Others

SpicyIP Fortnightly Review (September 17-30)


I had written a post on the latest Mahindra-Fiat dispute. The US International Trade Commission has instituted an investigation under Section 337 of the Tariff Act against Mahindra on the basis of Fiat’s complaint. Fiat alleges that its trademark in the grills of the “Jeep” has been infringed by Mahindra’s “ROXOR”. In my post, I briefly summarise similar disputes which have occurred in the past between Fiat and its rival companies (including Mahindra) and reflect upon Fiat’s “protectiveness” about its grills.

Following this, Prof Basheer discussed the influence of J. Thomas McCarthy on Indian IP law. In order to elaborate this, he cited the Hindustan Pencils case, probably the first case which relied upon McCarthy’s principles. This landmark decision lays down certain important legal principles of delays and laches and has subsequently cited extensively by our Courts.

Lastly, Prof. Gopalakrishnan provided us yet another insightful post on the Plant Varieties regime in India. In his latest write up, he describes the various obstacles which farmers have to face to register their plant variety. He uses statistical data to demonstrate these. He also undertakes a brief case study of the registration of two rice varieties, Ghadhakasala and Jeerakasala to point out further practical issues.

Other Developments

Indian

Judgments

Joy Creators Private Limited v. Natures Essence Private Limited – Delhi High Court [September 20, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “ALMOND AND HONEY” by using the mark on its packaging as part of the phrase “NATURE’S ESSENCE ALMOND & HONEY BODY LOTION”. The Court compared the packaging of the products sold by the Parties and concluded that the Defendant depicted the Plaintiff’s mark prominently in big font while writing “NATURE’S ESSENCE” in a smaller font. Thus, it was directed that the packaging should give prominence to “NATURE’S ESSENCE” and the use of the Plaintiff’s mark should not be 75% larger than the word “NATURE’S” and at the same time not occupy more than 75% of the area occupied by “NATURE’S ESSENCE”. Additionally, the Court directed the Defendant to change the shape of packaging of its product due to its similarity with that of the Plaintiff’s packaging and also refrain from the use of the tagline “SAMPOORNA POSHAN WALA LOTION” which was deceptively similar to the Plaintiff’s tagline “POSHAN WALA LOTION”.

Sukhdev Narayanlal Gehlot and Others v. Amar Chand and Others – Bombay High Court [September 19, 2018]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiffs’ registered copyright in its artistic work titled “KAVERI” by using an identical mark in respect of its goods. The order was passed by the Court in light of consent of both Parties through which the Defendant also agreed to deposit an amount of Rupees 2 lakhs towards the organization Bachpan Bachao Andolan.

Wockhardt Limited v. Torrent Pharmaceuticals Limited – Supreme Court of India [September 12, 2018]

The dispute concerned the alleged infringement and passing off the Respondent’s mark “CHYMORAL” by the Appellant in respect of a drug. The Single Judge ruled in favour of the Appellant, however the Division Bench of the Court reversed the same. This appeal was filed to point out the flaw in the Division Bench’s decision on the ground that it had incorrectly interfered with the Single Judge’s decision. The Court dismissed the same stating that the Division Bench had interfered on a matter of principle in pointing out the errors of the Single Judge. Moreover, it was noted by the Court that the Appellant had substantial sales under its new mark “CHYMOWOK” and therefore denied it a leave to file a special leave petition.

M/s. Ambience Private Limited v. M/s. Hotel Ambience and Others – Delhi High Court [September 19, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AMBIENCE” by using an identical mark in respect of its hotel business. The Court noted that the Plaintiff was the registered proprietor of the mark and its use by the Defendant was likely to cause confusion to the public as the Parties were in the same line of business.

Hindustan Unilever Limited v. Bikash Das – Calcutta High Court [September 20, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s copyright in its packet for selling the detergent powder “SURF EXCEL” by using a deceptively similar packet for selling its detergent “ACTION EXCEL”. The Court noted that the Respondent’s product was sold in a colourable and deceptive imitation of the Petitioner’s label over which it possessed copyright and hence gave rise to a prima facie case for an injunction.

M/s. Sumeet Research and Holdings Private Limited and Another v. M/s. Sipra Appliances – Delhi High Court [September 14, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “SUMEET” by using an identical and deceptively similar mark “SUMEET TRADITIONAL” in respect of manufacturing and selling mixies. The Court noted that the Plaintiff’s mark had acquired a substantial reputation and goodwill in the Indian market and the Defendant’s use of the same in relation to identical goods in the same trade channel would be a clear infringement.

Navigators Logistics Limited v. Kashif Qureshi and Others – Delhi High Court [September 17, 2018]

The dispute concerned the alleged infringement of the Plaintiff’s copyright in the lists of its customers containing their contact details by the Defendants who were previously their employees. The Court was of the opinion that the list of the customers did not constitute to be a copyrightable work as the Plaintiff had failed to disclose the identity of its author, a condition considered sine qua non by the Court in order for the Plaintiff to claim copyright in it. It was also observed that the Plaintiff being a company could not be considered as an author.

Rajesh Kumar Agarwal and Another v. Mahesh Agarwal – Calcutta High Court [September 17, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s mark “GANPATI’S” by using a deceptively similar mark “SRI GANPATI’S” in respect of catering services. In arriving at this decision, the Court noted that the Respondent has applied the Petitioner’s well known and established trademark with an intention to cause confusion and deception in the minds of the general public and thereby found a prima facie case for the grant of injunction in the Petitioner’s favour.

Lifestar Pharma Private Limited v. Go-ish Remedies Limited of Baddi – Delhi High Court [September 17, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “SCABELICE” by using a deceptively similar mark “SCABILICE” in respect of pharmaceutical preparations. In arriving at this decision, the Court took note of its prior passed interim injunction in light of which the Defendant agreed to change its mark to “SCABIES-LICE” and not use the impugned mark. An affidavit was filed stating the same and the Court decreed that though the Defendant could use the new mark as the Plaintiff consented to such use, they would remain injuncted to use the impugned mark because of its stark similarity.

M/s. Greenply Industries Limited v. M/s. Surajbhan and Sons – Delhi District Court [September 18, 2018]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “GREEN” by using a deceptively similar mark “APPLE GREEN” in respect of plywood. The Court noted that the mark “GREEN” was registered in the name of the Plaintiff for the last 30 years. Moreover, the Defendant’s adoption of a deceptively similar name had the potential to mislead the consumers and would also harm the reputation and goodwill of the Plaintiff.

Pepsico, Incorporated v. M/s. Savior Paper and Polymer Private Limited – Delhi High Court [September 13, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “PEPSI” by using an identical mark in respect of manufacturing and supplying disposable paper cups. In arriving at this decision, the Court considered that the Plaintiff was the registered proprietor of the mark and the Defendant had no real prospect of defending the claims.

Sandisk LLC and Another v. Memory World – Delhi High Court [September 12, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “SANDISK” by using an identical mark in respect of producing and selling counterfeit microSD cards. The Court noted that the Defendant had blatantly copied the Plaintiff’s mark and its packaging with an aim to benefit from its immense reputation and goodwill, thereby holding it as a fit case for infringement.

Bennett, Coleman and Company Limited and Another v. Perfect Woman Private Limited and Others – Bombay High Court [September 12, 2018]

The dispute concerned the alleged infringement and passing off of the Plaintiffs’ registered marks “PERFECT MISS INDIA” and “MISS INDIA” with respect to beauty pageants, advertisements and other allied services by the Defendants through using an identical mark or a deceptively similar mark to the same. However, no substantial reasons for the order were provided in the decision.

News

International

Leave a Reply

Your email address will not be published.