ASĀVA v. RAMPUR ASAWA: Bombay HC Sets the Record Straight on Deceptive Similarity
In this post, Adyasha analyses a recent trademark infringement dispute before the Bombay High Court over the ‘RAMPUR ASĀVA’ mark for alcoholic beverages. While the Single Judge bench ruled in favour of the defendant, the Division Bench overruled that order. Adyasha first provides the factual background and the reasons behind the Single Judge’s refusal of the interim injunction. She notes that the Single Judge agreed with the defendant’s proposition that ‘ASĀVA’ was merely a description of the fermentation process and could not infringe the plaintiff’s registered ‘THE ASWA’ mark. The Division Bench, however, rightly highlighted that even if it is merely the description if it performs the function of a mark, despite the intended use, it has to be seen as one. The Division Bench also aptly overruled the Single Judge’s ruling that there was no phonetic similarity between the marks. The court also criticized the Single Judge’s analysis on likelihood of confusion based on an Australian precedent without considering the nature of consumers targeted in India. Finally, she highlights that the Division Bench was correct in overturning the Single Judge’s ruling that since the plaintiff had also applied for registering the ‘ASĀVA’ mark it is deemed to be an acknowledgement of similarity and thus operates as estoppel.
Decisions from Indian Courts
- The Delhi High Court in The Computing Technology Industry v. Bennett, Coleman and Company Limited, granted directions based on consent of both parties to avoid confusion between the defendant’s use of the ‘CHANNELCON’ or ‘CHANNELICON’ marks and the ‘CHANNELICON’ conference being organized by the Economic Times. [September 23, 2021]
- The Bombay High Court in Pidilite Industrial Ltd. v. Saathi Adhesives Pvt. Ltd., granted an ad-interim injunction restraining the defendant from using any marks deceptively similar to the plaintiff’s registered ‘FEVICOL’, ‘SH’, ‘MARINE’, and ‘D3’ marks. [September 22, 2021]
- The Delhi High Court in Alkem Laboratories Limited v. Danish Health Care Pvt. Ltd., granted an ad-interim injunction restraining the defendant from using any marks deceptively similar to the plaintiff’s registered ‘ALDIGESIC’ marks. [September 22, 2021]
- The Delhi District Court (Tis Hazari) in M/S Greenply Industries Ltd. v. M/s New Krishna Glass & Hardware, granted a permanent injunction restraining the defendant from using their ‘GREEN FOREST’ mark or any marks deceptively similar to the plaintiff’s registered ‘GREEN’ mark. The court also ordered delivery up of the infringing goods and directed the defendant to pay Rs. 1 lakh to the plaintiff for the illegal profit in addition to the plaintiff’s suit fees assessed at Rs. 22,000. [September 22, 2021]
- The Delhi High Court in RICA S.P.A v. Jatin Hemendrabhai Vora Trading as M/S Parul, granted an ad-interim injunction restraining the defendant from using ‘REAL RICA Wax’ and ‘REAL RICA’ marks for their hair removal products in light of the plaintiff’s registered ‘RICA’ mark. [September 20, 2021]
Other News from the Country
- The Patent (Amendment) Rules, 2021, came into force. These amendments, inter alia, reduce the application fees payable by educational institutions while applying for a patent.
- Tamenglong oranges and Hathei chillies of Manipur have been granted Geographical Indication (GI) protection.
- The Niyamgiri Dongria Kandha Weavers Association and the Directorate of Scheduled Castes and Scheduled Tribes Research and Training Institute (SCSTRTI) have filed a joint application seeking GI tag for the Kapdaganda shawl made by the Dongria Kondha tribe.
News from Around the World
- ‘Sports Illustrated’ model, Genevieve Morton, has sued Twitter for contributory copyright infringement alleging that its algorithm cropped her copyrighted photos posted by other users, leading to derivative use.
- The UK Court of Appeals recently ruled that an AI cannot be an inventor under the UK law in an appeal filed by Stephen Thaler.
- Marvel is suing the heirs of late comic book giants for a declaration that the Avengers characters such as Iron Man, Thor, and Spider-Man belong to Marvel. This comes after some of the heirs sent termination notice to Marvel reclaiming rights over many characters.
- The International Broadcaster Coalition Against Piracy (IBCAP) has sued the operators of the iStar IPTV Service for copyright infringement seeking over $24 million in damages in light of the publication of pirated content by the service.
- The Swiss Federal Court rejected Nestle’s appeal against the decision by a Vaud court denying protection to the shape of Nespresso capsules.