Here is our recap of last week’s top IP developments including summary of the post on DHC’s decision in Forest Essentials v. Baby Forest. This and much more in last week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Initial Interest Confusion Clash: Forest Essentials Battles Baby Forest at the DHC
Is it still trademark infringement if confusion regarding similar marks doesn’t carry on through to the completion of a transaction? On a prima facie look, a Division Bench of the Delhi High Court says no, disagreeing with the interpretation of the Single Judge. Aditya Bhargava takes a look at this clash between the Courts and critiques the Single Judge’s approach, explaining how its interpretation of continuing confusion overestimates the consumer’s sophistication. Read on to know more.
Case Summaries
Glenmark Pharmaceuticals Ltd vs Gleck Pharma Opc Pvt Ltd on 13 June, 2024 (Bombay High Court)
The plaintiff approached the Bombay High Court seeking a permanent injunction against the defendant’s use of “Xigamet”, which it alleged to be deceptively similar to its “Zitamet” mark. The Court compared the two marks and held that the marks are phonetically, structurally similar. Applying the Cadila principle of adopting a stricter approach while comparing competing marks for two medical products, the Court held that “Mere existence of the slightest probability of confusion in case of medicinal product marks requires that the use of such (impugned) mark be restrained.”
Pidilite Industries Limited vs Astral Limited on 13 June, 2024 (Bombay High Court)
The plaintiff alleged infringement of the design of its coex plastic containers by the defendant. It argued that the design of its container was novel and original and was not published in India. The defendant argued that the suit design is not novel/ has been previously published and the suit design is disentitled from protection under Section 19 (1)(e) as it does not appeal to the eye. The Court disagreed with the assertions of the defendant and held that the plaintiff’s design does appeals to the eye and relied on the unique pattern of vertical lines and elongated ridges around the outer surface, multiples grooves below the cap connecting to the seal, the unique ring of the container, and the unique design at the edge of the bottle. The Court, on a prima facie assessment held that the alleged prior art cited by the defendant were dissimilar to the suit design and reiterated that mosiacing is not permissible i.e. an article cannot be broken down into parts, integers, or elements for comparison. In light of the above, the Court granted an interim injunction to the plaintiff.
Ajanta Pharma Limited vs Prahem Laboratories Llp on 12 June, 2024 (Bombay High Court)
The order concerns the plaintiff’s request for an ex-parte ad interim relief against the defendant’s use of the impugned “Zara” marks. The plaintiff is an established manufacturer, marketer, and exporter of pharmaceuticals under its registered trademark ‘ZAHA’ with market presence in Iraq, where the trademark is also registered. It is alleged that the defendants are also exporting and selling its drug for bacterial infections in adults and children under the mark ‘ZARA’ in Iraq. It was alleged that the defendant’s use of the impugned “Zara” mark will amount to infringement of the plaintiff’s mark and passing off. The Court found the two marks to be deceptively similar. It was requested that the interim relief be granted without notice to the defendants as they are likely to act in an adverse manner by removing all stock of the impugned goods and flooding the market with it. It was conversely speculated that the defendants may also destroy all goods bearing the trademark in question. The Court accepted this request and was satisfied to grant an ex-parte ad interim injunction.
Under Armour v. Anish Agarwal on 29 May, 2024 (Delhi High Court)
It was alleged that the defendant’s use of the mark “Aero Armour” was deceptively similar to the plaintiff’ “Under Armour” marks for clothing and accessories. Applying the anti dissection rule and the holistic appreciation test, the Court compared the two marks and held that the competing marks are not similar. The Court emphasized the difference in motivation behind the defendant’s use of the mark to carve a thematic category of apparel. The Court also considered that the parties cater to different segments of the society and also observed that the plaintiff has not produced any evidence to establish confusion between the two marks. Relying on the above reasons, the Court refused to grant an ad interim injunction to the plaintiff.
Other IP Developments
- Delhi High Court to have new roster for the IP Division w.e.f. July 1, 2024. Justice Mini Pushkarna and Justice Saurabh Banerjee to take charge over the IPD, while a division bench of Justice Vibhu Bakhru and Justice Sachin Datta to preside over the IPR Appellate Division.
- Recognizing Hindi film director Karan Johar’s personality rights, the Bombay High Court grants an interim injunction to the director, restraining the release of the film “Shaadi ke Director Karan aur Johar”.
- Delhi High Court grants ex-parte ad interim injunction to journalist Rajat Sharma and India TV, restrains use of “Baap ki Adalat” and “Jhandiya TV” by a satirist.
International IP Development
- Societe du Tour de France loses trademark battle with German gym chain over figurative Tour De X mark.
- JR Apparel files a trademark infringement suit against Drake for infringing its “Members Only” mark.
- Youtube removes Chahat Fateh Ali Khan’s recent song “Bado Badi” over copyright infringement.
- A US District Judge holds that celebrity trainer Tracy Anderson’s exercise methods are not protected under copyright laws, refuses to restrain Mehan Roup for allegedly copying its signature workout.
- US Supreme Court refuses to allow “Trump Too Small” to be trademarked for exclusive use over T shirts and other merchandise.
