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Restraining Order Stopping Anyone From Using Similar Mark As Tobacco Company AFZAL: Delhi High Court

Title: Sopariwala Exports & Ors. Versus Ashraf V

Citation: CS(COMM) 259/2021

Decided on: 09.10.2023

Coram: Hon’ble Mr. Justice C. Hari Shankar

Introduction:

The current matter in hand is regarding the use of trademark AFZAL, Sopariwala Exports has the right to iuse the trademark as well as through trademark agreement license to use the trademark was given to other 3 others. Defendant on the other hand is using the mark AFSAL in kerala without obtaining the trademark registration.

Facts:

The plaint alleges that the defendant has infringed the plaintiffs’ registered trademarks as well as its copyright registration and is also, by using a deceptively similar trademark and a deceptively trade dress, seeking to pass off its product as the product of the plaintiffs. As the product is chewing tobacco, it is submitted that additional vigilance is required to be exercised in order to ensure that such attempts at infringement do not go unchecked.

The defendant is using the mark AFSALs and it is are phonetically nearly identical to the mark of the plaintiff, that is AFZAL. And it is added that It has to be remembered that the aspect of confusing or deceptive similarity has to be viewed from the perception of the consumer of average intelligence and imperfect recollection.

The visual similarity between the rival marks in the present case, coupled with the phonetic similarity between “Afzal” and “Afsals”, especially when viewed from the perspective of a consumer of chewing tobacco, clearly discloses the intent of the defendant to adopt the mark which is, phonetically as well as visually, as alike to the plaintiffs’ mark as possible.

Court’s Judgment and Analysis:

Court passed a decree of permanent injunction restraining defendant as well as all others acting on its behalf from using the trademark “AFSALs” or any marke similar to plantiff’s. The defendant shall also be restrained from adopting any trade dress which is deceptively similar and which would, therefore, infringe the copyright held by the plaintiffs in the aforesaid trade dress.

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Written by: Sushant Kumar Sharma

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High Court of Delhi Seeks Reply from Capital Foods Pvt. Ltd. on the Issue of Territorial Jurisdiction.

Title: VIMAL AGRO PRODUCTS P. LTD. V. CAPITAL FOODS P. LTD. & ANR 

Decided on: 11th October 2023 

C.O. (COMM.IPD-TM) 227/2023, I.A. 19904/2023 & 19905/2023 

Coram: JUSTICE PRATHIBA M. SINGH 

Introduction  

Vimal Agro Products Private Limited has filed a rectification petition in the Delhi high court, under Section 57 of the Trademarks Act, 1999 seeking cancellation of the trademark ‘SCHEZWAN CHUTNEY’ registered by Capital Foods P. Ltd.  

Facts of the Case  

Delhi High Court had refused to grant interim injunction in favor of Capital Foods in Capital Foods Pvt. Ltd. v. Radiant Indus Chem Pvt. Ltd., holding that the mark “SCHEZWAN CHUTNEY” was descriptive. An ad-interim injunction was granted in connection with trade packaging, reproduction, adoption and imitation of the original works of Capital Foods with respect to its marketing and advertising contents. On appeal the order was stayed by a division bench. Ching’s Secret owner Capital Foods also claims use of mark “SCHEZWAN CHUTNEY” since year 2012. To prevent unauthorized use of its mark, Capital Foods had initially filed a suit against Vimal Agro before District Judge, Nasik. Pursuant thereto, Vimal Agro had sought leave from the Nasik Court u/s 124 of Trademarks Act to seek rectification of Capital Foods’ registration before the Bombay High Court. Upon obtaining permission, Vimal Agro moved to the Delhi High Court, instead of Bombay. 

Court Analysis and Decision 

The court noted two contentions of the Petitioner, that ‘SCHEZWAN CHUTNEY’ is a descriptive and a generic mark and the Registrar has granted the registration to the respondent without addressing the objection under Section 9 of the Trade Marks Act, 1999. Respondent capital foods contended that the Court did not have jurisdiction to hear the present petition, as a suit was pending between the parties before the District Judge, Nashik bearing Commercial Suit (Trade Mark) No. 2 of 2023 titled ‘Capital Foods v. Vimal Agro’, wherein the Petitioner itself admitted that the Bombay High Court alone would have jurisdiction to hear the cancellation proceedings. 

