KEI Industries Limited Vs. Raman Kwatra

Honest and concurrent use is not a defense against trademark infringement 

Introduction:

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

Factual Background:

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

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

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

Procedural Background:

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

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

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

Issues Involved in the Case:

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

Submissions of Parties:

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

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

Discussion on Judgments Cited:

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

Reasoning and Analysis of Judge:

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

Final Decision:

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

Law Settled in this Case:

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

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

Date of Order: May 17, 2022

Case No.: CS(COMM) 9/2021

Court: Delhi High Court

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

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

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

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

Technical drawings could qualify for copyright protection

Introduction:

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

Factual Background:

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

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

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

Procedural Background:

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

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

Issues Involved in the Case:

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

Submissions of Parties:

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

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

Discussion on Judgments Cited:

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

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

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

Reasoning and Analysis of the Judge:

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

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

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

Final Decision:

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

Law Settled in this Case:

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

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

Date of Order: December 20, 2017

Case No.: CS(OS) 2934/2011

Court: Delhi High Court

Judge: Hon’ble Mr. Justice Vibhu Bakhru

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

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

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

Personal surnames cannot be used as a justification for misleading branding

Introduction:

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

Factual Background:

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

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

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

Procedural Background:

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

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

Issues Involved in the Case:

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

Submissions of Parties:

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

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

Discussion on Judgments Cited:

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

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

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

Reasoning and Analysis of the Judge:

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

Final Decision:

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

Law Settled in this Case:

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

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

Date of Order: June 19, 1985

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

Court: Delhi High Court

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

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

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

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

Phonetic similarity alone could be sufficient to establish deceptive similarity

Introduction:

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

Factual Background:

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

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

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

Procedural Background:

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

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

Issues Involved in the Case:

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

Submissions of Parties:

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

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

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

Discussion on Judgments Cited:

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

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

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

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

Reasoning and Analysis of the Judge:

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

Final Decision:

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

Law Settled in this Case:

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

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

Date of Order: April 14, 1969

Case No.: Civil Appeal No. 749 of 1966

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

Court: Supreme Court of India

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

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

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

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

Obscenity, Free Speech, and Trademark Law

Introduction:

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

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

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

The Legal Framework Governing Obscene Trademarks:

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

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

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

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

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

Judicial Precedents and Their Implications for Trademark Law:

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

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

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

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

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

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

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

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

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

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

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

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

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

Izuk Chemical Works Vs. Babu Ram Dharam Prakash

Even partial similarities in trademarks could lead to consumer confusion

Introduction:

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

Factual Background:

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

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

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

Procedural Background:

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

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

Issues Involved in the Case:

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

Submissions of Parties:

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

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

Discussion on Judgments Cited:

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

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

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

Reasoning and Analysis of the Judge:

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

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

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

Final Decision:

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

Law Settled in this Case:

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

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

Date of Order: May 11, 2007

Case No.: CS(OS) 390/2006

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

Court: Delhi High Court

Judge: Hon’ble Ms. Justice Gita Mittal

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

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

ITC Limited Vs Arpita Agro Products Pvt Ltd

Consumer confusion, even if indirect, is sufficient to grant an injunction in trademark cases

Introduction:

This case revolves around a legal dispute concerning trademark infringement, passing off, and unfair competition between ITC Limited and Arpita Agro Products Pvt Ltd. The plaintiff, ITC Limited, sought an injunction against the defendants, alleging that their use of the mark "POWRNYM" was deceptively similar to its registered trademarks "NIMYLE" and "JOR-POWR," which were acquired through a series of agreements. The matter was adjudicated by the Delhi High Court, which delivered a significant ruling on October 8, 2024.

Factual Background:

ITC Limited is a major Indian company engaged in various businesses, including fast-moving consumer goods (FMCG). The dispute in this case pertains to ITC’s ownership of the trademarks "NIMYLE" and "JOR-POWR," which it acquired from Arpita Agro Products Pvt Ltd and other defendants through several assignment agreements executed in 2018.

