Lifestyle Equities Vs Amazon Technologies, Inc.

Lifestyle Equities Vs Amazon Technologies, Inc.Trademark infringement liability extends to e-commerce brand owners if they directly authorize and control infringing activities.

Case Title: Lifestyle Equities Vs Amazon Technologies, Inc.

Date of Order: 25th February 2025

Case No.: CS(COMM) 443/2020

Neutral Citation:2025:DHC:1231

Court: High Court of Delhi

Judge: Justice Prathiba M. Singh, H. J. 

Introduction:

This case involves a trademark infringement dispute between Life Style Equities CV, the owner of the "Beverly Hills Polo Club (BHPC)" brand, and Amazon Technologies, Inc. along with its associated entities. The plaintiffs alleged that the defendants had engaged in unauthorized use of the BHPC logo, which was sold under Amazon’s private label “Symbol.” The case primarily revolved around e-commerce trademark infringement, intermediary liability, and damages assessment.

Factual Background:

Life Style Equities CV has been using the "Beverly Hills Polo Club" (BHPC) trademark since 1982 and has a strong presence in India since 2007. The plaintiffs entered into various licensing agreements for the distribution and sale of BHPC products in India and globally.

In May 2020, the plaintiffs discovered that Amazon was selling products under its private label “Symbol” with a logo deceptively similar to the BHPC mark on its e-commerce platform www.amazon.in. Upon purchasing the infringing products, they found that the logo was an imitation of their BHPC logo. The plaintiffs claimed that this usage was misleading customers and damaging their goodwill.

Procedural Background:

On 12th October 2020, the Delhi High Court granted an ad-interim injunction restraining Amazon Technologies and Cloudtail India Pvt. Ltd. from selling infringing products. On 20th April 2022, Amazon Technologies failed to appear in court and was proceeded against ex-parte. On 5th September 2022, Cloudtail India Pvt. Ltd. expressed willingness to suffer a decree of injunction and pay reasonable damages. On 25th May 2023, plaintiffs were permitted to lead ex-parte evidence. On 5th July 2023, witness evidence was recorded via video conferencing. On 12th July 2024, final hearing reserved. On 25th February 2025, judgment delivered.

Issues Involved in the Case:

Whether Amazon’s use of a deceptively similar logo on its “Symbol” brand products infringed the BHPC trademark. Whether Amazon, as an intermediary and brand owner, could be held responsible for the infringing sales. Whether the plaintiffs were entitled to compensatory and punitive damages due to loss of business and goodwill. Whether Amazon could claim exemption from liability under intermediary safe harbor provisions.

Submissions of the Parties:

Amazon’s sale of products with an infringing logo under the “Symbol” brand misled consumers. Defendant No.1 (Amazon Technologies) was responsible for controlling and licensing the use of the "Symbol" brand to Defendant No.2 (Cloudtail India Pvt. Ltd.), making them directly liable for infringement. The plaintiffs suffered financial losses due to the unauthorized sale of infringing products from 2015-2020, leading to significant business losses. They relied on expert testimony (PW-3) to establish lost royalties of USD 33.78 million.

Cloudtail India Pvt. Ltd. (Defendant No.2) acknowledged liability, agreed to an injunction, and provided sales data. Amazon Technologies Inc. (Defendant No.1) chose not to appear in court and was proceeded against ex-parte. Amazon Seller Services (Defendant No.3) claimed intermediary protection and was removed from the case.

Discussion on Judgments and Legal Citations:

Times Incorporated v. Lokesh Srivastava, 116 (2005) DLT 569 was cited by plaintiffs to argue for punitive damages. The court rejected this precedent, stating punitive damages should not be awarded arbitrarily. Mathias v. Accor Economy Lodging, 347 F.3d 672 (7th Cir. 2003) was referred to by plaintiffs to argue that punitive damages prevent commercial wrongdoers from profiting through unlawful activities. Lifestyle Equities v. Amazon UK Services Ltd., [2024] UKSC 8, a UK Supreme Court case involving Amazon and Lifestyle Equities on a similar issue, discussed how Amazon systematically engages in brand infringement. Hindustan Unilever Limited v. Rickett Benckiser India Ltd., ILR (2014) II Delhi 1288 was used by plaintiffs to argue that damages should be awarded based on lost business projections.

Reasoning and Analysis by the Judge:

Amazon Technologies was the registered owner of the "Symbol" trademark and had directly authorized Cloudtail India Pvt. Ltd. to sell the infringing products. The court applied the Triple Identity Test (identical mark, goods, and trade channels) and found that infringement was clearly established. 

Amazon deliberately evaded accountability by wearing multiple hats (as an intermediary, a retailer, and a brand owner), making it liable for damages. The court awarded damages based on lost royalties, increased advertising costs, and brand dilution.

Basis for Calculating Damages

The damages awarded in this case were calculated based on multiple factors, including lost royalties, increased advertising costs, and brand dilution. The court relied on expert testimony and financial projections to determine the appropriate compensation. The Trademark License Agreement (TLA) dated 26th November, 2012, executed between Plaintiff No.2 (Lifestyle Licensing B.V.) and Major Brands India Pvt. Ltd., was considered a reliable benchmark. Under the TLA, royalties were calculated at 7.5% on the gross sales, with minimum sales requirements and projected sales targets. Since the infringement took place between 2015-2020, the sales decline was compared with the expected performance under the TLA.

Before infringement, the BHPC brand in India exceeded its projected sales target, showing strong business growth. The defendants' infringing activities started in 2015 and continued until 2020, leading to a significant sales drop in India compared to BHPC's GCC region, which had no infringement and saw a tenfold increase in sales. Plaintiffs' expert witness (PW-3) calculated lost royalties using two models: Minimum Sales Model ($21.85 million) and Business Plan Sales Model ($33.78 million). The court accepted the business plan model, as the brand was expanding before infringement.

Plaintiffs' apparel was priced at ₹2,500 - ₹4,500, but the defendants' infringing products were sold on Amazon at ₹300 - ₹400. This devalued the brand’s reputation, leading to a perception that BHPC was a “cheap” brand. Due to this, the plaintiffs lost market value and consumer trust, forcing them to spend more on advertising and rebranding. The plaintiffs had to increase their marketing efforts to counteract the damage, leading to an award of USD 5 million for additional advertising expenses.

The plaintiffs planned to expand into Bangladesh, Sri Lanka, and Pakistan, expecting to generate at least half the revenue projected for India. This expansion failed due to the infringement, resulting in USD 10.93 - 16.89 million in lost earnings. Plaintiffs had planned a joint venture and Initial Public Offering (IPO) with their Indian retail partner. Due to infringement, this opportunity collapsed, leading to USD 50 million in lost enterprise value.

Final Decision:

Permanent Injunction was granted against Amazon Technologies and Cloudtail India Pvt. Ltd. restraining them from using the infringing logo. Compensatory Damages of USD 38.78 million (₹336,02,87,000) were awarded, along with ₹3,23,10,966.60 towards advertising costs. The total compensation awarded was ₹339,25,97,966.60 plus court fees.

Law Settled in This Case:

Trademark infringement liability extends to e-commerce brand owners if they directly authorize and control infringing activities. 

The Triple Identity Test is a valid method to establish trademark infringement. Punitive damages cannot be awarded arbitrarily but must be justified with clear evidence. E-commerce platforms cannot claim safe harbor protection if they are directly involved in branding and sales.