According to the judge both these issues deserved consideration. In view of the prima facie finding of the Division Bench, the Court was not inclined to stay the impugned trademark registration for ‘SCHEZWAN CHUTNEY’. The issue of jurisdiction of Delhi high Court had to be considered first. So, the respondent capital foods is directed to file a reply on the issue of territorial jurisdiction of the Court within 4 weeks.   

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Written by- K R Bhuvanashri 

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Delhi High Court Restrains manufacturing & selling of ‘GOOD TIME BUTTER COOKIES’ or any other mark which is identical or deceptively similar to the popular mark ‘GOOD DAY BUTTER COOKIES’

Title: BRITANNIA INDUSTRIES LIMITED v. AMAR BISCUIT PRIVATE LIMITED & ORS. 

Decided on: 12th october 2023 

CS(COMM) 728/2023, I.A. 20158/2023, 20159/2023, 20160/2023 

Coram: JUSTICE PRATHIBA M. SINGH 

Introduction  

The Delhi High Court has restrained the sale of biscuits under the mark “Good Time” or “Good Time Butter Cookies” and any other mark which is deceptively similar to Britannia’s Good Day biscuits. The order was passed in favour of Britannia considering that it is a well reputed brand selling “Good Day Butter Cookies” since a very long time as also other products under the said trade mark and trade dress. 

Facts of the case  

The Britannia Industries Limited has filed suit against Amar Biscuit Pvt. Ltd. and its promoters i.e., Defendant Nos. 1 & 2 to 4, from manufacturing to selling butter cookies under the mark ‘‘Good Time’ which has an almost identical packaging. The Plaintiff is one of the leading manufacturers and sellers of biscuits, crackers and various other food items under the trademark ‘Good Day’ which was adopted by the in 1986. The Plaintiff company itself is a 100 year old company of India dealing with various food products since 1918. The Plaintiff’s revenue for the financial year 2022-23, crossed over Rs.16,000 crores. It also has significant presence on online platforms such as Facebook, Twitter, Instagram and YouTube with thousands of followers.  

The subject matter of the present case is the ‘Good Day Butter Cookies’ product which was launched in the year 1986. Around 1997 a distinctive packaging for the product was adopted. It is averred that the packaging has always been in the colour combination of blue and yellow, with cookie being shown in a specific form. Over the years Plaintiff has made minor modifications in the trade dress, however the essential and prominent features of it were retained. Plaintiff claims that the said packaging of ‘Good Day Butter Cookies’ is not merely a trademark label which is entitled to protection but is also an artistic work in which the Plaintiff enjoys copyright. They claim that the sale of ‘Good Day Butter Cookies’ for the financial year 2022-2023 is Rs.1889 crores and the advertisement and promotional expense for the said product is around Rs.137 crores. The Plaintiff recently learned from one of the consumers, who put a post on platform X (Twitter), about the Defendants adoption of the infringing trade mark and dress ‘Good Time’ bearing the same color combination of blue and yellow, realising this misuse as of 6th October, 2023, the Plaintiff has filed the suit. 

Court Analysis and Decision  

According to the court, by their very nature, butter cookies are products which are purchased by children, literate and illiterate people across urban and rural areas. The enormous turnover of the Plaintiff for the Britannia ‘Good Day’ cookies leaves no doubt in the mind of the Court that the said packaging and product achieved enormous recognition and goodwill in the market. Any attempt to imitate the name, the mark or the packaging would have to be stopped immediately in as much as the consumers are likely to get confused between the two sets of products. Considering that these are food products any chances of confusion has to be completely avoided. 