Before the transfer, Arpita Agro Products had been manufacturing and selling herbal floor cleaners under these trademarks. The agreements assigned all rights, including ownership, trade dress, regulatory information, and associated goodwill, to ITC for a consideration of ₹100 crores.

In 2023, ITC discovered that the defendants had started marketing a floor cleaner under the trademark "POWRNYM," which was alleged to be deceptively similar to ITC's trademarks. ITC claimed that the mark "POWRNYM" was derived from "JOR-POWR" and "NIMYLE," making it likely to cause confusion among consumers.

Procedural Background:

On October 5, 2023, ITC approached the Delhi High Court seeking an injunction to restrain the defendants from using the mark "POWRNYM" and any similar packaging, trade dress, or branding. The Court granted an ex-parte ad-interim injunction, preventing the defendants from manufacturing or selling products under the disputed mark.

The defendants subsequently filed an application under Order XXXIX Rule 4 of the Civil Procedure Code, 1908, seeking to vacate the injunction, arguing that their mark was distinct and had been adopted in good faith. The Court heard arguments from both sides before delivering its final ruling.

Issues Involved in the Case:

The case raised several legal issues, including whether the defendants' use of "POWRNYM" infringed upon ITC’s registered trademarks "NIMYLE" and "JOR-POWR."?It also examined whether the defendants' use of similar branding and trade dress misled consumers into associating their products with ITC?

Submissions of Parties:

The plaintiff, ITC Limited, argued that the defendants had knowingly adopted a mark that was a derivative of "NIMYLE" and "JOR-POWR," violating the assignment agreements. ITC asserted that the defendants were previously the owners of the marks and were fully aware of their reputation and goodwill. ITC also pointed out that the defendants’ use of similar trade dress, bottle shape, and labeling further enhanced the likelihood of confusion among consumers. It argued that the defendants had applied for the registration of "POWRNYM" only after the non-compete period expired, which indicated bad faith. ITC relied on legal precedents, including Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, Midas Hygiene v. Sudhir Bhatia (2004) 3 SCC 90, Laxmikant Patel v. Chetanbhai Shah (2002) 3 SCC 65, South India Beverages v. General Mills Marketing 2015 (61) PTC 231 (Del)(DB).

The defendants contended that "POWRNYM" was not deceptively similar to "NIMYLE" or "JOR-POWR." They argued that the term "NYM" was used to indicate "NEEM" as a natural ingredient rather than as a reference to "NIMYLE." The defendants claimed that their mark was coined independently and highlighted in advertisements as a "Synonym of Power." They also argued that the non-compete clause had expired in 2022, allowing them to engage in similar business activities. They cited Rhizome Distilleries Pvt Ltd v. Pernod Ricard S.A. France 2009 SCC OnLine Del 3346 to support their case.

Discussion on Judgments Cited:

Several landmark judgments were cited in the case. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Laboratories (AIR 1965 SC 980) established that in cases of trademark infringement, phonetic and structural similarities play a significant role. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. was relied upon to assert that even minor variations in a mark do not necessarily prevent consumer confusion. Midas Hygiene v. Sudhir Bhatia emphasized that in cases of clear prima facie infringement, an injunction must be granted without delay. Other cases, such as Amar Singh Chawal v. Shri Vardhman Rice & General Mills and South India Beverages v. General Mills Marketing, reinforced the importance of dominant features in trademark comparison. Greaves Cotton Limited v. Mr. Mohammad Rafi & Ors. illustrated that minor alterations in a mark do not remove the likelihood of confusion.

Reasoning and Analysis of the Judge:

Delhi High Court analyzed the agreements, trademark registrations, and the defendants’ past association with "NIMYLE" and "JOR-POWR." The Court found strong similarity in trademarks, as "POWRNYM" incorporated elements of both "NIMYLE" and "JOR-POWR," making it deceptively similar. The defendants had prior knowledge of the trademarks and their goodwill, demonstrating bad faith in adopting the impugned mark. The similarity in trade dress, bottle shape, and branding could mislead consumers into believing "POWRNYM" was related to ITC’s products. The agreements explicitly prohibited the defendants from registering or using any mark similar to "NIMYLE" or "JOR-POWR," and their actions constituted a breach of these contracts.

