The IP environment in India is buzzing with consumer appetite for branded goods continues to be in growth mode.As brands jostle to protect their market share and keep infringers at bay, The IP Courts have had several important cases and issues being debated that will shape the future.  Our post summarizes, our assessment of the Top 10 trademark cases adjudicated during 2023:

1. Making up to the coveted list of well-known trademarks

In the case of Tata Sia Airlines Limited v Union of India W.P.(C)-IPD 64/2021, the interesting issue before the court was whether the official fee of Rs. 1,00,000 (approx. US$ 1250) is required to be paid to the Trademarks office for inclusion of mark in the list of well-known marks despite the court declaring a mark to be well known.

The Registrar maintained that the official fee needs to be paid. After a detailed hearing, the court dismissed the Writ Petition of Tata Sia Airlines Limited on May 25, 2023, and concluded that even where a trademark is declared as a well-known trademark by the Court, the official request has to be accompanied by the fees. The Court noted that in such cases there will be no re-examination or fresh determination of a trademark as well known.

2. Service by Trademarks office is complete only on receipt of email by the party

The petitioner approached the Madras High Court challenging the wrongful abandonment of its applications by the Trademarks office (TMO) on 28^th April 2023 in the case of Ramya S. Moorthy v. Registrar of Trade Marks and Others (W.P. (IPD). Nos. 3 & 4 of 2023).

The petitioner’s applications were abandoned by the Trademarks office (TMO) as it failed to file the counter statements (CS) within two months statutory period.   As per TMO’s records, the notices of opposition (NOP) were transmitted by email to the petitioner on 19^th January 2023. The petitioner contended that CS could not be filed as the NOP was never served upon them. The deadline to file the CS commences only upon receipt of the actual document.  The TMO countered that the service of NOP by e-mail is deemed to be proper service upon dispatch and relied upon the internal document to establish dispatch of the NOP to the petitioner on 19^th January 23 and the status was reflected as “success”.

The interesting issue before the court was if the time to file the CS commences from the date of transmission of the document sent by TMO or receipt of email by the petitioner?

The court finally decided that the time for filing CS would only run from the date of receipt of the e-mail and the document of transmission of the NOP relied upon by the TMO does not qualify as evidence of receipt by the petitioner. The court quashed the abandonment orders passed by TMO and restored the two applications allowing the petitioner to file the counter statements.

3. Self-contradictory assertions prove to be fatal for the Appellant

 The issue in this case was to consider the impact of statements made by the applicant to overcome the citations when seeking registration of its mark. In other words, if the applicant argue dissimilarity with the cited marks, can such statements be read against him when enforcing his registered rights.

 In this case, the single judge of the Delhi High Court took the view that the assertion made by KEI Industries at the registration stage is not a bar to exercising its statutory and natural rights at a later date. Rawan Kwatra (Appellant) challenged the order passed by the single judge of the Delhi High Court granting the injunction in favour of KEI Industries Limited based on prior registrations and use of KEI and trademarks. Raman Kwatra asserted that the injunction was granted even though its trademark (application nos. 3256918 and 3256919) were cited as a conflicting at the examination stage. Further, KEI Industries to overcome the objection, in response to the examination report, submitted that services rendered by both parties are different with no likelihood of confusion.

 The Division Bench (two judges) set aside the order passed by a single judge and observed that once a party asserts that its trademark is dissimilar to a cited trademark and obtains a registration based on that assertion, it is not entitled to obtain interim injunction against the proprietor of the cited trademark, on the ground that the trademark is deceptively similar.

4. Delhi High Court awards ten lakh damages to Puma

In the case of Puma SE v Ashok Kumar (CS COMM 703/2022), Puma SE filed a suit for permanent injunction restraining infringement of trademark, unfair trade competition, rendition of account, damages, delivery-up, etc. to protect unauthorized use of its well-known, prior used and registered trademarks PUMA and  by Ashok Kumar trading as Kumkum Shoes, Agra objecting to manufacturing, stocking, supplying and selling footwear bearing the impugned mark, as provided in the below image:

The court granted ex-parte interim injunction restraining Kumkum Shoes from dealing in goods bearing Puma’s trademark . Thereafter, during the raid action, 78 pairs of shoes, 15 stickers bearing the PUMA trademark were seized and it was observed that the defendant was engaged in the business for the past two years.

The court while awarding damages of Rs. 10,00,000/- (approx. US$ 12,500) along with costs of Rs. 2,00,000/- (approx. US $ 2500) specifically referred to Rule 20 of The Delhi High Court Intellectual Property Rights Division Rules, 2022 for guidance on the manner in which the damages could be calculated in such cases.  The court applied the following two factors while granting damages: –

• • Profit earned by the infringing party.
  • Duration of income.

5. Cancellation action can be filed where the dynamic effect of the impugned registration is felt

Dr. Reddy’s Laboratories (DRL) filed a trademark infringement, passing off suit against Fast Cure Pharma (FCP) alleging that FCP’s trademark RAZOFAST trademark infringes its RAZO trademark. The court decreed the suit in favour of DRL. During the pendency of the suit, DRL filed a cancellation action against the trademark RAZOFAST registered by FCP at the Delhi High Court though registration in favour of FCP was granted by the  Trademark office (TMO), Kolkata.

