Category Archives: Trademark

Designs Overlaps in IP Trademark

Passing Off and Design Infringement: The Conflict


A few days ago, I had discussed a Bombay HC Order involving Cello and Modware. Justice Patel had provided relief to Cello on account of Cello successfully establishing, prima facie, both passing off and design infringement. Prashant, after reading the piece, put forth the following query: “If the design of the bottle is acting as an indicator of source, doesn’t it follow that it can be registered as a trademark which means it is incapable of being registered as design because it falls…


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Trademark

Calcutta HC Allows Spartan Online to Use ‘thespartanpoker’ in Domain Name Spat


The Calcutta High Court, on the 12th of May, allowed Spartan Online to use the domain name ‘www.thespartanpoker.com’ in Rajat Agarwal v. Spartan Online (read the order here). Glaws had previously covered this dispute in March – read here. This is an interesting order, both for the observations on the law governing domain names, and for the parties involved. Read our previous posts on domain names here. Factual Background The Plaintiffs and the Respondents had entered into a joint venture…


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Designs Trademark

Cello v. Modware #Design Infringement #Passing Off


I write to bring you an analysis of a Bombay HC Justice Patel Order that discusses passing off and design infringement in a mind-bogglingly interesting context… two water bottles. While being incredibly clear at times, the Order was equally ambiguous at places. I shall point these “ambiguities” out over the course of this piece and would be incredibly grateful if readers could shed some light. All assertions of law I make in this piece have been sourced from Venkateswaran on…


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Trademark

Ajanta Pharma v. Theon Pharmaceuticals #TM Infringement


I write to discuss a recent Bombay HC Justice G.S. Patel Order on trade mark infringement. Though the core reasoning involved is rather straightforward, a few of the questions and arguments raised deserve our attention. Though these aspects might not have been relevant to the final result in the current fact scenario, they are very much relevant in the larger scheme of jurisprudence. Prior to delving into the trickier aspects of the order, let us set aside the less convoluted portion (though…


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Trademark

Arnab Goswami’s Republic TV Finds Itself in the Eye of Yet Another Legal Storm; Times Group Claims That Arnab Is Not Entitled to Use the Phrase ‘Nation Wants to Know’


Regular readers of this blog may recall that we had blogged about the legal controversy surrounding the use of the word ‘Republic’ as the title of Arnab Goswami’s new show earlier this year. That controversy, which arose out of Subramanian Swamy’s assertion that the commercial use of the word ‘Republic’ is prohibited by the Emblems and Names Act can best be described as a ‘dog that did not bark’, inasmuch as Goswami decided to rename the show Republic TV to…


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Trademark

The ‘Well Known’ Trademark under the New Trade Mark Rules, 2017: Is the New Procedure Constitutional?


The new Trade Mark Rules, 2017 recently notified and discussed over here on SpicyIP, have generated a lot of buzz for creating a new procedure that allows the Registrar to declare trademarks as ‘well known’. The new Rule 124 allows any trade mark owner to file a request in Form TM-M requesting the Registrar to declare a trademark ‘well-known’. As most of our readers may know, the ‘well-known’ tag is the ‘holy grail’ for trademark owners – everybody wants it…


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Trademark

Sunil Mittal v. Darzi on Call: Of Translations and Descriptive Trademarks


On the 19th of April, 2017, the Delhi High Court passed an order in Sunil Mittal v. Darzi on Call, the order for which is available here. This case is very interesting for two reasons: First: The Court clarifies the law on descriptive trademarks – dealing with the fascinating case of the trademark status of a translation of a descriptive term. Second, the Court also expounds on the law on trademark squatting. Factual Background The Plaintiff’s, Mr. Sunil Mittal and…


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Trademark

Territorial Jurisdiction in Infringement Suits: Delhi HC Returns Plaint for Want of Cause of Action


Readers of SpicyIP will know that the issue of territorial jurisdiction in copyright and trademark suits has been a constant point of discussion on this blog (see here for all posts on jurisdiction). We bring to you yet another decision of the Delhi High Court, which furthers this discussion and asserts that a strong causal link needs to be established for invoking the territorial jurisdiction of a court. This order reinforces the shift in jurisdictional jurisprudence wherein the plaintiffs are…


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Geographical Indication Trademark

SpicyIP Fellowship 2017-18: Legal Ownership of ‘Khadi’ amidst the KVIC/Fabindia Dispute


We are pleased to bring to you another guest post by our Fellowship applicant Madhurima Gadre. Madhurima is a 4th year student at NLU, Jodhpur. This is her second submission for the Fellowship. Legal Ownership of ‘Khadi’ amidst the KVIC/Fabindia Dispute Madhurima Gadre The instances of fabric and apparel companies cashing in on Khadi’s reputation are not new. Read our previous post about a German company named Khadi Natureprodukte which registered the term ‘khadi’ in its trademark with the Office for…


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Trademark

Justice Muralidhar’s Googlee (“www.Googlee.in” v. Google)


I write to discuss a Delhi HC Justice Muralidhar order dealing with the dispute over the domain name www.googlee.in (Registered by one Mr. Khatri). Needless to say, Google was the complainant. Prior to critiquing the order, it would be beneficial to familiarize ourselves with the manner of functioning of certain organizations that are affiliated with Domain Name registration. Quick Overview of the .IN Domain Name Resolution Policy Every Domain Name that ends with “.in” (E.g. www.Amazon.in) needs to be registered…


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