Prime Comfort Products Private Limited Vs. Lal Bahadur Trading as Sulakshmi Enterprises

Jurisdiction and Defendant own admission in opposition proceeding regarding all India  basis trademark user

Introduction:

The case of Prime Comfort Products Private Limited vs. Lal Bahadur Trading as Sulakshmi Enterprises is a significant trademark dispute that brings forth critical issues related to territorial jurisdiction. The plaintiff, a registered trademark owner, sought relief against the defendant for infringement and passing off. The defendant, in response, challenged the jurisdiction of the Delhi High Court, arguing that no part of the cause of action arose in Delhi. The court was required to assess whether the plaintiff had established a prima facie case for jurisdiction and whether the defendant's arguments warranted the dismissal of the suit through a summary judgment.

Factual Background:

The plaintiff initially filed a suit for passing off, claiming that the defendant was using a deceptively similar mark. During the pendency of the suit, the plaintiff obtained registration for its trademark and subsequently amended the plaint to include a claim for infringement. The defendant was allegedly selling infringing products under the brand name “Refresh Springs,” which the plaintiff contended was confusingly similar to its registered trademarks. The plaintiff further asserted that the defendant’s online presence, including an interactive website, facilitated sales across India, including Delhi. The plaintiff also cited complaints from distributors who reported market confusion due to the similarity in branding.

The defendant countered that it had no business presence in Delhi and that the plaintiff had failed to provide any invoices or evidence of actual sales in Delhi. It argued that the accessibility of its website in Delhi did not automatically confer jurisdiction upon the Delhi High Court. The defendant relied on precedents that emphasized the need for concrete evidence demonstrating that the alleged infringing activities had a direct impact within the court’s territorial jurisdiction.

Procedural Background:

The defendant moved an application under Order XIIIA of the Commercial Courts Act, 2015, seeking summary judgment on the ground that the suit lacked merit due to jurisdictional deficiencies. The defendant contended that there was no material evidence to suggest that it was conducting business in Delhi. The plaintiff opposed this application, asserting that the defendant’s website was interactive and facilitated sales across India, including in Delhi. The court reserved its decision on September 7, 2018, and pronounced its judgment on September 14, 2018.

Issues Involved in the Case:

The primary issue in this case was whether the Delhi High Court had territorial jurisdiction to entertain the suit. The court had to determine whether the defendant’s online presence and alleged sale of goods in Delhi provided a sufficient basis for jurisdiction under Section 134(2) of the Trade Marks Act, 1999, and Section 20(c) of the Code of Civil Procedure. The court also had to decide whether the plaintiff had made a prima facie case for jurisdiction or whether the suit should be dismissed summarily.

Submission of Parties:

The plaintiff argued that its registered office was in Delhi and that it was carrying on business within the territorial limits of the court. It contended that under Section 134(2) of the Trade Marks Act, 1999, a trademark owner has the right to sue in the jurisdiction where it carries on business, irrespective of where the infringement occurs. The plaintiff also emphasized that the defendant’s website was accessible in Delhi and that the defendant had acknowledged nationwide sales in a trademark opposition proceeding. It relied on the Supreme Court's judgment in Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors., 227 (2016) DLT 320 (DB), which held that a plaintiff could sue at the place of its principal office.

The defendant maintained that the plaintiff had not provided any proof of sales in Delhi and that jurisdiction could not be established merely on the basis of an accessible website. It relied on the judgment in Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2010 (42) PTC 361 (Del.) (DB), which required a plaintiff to show that the defendant had engaged in commercial activity specifically targeting customers within the forum state. The defendant further cited Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors., 2018 (73) PTC 178 (Del), which held that in commercial suits, courts could dismiss claims summarily if the plaintiff lacked a real prospect of success.

Discussion on Judgments Cited:

In Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey & Ors., 227 (2016) DLT 320 (DB), the court held that a plaintiff with a registered office in a particular jurisdiction could sue for trademark infringement there, even if the cause of action arose elsewhere. The plaintiff relied on this ruling to justify filing the suit in Delhi.In Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr., 2010 (42) PTC 361 (Del.) (DB), the court held that a plaintiff must show that a defendant had engaged in commercial transactions specifically targeting customers within the forum state. The defendant argued that this principle applied and that the plaintiff had failed to establish such targeting.In Godfrey Phillips India Limited vs. P.T.I. Private Limited & Ors., 2018 (73) PTC 178 (Del), the court emphasized that commercial suits could be dismissed summarily if the plaintiff had no real prospect of success. The defendant cited this ruling to argue that the plaintiff’s claim lacked merit and should be dismissed without trial.The court also examined M/s. RSPL Limited vs. Mukesh Sharma & Anr., FAO(OS) 145/2016, where it was held that a plaintiff must make a positive statement of fact regarding jurisdiction and that such statements must be taken as correct when considering an application under Order 7 Rule 10 CPC.

Reasoning and Analysis of the Judge:

Justice Yogesh Khanna reasoned that the plaintiff had its registered office in Delhi and was carrying on business within the jurisdiction. The court noted that Section 134(2) of the Trade Marks Act, 1999, granted jurisdiction to the court where the plaintiff carried on business, and that this provision was distinct from the general rules of jurisdiction under the CPC.The court observed that the defendant had itself stated in a trademark opposition proceeding that its products were widely sold across India. This, in the court’s view, was sufficient to establish a prima facie case for jurisdiction. The court distinguished Banyan Tree Holding by noting that in that case, the website was not interactive, whereas in the present case, the defendant’s website allowed users to place orders.The court also considered Ultra Home Construction and ruled that since the plaintiff had its registered office in Delhi, it was entitled to sue there. The court rejected the defendant’s reliance on Godfrey Phillips India Limited, holding that the plaintiff had a real prospect of succeeding and that the case warranted a full trial.

Final Decision:

The court dismissed the defendant’s application for summary judgment, holding that the Delhi High Court had jurisdiction to entertain the suit. The court ruled that the plaintiff had established a prima facie case for jurisdiction and that the matter should proceed to trial. The application was dismissed with no order as to costs.

Law Settled in This Case:

The case reaffirmed that under Section 134(2) of the Trade Marks Act, a plaintiff can sue for trademark infringement in the jurisdiction where it carries on business, irrespective of where the defendant operates.Trademark Jurisdiction can be based on the basis of Defendant's own admission in opposition proceeding claiming all India user. It also clarified that an interactive website capable of soliciting orders within a jurisdiction could be a valid ground for establishing territorial jurisdiction. The judgment reinforced that jurisdictional challenges must be assessed based on prima facie evidence rather than requiring conclusive proof at the preliminary stage.

Case Title: Prime Comfort Products Private Limited Vs. Lal Bahadur 

Date of Order: September 14, 2018

Case No.: CS(COMM) 1606/2016

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Yogesh Khanna

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Narender Kumar Sharma Vs. Maharana Pratap Educational Center

Delays in re-filing should be assessed on different considerations than delays in initial filing

Introduction:

The case of Dr. Narender Kumar Sharma & Ors vs. Maharana Pratap Educational Center revolved around the procedural aspect of filing and re-filing a written statement. The dispute arose when the defendants were denied the right to file their written statement due to procedural delays. The case highlights the legal interpretations concerning the delay in re-filing and its implications on the rights of the parties involved.

Factual Background:

The plaintiffs, Dr. Narender Kumar Sharma and others, filed a suit against Maharana Pratap Educational Center. The defendants were served with summons on January 8, 2018, requiring them to submit their written statement within 120 days as per the Civil Procedure Code (CPC). The defendants initially filed their written statement on May 7, 2018, within the prescribed period. However, due to certain office objections, the document was returned for rectification.

Despite this, the defendants failed to re-file the corrected statement within the required timeframe. The trial court, upon noticing this delay, passed an order on October 1, 2018, closing the defendants' right to file their written statement. This led to an appeal before the High Court of Delhi.

