Others

SpicyIP Weekly Review (July 29 – August 4)


This week, we had a guest post by Eashan Ghosh on Suzuki Motor v. Suzuki India, a Delhi HC ruling dealing with the trademark infringement of the trade mark ‘SUZUKI’. After giving a brief overview of the case, he then delves into how portions of the judgment have been copied word to word from The Timken Company v. Timken Services, a 2013 Delhi HC judgment. He further delves into the Court’s 3 different renditions of delay and the problem in applying  these renditions with each other.

We had another guest post by Dr. Sunanda Bharti. She wrote a post on the grant of GI to Kolhapuri chappals. In her post, she highlights several factors which render the grant of GI ineffective such as lack of leather supply, rise in competition, initiatives such as PETA which fight against animal cruelty etc. She suggests that, in order to make GI effective, one’s legal rights pursuant to a grant of GI should be defended and enforced and the market should be constantly monitored for culling out counterfeits.

Other Developments

Indian

Judgments

Thermax Limited v. Thermax Engineers Private Limited – Delhi High Court [July 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “THERMAX” by using a deceptively similar mark “THERMAX” in its corporate name. In arriving at this decision, the Court noted that the Defendant had two remedies in such a case, one falling under the purview of The Companies Act, 2013 which disallowed companies from registering corporate names already registered, and other being the common law remedy of passing off. The Court further observed that the remedy provided by The Companies Act, 2013 would not restrict the jurisdiction of the Civil Court in granting an injunction under the common law regime. Therefore, the Court granted the permanent injunction stating the Plaintiff’s mark to be extremely well-known and that both the Parties dealt in similar services.

U.C. Surendranath v. Mambally’s Bakery – Supreme Court of India [July 22, 2019]

The dispute between the Parties arose on account of the Appellant’s alleged infringement of the Respondent’s mark “MAMBALLY’S BAKERY” by using an identical mark. The Trial Court granted an injunction in favour of the Respondent, and also sentenced the Appellant to imprisonment for a week in light of its wilful disobedience. The Kerala High Court affirmed this order, and the Appellant filed a Special Leave Petition before the Court in response. The Court noted that the nature of wilful disobedience, capable of imposing a criminal liability on the party had to be proved to the satisfaction of the Court. Further, the Court stated that in a subsequent visit of the Commissioner the Appellant had removed all labels from their products indicating the Respondent’s mark and that only the hoarding contained the Respondent’s mark. The Court observed that such facts would not be sufficient to prove wilful disobedience, and accordingly set aside the order of the High Court and instructed the Trial Court to decide the case afresh.

Dr. Vijay Abbot v. Super Cassettes Industries Private Limited and Others – Delhi High Court [July 29, 2019]

The dispute between the parties arose on account of the Defendant’s alleged infringement and passing off of the Plaintiff’s mark “KHANDANI SHAFAKHANA” by using it in respect of a film’s title. The Court noted at the onset that the marks of the Plaintiff were no more registered as per the Registry’s records. Having noted this, the Court observed that such concealment of essential facts by the Plaintiff was reason enough to dismiss the suit. Regardless the Court proceeded to examine the film, and stated it to be a work of fiction which impressed the importance of the socially relevant subject of sex education and stigmatization of sexual dysfunctions. The Court extensively distilled various principles pertaining to preventing the release of films and subsequently concluded that the plaint did not show any cause of action for the Plaintiff to sue. The Court further noted that the Plaintiff had not used its mark in the past 18 years and that the words forming a part of its mark were generic in nature. In light of the aforementioned considerations, the Court dismissed the Plaintiff’s plea for an injunction in respect of the film’s release or the use of its mark in the film’s title.

News

International

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