Final Decision:

The Delhi High Court ruled in favor of ITC Limited and granted a permanent injunction restraining the defendants from using the mark "POWRNYM" or any other similar mark. The Court also dismissed the defendants’ application to vacate the interim injunction.

Law Settled in this Case:

The Court reaffirmed that the assignment of trademarks includes an obligation not to use or register similar marks. Even expired non-compete clauses do not override specific trademark assignment agreements. Deceptive similarity is assessed holistically, considering phonetic, structural, and visual similarities. Consumer confusion, even if indirect, is sufficient to grant an injunction in trademark cases.

Case Title: ITC Limited Vs Arpita Agro Products Pvt Ltd 

Date of Order: October 8, 2024

Case No.: CS(COMM) 698/2023

Neutral Citation: 2024: DHC: 2478

Court: Delhi High Court

Judge: Hon'ble Mr. Justice Saurabh Banerjee

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

Star India Private Limited Vs. Stream2Watch.pk

Factual Background:

The plaintiffs, Star India Private Limited and Novi Digital Entertainment Pvt. Ltd., are leading media and entertainment companies. Star India operates over 70 channels under the brand "STAR," broadcasting a wide range of content including sports events such as the ICC Men’s T20 World Cup 2024. Novi Digital operates the popular streaming platform "Disney+ Hotstar," which also streams these events online. The plaintiffs hold exclusive media rights, including television broadcasting and digital streaming rights, for the ICC events in India for the period 2024-2027, as per the Media Rights Agreement with the International Cricket Council (ICC). The dispute arose when multiple rogue websites operated by the defendants were found to be illegally broadcasting and disseminating the plaintiffs' exclusive content related to the ICC Men’s T20 World Cup 2024. The plaintiffs had previously faced similar infringements during events like the Tata IPL 2024.

Procedural Background:

The plaintiffs filed CS(COMM) 455/2024 before the Delhi High Court seeking a permanent injunction against defendants, including rogue websites, domain name registrars, internet service providers (ISPs), and government authorities. On 28th May 2024, the Court passed an ex-parte ad interim injunction restraining defendants from infringing the plaintiffs' rights by illegally streaming or broadcasting their content. The Court also directed domain registrars to lock and suspend domain names and ISPs to block access to the rogue websites. Subsequently, the plaintiffs identified and impleaded additional rogue websites as defendants. Despite being served, no written statements or affidavits of admission/denial were filed by the defendants, and the time for filing the same expired.

Provisions of Law Referred and Their Context:

Section 37 of the Copyright Act, 1957 was invoked by the plaintiffs, which grants broadcasting organizations exclusive broadcast reproduction rights. The plaintiffs argued that the unauthorized online streaming of the ICC T20 World Cup 2024 by rogue websites infringed their statutory rights under this section. Order VIII Rule 10 of the Code of Civil Procedure, 1908 (CPC) was relied upon by the Court to decree the suit as uncontested, given the absence of a written statement from the defendants. The plaintiffs also invoked Order I Rule 10 of the CPC to implead additional rogue websites discovered during the proceedings.

Reasoning of Court"

The Court noted that the defendants had not filed any written statements, and in accordance with Order VIII Rule 10 CPC and Rule 3 of the Delhi High Court (Original Side) Rules 2018, the unchallenged averments and documents filed by the plaintiffs stood admitted. The Court held that the rogue websites were knowingly engaged in exploiting the plaintiffs' exclusive rights by making unauthorized broadcasts of the ICC T20 World Cup 2024 content. This illegal dissemination infringed both copyright and broadcast reproduction rights, causing irreparable harm to the plaintiffs by reducing their revenues and diluting the commercial value of their rights. The Court found no defence on record from the defendants and concluded that there was no merit in continuing the suit to trial.

Decision:

The Delhi High Court passed a decree of permanent injunction in favour of the plaintiffs, restraining defendants no.1 to 11 and defendants no.33 to 175 (rogue websites) from further infringing the plaintiffs' rights. The Court accepted that the other reliefs stood satisfied, and the plaintiffs did not press for damages. 

Case Title: Star India Private Limited Vs. Stream2Watch.pk 

Date of Order: 3rd March, 2025

Case Number: CS(COMM) 455/2024

Name of Court: High Court of Delhi at New Delhi

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

DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited

Trademark Infringement and anti dissection Rule

Introduction:

This case revolves around a trademark dispute between DS Drinks and Beverages Private Limited and Hector Beverages Private Limited concerning the use of the mark "SWING" for beverages. Hector Beverages, the plaintiff, claimed infringement of its registered trademark "SWING" by DS Drinks, which intended to use the mark "CATCH SWING ENERGY INVIGORATES & MIND" for its energy drinks. The dispute led to an interim injunction passed by the learned Trial Court, which was later challenged by DS Drinks in the Delhi High Court.

Detailed Factual Background:

Hector Beverages Private Limited has been engaged in the food and beverage industry since 2009 and markets various products under brands such as TZINGA Energy Drink, PAPERBOAT, SWING, and SWING FIZZ. Initially launched as a sub-brand under the main brand PAPERBOAT, "SWING" eventually gained independent recognition and goodwill in the market since 2017. Hector Beverages registered the trademark under No. 3691925 for "PAPER BOAT SWING JUICIER DRINK" under Class 32, registered on December 1, 2017, and under No. 5280472 under Class 32, registered on January 11, 2022.

DS Drinks and Beverages Private Limited filed an application for registration of the mark "CATCH SWING ENERGY INVIGORATES & MIND" under Class 32 on a 'proposed to be used' basis. Hector Beverages filed a suit asserting that the defendant's mark was deceptively similar to its own, leading to the present proceedings.

Detailed Procedural Background:

Hector Beverages filed CS (Comm.) No. 350/2024 before the learned District Judge (Commercial Courts-06), Central District, Tis Hazari Courts, Delhi, seeking an injunction against DS Drinks from using the mark "SWING." The learned Trial Court, after hearing both parties, granted an interim injunction under Order XXXIX Rules 1 and 2 CPC restraining DS Drinks from using "SWING" for its energy drinks. DS Drinks appealed against this order by filing FAO (COMM) 61/2025 before the Delhi High Court.

Issues Involved in the Case:

Whether the mark "SWING" forms a dominant and distinctive part of Hector Beverages' trademark and whether DS Drinks' mark "CATCH SWING ENERGY INVIGORATES & MIND" is deceptively similar to it. Whether the learned Trial Court erred in granting the injunction by dissecting Hector Beverages’ composite mark "PAPERBOAT SWING." Whether the goods offered by the parties (juices and energy drinks) are allied products, giving rise to confusion among consumers.

Detailed Submission of Parties:

The appellant, DS Drinks, argued that its mark "CATCH SWING ENERGY INVIGORATES & MIND" is distinct from Hector Beverages’ mark "PAPERBOAT SWING." The products are different as Hector Beverages uses "SWING" for juices and "TZINGA" for energy drinks, while DS Drinks' product is an energy drink. The learned Trial Court erred in separating "SWING" from the composite mark "PAPERBOAT SWING" to grant exclusivity. The doctrine of anti-dissection applies, requiring the mark to be evaluated as a whole. They relied on Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370, and Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635.

The respondent, Hector Beverages, contended that "SWING" is the dominant part of both marks. The appellant’s mark has been applied for on a "proposed to be used" basis, and thus the respondent is the prior user and registered proprietor. Confusion is likely due to the visual and phonetic similarities. The appellate court should not substitute its discretion for that of the learned Trial Court unless grave errors are demonstrated. They cited Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490.