Considering the overall facts, the Judge is convinced that the Plaintiff makes out a prima facie case for grant of an ad interim injunction. Balance of convenience also lies in favour of the Plaintiff considering that it is a well reputed brand selling ‘Good Day Butter Cookies’ since such a long time, as other products under the said trade mark and trade dress. If an ad interim injunction is not granted it would cause irreparable loss or harm to the Plaintiff. as the Defendants’ packaging is deceptively similar to that of the Plaintiff’s, causes confusion to the customers. Court observed that Defendants’ are taking a piggy-back ride of the Plaintiff’s goodwill and reputation in identical business. 

Accordingly, till the next date of hearing, all the Defendants and others acting on their behalf are directed to restrain from manufacturing, selling, offering for sale butter cookie biscuits or any other products in the infringing packaging which is under the name ‘Good Day Butter Cookies’ or any other mark which is identical or deceptively similar to the Plaintiff’s mark ‘Good Day/ Good Day Butter Cookies’. Court has ordered the Defendants to remove any online listings of the product within 48 hours and to place a stock statement of the material bearing the impugned mark & packaging, on the next date. 

“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.” 

Written by- K R Bhuvanashri 

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Delhi High Court Protects Burger King Trademark: Crushing Fraudulent Franchises and Cyberspace Deception 

 Case Title: Burger King Corporation v. Swapnil Patil & Ors. 

Date of Decision: 15th September 2023 

Case Number: CS(COMM) 303/2022 & I.As.17896/2023 

Coram: Justice Prathiba M. Singh 

 

Introduction 

 

This case revolves around the protection of Burger King Corporation’s trademarks, including the ‘BURGER KING’ mark, the Crescent Logo Design, and Hamburger Refresh Design Logo. The plaintiff alleges that some of the defendants are operating fraudulent Burger King franchises, deceiving unsuspecting individuals and extorting money. 

 

Factual Background 

 

Burger King Corporation filed this suit to protect its trademarks from unauthorized use. The plaintiff claims that some of the defendants are fraudulently offering Burger King franchises, using deceptive domain names, and misusing the plaintiff’s brand and marks. The plaintiff alleges that certain defendants are operating fake franchises under the Burger King trademark and deceiving unsuspecting individuals, resulting in financial losses. The plaintiff discovered additional fraudulent activities related to two domain names: www.burgerkingind.co.in and www.burgerkingfranchisee.com. 

 

Legal Issues 

 

The key legal issues in this case include trademark infringement, fraudulent use of domain names, and the need for immediate action to prevent further financial losses to unsuspecting consumers. 

 

Observation and Analysis 

 

The court observed that the plaintiff had already obtained interim injunctions to protect its rights in the ‘BURGER KING’ mark. However, the plaintiff discovered additional instances of fraud involving new domain names and websites. These fraudulent activities were causing financial losses to individuals who believed they were investing in legitimate Burger King franchises. 

 

Decision of the Court 

 

  • In light of the observed fraudulent activities and to prevent further financial harm, the court issued several directions, including:  
  • Granting an interim injunction against the use of the ‘BURGER KING’ mark and related logos by specific domain names.  
  • Ordering the suspension/blocking of these domain names by the relevant registrars.  
  • Freezing the bank account associated with one of the fraudulent domain names and investigating how it was allowed to open without proper verification.  
  • Allowing the Delhi Police’s Cyber Cell to investigate relevant mobile numbers.  
  • Directing the Department of Telecommunications and Ministry of Electronics and Information Technology to issue blocking orders for the domain names/websites.  
  • Requiring the Bank of Maharashtra to disclose the account holder’s identity and KYC details.  

 

“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.” 

 

Written by – Ananya Chaudhary 

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Trademark Infringement in Composite Marks: Insights from the latest judgment of the Delhi High Court

Case Title: Royal County of Berkshire Polo Club Ltd. & Ors. v. Lifestyle Equities C V & Ors 

Date of Judgment: 28.08.2023

Case Number: FAO(OS) (COMM) 168/2019, CM APPL. 32083/2019 & CM APPL. 44128/2022 

Coram: Hon’ble Mr. Justice Vibhu Bakhru & Hon’ble Mr. Justice Amit Mahajan 

 

Introduction 

The case involves a dispute between Royal County of Berkshire Polo Club Ltd. & Ors. (referred to as ‘Berkshire’) and Lifestyle Equities C V & Ors. (referred to as ‘BHPC’) over the alleged infringement of a logo mark used in the sale of fragrance products. 

