Trademarks

Author: Hemant Goyat

Background and Facts of the case:

Recently, the Bombay High Court delivered a judgement in the favour of People Interactive (India) Pvt. Ltd., over the infringement of their trademark “SHAADI.COM” by Ammanamanchi Lalitha Rani and three others. The Bombay High also declared “SHAADI.COM” a well-known mark.

A well-known trademark which has been envisaged under Section 2 (1) (zg) of the Trade Marks Act, 1999 means a mark that has gained widespread recognition among a substantial segment of the public that uses the relevant goods or services.

Well-known trademarks enjoy enhanced and exclusive legal protection. Such protection prevents unauthorized use of the mark even on dissimilar or unrelated products or services. It also prohibits the registration of identical or deceptively similar marks into company or business names without proper authorization.

In September 2013, the plaintiff discovered that the defendants were operating a matrimonial website under the domain name www.getshaadi.com, using the mark “GETSHAADI.COM” for identical services. The defendants were also found to be using “Shaadi.com” as a meta-tag and keyword, resulting in diversion of internet traffic from the plaintiff’s website to the defendants’ website.

Despite issuance of a cease-and-desist notice, the defendants did not respond. The plaintiff therefore filed a commercial intellectual property suit before the Bombay High Court seeking permanent injunction, damages, and ancillary reliefs. The defendants failed to appear or contest the proceedings, and the suit proceeded ex parte.

Issues before the court:

The main issues pertaining before the court were:

Whether “GETSHAADI.COM” is identical or deceptively similar to the plaintiff’s registered trademarks “SHAADI.COM/SHADI.COM”.

Whether the defendants’ use of the impugned domain name and mark amounted to trade mark infringement under Section 29 of the Trade Marks Act, 1999.

Whether the defendants’ conduct constituted passing off and dilution of the plaintiff’s well-known trade mark.

Whether the use of the plaintiff’s mark as meta-tags and keywords amounted to actionable “use” under trade mark law.

Whether the plaintiff was entitled to permanent injunction, damages, and costs.

Pleadings by the Plaintiff:

Well-known registered trade mark: The plaintiff argued that “Shaadi.com” is a registered and well-known trade mark with long, continuous, and extensive use, enjoying massive goodwill in matrimonial services.

Deceptive similarity and infringement: The mark “getshaadi.com” wholly incorporated the plaintiff’s mark, with the addition of “get” being insignificant, thereby causing infringement under Section 29 of the Trade Marks Act.

Passing off and consumer confusion: The defendants used the impugned mark for identical matrimonial services, leading consumers to believe there was an association with the plaintiff.

Dishonest use of meta-tags: The defendants used “Shaadi.com” as meta-tags and keywords, diverting about 73% of web traffic, amounting to online piracy and bad faith.

Entitlement to injunction and costs: Due to dishonest and mala fide adoption of defendants, the plaintiff sought permanent injunction, damages, and exemplary costs.

Judgement by the Court:

Infringement and passing off established: The Court held that “getshaadi.com” is deceptively similar to “Shaadi.com” and its use for identical services constituted infringement and passing off.

Meta-tag use amounts to trade mark use: Use of the plaintiff’s mark as meta-tags and keywords was held to be actionable “use” causing actual consumer confusion and diversion of traffic.

com declared a well-known trade mark: The Court recognised “Shaadi.com” as a well-known trade mark under the Trade Marks Act, 1999.

Permanent injunction granted: Defendants were restrained from using the impugned mark, domain name, and related infringing material.

Exemplary costs awarded: Defendants were directed to pay ₹25 lakhs as costs, reflecting the dishonest conduct and commercial nature of the suit.

Conclusion:

The Bombay High Court’s decision reinforces strong protection for well-known trade marks in the digital environment. By holding that the use of a registered mark as a domain name and meta-tag constitutes infringement and passing off, the Court addressed modern forms of online piracy. The recognition of “Shaadi.com” as a well-known trade mark and the award of exemplary costs underline the judiciary’s firm stance against dishonest commercial practices and brand dilution.

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Author: Hemant Goyat

The Trademarks Registry at New Delhi under the Controller General of Patents, Designs, and Trade Marks (CGPDTM) passed a landmark and historic order of acceptance of a Smell/Olfactory mark, first of its kind in India. The application was filed by Sumitomo Rubber Industries Ltd., located in Japan, which aimed to seek registration of a small mark. The mark has been described as, “Floral Fragrance/ Smell Reminiscent of Roses as applied to Tyres” under Class 12.

A smell mark is a trademark in which a distinctive scent is used to identify the source of goods or services and distinguish them from others in the market. In simple terms, it is a smell that, when perceived by consumers, immediately connects them to a particular brand.

What was the objection from the Registry?

The Trademarks Registry examined the application and raised objections under Sections 9(1)(a) and 2(1)(zb) of the Trademarks Act, 1999, for lacking distinctiveness and not being supported by a graphical representation, which were mandatory statutory requirements. The Registry questioned whether the mark was capable of distinguishing the applicant’s goods from those of others, as required under the Act, and whether it could be clearly and precisely represented on the Trade Marks Register so as to inform the public and competitors of the exact subject matter of protection.

What were the issues during the hearings?

There were issues such as graphical representation, distinctiveness, and scope of protection during the hearings before the Trademarks Registry, which have been discussed as hereunder:

1. Objection on Graphical Representation

The Registry initially objected to the application under Sections 2(1)(zb) and 9(1)(a) of the Trade Marks Act, 1999, primarily on the ground that the mark lacked graphical representation.

Since smells are intangible and invisible, the Registry questioned whether the scent could be represented in a manner that was clear, precise, self-contained, and objective.

2. Lack of Distinctiveness

The second major objection related to distinctiveness. The Registry examined whether the smell could truly function as a source identifier, or whether it was merely decorative or descriptive in nature.

3. Scope and Clarity of Protection

The Registry also raised concerns regarding the unclear scope of protection, particularly how the boundaries of a smell mark could be defined and understood by the public and competitors.

Analysis:

The smell marks were not included in the Trademarks Act, 1999. Though, according to section 2(1)(m), “marks include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;”

This definition was considered inclusive, meaning that more categories could be added to it, including smell marks. However, the main issue was the requirement of graphical representation, because a mark cannot be registered unless it can be represented graphically. This created a particular difficulty for smell marks.

To overcome this problem, the applicant with the assistance of professionals from IIIT Allahabad, prepared a graphical representation of the smell mark which attempted to translate a smell into a form that could meet the legal standard.

The graph was described as- “A complex mixture of volatile organic compounds released by the petals interact with our olfactory receptors, creating a rose-like smell. Using the technology developed at IIIT Allahabad, this rose-like smell is graphically presented as a vector in the 7-dimensional space wherein each 10 dimension is defined as one of the 7 fundamental smells, namely floral, fruity, woody, nutty, pungent, sweet and minty.”

Order and Outcome:

The CGPDTM concluded that the smell mark satisfied all statutory requirements under the Trade Marks Act, 1999. The application was accepted and directed to be advertised under Section 20 as an “olfactory trademark”, along with its scientific graphical representation and descriptive statement. This marked the first formal acceptance of a smell mark in India.

Impact in India:

Though, this order was the first of its kind in India. Let’s see what can be the impact of this order in India:

1. Expanded Interpretation of Graphical Representation:

One of the biggest hurdles for smell marks worldwide has been the requirement that a trademark must be capable of graphical representation. India’s registry accepted Sumitomo’s innovative seven-dimensional vector chart as sufficient graphical representation. This signals a more flexible, science-inclusive approach to what counts as graphical.

2. Boost for Sensory Branding & Marketing Innovation:

Brands in India now have greater scope to protect sensory features such as smell as part of their brand identity. This enhances possibilities for innovative branding strategies where sensory elements become source identifiers, going beyond traditional logos or names.

3. Recognition of Non-Traditional Marks:

The order confirms that the statutory definition of a trademark in India includes smells as long as they meet legal criteria i.e. distinctiveness and graphical representation. This opens the door for future smell marks and other unconventional marks (like sound marks) to be considered.

4. International Alignment & Influence:

While many other countries like UK have struggled with smell marks due to graphical representation requirements. This order potentially places India at the forefront of adapting global IP law to sensory trademarks. This could influence future developments and encourage applicants to test similar claims internationally.

Conclusion:

The acceptance of Sumitomo’s rose-scent mark marks a turning point in the evolution of Indian trademark law. By recognising an olfactory mark for the first time, the Trademarks Registry has demonstrated a progressive and adaptive approach towards non-traditional trademarks in a rapidly evolving commercial landscape. The order reflects a willingness to move beyond purely visual marks and to acknowledge that brand identity can also be built through sensory experiences such as smell.

At the same time, this decision highlights the growing role of science and technology in intellectual property, particularly in meeting the long-standing requirement of graphical representation. While practical challenges relating to examination, enforcement, and infringement of smell marks remain unresolved, the Sumitomo order undoubtedly opens a new chapter for sensory branding in India. It sets a precedent that is likely to encourage future applications for unconventional marks and stimulate further legal debate on the protection of sensory and other unconventional trademarks.

Author: Hemant Goyat

Introduction:

The Delhi High Court recently passed a judgement in favour of Tesla Inc. in the trademark infringement case against Tesla Power. The suit against the Defendants, Tesla Power India Private Limited & Ors. was instituted over the use of the marks Tesla Power, Tesla Power USA, and similar logos like and , including the domain names www.Teslapowerusa.ae, www.Teslapower.in, www.teslapower.com, www.Teslahealthylife.com.

Background:

The present dispute arose from a trademark infringement and passing off action instituted by Tesla Inc., a globally renowned company engaged in the field of electric vehicles and clean energy solutions, against Tesla Power India Private Limited.

Tesla Inc. asserted that it is the prior adopter, user, and registered proprietor of the mark “TESLA” in several jurisdictions across the world and that the mark has acquired the status of a well-known trademark on account of long, continuous, and extensive use.

Submissions made by Plaintiff:

1. Infringement and passing off-

The Defendants were alleged to have infringed and passed off the Plaintiff’s trademark by using and applying for the marks “TESLA POWER” and “TESLA POWER USA” bearing application nos. 4855017 and 4855802 under Class 9.

2. Actions taken by the Plaintiff-

The Plaintiff asserted that the actual confusion arose when the Defendants announced their entry into the electric vehicle business in December 2021. The Plaintiff thereafter issued a cease-and-desist notice on 18 April 2022 seeking cessation of use and withdrawal of the impugned marks.

3. Defendant’s ignorance-

The Plaintiff has argued that in March 2023, the Defendants published a full page advertisement in The Times of India announcing the launch of electric two-wheelers using an American technology and claiming a Pan India sales and Service Network, which prompted the Plaintiff to institute the present suit.

Submissions made by Defendant:

1. Adoption inspired by Nikola Tesla-

The defendants contended that the adoption of the marks was inspired by the scientist Nikola Tesla and was made in good faith, without any intent to mislead or infringe.

2. No exclusive rights-

The defendants argued that the Plaintiff has wrongly claimed exclusivity over the mark “TESLA”, which is common to trade and widely used by third parties. They further submit that “TESLA” is a common surname associated with the scientist Nikola Tesla and that no single entity, including the Plaintiff, can claim exclusive rights over it.

3. Delay in filing suit-

The defendants pointed out a delay of over two years in the Plaintiff’s filing of the suit, during which their business had grown substantially.

4. Plaintiff’s lack of reputation and goodwill-

The defendants submitted that the Plaintiff relies only on a promotional activity in 2010 to claim use in India. They contended that such casual, intermittent, and experimental use is insufficient to establish reputation or secondary meaning.

5. Distinctiveness in goods-

The defendants asserted that their products like lead-acid batteries and inverters are fundamentally different from the Plaintiff’s electric vehicles and battery systems, with distinct trade channels and customer bases. They further argue that batteries do not constitute structural automobile parts under Class 12, and that lead-acid batteries are technologically and commercially distinct from electric vehicle battery systems.

Judgement:

1. Trademark Infringement-

The Court found that Tesla Inc.’s registered marks in Class 9 cover inverters, and the defendants’ use of “TESLA POWER” and “TESLA POWER USA” for similar products amounts to clear infringement.

2. Goodwill and Reputation-

Tesla Inc. has established strong goodwill and global recognition, supported by media coverage, revenue, and the popularity of its CEO. The defendants’ use of the marks was prima facie dishonest.

3. Likelihood of Confusion & Passing Off-

Actual confusion was observed among consumers and media, and the addition of terms like “POWER” or “USA” does not prevent it. Allowing the defendants to use the marks could harm the plaintiff’s reputation.

4. Defendants’ Arguments Rejected-

Claims that “TESLA” is generic, common to trade, or co-used by third parties were dismissed.

5. Interim Relief Granted-

The Court held that the Plaintiff and Defendants’ marks, products, trade channels, and consumer base are effectively identical. Accordingly, an interim injunction was granted restraining the Defendants from manufacturing, marketing, or advertising EVs under the impugned marks until the suit’s final disposal.

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FAQ

1. What was the dispute between Tesla Inc. and Tesla Power India?

Tesla Inc. filed a trademark infringement and passing off suit against Tesla Power India for using the names “TESLA POWER”, “TESLA POWER USA” and similar domains and logos that could mislead consumers into believing an association with Tesla Inc.

2. Why did Tesla Inc. object to the use of “TESLA POWER”?

Because “TESLA” is a registered and well-known trademark of Tesla Inc. globally. The use of a confusingly similar name for related products (like batteries and EV-related goods) can mislead consumers and dilute Tesla’s brand.

3. Is adding words like “Power”, “USA”, or “India” enough to avoid infringement?

No. The Court clearly held that adding descriptive words does not eliminate confusion when the dominant part of the mark (“TESLA”) remains identical.

4. Can someone use a famous name if it is inspired by a historical figure like Nikola Tesla?

Not when the name has acquired strong trademark significance. The Court rejected the argument that inspiration from Nikola Tesla justifies commercial use when it causes consumer confusion with an existing famous brand.

5. Did the Court accept the argument that “TESLA” is a common or generic word?

No. The Court rejected the claim that “TESLA” is generic or common to trade and confirmed that it enjoys strong distinctiveness and global recognition.