Detailed Discussion on Judgments Cited by Parties and Their Context: Wander Ltd. and Ors. v. Antox India P. Ltd., 1990 SCC OnLine SC 490 was referred to by the respondent to emphasize that appellate courts should interfere with discretionary orders of lower courts only when they are arbitrary or contrary to settled principles.  Vasundhra Jewellers Pvt. Ltd. v. Kirat VinodBhai Jadvani & Anr., 2022 SCC OnLine Del 3370 was relied upon by DS Drinks to support the anti-dissection rule, arguing that composite marks like "PAPERBOAT SWING" must be evaluated as a whole.  Phonepe Private Limited v. EZY Services and Another, 2021 SCC OnLine Del 2635 was cited by DS Drinks to assert that trademark infringement claims must relate to the entire mark unless a specific dominant portion has been exclusively copied.  M/s South India Beverages Pvt. Ltd. vs. General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953 was relied upon by the Court to explain that while marks should be evaluated as a whole, the dominant portion may still be protected if confusion arises due to its similarity.  M/s P.K. Overseas Pvt. Ltd. & Anr. v. M/s Bhagwati Lecto Vegetarians Exports Pvt. Ltd. & Anr., 2016 SCC OnLine Del 5420 was cited by the Court to reinforce the principle that even where products or marks appear composite, infringement can be based on the dominant feature.

Detailed Reasoning and Analysis of Judge:The Court emphasized its limited appellate jurisdiction, relying on Wander Ltd. It noted that no grave error in law or perversity existed in the Trial Court’s order. The Court held that the predominant part of both marks is the word "SWING", clearly visible on the product packaging. While acknowledging the anti-dissection rule, the Court clarified that the dominant feature test is an established exception when determining deceptive similarity.The Court opined that "PAPERBOAT" functions as a family mark, while "SWING" identifies the specific product variant. The presence of "CATCH SWING" in the appellant's mark creates a likelihood of confusion under the test of imperfect recollection.On the issue of whether juices and energy drinks are distinct, the Court found them to be allied products since both fall under the same trade channels and consumer groups. The Court rejected the argument that the respondent’s use of "TZINGA" for energy drinks precluded it from seeking protection for "SWING" in the same category.

Final Decision: The appeal was dismissed, and the injunction granted by the learned Trial Court was upheld, restraining DS Drinks from using the mark "SWING" for its energy drinks. However, it was clarified that the observations were prima facie and would not affect the final adjudication of the pending suit.

Law Settled in This Case:

The case reinforces that the dominant feature doctrine can apply alongside the anti-dissection rule when assessing trademark infringement involving composite marks. It also affirms that allied goods across similar trade channels can result in consumer confusion, justifying injunctive relief even when the competing products (juice vs. energy drink) differ slightly.

Case Title: DS Drinks and Beverages Private Limited Vs. Hector Beverages Private Limited

Date of Order: 03.03.2025

Case No.: FAO (COMM) 61/2025

Neutral Citation: DHC:2025:1391-DB

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice Navin Chawla and Hon’ble Ms. Justice Shalinder Kaur

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

Creative Land Advertising Vs. Winzo Games

FACTUAL BACKGROUND:

The case involves a dispute between CreativeLand Advertising Pvt. Ltd. and Winzo Games Pvt. Ltd. over intellectual property rights and confidentiality obligations related to a brand campaign. CreativeLand, a creative agency, claims that it developed a tagline, "Jeeto Har DinZo," exclusively for Winzo Games under a Non-Disclosure Agreement (NDA). The agency argues that Winzo unlawfully used the tagline without proper authorization and sought legal intervention to prevent its use. Winzo maintains that the tagline was a derivative of its internal branding strategy and was never exclusively created by CreativeLand.

PROCEDURAL BACKGROUND:

CreativeLand filed a petition under Section 9 of the Arbitration and Conciliation Act, 1996, seeking an injunction to restrain Winzo from using the tagline. The Delhi High Court directed the matter to arbitration, where the Sole Arbitrator ruled against granting an injunction. The Arbitrator held that no formal agreement for the tagline's use existed and that damages could adequately compensate CreativeLand if its claim was proven. CreativeLand challenged this ruling under Section 37 of the Arbitration Act before the High Court.