The debatable issue before the court was whether the cancellation petition can be filed before Delhi High Court or before the Calcutta High Court only which exercises territorial jurisdiction over the Kolkata TMO. The Court ruled that:

• • cancellation petition is maintainable not only before the High Court within whose jurisdiction the TMO office which granted the impugned registrations is situated but also before the High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt by the petitioner.
  • cancellation petitions against FCP is maintainable before Delhi High Court since dynamic effect of the impugned registrations is felt by the petitioners in Delhi.

6.  ‘Blenders Pride’ fails to restrain ‘London Pride’ and the use of blue colour

Pernod Ricard India Private Limited (Pernod Ricard) filed a suit alleging trademark infringement, copyright, passing off, delivery up, etc. against J.K. Enterprises (J.K. Enterprises) and submitted that the use of the trademark ‘London Pride’ in relation to whisky is deceptively similar to its mark ‘Blenders Pride’ and the impugned label of “London Pride”  is similar to Imperial Blue  . Pernod Ricard relied upon the registered trademarks ‘Blenders Pride’ and ‘Imperial Blue’ in class 33, used in relation to whisky since 1995 and 1997 and ‘Pride’ is a distinctive component of the trademark ‘Blenders Pride’ .

The single judge of Commercial Court, Indore declined to grant interim relief to Pernod Ricard on the premise that the trademarks as a whole are not similar, ‘Pride’ is commonly used and no exclusivity can be claimed over the bluish shade. Aggrieved by the court ruling, Pernod Ricard filed an appeal before the Madhya Pradesh High Court (Pernod Ricard v J.K. Enterprises, Misc. Appeal No. 232 of 2021).

Further to arguments advanced by both parties, the appeal was dismissed by the division bench and the court order mentioned that :

• • rival trademarks (‘Blenders Pride’ v ‘London Pride’) cannot be dissected for comparison.
  • labels on the rival products have different patterns.
  • PRIDE is commonly used by several entities.
  • the products are used in respect of ‘premium’ or ‘ultra-premium’ whisky and the consumers of such products are literate having reasonable intelligence to distinguish between the bottles of ‘Blenders Pride’/ Imperial Blue’ and ‘London Pride.’

Pernod Ricard has now filed an appeal before the Supreme Court challenging the order passed by Madhya Pradesh High Court.

7. Biscuits war involving OREO v FABI!O knocks Delhi High Court

In the case of ‘Intercontinental Great Brands v Parle Product Private Limited’ CS(COMM) 64/2021, Intercontinental Great Brands (Intercontinental), owner of the OREO brand of biscuits sold in a distinctive packaging brought trademark infringement and passing off suit against Parle Product Private Limited (Parle) alleging that Parle’s trademark FAB!O (though written with an exclamation for letter I) is likely to be pronounced as FABIO which is deceptively similar to the trademark OREO, trade dress of the FAB!O biscuits is deceptively similar to the OREO biscuits, design of the FAB!O  biscuit infringes the design of the OREO cookie  in which Intercontinental holds a subsisting trademark. Parle strongly disputed these claims and submitted that in any case the use of the house mark  negates chances of confusion.

Parle was restrained from using the trademark FABIO / FAB!O and the impugned trade dress till the disposal of the suit considering:

• • similar features between the two packs in which the two cookies are sold and the likelihood of association between FAB!O and OREO brands.
  • Parle had declared that its FAB!O trademark is to be pronounced as ‘fabee-yo’, which is an admission that FAB!O is to be pronounced like OREO.
  • Parle has not explained the reason to add an ‘O’ to its existing FAB! trademark for cream-filled chocolate sandwich biscuits. Merely citing third parties using trade dress similar to OREO is not sufficient to establish it is common to the trade.

8. Use of keyword in Google Ads program without confusion is not infringement

MakeMyTrip (India) Private Limited (MIPL) filed a suit against the travel portal, booking.com alleging infringement of its trademarks, passing off, rendition of accounts etc. to restrain it from using its registered word trademarks (‘MakeMyTrip’, ‘MMT’ and ‘MakeMyTrip Hotels Ltd.’) as keywords through the Google Ads Program amounting to infringement of its trademarks. MIPL impleaded Google to ensure that booking.com does not promote their business by using MIPL’s word trademarks as keywords on the Google Ads Program.

The single judge concluded that the use of the registered trademark as a keyword constitutes trademark infringement and restrained the defendants (Google LLC, Google India and Booking.com) from using the trademark ‘MakeMyTrip’ as a keyword on the Google Ads Program. Aggrieved by the order dated 27^th April 2022, Google filed two appeals against MIPL before the Division Bench of Delhi High Court challenging the ad interim order (Google LLC v MakeMyTrip (India) Private Limited and Others [FAO(OS) (COMM) 147/2022 & CAV 155/2022 & CM Nos. 27148/2022 & 27149/2022).

The division bench set aside the order passed by the single judge and concluded that the use of MIPL trademarks as keywords on the Google Ads program by competitors absent any confusion, unfair advantage, dilution or compromise of the trade mark, is not infringement.

9. Bolt fails to establish substantial spillover of trans-border reputation in India

Bolt Technology OU (BT) brought a suit in November 2022 to restrain Ujoy Technology Private Limited & Another (UT) from passing off their goods/services under the trademarks BOLT and . BT adopted ‘BOLT’ in 2018 to provide electric ride sharing/hailing, food and grocery delivery, rental of cars, e-bikes and scooters and EV (electric vehicle) and charging stations/docks. Interestingly, UT also adopted the BOLT name in the same year (2018) for its EV charging stations.

BT relied upon global use and registrations obtained in 92 countries for BOLT trademarks, articles in Indian magazines, over 2 lakh mobile App downloads in India, marketing campaigns in Indian cities in February 2020, electric charging docks launched internationally in October 2021 and spillover of their reputation in India.  UT relied upon invoices of BOLT chargers in India since November 2020 and installation of over 100 charging stations having over 1000 users by January 2021.

The single judge ruled that BT has failed to establish a significant presence in India and spillover of trans-border reputation into India in respect of the  trademark for EV charging.  Aggrieved by the ruling of single judge refusing to grant an injunction, BT filed an appeal before the Division Bench (Bolt Technology Ou v Ujoy Technology Private Limited & Another, FAO(OS) (COMM) 45/2023)

The two-judge bench upheld the order of a single judge and observed that the Appellant failed to meet the test of significant and substantial spillover of reputation and goodwill in India. The court categorically observed that global reputation without reputation and goodwill in India is insufficient for establishing transborder reputation.

10. Every formulation of an API may not be equally efficacious.

Dr Reddy’s Laboratories (DRL) filed the suit against Smart Laboratories (SL) to protect its registered mark AZIWOK and sought an injunction against Smart Laboratories of a deceptively similar mark (phonetically, visually, and structurally) AZIWAKE containing same formulation i.e., Azithromycin used for anti-bacterial treatment.

SL objected to the grant of interim injunction and raised the following objections:

• 1. ‘AZI’ prefix is common to trade, and the same has been taken from the active ingredient ‘Azithromycin’, and several marks co-exist with the prefix AZI.
  2. It is a common practice in the pharmaceutical business to coin a brand by taking elements of the active ingredient/salt.
  3. The competing marks are different, and their packaging is also different. Thus, the passing off does not arise.

The Court held that:

1. 1. there is no real distinction between AZIWOK and AZIWAKE in their “look” and “sound,” especially as the DRL has a word mark registration for the word AZIWOK. The Court concluded that AZIWAKE is phonetically similar to AZIWOK as they sound deceptively alike to the ear.
   2. AZIWOK and AZIWAKE are phonetically deceptively similar to the consumer of average intelligence and imperfect recollection.

The Court injuncted SL from using the mark AZIWAKE with or without any prefixes or suffixes, in respect of pharmaceutical preparations or for any other allied of cognate goods or services holding the mark to be phonetically similar to the DRL’s AZIWOK.

Issues to be decided in 2024

2024 promises to be another exciting year for the stakeholders as The Intellectual Property Division (IPD) of Delhi High Court hears cases that would impact the brands use and protection in the digital space.  Specifically, the Division Bench (DB) of Delhi High Court (DHC) is expected to decide number of interesting issues that will shape the brand enforcement. In no particular order, this year has the following issues in pipeline.

• 1. whether a plaintiff in a civil suit is entitled to a complete refund of court fees or only 50% of it where the dispute is settled between the parties privately, without the intervention of any ADR mechanism.
  2. The fate of the appeal filed by the India Mart Intermesh Limited challenging the decision passed by single judge in favour of Puma SE. The Court ruled that providing PUMA as an option in the drop-down list, visible even to the seller only at the time of registering on the India Mart platform constitutes “use of a mark” leading to confusion among consumers. Thus, India Mart use is infringement of PUMA trademark.
  3. whether the decision mentioning there is no requirement to stay the civil suit during the pendency of the cancellation petition instituted under Section 124 of The Trade Marks Act, 1999 is sustainable, in view of Section 124(2)? The issue has arisen due to divergent opinions expressed by the two judges of the Delhi High Court in decisions dated 20^th December 2022 and 27^th September 2023 whereby the earlier decision held that the cancellation petition filed under Section 124(1)(ii) can be clubbed with the civil suit and there is no requirement to stay the civil suit.
  4. Last but not the least, Pernod Ricard appeal at the Supreme Court of India against the decision of Madhya Pradesh High Court holding that there are no similarities between the two whisky brands – Blenders Pride and London Pride and their trade dress will once again bring issues relating to part of mark being copied. This appeal is likely to be decided in 2024.
     

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Authors : Ranjan Narula and Abhishek Nangia