In, Vimal Dairy Limited v. Gujarat Tea Depot Company the matter regarding generic words was raised and the Gujarat High Court agreed with the Defendant’s argument that “generic, and common word cannot be protected unless and until it has acquired secondary meaning.”
Court stated that, it appears that now it is prima facie Res integra, that instead of dissimilarity of trade products, the Court has to see prima facie, similarities in the product, since the man of average prudence or average intelligence cannot be deceived in dealing with purchasing the goods in the market, since in the present case, the product Tea (“WAGH BAKRI PREMIUM”) is such, every type of persons may purchase including, middle class, rich person and others, they may not be deceived by purchasing the goods of so called Appellant / Original Defendant. Prima facie, by allowing product of the Appellant / Original Defendant, will cause confusion in the minds of public at large.
In the case of Sunil Mittal v. Darzi On Call
– ‘’a distinction has to be drawn between the use of a word as descriptive of the services provided under a trademark, and the use of that word in the trademark itself’’
– “if a person, for the first time, starts using a word that had previously only been used as descriptive of services, as a trademark – that innovation to use it as a mark was deserving of trademark protection’’
Akhil Chandra Vs. Registrar of Trademarks
The Hon’ble High Court of Delhi dealt with such a situation in the case of Akhil Chandra Vs. Registrar of Trademarks.
The Appellant was the owner of the Trademark STUDIO MOSAIC. The Registrar of Trademarks refused the said trademark application of the appellant on the following grounds:
9(1 )(a) – The trade mark is devoid of any distinctive character, that is to say, not capable of Distinguishing the goods or services of one person from those of another person
When the matter was listed before the Hon’ble High Court of Delhi, the appellant assailed the impugned order by submitting that the mark in question was a combination of two common dictionary words.
The Hon’ble High Court of Delhi was pleased to reject the objection under Section 9 of the Trademarks Act 1999 raised by the Registrar of Trademarks by observing that the words “STUDIO” and “MOSAIC“, though common dictionary words, when joined together become arbitrary for the goods in question and do not have any connection with the goods in question.
As a result, it was determined that the STUDIO MOSAIC trademark’s subject matter qualified for advertisement in the Trade Mark Journal.
LACOSTE S.A VS. SURESH KUMAR SHARMA (CS (COMM) NO.534/19)
Lacoste S.A., the French clothing major, had filed an application for a permanent injunction in the Delhi District Court against Suresh Kumar Sharma. Lacoste contends that Suresh Kumar Sharma was selling shirts bearing the “Lacoste” mark and thus infringing its trademark and passing off. The Patiala House Court, New Delhi District observed that Suresh Kumar Sharma had no right to use the “Lacoste” mark and further held that his actions led to undue enrichment and created confusion amongst the general public. Thus, the court granted permanent injunction restraining Suresh Kumar Sharma from using the “Lacoste” mark.
MARICO LIMITED VS ABHIJEET BHANSALI (NOTICE OF MOTION NO. 10
Marico Ltd., one of India’s leading FMCG (Fast Moving Consumer Goods) company, had recently filed an application at the Bombay High Court, seeking an interim injunction against Abhijeet Bhansali, a YouTuber/V-Blogger who operates the YouTube channel “Bearded Chokra”. It was alleged by Marico that Abhijeet Bhansali in his video, made comments disparaging or denigrating Marico’s Parachute Coconut Oil, thus infringing its trademark “Parachute”. The Bombay High Court while passing an injunction against Abhijeet held that there was unauthorized use of the trademark “Parachute” and under the garb of educating the public one cannot provide misleading information to disparage any product. The court also ordered to take down the YouTube video uploaded by Abhijeet and emphasised the need for higher responsibility on the part of a social media influencer.
KAIRA DISTRICT COOPERATIVE MILK PRODUCERS UNION LTD AND ANR.
In this case, the Calcutta High Court passed an interim order against the Defendants, restraining them from using the trademark ‘Amul’ in connection with their products. The case was instituted by Kaira District Cooperative Milk Producers Union Ltd., who are the proprietors of the trademark ‘Amul’. It was contended in the Plaint, that the Defendants were incorporating the ‘Amul’ trademark with a deceptively similar font in the labels of candles marketed by them, which was alleged to be an act of trademark infringement. The counsel appearing for the Plaintiff also pointed out that the ‘Amul’ trademark was recognised as a well-known mark by the Trademark Registry, and as the Defendant’s products were being sold at cake shops and confectionaries, there exists a high likelihood that consumers would associate such infringing products with the Plaintiff. The Calcutta High Court duly passed an order of temporary injunction restraining the Defendants from using the ‘Amul’ mark until the disposal of the suit.
EL BAIK FOOD SYSTEMS CO. S.A VS ARSALAN WAHID GILKAR & ANR
In a recent decision, the Delhi High Court granted an Ex-parte Injunction against use of the trademark ‘Albaik’ for restaurants and related services. The plaintiff in the case was the Albaik Group based out of Saudi Arabia, which started its business in 1986. The plaintiff briefly operated under the mark, Albaik, in India between 2017 and 2020, and had to shut down its operations due to the COVID lock downs. It also has several trademark registrations over the mark, Albaik, in word and logo forms.
The Defendants in the case were offering franchises over the plaintiff’s mark by charging a franchise fee of five (5) percent, and details of the same were placed on the defendants’ websites and social media pages. Convinced with the prima facie case of the plaintiff, the Court granted the Ex-parte injunction in favor of the plaintiff.
NIKE INNOVATE C.V VS. G.B. SHOE (CS (COMM) NO.542/19)
Nike filed a suit against three footwear companies, G.B. Shoe, Vishal Footwear and New Hira Shoes, located in Agra, the Defendants, for violating the trademark(s) of Nike
Delhi District Court has passed a permanent injunction,the Court noted that the Defendants’ adoption and usage is creating undue enrichment by creating confusion in the minds of customers and ordered the Defendants to pay Nike a nominal damage of Rs. 50,000 each.
PARLE PRODUCTS PVT. LTD. V JP & CO (1972) 1 SCC 618
The Appellant was the manufacturer of biscuits and owners of registered trade mark being a wrapper. The wrapper was used in connection with the sale of their biscuits known as “Parle’s Glucose Biscuits” printed on the wrapper. the Respondent was selling biscuits in a wrapper which was deceptively similar to their registered trade mark of Appellant.
The Supreme Court held that the packets were of the same size and color scheme and although the design was not the same, a close resemblance that could cause confusion. Hence there is an action for infringement, the Plaintiff must, no doubt, make out that the use of the Defendant’s mark is likely to deceive.
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