Trademarks & Service marks
AMERICAN HOME PRODUCTS INC. & WYETH LABS LTD v LUPIN LABS
TRADEMARK: ROLAC v TOROLAC for medicinal and pharmaceutical preparations - (Infringement - Confusing similarity) - Plaintiffs allege infringement and seek interlocutory injunction - Defendants deny confusion as (a) TOROLAC was distinct phonetically and in trade dress, and (b) it was sold under prescription - Held: Resemblance between marks was structural, visual and phonetic - Confusion was possible - Injunction granted in favour of plaintiffs
Bombay High Court - India - December 5, 1995
APPLE COMPUTER INC., USA v APPLE LEASING & INDUSTRIES, DELHI
CORPORATE NAME/TRADING STYLE: APPLE trademark and logo for computer products v APPLE/APPLE COMPUTER for computer related services (Infringement of trading style- Passing off) - The applicant had been exporting and marketing their computer products in India since 1977 - The applicant had also applied for registration of its APPLE word mark, APPLE logo (also in colour) and APPLE CENTRE - The APPLE mark and logo had been extensively advertised in relation to the applicant's products and services - The respondent had adopted the corporate name "Apple Leasing and Computers Limited" and had advertised a proposed public issue - Applicant's cease and desist notice led to the respondent changing its corporate name to "Apple Leasing and Industries Limited" - The respondent advertised services under "Apple Computer Education" - To the applicant's cease and desist notice, the respondent claimed exclusive right to use the word APPLE as a trademark and as part of its trading style in India - The applicant filed a suit for infringement of trading style and passing off by the respondent's misuse of the words "Apple Computer" - Held: Interim injunction granted - the respondent/defendant to be restrained from using the words "Apple", "Apple Computer" and from using the device of a half bitten apple logo of the plaintiff/applicant - The balance of convenience was in the plaintiff's favour - the plaintiff was entitled to costs.
Delhi High Court - India - May 10, 1991
BAYER A.G.AND ANR v AJAY JAIN
TRADEARKS - BAYER and VULKANOX/VULKANOX HS for chemical products: (Infringement - Deceptive similarity - defendants proceeded ex-parte) - Plaintiffs allege infringement of their trademark BAYER and VULKANOX/VULKANOX HS by the defendants - Defendants denied infringement but later absented themselves - HELD: Permanent injunction granted in favour of the plaintiffs with costs.
Delhi High Court - April 28, 1997
BENGAL WATERPROOF LIMITED v BOMBAY WATERPROOF MANUFACTURING COMPANY & ANR..
TRADEMARK - DUCK BACK v DACK BACK in Class 25 : (Continuous infringement of Trademark and Copyright and Passing off -
sh cause of action - Order 2 Rule 2(3) CPC - Fresh period of limitation - Tort of passing off ) - Plaintiff's first suit for infringement of registered trademark DUCK BACK in Class 25 - Defendants denied infringement and invoked O2 r2 (3)CPC - Trial Court dismissed the plaintiff's second suit (for infringement of trademark rights and copyright and passing off of their registered trademark DUCK BACK) as barred under O2 r2 (3)CPC - On appeal, the Single Judge confirmed the Trial Court's order but found for the plaintiff in the passing off action -The plaintiff was granted leave to appeal to the Supreme Court - The Supreme Court HELD: The plaintiff had fresh cause of action in the second suit due to the defendants' continuing acts of infringement and passing off - The defendant was completely barred from invoking O2r2(3)CPC for not producing plaint of original suit as evidence - The plaintiff's appeal was allowed with costs - The order of the High Court confirming the decision of the Trial Court was set aside.
Supreme Court - 1996
BOROSIL GLASS WORKS v O.P.BATRA & ANOTHER
TRADEMARK BOROSIL for kitchenware, ovenware, scientific glassware v BOROSIL for food processors and washing machines : (Passing off - Injunction - Vacation of order - Change in circumstance - Order 39 Rule 4 CPC - Cause of action - Order 7 Rule 11 CPC - res judicata - Balance of convenience) - Borosil Glass Works was granted injunctive relief in a suit for passing off of its registered trademark BOROSIL by defendant O.P. Batra - The defendant applied for a vacation of the injunction under Order 39 Rule 4 CPC - HELD deciding against the defendant: It would be highly inappropriate to vacate the confirmed stay on account of a subsequent judgment which is not directly related to passing off and in the absence of a clear case of want of cause of action
High Court of Delhi (January 13, 1998)
CALVIN KLEIN INC., USA v INTERNATIONAL APPAREL SYNDICATE
TRADEMARK: CALVIN KLEIN and CK trademarks for clothing - (Passing off - use - transborder reputa tion) - Passing off action - No sale of the goods in India - HELD: Sale of goods not necessary - Transborder reputation established - Injunction granted
Calcutta High Court - India - March 16, 1993
CARTERWALLACE INC.,USA v MODILABRRATORIES PVT LTD & ORS
TRADEMARKS - NEAIR and NAIR for cosmetics : (Infringement - Passing off) - Plaintiff alleged that infringement of trademarks NAIR and NEAIR and passing off of colour scheme and get-up of the product by defendants - HELD: Infringement confirmed and defendants barred from infringing use of the trademarks and passing off of the plaintiff's goods
Delhi High Court - December 5, 19961
CASTROL LIMITED & ANR v A.K.MEHTA & ANR
TRADEMARKS - CASTROL v BESTROL for automotive and industrial lubricants : (Infringement of trademark, trade dress and design copyright - Passing off - Concurrent use - Laches and acquiescence - Compromise settlement - Deceptive similarity - Registered user) - Appellants alleged infringement of CASTROL trademark, trade dress and design, copyright in container get up, by respondents, BESTROL product - Respondents claimed honest concurrent user, laches and acquiescence on appellant's part - Single Judge orders in favour of respondent - Appellant's appeal against impugned order - HELD granting appellants' application for ad interim injunction restraining the respondent and settling aside impugned order - marks were deceptively similar - No laches or acquiescence were found - Compromise settlement does not preclude grant of injunction
Delhi High Court - March 21, 1997
CASTROL LTD & ANOTHER v PREMGUPTA & ANOTHER
TRADEMARK : CASTROL for automotive and industrial lubricants - (Infringement - Passing off - Copyright infringement - Evidence - Reply - Ex parte order - Damages) Plaintiff, Castrol Ltd sought an injunction restraining defendant Prem Gupta from infringing the CASTROL trademark and copyright and from passing off their goods as that of the plaintiff - The defendants did not file a written statement or reply to the summons of the suit which then was ordered to proceed ex parte - Granting injunctive relief and damages to the plaintiff, the Court HELD: On the basis of evidence adduced by the plaintiff and in the absence of any rebutting evidence from the defendant, an injunction was issued restraining the defendant from infringement and passing off - Damages were ordered in the plaintiff's favour
Delhi High Court (11 May 1999)
CASTROL LTD AND CASTROL INDIA LTD v SUBHAS KAPOOR AND ORS.