PROVISIONS OF LAW REFERRED AND THEIR CONTEXT:

The case primarily revolves around the Arbitration and Conciliation Act, 1996, specifically:

Section 9: Provides for interim relief before arbitration proceedings.

Section 17: Empowers the arbitral tribunal to grant interim measures.

Section 37: Governs appeals against orders under Sections 9 and 17.

The NDA between the parties also played a crucial role, particularly clauses defining confidentiality and restrictions on unauthorized use of shared information.

JUDGMENTS REFERRED WITH CITATION AND CONTEXT:

Indian Oil Corporation v. Amritsar Gas Services (1991 SCC OnLine SC 513): Establishing that in determinable contracts, damages are the appropriate remedy rather than injunctions.

World Window Infrastructure Pvt. Ltd. v. Central Warehousing Corporation (2021 SCC OnLine Del 5099): Highlighting the limited scope of interference in arbitral orders under Section 37.

These judgments reinforced that injunctive relief should be granted only in exceptional cases where monetary compensation would be inadequate.

REASONING OF THE COURT:

The High Court upheld the Arbitrator’s ruling, stating that CreativeLand failed to prove exclusive ownership of the tagline. The court noted that Winzo had contributed to the creative process and that the tagline contained "WinZo," its registered trademark. It further held that the NDA did not explicitly classify the tagline as confidential information. Given the lack of a formal engagement and agreed pricing, the court ruled that damages, rather than an injunction, were the appropriate remedy. The court emphasized that Section 37 limits interference in arbitral decisions unless they are perverse or against public policy.

DECISION:

The High Court dismissed CreativeLand’s appeal, affirming that the Arbitrator’s decision was reasonable. However, as a protective measure, Winzo was directed to furnish a bank guarantee of ₹50 lakhs until the arbitration was resolved. CreativeLand was also given the option to challenge Winzo’s trademark registration of the tagline before the appropriate authority.

CASE DETAILS:

Case Title: Creative Land Advertising Pvt. Ltd. Vs. Winzo Games Pvt. Ltd.

Date of Order: March 18, 2025

Case Number: ARB. A. (COMM.) 15/2025 & 17/2025

Neutral Citation: 2025:DHC:1811

Court Name: High Court of Delhi

Hon'ble Judge: Justice Subramonium Prasad

DHL International GmbH Vs. DLH Express Services Private Ltd.

Factual Background:  

DHL International GmbH, a German logistics giant, sued DLH Express Services Private Ltd. for trademark infringement, passing off, and dilution. DHL, established in 1969, uses the "DHL" mark and a distinctive red-and-yellow logo globally, including India, where it has significant presence and registrations. The defendant adopted "DLH" for courier services, mimicking DHL’s mark and logo, prompting DHL to seek injunctions and a declaration of "DHL" as a well-known mark.

Procedural Background: 

The suit (CS(COMM) 563/2020) was filed with an application (I.A. 16452/2021) for summary judgment. On December 22, 2020, an ex-parte interim injunction restrained the defendant from using "DLH" or similar marks, which continued until the final hearing. The defendant later changed its name to Dogra’s Cargo Express Private Ltd. and ceased using "DLH." The court decided the matter on April 22, 2022.

Provisions of Law Referred and Their Context:  

Section 2(zg) of the Trade Marks Act, 1999 defines a "well-known trade mark" as one recognized by a substantial public segment, indicating a trade connection. 

Section 11(2) protects such marks against unfair use, even for dissimilar goods. Section 11(6) lists factors like public recognition and enforcement for determining well-known status. 

Rule 124 of the Trade Marks Rules, 2017 allows well-known mark applications. 

Order XIIIA of the Commercial Courts Act, 2015, read with Rule 27 of the Delhi High Court IPD Rules, 2022, permits summary judgment without a separate application if the defendant lacks a viable defense.

Judgments Referred with Complete Citation and Context:  

NR Dongre v. Whirlpool Corporation & Anr., AIR 1995 Delhi 300 – A Delhi High Court ruling, affirmed by the Supreme Court, recognized "Whirlpool" as well-known due to extensive use and reputation, even without widespread goods presence. 

Tata Sons Ltd. v. Manoj Dodia, 2011 (46) PTC 244 (Del) – A Delhi High Court decision elaborating that well-known marks enjoy trans-border reputation and protection against dilution. 

Dharampal Satyapal Sons Pvt. Ltd. v. Akshay Singhal & Ors., CS(COMM) 129/2019, decided on October 17, 2019 – Reaffirmed principles of well-known mark recognition. 

WIPO decisions like DHL Operations B.V. v. Karel Salovsky (Case No. D2006-0520) and DHL International GmbH v. Richard Yaming (Case No. D2012-1081) acknowledged "DHL"’s global notoriety.

Reasoning of Court: 

The court found "DHL" distinctive and globally renowned, supported by extensive evidence of use, registrations, and enforcement. The defendant’s "DLH" mark and logo were nearly identical, violating DHL’s rights, despite the defendant’s name change and cessation of use. 

Summary judgment was warranted under Order XIIIA as the defendant had no real defense. 

For well-known status, the court applied Section 11(6) factors, noting DHL’s widespread recognition, enforcement success, and third-party acclaim, concluding it merited protection across logistics and related fields.

Decision: 

The court granted a permanent injunction against the defendant using "DLH" or similar marks, ordered withdrawal of the defendant’s trademark application (no. 3147906), and declared "DHL" a well-known mark, directing the Trademark Registry to notify it. The suit was decreed, and all applications disposed of.

  

Case Title: DHL International GmbH Vs. DLH Express Services Private Ltd.  

Date of Order: April 22, 2022  

Case Number: CS(COMM) 563/2020   

Name of Court: High Court of Delhi at New Delhi  

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

Kubota Corporation Vs. Kaira Agros & Ors.

Fact of the Case : 

Kubota Corporation, the plaintiff, filed a suit against Kaira Agros and others, alleging infringement of its registered designs (nos. 265708 and 265709). Defendant no. 1 challenged the validity of these designs in its written statement and filed two cancellation petitions (D-9/129/2024-KOL and D-9/130/2024-KOL) before the Controller of Patents and Designs, Kolkata. The defendant sought transfer of these petitions to the Delhi High Court under Section 22(4) of the Designs Act, 2000.

 Procedural Background in Brief:  

The suit (CS(COMM) 273/2024) was filed with multiple applications, including I.A. 47753/2024 by defendant no. 1 for transfer of the cancellation petitions and I.A. 48242/2024 by the plaintiff to file additional documents. Notice for the transfer application was issued on December 10, 2024, and both applications were adjudicated on December 13, 2024.

 Judgments Referred in Case with Complete Citation and Context:

  

S.D. Containers Indore v. M/s Mold Tek Packaging Ltd., Civil Appeal No. 3695/2020 – The Supreme Court clarified that under Section 22(4) of the Designs Act, 2000, if a defendant in an infringement suit seeks design cancellation, the matter must be transferred to the High Court, distinguishing it from standalone cancellation before the Controller.  

Novateur Electrical & Digital Systems Pvt. Ltd. v. V-Guard Industries Ltd., 2023/DHC/000960 – A Delhi High Court ruling following S.D. Containers, affirming that Section 22(4) mandates transfer of cancellation proceedings to the High Court when raised as a defense in a suit.

Reasoning of Court:  

The court relied on Section 22(4) of the Designs Act, 2000, and precedents to determine that since defendant no. 1 raised the invalidity of the plaintiff’s designs in its defense and filed cancellation petitions, these petitions must be transferred to the High Court hearing the infringement suit. The undisputed defense of invalidity triggered the statutory requirement for transfer, as clarified in S.D. Containers and Novateur Electrical.

 Decision:  

The court allowed I.A. 47753/2024, directing the Controller of Patents and Designs, Kolkata, to transfer cancellation petitions D-9/129/2024-KOL and D-9/130/2024-KOL to the Delhi High Court within six weeks.

 

Case Title: Kubota Corporation Vs. Kaira Agros  

Date of Order: December 13, 2024  

Case Number: CS(COMM) 273/2024 

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal