Tag Archives: Well-known Mark

Trademark

Mountain Dew Trademark Battle: David v. Goliath or Misapplication of Prior User Rights?

by
Leave a Comment

PepsiCo has suffered a blow in its 16 year long legal battle to secure trademark rights for its famous soda, ‘MOUNTAIN DEW’. The Additional Chief Judge of the City Civil Court of Hyderabad has recently ruled that the Hyderabad-based Magfast Beverages enjoys prior user rights over an identical trademark for their packaged drinking water (‘PDW’) business. In this post, I discuss this order and certain other issues in the dispute that may require more attention. Facts The plaintiff Syed Ghaziuddin…


Read More »
Trademark

Patanjali’s Coronil Trademark: The Dilemma of Dilution

by
Leave a Comment

Recently, the Madras High Court restrained Patanjali from using the word ‘Coronil’ on its immunity-booster tablets (Arun has discussed the order, here). Soon afterwards, Patanjali obtained a stay on the order from a Division Bench, arguing that ‘coronil’ is a generic term derived from coronavirus and used by nearly 191 companies right now, and the vast difference between their product and the plaintiff’s ensures that there is no likelihood of confusion between them. This is a reasonable decision, since the…


Read More »
Trademark

The Dilemma of Determining Well-Known Marks

by
3 Comments

In a trademark infringement suit, Texmo Industries inter alia prayed that their mark, TEXMO, be declared as a well-known mark under Section 11 of the Trade Marks Act, 1999. Under sub-sections (6)-(9), this section lays down a number of factors that must be considered before granting well-known status to a mark. However, in this particular case, the issue that was raised, was whether the High Court had the power to declare a mark as well-known. This question arises primarily due…


Read More »
Trademark

A Note on Madras High Court Judgment in M/S.N.Ranga Rao & Sons vs M/S.Shree Balaji Associates

by
1 Comment

Background This Madras High Court judgment sets out certain significant pointers with respect to defensive registration (in the context of Trade Marks Act, 1958) and well-known marks (in the context of Trade Marks Act, 1999). My endeavour is to highlight these aspects of the judgment. This writ petition was filed by the petitioner praying to quash the order dated 04.01.2013 passed by the 2nd respondent viz., Intellectual Property Appellate Board. The IPAB had earlier allowed the appeal filed by the…


Read More »
Trademark

By Invitation: The Delhi High Court Declares Louboutin’s Red Sole As a ‘Well Known Trademark’

by
1 Comment

The Delhi High Court recently declared Christian Louboutin’s ‘Red sole’ a well known trademark. The decision is rather surprising and is going to once again raise questions about the Delhi High Court’s jurisprudence on well-known trademarks. We invited Eashan Ghosh to write a post for us on the issue. In his post, Eashan conducts a deep dive into the judgment delivered by the Delhi High Court in the ‘Red Sole’ case. He covers the court’s analysis of well known mark…


Read More »
Trademark

The Turning Point Cases – Part II

by
Leave a Comment

In this two-part post, Eashan Ghosh analyses the recent judgment of the Delhi High Court in Turning Point Institute v. M/s Turning Point. Part I of the post can be viewed here. The Turning Point Cases – Part II Eashan Ghosh The Defendants’ Claim of Honest Concurrent Use  On, then, to the Defendants’ claim that they were entitled to use the ‘TURNING POINT’ trademark on substantive grounds. Their submission to this effect hinged on the honest concurrent use defence. However, framed as such, this was…


Read More »
Trademark

The Turning Point Cases – Part I

by
1 Comment

We are pleased to bring to you a two-part guest post by Eashan Ghosh on the recent Delhi High Court’s judgment in Turning Point Institute v. M/s Turning Point. Eashan graduated as a gold medalist from NLSIU, Bangalore and with distinction honours from the University of Oxford. He has been in practice as an intellectual property advocate and consultant in New Delhi since 2011, and has taught intellectual property law at NLU Delhi and NLSIU, Bangalore. He has published articles in…


Read More »
Trademark

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

by
6 Comments

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…


Read More »
Trademark

Holding Mother Dairy as a Well Known Mark, Delhi High Court Grants Permanent Injunction to Restrain its Misappropriation

by
Leave a Comment

In a recent judgment [Mother Dairy Fruit and Vegetable versus S.K. Raheem], Justice R.K. Gauba of the Delhi High Court granted a permanent injunction in favour of Mother Dairy, restraining the use of its trademark/trade dress by the defendant in its milk products sold under the name Vinay Milk. One of the key factors undergirding the Court’s conclusion was that Mother Dairy is a well-known mark, meriting stronger protection than a trademark simpliciter. We have covered judicial determinations recognizing a…


Read More »
Trademark

‘Tata’ is a well-known mark, reaffirms Delhi HC judgment in Tata Sons Limited v. Ram Niwas & Ors

by
Leave a Comment

The Plaintiff filed the present suit inter alia seeking a decree of permanent injunction restraining the Defendants from directly or indirectly dealing in the business of providing transport; packaging and storage of goods; travel arrangement, packaging / moving services under the domain name www.tatapackers.com and/or using any trademark/ description/name/device bearing the trademark TATA or any other mark which is deceptively similar to the Plaintiff’s trademark TATA. [The judgment is available here] It is contended that the Plaintiff has been continuously using…


Read More »