Procedural Background:

The appellants challenged the trial court’s order and sought condonation of the delay in re-filing the written statement. The application for condonation of delay was based on the argument that the delay was not in the initial filing but in re-filing due to rectification of objections, which should be treated differently under the law.

The High Court had to determine whether the delay in re-filing could be condoned and if it should be treated differently from the delay in the initial filing.

Issues Involved in the Case:

The primary issues for consideration were whether the delay in re-filing the written statement should be treated the same as the delay in initial filing? whether the defendants should be permitted to re-file their written statement despite the lapse of the prescribed 120-day period, and whether the decision of the trial court in closing the right to file the written statement was legally justified?

Submission of Parties:

The appellants argued that the written statement was initially filed within time and was only delayed in re-filing due to office objections. They contended that as per settled legal principles, delay in re-filing should not be subjected to the same stringent standards as delay in initial filing. They relied on precedents, including S.R. Kulkarni vs. Birla VXL Ltd., 1998 (3) RCR (Civil) 436 and Indian Statistical Institute vs. Associated Builders & Ors., AIR 1978 SC 335, which distinguished between initial filing and re-filing.

The respondents contended that re-filing amounts to fresh filing, and any delay in this regard should be viewed strictly. They relied on the Division Bench judgment in Northern Railway vs. Pioneer Publicity Corporation Pvt. Ltd., 2015 (X) AD Delhi 378, which held that re-filing should be treated as fresh filing.

Discussion on Judgments Cited:

The court examined several judgments. In S.R. Kulkarni vs. Birla VXL Ltd. (1998), the court held that delay in re-filing should be treated differently from delay in initial filing and should not be subjected to the same rigorous tests. In Indian Statistical Institute vs. Associated Builders & Ors. (1978), the Supreme Court ruled that delay in re-filing is not governed by the same limitations as the initial filing under the Limitation Act. In Northern Railway vs. Pioneer Publicity Corporation Pvt. Ltd. (2015), this Division Bench ruling held that re-filing amounts to fresh filing and delay cannot be condoned. However, in Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd. (2017) 11 SCC 234, the Supreme Court overturned the Division Bench ruling, affirming that Section 34(3) of the Arbitration Act does not apply to re-filing but only to initial filing.

Reasoning and Analysis of the Judge:

Justice Jayant Nath analyzed the precedents and concluded that the trial court erroneously treated the delay in re-filing as equivalent to a delay in initial filing. The Supreme Court in Northern Railway v. Pioneer Publicity Corporation Pvt. Ltd. (2017) had clarified that re-filing should not be treated as fresh filing. Given the absence of mala fide intent and the procedural nature of the delay, it would be unjust to deny the defendants the right to submit their written statement.

Final Decision:

The High Court allowed the appeal, condoning the delay in re-filing and permitting the defendants to place their written statement on record, subject to a cost of ₹15,000.

Law Settled in This Case:

This case reaffirmed that delays in re-filing should be assessed on different considerations than delays in initial filing. Courts should not adopt a rigid approach in such matters, especially when procedural delays occur due to rectification of objections. The ruling aligns with the Supreme Court’s stance that re-filing should not be equated with fresh filing.

Case Title: Dr. Narender Kumar Sharma Vs. Maharana Pratap Educational Center

Date of Order: December 13, 2018

Case No.: CS(COMM) 22/2018

Neutral Citation: AIRONLINE 2018 DEL 2947

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Jayant Nath

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Kas Zainulabdin and Co vs. Gokul Chand Manoj Kumar

Trademark Dispute Over 999 Vs  ‘099’: High Court Rules in Favor of Kas Zainulabdin & Co

Factual Background:

Kas Zainulabdin and Co, a long-established manufacturer and marketer of textile goods such as lungis and vests, claimed trademark rights over a registered label mark 999 under Class 24. The dispute arose when Gokul Chand Manoj Kumar and Sons GM and Sons Pvt. Ltd., a former distributor of the plaintiff, sought registration for a similar mark, "099." The plaintiff alleged that the defendant's use of a deceptively similar mark would cause confusion and deception among consumers, especially given their past association.

Procedural Background:

The plaintiff filed a suit for infringement and passing off, leading to an ad interim injunction on 17th September 2024, restraining the defendant from using the impugned mark. The matter was further contested before the High Court of Calcutta’s Intellectual Property Rights Division, where the defendant challenged the plaintiff’s claim of exclusivity over numerical marks.

Provisions of Law Referred and Their Context:

Section 17 of the Trademarks Act, 1999, was a key provision in the case, with the plaintiff asserting exclusive rights over its registered label mark. The defendant countered that numerals per se are non-distinctive and cannot be monopolized, arguing that the plaintiff’s registration was for a composite label rather than the numerical element alone. The Court examined the principles of deceptive similarity and the scope of protection afforded to composite trademarks.

Judgments Referred with Complete Citation and Context

The plaintiff relied on R.R. Proteins & Agro Ltd. v. Hari Shankar Singhania (2010 SCC OnLine Cal 2014) to support the claim that a mark need not be identical but merely deceptively similar to establish infringement. Laxmikant V. Patel v. Chetanbhai Shah ((2002) 3 SCC 65) was cited to highlight that misrepresentation causing confusion is a key ground for passing off. Assam Roofing Ltd. v. JSB Cement LLP (2015 SCC OnLine Cal 6581) reinforced the position that a registered proprietor has exclusive rights to their mark unless a prior user establishes a superior claim. The defendant cited Mona Aggarwal v. Glossy Colour & Paints ((2016) 65 PTC 447 (DB)) to argue that numerical marks alone lack distinctiveness. Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd. (2011 SCC OnLine Del 5497) was also referred to assert that a registered trademark must be considered as a whole rather than isolating specific elements.

Reasoning of the Court:

The Court found that the defendant’s mark was deceptively similar to the plaintiff’s and could lead to confusion among consumers. The trade dress and overall get-up of the defendant’s product were strikingly similar to that of the plaintiff, reinforcing the likelihood of misrepresentation. The Court noted that the defendant, having prior knowledge of the plaintiff’s mark, had deliberately adopted a similar mark to capitalize on the plaintiff’s goodwill. The use of the impugned mark, in the Court’s view, amounted to dishonest adoption and unfair competition.

Decision:

The High Court upheld the ad interim injunction granted on 17th September 2024, preventing the defendant from using the disputed mark. The plaintiff’s plea was allowed, affirming their trademark rights and restraining the defendant from selling products under the impugned mark. The Court recognized the potential for consumer confusion and ruled in favor of protecting the plaintiff’s brand identity.

Case Title:Kas Zainulabdin and Co Vs. Gokul Chand Manoj Kumar and Sons

Date of Order:13th March 2025

Case Number:IP-COM/26/2024, IA NO: GA-COM/1/2024

Name of Court:High Court at Calcutta

Name of Judge:Hon’ble Justice Ravi Krishan Kapur

Bhole Nath Foods Ltd. vs. Kirorimal Kashiram Marketing and Agencies Pvt. Ltd.

Trademark Clash: Delhi High Court Stays Injunction Against ‘Cheetal’ Mark

Factual Background

Bhole Nath Foods Ltd. and Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. are both engaged in the rice business, selling under the trademarks "Cheetal" and "Double Deer," respectively. The respondent claimed exclusive rights over the "Double Deer" trademark and alleged that the appellant’s "Cheetal" mark infringed upon its rights, leading to consumer confusion and deception. The dispute arose when the respondent sought an injunction against the appellant's use of the "Cheetal" mark.

Procedural Background

The respondent filed CS (COMM) No.709/2023 before the District Judge (Commercial Court), Central District, Tis Hazari Courts, Delhi, alleging trademark infringement and passing off. The Commercial Court granted an injunction on 6 November 2024, restraining the appellant from using the "Cheetal" mark. Bhole Nath Foods Ltd. challenged this order in the Delhi High Court through FAO (COMM) 79/2025. The appellant also sought condonation of delay in filing and re-filing the appeal, which the Court allowed.