 

Factual Background 

The appellants, Royal County of Berkshire Polo Club Ltd. & Ors. (referred to as ‘Berkshire’), appealed under Section 13 of the Commercial Courts Act against a judgment dated 06.05.2019. The judgment was passed by the learned Single Judge of the Delhi High Court in Suit bearing No. C.S. (COMM) 1031/2018. The learned Single Judge had granted an interim injunction against Berkshire, restraining them from selling or advertising products using a logo mark that the respondent, Lifestyle Equities CV & Ors. (referred to as ‘BHPC’), claimed was deceptively similar to their own logo mark. 

 

Contentions of the Appellants 

The appellants argued that the logo of a polo player on a horse is a common and descriptive image related to polo sports. They contended that BHPC’s claim of exclusivity over this image was unfounded, and several other companies, including Ralph Lauren, used similar imagery. The appellants also pointed out that they had been using their logo since 1985 and that the word “polo club” was not objected to by BHPC.
 

Contentions of the Respondent 

BHPC claimed that they held the registration of a logo mark depicting a “charging polo pony, the rider and the polo stick of mallet,” which they considered to be a distinctive and well-known trademark. BHPC claimed that their logo mark, consisting of a distinctive polo player device and the stylized word mark “Beverly Hills Polo Club,” was registered in various countries, including India, and was well-known. They alleged that Berkshire’s logo mark, which also included a polo player and horse, was deceptively similar to their logo mark and likely to cause confusion among consumers. They sought an injunction against Berkshire from using any product with a logo mark similar to theirs.  

 

Key Legal Issues 

  1. Whether Berkshire’s logo mark was deceptively similar to BHPC’s logo mark? 
  1. Whether there was a likelihood of confusion among consumers regarding both the trademarks? 
  1. Whether BHPC was entitled to an injunction against Berkshire’s use of the logo mark? 

 

Court’s Analysis and Decision 

 

The Division Bench of the High Court, comprising Justice Vibhu Bakhru and Justice Amit Mahajan, set aside the impugned judgment. The Court observed that while the Single Judge had correctly identified the essential feature of the respondent’s mark as the polo player device, the learned Single Judge erred in finding deceptive similarity based solely on this feature. 

The Appellate Court found that the learned Single Judge had misinterpreted the principles regarding trademark infringement. The Court emphasized that the competing marks should be considered as a whole and not dissected into individual components. It was noted that both companies used variations of the polo player device, which was also used by other entities like Ralph Lauren. The Appellate Court highlighted the dissimilarities in the marks, including the direction of the horses depicted, the positioning of the polo player device, and the co-existence of similar marks in various countries. 

The Court noted that both parties used the polo player device in conjunction with their respective names (“Royal County of Berkshire Polo Club” for the appellants and “Beverly Hills Polo Club” for the respondents). It was also highlighted that the marks were co-existing in other countries. The Court concluded that Berkshire’s use of its logo mark, along with its actual name “Royal County of Berkshire Polo Club,” did not constitute infringement under Section 29(1) of the Trademarks Act, 1999. It was held that the marks belonging to the two polo clubs were distinct and not likely to cause confusion among consumers. The Court ruled that the marks were not deceptively similar when viewed as a whole and that BHPC’s claim of infringement was not justified.  

 

Conclusion 

This case demonstrates the complexity of determining trademark infringement when dealing with composite marks. The judgment emphasized that trademarks must be analyzed in their entirety and not dissected into individual elements for comparison, especially when dealing with marks that are used in conjunction with different words and upheld the importance of the overall commercial impression created by the mark. 

 

“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.” 

 

Written by – Ananya Chaudhary 

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