Pvt. Ltd. Vs Dr. Reddy's Laboratories

Trademark Infringement against prior user

Background of the Case:

The case before us is a trademark infringement dispute between Rebanta Healthcare Pvt. Ltd. (the appellant) and Dr. Reddy's Laboratories Ltd. & ANR. (the respondents). The appellant is a private limited company incorporated on 06.03.2017, which has been using the trademark 'REBAHEAL' since July 2019 for its pharmaceutical products. The respondents are a leading pharmaceutical company that applied to register the trademark 'REBAHEAL' on a 'proposed to be used' basis in February 2023.

Issue of the Case:

The central issue in this case is the alleged infringement of the trademark 'REBAHEAL' by the appellant. The respondents claim that the appellant's use of the trademark is infringing upon their rights, as they had adopted the mark in June 2023. The appellant, on the other hand, contends that they are the prior user of the trademark and that the respondents are aware of their use of the mark.

Contentions of the Parties:

The appellant argues that they have been using the trademark 'REBAHEAL' since 2019 and have produced evidence to support this claim, including invoices and the availability of their products on websites. They also allege that the respondents did not conduct a proper search before filing the suit and did not serve a Cease-and-Desist notice upon becoming aware of the appellant's use of the trademark.

The respondents claim that they conducted adequate searches before filing the suit, including with the Registrar of Trademarks and a Google search, which did not reveal the appellant's use of the trademark. They also argue that the appellant's products were not available on the website '1mg.com' at the relevant time.

Issues Dealt with by the Court:

The court had to determine whether the appellant was the prior user of the trademark 'REBAHEAL' and whether the respondents had taken reasonable steps to ascertain the existence of the trademark before filing their suit. Additionally, the court considered whether mediation should be referred to resolve the dispute.

Reason and Final Decision:

The court found that the appellant had produced sufficient material to indicate that they are the prior user of the trademark 'REBAHEAL'. It was also noted that the respondents had not initiated pre-institution mediation as per the Commercial Courts Act, 2015. The court set aside the impugned ex-parte ad interim order and stayed the proceedings before the learned Single Judge.

Case Citation: Rebanta Healthcare Pvt. Ltd. Vs Dr. Reddy's Laboratories: 09.09.2024:FAO(OS) (COMM) 203/2024: 2024:DHC6926-DB:Delhi High Court:Vibhu Bakhru, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 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.

VIP Pharma Vs Rhydburg Pharma

Withdrawal of earlier Counter Claim without any liberty bars the Party to file a new case

Background of the Case:

The case involves a legal dispute between VIP Pharma and Rhydburg Pharma, with the former filing a suit against the latter in the Delhi High Court. The case revolves around allegations of trademark infringement, copyright violation, and unfair competition. VIP Pharma claims that Rhydburg Pharma has been selling products under a trademark that is identical or deceptively similar to VIP Pharma's trademark, causing harm to their business, trademark, copyright, goodwill, and reputation.

Issue of the Case:

The primary issue in the case is whether VIP Pharma's suit should be allowed to proceed, given that they had previously filed a Counter Claim in the District Court, which was later withdrawn. The defendant, Rhydburg Pharma, argues that the withdrawal of the Counter Claim without seeking permission to file a new case bars VIP Pharma from pursuing the present suit under the provisions of the Code of Civil Procedure, 1908 (CPC).

Contentions of the Parties:

VIP Pharma contends that the Counter Claim filed in the District Court was withdrawn due to insufficient pleadings and prayers, and they have now filed a more comprehensive suit in the High Court.

Rhydburg Pharma argues that the Counter Claim and the present suit involve the same parties, the same trademarks, the same averments, the same time periods, and the same causes of action. They assert that the plaintiff cannot be allowed to take advantage of the withdrawal to file a new case without prior permission.

Issues Dealt with by the Court:

The court had to determine whether the withdrawal of the Counter Claim by VIP Pharma precludes them from filing the present suit, considering the provisions of Order VII Rule 11 and Section 12 of the CPC, read with Order XXIII Rule 1(4) CPC. The court also had to consider whether the new suit is barred by law due to the earlier withdrawal.

Reasoning and Final Decision:

The court found that the Counter Claim and the present suit are essentially the same, with the new suit merely including additional claims that were omitted from the Counter Claim. The court held that the withdrawal of the Counter Claim without seeking permission to file a new case bars VIP Pharma from pursuing the present suit. The court relied on the principle that a plaintiff is barred from suing on a portion of a claim that was intentionally omitted or relinquished, unless they obtain leave of the court.

The court also noted that the plaintiff had not disputed the Vakalatnama (power of attorney) or the statement given by their counsel at the time of the withdrawal of the Counter Claim. Therefore, the court concluded that the present application of the defendant is liable to succeed, and the present suit of the plaintiff is liable to be rejected under Order VII Rule 11(d) CPC.

In its final decision, the court allowed the defendant's application and dismissed the plaintiff's suit, stating that the suit is barred by law due to the provisions of Order XXIII Rule 1(4) CPC and Section 12 CPC. The court emphasized that the plaintiff's attempt to file a new case after withdrawing the Counter Claim without proper permission is not permissible under the law.

Case Citation: VIP Pharma Vs Rhydburg Pharma.: 13.09.2024:CS(COMM) 110/2023: 2024:DHC7042:Delhi High Court: Sarrabh Banerjee, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 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.

L'oreal Vs Sarvodaya Overseas Pvt. Ltd

No actual proof of confusion is required to assess confusion between Trademarks

Background of the Case:

The case before us is L'Oreal vs. Sarvodaya Overseas Pvt. Ltd., which was heard by the Intellectual Property Appellate Board, Chennai Circuit Bench at Mumbai. The case involves a dispute over the trademark rights between L'Oreal, the appellant, and Sarvodaya Overseas Pvt. Ltd., the respondent. L'Oreal is a well-established company with a global presence, engaged in the manufacture and sale of a wide range of hair care, skin care, toiletries, and beauty products. Sarvodaya Overseas Pvt. Ltd. is also involved in the manufacturing and trading of cosmetics, toiletries, hair care products, and other related goods.

Issue of the Case:

The central issue in this case is whether the trademark "L'ORNELL," registered by Sarvodaya Overseas Pvt. Ltd., is deceptively similar to L'Oreal's trademark "L'OREAL," leading to potential confusion among consumers. L'Oreal contends that the similarity in the marks could deceive the public into believing that the products of Sarvodaya Overseas Pvt. Ltd. are associated with or originate from L'Oreal.

Contentions of the Parties:

L'Oreal argues that it has been using the "L'OREAL" trademark since around 1910-1915 and has established a strong global presence, including in India. They claim that their trademark is well-known and that they have invested heavily in advertising and marketing their products under this mark. L'Oreal asserts that the mark "L'ORNELL" used by Sarvodaya Overseas Pvt. Ltd. is phonetically, visually, and structurally similar to their trademark, which could lead to confusion in the market.

Sarvodaya Overseas Pvt. Ltd., on the other hand, had registered the trademark "L'ORNELL" and claimed user since 2006. They have not provided substantial evidence to counter L'Oreal's claims of deceptive similarity or to establish their independent rights to the mark.

Issues Dealt with by the Court:

The court had to determine whether the trademarks "L'OREAL" and "L'ORNELL" are deceptively similar, considering the visual and phonetic aspects of the marks. Additionally, the court had to assess the evidence of actual confusion, the strength of L'Oreal's mark in the market, and the potential for dilution of L'Oreal's trademark.

Reason and Final Decision:

The court found that there was no evidence of actual confusion, which might be due to L'Oreal's trade not being of long standing in the specific market context. However, the court held that the marks were deceptively similar phonetically, as they have great phonetic similarity and are indistinguishable in sound and pronunciation. The court also noted that L'Oreal's mark has a strong presence in India and is well-known in the market.

The court ultimately ruled in favor of L'Oreal, allowing their appeal and dismissing Sarvodaya Overseas Pvt. Ltd.'s application for registration of the "L'ORNELL" trademark. The court ordered the removal of the impugned trademark from the register, citing the provisions of the Trade Marks Act, 1999. The decision highlights the importance of maintaining the purity of the trademark register and preventing the registration of marks that are deceptively similar to existing well-known trademarks.

Case Citation: L'oreal Vs Sarvodaya Overseas Pvt. Ltd.: 09.09.2024:ORA/269/2010/TM/MUM: IPAB: Manmohan Singh, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 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.