Provisions of Law Referred and Their Context

Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, were invoked by the respondent to obtain an interim injunction against the appellant. Section 28(3) and Section 29 of the Trademarks Act, 1999, were relevant in determining whether a suit for infringement could lie against a registered proprietor of a trademark. The appellant argued that its registration of the "Cheetal" mark since 2007 granted it exclusive rights, while the respondent contended that the mark was deceptively similar to its own.

Judgments Referred with Complete Citation and Context

The respondent relied on Parle Products (P) Ltd. v. J.P. & Co. Mysore (1972) 1 SCC 618, National Sewing Thread Company Ltd. v. James Chadwick & Brothers Ltd. (1953) 1 SCC 794, South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. (2015) 61 PTC 231, and Kirorimal Kashiram Marketing & Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill (2010) 44 PTC 293 to establish that deceptive similarity is sufficient to warrant an injunction. The appellant argued that there was no phonetic or visual similarity between "Cheetal" and "Double Deer," and that consumer confusion was unlikely.

Reasoning of the Court

The Delhi High Court found that the appellant had a registered trademark for "Cheetal" since 2007, which was valid and subsisting. It noted that the respondent had been aware of this registration since 2012 but only filed the suit in 2023, raising concerns about delay. The Court also observed that "Cheetal" and "Double Deer" were phonetically and visually distinct, and there was no prima facie case for consumer confusion. Given the principles of prima facie case, balance of convenience, and irreparable loss, the Court found merit in granting interim relief to the appellant.

Decision:

The Delhi High Court stayed the operation of the injunction order dated 6 November 2024, allowing the appellant to continue using the "Cheetal" mark until the next hearing. 

Case Title:Bhole Nath Foods Ltd. Vs. Kirorimal Kashiram Marketing and Agencies Pvt. Ltd.

Date of Order:18 March 2025

Case Number:FAO (COMM) 79/2025

Name of Court:High Court of Delhi

Name of Hon’ble Judges:Hon’ble Justice C. Hari Shankar and Hon’ble Justice Ajay Digpaul

Eveready Industries India Limited vs. Mahalaxmi Industries

Trademark Dispute Over EVEREADY JOSH Vs ‘JOSH’: Delhi High Court Grants Injunction to Eveready

Factual Background:

Eveready Industries India Limited, a leading manufacturer of batteries, flashlights, and electrical accessories, has been using the trademarks "EVEREADY JOSH" and "JOSH" since 2009 for its flashlights and torches. The company obtained trademark registrations for these marks, establishing goodwill and brand recognition. In December 2024, Eveready discovered that Mahalaxmi Industries was selling flashlights and torches under the identical mark "JOSH" through its website and third-party e-commerce platforms like Amazon and Flipkart. Eveready claimed that Mahalaxmi’s products bore a striking resemblance to its own in terms of color scheme and branding, leading to consumer confusion and dilution of its brand identity.

Procedural Background:

Eveready filed a suit before the Delhi High Court seeking a permanent injunction against Mahalaxmi Industries to prevent trademark infringement and passing off. On 23rd December 2024, the Court issued summons to the defendants, directing them to file a written statement and reply to Eveready's application for interim relief within thirty days. However, the defendants failed to appear before the Court or file any response. The matter was later listed before the Joint Registrar on 13th February 2025, but again, no representation was made by the defendants. Given their non-appearance, the Court proceeded to hear Eveready's arguments on interim relief.

Provisions of Law Referred and Their Context:

Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, were invoked by Eveready to seek an interim injunction. The Court examined the plaintiff’s rights under the Trademarks Act, 1999, specifically regarding registered trademarks and protection against infringement and passing off. Eveready argued that its long-standing and exclusive use of the "EVEREADY JOSH"/"JOSH" marks granted it statutory protection. The Court also considered the principles of deceptive similarity, consumer confusion, and the potential impact on Eveready's brand reputation.

Judgments Referred with Complete Citation and Context:

The Court referred to previous judgments establishing the principle that even registered trademarks can be challenged if their usage leads to consumer deception. While specific citations were not explicitly mentioned in the order, the case follows precedents set in trademark disputes concerning the likelihood of confusion and deceptive similarity in branding. The Court assessed whether Mahalaxmi Industries’ use of "JOSH" created an unfair advantage by misleading consumers into associating their products with Eveready.

Reasoning of the Court:

The Court observed that Eveready had been using "EVEREADY JOSH"/"JOSH" since 2009 and had developed significant goodwill, with sales exceeding ₹331 crores under these trademarks. The similarity between Eveready’s and Mahalaxmi’s products, including identical branding elements such as the color scheme and packaging, strongly indicated an attempt to mislead consumers. Given the defendants' failure to contest the claims, the Court found that Eveready had established a prima facie case of infringement and passing off. The balance of convenience lay in Eveready’s favor, as continued use of the "JOSH" mark by the defendants would likely cause irreparable harm to its brand reputation and financial interests.

Decision:

The Delhi High Court granted an interim injunction in favor of Eveready, restraining Mahalaxmi Industries and its proprietor from manufacturing, selling, or advertising products under the "JOSH" trademark. The defendants were also prohibited from using any similar marks that could create confusion among consumers. The matter is scheduled for the next hearing on 13th May 2025 before the Joint Registrar and 1st September 2025 before the Court for further proceedings.

Case Title:Eveready Industries India Limited Vs. Mahalaxmi Industries 

Date of Order:17 March 2025

Case Number:CS(COMM) 1187/2024

Name of Court:High Court of Delhi

Name of Hon’ble Judge:Hon’ble Justice Amit Bansal

KEI Industries Limited Vs. Raman Kwatra

Honest and concurrent use is not a defense against trademark infringement 

Introduction:

The case of KEI Industries Limited vs. Raman Kwatra & Anr., decided by the Delhi High Court on May 17, 2022, deals with a dispute over trademark infringement. KEI Industries, a well-established manufacturer of electrical cables and wires, alleged that the defendants had unlawfully adopted a deceptively similar trademark, "KEI," to mislead consumers and benefit from KEI Industries' goodwill. The case raised critical issues regarding trademark rights, priority of use, honest concurrent use, and the scope of infringement under the Trade Marks Act, 1999.

Factual Background:

KEI Industries Limited was originally established as Krishna Electrical Industries in 1968 and later incorporated as a public limited company in 1992. The company has been using the trademark "KEI" for its products, primarily electrical wires and cables, for several decades. The plaintiff had registered "KEI" both as a word mark and as a device mark under various trademark classes, including Classes 6, 9, 16, 35, 37, and 42.

In September 2017, KEI Industries discovered that the defendants had applied for registration of the trademark "KEI" under Classes 7, 11, and 35 for electrical goods, including appliances such as fans, geysers, and electrical heating apparatus. The plaintiff issued a cease-and-desist notice to the defendants, demanding that they stop using the mark and withdraw their trademark applications. The defendants, however, continued using the "KEI" mark, prompting KEI Industries to file a suit seeking a permanent injunction and damages for trademark infringement.

The defendants, led by Raman Kwatra, claimed that their business, Kwality Electrico (India), had been in operation since 1966 under the ownership of Om Prakash Kwatra (OPK), the father of Raman Kwatra. They argued that they had inherited the right to use the "KEI" mark and that their usage was honest and concurrent. The defendants further contended that KEI Industries’ trademark registration did not cover the product categories in which they operated, such as electrical appliances under Class 11.

Procedural Background:

KEI Industries filed a suit before the Delhi High Court seeking an interim injunction under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908. The plaintiff argued that the defendants were infringing upon its registered trademark and misleading consumers by creating confusion in the marketplace.