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

Novartis AG Vs. Novitas Lifesciences

Brief Facts

The plaintiffs, Novartis AG and its affiliate, are globally recognized pharmaceutical companies engaged in the manufacture, marketing, research, and development of high-quality pharmaceutical products. They are the registered proprietors of the trademark "NOVARTIS," which has been in use since 1996 and is registered in multiple jurisdictions, including India. The plaintiffs contended that the defendants, operating under the name "Novitas Lifesciences," had adopted the mark "NOVITAS," which was almost identical to "NOVARTIS" both phonetically and visually. The plaintiffs alleged that the defendants' use of the impugned mark for pharmaceutical products amounted to trademark infringement, passing off, and unfair competition, creating a likelihood of consumer confusion. They sought a permanent injunction restraining the defendants from using the mark "NOVITAS" or any deceptively similar variant.

Issues

The primary issue before the court was whether the defendants' adoption and use of the mark "NOVITAS" amounted to infringement of the plaintiffs' registered trademark "NOVARTIS." Additionally, the court had to determine whether the plaintiffs had made out a prima facie case for the grant of an interim injunction to prevent further use of the allegedly infringing mark pending final adjudication.

Submissions of Parties

The plaintiffs submitted that the mark "NOVARTIS" was a well-known trademark under Indian law, enjoying statutory and common law protection. They argued that the defendants had dishonestly adopted "NOVITAS" by merely rearranging the letters of "NOVARTIS," demonstrating bad faith and an intention to ride upon the plaintiffs' goodwill. The plaintiffs also pointed out that the defendants' domain name "novitaslifesciences.com" and their presence on e-commerce platforms compounded the risk of consumer deception. They further contended that confusion in the pharmaceutical sector posed serious public health risks. The defendants failed to appear before the court, despite being duly served with summons.

Reasoning and Analysis of the Judge

The court observed that the plaintiffs had established a prima facie case of trademark infringement and passing off. It noted that the marks "NOVARTIS" and "NOVITAS" were deceptively similar, both visually and phonetically, which could mislead an average consumer with imperfect recollection. Given the identical nature of the goods—pharmaceutical products—the likelihood of confusion was significantly high. The court emphasized that in the pharmaceutical industry, confusion between two brands could have grave consequences for consumers. It also found that the defendants' continued use of "NOVITAS" would cause irreparable harm to the plaintiffs, as it could lead to dilution of the well-known "NOVARTIS" mark. The balance of convenience was in favor of the plaintiffs, as allowing the defendants to continue using "NOVITAS" would unfairly exploit the plaintiffs' reputation.

Decision of the Judge

The court granted an interim injunction restraining the defendants, their agents, distributors, and affiliates from using the mark "NOVITAS" or any other deceptively similar trademark for medicinal or pharmaceutical preparations. The defendants were also prohibited from using "NOVITAS" in their trade name, domain name, or any promotional material. The court clarified that the defendants were free to carry on their business under a different name that was not deceptively similar to "NOVARTIS." The matter was listed for further proceedings, with directions for filing replies and rejoinders within stipulated timelines.

Case Title: Novartis AG & Anr. v. Novitas Lifesciences & Anr.

Date of Order: February 3, 2025

Case No.: CS(COMM) 97/2025

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Mini Pushkarna

Jage Ram Vs. Ved Kaur

Case Title: Jage Ram Vs. Ved Kaur 

Date of Order: January 28, 2025

Case No.: SLP (C) No. 723/2023

Name of Court: Supreme Court of India

Name of Judges: Hon’ble Mr. Justice Pankaj Mithal and Hon’ble Mr. Justice Ahsanuddin Amanullah

Brief Facts

The petitioner, Jage Ram, had filed a second appeal before the High Court of Punjab & Haryana, which was ultimately decided in terms of a settlement between the parties. The High Court disposed of the appeal based on the terms of the settlement instead of adjudicating the matter on its merits. Following this, the petitioner sought a refund of the court fees he had paid at various stages, including before the Trial Court, the First Appellate Court, and the Second Appellate Court. However, the High Court rejected this request on the ground that no legal basis existed for granting a refund of court fees in such circumstances. Aggrieved by this decision, the petitioner approached the Supreme Court through a Special Leave Petition (SLP).

Issues

The key issue before the Supreme Court was whether the petitioner was entitled to a refund of court fees when the case was settled between the parties without being referred to Arbitration, Conciliation, Lok Adalat, or Mediation. Additionally, the court had to determine whether the High Court erred in rejecting the petitioner’s request for a refund.

Submissions of Parties

The petitioner argued that since the second appeal had been disposed of in terms of a settlement, the court fees paid at all stages should be refunded. It was contended that when disputes are amicably resolved, the refund of court fees should be granted as a measure to encourage settlements and reduce litigation. The respondents, represented by counsel, opposed the petition and argued that a refund of court fees is only permissible under specific legal provisions, which were not applicable in the present case. They submitted that since the settlement did not occur through an adjudicatory or alternative dispute resolution forum recognized by law, the petitioner was not entitled to claim a refund.

Reasoning and Analysis of the Judge

The Supreme Court analyzed the statutory provisions governing the refund of court fees and held that such refunds are permissible only when cases are settled through Arbitration, Conciliation, judicial settlement (including Lok Adalat), or Mediation. The court observed that in this case, the settlement was reached privately between the parties without the intervention of any recognized dispute resolution mechanism. Therefore, the petitioner did not meet the criteria for a refund as laid down in law. The bench further noted that the High Court had correctly interpreted the legal provisions and had not committed any error or illegality in rejecting the petitioner’s claim.

Decision of the Judge

The Supreme Court dismissed the Special Leave Petition, holding that the petitioner was not entitled to a refund of court fees since the settlement was reached outside the scope of recognized dispute resolution mechanisms. The court upheld the High Court’s decision and found no merit in the petitioner’s claim. All pending applications, if any, were also disposed of.

House of Masaba Lifestyle Private Limited Vs. Masabacoutureofficial.co

Brief Facts

The plaintiff, House of Masaba Lifestyle Private Limited, is a fashion brand founded by Ms. Masaba Gupta in 2009, engaged in selling bridal lehengas, jewelry, sarees, gowns, apparel for men and women, and designer clothing. The plaintiff is the registered proprietor of the trademark “MASABA” and various other related marks in multiple classes, with registrations dating back to 2010. The plaintiff alleged that the defendants, operating under the Instagram handles “masabacoutureofficial.co” and “masabacouture.in,” were using the impugned trademark “MASABA”/“MASABA COUTURE” for identical goods and services. The plaintiff contended that such unauthorized use was misleading consumers into believing that the defendants were associated with the plaintiff’s brand, thereby constituting trademark infringement, passing off, and unfair trade practices.

Issues

The primary issue before the court was whether the defendants' use of the marks “MASABA”/“MASABA COUTURE” on their social media platforms and in their business operations amounted to trademark infringement and passing off, thereby warranting an interim injunction. Additionally, the court had to determine whether the plaintiff had established a prima facie case, where the balance of convenience lay, and whether any irreparable harm would be caused to the plaintiff in the absence of an injunction.

Submissions of Parties

The plaintiff, through counsel, contended that it had exclusive rights over the trademarks “MASABA” and “HOUSE OF MASABA” and that the defendants' unauthorized use of these marks was malafide and dishonest. The plaintiff emphasized that the defendants’ actions created confusion among consumers and diluted the distinctiveness of its trademarks. The plaintiff further submitted that multiple customers had reported being misled by the defendants and had even created Instagram pages highlighting fraudulent activities associated with the defendants. The plaintiff argued that unless immediate relief was granted, it would suffer irreparable harm. 

Reasoning and Analysis of the Judge

Justice Amit Bansal, after considering the plaintiff’s submissions and examining the evidence, held that the plaintiff had made out a prima facie case of trademark infringement. The court noted that the defendants’ use of the marks was likely to deceive consumers into believing that their products were associated with the plaintiff’s brand, thereby amounting to passing off. The court further held that the balance of convenience was in favor of the plaintiff since allowing the defendants to continue using the infringing marks would cause substantial harm to the plaintiff’s reputation and business. Additionally, the court found that the plaintiff would suffer irreparable harm if interim relief was not granted, as the unauthorized use of its trademarks could lead to consumer confusion and damage to its brand equity.

Decision of the Judge

The court granted an interim injunction restraining the defendants, their agents, and all others acting on their behalf from using the impugned trademarks “MASABA”/“MASABA COUTURE” or any other deceptively similar mark. The court also directed Instagram, as an intermediary, to take down the impugned pages upon receipt of communication from the plaintiff and to provide the complete contact details of the defendants available with them. 

Case Title: House of Masaba Lifestyle Private Limited Vs. Masabacoutureofficial.co

Date of Order: February 18, 2025

Case No.: CS(COMM) 143/2025

Name of Court: High Court of Delhi

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

Resilient Innovations Pvt. Ltd. Vs. PhonePe Private Limited

Resilient Innovations Pvt. Ltd. Vs. PhonePe Private Limited: Issue of invalidity can be framed post filing of Rectification Petition

Case Title: Resilient Innovations Pvt. Ltd. Vs. PhonePe Private Limited & Anr.

Date of Order: 18 May 2023

Case No.: Not available in provided excerpts

Neutral Citation: 2023:DHC:3426-DB

Name of Court: Delhi High Court

Name of Judge: Hon’ble Justice Rajiv Shakdher and Hon’ble Justice Talwant Singh

Introduction:

The present case involves a legal dispute between Resilient Innovations Pvt. Ltd. (RIPL) and PhonePe Private Limited (PPL) regarding trademark rectification applications under the Trademarks Act, 1999. The matter concerns RIPL's challenge to the validity of PPL’s registered trademarks and PPL’s allegations of infringement against RIPL’s use of "PostPe," which PPL contended was deceptively similar to its trademark "PhonePe." The dispute traverses issues of maintainability, prior use, and the statutory framework governing trademark rectification.

Factual Background:

PPL, the registered proprietor of the trademark "PhonePe," alleged that RIPL’s use of "PostPe" was an infringement of its intellectual property rights. Initially, PPL filed a suit in the Bombay High Court against RIPL, seeking an injunction against the use of "PostPe." While this suit was later withdrawn, PPL retained the liberty to file a fresh suit. Meanwhile, RIPL initiated rectification proceedings against PPL’s registered trademarks under Section 57 of the Trademarks Act, challenging their validity. The present case stems from the dismissal of these rectification applications by the learned Single Judge of the Delhi High Court.

Procedural Background:

The learned Single Judge dismissed RIPL’s rectification applications on the first date of hearing, holding that they were not maintainable. The court ruled that RIPL had failed to demonstrate the grounds necessary to challenge PPL’s trademark registrations. Aggrieved by this order, RIPL filed an appeal before the Division Bench of the Delhi High Court, arguing that the dismissal was premature and that the rectification proceedings were validly initiated.

Issues Involved in the Case

The case raised multiple legal issues, including whether the rectification applications filed by RIPL under Section 57 of the Trademarks Act were maintainable. The Court also examined whether the withdrawal of PPL’s previous suit and the subsequent refiling of a fresh suit impacted the rectification proceedings. Another key question was whether the Single Judge was correct in dismissing the rectification applications at the notice stage without a detailed examination. The Court also analyzed whether the appeals preferred by RIPL were maintainable under the relevant statutory framework.

Submissions of the Parties:

RIPL argued that the learned Single Judge erred in summarily dismissing its rectification applications without considering the statutory requirements under Section 57. It contended that it was an "aggrieved party" as per the Trademarks Act, given that PPL’s trademarks allegedly restricted its legitimate use of "PostPe." RIPL further asserted that the pending suit in Delhi had no bearing on the rectification proceedings, as the two matters were legally distinct.

PPL countered that RIPL’s rectification applications were not maintainable due to procedural lapses. It argued that RIPL was attempting to circumvent its liability in the pending infringement suit by challenging the validity of PPL’s trademarks. PPL also relied on judicial precedents to assert that rectification proceedings cannot be used as a defense strategy in an ongoing infringement dispute.

Judgments Cited by the Parties:

Both parties relied on significant judgments to support their arguments. RIPL cited Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, arguing that the rectification proceedings had an independent statutory basis and should not have been dismissed summarily. PPL relied on Himalaya Drug Company v. S.B.L. Ltd., MANU/DE/5479/2012, contending that the Trademarks Act was a complete code and that the rectification applications were procedurally flawed.

The Court also examined Fuerst Day Lawson Ltd. v. Jindal Exports Ltd., (2011) 8 SCC 333, which emphasized that appellate jurisdiction should be construed strictly in matters of procedural compliance. This case was relevant in determining whether RIPL had followed the correct procedural framework in filing its rectification applications.

Whether the LPA Preferred by RIPL Are Maintainable?

The Delhi High Court ruled that the appeals preferred by RIPL were maintainable. PPL had raised a preliminary objection arguing that no intra-court appeal was available against a decision on a rectification application under Section 57 of the Trademarks Act, 1999. PPL contended that the statute did not expressly provide for an appeal, and by implication, the legislature intended to exclude it.

The Court disagreed with PPL’s argument and held that there was nothing in the framework of the 1999 Trademarks Act that expressly or impliedly excluded an intra-court appeal. The Court noted that the absence of an explicit provision barring such appeals indicated that Clause 10 of the Letters Patent, which permits intra-court appeals, remained applicable.

The Court examined the National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (1953 AIR 357) case, where the Supreme Court ruled that intra-court appeals under the Letters Patent were maintainable unless explicitly excluded by a statute. It also referred to P.S. Sathappan (Dead) by LRS v. Andhra Bank Ltd. (2004) 11 SCC 672, which held that unless an appeal is expressly or necessarily barred, the right to appeal under Letters Patent prevails.

The Court distinguished this case from Himalaya Drug Company v. S.B.L. Ltd., MANU/DE/5479/2012, which held that the Trademarks Act is a complete code. It clarified that while the Trademarks Act provides a comprehensive mechanism for rights and remedies, it does not explicitly exclude the applicability of intra-court appeals.

The Court concluded that appeals are a creature of statute, and unless expressly excluded, they are maintainable. The Letters Patent is a special law that allows intra-court appeals unless expressly barred. Since there was no explicit or implied exclusion of intra-court appeals in the Trademarks Act, 1999, the appeals preferred by RIPL were held to be maintainable.

Whether the issue of invalidity can be framed even post-filing of a rectification application under Section 57 of the Trademarks Act, 1999:

The Delhi High Court analyzed whether the issue of invalidity can be framed even post-filing of a rectification application under Section 57 of the Trademarks Act, 1999, in the context of Section 124. The court addressed the relationship between rectification proceedings and infringement suits, particularly regarding the timing of framing an issue of validity.

The court observed that Section 124 does not mandate that an issue of invalidity must always be framed before a rectification application is filed. Instead, the provision only requires that when an infringement suit is pending and a party pleads invalidity, the civil court must first be satisfied that the plea is prima facie tenable before staying the suit and allowing rectification proceedings. The framing of an issue of validity, therefore, serves as a procedural safeguard but does not operate as a strict precondition to initiating rectification proceedings.

The court relied on Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, where the Supreme Court held that while Section 124 sets a procedural mechanism, it does not bar a rectification application if the issue of validity has not yet been framed in a pending infringement suit. The High Court emphasized that rectification is an independent statutory remedy and should not be rendered ineffective merely due to procedural technicalities.

Applying this principle, the court reasoned that even if an issue of invalidity has not been framed at the time of filing a rectification application, the rectification petition need not be dismissed outright. Instead, the proper course is for the court dealing with the infringement suit to determine whether an issue of invalidity should be framed and then proceed accordingly. The court concluded that a rectification application should be kept in abeyance rather than dismissed if an issue of invalidity is yet to be frame:

Final Decision:

The Division Bench set aside the learned Single Judge’s order dismissing RIPL’s rectification applications. It remanded the matter for reconsideration, directing the lower court to examine the applications on their merits rather than dismissing them at the outset. The Court emphasized the need for a balanced approach in trademark disputes, ensuring that procedural compliance does not overshadow substantive justice.

Law Settled in the Case:

Maintainability of Appeals: An intra-court appeal under Clause 10 of the Letters Patent is maintainable unless expressly or impliedly barred by statute. Since the Trademarks Act, 1999, does not explicitly exclude such appeals, an appeal against an order rejecting a rectification application is maintainable.

Independent Right to File Rectification Application: A rectification application under Section 57 of the Trademarks Act, 1999, is an independent statutory remedy and can be filed without the necessity of first framing an issue of invalidity in an infringement suit.

Framing of Issue of Invalidity Post-Filing of Rectification Petition: Even if a rectification application is filed before an issue of invalidity is framed in an infringement suit, the rectification petition should not be dismissed outright. Instead, the proper approach is to keep the rectification application in abeyance until the issue of validity is determined in the infringement suit.

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

Tata Sky Limited Vs. S.G. Enterprises

Brief Facts

Tata Sky Limited filed a suit against S.G. Enterprises and other defendants, alleging trademark infringement and passing off. The plaintiff claimed that the defendants were unlawfully using the "Tata Sky" name and branding in their business operations, particularly in domain names and sales services, creating confusion among consumers. The plaintiff sought a permanent injunction, damages, and other reliefs to restrain the defendants from misusing its registered trademarks. The case also involved issues concerning fraudulent transactions using the plaintiff’s brand name and the necessity for stronger financial security measures, including the implementation of a Beneficiary Name Lookup Facility in banking transactions.

Issues

The main issue was whether the defendants' use of the "Tata Sky" name and branding constituted trademark infringement and passing off. The court also examined whether the defendants should be restrained from continuing their unauthorized use and whether domain name registrars could be directed to block infringing domain names. Additionally, the court addressed the role of financial institutions in enabling fraudulent transactions and the need for the Beneficiary Name Lookup Facility to prevent financial frauds involving the unauthorized use of established trademarks.

Submissions of Parties

The plaintiff argued that "Tata Sky" is a well-known trademark with a strong reputation in the market. The unauthorized use of the mark by the defendants was misleading consumers and causing irreparable damage to the brand. The plaintiff submitted that such actions violated trademark laws and sought an injunction to prevent further misuse. The plaintiff also highlighted instances where consumers were defrauded through bank transactions involving entities falsely representing themselves as associated with "Tata Sky."

The Reserve Bank of India (RBI) and the National Payments Corporation of India (NPCI) submitted that they were implementing a Beneficiary Name Lookup Facility in digital transactions, particularly in Real Time Gross Settlement (RTGS) and National Electronic Funds Transfer (NEFT) systems, to curb fraud. This facility ensures that the beneficiary's name appears before payment is processed, reducing the risk of deceptive transactions.

The defendants contended that their use of the name was legitimate and did not amount to infringement. Some defendants also claimed that they were merely resellers or service providers and had no intention of misleading consumers.

Reasoning and Analysis of Judge

The court observed that "Tata Sky" is a well-established and widely recognized brand, and its unauthorized use by third parties was likely to cause confusion. The court emphasized that domain names incorporating well-known trademarks without authorization could mislead the public and lead to brand dilution.

Regarding the Beneficiary Name Lookup Facility, the court reviewed the RBI Circular dated December 30, 2024, which mandated the implementation of the facility for RTGS and NEFT transactions by April 1, 2025. The court noted that such a facility was essential to prevent fraudulent banking transactions using brand names like "Tata Sky." The court acknowledged the affidavit submitted by NPCI detailing the implementation process, including an API-based system where the remitter bank verifies the beneficiary’s registered name before executing a transaction.

The court directed financial institutions to expedite the implementation of this facility and ensure that banks prevent unauthorized transactions using misleading beneficiary names. It also emphasized that banks must screen beneficiary details carefully and prevent the registration of fraudulent UPI IDs or virtual payment addresses (VPAs) that misuse well-known trademarks.

Decision of Judge

The court ruled in favor of the plaintiff, granting a permanent injunction against the defendants, restraining them from using the "Tata Sky" trademark in any form, including in domain names, business names, and advertisements. The court also directed domain name registrars to suspend infringing domain names and take measures to prevent further unauthorized registrations.

Furthermore, the court ordered NPCI and RBI to ensure strict implementation of the Beneficiary Name Lookup Facility across all banks by the mandated deadline. Banks were instructed to issue advisories restricting the registration of fraudulent beneficiary names and to ensure that their systems flagged misleading payment requests associated with well-known trademarks.

Case Details

Case Title: Tata Sky Limited Vs. S.G. Enterprises & Ors.

Date of Order: February 15, 2025

Case No.: CS (COMM) 20/2019

Neutral Citation: 2025:DHC:973

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Ms. Justice Prathiba M. Singh

Yogi Ayurvedic Products Pvt. Ltd. Vs. Vaishali Industries

Brief Facts

Yogi Ayurvedic Products Pvt. Ltd. filed a suit against Vaishali Industries alleging trademark infringement and passing off concerning the mark "YOGI." The plaintiff claimed to have proprietary rights over the trademark "YOGI" since 1999, with registered trademarks under Classes 3 and 5. The plaintiff argued that the defendant's use of the identical mark for similar products would lead to consumer confusion and dilution of its brand. An ex-parte ad-interim injunction was granted in favor of the plaintiff, which the defendant later sought to vacate by invoking Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, on the ground that false and misleading statements were made while obtaining the injunction.

Issues

The key issues before the court were whether the defendant had established a valid claim of prior use under Section 34 of the Trade Marks Act, 1999, whether the absence of a written assignment deed affected the defendant’s claim, and whether the ex-parte ad-interim injunction granted to the plaintiff should be vacated.

Submissions of Parties

The plaintiff contended that it had continuously and commercially used the "YOGI" trademark since 1999 and had obtained registrations under Classes 3 and 5. It argued that the defendant failed to demonstrate continuous prior use of the mark and had no legal basis to claim ownership. The plaintiff also pointed out that the defendant lacked a written assignment deed transferring rights from its alleged predecessor, as required under the Trade Marks Act.

The defendant, in response, argued that it had been using the "YOGI" trademark since at least 1997 through its predecessor, M/s. D.V. Deo Aromatics Pvt. Ltd. It asserted that the trademark rights were transferred to the defendant through a family arrangement, despite the absence of a formal assignment deed. The defendant also claimed that it had been continuously using the mark and placed reliance on invoices and other documents.

Reasoning and Analysis of Judge

The court analyzed the defendant’s claim of prior use and found it lacking in legal substance. It noted that Section 34 of the Trade Marks Act requires continuous use of a mark and, where applicable, a written assignment for transferring trademark rights. The court specifically emphasized that under Section 2(1)(b) of the Trade Marks Act, 1999, any assignment of a trademark must be in writing. Since the defendant failed to produce any written document assigning the trademark from its alleged predecessor, its claim of prior use was legally untenable. The court further noted that the absence of a written assignment deed broke the chain of ownership, meaning the defendant could not claim that its use of the mark stemmed from the predecessor company.

The court also highlighted that mere isolated instances of use, such as two invoices from 1997, were insufficient to establish continuous commercial use. Additionally, it observed that the defendant’s argument that a family arrangement could serve as an implied assignment was flawed, as trademark law mandates that assignments be documented in writing.

The court found no merit in the defendant’s argument that the injunction was obtained through misleading statements. It held that the plaintiff had provided sufficient documentary evidence, including registration certificates, invoices, and sales figures, to demonstrate its longstanding use of the "YOGI" mark. The court noted that the defendant's use of an identical mark for similar products could lead to consumer confusion and dilution of the plaintiff’s brand.

Decision of Judge

The court rejected the defendant's plea to vacate the injunction and confirmed the ex-parte ad-interim relief granted to the plaintiff. It ruled that the defendant had failed to establish prior continuous use under Section 34 of the Trade Marks Act and that the absence of a written assignment deed was fatal to its claim. The application was allowed, and the injunction against the defendant’s use of the mark was made permanent.

Case Details

Case Title: Yogi Ayurvedic Products Pvt. Ltd. Vs. Vaishali Industries

Date of Order: February 17, 2025

Case No.: Interim Application No. 1598 of 2023 in Commercial IP Suit No. 45 of 2023

Neutral Citation: 2025:BHC-OS:2772

Name of Court: High Court of Judicature at Bombay

Name of Judge: Hon’ble Mr. Justice Manish Pitale

Tata Power Solar Systems Limited Vs. www.tatapowersolardealership.co.in

Brief Facts

Tata Power Solar Systems Limited, a subsidiary of Tata Power Renewable Energy Limited, filed a suit seeking a permanent injunction against multiple defendants for trademark infringement and passing off. The defendants had registered domain names and email addresses incorporating the trademarks "TATA" and "TATA POWER SOLAR" and were allegedly using them to dupe consumers into believing they were associated with Tata Power Solar. The plaintiffs contended that this unauthorized usage was causing consumer confusion and harming their brand reputation.

Issues

The primary issue was whether the defendants' use of the domain names and email addresses incorporating "TATA" and "TATA POWER SOLAR" amounted to trademark infringement and passing off. Additionally, the court examined whether the plaintiffs were entitled to injunctive relief and summary judgment against the defendants.

Submissions of Parties

The plaintiffs argued that they had longstanding rights over the trademarks "TATA" and "TATA POWER SOLAR" and had invested substantial resources in building their brand. They presented evidence of unauthorized domain names and email addresses being used to mislead consumers into believing they were associated with Tata Power Solar. The plaintiffs sought a permanent injunction to restrain the defendants from using these marks and an order directing the suspension of the infringing domain names and freezing of related bank accounts.

The defendants failed to appear despite being duly served, and no written statement or defense was presented on their behalf.

Reasoning and Analysis of Judge

The court observed that the plaintiffs had demonstrated a clear case of trademark infringement and passing off. The defendants had slavishly copied the plaintiffs' well-known trademarks and were using them in connection with identical services. The court noted that the defendants' unauthorized use of the marks not only misled consumers but also took unfair advantage of the plaintiffs' goodwill. Since the defendants did not appear or contest the allegations, all averments made by the plaintiffs were deemed admitted.

Relying on precedents, the court determined that this was a fit case for summary judgment under Order XIII-A of the Code of Civil Procedure, as the defendants had no real prospect of successfully defending the claims. The court emphasized that permitting such deceptive practices would result in irreparable harm to the plaintiffs and cause confusion in the marketplace.

Decision of Judge

The court granted a decree of permanent injunction in favor of the plaintiffs, restraining the defendants from using the marks "TATA," "TATA POWER," and "TATA POWER SOLAR" in any manner, including as part of domain names and email addresses. It directed the suspension of the infringing domain names and the freezing of bank accounts used by the defendants. Additionally, the court ordered that funds from these bank accounts be transferred to the Reserve Bank of India’s Depositor and Education Awareness Fund. The suit was accordingly decreed in favor of the plaintiffs.

Case Details

Case Title: Tata Power Solar Systems Limited Vs. www.tatapowersolardealership.co.in .

Date of Order: February 13, 2025

Case No.: CS(COMM) 419/2024

Name of Court: High Court of Delhi

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

Purosis International LLP Vs. V3 Poly Plast

Brief Facts

Purosis International LLP, the appellant, filed an appeal challenging the order dated January 23, 2024, passed by a Single Judge of the Delhi High Court. The dispute revolved around a design infringement case where the appellant alleged that the respondents, V3 Poly Plast & Ors., had infringed upon their design. The Single Judge had ruled that the new design proposed by the respondents did not fall within the scope of an earlier injunction order and permitted them to proceed with its implementation. The appellant sought to amend its plaint to include a specific challenge to the respondents' new design.

Issues

The primary issue before the court was whether the appellant should be allowed to amend the plaint to challenge the new design of the respondents. A secondary issue was whether the appellant could seek fresh interim relief against the respondents' new design, despite the earlier ruling of the Single Judge.

Submissions of Parties

The appellant submitted that they should be permitted to amend their plaint to challenge the new design introduced by the respondents, as the impugned order had allowed the respondents to proceed with it. They also sought clarification that the findings of the Single Judge would not prejudice the final outcome of the trial.

The respondents, while not opposing the amendment of the plaint, expressed concerns that the appellant might use this order to file a fresh application for interim relief, which they argued had already been decided by the Single Judge. The respondents contended that allowing a fresh interim injunction application would reopen an issue that had already been adjudicated.

Reasoning and Analysis of Judge

The court recognized the appellant’s right to amend its plaint to challenge the respondents' new design. It acknowledged that such a challenge should be decided at trial based on the evidence presented by both parties. However, the court also considered the respondents’ argument that a fresh application for interim relief should not be entertained since the issue had been settled in the impugned order.

The court balanced both parties' interests by allowing the amendment but prohibiting the appellant from filing a fresh interim injunction application against the respondents' new design. The judges emphasized that the question of whether the new design infringes upon the appellant’s design should be determined during the final trial.

Decision of Judge

The court allowed the appellant to amend its plaint to challenge the new design of the respondents. However, it barred the appellant from filing a fresh application for interim relief against the new design, holding that the issue had already been decided in the earlier order. The court also noted that the decision should not be circulated in trade circles to prevent any undue commercial implications.

Case Details

Case Title: Purosis International LLP Vs. V3 Poly Plast .

Date of Order: February 20, 2025

Case No.: FAO(OS) (COMM) 31/2025

Neutral Citation: 2025:DHC:1083-DB

Name of Court: High Court of Delhi

Name of Judges: Hon’ble Mr. Justice Navin Chawla, Hon’ble Ms. Justice Shalinder Kaur

Punjab FC Private Limited Vs. Posshusa Apparels India Private Limited

Brief Facts

Punjab FC Private Limited, the petitioner, is a registered football club that has been using the trademarks "PUNJAB FC," "PUNJAB FOOTBALL CLUB," and "PFC" since 2017. It claimed to be the prior adopter and honest user of these trademarks. The respondent, Posshusa Apparels India Private Limited, obtained a registration for the mark "PFC" under Class 18, covering leather goods and related products, on a "proposed to be used" basis. The petitioner sought rectification and removal of the respondent’s trademark on the grounds of prior use and potential consumer confusion.

Issues

The primary issue before the court was whether the respondent’s registration of the mark "PFC" in Class 18 was legally valid or if it should be rectified and removed due to deceptive similarity with the petitioner’s pre-existing trademarks in the football industry.

Submissions of Parties

The petitioner argued that it had established a strong reputation under the "PFC" mark, which was widely recognized in the sports industry. It contended that the respondent’s adoption of the "PFC" mark was dishonest and intended to ride upon the goodwill of the petitioner. Additionally, the petitioner presented evidence that the respondent had not been using the mark in commerce.

The respondent did not file a reply or make an appearance, despite being served. The Registrar of Trademarks, named as Respondent No. 2, was represented in court.

Reasoning and Analysis of Judge

The court noted that the petitioner had been actively using the "PFC" mark in connection with its football club and had a pending registration under Class 18. The respondent, on the other hand, had only applied for the trademark on a "proposed to be used" basis. The court emphasized the deceptive similarity between the marks, both phonetically and visually, and highlighted that the respondent’s mark, including its logo, was likely to mislead consumers into believing an association with the petitioner’s football club.

Relying on precedents related to trademark infringement and passing off, the court held that the respondent had dishonestly adopted the mark and that continued registration would lead to confusion and dilution of the petitioner’s brand identity. Since no evidence of actual use of the mark by the respondent was presented, the court found that the trademark registration was not justified.

Decision of Judge

The court ruled in favor of the petitioner, allowing the rectification petition and ordering the cancellation of the respondent’s trademark registration for "PFC" under Class 18. The Registrar of Trademarks was directed to update its records accordingly.

Case Details

Case Title: Punjab FC Private Limited vs. Posshusa Apparels India Private Limited 

Date of Order: February 20, 2025

Case No.: C.O. (COMM.IPD-TM) 160/2024

Neutral Citation: 2025:DHC:1206

Name of Court: High Court of Delhi

Name of Judge: Hon'ble Ms. Justice Mini Pushkarna

Infiniti Retail Limited Vs Croma Wholeseller

Brief Facts

Infiniti Retail Limited filed a suit seeking a permanent injunction to restrain trademark infringement, passing off, dilution, and tarnishment of its well-known trademark "CROMA." The plaintiff, a subsidiary of Tata Sons Pvt. Ltd., operates a nationwide retail chain under the "CROMA" brand. It alleged that several defendants were operating fraudulent websites using domain names incorporating "CROMA," misleading consumers and causing reputational harm. An ex-parte ad-interim injunction was granted on July 25, 2022, directing domain registrars, telecom service providers, and payment platforms to block and disable infringing domain names, mobile numbers, and payment accounts linked to the fraudulent websites. Over time, additional infringing websites and parties were impleaded in the suit.

Issues

Whether the defendants' use of domain names containing "CROMA" amounts to trademark infringement and passing off.

Whether the unauthorized use of the plaintiff’s mark dilutes its goodwill and reputation.

Whether a summary judgment should be granted in favor of the plaintiff due to the defendants' failure to contest the suit.

Submissions of the Parties

The plaintiff argued that it owns over 130 trademark registrations for "CROMA" and its stylized variants, which have been in use since 2005 and declared well-known by the Trade Marks Registrar. The fraudulent websites not only infringed the plaintiff’s trademarks but also misled consumers into believing they were affiliated with the plaintiff. The plaintiff presented evidence of substantial financial losses and reputational damage caused by the infringing websites, which were used for deceptive activities, including soliciting payments from unsuspecting consumers. It sought a summary judgment on the grounds that the defendants had failed to file replies despite being served.

The defendants, primarily domain registrants of the infringing websites, failed to contest the suit. However, GoDaddy.com LLC, a domain registrar, opposed the plaintiff’s request for an overarching directive requiring domain registrars to suspend any future infringing domain names upon the plaintiff’s request. It argued that such a request placed an undue burden on domain registrars and lacked judicial oversight.

Reasoning and Analysis of the Judge

The court analyzed whether a summary judgment was appropriate under Order XIII-A of the CPC, which allows courts to dispose of cases without oral evidence if there is no real prospect of the defendants succeeding. Relying on Rockwool International A/S v. Thermocare Rockwool (India) Pvt. Ltd. and Bright Enterprises Pvt. Ltd. v. MJ Bizcraft, the court held that a summary judgment was justified since the defendants failed to contest the suit, and the plaintiff had provided conclusive evidence of infringement.

The court found that the infringing websites misled consumers and diluted the plaintiff’s trademark. The comparison of domain names revealed that the defendants had merely appended generic words like "wholeseller" or "retail" to "CROMA" to create deceptive domain names. Citing Parle Products v. J.P. & Co., the court reiterated that minor modifications to a well-known trademark do not prevent a finding of deceptive similarity.

While the court upheld the plaintiff’s claim, it agreed with GoDaddy.com LLC that granting an overarching directive to domain registrars without judicial oversight would be excessive. The plaintiff withdrew its request for such relief, allowing the court to proceed with the remaining claims.

Decision of the Judge

The court granted a summary judgment in favor of the plaintiff and issued a permanent injunction against the defendants from using domain names containing "CROMA." It directed domain registrars to transfer the infringing domain names to the plaintiff and ordered telecom service providers to permanently disable associated mobile numbers. Payment platforms and banks were instructed to freeze and transfer funds from accounts linked to the fraudulent activities to the plaintiff. The suit was decreed in the plaintiff’s favor, and all pending applications were disposed of.

Case Details

Case Title: Infiniti Retail Limited v. M/s Croma Wholeseller & Ors.

Date of Order: 15.02.2025

Case No.: CS (COMM) 490/2022

Neutral Citation: 2025:DHC:1160

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Prathiba M. Singh

Castrol Limited Vs. Kapil & Anr.

Brief Facts

Castrol Limited filed a suit seeking a permanent injunction against the defendants for manufacturing, selling, and advertising engine oils, coolants, and lubricants using marks and packaging deceptively similar to those of the plaintiff. The plaintiff is the registered proprietor of marks such as "ACTIV" and "ACTIBOND" and has a distinctive trade dress associated with its products. The defendants were found to be using infringing marks like "ACTIVE" and "ACTIBOND" along with similar packaging to mislead consumers. An ex-parte ad-interim injunction was granted on July 2, 2024, restraining the defendants from using the infringing marks. Despite the lapse of the statutory period, the defendants failed to file written statements, leading the court to proceed under Order VIII Rule 10 of the CPC.

Issues

Whether the defendants' use of marks and trade dress similar to the plaintiff's constitutes trademark infringement and passing off.

Submissions of the Parties

The plaintiff argued that it has been using its registered marks and trade dress for decades and has acquired immense goodwill and reputation worldwide, including in India. The defendants were engaged in manufacturing and selling lubricants under deceptively similar marks and packaging, leading to consumer confusion. The plaintiff submitted that an investigation revealed that the infringing products were being openly advertised and sold via online platforms such as Facebook and IndiaMart, and that a local commissioner appointed by the court had found substantial quantities of counterfeit goods at the defendants' premises. The plaintiff contended that the defendants' actions constituted deliberate trademark infringement and sought a permanent injunction along with damages.

The defendants, through their counsel, denied liability but failed to file a written statement within the statutory period. They contended that no local commission was executed at the premises of Defendant No. 2 and that no infringing goods were found there. However, the plaintiff countered this claim by presenting documentary evidence, including GST registrations, IndiaMart listings, and Facebook posts, linking Defendant No. 2 to the infringing activities.

Reasoning and Analysis of the Judge

The court noted that the plaintiff had produced extensive evidence establishing its ownership of the marks and trade dress. A comparative analysis of the plaintiff’s and defendants’ products revealed striking similarities, particularly in trade dress, which included a silver-grey container with a red cap, a trapezium-shaped label, and a green and white color scheme. The court observed that the defendants had made only minor modifications, such as adding an extra letter to the plaintiff’s "ACTIV" mark to create "ACTIVE."

Applying the test of deceptive similarity from Parle Products v. J.P. & Co., the court held that an ordinary consumer with imperfect recollection could easily mistake the defendants' products for those of the plaintiff. It also referred to National Insurance v. Virat Travels, where copying a distinctive mark with minor changes was deemed to constitute trademark infringement.

The court found that the defendants had failed to file written statements, leaving the plaintiff’s claims unrebutted. Citing Sandisk LLC v. Laxmi Mobiles, it held that in such circumstances, a summary judgment was justified. The evidence from the local commissioner’s report, which detailed the seizure of infringing products and the operation of a manufacturing unit producing counterfeit goods, further supported the plaintiff’s case.

Decision of the Judge

The court decreed the suit in favor of the plaintiff, granting a permanent injunction restraining the defendants from using the infringing marks and trade dress. It awarded damages of Rs. 10,00,000 each against Defendant Nos. 1 and 2, payable within six months in two installments. The plaintiff was also granted liberty to visit Defendant No. 1’s premises to destroy the infringing goods.

Case Details

Case Title: Castrol Limited Vs. Kapil & Anr.

Date of Order: 18.02.2025

Case No.: CS(COMM) 532/2024

Neutral Citation: 2025:DHC:1207

Court: High Court of Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Allied Blenders And Distillers Limited vs Boutique Spirit Brands Private Limited

Brief Facts

Allied Blenders And Distillers Limited filed rectification petitions under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the trademark "BSB MYRON" registered by Boutique Spirit Brands Private Limited in Classes 32 and 33. The petitioner, a reputed manufacturer of alcoholic beverages, claimed prior use of the trademark "KYRON" since 2012 and argued that the respondent's mark was deceptively similar. The petitioner asserted that the respondent had dishonestly adopted the mark "MYRON" to mislead consumers. The respondent failed to appear in the proceedings despite being duly served, leading the court to hear the matter ex-parte.

Issues

Whether the trademark "BSB MYRON" was deceptively similar to the petitioner’s mark "KYRON" and likely to cause confusion among consumers. Whether the respondent’s registration should be cancelled under Section 57 of the Trade Marks Act, 1999. Whether the petitioner, as a prior user, had a superior right over the trademark compared to the respondent’s registration.

Submissions of Parties

The petitioner contended that "KYRON" had acquired substantial goodwill and reputation in the alcoholic beverages market. It argued that the respondent's mark "BSB MYRON" was phonetically, visually, and conceptually similar, and the likelihood of confusion was high since both parties operated in the same industry and targeted the same customer base. The petitioner provided evidence of prior use, including sales invoices, promotional activities, and trademark registrations dating back to 2012, while the respondent’s registration was on a "proposed to be used" basis. The respondent did not contest the proceedings or submit any defense.

Reasoning and Analysis of Judge

The court examined the phonetic and visual similarity between the two marks and referred to established precedents, including Lakme Ltd. vs. Subhash Trading & Ors., 1996 SCC OnLine Del 585, which emphasized phonetic resemblance in determining deceptive similarity. The court observed that "MYRON" was the dominant element of the respondent's mark, while "BSB" was inconspicuous in its representation, making the respondent’s mark deceptively similar to "KYRON." Citing Kia Wang vs. Registrar of Trademarks & Anr., 2023 SCC OnLine Del 5844, the court reaffirmed the principle that the rights of a prior user override those of a subsequent registrant. It held that the petitioner had successfully demonstrated continuous use since 2012, whereas the respondent had no evidence of actual use. Given the respondent’s failure to defend its registration and the deceptive similarity of the marks, the court found that the respondent’s registration was liable to be cancelled.

Decision of Judge

The court ruled in favor of the petitioner, cancelling the respondent’s registrations for "BSB MYRON" in Classes 32 and 33 and directing the Registrar of Trade Marks to rectify the records. The petitioner waived its claim for costs and clarified that it had no objection to the respondent using "BSB" alone without "MYRON." The judgment reinforced key principles of trademark law, particularly the primacy of prior use, phonetic similarity, and the consequences of failing to contest a rectification petition.

Case Title: Allied Blenders And Distillers Limited vs Boutique Spirit Brands Private Limited

Date of Order: 22 February 2025

Case No.: C.O. (COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023

Neutral Citation: 2025:DHC:1152

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Mini Pushkarna

Bharat Singh Vs. Karan Singh

Brief Facts

The case concerns a partition dispute over two properties located in Green Park Extension, New Delhi, and Sector 4, Chandigarh. The plaintiff, Bharat Singh, sought partition by metes and bounds for independent possession of his share. The dispute arose when Defendants No.1 and 4 delayed filing their written statements beyond the initial 30-day period, leading to the question of whether the time spent in mediation should be excluded from the limitation period.

Issues

The primary issue before the court was whether the period spent in mediation should be excluded from the 120-day limitation period for filing the written statement under the Delhi High Court (Original Side) Rules, 2018. Another issue was whether the court had the discretion to condone the delay and allow the written statements beyond the prescribed period.

Submissions of Parties

The defendants argued that the timeline for filing their written statement commenced on October 3, 2022, when they received legible copies of the plaint. They contended that the court's order referring the matter to mediation halted the limitation period, which resumed only after the mediation failed on January 24, 2023. They maintained that their written statements, filed in April 2023, were within the 120-day window. The plaintiff opposed this stance, asserting that the time spent in mediation should not pause the limitation clock and that written statements filed beyond the prescribed period could not be accepted under the court's rules.

Reasoning and Analysis of the Judge

The court examined the legal framework under the Delhi High Court (Original Side) Rules, 2018, which mandates that a written statement must be filed within 30 days of service, with an extension of up to 120 days under exceptional circumstances. The judge analyzed judicial precedents emphasizing the significance of mediation in dispute resolution and held that forcing parties to file pleadings during mediation would defeat its purpose. Relying on previous judgments, the court determined that the mediation period should be excluded from the limitation computation. It also considered whether the defendants had valid reasons for the delay beyond 30 days and found that their explanations were satisfactory.

Decision of the Judge

The court ruled that the time spent in mediation should be excluded while computing the limitation period for filing the written statement. Since the written statements of Defendants No.1 and 4 were filed within 120 days, they were allowed on the condition that the defendants pay costs of ₹5,000 to the Armed Forces Battle Casualties Welfare Fund. The appeals were disposed of accordingly.

Case Title: Bharat Singh v. Karan Singh and Others

Date of Order: February 3, 2025

Case No.: CS(OS) 427/2022

Neutral Citation: 2025:DHC:777

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Subramonium Prasad

RSPL Health Private Limited Vs Deep Industry

Case Title: RSPL Health Private Limited Vs Deep Industry

Date of Order: 10 November 2014

Case No.: CS (OS) No.1660/2014

Court: Delhi High Court

Judge: Hon'ble Mr. Justice Manmohan Singh

Introduction

This case involves a dispute between RSPL Health Private Limited (plaintiff) and Deep Industry (defendant) concernin trademark infringement, passing off, and copyright infringement. The plaintiff sought a permanent injunction to restrain the defendant from using Trade Dress and packaging and branding allegedly similar to its well-known "XPERT" brand.

Factual Background

RSPL Health Private Limited is engaged in manufacturing and selling washing soaps, detergent cakes, and cleaning products under the trademark "XPERT," which has been in use since 1993. The plaintiff claimed ownership of copyright over the artistic elements of the "XPERT" label, including its unique color scheme, lettering style, and overall trade dress. The plaintiff also asserted that the punch line "Pehle Istemal Karen Phir Vishwas Karen" had acquired distinctiveness.

The defendant, Deep Industry, was found selling dishwashing bars and similar cleaning products under the trademark "POSH." The plaintiff alleged that the defendant's packaging was deceptively similar to "XPERT" in terms of layout, design, and color combination. The suit was filed when the plaintiff discovered in March 2014 that the defendant was using an allegedly infringing label.

Procedural Background

The plaintiff filed a suit seeking a permanent injunction against the defendant, along with an application under Order 39 Rule 1 and 2 CPC for interim relief. On 29 May 2014, the court granted an ex-parte interim injunction restraining the defendant from using the impugned packaging. The defendant responded by filing an application under Order 39 Rule 4 CPC seeking vacation of the interim order.

Issues Involved

Whether the defendant's packaging amounted to trademark infringement and passing off. Whether the plaintiff had an exclusive right over the trade dress and artistic elements of the "XPERT" label. Whether the suit was maintainable in terms of jurisdiction. Whether there was any delay or laches in filing the suit.

Submission of Parties

The plaintiff contended that the defendant deliberately copied the "XPERT" label's essential features, creating a likelihood of confusion among consumers. It argued that the defendant's label was deceptively similar in terms of layout, color combination, and artistic arrangement, which misled customers into believing the products originated from the plaintiff.

The defendant countered that "POSH" was a registered trademark of a third party, Darshan Detergents Pvt. Ltd., and that it was merely a licensee. It argued that color pink was common in the detergent industry, citing brands like Surf Excel and Tide. The defendant also challenged the jurisdiction of the Delhi High Court, claiming that it operated only in Maharashtra. Additionally, the defendant argued that the plaintiff delayed in bringing the suit since "POSH" was registered in 2005.

Discussion on Judgments Cited

The court referred to various precedents to establish that similarity in trade dress, even without phonetic similarity, can cause consumer confusion.

Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. India Trading House, AIR 1977 Delhi 41, held that deceptive similarity in trade dress could cause confusion even when brand names were different.

Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd., (1999) 19 PTC 188 (Del), established that copyright exists in artistic work irrespective of registration.

Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359, emphasized that trade dress and overall impression matter more than minute differences.

Vicco Laboratories Bombay v. Hindustan Rimmer, AIR 1979 Delhi 114, granted an injunction based on deceptive similarity in packaging despite different brand names.

Nova Ball Bearing Industries v. Mico Ball Bearing, (1981) 19 DLT 20, held that similarity in packaging can mislead consumers despite differences in brand names.

Hoffmann-La Roche and Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, 1972 RPC 1, ruled that marketing identical capsules despite different brand names amounted to passing off.

Smith Kline and French Laboratories Limited v. Trade Mark Applications, 1974 RPC 91, stated that color schemes in branding can serve as trademarks if they indicate origin.

Tavener Rutledge Ld. v. Specters Ld., 1959 RPC 83, held that even slight similarities in packaging could cause confusion among consumers.

Reasoning and Analysis

The court noted that the defendant's packaging was strikingly similar to the plaintiff’s label except for the brand name. It held that the likelihood of confusion was high, given that both products catered to the same market segment and were sold through the same distribution channels.

On the issue of delay, the court rejected the defendant’s argument, observing that the plaintiff acted promptly upon discovering the alleged infringement. The defendant’s reliance on prior registration was dismissed as it had only recently switched to the pink color scheme, which was central to the plaintiff’s claim.

Regarding jurisdiction, the court upheld its authority to hear the case under Section 62(2) of the Copyright Act, 1957, as the plaintiff had a presence in Delhi.

Final Decision

The court confirmed the interim injunction granted earlier, restraining the defendant from using the impugned packaging. The defendant’s application for vacation of the order was dismissed. The matter was directed to proceed further for trial.

Key Legal Principles Settled

Trade dress similarity can constitute trademark infringement even if brand names differ. Copyright in artistic work exists even without registration. Delay in filing suit does not disentitle a plaintiff if the infringement is recent. Jurisdiction can be invoked under Section 62(2) of the Copyright Act if the plaintiff has a presence in the forum state. The test for deceptive similarity considers the overall impression rather than minute differences.

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

Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger

Brief Facts

Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) sought to register the word "Chiemsee" as a trademark for its goods. Boots- und Segelzubehör Walter Huber and Franz Attenberger opposed this registration, arguing that "Chiemsee" was a geographical name referring to a well-known lake in Germany and could not function as a trademark. The case was referred to the Court of Justice of the European Communities (ECJ) for a preliminary ruling on whether a geographical name could be registered as a trademark under Directive 89/104/EEC.

Issues

The primary legal issues before the ECJ were:

Whether a geographical name could be refused registration as a trademark under Article 3(1)(c) of Directive 89/104/EEC if it designates the geographical origin of goods.

Whether a trademark could acquire distinctive character through use under Article 3(3) of Directive 89/104/EEC.

Submissions of Parties

WSC argued that the name "Chiemsee" had acquired distinctiveness through use and was associated with its products rather than the geographical location. The opposing parties contended that geographical names should be kept free for use by all traders and that allowing "Chiemsee" as a trademark would limit fair competition.

Reasoning and Analysis of Judge

The ECJ held that geographical names are generally not registrable as trademarks if they indicate the origin of goods. However, the court clarified that such names could be registered if they had acquired distinctiveness through use, meaning consumers associated the name with a specific business rather than the geographical location itself. The assessment of distinctiveness should be based on consumer perception, market conditions, and potential exclusivity of the name. The court also noted that national authorities could rely on public opinion polls to determine distinctiveness.

Decision of Judge

The ECJ ruled that geographical names could be refused trademark registration under Article 3(1)(c) if they indicate the geographical origin of goods. However, under Article 3(3), such a mark could be registered if it had acquired distinctiveness through use. The case was remitted to the national court to apply this test to "Chiemsee."

Case Title: Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger

Date of Order: 4 May 1999

Case No.: Joined Cases C-108/97 and C-109/97

Neutral Citation: Not available

Name of Court: European Court of Justice

Name of Judge: Not specified