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SpicyIP Fortnightly Review (December 3-16)


This week, I had written a post on a recent Delhi HC decision dealing with a design-trademark overlap. In my post, I briefly discuss previous judicial decisions dealing with similar overlaps. I then cover the (in)famous Micolube decision and Prof. Basheer’s take on the same. Finally, I conclude that the provisions of the Design Act does not allow one to claim a remedy for passing off for a registered design and that the Delhi HC failed to consider this issue in their judgment.

SpicyIP Announcements

Pankhuri announced that Boehmert & Boehmert, Patent & Trademark Attorneys, Germany are conducting workshops on Patent Strategies in Europe For Pharma & Biotech on January 15, 2019 in Ahmedabad and on January 16, 2019 in Hyderabad.

She also informed us about a call for papers by the Centre for Intellectual Property Rights, National University of Advanced Legal Studies (NUALS), Kochi for the inaugural volume of the The Intellectual Property Law Review. They are inviting submissions on contemporary issues related to intellectual property rights.

Other Developments

Indian

Judgments

Levi Strauss & Co. v. Ram Pal – Delhi District Court [November 24, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “LEVI’S” in infringing and passing of the Plaintiff’s identical mark in respect of readymade garments and clothing and leisure shoes. The Court stated that the Plaintiff was the registered user of the mark which had acquired distinct features and secondary meaning with respect to trading in readymade garments.

Voltas Limited v. Vishal Dua & Another – Delhi High Court [November 27, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “VOLTAS” in infringing and passing off the Plaintiff’s identical mark in respect of electric irons. The Court arrived at this conclusion on the basis of the Commissioner’s statement regarding the wide usage of the Plaintiff’s mark by the Defendant.

Flamagas, S.A. & Another v. Mr. Ojas B. Shah – Delhi High Court [November 28, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “CLIPPER” in infringing and passing off the Plaintiff’s identical mark in respect of cigarette lighters. In arriving at this decision, the Court noted that the Defendant had no real prospect of defending its claim as it did not produce any arguments in support of its claims. Additionally, the Court stated that the Plaintiff’s mark had acquired reputation and goodwill globally and the Defendant’s actions amounted to clear infringement of the Plaintiff’s mark.

Arun Chopra v. Kaka-Ka Dhaba Private Limited & Others – Delhi High Court [November 28, 2018]

The dispute arose between the Parties on the ground that the Defendant was using a deceptively similar mark “KAKA KA DHABA” in infringing and passing off the Plaintiff’s mark “KAKE DA DHABA”. The Plaintiff had also filed a proceeding before the Intellectual Property Appellate Board seeking the cancellation of the Defendant’s registration. In light of this proceeding, the Court passed an interim order modifying its previous order wherein the Defendant was permitted to use the mark “KAKA KA DHABA” in respect of its already operating establishments and was additionally restrained from opening new establishments under the mark. It also ordered the Plaintiff to place a copy of the cancellation petition filed before the Intellectual Property Appellate Board before it within two weeks.

M/s. Varsha Polymers and Others v. M/s. Vajra Plastics Industry – Kerala High Court [December 3, 2018]

The dispute arose between the Parties on the ground that the Appellant was using an identical design to that of the Respondent’s registered design for PVC pipes. The District Court granted a temporary injunction in favour of the Respondent. In the appeal filed by the Appellant, the Court set aside this decree of temporary injunction on the ground that the reasons on record were not appreciated correctly by the District Court. In pointing out the main flaw of the decision, the Court noted that the certificate of design registration does not create a pre-supposition of uniqueness in favour of the registrant’s design.

M/s. Vrajlal Manilal & Co. v. Sh. Ghanshyam Das Aggarwal – Delhi District Court [December 4, 2018]

The Court granted a permanent injunction restraining the Defendant from using a label with the mark “22” on printed on it in infringing and passing off the Plaintiff’s identical seal and mark in respect of biris. In arriving at this decision, the Court noted that the Defendant had created its label with reference to the Plaintiff’s copyrighted label and hence, it was a clear case of copyright infringement. The Plaintiff also held a valid registration of the mark “22” in respect of its goods and, the Court noted that the Defendant’s adoption of an identical mark with respect to similar goods was a clear case of trademark infringement. The Court also noted that the Defendant’s continuance of infringing activities would lead to erosion of the Plaintiff’s reputation and distinctive character.

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International

 

 

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