TRADEMARK/TRADE DRESS: INDROL v INDOL and INDEROIL for automotive lubricants - (Infringement - passing off) - Trademark and trade dress infringement of INDROL, for automotive lubricants and passing off action - Court restrains defendants from (i) using the words INDOL and INDEROIL in connection with their goods, (ii) using a trade dress similar to the plaintiffs' and (iii) passing off of their goods as that of the plaintiffs' - Interim injunction confirmed - Appeal by defendants dismissed
Delhi High Court - India - January 3, 1995.
CATERPILLAR INC.,USA v JORANGE AND K K PANDURANGA
Trademark CATERPILLAR and CAT for readymade garments: (Passing off - Deceptive similarity - Opposition - Balance of convenience) - Plaintiff alleged passing off of their internationally acclaimed trademarks CATERPILLAR and CAT - Defendants denied passing off, claiming non-use of the marks in India - Single Judge ordered in favour of the defendants - Plaintiff appealed before the High Court - HELD: Passing off found - Likelihood of confusion existed - Ad interim injunction confirmed
Madras High Court (October 1, 1997)
CIBA GEIGY LTD & ANR v CROSSLANDS RESEARCH LABS LTD
TRADEMARK: EMULGEL v EMUGEL/EUGEL in respect of pharmaceuticals - (Infringement - passing off - Likelihood of confusion - laches - prima facie case - balance of convenience) - Suit for trademark infringement and passing off by plaintiffs - Interim injunction granted - Order contested by defendants - Defendant's mark MOBINAK EUGEL was distinct from plaintiff's mark VOVERON EMULGEL - 'Gel' common generic suffix - As both products were sold by prescription, there was no likelihood of deception or confusion - Laches and acquiescence by plaintiffs - No prima facie case established - Balance of convenience was against the plaintiffs - Single Judge vacates interim injunction - Appeal by plaintiffs - Division Bench sets aside order of single judge - Held: There was infringement of plaintiffs' registered trademark EMULGEL - Appeal allowed and temporary injunction granted
Madras High Court - India - August 25, 1995
CIBA GEIGY LTD v CROSSLANDS RESEARCH LABS LTD
TRADEMARK: VOLTAREN v VOLTA-K for pharmaceutical preparations - (Infringement - passing off - Application for rectification - confusing similarity - transborder reputation) - Plaintiffs allege infringement and passing off of their mark VOLTAREN - Defendants argue VOLTAREN should be expunged - issue of confusing similarity between marks - HELD: Restraining defendants from the use of VOLTA-K, that confusion existed - VOLTAREN had transborder reputation
Delhi High Court - India - December, 1995
CLUETTPEABODY & CO.INC.v ARROW APPARELS
Trademark ARROW and device for readymade garments: (Infringement - Passing off - Prior use - Rectification - Trans-border reputation - Special circumstances - Prima facie case - Acquiescence - Balance of convenience) - The plaintiff, Cluett Peabody, obtained registration of the mark ARROW and device in India for readymade garments in 1960, but did not use the mark on goods till 1990, alleging import restrictions - The defendant, Arrow Apparels issued cease and desist notice to the plaintiff and filed rectification action claiming prior and continuous use of the ARROW mark from 1985 - Plaintiff sued the defendant for trademark and tradename infringement and passing off - HELD refusing injunctive relief to the plaintiffs: The object of the Trademark Act is not to promote monopoly of a trademark that has been registered but not used for 30 years - The defendant has a strong prima facie case
Bombay High Court (October 24, 1997)
CYCLE CORPORATION OF INDIA LTD v T.I. RALEIGH INDUSTRIES PVT. LTD. & ORS.
TRADEMARK: RALEIGH for bicycles - (Registered user - Rectification - Bona fide user) - Respondent, registered proprietor of RALEIGH trademark for bicycles - On expiry of registered user agreement, Appellant filed for rectification of trademark alleging lack of bona fide use by the respondent - Applications for registration by appellant of RALEIGH and two other trademarks abandoned by Registrar - Till the date of application, appellant had used the RALEIGH trademark to pass off its bicycles - Held by Single Judge and confirmed by Division Bench of High Court: Rectification application dismissed - Appellant must be presumed by course of conduct to be bona fide user under Sec 46(1)(b) of the Act which extends "proprietor" to bona fide user other than registered users - There was no trafficking in the trademark as the appellant had succeeded to the collaboration agreement between the Respondent and Sen Raleigh by statutory operation - Appeal to Supreme Court by appellant - Supreme Court confirms decision of High Court - Appeal dismissed
Supreme Court - India - May 10, 1996
DAIMLER BENZ AKTIENGESELLESCHAFT & ANR v HYBO HINDUSTAN
TRADEMARK: BENZ and device of "three pointed star" for automobiles v BENZ and device of "three pointed human being" for undergarments - (Infringement - Dilution) - Counterclaim of different class goods - Held: Infringement deliberate - Defendant's use of plaintiffs' mark and device damaging to plaintiff's reputation - Ordered to cease and desist from carrying on trade in any undergarments in the name of BENZ and the device of a "Three Pointed Human Being in a Ring"
Delhi High Court - India - November 10, 1993
DOLPHIN LABORATORIES LTD v ARUN KUMAR BANSAL AND OTHERS (DOLPHIN ORGANICS LIMITED)
TRADEMARK/TRADE NAME: Dolphin for pharmaceuticals (Infringement - Passing off - Public issue) - Infringement of registered trademark and passing off of trade name DOLPHIN - Prayer to restrain defendant from raising money through public issue of shares using the impugned corporate name DOLPHIN - Interim Injunction granted - Defendants restrained from using DOLPHIN or any other deceptively/confusingly similar word as part of trade name and from raising money from the public under the impugned corporate name - Appeal by defendants - Order passed allowing defendants to continue with their public issue on certain conditions
Delhi High Court - India - February 22, 1995
FHOFFEMANN LA ROCHE & CO LTD v GEOFFREY MANNERS & CO LTD
TRADEMARK: PROTOVIT v DROPOVIT for pharmaceutical preparations - (Application for Rectification - Deceptive similarity) - Appellants applied for rectification of the Register for removal of respondents' mark DROPOVIT on grounds of deceptive similarity - Held: the marks must be compared as a whole - no confusing similarity found - DROPOVIT was an invented word and therefore registrable - Appeal dismissed with costs
Supreme Court of India - India - September 8, 1969
GANGA ENGINEERING WORKS v GANGA FOUNDRY
TRADEMARK: GANGA - (Rectification proceedings - Validity - Application for stay) - Application for stay of suit claiming invalidity of trademark - Held: upholding lower court's order dismissing the application that under Section 111(1) of the Trademarks Act, it was not open to the petitioner to seek stay of proceedings.
Madras High Court - India - August 12, 1994
G.D. SEARLE & CO ANR.v MEDIGRAPHS PHARMACEUTICALS PVT LTD & ANR.
Trademark: LOMOTIL v "Slotil" for pharmaceuticals: (Infringement - Deceptively similar mark - Fraudulent intention - Likelihood of confusion - Issues at interim stage) - Searle sued Medigraphs for alleged infringement of their registered pharmaceutical trademark LOMOTIL with the deceptively similar mark "Slotil" - HELD refusing the grant of injunction: The syllables "Lomo" and "Slo" prefixed to the marks are distinctly different and, therefore, there is no finding of confusing similarity
Bombay High Court (July 23, 1998)
GOLD STAR CO.LTD.,KOREA v GOLD STAR INDUSTRIES & ORS
Trademark - GOLD STAR in Class 7: (Infringement - Passing off - Definition of use - special circumstances - Laches - Rectification - non-use) - Infringement and passing off of registered trademark GOLDSTAR - Plaintiffs claim special circumstances for non-use - Held : Advertisement of mark bears out bonafide intention to use - Plaintiff's had primafacie case - Balance of convenience in plaintiff's favour - Defendants restrained from using the trademark GOLDSTAR for goods covered by the plaintiff's registration
Calcutta High Court - December 20, 1994
GUJRAT BOTTLING CO.LTD.& OTHERS v COCA COLA COMPANY & OTHERS
Trademark - Breach of Contract : (Licensee agreement - Registered user agreement - Restrictive covenant - Transfer of shares - Breach of Contract - Validity - Prima facie case - Balance of convenience) - By an agreement, Coca Cola licensed GBC to manufacture and sell soft-drinks using the trademarks acquired by Coca Cola from the Parle group - GBC was made registered user of Coca Cola's trademarks by another agreement - Restrictive covenant - GBC to manufacture beverages for Coca Cola only - Change in GBC's proprietorship by transfer of shares without Coca Cola's consent prohibited - Unauthorised transfer of Parle's equity in GBC to Pepsico - GBC notifies termination of contract to Coca Cola - Coca Cola granted injunction in suit for breach of contract by GBC - Appeal to Supreme Court by GBC claiming invalidity of agreement due to negative covenant - HELD dismissing GBC's appeal: GBC acted in breach of contract- Transferees of GBC's share restrained from using the plants of GBC - High Court order granting interim injunction confirmed
Supreme Court of India - August 4, 1995
HAW PAR BROTHERS INTERNATIONAL LIMITED, Singapore v TIGER BALM CO. PVT LTD AND OTHERS, Madras
TRADEMARK/TRADE DRESS: TIGER BALM (trademark and device of leaping tiger) for medicinal ointment - (Infringement of trademark and trade dress - Passing off - Registration as defence laches) - Trademark and trade dress infringement of internationally well known trademark TIGER BALM and passing off action - Defendant registered proprietor of mark in India - Plaintiff had no business in India - laches alleged on plaintiff's behalf - Held: Registration is no defence in an action for passing off - Court finds mark willfully infringed, sets aside the Registrar's order refusing to rectify the defendant's mark on the plaintiff's application - Interim injunction granted in the plaintiff's favour, defendants restrained from the use of the trademark TIGER BALM and the trade dress of the plaintiff's product - The use of the words "Tiger Balm" in the trading style or corporate name by the defendants should be accompanied by a disclaimer stating no connection with the plaintiffs.
Madras High Court - India - April 27, 1995
HITACHI LTD, JAPAN v AJAY KUMAR AGARWAL AND ORS
TRADEMARK: HITACHI in English script for electrical and electronic goods v HITAISHI in Devnagri/Hindi script for sound amplifiers - (Infringement - Passing off - Confusing similarity) - Appellants brought a suit for permanent injunction, infringement of trademark, passing off and rendition of accounts - Respondents claim that HITAISHI in Hindi/Devnagri script was different from HITACHI in English in appearance and meaning - Single Judge refused to grant ad interim injunction restraining the respondents from using HITAISHI in Hindi script - Appellants file instant appeal - Held: admitting appeal and setting aside order of Single Judge - the words HITACHI and HITAISHI were phonetically similar and there was a real danger of deception and confusion - The respondent's plea of concurrent user was of no avail as the plaintiff/appellant was not aware of the use, till its discovery of the present infringement - Injunction restraining the respondent from the use of the mark HITAISHI in Hindi/Devnagri script granted.
Delhi High Court - India - March 31, 1995
HOECHST AG, GERMANY v UNISULE PVT LTD, DELHI
TRADEMARK: BARALGAN v BARAGAN for pharmaceuticals - (Infringement of trademark and copyright - passing off - damages) - Suit for permanent injunction restraining infringement of registered BARALGAN, trademark passing off, copyright, delivery of infringed goods and damages - Defendants failed to appear - Held: Decree passed in favour of the plaintiffs restraining the defendant from infringing and/or passing off the impugned mark BARALGAN - Infringement of the plaintiffs' copyright by the deceptively similar strips of the defendants' product found - defendant ordered to deliver for destruction of all infringing goods - damages of Rs. 5 lakhs and cost of the suit awarded to the plaintiffs.
Delhi High Court - India - May 17, 1996
HOECHST AG & OTHRES v UNISULE PVT .LTD.
Trademark BARALGAN v BARAGAN for pharmaceuticals in class 5: (Infringement - Exparte injunction - Damages - Application for stay - Prima facie case) - Hoechst Ag, the plaintiff, was awarded ex parte interim relief and damages in a suit for infringement and passing off of trademark BARAGAN and copyright violation by Unisule, the defendant - Defendant appealed for stay - Plaintiff counter-appealed against stay of damages - HELD on the basis of prima facie evaluation: The execution of the decree may be stayed only on the defendant's depositing of part of the damages and furnishing security for the balance within set period.
High Court of Delhi (March 3, 1998)
INDIAN SHAVING PRODUCTS LTD.& ANR V GIFTPACK & ANR
(Passing off - Deceptive similarity - Reputation - Goodwill - Prior user - Registration - Laudatory mark - Locus standi - Prima facie case - Balance of convenience - Irreparable harm) The Plaintiffs, Indian Shaving Products and Duracell Pvt Ltd, sued defendants, Gift Pack and BPL-PTI Chemical, for infringing their trademark ULTRA and passing off their battery products - Granting ad-interim injunction to the plaintiffs, the Court HELD : The plaintiffs had established prior user in the mark ULTRA which in combination with the trademark DURACELL had acquired transborder reputation - The plaintiffs had a prima facie case
High Court of Justice, Delhi Division (09 November 1998)
INDUSS FOOD PRODUCTS & EQUIPMENTS LTD v RANISATICE-CREAM PVT.lTD.
Trademarks - ROLLICK v FROLLIK for icecreams : (Passing off - Deceptive similarity - Franchise agreement - Application for registration - Opposition - Balance of Convenience) - Passing off alleged by plaintiff of its trademark ROLLICK by the defendant's mark FROLLIK - Defendant denied passing off claiming that the plaintiff's mark lacked reputation and distinctiveness - HELD granting injunction to the plaintiff: ROLLICK and FROLLIK were deceptively similar - Defendant's use of FROLLIK mark was deliberate - Plaintiff had made out a strong prima facie case and the balance of convenience also favoured the plaintiff - Courts dealing with rights of parties in a passing off action cannot restrict the activities of business under particular trademarks to specified areas
Delhi High Court - December 1996
J.K. ANSEL PVT.LTD.v PASUPATI SEOHUNG.LTD.
Trademarks : "Kama Sutra" for contraceptives - (Passing off - Unauthorised use of trademark in foreign country - Deception - Prima facie case) Plaintiff JK Ansell Pvt. Ltd., sought injunctive relief against defendant Pasupati Seohung Ltd.'s unauthorised use in Poland of their applied for mark "Kama Sutra" for contraceptives - Defendant alleged that there was no passing off in India - Granting injunctive relief to the plaintiff, the Court HELD: The plaintiff has a strong prima facie case as it has been established on the basis of the facts that the defendant has attempted to "grab a part of the Polish channel of the plaintiff's source of business" and therefore, the plaintiff should receive injunctive relief against such undue interference.
Calcutta High Court (31 March, 1999)
J. N. NICHOLS (VIMTO) LTD v ROSE & THISTLE & ANR
TRADEMARK: VIMTO v VINTO for non-alcoholic beverages - (Application for Registration - opposition - bona fide use/non-use - Application for Rectification - special circumstances) - Opposition to respondents attempt to register word VIMTO by the petitioner, proprietor of trade mark VIMTO and VINTO - VIMTO ordered to be expunged from the Register for want of bona fide intention to use as per Respondents' rectification application - Appellant opposed respondents application for registration of mark VIMTO on grounds of deceptive similarity with existing trademark VINTO - Respondents' rectification application to expunge VINTO allowed on grounds of non-use - Appellants' plea of non-use due to special circumstances dismissed - Held: Despite Government ban on import of consumer products, the product with the expunged trademark VIMTO was sold by the Petitioners' registered user, but no cogent reason was advanced for the total non-use of the trademark VINTO.
Calcutta High Court - India - September 2, 1993
JOHN OAKEY & MOHAN LTD v MILLION ABRASIVES PVT LTD & ANR
TRADEMARK: OAKEY'S in a globe device v MILLION in an oval device, both for abrasive paper - (Application for Registration - Opposition - Likelihood of confusion) - Registration of MILLION allowed despite opposition - Appeal to High Court - Plaintiff's petition dismissed - Held: The trademarks taken as a whole were distinct and there was no likelihood of confusion.
Delhi High Court - India - March 24, 1994
J R KAPOOR v MICRONIX INDIA
TRADEMARK: MICROTEL v MICRONIX for electrical and electronic apparatus - (Infringement - Monopoly rights - Likelihood of confusion) - Interim injunction granted by High Court following defendant's action against alleged infringement of his trademark MICRONIX - Appeal against order by plaintiff - Monopoly rights over the word 'micro' cannot be claimed as micro-chip technology formed the basis of many products - Plaintiff's suffix TEL was distinct from the defendant's suffix NIX - Plaintiff's logo M and trade dress was also distinct from defendant's logo IM and trade dress - No likelihood of deception or confusion - Held: Interim order of High Court to be set aside
Supreme Court - India - August 10, 1994
KELLOGG COMPANY v PRAVIN KUMAR BHADABHAI & ANR
Trade dress: KELLOGG'S v AIMS ARISTO for cornflakes sold in similarly designed cartons - (Appeal - Passing off - Likelihood of confusion - Fraudulent intent - Imperfect customer memory) - Interim Application by plaintiff for passing off of trade dress/get-up of cornflakes carton by defendant - Injunction refused by Single Judge - Held: trade dress of defendant was entirely different - no scope of confusion - Appeal against order by plaintiff/appellant - order of Single Judge upheld - Pleas of confusing similarity in get-up, fraud and imperfect customer memory rejected.
Delhi High Court - India - February 15, 1996
KIRLOSKAR DIESEL RECON PVT LTD.& ORS v KIRLOSKER PROPRIETARY LTD.& ORS
Trademark/Trade name - KIRLOSKAR : (Stay application - Passing off - Public confusion/deception - Right to use personal name - Uncommon field of activity - Honest adoption - Laches - Acquiescence) - The word KIRLOSKAR registered as trademark/ trade name and as an artistic work under the Copyright Act by the respondents - Companies bearing the KIRLOSKAR corporate name enjoyed goodwill and reputation associated with the mark - Unauthorised use of the word KIRLOSKAR by appellant companies in their trade name - Respondents file suit for permanent injunction to prevent the appellants from passing off their reputed trademark/tradename KIRLOSKAR - Interim injunction ordered by District Court - Appeal to High Court challenging jurisdiction and claiming right to use personal name in trading style - Appellants allege KIRLOSKAR not reputed corporate name - there was no deception as products and field of activity were different - Honest adoption of word KIRLOSKAR claimed - Respondents were guilty of laches and acquiescence - HELD dismissing appeal: Common field of activity was no longer valid basis in passing off actions - Likelihood of confusion arising from the appellants use of the reputed trademark/tradename of the respondents established - Use of personal name was not protectable when extended to artificial persons like incorporated companies - Respondents had a strong prima facie case - Balance of convenience was in favour of the respondents - Laches or acquiescence on the respondents' part not established - Interim order upheld - Stay application refused
Mumbai High Court - October 10, 1995
LAKKME LTD.v SUBHASH TRADING AND OTHERS
Trademarks - LAKME v LIKE ME, device and word 'Designer' for cosmetics : (Passing off - Confusing similarity) - Passing off of registered trademark and tradename LAKME, device and word 'Designer' for cosmetics - Prayer to restrain defendant from using impugned trademark "LIKE ME" in view of the similarity in sounds between the two words - HELD: Defendants restrained from using impugned trademark or any other deceptively and confusingly similar word as a part of their trade name - Interim order confirmed.
High Court of Delhi - August 23, 1996
Mahender Shah v Hindustan Lever Ltd. & Ors.
Trademark - ANNAPURNA for food items: (Passing Off - Prior use of unregistered trademark - Prima facie case - Balance of convenience) - HLL claimed prior user of trademark ANNAPURNA in relation of iodised salt, later extended in combination with word GOLD SEAL to wheat flour and other food items - Mahender Shah who also sold wheat flour under the ANNAPURNA trademark filed a suit alleging passing off by HLL - HLL countered with a suit seeking to restrain Mahender Shah from the use of the ANNAPURNA trademark - Civil Court held in favour of Mahender Shah - Petition to vacate the order resulted in the Court ordereing "status quo" - Appeals from both parties to High Court - HELD setting aside impugned order, allowing HLL's application and restraining Mahender Shah from the use of the ANNAPURNA mark: HLL had prior use of the mark, a strong prima facie case and balance of convenience in their favour
The High Court of Judicature of Andhra Pradesh - February 3, 1997
MAEKEWA BEARING MANUFACTURING CO LTD.v ONKAR BEARING INDUSTRIES
Trademark MBS for bearings in class 07: (Application for registration - Registered mark - Opposition - Honest concurrent user - Exercise of discretion by Registrar) - Maekawa's opposition to the registration of the trademark MBS for bearings by Onkar was rejected by the Registrar - On appeal, Maekawa invoked rights as registered proprietor of the mark - Onkar claimed honest concurrent user - Dismissing the appeal, the Court HELD: There was no evidence to suggest that Onkar was not an honest concurrent user
Delhi High Court (November 19, 1997)
MAHINDRA AND MAHINDRA LTD.v MAHENDRA & MAHENDRA PAPERMILLS LTD
(Passing off - Deceptive similarity - Reputation - Goodwill - Prima facie case - Balance of convenience - Irreparable harm) The Plaintiff, Mahindra & Mahindra, sought to restrain the defendant, Mahendra & Mahendra, from using the deceptively similar tradename to pass off its business as associated with the plaintiff Granting injunctive relief to the plaintiff, the Court HELD: Plaintiff had a prima facie case for the grant of injunction - Balance of convenience favoured the plaintiff who would suffer irreparable loss of goodwill due to the defendant's use of the deceptively similar mark
High Court of Justice, Mumbai Division (April 23, 1998)
MODELLA WOOLLENS LTD v MODELLA KNITWEARS
TRADEMARK/TRADE NAME: MODELLA and lion device for readymade garments, textile and yarns - (Infringement - Passing off - Copyright infringement - Suppression of material facts) - Appellant/Plaintiff applied for perpetual injunction alleging infringement and passing off of trademark MODELLA and lion device for readymade garments, textiles and yarns - infringement of copyright and rendition of accounts by the respondent - Interim order favouring plaintiff was vacated by the Single Judge - Appeal against interim order by plaintiff - Held: Upholding the interim order dismissing the plaintiff's appeal with costs, that the plaintiff had suppressed material facts relating to certain agreements made with the respondent transferring trademark rights and other rights to the respondent, for personal gain.
Delhi High Court - India - November 23, 1995
N R DONGRE & ORS v WHIRLPOOL CORPORATION,USA & ANR
Trademark - WHIRLPOOL for washing machines : (Passing off - Special circumstances - Laches - Acquiescence - Abandonment) - Passing off alleged of Whirlpool Corp.'s trademark WHIRLPOOL - Registration of mark in India could not be renewed due to import restrictions - NR Dongre & Ors. registered proprietor of WHIRLPOOL mark in India - Opposition by Whirlpool Corp. dismissed - Whirlpool Corp.'s suit for passing off granted temporary injunction by Single Judge of Delhi High Court - Appeal against order dismissed and injunction confirmed by Division Bench - Appeal to Supreme Court - Appellants alleged laches, acquiescence and culpable delay by the respondents' and asserted their right as registered proprietor of the mark - Respondents' claimed transborder reputation, special circumstances for non renewal of registration and irreparable injury in the absence of injunction - HELD: Adoption of the WHIRLPOOL mark by the appellants was prima facie dishonest - Non renewal of mark does not prove abandonment - Court declined to interfere with the High Court ruling - Appeal dismissed
Supreme Court - August 30, 1996
PANACEA BIOTEC LTD.v RECON LTD.
Trademarks - NIMULID v REMULIDE: (Application for injunction - confusing similarity - descriptive mark) - Application for injunction on grounds of confusing similarity - Defendant argues that marks not similar - NIMULID being a descriptive mark was unprotectable - Held: NIMULID could be taken as part of generic name 'nimesulide' - proprietary rights cannot be conferred over use of descriptive mark - Injunction refused and application dismissed
Delhi High Court - July 24, 1996
PARLE PRODUCTS LTDv BAKESMAN INDUSTRIES LIMITED
Trademark GLUCO v GLUCOGOLD for biscuits: (Infringement - Passing off - Use - Deceptive similarity - Likelihood of confusion - Balance of convenience - Generic term) - Parle filed suit and applied for restraining orders against Bakemans for alleged infringement of its registered trademark GLUCO by the mark GLUCOGOLD - Bakemans applied for vacation of the ad-interim injunction granted to Parle, arguing that GLUCO was a generic term and could not be monopolised - Vacating the injunction order, the Court HELD: GLUCO was a generic term and had become publici juris - The two marks in suit were neither "same marks" nor "similar marks"
Madras High Court (May 29, 1998)
PC MALLAPA & CO.v MCDONALD'S CORPORATION,USA
(Passing Off - Class of goods - Transborder reputation - Famous mark - Registered ttrademark - Copyright in logo design - Justiciability of injunction order) Trademarks Logo "M" for fast food v Logo "M" for sanitary ware McDonald's had succeeded in obtaining an injunction order restraiing PC Mallappa from using its famous "M" logo to pass off its sanitary ware goods - PC Mallappa challenged the trial court's order claiming copyright in the "M" logo - Dismissing PC Mallappa's appeal the Court HELD: The appellant was not a manufacturer but a trader in goods bearing an imitation of the plaintiff's famous "M" logo which was also a registered trademark - There was no call for interfering with the trial court's order.
Karnataka High Court (at Bangalore) (15 September, 1998)
PEPSIFOOD v JAIDRINKS(P) LTD and JAI DRINKS(P) LTD vs PEPSI FOODS LTD
Trademark/License Agreement : Trademark LEHAR for soft drinks (non-alcoholic beverages) - (Infringement - Passing off - Declaration Termination of bottling /license agreement) - Bottler continues to manufacture sub-standard beverages under Manufacturer's trademarks - Manufacturer/Proprietor of marks files suit for infringement, passing off and declaration of termination of agreement - Ex parte stay order granted to Manufacturer/Proprietor of marks. Bottler counterfiles suit for vacation of stay and declaration that notices of termination were illegal and void - Held: Stay order confirmed - Bottler's applications dismissed - Bottler (Jai Drinks) entitled to file suit for damages only - Manufacturer/Proprietor's (Pepsi Foods) application for injunction restraining Bottler's infringing activities allowed.
Delhi High Court - India - March 4, 1996
P.M. DIESELS LTD.v PATEL FIELD MARSHAL INDUSTRIES & ANR.
Trademark MARSHAL and logo PFMA: (Trademark infringement - Copyright infringement - Vacation of injunction - Jurisdiction) - The plaintiff, PM Diesels, filed a suit seeking an injunction restraining the defendants, Patel Field Marshal Industries, from infringing its MARSHAL trademark, PFMA logo and copyright in label for similar goods - Order granting interim injunction was vacated and application for grant of temporary injunction was dismissed by the Single Judge for lack of jurisdiction - The plaintiff appealed against the order - HELD, setting aside the order of the Single Judge and allowing the appeal: Prima facie, the court has both territorial and pecuniary jurisdiction to entertain the suit
High Court of Delhi (March 10, 1998)
POLSON LIMITED v POLSON DAIRY LIMITED
TRADE NAME/TRADEMARK: POLSON for food/dairy products - (Infringement - Passing off - Special circumstances - Use - Alleged concealment of material fact) - Trademark infringement and passing off of business name - Special circumstances of unfavourable Government policy for non-use - use in other classes - Held: Mere non-user for a brief period not equal to abandonment - deception of public attempted by defendants - Injunction granted
Delhi High Court - India - September 6, 1994
PRAMOD KUMAR BHANDARI v STATE & ANR
Trademark - MK for brake shoe lining : (Arbitration Award - Criminal complaint - General search warrant - Misrepresentation - Suppression of facts- Criminal Revision Petition - Abuse of court process) - The respondent filed a criminal complaint against unknown persons alleging manufacture and sale of spurious products under the tradename MK - Issuance of general search warrant followed by raid, seizure and sealing of petitioner's factory - Criminal Revision Petition filed by petitioner against issuance of warrant - Petitioner alleged abuse of process of court and misrepresentation by the respondent - HELD : Revision petition allowed - General search warrant revised, set aside and quashed
Delhi High Court - 1996
RABAPHARMA AG v TTK PHARMA LTD
(Restriction of goods - Amendment of plaint - Rectification - Infringement - Scope of registration - Limitation - Delay - Use - Agency agreement - Revocation of Agreement - Costs) Plaintiff Rabapharma sought an injunction restraining the defendant from using its registered trademark OSSOPAN following termination of trade relations - The plaintiff overlooked the restriction of the goods in the user certificate filed with the plaint - When the plaintiff sought to amend the plaint, the defendant moved to dismiss - Granting the application to amend, the Court HELD: There was no limitation as no new cause of action had been raised - Costs were awarded to the defendant to compensate for the plaintiff's oversight
Madras High Court 24 June, 1997
REVLON INCORPORATED v RAJENDRA KUMAR DHAWAN & ANR
TRADEMARK: REVLON and REVLON CLEAN AND CLEAR for cosmetics - (Application for rectification - use - onus) - Respondents apply for cancellation of trademarks REVLON and REVLON CLEAN AND CLEAR for cosmetics on grounds of non-use - Limited use of marks due to import restrictions - Deputy Registrar of Trademarks orders cancellation of said marks - Plaintiffs appeal against order - Court's jurisdiction supervisory rather than appellate - Issue of onus in proving user/non-user - Held: Deputy Registrar's error of allowing cancellation of marks to be rectified - Plaintiffs appeal allowed and registrations of said marks remain valid - Respondents apply for stay - Order of stay refused
Calcutta High Court - India - February 10, 1995
REVELON INC. & ORS.v SARITA MANUFACTURING CO.
Trademarks - REVLON, INTIMATE and CHARLIE for cosmetics, perfumery and toiletries: (Infringement of trademark and Tradedress - Deceptive use - Acquiescence - Special circumstances) - Plaintiffs file suit for infringement of well known marks REVLON, CHARLIE and INTIMATE for cosmetics - Defendants argued delay, laches and acquiescence on the part of plaintiffs - HELD: Defendants trademarks were deceptively similar to that of the plaintiffs - Negotiations between defendants and plaintiffs does not amount to waiver and acquiescence - Defendants restrained from use of the trademarks which were registered by the plaintiff or any other deceptively similar mark
Delhi High Court - May 9, 1997
ROB MATHYS INDIA PRIVATE LIMITED v SYSTHES AG CHUR,SWITZERLAND
Trademark AO/ASIF, SYNTHES and device for surgical instruments and orthopedic implants: (Licensing agreement - Infringement - Passing off - Jurisdiction - Locus standi - Distinctiveness - Estoppel - Laches - Acquiescence - Public interest) - A collaboration agreement between Mathys AG Bettlach and appellant company Rob Mathys was cancelled, and Synthes AG Chur, the proprietor of AO/ASIF and SYNTHES trademarks, exclusively licensed to Mathys AG Bettlach in India, sued Rob Mathys for infringement and passing off of the said marks - Rob Mathys appealed against the orders of the Single Judge granting interlocutory injunctions to Synthes AG Chur -The Division Bench dismissed Rob Mathys' petitions and refused to interfere with the orders of the Single Judge
Delhi High Court (May 29, 1997)
ROLLS ROYCE PLC & ANR v R.R.MOTORS PVT .LTD.
Trademark - ROLLS ROYCE and Device of RR on a shield : (Infringement - Passing Off - Likelihood of confusion - Balance of convenience) - Plaintiff registered proprietor of ROLLS-ROYCE trademark and device of interlinked RR in a shield for automobiles and allied products - Alleged infringement and passing off of trademark and device by defendant HELD: Infringement and passing off of plaintiff's trade mark ROLLS-ROYCE and device of interlinked RR in a shield found - Likelihood of confusion exists - Ad interim ex parte injunction confirmed
High Court of Delhi - October 30, 1996
RUPA & COMPANY LTD.v DAWN MILLS .CO.LTD.
(Infringement - Passing off - Deceptive similarity - Composite mark - Delay)
Plaintiff Dawn Mills sued Defendant Rupa & Co. for infringement of its registered trademark DAWN for hosiery products by the trademark RUPA DON and passing off of its goods - Trial Court granted temporary injunction to the plaintiff - The defendant appealed for vacation of injunction, alleging delay in filing suit on part of the plaintiff - Refusing to interfere with the trial court's order, the High Court HELD: The plaintiff had a prima facie case for infringement of its registered trademark DAWN - The defendant's mark was deceptively similar to that of the plaintiff's - There was no culpable delay on the plaintiff's part to deny injunctive relief
High Court of Gujarat in Ahmedabad (April 16, 1998)
SAMIR BOSE & ORS (dba ESBI INDUSTRIES) v VULKANKUPPLUNGS AND GRETRIEBEBAU BAG CO.,AG
Passing Off : Trademark VULKAN for flexible couplings - (Passing off - Sales Agreement - Cancellation of Agreement - Registration - Use - Fiduciary duty - Transborder Reputation) The plaintiff Vulkan Kupplungs sought injunctive relief against defendants Samir Bose and ESBI who were passing off their flexible couplings under the plaintiff's trademark VULKAN - Defendants claimed to be registered proprietors of the VULKAN trademark in India - Granting injunctions restraining the defendants from using the word VULKAN in their trade name or the trademark VULKAN in association with their goods, the Court HELD: The plaintiff had prima facie established that the trademark VULKAN was distinctive of and identifiable with the plaintiff's couplings - The defendants had a fiduciary duty not to impeach the plaintiff's rights to the said trademark
Calcutta High Court (13 May 1997)
S.B.L LTD. v THE HIMALAYA DRUG CO.
Trademark LIV.52 v LIV-T for medical preparation for the treatment of disorders of liver: (Infringement - Passing off - Generic term - Publici juris - Order 39 Rule 3 - Deceptive similarity ) - Plaintiff alleged infringement and passing off of its trademark LIV.52 by the defendant's mark LIV-T - Defendant denied infringement, claiming that the word LIV was a generic term and publici juris - HELD setting aside the impugned order: LIV had become a generic term
Delhi High Court (August 6, 1996)
SUBHAS CHANDER AGGARWAL v VINOD KUMAR AGGARWAL
TRADEMARK: (Practice - Opposition - Negligence - Contempt of Court) - Show Cause Notice for Contempt of Court issued to Mr. Om Prakash, Deputy Registrar and Mr. M. C. Gupta, Assistant Registrar, Trademarks.
Issue: Trade Marks Registry proceeded with the hearing of the opposition to the same trademark in respect of which further proceedings regarding registration had already been stayed by this Court - Deputy Registrar and Assistant Registrar, Trade Marks issued show cause notices for culpable negligence - Held: As no harm or prejudice had resulted to the appellant, and the officials at fault being suitably repentant for their lapse, the matter was concluded with a reprimand - Interim order of stay confirmed
Delhi High Court - India - April 23, 1996
SUNSTAR LUBRICANTS LTD.v FEDERAL CHEMICAL INDUSTRIES
Trademark - GOLDEN CRUISER 1200 v SUN CRUISER 2001 for automobile coolant etc. : (Infringement - Passing off - Deceptive similarity) - Plaintiff sought injunction in suit for infringement and passing off of GOLDEN CRUISER 1200 by defendant's mark SUN CRUISER 2001 - Plaintiff alleged deceptive similarity between the marks, which the defendant denied - HELD dismissing the plaintiff's application - The trademarks in question and tradedress of the product were not deceptively similar - There was no infringement or passing off - The plaintiff had failed to establish a prima facie case for grant of injunction
Delhi High Court - November 1996
THE HEARST CORPORATION v DALAL STREET COMMUNICATION LTD
TRADEMARK: ESQUIRE v ESQUARE for magazine names - (Infringement of trademark and copyright - Application for stay and modification of order - balance of convenience) - Infringement of trademark ESQUIRE and copyright therein alleged - Interim injunction granted - Defendants appeal for stay and modification of order - Held: Defendants application for modification infructuous - Prayer for stay of suit, refused
Calcutta High Court - India - July 21, 1995
The PROCTOR & GAMPLE CO. v SATISH PATEL
Trademark - SAFEGUARD for antibacterial soap v SAFEGUARD for ayurvedic antiseptic cream : (Passing off - Transborder reputation - Honest concurrent user - Descriptive mark - Delay and Laches - Prima facie case - Balance of Convenience) - Plaintiff sought injunction restraining defendant from passing off its famous trademark SAFEGUARD - Plaintiff's trademark SAFEGUARD for anti-bacterial soap pending registration in India - Defendant claimed honest and concurrent user of trademark SAFEGUARD for ayurvedic antiseptic cream since 1984 - Plaintiff alleged market survey proved existence of likelihood of confusion among relevant public due to use of identical marks on similar goods - Defendant alleged laches and acquiescence due to delay in filing suit - HELD refusing injunction: SAFEGUARD being a descriptive mark could not be monopolised - Transborder reputation not established - Goods were not similar - Use of the mark and get up of defendant's product was not deceptively similar - Plaintiff did not have a strong prima facie case - Balance of convenience was in the defendant's favour
Delhi High Court - August 22, 1996
TIMES PUBLISHING HOUSE LTD v THE FINANCIAL TIMES LTD
TRADEMARK/TRADE NAME: Newspaper title - FINANCIAL TIMES - (Infringement - Passing off - Press Act and Trademarks Act - harmonious construction) - The Financial Times Ltd claimed infringement and passing off of its internationally famous trademark/trade name by Times Publishing House Ltd and obtained interim order in their favour from Bangalore District Court - Appealing against that order, Times Publishing House Ltd claimed sole publication rights in India through registration of the title under the Press Act - Scope and ambit of the Press & Registration of Books Act, 1867 and Trade & Merchandise Marks Act, 1958 examined - Harmonious construction between Acts sought - The right to publish can be given only under the Press Act, while the Trademarks Act can only give the right to the title of the publication - The Press Act stipulates that the publisher should be a citizen of India - Appeal granted setting aside earlier order - Financial Times Ltd., appealed to Supreme Court - Supreme Court refused to interfere with the High Court order, directing expeditious disposal of the suit -Times Publishing House directed to use the title with a disclaimer that it has no association with Financial Times Ltd.
Karnataka High Court - India - 1995
TIME WARNER ENTERTAINMENT CO.,L.P.v A.K.DAS & ORS
Trademark- HBO/HOME BOX OFFICE v CBO/CABLE BOX OFFICE for Television Channels : (Passing off - Deceptive similarity - Likelihood of association - Opposition - Balance of Convenience) - Plaintiff filed suit for passing off of well known mark HOME BOX OFFICE/HBO by the defendants' CABLE BOX OFFICE/CBO for television channel - Defendant denied the charges - HELD granting injunction to the plaintiff : Both the marks are similar - Defendants' use of CABLE BOX OFFICE/CBO was deliberate - Plaintiff had made out a strong prima facie case and the balance of convenience also favoured the plaintiff - Injunction granted against the defendants confirmed
Delhi High Court - May 16, 1997
TORRENT PHARMACEUTICALS LTD .v UNION OF INDIA,rAMJILAL,ASST.rEGISTRAR OF TRADEMARKS REGISTRY,WELCOME FOUNDATION LTD.
Trademarks XOVIREX and ZOVIRAX v VIREX in Class 5: (Application for registration - Opposition - Evidence - Extension under Rule 53 - Further evidence under Rule 55 - Counter-evidence under Rule 54 - Powers of the Registrar under Section 101 and Rule 106) - Wellcome Foundation, international proprietors of trademarks XOVIREX and ZOVIRAX for life saving drugs, opposed Torrent Pharma's application for registration of mark VIREX in Class 5 - Torrent filed a petition praying for a writ to treat Wellcome's opposition proceedings as abandoned due to alleged delay in filing for extension of time to adduce evidence -Torrent also questioned the power of the Registrar to grant such extension - HELD dismissing Torrent's petition and vacating ad-interim relief: A conjoint reading of the relevant provisions of the Act and Rules did not indicate any stipulations of time for adducing evidence and confers sufficiently wide discretionary powers to the Registrar to grant extension of time for any act
High Court of Gujarat at Ahmedabad (April 7, 1998)
TOSHIBA CORPORATION.,JAPAN v TOSHIBA APPLIANCE & ORS
Trademark - TOSHIBA in Class 7 v TOSIBA in Class 11 : (Rectification - Limitation of Goods - Non-use - Special circumstances - Locus standi) - Application for removal of the mark TOSHIBA and limitation of goods on grounds of non-use - Rectification application allowed - Appeal against order citing special circumstances and questioning local standi of the respondents - HELD: Respondents' locus standi unimpeachable - Blocking the Register was a trademark `sin' - Non-use had been more on account of unprofitability rather than special circumstances - Appeal dismissed - Stay of operation of order not allowed
Calcutta High Court - 1993
TUBE INVESTMENTS OF INDIA LTD.v TRADE INDUSTRIES ,RAJESTHAN
Trademark - TI for bicycles and bicycle parts : (Trademark infringement - Passing off - Deceptive similarity - Opposition - Balance of Convenience) - Plaintiff alleged infringement and passing off of its trademark TI by the defendant - defendant denied infringement and claimed that goods were registered in different class and the plaintiff did not manufacture the goods in question - laches alleged on part of the plaintiff - plaintiff's appeal before the High Court rejected - aggrieved by the decision plaintiff moved the Supreme Court - HELD setting aside the impugned order, defendant to be restrained from use of the plaintiff's trademark or any other deceptively similar mark
Supreme Court - May 2, 1997
TTK PRESTIGE LTD & ANR v HARPRASAD GUPTA & ORS
Trademark : PRESTIGE v PRE/STAGE and PRESTIGE for pressure cookers - (Infringement - Registration of similar mark - Concurrent user - Class of goods - Rectification/Cancellation action) Plaintiff, TTK Prestige sued defendant trading as Gupta Light House for infringing its registered trademark PRESTIGE for pressure cookers - The ADJ dismissed plaintiff's motion finding no confusing similarity between plaintiff's PRESTIGE mark and defendant's PRE/STAGE mark - On appeal, the Court HELD : The plaintiff was the registered and prior user of the PRESTIGE mark - Defendant's alleged concurrent use of a similar mark not being in respect of pressure cookers was not protectable as "honest concurrent use" - As the defendant's PRESTIGE mark had been allowed registration, the proprietary rights of both parties would be protected till the pendency of the plaintiff's cancellation action
Delhi High Court (13 October, 1998)
ULTRAMARINE & PIGMENT LTD.v SHRIKRISHNA ULTRAMARINE & CHEMICALS LTD.
Trademark - TEMPLE BLUE v GOPURAM BLUE for laundry blue : (Trademark infringement - Passing off - Vernacular equivalent - Deceptive similarity - Balance of Convenience) - Plaintiff filed a suit seeking injunction for infringement and passing off of its registered trademark TEMPLE BLUE by defendant's mark GOPURAM BLUE through the deceptively similar use of a vernacular equivalent - Ad interim injunction granted in favour of the Plaintiff - Defendant alleged plaintiff's claim of confusion was disingenuous and baseless - Defendant appealed before the Supreme Court - HELD: confirming the interim injunction: Defendant had intentionally adopted the vernacular mark with the purpose of deceiving traders and the purchasing public - Plaintiff had a strong prima facie case and the balance of convenience was in the plaintiff's favour by virtue of prior use and market reputation - Defendant's application was dismissed
Supreme Court - January 10, 1997
VISHNUDAS TRADING v THE VAZIRSULTAN TOBACCO CO LTD
TRADEMARK : CHAIRMAN for manufactured tobacco in Class 34 : (Application - Opposition - Rectification - Sub-classification - Passing Off - Limiting of goods) - Respondent's trademark CHAIRMAN registered in Class 34 for "manufactured tobacco" and used for cigarettes - Appellant sought registration of CHAIRMAN trademark for "zarda" and "quiwam" (tobacco products) in same class - Opposition by respondent - Appellant sought rectification of respondent's registration to limit goods to cigarettes - Assistant Registrar orders rectificaiton - Respondent appeals - High Court (Single Bench) allows appeal and sets aside order holding sub-classification could not be made - Single Bench Order upheld by Division Bench - Appellant appeals against orders in Supreme Court - HELD : Appeal allowed - Assistant Registrar's order for rectification upheld - To discourage monopolistic use, the trademark registration of a manufacturer or trader in one or few of the articles under a broad classification was liable tobe rectified by limiting of ambit
Supreme Court - July 9, 1996
WESTINN HOSPITALITY SERVICES LTD.v CAESAR PARK HOTELS AND RESORTS INC.,USA
Service mark WESTIN v WESTINN corporate name for hotels and hospitality services: (Passing off - Threats action - Non-registrability of service mark - Goodwill - Confusion - Dishonest use - Maintainability of suit - Prima facie case - Balance of convenience) - Westinn Hospitality filed a suit under Sec. 120 of the Trademarks Act alleging groundless threats by Caesar Park in relation to their use of the corporate name 'Westinn' Hospitality - Caesar Park, proprietor of the service mark WESTIN, alleged passing off by Westinn Hospitality - HELD dismissing both suits: The WESTIN service mark had no goodwill or use in India, neither was it registrable under the Trademarks Act - Caesar Park had not established a prima facie case - Westinn Hospitality's suit was misconceived as the statutory provisions under which the suit had been filed was wholly inapplicable to service marks
Madras High Court (April 29, 1997)
WHIRLPOOL CORPORATION AND ANR v N R DONGRE AND ORS
TRADEMARK: WHIRLPOOL for washing machines and driers - (Passing off - transborder reputation - Registration in an action for passing off - culpable delay/laches) - Appellants registered proprietors of mark - Transborder reputation - Held: Reputation of respondent's trademark WHIRLPOOL in India established - Registration does not confer immunity in an action for passing off - Ad interim injunction obtained by Whirlpool Corp. - Appeal against interim order dismissed.
Delhi High Court - India - April 21, 1995
WWF INTERNATIONAL v MAHAVIR SPINNING MILLS LTD
TRADEMARK: PANDA trademark and device for paper products, nature education material, camping equipment and audio-visual aids - (Infringement - passing off - transborder reputation - point of sale confusion - alleged: plaintiff guilty of laches) - Infringement and Passing off of trademark PANDA - Transborder reputation and sale by licensees of a non-profit organisation Held: Reputation in India established - Interim injunction granted
Delhi High Court - India - October 7, 1994
YAHOO! INC v AKASH ARORA & ANR
(Passing off - Deceptively similar name - Whether domain name is goods under trademark law? - Dictionary term - Distinctiveness - Prima facie case) Plaintiff, Yahoo! Inc. sought injunctive relief against the defendants who were attempting to pass off their trademark/domain name "Yahooindia" as that of the plaintiff's trademark/domain name "Yahoo" for similar Internet-related services - Granting injunctive relief to the plaintiff, the Court HELD: Commercial goodwill and services are protectable under the common law remedy of passing off
Delhi High Court (19 February, 1999)
YOSHIDA KOGYO K.K v RAJENDRA JAIN & ORS.
TRADEMARK - YKK and ZAGLAN for zips : (Infringement - Search and seizure - Ex-parte injunction) - YKK and ZAGLAN for zips (slide fasteners) - Plaintiffs filed a suit for infringement of trademarks by the defendants - Search and seizure by police HELD : Infringement by defendants confirmed - Defendants restrained from use of the plaintiff's trademarks - Destruction of infringing goods ordered
Delhi High Court - August 2, 1996
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