South India Beverages Pvt. Ltd. Vs General Mills Marketing Inc.

Price differences and consumer sophistication do not necessarily negate confusion

Introduction

In the realm of intellectual property law, trademarks serve as the lifeblood of brand identity, encapsulating a company’s reputation, goodwill, and consumer trust. The case of M/S. South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr., decided by the High Court of Delhi on October 13, 2014, exemplifies the intricate dance of trademark protection, where the line between inspiration and infringement is often razor-thin. This legal skirmish pitted General Mills Marketing Inc., the purveyor of the globally renowned ice cream brand “Häagen-Dazs,” against South India Beverages Pvt. Ltd., a regional player marketing its frozen desserts under the mark “D’Daazs.” At its core, this case delves into the principles of trademark similarity, consumer confusion, and the delicate balance between protecting established brands and fostering market competition. The High Court’s judgment not only resolved a commercial dispute but also enriched India’s trademark jurisprudence with nuanced insights into composite marks, phonetic similarity, and the irrelevance of price disparities in assessing infringement.

Detailed Factual Background

General Mills Marketing Inc., a Delaware-based corporation, is a titan in the global food industry, boasting a portfolio of over a hundred consumer brands sold across more than a hundred countries. Among its crown jewels is “Häagen-Dazs,” a trademark it claims as an arbitrary, coined term devoid of any dictionary meaning, used for premium ice creams and frozen desserts. The mark, registered in India since January 21, 1993, under Class 30 (covering ice cream, ices, sherbet, sorbet, and frozen confections), and later in 2008 under Classes 29, 30, and 42, had been introduced to the Indian market in 2007. General Mills asserted that “Häagen-Dazs” enjoyed a distinctive reputation, bolstered by its unique Danish-sounding phonetics and premium positioning.

On the other side stood M/S. South India Beverages Pvt. Ltd., an Indian company that had been producing and selling ice creams and frozen desserts under the mark “D’Daazs” since 2009, primarily in South India. The company claimed that “D’Daazs” was derived from the name of Late Dwarka Das, the father of one of its founder directors, lending it a personal and sentimental origin. Unlike the premium-priced “Häagen-Dazs,” South India Beverages positioned “D’Daazs” as an affordable option, targeting a broader consumer base. The phonetic and visual similarity between “D’Daazs” and the “Dazs” component of “Häagen-Dazs” sparked the dispute, with General Mills alleging trademark infringement and seeking to protect its brand equity.

Detailed Procedural Background

The legal battle commenced when General Mills Marketing Inc. filed a suit in the High Court of Delhi, accompanied by an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction to restrain South India Beverages from using the mark “D’Daazs” or any deceptively similar variant. On July 23, 2014, a Single Judge of the High Court granted the interim injunction, finding a prima facie case of infringement due to the likelihood of consumer confusion between “Häagen-Dazs” and “D’Daazs.” Aggrieved by this order, South India Beverages appealed to a Division Bench comprising Justice Pradeep Nandrajog and Justice Mukta Gupta, filing FAO (OS) 389/2014. The appeal was argued extensively, with judgment reserved on September 11, 2014, and pronounced on October 13, 2014. The Division Bench upheld the Single Judge’s order, dismissing the appeal but granting a 30-day grace period for South India Beverages to transition away from the infringing mark.

Issues Involved in the Case

The case revolved around several pivotal issues in trademark law: Whether the mark “D’Daazs” was deceptively similar to “Häagen-Dazs,” creating a likelihood of confusion among consumers?Whether the principle of “anti-dissection” precluded a comparison of individual elements (e.g., “Dazs” vs. “D’Daazs”) in a composite mark like “Häagen-Dazs.”?

Detailed Submission of Parties

General Mills Marketing Inc argued that “Häagen-Dazs” was a distinctive, arbitrary mark with no linguistic meaning, entitled to robust protection. They contended that “D’Daazs” was phonetically and visually similar to “Dazs,” a significant component of their mark, and that such similarity could confuse consumers, diluting their brand equity. General Mills emphasized that “Dazs” was not a non-dominant element, citing their separate application for its registration on October 22, 2012, as evidence of its independent significance. They dismissed South India Beverages’ defenses of price disparity and distinct packaging, asserting that ice cream, as a widely consumed product, attracted buyers of varying discernment, including children, who were unlikely to notice such differences.

South India Beverages Pvt. Ltd. countered that “Häagen-Dazs” should be protected as an indivisible whole under the “anti-dissection” rule, not dissected into “Haagen” and “Dazs” for comparison. They argued that “Haagen” was the dominant element, rendering “Dazs” secondary and insufficient to sustain an infringement claim. The company highlighted the personal origin of “D’Daazs” from “Dwarka Das,” denying any intent to mimic “Häagen-Dazs.” They further contended that their lower-priced product catered to a different market segment, and that sophisticated consumers of “Häagen-Dazs” would not confuse it with “D’Daazs,” especially given distinct packaging styles.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case

The court’s analysis drew heavily on a rich tapestry of Indian and international precedents, each cited to illuminate specific facets of trademark law:

1. Frisch’s Restaurant, Inc. v. Shoney’s Inc., 1261 F.2d 759 (6th Cir. 1987) - Cited by the court to outline the four-pronged test for granting a preliminary injunction: likelihood of success on merits, irreparable injury, harm to third parties, and public interest. The court used this framework to assess the Single Judge’s discretion, emphasizing the “abuse of discretion” standard for appellate review.
2. Laxmikant V. Patel v. Chetan Bhai Shah & Anr., (2002) 3 SCC 65 - General Mills relied on this Supreme Court ruling to argue that a competitor’s use of a similar name injures the goodwill of the original owner, regardless of fraudulent intent. The court agreed, underscoring the protection of consumer trust and market fairness.
3. Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993) - South India Beverages invoked this case to support the “anti-dissection” rule, arguing that “Häagen-Dazs” must be viewed holistically. The court acknowledged this principle but clarified that it does not preclude identifying dominant elements as a preliminary step.
4. Shen Mfg. Co. v. The Ritz Hotel, 393 F.3d 1238 (Fed. Cir. 2004) - Cited by the court to reinforce the “anti-dissection” rule’s application, where “Putting on the Ritz” was distinguished from “Ritz” based on overall impression, supporting a holistic yet nuanced analysis of “Häagen-Dazs.”
5. Stiefel Laboratories v. Ajanta Pharma Ltd., 211 (2014) DLT 296 - General Mills referenced this Delhi High Court decision, which approved McCarthy’s treatise on the “anti-dissection” rule, to argue that “Dazs” retained significance within “Häagen-Dazs.” The court adopted this view, balancing holistic comparison with element-specific analysis.
6. Re Chatam Int’l, Inc., 380 F.3d 1340 (Fed. Cir. 2004) - The court cited this to illustrate that “Gaspar” dominated both “Gaspar’s Ale” and “Jose Gaspar Gold,” yet examined the marks wholly, supporting its finding that “Dazs” was not subordinate to “Haagen.”
7. Eaton Allen Corp. v. Paco Impressions Corp., 405 F. Supp. 530 (1975) - General Mills used this to argue that appropriating part of a mark (“Super” and “Type” from “Super-Ko-Rec-Type”) constitutes infringement. The court agreed, rejecting South India Beverages’ claim that “D’Daazs” did not fully mimic “Häagen-Dazs.”
8. Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. v. Shree Sita Chawal Udyog Mill, 2010 (44) PTC 293 (Del) - Cited by General Mills to assert that arbitrary marks like “Häagen-Dazs” deserve heightened protection, a principle the court upheld given the mark’s coined nature.
9. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 - General Mills relied on this Supreme Court ruling to emphasize phonetic similarity’s relevance, despite visual differences. The court found “Dazs” and “D’Daazs” phonetically akin, enhancing confusion likelihood.
10. K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. & Anr., AIR 1970 SC 146 - The court cited this to affirm that resemblance must be judged by both sight and sound, reinforcing the phonetic similarity between “Dazs” and “D’Daazs.”
11. Amar Singh Chawal Wala v. Shree Vardhman Rice & Genl. Mills, (40) PTC 417 (Del.) (DB) - General Mills invoked this to highlight phonetic confusion between “Qilla” variants, akin to “Dazs” and “D’Daazs.” The court agreed, noting the risk to ice cream buyers.
12. Enercon v. OHIM, Case No. C-204/10P (CJEU, 8th Chamber, Nov. 23, 2010) - The court referenced this European ruling, where “Transformers” and “Energon” were both dominant, to reject South India Beverages’ claim that “Haagen” alone dominated “Häagen-Dazs.”
13. Universal Motor Oils Co. v. Amoco Oil Co., 809 F. Supp. 816 (1992) - Cited by the court to note that a strong common element increases confusion likelihood, supporting the prominence of “Dazs.”
14. Ireo Pvt. Ltd. v. Genesis Infratech Pvt. Ltd., 208 (2014) DLT 612 - General Mills used this to counter the price-difference defense, which the court upheld, finding it irrelevant for ice cream consumers.
15. N.R. Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 5 SCC 714 - The court cited this Supreme Court decision to dismiss price disparity as a defense, noting potential reputation loss to “Häagen-Dazs.”
16. Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707 (1973) - Cited to refute South India Beverages’ claim that sophisticated buyers avoid confusion, with the court noting subliminal confusion risks.
17. General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) - The court used this to argue that inexpensive items like ice cream warrant less consumer care, heightening confusion risk.
18. Beer Nuts Inc. v. Clover Clubs Food Co., 711 F.2d 934 (10th Cir. 1983) - Cited to emphasize marketplace perception over side-by-side comparison, supporting the court’s focus on consumer impression.
19. Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449 - The court relied on this Supreme Court precedent to assess confusion from the perspective of an unwary purchaser with imperfect recollection.
20. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 - General Mills cited this to argue that packaging differences do not negate infringement of essential features, a view the court endorsed.

Detailed Reasoning and Analysis of Judge

The Court embarked on a meticulous analysis rooted in trademark law’s dual purpose: protecting consumer clarity and rewarding brand innovation. The court began by affirming the “anti-dissection” rule, which mandates viewing composite marks like “Häagen-Dazs” as a whole, as seen in Fruit of the Loom and Shen Mfg. Co. However, it clarified, drawing from Stiefel Laboratories and Re Chatam, that this does not preclude identifying dominant elements as a preliminary step. Rejecting South India Beverages’ argument that “Haagen” alone dominated, the court found no evidence to diminish “Dazs”’s significance, especially given General Mills’ separate registration application for “Dazs.”

The phonetic similarity between “Dazs” and “D’Daazs” was a linchpin, supported by Cadila Health Care and K.R. Chinna Krishna Chettiar, which prioritize sound alongside sight. The court noted “Häagen-Dazs”’s arbitrary nature, per Kirorimal Kashiram, enhancing its protectability. Applying Justice Parker’s “Rules of Comparison” from Stiefel Laboratories, the court assessed the marks through the lens of an average ice cream buyer—often impulsive and including children—finding a high confusion risk, as echoed in Amar Singh Chawal Wala.

South India Beverages’ price-difference defense was dismantled with reference to Ireo Pvt. Ltd., N.R. Dongre, and Grotrian, which collectively hold that even sophisticated consumers can be misled, particularly for accessible products like ice cream. The court dismissed packaging distinctions, citing Kaviraj Pandit Durga Dutt Sharma, emphasizing that essential mark similarity trumps ancillary differences. The Beer Nuts and General Motors rulings reinforced that inexpensive, impulse-buy items heighten confusion likelihood due to lower consumer scrutiny.

The court’s appellate restraint, guided by Frisch’s Restaurant, upheld the Single Judge’s discretion, finding a strong likelihood of success, irreparable harm to General Mills’ goodwill, and public interest in preventing confusion. Balancing equities, it granted a 30-day transition period, reflecting pragmatic justice.

Final Decision

The Division Bench dismissed South India Beverages’ appeal, affirming the interim injunction against using “D’Daazs” or any similar mark. The injunction’s operation was deferred for 30 days from October 13, 2014, allowing the appellant to exhaust existing packaging and adapt. No costs were awarded.

Law Settled in This Case

This judgment crystallized several principles in Indian trademark law:Composite marks must be assessed holistically, but dominant elements can be identified without violating the “anti-dissection” rule.Phonetic similarity is a critical factor in determining deceptive similarity, especially for arbitrary marks.Price differences and consumer sophistication do not necessarily negate confusion, particularly for widely consumed, inexpensive goods.

• Case Title: South India Beverages Pvt. Ltd. Vs General Mills Marketing Inc. 
• Date of Order: October 13, 2014
• Case No.: FAO (OS) 389/2014
• Neutral Citation: 2014 SCC OnLine Del 1953
• Name of Court: High Court of Delhi at New Delhi
• Name of Judges: Hon’ble Mr. Justice Pradeep Nandrajog and Hon’ble Ms. Justice Mukta Gupta

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

Sohan Lal Nem Chand Jain Vs. Trident Group

It is the Holistic similarity and not the dissection, which governs Trademark confusion

Introduction

In the intricate tapestry of intellectual property law, the case of M/S Sohan Lal Nem Chand Jain vs. Trident Group & Others, decided on October 3, 2011, by the Delhi High Court, stands as a compelling narrative of trademark protection, prior use, and the delicate balance between commercial giants and established players. This dispute revolves around the iconic "LOTUS" trademark, a symbol synonymous with quality stationery for over six decades under the plaintiff’s stewardship, challenged by the defendants’ bold foray into the copier paper market. Justice G.S. Sistani’s ruling navigates the murky waters of infringement, passing off, and acquiescence, delivering a verdict that reinforces statutory rights over equitable defenses in trademark law. This case study unravels the layers of this legal showdown, offering a deep dive into the clash of goodwill, reputation, and market identity in India’s bustling stationery sector.

Detailed Factual Background

The plaintiff, M/S Sohan Lal Nem Chand Jain, a partnership firm incorporated in 1947 under the Partnership Act, 1932, has been a stalwart in the stationery industry, manufacturing and marketing an array of paper products under the "LOTUS" trademark. From exercise books to computer paper, the plaintiff’s portfolio spans school and office stationery, earning it a reputation as one of India’s most cherished brands. The "LOTUS" mark, registered under Class 16 of the Trade Marks Act, 1999, since 1965 and renewed in 2003, covers a broad spectrum of stationery items, including printing materials, notebooks, and writing pads. With a distribution network spanning 15 states and tie-ups with major retail chains like Pantaloon and Office 1 Super Stores, the plaintiff’s sales soared from Rs. 22.5 lakhs in 1990-91 to over Rs. 10 crores by 2008-09, bolstered by significant advertising investments totaling over Rs. 40 lakhs between 2000 and 2009. This long, continuous, and uninterrupted use since 1965 cemented "LOTUS" as a hallmark of quality and reliability.

The defendants, collectively referred to as the Trident Group, comprise a formidable industrial conglomerate with an annual turnover exceeding Rs. 2500 crores. Known globally for textiles, chemicals, and power generation, Trident diversified into paper manufacturing, launching "LOTUS" branded premium copier paper in March 2010. The group, including its flagship entity Trident Limited, had previously adopted "LOTUS" for textile products like terry towels since 2008 and named several sister companies—Lotus Infrabuild Ltd., Lotus Integrated Tex Park Ltd., and Lotus Processors Pvt. Ltd.—with the same moniker since 2006. Claiming a bona fide extension of this usage, Trident applied for "LOTUS" registration under Class 16 in September 2008, achieving sales of over Rs. 1 crore within a month of the copier paper launch. However, this move ignited the plaintiff’s ire, who alleged that Trident’s adoption infringed its registered trademark, diluted its goodwill, and misled consumers in the stationery market.

The conflict surfaced in April 2010 when the plaintiff discovered Trident’s flyer announcing the "LOTUS" copier paper launch, corroborated by a letter to the National Stock Exchange dated March 19, 2010. The plaintiff’s investigation confirmed Trident’s use of an identical mark on a product sold through overlapping trade channels, prompting a legal challenge to protect its 62-year legacy.

Detailed Procedural Background

The plaintiff initiated CS(OS) 796/2010 before the Delhi High Court, seeking a permanent injunction against trademark infringement, passing off, unfair competition, damages, and a mandatory injunction. Concurrently, it filed I.A. No. 5388/2010 under Order 39 Rules 1 & 2 of the CPC for an interim injunction. On April 27, 2010, Justice G.S. Sistani issued an ex parte interim order restraining the defendants from using "LOTUS" or any deceptively similar mark on photocopier or stationery items. The defendants responded with I.A. Nos. 6365/2010 and 13435/2010 under Order 39 Rule 4 CPC, seeking vacation of the interim order, arguing prior use and distinct product lines.

The matter escalated to a Division Bench, which modified the interim order, allowing the defendants to sell existing stock while directing the single judge to adjudicate the interim applications expeditiously. On October 3, 2011, Justice Sistani heard I.A. Nos. 5388/2010 (plaintiff’s injunction application), 6365/2010, and 13435/2010 (defendants’ vacation applications) together, delivering a common order. The court reviewed extensive pleadings, documents, and precedents, culminating in a decision that upheld the plaintiff’s statutory rights, confirming the interim injunction and dismissing the defendants’ applications.

Issues Involved in the Case

The case posed several critical questions for adjudication. First, whether the defendants’ use of "LOTUS" on copier paper infringed the plaintiff’s registered trademark under Class 16, given the overlap in goods and trade channels? Second, whether the plaintiff’s long-standing use since 1965 established prior rights, outweighing the defendants’ claim of bona fide adoption since 2006? Third, whether the defendants’ use constituted passing off by leveraging the plaintiff’s goodwill and causing consumer confusion. Fourth, whether the plaintiff’s alleged acquiescence, due to prior business dealings with Trident, barred injunctive relief. Finally, whether differences in product specifics (copier paper vs. notebooks) and packaging negated the likelihood of deception, justifying the defendants’ continued use.

Detailed Submission of Parties

The plaintiff, represented by Mr. Vijay Pal Dalmia and Mr. Vikas Mishra, anchored its case on its status as the registered proprietor of "LOTUS" since 1965, asserting exclusive rights under Section 28 of the Trade Marks Act. Counsel emphasized the mark’s distinctiveness, earned through 62 years of uninterrupted use, extensive sales, and advertising, making it a well-known trademark under Section 2(1)(zg). They argued that Trident’s identical "LOTUS" mark on copier paper, a cognate good under Class 16, infringed their rights under Section 29, as it was sold through identical trade channels—stationery shops and retail chains—catering to overlapping customers. Citing Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), they contended that marks must be judged holistically for similarity, not dissected, and that phonetic and visual identity with "LOTUS" would confuse an unwary purchaser of average intelligence, as per Parle Products (P) Ltd. v. J.P. & Co. (AIR 1972 SC 1359). The plaintiff dismissed Trident’s size and turnover as irrelevant, asserting equal protection under the law, and refuted acquiescence by highlighting prompt action post-2010 launch.

The defendants, led by Senior Counsel Mr. Pinaki Mishra and Ms. Anushree Tripathi, mounted a robust defense. They portrayed Trident as a Rs. 2500-crore conglomerate with a global footprint, negating any need to piggyback on the plaintiff’s modest Rs. 10-crore goodwill. They claimed prior use of "LOTUS" since 2006 for textiles and sister entities, with the 2010 copier paper launch as a natural extension, supported by a 2008 trademark application. Citing Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (1997 (4) SCC 201), they argued that copier paper was distinct from the plaintiff’s notebooks, precluding monopoly over all Class 16 goods. They highlighted packaging differences—featuring "TRIDENT" and "Premium Copier Paper"—and distinct customer segments (corporate vs. students), relying on Marico Ltd. v. Agro Tech Ltd. (FAO(OS) 352/2010) to assert no confusion. Finally, they invoked acquiescence under Khoday Distilleries Ltd. v. Scotch Whisky Association ((2008) 10 SCC 723), alleging the plaintiff’s knowledge of their "LOTUS" use via prior paper purchases, and argued "LOTUS" was a common word, per a trademark search report, denying exclusivity.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case

The plaintiff leaned on seminal precedents to fortify its claim. In Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), the Supreme Court held that overall similarity between "Amritdhara" and "Lakshmandhara" for medicinal goods likely deceived unwary purchasers, emphasizing a holistic comparison from an average consumer’s perspective (paras 7-13). This supported the plaintiff’s contention that "LOTUS" identity risked confusion. Parle Products (P) Ltd. v. J.P. & Co. (AIR 1972 SC 1359) reinforced this, noting that broad features, not minute differences, determine deceptive similarity, apt for arguing that packaging variations were insufficient (paras 8-9). Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. ((2001) 5 SCC 73) outlined factors like mark nature and customer class for passing off (para 42), aligning with the plaintiff’s evidence of identical goods and trade channels. Swaran Singh Trading v. Usha Industries (AIR 1986 Delhi 343) underscored that statutory trademark rights persist despite delay unless abandoned (para 7), countering the defendants’ acquiescence plea.

The defendants countered with precedents favoring their stance. Khoday Distilleries Ltd. v. Scotch Whisky Association ((2008) 10 SCC 723) defined acquiescence as knowingly allowing rights invasion, barring relief if prejudicial (paras 46-47), supporting their claim of the plaintiff’s inaction since 2006. Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd. (1997 (4) SCC 201) limited trademark monopoly to specific goods actually traded, justifying their copier paper use (paras 44-47). Osram Gesellschaft Mit Beschrankter Haftung v. Shyam Sunder (2002 (25) PTC 198 (Del)) echoed this, denying monopoly over all Class 11 goods (paras 11, 13), akin to their Class 16 argument. Marico Ltd. v. Agro Tech Ltd. (FAO(OS) 352/2010) held distinct packaging precluded confusion despite identical goods (para 7), bolstering their trade dress defense. Allied Blenders and Distillers v. Paul John (2008 (38) PTC 568 (Del)) denied injunction due to delay (paras 1, 6, 18), reinforcing their equitable stance.

Detailed Reasoning and Analysis of Judge

Justice G.S. Sistani’s reasoning hinged on statutory trademark rights and prior use, methodically dismantling the defendants’ defenses. He affirmed the plaintiff’s registrations of "LOTUS" in Class 16 (1965 for exercise books, 2003 for broader stationery), supported by bills from 2004 showing sales of computer and copier paper, establishing prior use since 1965. The defendants’ adoption of "LOTUS" for copier paper in 2010, despite earlier textile use since 2006, was deemed subsequent, as their pre-2010 activities were unrelated to Class 16 goods. This temporal priority underpinned the plaintiff’s statutory rights under Section 28, granting exclusive use and relief against infringement per Section 29.

Addressing infringement, Sistani found "LOTUS" identical in both marks, applied to cognate goods—stationery and copier paper—sold through common channels (stationery shops) to overlapping customers. Rejecting the defendants’ distinction between copier paper and notebooks, he cited Amritdhara and Parle, emphasizing that holistic similarity, not dissection, governs confusion. The average consumer, with imperfect recollection, would likely mistake Trident’s product for the plaintiff’s, especially given shared trade counters and the mark’s phonetic and visual identity. The defendants’ packaging additions ("TRIDENT," "Premium Copier Paper") were dismissed as insufficient to alter the core "LOTUS" impression, per Pianotist Co.’s Application (1906) 23 R.P.C. 774).

On acquiescence, Sistani distinguished Khoday and Allied Blenders, noting the defendants’ pre-2010 use was for unrelated textiles, not stationery, and the plaintiff acted promptly post-2010 launch. The plaintiff’s paper purchases from Trident did not imply consent to Class 16 use, and statutory rights under Section 28, reinforced by Swaran Singh and Hindustan Pencils (AIR 1990 Delhi 19), trumped delay-based defenses absent fraud or abandonment. The defendants’ size and turnover were deemed irrelevant against the plaintiff’s equal legal standing, and their claim of "LOTUS" as a common word was self-defeating, given their own registration attempts, per Ozone Spa Pvt. Ltd. (2010 (42) PTC 469 (Delhi)).

Sistani concluded that "LOTUS" was a well-known mark under Section 2(1)(zg), meriting protection even for dissimilar goods under Section 29(4), though here the goods were allied. The plaintiff’s goodwill, built over decades, outweighed the defendants’ recent commercial success, justifying injunctive relief to prevent dilution and deception.

Final Decision

On October 3, 2011, Justice Sistani allowed I.A. No. 5388/2010, confirming the interim injunction of April 27, 2010, restraining the defendants from using "LOTUS" or any deceptively similar mark on photocopier or stationery items. I.A. Nos. 6365/2010 and 13435/2010 were dismissed, upholding the plaintiff’s trademark rights pending the suit’s final adjudication. The court clarified that observations were prima facie, not affecting the merits, and scheduled further proceedings for December 21, 2011, before the Joint Registrar.

Law Settled in This Case

This judgment crystallized several principles in Indian trademark law. It affirmed that statutory rights under Section 28 confer exclusive use to a registered proprietor, prevailing over equitable defenses like acquiescence unless abandonment is proven. It clarified that prior use establishes primacy, and identical marks on cognate goods sold through common channels prima facie constitute infringement under Section 29, assessed holistically per Amritdhara and Parle. The decision underscored that a well-known mark under Section 2(1)(zg) enjoys broad protection, and commercial scale does not justify dilution of a smaller entity’s goodwill. Finally, it held that acquiescence requires specific knowledge and prejudice in the relevant goods’ domain, not unrelated fields.

Case Title: Sohan Lal Nem Chand Jain Vs. Trident Group
Date of Order: October 3, 2011
Case No.: CS(OS) 796/2010 
Neutral Citation: (2012) 49 PTC 105 (Del)
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Hon’ble Mr. Justice G.S. Sistani

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

Cadila Healthcare Ltd. Vs. Gujarat Co-operative Milk Marketing Federation Ltd.

A descriptive trademark, even with secondary meaning, does not grant its user an absolute monopoly, especially when widely used in trade

Introduction

In the bustling world of commerce, where brands battle for consumer loyalty, the case of Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors. stands as a riveting exploration of trademark law, passing off, and the delicate balance between private rights and public usage. Decided by the Delhi High Court in 2007, this legal skirmish pitted Cadila Healthcare, a pharmaceutical giant wielding the "Sugar Free" trademark, against the Gujarat Co-operative Milk Marketing Federation, famed for its "Amul" brand, over the use of the same expression on a frozen dessert. At its core, the case delves into whether a descriptive term like "Sugar Free" can be monopolized as a trademark or if its widespread use in everyday language renders it fair game for all traders. This case study unravels the intricate layers of factual disputes, legal proceedings, and judicial reasoning that shaped this landmark ruling.

Detailed Factual Background

Cadila Healthcare Ltd., a prominent player in pharmaceuticals and health care, claimed ownership of the "Sugar Free" trademark, which it had been using since 1988. Initially adopted by its predecessor, the Cadila Group, for a sugar substitute containing Aspartame (a low-calorie artificial sweetener), the mark was transferred to Cadila in 1995 following a corporate restructuring. Over the years, Cadila expanded its "Sugar Free" portfolio to include products like "Sugar Free Natura" (with Sucralose), "Sugar Free Gold," and "Sugar Free D'lite," positioning it as an umbrella brand for sugar substitutes. The company invested heavily in marketing—boasting 26,239 television insertions and 1,136 print media ads—and claimed a 74% share of India’s artificial sweetener market, with sales exceeding Rs. 1300 crore by 2006. Cadila secured trademark registration for "Sugar Free" in Russia and had applications pending in India and Myanmar, though no Indian registration had been granted by the time of the dispute.

On the other side stood the Gujarat Co-operative Milk Marketing Federation Ltd., a dairy titan known for its "Amul" brand, which launched "Amul Sugar Free Pro Biotic Frozen Dessert" targeting health-conscious consumers, particularly diabetics. The product’s packaging prominently featured the phrase "Sugar Free" in a large font, overshadowing the "Amul" trademark and the descriptor "Pro Biotic Frozen Dessert." Cadila cried foul, alleging that Amul’s use of "Sugar Free" was not merely descriptive but an attempt to pass off its frozen dessert as connected to Cadila’s well-known sugar substitute range, potentially misleading consumers into believing Cadila’s sweeteners were an ingredient in Amul’s product.

The dispute crystallized around the visual dominance of "Sugar Free" on Amul’s packaging and Cadila’s assertion that its long-standing use had imbued the term with a secondary meaning, exclusively linking it to Cadila’s products. Amul countered that "Sugar Free" was a common descriptive phrase, widely used across food and beverage industries, and that its placement alongside the established "Amul" brand negated any intent to deceive.

Detailed Procedural Background

The legal battle commenced when Cadila filed a civil suit (Civil Suit (OS) No. 605/2007) in the Delhi High Court, seeking a permanent injunction to restrain Amul from using "Sugar Free" on its products, alongside claims for rendition of accounts and damages. Concurrently, Cadila moved an interim application (I.A. No. 3847/2007) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), requesting a temporary injunction. On April 3, 2007, the court granted an ex parte ad interim injunction, barring Amul from using "Sugar Free."

Amul responded by filing an appeal (F.A.O. (OS) No. 113/2007) to vacate the ex parte order. On May 4, 2007, a Division Bench of the Delhi High Court reclassified the appeal as an application under Order XXXIX Rule 4 CPC for vacation of the injunction, directing it back to the single judge. Thus, two applications came before Justice G.S. Sistani: Cadila’s plea for a temporary injunction and Amul’s counter-application to lift the ex parte restraint. The court heard extensive arguments and reviewed evidence, including product packaging samples, sales data, and marketing statistics, before delivering its verdict on October 23, 2007.

Issues Involved in the Case

The case hinged on several pivotal questions. First, whether "Sugar Free" was a descriptive term or a distinctive trademark capable of exclusive protection under passing off law? Second, whether Cadila had established that "Sugar Free" had acquired a secondary meaning, linking it solely to its products? Third, whether Amul’s use of "Sugar Free" on its packaging constituted passing off by misleading consumers into associating its frozen dessert with Cadila’s sugar substitutes? Finally, the court had to determine the appropriate interim relief, balancing Cadila’s trademark rights against Amul’s freedom to use a descriptive term and the broader public interest in fair competition.

Detailed Submission of Parties

Cadila’s argued that "Sugar Free" was a coined, distinctive mark, not a mere descriptive phrase. They contended that its ungrammatical combination of "Sugar" and "Free" distinguished it from common parlance, akin to "Baby Dry" in Proctor & Gamble v. OHIM ([2002] RPC 17). Even if descriptive, they asserted, "Sugar Free" had acquired a secondary meaning through decades of use, extensive marketing, and a dominant market presence, making it synonymous with Cadila’s products. They pointed to Amul’s packaging—where "Sugar Free" dwarfed "Amul" in font size—as evidence of deceptive intent, suggesting consumers might assume a connection to Cadila’s sweeteners. Cadila proposed alternatives like "No Sugar" or "Sugar Less," arguing that Amul’s choice of "Sugar Free" was unnecessary and dishonest, especially given prior negotiations where Amul had considered purchasing Cadila’s product.

Amul countered that "Sugar Free" was a generic, descriptive term, widely used across food industries (e.g., "Jell-O Sugar Free Gelatin Dessert"), and thus incapable of exclusive appropriation. They emphasized that Amul used "Sugar Free" descriptively to highlight the product’s low-sugar attribute, not as a trademark, with "Amul" clearly indicating origin. Amul denied any intent to pass off, citing its own brand reputation and consistent packaging style (e.g., "Amul Taaza"). They argued that any confusion stemmed from Cadila’s choice of a descriptive mark, not Amul’s actions, and that granting Cadila a monopoly would stifle fair competition.

Detailed Discussion on Judgments Cited by Parties and Their Context

Both parties leaned heavily on precedent to bolster their positions. Cadila cited Proctor & Gamble v. OHIM ([2002] RPC 17), where "Baby Dry" was deemed a distinctive, non-descriptive mark due to its unusual syntax, arguing "Sugar Free" deserved similar protection. They also referenced Reddaway v. Banham ([1896] 13 RPC 218), where "Camel Hair" gained protection as a distinctive mark despite its descriptive roots, and Globe Super Parts v. Blue Super Flame (AIR 1986 Del. 245), where "Super Flame" was upheld as a coined term. Additional cases like Lakshmikant V. Patel v. Chetanbhat Shah (AIR 2002 SC 275) and Info Edge (India) Pvt. Ltd. v. Shailesh Gupta (2002 (24) PTC 355 (Delhi)) reinforced their claim that descriptive marks could acquire secondary meaning through use.

Amul countered with Cellular Clothing Company v. Maxton and Murray (Vol. 16 RPC 397), where "Cellular" remained descriptive despite use, and Mother Care U.K. Ltd. v. Penguin Books Ltd. ([1988] RPC 113), which denied protection to "Mother Care" as a common phrase. They cited Newsweek Inc. v. British Broadcasting Corporation ([1979] RPC 441) and PROFITMAKER Trade Mark ([1994] RPC 613) to argue that descriptive terms rarely shed their primary meaning, and McCain International v. Country Fair Foods (1981 RPC 16), where "Oven Chips" was deemed unprotectable. These cases underscored Amul’s stance that "Sugar Free" belonged to the public domain.

The court also drew on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (PTC (Suppl) (2) 680 (SC)), distinguishing infringement from passing off (common law, protecting goodwill), and Johnson & Johnson v. Christine Hoden India (P) Ltd. (1988 PTC 39), where "Stay Free" was allowed descriptively, shaping its approach to balancing rights.

Detailed Reasoning and Analysis of Judge

The court's reasoning navigated the murky waters of trademark descriptiveness with finesse. The rejected Cadila’s claim that "Sugar Free" was a coined term, noting its common usage in English (e.g., "lead free," "stress free") as a compound adjective, per dictionaries like Oxford’s. While acknowledging Cadila’s evidence—sales figures, market share, and advertising—established a prima facie secondary meaning among a niche consumer base (e.g., diabetics, health-conscious individuals), the court emphasized that this alone did not justify a monopoly. The term’s descriptive nature and widespread use in food industries (e.g., "Hershey’s Sugar Free Dessert") rendered it publici juris, accessible to all traders for describing product attributes.

Examining Amul’s packaging, the court noted the oversized "Sugar Free" font overshadowed "Amul," risking confusion—though not deception—among consumers who might link it to Cadila’s sweeteners, especially given Sucralose’s presence in both products. However, the found no mala fide intent, citing Amul’s brand strength and packaging consistency. Quoting Kerly’s Law of Trade Marks, he distinguished confusion (insufficient alone) from deception (requiring misrepresentation), concluding Amul’s use was descriptive, not trademark-driven.

Balancing equities, he drew from Wander Ltd. v. Antox India Pvt. Ltd. (1990 (Suppl.) SCC 727), weighing Cadila’s rights against Amul’s freedom and the public interest. A blanket injunction, he reasoned, would unfairly favor Cadila, stifling competition over a common term. Instead, he crafted a nuanced remedy, restraining Amul from using "Sugar Free" in a dominant font while permitting its descriptive use, thus preserving fair trade dynamics.

Final Decision

The court disposed of the interim applications, varying the ex parte injunction of April 3, 2007. The Court restrained Amul from using "Sugar Free" in a font size larger than "Amul" but allowed its use as a descriptive phrase or legend, ensuring no confusion with Cadila’s trademark. The ruling was tentative, subject to the suit’s final adjudication, leaving room for evidence to shape the ultimate outcome.

Law Settled in This Case

The case clarified that a descriptive trademark, even with secondary meaning, does not grant its user an absolute monopoly, especially when widely used in trade. Traders may use such terms descriptively, provided they avoid misrepresentation or undue confusion. Courts must balance private trademark rights against public access to common language, tailoring relief to prevent unfair advantage while fostering competition.

Case Title: Cadila Healthcare Ltd. Vs. Gujarat Co-operative Milk Marketing Federation Ltd.
Date of Order: October 23, 2007
Case No.: Civil Suit (OS) No. 605/2007; 
Neutral Citation: ILR (2008) I Delhi 1242
Name of Court: Delhi High Court
Name of Judge: Hon'ble Justice Shri G.S. Sistani

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.108:LG Corporation Vs Intermarket Electroplasters (P) Ltd.

Under Section 20(c) CPC, the sale of allegedly infringing goods within a court’s territory constitutes a part of the cause of action

Introduction:In the intricate world of trademark litigation, the case of LG Corporation and Anr. Vs. Intermarket Electroplasters (P) Ltd. stands as a testament to the complexities of territorial jurisdiction in India. Decided on February 13, 2006, by the Delhi High Court, this dispute pits a global electronics giant against an Indian company, revolving around the pivotal question of where a legal battle over trademark infringement should be fought. With allegations of passing off and a skirmish over the court’s right to hear the case, this judgment illuminates the interplay between statutory provisions, judicial precedents, and the practical realities of commerce, offering a nuanced exploration of jurisdiction in civil suits.

Detailed Factual Background:LG Corporation, a renowned South Korean multinational, along with its co-plaintiff, initiated a lawsuit against Intermarket Electroplasters (P) Ltd., an Indian company, and other defendants. The crux of LG’s grievance was that Intermarket was allegedly passing off its goods as those of LG by using a deceptively similar trademark. 

LG asserted that this infringement violated its intellectual property rights, prompting a suit for relief in the Delhi High Court.LG’s plaint rested on three jurisdictional anchors: The filing and advertisement of its trademark registration application at the Trade Mark Registry in Delhi, The applicability of Section 134 of the Trade Marks Act, 1999, and the sale of Intermarket’s allegedly infringing goods within Delhi. Specifically, LG pointed to invoices  evidencing sales of these goods to parties in Delhi, asserting that this commercial activity within the city triggered a cause of action sufficient to vest jurisdiction in the Delhi High Court. Intermarket, a company incorporated under the Indian Companies Act with no branch office or agent in Delhi, contested the court’s jurisdiction. It argued that its operations were not based in Delhi, and thus, it neither resided nor carried on business there, challenging LG’s claim to anchor the suit in the capital.

Detailed Procedural Background:The legal proceedings commenced when LG filed its suit in the Delhi High Court, invoking the court’s jurisdiction based on the aforementioned grounds. Intermarket responded by filing an application (IA No. 258/06) under Order 7, Rule 11 of the Code of Civil Procedure (CPC), effectively seeking the return or rejection of the plaint under Order 7, Rule 10, arguing that the court lacked territorial jurisdiction. This application, also invoking the court’s inherent powers under Section 151 CPC, set the stage for a preliminary skirmish over venue.

Issues Involved in the Case:The central issue was whether the Delhi High Court possessed territorial jurisdiction to entertain LG’s suit? This hinged on interpreting Section 20 of the CPC, specifically whether the sale of allegedly infringing goods in Delhi constituted a part of the cause of action sufficient to anchor Jurisdiction under Section 20(c), given Intermarket’s lack of physical presence in the city.

Detailed Submission of Parties:LG’s counsel argued that the court’s jurisdiction was secured by the sale of Intermarket’s infringing goods in Delhi, as averred in paragraph 30 of the plaint: "the impugned goods of the defendants are also selling in Delhi, though without issuance of supporting invoices." They bolstered this with Intermarket’s own documents—invoices showing sales to Delhi parties—asserting that this commercial activity gave rise to a cause of action within the court’s territorial ambit. LG emphasized that jurisdiction under Section 20(c) CPC extends to where any part of the cause of action arises, and the sale of goods directly tied to the passing-off claim satisfied this criterion.

Intermarket’s counsel countered that the company, lacking a branch office or agent in Delhi, neither resided nor carried on business there, as required under Section 20(a) CPC. They relied on the Supreme Court’s ruling in Kusum Ingots & Alloys Ltd. vs. Union of India to argue that mere sales did not equate to carrying on business, drawing parallels to Section 20(c)’s interpretation in writ jurisdiction. They further contended that even if a cause of action arose, the court could discretionarily decline jurisdiction under the doctrine of forum conveniens, urging the suit’s dismissal or transfer.

Detailed Discussion on Judgments :Cited by Parties and Their ContextThe parties leaned on key judicial precedents to fortify their positions: 

Dhodha House vs. S.K. Maingi, (2006) 9 SCC 41: Cited by both sides, this Supreme Court ruling was pivotal. LG conceded it negated jurisdiction based on the Trade Mark Registry’s location and Section 134(2) of the Trade Marks Act, 1999, which provides an additional forum only where the plaintiff resides or works for gain. Intermarket used it to argue that statutory jurisdiction must be explicitly conferred, reinforcing their stance that Delhi lacked a basis absent their business presence. The court clarified that Section 20 CPC governs trademark suits unless overridden by specific provisions, setting the stage for a cause-of-action analysis.

Kusum Ingots & Alloys Ltd. vs. Union of India, (2004) 6 SCC 254: Intermarket relied on this Supreme Court decision, which interpreted jurisdiction under Article 226 of the Constitution by reference to Section 20(c) CPC. The court held that a small part of the cause of action within a High Court’s territory does not compel adjudication, allowing discretionary refusal under forum conveniens. Intermarket argued this principle applied to suits, suggesting Delhi could decline jurisdiction despite sales.

Morgan Stanley Mutual Fund vs. Kartick Das, (1994) 4 SCC 225: Supreme Court case established that a corporation’s residence is typically its registered office, supporting Intermarket’s claim of non-residence in Delhi absent a local office.

Pfizer Products, Inc. vs. Rajesh Chopra and Ors., CS (OS) No. 311/2005 (Delhi High Court, decided February 8, 2006): LG’s counsel noted this recent Delhi High Court ruling which diverged from Dhodha House by suggesting that a trademark application in Delhi could confer jurisdiction. Though LG conceded this point, the citation highlighted evolving judicial thought, though not decisive here.

Detailed Reasoning and Analysis of Judge:

The court affirmed that Section 20 CPC governs territorial jurisdiction in trademark suits, absent overriding statutory provisions. Under Section 20(a), the agreed with Intermarket that it neither resided nor carried on business in Delhi, as it lacked a local office or agent, aligning with Morgan Stanley and Dhodha House. The explanation to Section 20 deems a corporation’s business location as its principal or subordinate office, neither of which Intermarket had in Delhi.

Turning to Section 20(c), the court focused on whether part of the cause of action arose in Delhi due to the sale of infringing goods. The court upheld LG’s averment in the plaint, supported by invoices, as sufficient at the preliminary stage, noting that jurisdiction hinges on pleadings, not their truth, per established law. The sale, he reasoned, was not incidental but central to the passing-off claim, giving LG a legal right to sue in Delhi. This nexus distinguished the case from mere peripheral activity, grounding jurisdiction firmly in the city.Addressing Intermarket’s reliance on Kusum Ingots, the court distinguished writ jurisdiction’s discretionary nature under Article 226 from a suit’s mandatory adjudication under CPC. In suits, he held, jurisdiction is not discretionary once a cause of action is established—there’s no room for forum conveniens to override a plaintiff’s choice of a competent court. The court dismissed the discretionary refusal argument as inapplicable, reinforcing that sales in Delhi sufficed. The court also acknowledged the Pfizer ruling but sidestepped it, given LG’s concession on registry-based jurisdiction, focusing solely on the sales ground. 

Final Decision:The Delhi High Court rejected Intermarket’s application under Order 7, Rule 11 CPC, affirming its territorial jurisdiction to hear the suit. 

Law Settled in This Case:The judgment clarified that: (1) Under Section 20(c) CPC, the sale of allegedly infringing goods within a court’s territory constitutes a part of the cause of action, conferring jurisdiction in trademark passing-off suits, irrespective of the defendant’s residence or business presence; (2) Unlike writ jurisdiction, courts in civil suits cannot discretionarily refuse jurisdiction based on forum conveniens when a cause of action is established; (3) Post-Dhodha House, trademark registry location or Section 134(2) does not automatically grant jurisdiction unless the plaintiff resides or works there.

Case Title: LG Corporation Vs Intermarket Electroplasters (P) Ltd.

Date of Order: February 13, 2006

Case No.:CS (OS) 1359 of 2004

Name of Court: Delhi High Court

Name of Judge: Hon'ble Justice Shri A.K. Sikri

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

Matrix Laboratories Limited Vs. F. Hoffmann-La Roche Ltd:DB

Patent Revocation filing alone won’t anchor High Court jurisdiction—unless linked to infringement.

Introduction:

In the intricate realm of intellectual property law, jurisdictional disputes often serve as the gatekeepers to substantive justice. The case of Matrix Laboratories Limited versus F. Hoffmann-La Roche Ltd., decided by the Madras High Court on December 1, 2011, exemplifies this tension. At its core, this legal battle revolves around the question of whether the Madras High Court possessed the territorial jurisdiction to entertain a patent infringement suit concerning Indian Patent No. 196774 for Erlotinib Hydrochloride? What began as a quia timet action—a preemptive strike against a perceived threat—escalated into a rigorous examination of cause of action, statutory interpretation, and judicial discretion. This case study explores the factual and procedural underpinnings, the legal issues at play, the arguments advanced by both parties, the judicial precedents invoked, and the court’s ultimate reasoning, offering a deep dive into a pivotal moment in Indian patent jurisprudence.

Detailed Factual Background:

The respondents, F. Hoffmann-La Roche Ltd. (a Swiss multinational pharmaceutical company) and OSI Pharmaceuticals, Inc. (a U.S.-based entity), jointly held rights to Indian Patent No. 196774 for Erlotinib Hydrochloride, a compound marketed as TARCEVA for treating lung and pancreatic cancer. The patent’s journey began with an application filed by Pfizer Products, Inc. on March 13, 1996 (No. 537/DEL/1996), which was assigned to OSI Pharmaceuticals and Pfizer Products, with Roche as the exclusive licensee. The patent was granted on July 6, 2007, effective from February 23, 2007, after surviving a pre-grant opposition by Natco Pharma Limited, which was dismissed on July 4, 2007. No post-grant opposition under Section 25(2) of the Patents Act, 1970, had been filed, solidifying the respondents’ statutory rights.

The appellant, Matrix Laboratories Limited, a Secunderabad-based Indian pharmaceutical company, entered the fray by filing a revocation petition on April 30, 2010, before the Intellectual Property Appellate Board (IPAB) in Chennai. In this petition, Matrix expressed its intent to commercially produce and market a generic version of Erlotinib Hydrochloride, specifically a novel polymorphic form, asserting that it would not infringe the suit patent but anticipating infringement actions from the respondents. The respondents, alarmed by this declaration and alleging potential clinical trials in Chennai (via Lotus Labs Pvt. Ltd.), filed a suit in the Madras High Court to restrain Matrix from infringing their patent, claiming a substantial part of the cause of action arose in Chennai.

Detailed Procedural Background:

The respondents initiated C.S. No. 801 of 2010 in the Madras High Court, seeking a permanent injunction against Matrix. Given Matrix’s residence outside the court’s jurisdiction, they filed Application No. 5166 of 2010 under Clause 12 of the Letters Patent, securing leave to sue on September 16, 2010. The following day, an ex parte interim injunction was granted. Matrix responded by filing Application No. 5529 of 2010 to revoke this leave, arguing that no cause of action arose in Chennai. The learned Single Judge, on August 19, 2011, dismissed Matrix’s application, holding that the revocation petition filed before the IPAB in Chennai constituted a part of the cause of action, and upheld the interim injunction.Aggrieved, Matrix appealed to a Division Bench of the Madras High Court (O.S.A. No. 365 of 2011), challenging the Single Judge’s refusal to revoke the leave. The appeal, heard by Justices R. Banumathi and R. Mala, was decided on December 1, 2011, after extensive arguments on jurisdiction, cause of action, and the implications of the revocation petition.

Issues Involved in the Case:

The case hinged on two primary issues: whether the Madras High Court had territorial jurisdiction to entertain the patent infringement suit under Section 104 of the Patents Act, 1970, and Clause 12 of the Letters Patent; and whether the Single Judge erred in refusing to revoke the leave granted to the respondents, based on the contention that Matrix’s revocation petition before the IPAB in Chennai and alleged clinical trials provided a sufficient cause of action?

Detailed Submission of Parties:

The appellant, Matrix Laboratories argued that the Madras High Court lacked jurisdiction. They contended that filing a revocation petition before the IPAB in Chennai—a statutory requirement under Section 64 of the Patents Act—did not constitute a cause of action for an infringement suit, as it was a mere procedural step, not an infringing act. The statements in the petition about intending to manufacture a generic version were necessary to establish Matrix’s status as a “person interested” under Section 64, not a declaration of imminent infringement. They further asserted that research activities, such as clinical trials, were exempt from infringement under Section 107A(a) of the Patents Act, and denied ongoing trials in Chennai, citing a statement from Lotus Labs’ Managing Director. Matrix argued that the patent was granted in Delhi, its operations were in Hyderabad, and the respondents’ choice of Chennai reflected forum shopping, causing undue inconvenience.

The respondents  countered that the Madras High Court had jurisdiction due to a substantial cause of action arising in Chennai. They highlighted Matrix’s explicit intent in the revocation petition to commercially exploit Erlotinib Hydrochloride, interpreting it as a threat of infringement actionable under a quia timet suit. They pointed to past clinical trials conducted by Matrix at Lotus Labs Pvt. Ltd. in Chennai (circa 2005-2006), as evidenced by a World Health Organization (WHO) report, suggesting a likelihood of future infringement-related activities in Chennai. The respondents emphasized their exclusive rights under Section 48 of the Patents Act and argued that the revocation petition’s filing in Chennai, coupled with the nationwide threat of infringement (including Chennai), justified the court’s jurisdiction.

Detailed Discussion on Judgments Cited by Parties and Their Context:

Frearson v. Loe (1876) F. 134 (Chancery Division) was cited by the respondents to support their quia timet action, asserting that a patentee can seek an injunction against a threatened infringement even without actual violation. The court in Frearson held that a deliberate intent to infringe, if proven, justifies preemptive relief, a principle the respondents applied to Matrix’s revocation petition statements.

Rohtas Industries Ltd. v. Indian Hume Pipe Co. Ltd. (AIR 1954 Patna 492), also invoked by the respondents, involved a past infringement implying a continuing threat, warranting an injunction absent clear evidence of cessation. The respondents likened this to Matrix’s intent, though the court distinguished it due to no prior infringement here.

Mars Incorporated v. Kumar Krishna Mukerjee (2003 (26) PTC 60 Del) reinforced the respondents’ quia timet argument, defining it as a preventive action against apprehended substantial damage. The court acknowledged this but questioned its applicability absent concrete infringing acts.

State of Rajasthan v. M/s Swaika Properties ((1985) 3 SCC 217), cited by the appellant, clarified that cause of action comprises facts necessary for relief, and mere procedural events (like notice service) do not suffice unless integral. The court applied this to rule that filing the revocation petition was not a substantive cause.

South-East Asia Shipping Co. Ltd. v. Nav Bharat Enterprises Pvt. Ltd. ((1996) 3 SCC 443), also from the appellant, emphasized that cause of action requires an act by the defendant, not just procedural steps, supporting Matrix’s stance that the petition alone was insufficient.

Rajasthan High Court Advocates’ Association v. Union of India ((2001) 2 SCC 294) defined cause of action as the infraction of a right, guiding the court to assess where the alleged threat materialized, not just where it was filed.

Union of India v. Adnani Exports Ltd. ((2002) 1 SCC 567), cited by the appellant, held that incidental events (like a company’s registered office) do not confer jurisdiction unless tied to the dispute’s core, reinforcing Matrix’s argument against Chennai’s relevance.

Kusum Ingots & Alloys Ltd. v. Union of India ((2004) 6 SCC 254) allowed courts to decline jurisdiction under forum conveniens if the cause of action’s nexus is weak, which the court used to justify overturning the Single Judge’s ruling.

Detailed Reasoning and Analysis of Judge:

The court meticulously dissected the jurisdictional question. They began by affirming the Madras High Court’s original jurisdiction under Section 104 of the Patents Act and Clause 12 of the Letters Patent, which allows suits where the cause of action arises wholly or partly within its limits, provided leave is granted if the defendant resides outside. Since Matrix was based in Secunderabad, jurisdiction depended on a Chennai-based cause of action.

The court scrutinized the revocation petition’s filing before the IPAB in Chennai, a statutory necessity given IPAB’s registry location. They reasoned that this was a “transitory” act, not a substantive cause of action, as hearings could occur elsewhere (e.g., Delhi, where the patent was granted). Drawing from State of Rajasthan and South-East Asia Shipping, they held that cause of action requires a defendant’s act directly tied to the relief sought—here, infringement—not a procedural filing. Matrix’s statements about commercial intent were deemed statutory requirements to establish locus, not a concrete threat, distinguishing this from Frearson and Rohtas Industries, where actual or imminent infringement existed.

On the clinical trials, the court examined the WHO report, noting that Matrix’s 2005-2006 tests at Lotus Labs Chennai involved a different drug (Efavirenz), with no evidence of ongoing or future Erlotinib-related activity there. Recent inspections occurred in Bangalore, undermining the respondents’ apprehension. Citing Union of India v. Adnani Exports, the court found no nexus between these past tests and the current suit prayer, rejecting the quia timet basis as speculative.

The judges criticized the Single Judge’s view that the revocation petition inherently triggered jurisdiction, warning that accepting this would flood the Madras High Court with suits tied to every IPAB filing, an impractical outcome. Applying Kusum Ingots, they invoked forum conveniens, noting the patent’s Delhi origin and Matrix’s Hyderabad base, suggesting more appropriate forums existed. Thus, no substantial cause of action arose in Chennai, warranting revocation of the leave.

Final Decision:

The Division Bench allowed Matrix’s appeal, setting aside the Single Judge’s order dated August 19, 2011, in Application No. 5529 of 2010. The leave granted in Application No. 5166 of 2010 was revoked, dismissing the suit’s maintainability in the Madras High Court, though the respondents were free to pursue it in an appropriate court. No costs were awarded, and connected miscellaneous petitions were closed.

Law Settled in This Case:

This case clarified that Filing a revocation petition before the IPAB does not ipso facto confer jurisdiction on the High Court where the IPAB registry sits, unless it constitutes a substantive cause of action tied to infringement. Cause of action in patent suits requires a direct act or threat of infringement, not mere procedural steps or speculative apprehensions. Courts may decline jurisdiction under forum conveniens if the nexus to the forum is weak, reinforcing a fact-specific approach to territorial jurisdiction under the Patents Act and Letters Patent.

Case Title: Matrix Laboratories Limited Vs. F. Hoffmann-La Roche Ltd.

Date of Order: December 1, 2011

Case No.: O.S.A. No. 365 of 2011

Neutral Citation: 2011 SCC OnLine Mad 2290

Name of Court: High Court of Judicature at Madras

Name of Judges: Hon’ble Mrs. Justice R. Banumathi and Hon’ble Ms. Justice R. Mala

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

Mankind Pharma Limited Vs Novakind Bio Sciences Private Limited

Section 29(5) is an additional, not exclusive, ground for infringement, and its non-applicability did not oust Sections 29(1) to (4).

Introduction:

In the fiercely competitive landscape of pharmaceuticals, where brand identity can be a lifeline for both companies and consumers, the clash between Mankind Pharma Limited and Novakind Bio Sciences Private Limited emerges as a riveting tale of trademark law, deceptive similarity, and judicial interpretation. Decided on August 7, 2023, by the High Court of Delhi, this case pits a pharmaceutical giant against a smaller player, unraveling the complexities of protecting a “family of marks” and the boundaries of corporate naming rights under India’s Trade Marks Act, 1999. With the plaintiff wielding its well-established “KIND” suffix against the defendant’s “NOVAKIND” branding, the court’s ruling offers a profound exploration of infringement, public safety, and the delicate balance between statutory compliance and intellectual property rights. This case study delves into the intricacies of the dispute, tracing its factual roots, procedural twists, legal arguments, and the judiciary’s nuanced reasoning, culminating in a decision that reinforces the sanctity of trademarks in the medicinal domain.

Detailed Factual Background:

Mankind Pharma Limited, the plaintiff, stands as India’s fifth-largest pharmaceutical company, a titan in the industry with a legacy dating back to 1986 when its founder, Ramesh Chand Juneja, adopted the trademark “MANKIND” as its trading style. Renowned for its extensive portfolio, the company boasts 268 brands ranked among the top five in their respective pharmaceutical categories, with 85 at the pinnacle and 67 in second place. Mankind has meticulously cultivated a “KIND family of marks,” incorporating “KIND” as a suffix in various product names, a branding strategy that has become a hallmark of its identity. The company holds registrations for the “MANKIND” mark across all classes and operates a plethora of websites, including mankindpharma.com, mankindmanforce.com, and vetmankind.com, underscoring its pervasive market presence.

The defendant, Novakind Bio Sciences Private Limited, entered the pharmaceutical fray with a corporate name and product branding that sparked Mankind’s ire. Novakind manufactures and sells medicinal preparations, notably Deflazacort tablets under the brand “DEFZAKIND,” prominently featuring “NOVAKIND BIO SCIENCES PRIVATE LIMITED” on its packaging with a registered trademark symbol (®). Mankind perceived this as an encroachment on its “KIND” family, arguing that “NOVAKIND” phonetically and structurally mimicked “MANKIND,” potentially confusing consumers and diluting its goodwill. On August 25, 2020, Mankind issued a cease-and-desist notice, demanding that Novakind abandon its use of “NOVAKIND” and “DEFZAKIND,” claiming infringement of its registered trademark. Novakind’s refusal to comply precipitated this legal showdown.

The crux of the dispute lies in the similarity between “MANKIND” and “NOVAKIND,” compounded by the shared “KIND” suffix, and Novakind’s bold display of its corporate name on product strips, which Mankind argued functioned as a trademark rather than a mere identifier. The stakes were high, given the pharmaceutical context where confusion could endanger public health, a factor that loomed large in the court’s considerations.

Detailed Procedural Background:

The legal saga began with Mankind Pharma filing CS(COMM) 188/2021 before the High Court of Delhi, seeking a permanent injunction to restrain Novakind from using “KIND” as part of its trade name or trademark for any pharmaceutical products. Concurrently, Mankind moved I.A. 5700/2021 under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure (CPC), 1908, requesting an interim injunction. On April 20, 2021, the court granted an ex parte ad interim injunction, barring Novakind from manufacturing, marketing, or selling any pharmaceutical product bearing the “KIND” suffix or otherwise infringing Mankind’s registered trademark. This order remained in effect, casting a shadow over Novakind’s operations.Unwilling to acquiesce, Novakind countered with I.A. 3248/2023 under Order XXXIX Rule 4 CPC, seeking to vacate the interim injunction. Both parties completed their pleadings, submitting detailed arguments and evidence, including product packaging and statutory references. 

Issues Involved in the Case:

The case presented a tapestry of legal and factual questions demanding resolution. Foremost was whether Novakind’s use of “NOVAKIND BIO SCIENCES PRIVATE LIMITED” and “DEFZAKIND” infringed Mankind’s registered “MANKIND” trademark under the Trade Marks Act, 1999, particularly given the shared “KIND” suffix? A pivotal issue was whether “NOVAKIND” functioned as a trademark or merely a corporate name, impacting the applicability of infringement provisions under Sections 29(2)(b) versus 29(5)? The court had to reconcile conflicting judicial precedents on the scope of Section 29(5) versus Sections 29(1) to (4), determining the legal framework for assessing infringement by corporate name usage.

Detailed Submission of Parties:

Mankind Pharma anchored its case on trademark infringement and public interest. Sibal argued that “MANKIND” and its “KIND” family of marks were deeply entrenched in the market, with registrations across all classes and a reputation synonymous with quality pharmaceuticals. He contended that “NOVAKIND” was deceptively similar to “MANKIND,” phonetically and structurally, risking consumer confusion, particularly given the “KIND” suffix’s prominence in Mankind’s branding. Pointing to the “DEFZAKIND” strip, plaintiff highlighted Novakind’s use of “NOVAKIND BIO SCIENCES PRIVATE LIMITED” in bold letters with a registered trademark symbol, asserting it functioned as a source identifier, not just a corporate name, thus falling under Section 29(2)(b). Plaintiff cited Novakind’s own admissions in its application—acknowledging recognition by doctors and intent to build reputation under “NOVAKIND”—to rebut claims of mere corporate use. Sibal challenged the Bombay High Court’s Cipla ruling, relying on Delhi High Court precedents like Bloomberg and Novartis to argue that Sections 29(1) to (4) remained applicable even if Section 29(5) did not fit. Emphasizing the pharmaceutical context, he invoked Supreme Court dicta from Cadila Health Care, stressing the heightened risk of confusion in medicinal products and the need for strict protection.

Novakind, through mounted a multi-pronged defense. Mahapatra argued that Mankind lacked standalone registration for “KIND,” precluding exclusivity over the suffix, and that “NOVAKIND” was a corporate name, not a trademark, used in compliance with the Drugs and Cosmetics Act’s labeling mandates. He leaned heavily on Section 29(5), asserting it exclusively governed infringement by corporate name usage, and since “MANKIND” and “NOVAKIND” were not identical, no violation occurred. Citing the Bombay High Court’s Cipla Full Bench decision, he contended that Sections 29(1) to (4) were inapplicable. Mahapatra further posited that pharmaceutical products, prescribed by trained professionals, minimized confusion risks, and that drugs were sold by brand names like “DEFZAKIND,” not manufacturer names, diluting any association with Mankind. He dismissed public health concerns, arguing that doctors and pharmacists’ expertise negated deception, and urged the court to vacate the injunction based on statutory necessity and lack of trademark use.

Detailed Discussion on Judgments Cited by Parties and Their Context:

The parties wielded an arsenal of judicial precedents, each illuminating distinct facets of trademark law. Mankind relied on Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), where the Supreme Court deemed “AMRITDHARA” and “LAKSHMANDHARA” confusingly similar for medicinal products, emphasizing phonetic and structural likeness from a consumer’s perspective. This bolstered Mankind’s claim of deceptive similarity between “MANKIND” and “NOVAKIND.” Mankind Pharma Ltd v. Cadila Pharmaceuticals Ltd ((2015) 61 PTC 465) from the Delhi High Court reinforced this, enjoining “METROKIND” due to the “KIND” suffix’s dominance in Mankind’s marks, affirming its source-identifying role. Bloomberg Finance LP v. Prafull Saklecha ((2014) 207 DLT 35) and Novartis AG v. Novaegis (India) Private Limited (MANU/DE/1012/2023), both Delhi High Court rulings, countered the Cipla view, holding that Section 29(5) did not preclude Sections 29(1) to (4), allowing broader infringement analysis when a mark doubles as a corporate name. Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd ((2001) 5 SCC 73) underscored the Supreme Court’s stance on heightened scrutiny for medicinal trademarks, rejecting the notion that professional dispensing eliminated confusion risks.

Novakind invoked Cipla Ltd v. Cipla Industries Pvt Ltd (AIR 2017 Bom 75), a Bombay High Court Full Bench decision, asserting that Section 29(5) alone applied to corporate name usage, requiring identity of marks, not mere similarity, thus favoring Novakind’s non-identical “NOVAKIND.” Dhiren Krishna Paul v. Health and Glow Retailing Pvt Ltd (2013 (53) PTC 355 (Mad)) and Chronicle Publications (P) Ltd v. Chronicle Academy Pvt Ltd (2010 (44) PTC 78 (Del)) echoed this, limiting infringement claims absent identical corporate name use in the same trade. These cases aimed to narrow the legal lens to Section 29(5), shielding Novakind from broader infringement claims.

Detailed Reasoning and Analysis of Judge:

The court's reasoning wove a meticulous tapestry of statutory interpretation, factual analysis, and public policy. The began by affirming Mankind’s robust trademark rights in “MANKIND,” registered across all classes, and its “KIND” family’s market recognition. Comparing “MANKIND” and “NOVAKIND,” he found them phonetically and structurally similar, with the shared “KIND” suffix heightening confusion risks, especially in pharmaceuticals where “KIND” was not generic. Drawing from Amritdhara and Cadila Pharmaceuticals (from Mankind v. Cadila), he held that such similarity satisfied Section 29(2)(b)’s test of deceptive similarity and likelihood of association for identical goods.

Addressing Novakind’s Section 29(5) defense, the judge grappled with the Cipla precedent but sided with Delhi High Court’s Bloomberg and Novartis rulings. The Court reasoned that Section 29(5) was an additional, not exclusive, ground for infringement, and its non-applicability did not oust Sections 29(1) to (4). Examining the “DEFZAKIND” strip, he noted “NOVAKIND BIO SCIENCES PRIVATE LIMITED”’s prominent display with a registered trademark symbol, concluding it functioned as a trademark under Section 2(zb), not merely a corporate name. This factual distinction from Cipla—where the mark was solely a corporate identifier—rendered Section 29(2)(b) applicable, as Novakind used “NOVAKIND” in trade to indicate source.

The Court dismissed Novakind’s ancillary arguments. The Drugs and Cosmetics Act’s naming requirement, he held, did not license infringing names; Novakind could adopt a non-conflicting identity. The contention that professional dispensing negated confusion was rebutted by Cadila Health Care’s insistence on a higher standard for medicinal marks, given human fallibility and prescription errors. He emphasized the consumer’s perspective—a person of average intelligence and imperfect recollection—over professional expertise, noting the real-world reliance on manufacturer names in India’s diverse healthcare landscape. Citing extensive U.S. and Indian precedents, he underscored the dire public health implications of medicinal confusion, refusing to speculate on its improbability.

Final Decision:

The court made the ad interim injunction of April 20, 2021, absolute, restraining Novakind from using “KIND” in its trade name or trademarks pending the suit’s disposal. 

Law Settled in This Case:

The judgment clarified that Section 29(5) does not monopolize infringement analysis for corporate name usage; Sections 29(1) to (4) remain viable if the mark serves as a trademark. It affirmed that phonetic and structural similarity, especially in pharmaceuticals, suffices for infringement under Section 29(2)(b) when goods are identical and confusion or association is likely. The ruling entrenched a heightened duty of care for medicinal trademarks, prioritizing public safety over professional safeguards, and held that statutory naming obligations do not excuse infringement.

Case Title: Mankind Pharma Limited Vs Novakind Bio Sciences Private Limited

Date of Order: August 7, 2023

Case No.: CS(COMM) 188/2021

Neutral Citation: 2023:DHC:5653

Name of Court: High Court of Delhi 

Name of Judge: Hon'ble Justice Shri 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

Nuvoco Vistas Corporation Limited Vs. JK Lakshmi Cement Limited

Registration under Section 28 grants exclusive rights, irrespective of packaging differences, if essential features are copied

Introduction:

In the bustling world of India's cement industry, where brand identity can make or break a company, a fierce legal battle unfolded between Nuvoco Vistas Corporation Limited and JK Lakshmi Cement Limited. This case, decided by the High Court of Delhi on April 15, 2019, revolves around the contentious issue of trademark infringement, pitting the plaintiff’s registered mark "CONCRETO" against the defendants’ allegedly similar mark "CONCRETA." What began as a dispute over phonetic and visual similarity escalated into a complex examination of ownership, bad faith, and statutory rights under India’s trademark law. This case study delves into the intricate details of the factual and procedural background, the legal issues at stake, the arguments presented by both parties, the judicial reasoning, and the final outcome, offering a comprehensive look at a landmark trademark dispute.

Detailed Factual Background

Nuvoco Vistas Corporation Limited, the plaintiff, is a prominent player in India’s cement industry, tracing its lineage to Lafarge India Limited, a subsidiary of the French company Lafarge SA. The plaintiff claimed ownership of the trademark "CONCRETO," registered since November 30, 2005, under Registration No. 1402591 in Class 19 for cement and building materials. Additionally, Nuvoco held registrations for various labels featuring "CONCRETO" as the dominant element, including a distinctive slanting roof design, with usage dating back to 2002. The company asserted that it had invested heavily in promoting "CONCRETO," achieving significant sales and establishing it as a well-known mark, bolstered by prior legal victories against infringers.

The defendants, JK Lakshmi Cement Limited, another major cement manufacturer, introduced a product under the mark "CONCRETA," accompanied by a label design that Nuvoco alleged mimicked its own. The plaintiff argued that "CONCRETA" was deceptively similar to "CONCRETO," both visually and phonetically, and that the defendants’ adoption of this mark for identical goods—cement—constituted infringement, passing off, and unfair competition. The defendants, however, countered that "CONCRETO" was a descriptive term derived from "concrete," a generic word interchangeable with "cement," and thus incapable of exclusive appropriation. 

They further challenged Nuvoco’s ownership of certain marks due to a divestment process mandated by the Competition Commission of India (CCI). The backdrop to this dispute includes a significant corporate restructuring. In 2015-2016, following the global merger of Lafarge SA and Holcim, the CCI ordered the divestment of Lafarge’s Indian business to prevent monopolistic practices. This led to the creation of Nuvoco Vistas Corp. Ltd. through a Share Purchase and Transitional Agreement dated October 4, 2016, between LafargeHolcim and Nirchem Ltd. The agreement allowed Nuvoco to use certain "Corporate Marks" (including those with "Lafarge") during an 18-month phase-out period ending March 25, 2018, but explicitly recognized Nuvoco’s ownership of standalone marks like "CONCRETO."

Detailed Procedural Background:

The legal proceedings commenced with Nuvoco filing a suit (CS(COMM) 256/2017) in the High Court of Delhi, seeking a permanent injunction, damages, and other reliefs against JK Lakshmi for trademark infringement and passing off. On April 11, 2017, the court granted an ex parte ad interim injunction restraining the defendants from using "CONCRETA." Subsequently, Nuvoco filed I.A. No. 4261/2017 under Order 39 Rules 1 & 2 of the Code of Civil Procedure (CPC) to confirm this interim relief, while JK Lakshmi filed I.A. No. 5564/2017 under Order 39 Rule 4 CPC to vacate the injunction, arguing misrepresentation by the plaintiff.

The case was reserved for judgment on March 25, 2019, after extensive hearings involving arguments, rejoinders, and sur-rejoinders. Both parties submitted detailed pleadings, affidavits, and documentary evidence, including trademark registration certificates, CCI orders, and the Transitional Agreement. 

Issues Involved in the Case:

Whether Nuvoco had valid ownership and exclusive rights over the "CONCRETO" trademark, particularly in light of the CCI divestment orders and the Transitional Agreement? Whether the defendants’ mark "CONCRETA" was deceptively similar to "CONCRETO," constituting infringement under Section 29 of the Trade Marks Act, 1999? Whether "CONCRETO" was a descriptive term incapable of trademark protection, and if the defendants’ use of "CONCRETA" was in bad faith?

Plaintiff’s Submissions:

Nuvoco argued that it was the registered proprietor of "CONCRETO" since 2005 and had used it since 2002, establishing it as a well-known mark through extensive promotion and sales. The plaintiff highlighted seven registrations listed in paragraph 8 of the plaint, emphasizing "CONCRETO" as the essential feature. It contended that "CONCRETA" was visually and phonetically similar to "CONCRETO," with the defendants’ label mimicking its slanting roof design, suggesting bad faith given their shared industry. Nuvoco cited Laxmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1] to argue that even innocent infringement is actionable, though it asserted the defendants’ actions were deliberate. Regarding ownership, Nuvoco clarified through an affidavit dated November 30, 2018, that the CCI orders and Transitional Agreement preserved its rights over "CONCRETO," distinct from "Lafarge" marks, and accused the defendants of shifting to "PLATINUM" post-injunction, indicating guilt.

Defendants’ Submissions:

JK Lakshmi, argued that "CONCRETO" was descriptive, derived from "concrete," a generic term for cement in multiple languages, and thus lacked distinctiveness, citing J.R. Kapoor vs. Micronix India [1994 Supp (3) SCC 215]. They challenged Nuvoco’s ownership of five marks containing "Lafarge," excluded from the divestment business per the CCI order of February 2, 2016, asserting that Nuvoco lacked locus standi as a mere permitted user, not a proprietor. The defendants accused Nuvoco of suppressing the Transitional Agreement and CCI orders, violating the duty of utmost good faith (Morgan Stanley Mutual Fund vs. Kartick Das [1994] 4 SCC 225]), and sought vacation of the injunction. They further argued that "CONCRETA" and "CONCRETO" targeted different cement types and markets (East India vs. Rajasthan), minimizing confusion.

Detailed Discussion on Judgments Cited by Parties and Their Context:

Laxmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1]: Cited by the plaintiff to argue that even innocent infringement is actionable, though bad faith was evident here. The court used this to infer the defendants’ knowledge of "CONCRETO" given their industry overlap, rejecting any defense of innocence. J.R. Kapoor vs. Micronix India [1994 Supp (3) SCC 215]: The defendants relied on this Supreme Court ruling to assert that descriptive prefixes like "concrete" cannot be monopolized. The court, however, distinguished this by noting the defendants’ own registration application for "CONCRETA," undermining their argument. Morgan Stanley Mutual Fund vs. Kartick Das [1994] 4 SCC 225]: Cited by the defendants to emphasize the plaintiff’s duty of utmost good faith in seeking ex parte relief. The court rejected this, finding no material suppression given the confidential divestment process and sufficient disclosure in the plaint. Amritdhara Pharmacy vs. Satyadeo Gupta [1963 SCR 484]: Referenced by the court to assess phonetic and visual similarity, emphasizing overall impression over minute differences, supporting the finding of deception between "CONCRETO" and "CONCRETA." K.R. Chinna Krishna Chettiar vs. Shri Ambal and Co. [1969] 2 SCC 131]: Used by the court to affirm that resemblance in sound and sight suffices for infringement, reinforcing the phonetic similarity argument.Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceuticals Laboratories [AIR 1965 SC 980]: The court relied on this to distinguish infringement (statutory right) from passing off (common law), holding that essential feature adoption trumps packaging differences. Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel [AIR 2006 SC 3304]: Cited to counter the defendants’ claim that corporate name use diluted "CONCRETO," affirming its prominence in branding.Pankaj Goel vs. Dabur India Ltd. [2008 (38) PTC 49 (Del) DB]: Used to dismiss the defendants’ argument of third-party use, holding that inaction against minor infringers does not waive rights.P&G Manufacturing vs. Anchor Health & Beauty Care [FAO(OS) 241/2014]: Applied to reject the defendants’ descriptive claim, as their registration application for "CONCRETA" contradicted their stance.

Detailed Reasoning and Analysis of Judge:

The court first tackled ownership, finding no falsehood or suppression by Nuvoco. The court noted that all seven marks in paragraph 8 of the plaint were registered to Lafarge India (Nuvoco’s predecessor) at filing, and the Transitional Agreement permitted "Lafarge" use during the phase-out period, ending March 25, 2018. Crucially, "CONCRETO" was not a Corporate Mark, and Nuvoco retained exclusive rights post-phase-out, supported by unchallenged registration certificates.

On infringement, the court found "CONCRETA" visually and phonetically similar to "CONCRETO," differing only by one letter ("O" to "A"), satisfying Section 29 of the Trade Marks Act, 1999. Citing Amritdhara and Kaviraj Pandit, it emphasized overall impression over technical differences, dismissing the defendants’ "hammer and hand" logo as irrelevant to the essential feature’s similarity. The goods (cement) being identical further bolstered this conclusion.

The judge inferred bad faith from the defendants’ industry knowledge and lack of justification for adopting "CONCRETA," aligning with Laxmikant V. Patel. He rejected equity-based defenses (Morgan Stanley), noting infringers cannot claim good faith. The court also dismissed arguments about different trade channels or third-party use, citing Pankaj Goel and the broad scope of "cement" registration under Section 28. Finally, the defendants’ own application for "CONCRETA" registration (P&G Manufacturing) estopped their descriptive claim, showcasing their inconsistent stance.

Final Decision:

The court dismissed JK Lakshmi’s I.A. 5564/2017, refusing to vacate the April 11, 2017 injunction, and confirmed it via I.A. 4261/2017 until the suit’s final disposal. These findings were prima facie, preserving the parties’ rights at trial.

Law Settled in This Case:

Registration under Section 28 grants exclusive rights, irrespective of packaging differences, if essential features are copied.Phonetic and visual similarity suffices for infringement, judged by overall impression.Bad faith can be inferred from industry knowledge and lack of justification.Third-party use or inaction against minor infringers does not waive rights.A party cannot claim a mark is descriptive while seeking its registration.

Case Title: Nuvoco Vistas Corporation Limited Vs. JK Lakshmi Cement Limited

Date of Order: April 15, 2019

Case No.: CS(COMM) 256/2017

Neutral Citation: AIRONLINE 2019 DEL 630

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Manmohan

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