The defendants filed a written statement asserting their right to use the "KEI" mark based on prior use and alleged that the plaintiff’s registration under Class 9 did not extend to electrical appliances, which fell under Class 11. They also invoked Section 12 of the Trade Marks Act, 1999, arguing that they were honest and concurrent users of the mark.

The High Court, in its judgment, analyzed the claims of both parties and determined whether the plaintiff had established a prima facie case for an injunction.

Issues Involved in the Case:

The primary legal issues in the case included whether the defendants' use of the mark "KEI" amounted to trademark infringement under Section 29 of the Trade Marks Act, 1999? Another issue was whether the defendants had any legal right to use the "KEI" mark based on prior use or inheritance from OPK? The court also examined whether the defendants could claim honest and concurrent use under Section 12 of the Trade Marks Act? A key question was whether KEI Industries' trademark rights extended to product categories beyond those explicitly covered under its trademark registration? Finally, the court had to determine whether the defendants' use of the "KEI" mark would likely cause confusion among consumers and lead to passing off?

Submissions of Parties:

KEI Industries contended that the "KEI" mark had been in use since 1968 and had acquired significant goodwill and reputation. The plaintiff argued that the defendants’ use of "KEI" was clearly infringing, as "KEI" was the most dominant and essential part of their mark. It was also asserted that the defendants had no legal basis for claiming inheritance of the mark since OPK had transferred the rights to use "Kwality" to his other son, Rajiv Kwatra, and not to Raman Kwatra. The removal of "Kwality Electrico India" from the defendants’ mark was presented as evidence of an intention to mislead consumers and associate their products with KEI Industries. The plaintiff further argued that the defendants’ products, such as electrical appliances, were similar and allied to KEI Industries’ products, thus leading to a likelihood of confusion in the market. The defendants’ claim of honest and concurrent use was rejected on the basis that their usage of "KEI" only started in 2008, long after KEI Industries had secured its trademark registration in 1988.

The defendants countered these claims by arguing that Kwality Electrico (India) was established in 1966 and had been using the mark since then. They contended that they had acquired the right to use "KEI" from OPK and had been using it independently since 2008. It was argued that the plaintiff’s trademark registration was limited to Class 9, covering wires and cables, whereas the defendants’ products, such as electrical fans and heaters, fell under Classes 7 and 11. The defendants asserted that the plaintiff had failed to show that their use of the mark caused any real consumer confusion. They claimed that they were entitled to honest and concurrent use under Section 12 of the Trade Marks Act, as their use was longstanding and in good faith.

Discussion on Judgments Cited:

The court analyzed several judgments to assess whether the defendants’ use of "KEI" constituted infringement. In Midas Hygiene v. Sudhir Bhatia, (2004) 3 SCC 90, the Supreme Court ruled that in cases of trademark infringement, an injunction must be granted if there is prima facie evidence of deception, regardless of delay. The court applied this principle in favor of KEI Industries. In Power Control Appliances v. Sumeet Machines, (1994) 2 SCC 448, the Supreme Court held that honest and concurrent use is a ground for registration, not a defense against infringement. The court rejected the defendants’ reliance on Section 12. In Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49 (Del), the Delhi High Court ruled that a trademark owner is not obliged to sue an infringer immediately but can act when the infringement becomes significant. This justified KEI Industries’ delay in filing the suit. In L&T Ltd. v. Lachmi Narain Trades, 2008 (36) PTC 223 (Del), the court emphasized that phonetic and visual similarity between marks is a key factor in determining infringement. The resemblance between "KEI" and the plaintiff’s mark was deemed sufficient for confusion.

Reasoning and Analysis of Judge:

Justice C. Hari Shankar analyzed the case in depth and ruled in favor of KEI Industries, holding that the plaintiff had a valid and subsisting trademark registration for "KEI" since 1988, giving it the exclusive right to use the mark. The court found that the defendants had failed to establish a legitimate claim to inherit or acquire rights to the mark. The removal of "Kwality Electrico India" from the defendants’ mark demonstrated an intent to create confusion. The court rejected the argument that honest and concurrent use could be used as a defense against infringement. It was concluded that the defendants’ products were similar enough to KEI Industries’ goods to cause consumer confusion.

Final Decision:

The court granted an interlocutory injunction restraining the defendants from using the "KEI" mark for electrical goods and appliances. The defendants were barred from using the mark pending the final resolution of the suit.

Law Settled in this Case:

The ruling reaffirmed that prior registration grants exclusive rights to use a trademark in similar product categories. The decision clarified that honest and concurrent use is not a defense against trademark infringement. The judgment also reinforced that phonetic and visual similarity is sufficient to establish infringement. It established that a trademark holder is not obligated to sue immediately but can act when infringement becomes significant.

Case Title: KEI Industries Limited Vs. Raman Kwatra & Anr.

Date of Order: May 17, 2022

Case No.: CS(COMM) 9/2021

Court: Delhi High Court

Judge: Hon’ble Mr. Justice C. Hari Shankar

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

J.C. Bamford Excavators Limited Vs. Bull Machines Pvt. Ltd.

Technical drawings could qualify for copyright protection

Introduction:

The case of J.C. Bamford Excavators Limited & Anr. vs. Bull Machines Pvt. Ltd., decided by the Delhi High Court on December 20, 2017, revolved around allegations of design and copyright infringement. J.C. Bamford Excavators Limited (JBEL), a well-known manufacturer of earth-moving and construction equipment, accused Bull Machines Pvt. Ltd. (BMPL) of infringing its registered designs and copying copyrighted technical drawings related to its 3DX Backhoe Loader. The court was tasked with determining whether BMPL had violated JBEL’s intellectual property rights, including analyzing the relevance of design registrations, the application of copyright law to technical drawings, and the defendant’s claims of independent creation.

Factual Background:

J.C. Bamford Excavators Limited, a UK-based company, was engaged in manufacturing and selling earth-moving and construction equipment worldwide. Plaintiff No. 2, JCB India Limited, was a wholly owned subsidiary of JBEL, operating in India since 1979. The plaintiffs claimed to be pioneers in the backhoe loader industry and held multiple design registrations for components of their 3DX Backhoe Loader, including the boom, dipper, bucket, stabilizer leg, hydraulic tank, diesel tank, and seat.

The plaintiffs alleged that BMPL had copied these registered designs and used their technical drawings to manufacture similar components for its competing product. They contended that BMPL’s backhoe loader incorporated infringing parts that were nearly identical to JBEL’s products, leading to confusion among consumers and unfair competition. JBEL had also secured an interim injunction against BMPL, which prevented the latter from launching or marketing the allegedly infringing product.

BMPL, in its defense, argued that the lawsuit lacked a valid cause of action, as it had independently developed its backhoe loader and its components. The defendant further challenged the validity of JBEL’s design registrations and contended that technical drawings related to functional parts could not be protected under copyright law.

Procedural Background:

JBEL initiated the lawsuit in 2011 as a quia timet action, anticipating imminent infringement by BMPL. The court initially granted an interim injunction restraining BMPL from manufacturing and selling the disputed product. BMPL then sought to vacate the injunction, and negotiations between the parties ensued. However, when settlement talks failed, the plaintiffs amended their suit to include additional claims of copyright infringement and sought a permanent injunction.

BMPL subsequently filed applications under Order VII Rule 11 of the Civil Procedure Code (CPC), seeking the dismissal of the suit on the grounds that it lacked a cause of action. BMPL also invoked Order XII Rule 6 CPC, requesting a judgment in its favor based on alleged admissions made by JBEL in previous legal proceedings. The court had to determine whether JBEL’s claims were maintainable and whether BMPL had indeed infringed upon JBEL’s intellectual property rights.

Issues Involved in the Case:

The primary issues before the court included whether BMPL’s backhoe loader components infringed JBEL’s registered designs? The court also examined whether JBEL’s technical drawings were entitled to copyright protection and whether BMPL’s use of similar designs constituted infringement? Another key issue was whether JBEL’s previous statements in unrelated lawsuits amounted to admissions that precluded its claims in the present case? Finally, the court assessed whether BMPL’s argument regarding the functional nature of JBEL’s designs had merit and whether JBEL’s lawsuit should be dismissed at the preliminary stage?

Submissions of Parties:

JBEL contended that BMPL had intentionally copied the design elements of its 3DX Backhoe Loader, as evidenced by the striking similarities in the components. The plaintiffs presented a technical report that highlighted identical features between their product and BMPL’s allegedly infringing backhoe loader. They also submitted marketing materials that showed BMPL’s promotional brochures contained near-identical descriptions and images of JBEL’s product.

BMPL, in its defense, argued that JBEL’s claims were baseless and that the plaintiffs had misled the court. The defendant pointed to previous litigation where JBEL had stated that its components were purely functional and, therefore, incapable of design protection. BMPL asserted that technical drawings for functional parts did not qualify for copyright protection under Section 52(1)(w) of the Copyright Act, 1957. It also claimed that JBEL had wrongfully obtained an interim injunction by failing to disclose material facts from prior cases.

Discussion on Judgments Cited:

The court examined multiple landmark judgments to determine whether JBEL’s claims were legally tenable. It referred to Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 to emphasize that deceptive similarity could lead to confusion, even if minor variations existed. The court also considered Microfibres Inc. v. Girdhar & Co. (2009 (40) PTC 519 (Del), where the Delhi High Court held that while technical drawings might be protected as artistic works, their reproduction for purely functional parts might not constitute copyright infringement.

Another key ruling cited was S.P. Chengalvaraya Naidu v. Jagannath (AIR 1994 SC 853), where the Supreme Court held that parties who misrepresent facts to obtain legal relief could not benefit from their own deceit. BMPL relied on this case to argue that JBEL had concealed prior litigation where it had admitted that its designs were functional and, therefore, ineligible for copyright or design protection.

The court also analyzed Godrej Sara Lee Ltd. v. Reckitt Benckiser Australia Pty Ltd. (2010 2 SCC 535), which clarified the application of territorial jurisdiction in intellectual property cases. BMPL attempted to use this ruling to argue that the Delhi High Court lacked jurisdiction, but the court rejected this contention, as BMPL’s infringing products were available for sale in Delhi.

Reasoning and Analysis of the Judge:

Justice Vibhu Bakhru of the Delhi High Court conducted a detailed analysis of JBEL’s claims and BMPL’s defenses. The court found that while JBEL’s backhoe loader designs had been registered, their status as purely functional parts raised doubts about their eligibility for design protection. It noted that JBEL’s previous legal statements, where it claimed its designs were functional and unregistrable, created inconsistencies in its arguments. However, the court ruled that these admissions were not conclusive and required further examination during the trial.

Regarding copyright infringement, the court noted that Section 52(1)(w) of the Copyright Act excluded purely functional parts from protection. Since JBEL’s technical drawings were used to manufacture functional components, BMPL’s use of similar drawings might not necessarily amount to copyright infringement. However, the court determined that this issue required a full trial and could not be decided at the preliminary stage.

The court rejected BMPL’s plea to dismiss the case under Order VII Rule 11 CPC, as JBEL had presented sufficient cause of action. It also declined to grant BMPL relief under Order XII Rule 6 CPC, stating that JBEL’s previous statements did not amount to unequivocal admissions that would warrant summary judgment.

Final Decision:

The Delhi High Court dismissed BMPL’s applications seeking dismissal of the suit and allowed the case to proceed to trial. It ruled that JBEL’s claims merited further examination and that the issues of design and copyright infringement could not be decided without a full evidentiary analysis. The court emphasized that a mere assertion of functionality was not sufficient to invalidate JBEL’s design registrations or copyright claims at the preliminary stage.

Law Settled in this Case:

The judgment reinforced that allegations of design and copyright infringement must be assessed based on substantive evidence rather than mere procedural objections. It clarified that technical drawings could qualify for copyright protection, but their reproduction for functional components might not constitute infringement under Section 52(1)(w) of the Copyright Act. The ruling also reaffirmed that prior admissions in unrelated legal proceedings did not automatically preclude a party from asserting new claims. Furthermore, the court confirmed that cases involving intellectual property disputes require a detailed factual inquiry and cannot be dismissed summarily based on preliminary arguments.

Case Title: J.C. Bamford Excavators Limited & Anr. vs. Bull Machines Pvt. Ltd.

Date of Order: December 20, 2017

Case No.: CS(OS) 2934/2011

Court: Delhi High Court

Judge: Hon’ble Mr. Justice Vibhu Bakhru

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

K.G. Khosla Compressors Ltd. Vs. Khosla Extrakting Ltd

Personal surnames cannot be used as a justification for misleading branding

Introduction:

The case of K.G. Khosla Compressors Ltd. vs. Khosla Extrakting Ltd. & Ors., decided by the Delhi High Court on June 19, 1985, dealt with an important question of trademark and business name protection. The plaintiff, K.G. Khosla Compressors Ltd., sought a permanent injunction restraining the defendants from using the name "Khosla" in their business entity, arguing that it caused deception and unfairly leveraged their established goodwill. The case revolved around the issues of passing off, corporate misrepresentation, and whether the defendants' use of the name "Khosla" was legitimate or an attempt to mislead investors.

Factual Background:

K.G. Khosla Compressors Ltd. was a well-established company engaged in the manufacturing of air compressors in India. It was part of the Khosla Group, which consisted of several reputed companies operating in the capital market. The name "Khosla" had become synonymous with the group, and its shares were actively traded on stock exchanges. The plaintiff claimed that the word "Khosla" was associated exclusively with their business and was recognized as their trademark.

The dispute arose when the defendants, two former employees of K.G. Khosla Compressors Ltd., formed a new company named Khosla Extrakting Ltd. in 1984. The defendants attempted to launch a public issue under this name, promoting themselves as being associated with the "famous Khosla Group of New Delhi." The plaintiff alleged that the defendants had no legitimate claim to the name and were deliberately misleading investors to capitalize on the plaintiff’s goodwill.

The plaintiff further contended that the use of "Khosla" in the defendants’ company name was fraudulent, as only one of the defendants bore the surname "Khosla." It was alleged that the defendants had adopted this name to confuse the public into believing that their company was part of the established Khosla Group. The plaintiff approached the court, seeking an injunction to prevent the defendants from using the name and launching their public issue.

Procedural Background:

The plaintiff initially approached the Regional Director of the Company Law Board under Section 22 of the Companies Act, 1956, requesting that the defendants be directed to change their company name. The Regional Director issued a directive requiring the defendants to change their name, but the defendants challenged this order before the Delhi High Court. Following certain technical objections, the Regional Director withdrew the order, stating that the matter could be reconsidered if necessary.

Having failed to obtain relief from the Company Law Board, the plaintiff then filed the present suit before the Delhi High Court, seeking a permanent injunction against the defendants. The court also considered an application under Order 39, Rules 1 and 2 of the Code of Civil Procedure for interim relief, restraining the defendants from carrying on business under the disputed name while the case was pending.

Issues Involved in the Case:

The primary issue before the court was whether the defendants’ use of "Khosla" in their company name amounted to passing off and whether it created confusion among investors and consumers? The court also examined whether the plaintiff had exclusive rights over the name "Khosla" and whether the defendants had any legitimate basis for using the name?  Another key issue was whether the suit was maintainable in light of the plaintiff’s previous approach to the Company Law Board. The defendants argued that since the plaintiff had already sought relief under Section 22 of the Companies Act, they were barred from pursuing the matter in a civil court? The court had to determine whether the civil suit was maintainable despite the previous proceedings before the Company Law Board?

Submissions of Parties:

The plaintiff argued that the name "Khosla" had become exclusively associated with their business, and the defendants were attempting to deceive the public by using the same name. The plaintiff contended that the defendants’ advertisements falsely suggested that they were part of the "Khosla Group," misleading investors into believing that their shares were associated with the well-known Khosla brand. The plaintiff also submitted that the defendants had no prior industrial base and had formed the company solely to exploit the goodwill of the Khosla Group. It was further argued that the defendants’ use of the name was in bad faith, as they had previously attempted to establish a company under a different name but had failed to attract investors.

The defendants countered by arguing that one of their directors bore the surname "Khosla," giving them the right to use the name. They contended that they had independently established their business and were not attempting to pass off their company as part of the plaintiff’s group. They also pointed out that there were other companies in India with the name "Khosla," arguing that the plaintiff did not have an exclusive monopoly over the name. The defendants also submitted that the plaintiff’s attempt to restrain them was motivated by a desire to eliminate competition. They contended that since the plaintiff had already approached the Company Law Board under Section 22 of the Companies Act, they could not pursue the same relief in a civil court.

Discussion on Judgments Cited:

The court referred to several landmark judgments in the area of passing off and corporate misrepresentation. In Exxon Corporation v. Exxon Insurance Consultants International Ltd. (1981) 2 All ER 495, the court had restrained a company from using the name "Exxon" on the ground that it created confusion with the well-established brand. This case was cited to emphasize that a well-known corporate name should be protected from unauthorized use.

The case of Joseph Rodgers & Sons Ltd. v. W.N. Rodgers & Co. (1924) 41 RPC 277 was also considered, where it was held that a person could not use their own name in a way that caused confusion with an established business. The court found that even if one of the defendants bore the name "Khosla," it did not justify using the name to mislead the public.

The court also referred to Simatul Chemical Industries Pvt. Ltd. v. Cibatul Ltd., where it was held that a later company could be restrained from using a name deceptively similar to an existing company if it led to public confusion. The principle of passing off was emphasized in this ruling, reinforcing the plaintiff’s claim.

Reasoning and Analysis of the Judge:

Justice D.P. Wadhwa found that the plaintiff had established a prima facie case for injunction. The court observed that the defendants had deliberately used the name "Khosla" to mislead investors and create an impression of association with the plaintiff. The fact that the defendants had previously attempted to establish a company under a different name but failed to gain public interest further suggested an intent to exploit the goodwill of the plaintiff’s brand.The court rejected the defendants’ argument that the use of "Khosla" was legitimate simply because one of them bore the surname. It noted that in corporate law, the registration of a company name must not create confusion in the market, and personal names cannot be used to mislead the public.The court also ruled that the civil suit was maintainable despite the plaintiff’s previous approach to the Company Law Board. It held that the jurisdiction of the civil court and the Company Law Board operated in different spheres, and the plaintiff was entitled to seek relief in court.

Final Decision:

The Delhi High Court granted an injunction restraining the defendants from using the name "Khosla" in their business and from entering the capital market under the name Khosla Extrakting Ltd. The court found that allowing the defendants to continue using the name would cause irreparable harm to the plaintiff’s reputation and mislead the investing public.

Law Settled in this Case:

The judgment reaffirmed that a company cannot use a name deceptively similar to an established business if it creates confusion in the market. It clarified that personal surnames cannot be used as a justification for misleading branding. The ruling also confirmed that civil courts have jurisdiction to hear passing-off claims even when the Company Law Board has been approached under the Companies Act.

Case Title: K.G. Khosla Compressors Ltd. vs. Khosla Extrakting Ltd. & Ors.

Date of Order: June 19, 1985

Neutral Citation: AIR 1986 DELHI 181, ILR (1985) 2 DELHI 416

Court: Delhi High Court

Judge: Hon’ble Mr. Justice D.P. Wadhwa

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

K.R. Chinna Krishna Chettiar Vs. Sri Ambal & Co., Madras & Anr.

Phonetic similarity alone could be sufficient to establish deceptive similarity

Introduction:

The case of K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co., Madras & Anr., decided by the Supreme Court of India on April 14, 1969, is a landmark judgment concerning trademark law, particularly regarding phonetic similarity and deceptive resemblance. The appellant, K.R. Chinna Krishna Chettiar, sought registration of a trademark containing the name "Sri Andal," while the respondents, Sri Ambal & Co., opposed it on the grounds that it was deceptively similar to their registered trademark "Sri Ambal." The case revolved around the question of whether phonetic similarity between two marks could lead to confusion among the general public, even if they were visually distinct.

Factual Background:

The appellant, K.R. Chinna Krishna Chettiar, was the proprietor of Radha & Co., a business engaged in the manufacture and sale of snuff. The respondents, Sri Ambal & Co., were a partnership firm also involved in the snuff trade, operating in Madras and beyond. Both parties had well-established business activities in the snuff industry.

On March 10, 1958, the appellant applied for the registration of a trademark for snuff under Class 34, featuring a label with the image of the goddess Sri Andal and the words "Sri Andal Madras Snuff" in multiple languages. The respondents opposed this application, arguing that it was deceptively similar to their registered trademarks.

The respondents were proprietors of two registered trademarks: one consisting of the word "Sri Ambal" and another featuring an artistic label with an image of the goddess Sri Ambal, along with the phrase "Sri Ambal Parimala Snuff." They contended that "Sri Andal" and "Sri Ambal" were phonetically similar and that the use of "Sri Andal" for snuff would likely mislead consumers into believing that the appellant’s product was associated with their well-established brand.

Procedural Background:

The appellant's application for trademark registration was initially examined by the Registrar of Trademarks, who ruled in favor of the appellant, holding that "Sri Andal" and "Sri Ambal" were not deceptively similar. The Registrar reasoned that despite certain common letters, the phonetic differences were sufficient to prevent confusion.

The respondents challenged this decision before the Madras High Court. A Single Judge of the High Court overturned the Registrar’s decision, holding that the marks were indeed phonetically similar and likely to cause confusion. The appellant then filed a Letters Patent Appeal before a Division Bench of the Madras High Court, which upheld the Single Judge’s ruling. Following this, the appellant appealed to the Supreme Court of India.

Issues Involved in the Case:

The primary issue before the Supreme Court was whether the trademark "Sri Andal" was deceptively similar to the registered trademark "Sri Ambal" under Section 12(1) of the Trade and Merchandise Marks Act, 1958? Whether phonetic similarity alone was sufficient to constitute trademark infringement, even when there was no visual resemblance between the marks?

Submissions of Parties:

The appellant argued that "Sri Andal" and "Sri Ambal" were distinct names with different meanings, as they referred to two different Hindu goddesses. It was contended that the phonetic similarity was coincidental and that consumers would not be confused because they would recognize the separate religious significance of each name.

The appellant also relied on the decision of the Registrar of Trademarks, who had expert knowledge of such matters and had ruled that the two marks were not deceptively similar. The appellant further contended that visual differences between the marks, including their distinct artistic representations, would prevent consumer confusion.

The respondents countered that phonetic similarity was the most important factor in determining deceptive similarity in trademark law. They argued that consumers, particularly those who were unfamiliar with Hindu religious distinctions, would likely confuse the two marks. They further emphasized that "Sri Ambal" had been in use for several decades and had acquired significant goodwill, and allowing the registration of "Sri Andal" would unfairly dilute their brand identity.

Discussion on Judgments Cited:

The Supreme Court relied on several key judgments to determine whether phonetic similarity alone was sufficient to constitute deceptive similarity.

The court referred to In the Matter of Broadhead's Application (1950) 57 R.P.C. 209, where it was held that the test for deceptive similarity must consider both visual and phonetic resemblance. It also cited Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd. (1942) 59 R.P.C. 127, where it was determined that phonetic resemblance played a crucial role in consumer perception, even when visual differences existed.

The ruling in De Cordova & Ors. v. Vick Chemical Co. (1951) 68 R.P.C. 103 was particularly relevant, as it established that a trademark could be infringed even if the infringing mark did not completely replicate the original, as long as an essential feature of the original mark was reproduced in a way that created confusion.

The court also referred to Application by Thomas A. Smith Ltd. (1913) 30 R.P.C. 363, where it was held that even words with distinct meanings could be deceptively similar if they sounded alike when spoken aloud.

Reasoning and Analysis of the Judge:

The court held that the key factor in determining deceptive similarity was the likelihood of confusion in the minds of ordinary consumers.The court observed that while there was no visual resemblance between "Sri Andal" and "Sri Ambal," their phonetic similarity was striking. It emphasized that in a noisy marketplace, consumers might not differentiate between the two names, especially when ordering snuff verbally.The court rejected the appellant’s argument that consumers would recognize the religious distinction between Andal and Ambal, noting that not all consumers were Hindus or well-versed in Hindu mythology. It held that an average consumer with imperfect recollection was likely to be misled by the similarity in pronunciation.The court also ruled that the absence of actual confusion did not negate the likelihood of future confusion, particularly as the appellant’s business was relatively new compared to the respondents' well-established brand.

Final Decision:

The Supreme Court upheld the decision of the Madras High Court and dismissed the appellant’s appeal. It ruled that "Sri Andal" was deceptively similar to "Sri Ambal" and could not be registered as a trademark under Section 12(1) of the Trade and Merchandise Marks Act, 1958. The court also denied the appellant’s claim of honest concurrent use, as it had failed to establish a long-standing independent reputation.

Law Settled in this Case:

The judgment reaffirmed that phonetic similarity alone could be sufficient to establish deceptive similarity under trademark law, even in the absence of visual resemblance. The ruling clarified that the test for deceptive similarity should be based on the perception of an average consumer with imperfect recollection. It also established that religious or semantic distinctions between words do not necessarily prevent consumer confusion if the words sound alike when spoken aloud. Furthermore, the court emphasized that a well-established brand enjoys stronger protection against new entrants using deceptively similar marks.

Case Title: K.R. Chinna Krishna Chettiar Vs. Sri Ambal & Co., Madras & Anr.

Date of Order: April 14, 1969

Case No.: Civil Appeal No. 749 of 1966

Neutral Citation: 1970 AIR 146, 1970 SCR (1) 290, 1969 SCD 1048

Court: Supreme Court of India

Judges: Hon’ble Mr. Justice R.S. Bachawat, Hon’ble Mr. Justice S.M. Sikri, Hon’ble Mr. Justice V. Ramaswami

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Ep.106:31.05.2025:Obscenity, Free Speech, and Trademark Law

Obscenity, Free Speech, and Trademark Law

Introduction:

The relationship between trademark law and obscenity has been a subject of legal debate across various jurisdictions. Courts have often been called upon to determine whether trademarks that may be perceived as offensive, vulgar, or controversial should be granted legal protection. This debate centers around two fundamental principles: the right to freedom of expression and the need to protect public morality and decency.

The challenge arises from the fact that morality is inherently subjective and evolves over time. What is considered offensive in one era or culture may not be deemed objectionable in another. In this context, courts have had to strike a delicate balance between upholding constitutional protections for free speech and ensuring that trademarks do not contravene established legal standards on obscenity.

This article delves into the legal provisions governing obscenity in trademark law, examines key judicial precedents, and explores how courts have interpreted these issues in different legal systems.

The Legal Framework Governing Obscene Trademarks:

Obscenity and the Indian Trade Marks Act, 1999: In India, the Trade Marks Act, 1999, serves as the primary legislative framework for trademark protection. Section 9(2)(c) of the Act explicitly prohibits the registration of any trademark that "comprises or contains scandalous or obscene matter."

The rationale behind this provision is to prevent trademarks that could offend public sensibilities or violate the principles of public morality. However, the term "obscene" is not explicitly defined within the Act, leading to ambiguities in interpretation. This has resulted in legal disputes where courts have had to determine whether a particular mark crosses the threshold of obscenity.

International Perspectives on Obscenity in Trademarks: The debate over obscene trademarks is not unique to India. Many countries, including the United States, the United Kingdom, and the European Union, have laws restricting the registration of offensive marks.

In the United States, the Lanham Act initially contained provisions prohibiting the registration of marks that were "immoral," "scandalous," or "disparaging." However, these provisions were later deemed unconstitutional by the U.S. Supreme Court in landmark cases, as they violated the First Amendment's protection of free speech.

Similarly, in the European Union, the EU Trade Mark Regulation (EUTMR) prevents the registration of marks that are "contrary to public policy or to accepted principles of morality." However, European courts have taken a more contextual and case-specific approach, assessing the impact of the mark on the public rather than enforcing blanket prohibitions.

Judicial Precedents and Their Implications for Trademark Law:

Freedom of Expression and Commercial Speech:The protection of commercial speech under the Indian Constitution has been a pivotal factor in the judicial approach to trademark registration. The Supreme Court of India has repeatedly affirmed that trademarks, being a form of commercial expression, enjoy constitutional protection under Article 19(1)(a), which guarantees freedom of speech and expression.

Tata Press Ltd. v. Mahanagar Telephone Nigam Ltd. (1995) 5 SCC 139: In this case, the Supreme Court of India held that commercial speech is protected under the Constitution. The Court ruled that advertisements, including trademarks, fall within the ambit of free speech protections and cannot be restricted unless such restrictions are justified under Article 19(2), which allows for reasonable limitations in the interests of public order, morality, or decency. Relevance to Trademark Law: This ruling establishes that trademarks are not merely commercial symbols but also a form of protected expression. Any restriction on trademark registration must, therefore, pass the constitutional test of reasonableness and necessity.

Matal v. Tam, 137 S. Ct. 1744 (2017) (U.S. Supreme Court):In this case, the U.S. Supreme Court struck down the Lanham Act’s provision prohibiting "disparaging" trademarks, ruling that such restrictions violated the First Amendment. The case arose when Simon Tam, the frontman of an Asian-American band called "The Slants," sought to register the band's name as a trademark. The U.S. Patent and Trademark Office (USPTO) denied the application, arguing that the name was disparaging. The Court ruled in favor of Tam, stating that the government cannot refuse trademark registration on the basis of perceived offensiveness because doing so amounts to unconstitutional viewpoint discrimination. Relevance to Trademark Law: This ruling strongly supports the argument that denying trademarks based on subjective moral concerns is legally indefensible. It reinforces the principle that the government cannot impose restrictions on speech simply because some individuals might find it offensive.

Obscenity: A Contextual and Evolving Standard:Indian courts have consistently emphasized that the determination of obscenity must be made in a holistic and contextual manner, rather than relying on isolated words or phrases.

Samaresh Bose v. Amal Mitra (1985) 4 SCC 289:In this case, the Supreme Court ruled that obscenity must be judged based on the work as a whole rather than by analyzing individual words or phrases. The Court emphasized that a literary, artistic, or cultural work should not be deemed obscene unless it lacks any redeeming social value and has a corrupting influence on public morality. Relevance to Trademark Law: This decision is particularly significant in the context of trademarks that may have multiple meanings or cultural significance. A subjectively offensive term cannot be deemed obscene without assessing its broader commercial and social implications.

Chandrakant Kalyandas Kakodkar v. State of Maharashtra (1970) 2 SCC 687: In this case, the Supreme Court held that moral standards evolve over time and that contemporary social values must be taken into account when determining obscenity. The Court ruled that a work should be evaluated based on current societal norms rather than outdated moral standards. Relevance to Trademark Law: This ruling supports the argument that trademark law should not rigidly adhere to traditional notions of morality. Instead, the evaluation of obscenity should be dynamic, reflecting contemporary cultural and linguistic usage.

Public Morality and the Need for Strong Legal Justifications:Several judicial precedents have established that public morality cannot be used as an arbitrary justification for restricting expression.

KA Abbas v. Union of India (1971) 2 SCC 780:The Supreme Court held that public morality alone is not a sufficient ground for restricting free expression unless the restriction is backed by strong legal reasoning and serves a compelling public interest. Relevance to Trademark Law: This ruling indicates that trademark applications should not be rejected merely because a section of society finds them offensive. There must be clear legal grounds for such restrictions.

Indibly Creative Pvt. Ltd. v. State of West Bengal (2020) 12 SCC 436: The Supreme Court ruled that public morality cannot be determined solely by majoritarian views, and any restriction on expression must be justified through clear legal principles. Relevance to Trademark Law: This precedent reinforces that the rejection of a trademark based on assumed public outrage is legally unsound. Trademarks must be evaluated based on objective legal criteria rather than shifting social sentiments.

Conclusion: The analysis of judicial precedents reveals that trademarks cannot be denied registration merely because they might offend certain sections of society. Courts have consistently held that speech, including commercial speech, must be protected unless there is a compelling legal justification for restriction.

Furthermore, the evolving nature of moral standards suggests that trademark law should adopt a flexible and contextual approach rather than enforcing rigid and outdated interpretations of obscenity. Ultimately, the balance between free expression and public morality must be struck in a manner that respects constitutional rights while preventing legitimate harm to society.

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.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Izuk Chemical Works Vs. Babu Ram Dharam Prakash

Even partial similarities in trademarks could lead to consumer confusion

Introduction:

The case of Izuk Chemical Works vs. Babu Ram Dharam Prakash, decided by the Delhi High Court on May 11, 2007, is a landmark judgment concerning trademark infringement and passing off. The plaintiff, Izuk Chemical Works, alleged that the defendant had dishonestly adopted a deceptively similar trademark and trade dress, leading to consumer confusion and unfair competition. The case revolved around the trademarks "MOONSTAR" and "SUPERSTAR," with the plaintiff seeking a permanent injunction to restrain the defendant from infringing its registered trademark and copyright. The judgment, delivered by Justice Gita Mittal, set a precedent in protecting proprietary rights in trademarks and labels.

Factual Background:

Izuk Chemical Works, engaged in the business of manufacturing and trading bleaching preparations, cleaning substances, cosmetics, and hair dyes since 1917, had been using the trademark "MOONSTAR" alongside an artistic device featuring a star in the lap of the moon. The plaintiff had secured registrations for its trademark and artistic label under the Trademarks Act, dating back to 1943. Over decades, the plaintiff established substantial goodwill and consumer recognition associated with the "MOONSTAR" brand.

The defendant, Babu Ram Dharam Prakash, was engaged in a similar business of manufacturing and trading hair dyes. The plaintiff alleged that the defendant had dishonestly adopted the trademark "SUPERSTAR," incorporating similar elements, including the star device and packaging resembling "MOONSTAR." The plaintiff argued that this was an attempt to deceive consumers and capitalize on its goodwill. The defendant had also applied for the registration of "SUPERSTAR," which triggered the legal battle.

The plaintiff presented evidence of extensive use, including invoices, advertising expenditures, and documentation demonstrating the distinctiveness and commercial success of "MOONSTAR." It also alleged that the defendant copied essential features of its label, including the color scheme, design, and placement of elements, to mislead consumers into believing that "SUPERSTAR" products were associated with the plaintiff's business.

Procedural Background:

The plaintiff filed a suit under Order 39 Rule 1 and 2 of the Code of Civil Procedure, seeking an interim injunction to prevent the defendant from using the allegedly infringing trademark and trade dress. The Delhi High Court initially granted an interim injunction, restraining the defendant from continuing the use of "SUPERSTAR" pending a final decision. The defendant challenged this injunction, arguing that its trademark and label were independently conceived.

During the proceedings, the defendant submitted an affidavit stating that it had altered its label and packaging to differentiate its product from "MOONSTAR." The plaintiff, however, maintained that the defendant’s use of the word "STAR" still violated its trademark rights and sought a permanent injunction.

Issues Involved in the Case:

The central issues in the case included whether the defendant’s use of "SUPERSTAR" constituted trademark infringement and passing off. 

Submissions of Parties:

The plaintiff argued that "MOONSTAR" had acquired distinctiveness and consumer recognition over decades. It contended that the defendant’s use of "SUPERSTAR" was a calculated attempt to mislead consumers and trade upon the plaintiff’s reputation. The plaintiff emphasized that the use of the word "STAR" was an essential and integral part of its trademark, and any similar use by the defendant created an unfair association with its products.

The defendant countered that "SUPERSTAR" was a unique and independent mark that bore no deceptive similarity to "MOONSTAR." It claimed that the changes made to its packaging and label were sufficient to avoid confusion and that its adoption of "SUPERSTAR" was in good faith. The defendant further argued that it had applied for registration of the mark, demonstrating its bona fide intent to establish independent rights over the trademark.

Discussion on Judgments Cited:

The court relied on several landmark judgments in trademark law to determine whether the defendant’s mark was deceptively similar to the plaintiff’s registered trademark. The case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 was cited to establish that in matters of trademark infringement, even slight phonetic or visual similarities could lead to consumer confusion.

The court also referred to Atlas Cycle Industries Ltd. v. Hind Cycles Ltd. (1973 I Delhi 393), where it was held that if the essential features of a trademark were copied, the fact that additional elements were introduced was immaterial. The court emphasized that a trademark’s distinctiveness should be protected to prevent consumer deception.

The judgment in Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449) was also invoked, reinforcing that trademarks must be analyzed from the perspective of an average consumer with imperfect recollection. The court noted that minor differences in a mark’s composition would not suffice if the overall impression of the mark created confusion.

Reasoning and Analysis of the Judge:

The Court analyzed the visual, phonetic, and conceptual similarities between "MOONSTAR" and "SUPERSTAR." The court found that the word "STAR" was a dominant feature of both marks and that its use by the defendant in a similar trade sector was likely to mislead consumers. The judge held that while the marks were not identical, their structural and phonetic similarities were significant enough to cause confusion.

The court also considered the defendant’s claim of independent adoption and bona fide use but found no substantial evidence to support this assertion. The defendant had failed to provide proof of prior or concurrent use that predated the plaintiff’s well-established rights over "MOONSTAR." Furthermore, the court noted that the defendant had originally used a packaging design that was nearly identical to the plaintiff’s, indicating an intent to mislead consumers.

Justice Mittal reasoned that trademark law aims to protect not only the rights of businesses but also the interests of consumers. If the purchasing public were to associate "SUPERSTAR" with "MOONSTAR," it would amount to unfair competition and dilution of the plaintiff’s brand. The defendant’s attempt to modify its label did not absolve it of liability since the core issue was the deceptive similarity between the marks.

Final Decision:

The Delhi High Court ruled in favor of the plaintiff and granted a permanent injunction restraining the defendant from using "SUPERSTAR" or any deceptively similar mark. The court also restrained the defendant from using any trade dress, packaging, or design that could mislead consumers into associating its products with "MOONSTAR." The plaintiff’s statutory and common law rights in the trademark were upheld, and the defendant was barred from further infringing upon them.

Law Settled in this Case:

The judgment reaffirmed several key principles of trademark law. It established that even partial similarities in trademarks could lead to consumer confusion and constitute infringement. The ruling reinforced that the dominant feature of a trademark must be considered in assessing deceptive similarity. It also clarified that modifying certain aspects of an infringing product does not necessarily absolve the defendant if the core trademark violation persists. Furthermore, the court underscored that prior use and goodwill play a crucial role in determining trademark rights, and mere applications for registration do not create legal entitlements.

Case Title: Izuk Chemical Works Vs. Babu Ram Dharam Prakash

Date of Order: May 11, 2007

Case No.: CS(OS) 390/2006

Neutral Citation: MIPR2007(3)8, 2007(35)PTC28(DEL)

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Gita Mittal

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.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi