#trademark Archives - Prime Legal

19 Sep

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

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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.

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Written by – Ananya Chaudhary

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4 Sep

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

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Blog #delhi, #delhicourt, #delhihighcourt, #trademark, #trademarks

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

Whether Berkshire’s logo mark was deceptively similar to BHPC’s logo mark?

Whether there was a likelihood of confusion among consumers regarding both the trademarks?

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.

Written by – Ananya Chaudhary

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1 Sep

Delhi High Court Awards Damages to Tata Sons Pvt. Ltd. in Trademark Battle Against Pressure Cooker Manufacturers

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Case Title: Tata Sons Pvt. Ltd. v Mangal Yadav & Anr.

CS(COMM) 666/2019 and I.A. 773/2023

Date of Decision: 25th August 2023

Coram: Justice Prathiba M. Singh

Introduction

The case involves a dispute over the trademark “TATA.” The Plaintiff, TATA Sons Pvt. Ltd., seeks a permanent injunction against the Defendants for infringing registered trademarks and copyrights, passing off, dilution, and tarnishment of trademarks related to the mark “TATA.” The mark “TATA” is highly reputed and well-known, associated with the TATA group of companies founded in 1868.

Factual Background

The case involves a dispute over the trademark ‘TATA’ and its unauthorized use by the defendants, Mangal Yadav and Sanjeev Jain. The plaintiff, TATA Sons Pvt. Ltd., is the principal investor and promoter of the TATA group of companies, seeking relief for infringement of registered trademarks and copyrights, passing off, dilution, and tarnishment of trademarks. The ‘TATA’ mark is well-known and has a history dating back to 1868. The plaintiff alleged that the defendants were manufacturing and selling pressure cookers under the ‘TATA’ mark.

Key Legal Issues

Whether the Defendants’ use of the “TATA” mark on pressure cookers constitutes trademark infringement and passing off ?
Whether the Defendants’ use of the “TATA” mark causes dilution and tarnishment of the Plaintiff’s trademark ?

Court’s Analysis and Observation:

The Plaintiff established the well-known nature of the “TATA” mark through various documents, including trademark registrations, news articles, and website references. The Defendants’ manufacturing and selling pressure cookers with the “TATA” mark constitute infringement and passing off. The Defendants’ admission of documents and the seizure of infringing products by the local commissioners strengthen the Plaintiff’s case.

Decision of the Court

Justice Prathiba M. Singh granted summary judgment in favor of the Plaintiff. The Court found that the Defendants’ use of the “TATA” mark on pressure cookers constituted infringement of the Plaintiff’s registered trademarks and passing off. The Court held that the mark “TATA” was well-known and recognized globally, and its use by the Defendants could dilute and tarnish the Plaintiff’s trademark. The Court issued a permanent injunction restraining Defendants from manufacturing, selling, or dealing in pressure cookers bearing the “TATA” mark. Damages and costs were awarded to the Plaintiff against both the Defendants, with Defendant No. 1 being directed to pay Rs. 11 lakhs and Defendant No. 2 to pay Rs. 1 lakh. The infringing stock was ordered to be destroyed in the presence of the Plaintiff’s representative.

Conclusion

The judgment underscores the importance of protecting well-known trademarks from unauthorized use. It highlights the court’s willingness to grant summary judgment when defendants admit infringement or fail to provide valid defenses. The damages awarded emphasize the potential consequences of trademark infringement, including monetary penalties and destruction of infringing goods.

Written by – Ananya Chaudhary

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17 Aug

Trademark Dispute: Physicians Or Chemists Could Be Confused Due To Common Suffix- Delhi High Court In ‘Mankind’ V. ‘Novakind’ Case

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Title: Mankind Pharma Limited v. Novakind Bio Sciences Private Limited
Ordered on: 7th August, 2023

+ CS(COMM) 188/2021, I.A. 5700/2021 & I.A. 3248/2023

CORAM: HON’BLE MR. JUSTICE C.HARI SHANKAR

Introduction

The Delhi High Court recently addressed a trademark dispute between Mankind Pharma Limited and Novakind Bio Sciences Private Limited. The case centered around the use of the common suffix “KIND” in their respective trademarks. The Court emphasized the need for clear distinction between pharmaceutical products to avoid confusion among healthcare professionals and consumers.

Facts

Mankind Pharma Limited, a significant player in the Indian pharmaceutical industry, adopted the trademark “MANKIND” as part of its trading style in 1986. The company used the suffix “KIND” in the names of various pharmaceutical preparations it manufactured and sold. Mankind Pharma raised concerns over Novakind Bio Sciences Private Limited’s use of the mark “NOVAKIND” for its pharmaceutical products. Mankind Pharma believed that the inclusion of “KIND” in Novakind’s mark infringed upon its registered trademark. Mankind Pharma issued a cease-and-desist notice to Novakind, urging it to stop using the contested mark.

Analysis and Held

In this case, a Single Bench of Justice C. Hari Shankar presided over the matter. The Court acknowledged that while physicians and chemists might prefer Mankind Pharma’s products due to their efficacy, the common “KIND” suffix could lead to confusion. The Court highlighted that even the slightest possibility of confusion is unacceptable when it comes to medicines, especially prescription drugs.

The Court noted that the use of the “KIND” suffix is not unique to pharmaceutical preparations. Consequently, customers with average intelligence and imperfect recollection could associate Novakind’s “NOVAKIND” product with the KIND family of marks owned by Mankind Pharma. This likelihood of association satisfied the legal requirement for infringement under Section 29(2)(b)10 of the Trade Marks Act. Both marks were found to be deceptively similar and used for identical goods, supporting the finding of trademark infringement.

The Court also underscored that lower-income individuals who rely on less expensive medical services might be susceptible to associating medicines with their manufacturers. Given the varying efficacy of the same drug produced by different companies, the Court emphasized the importance of distinct trademarks to prevent confusion and potential health risks.

In conclusion, the Delhi High Court ruled that the trademarks of Mankind Pharma and Novakind Bio Sciences were deceptively similar. The Court upheld Mankind Pharma’s concerns regarding potential confusion among healthcare professionals and consumers, leading to its holding against Novakind’s use of the contested mark.

Written by- Ankit Kaushik

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8 Aug

Counsel pleads it is mandatory upon the Investigating Officer to obtain opinion of the Registrar for infringement of Trade Mark about infringement of the trademark . FIR quashed –Gujarat High court

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TITLE: Mihir surendrabhai shah v State of Gujarat

Decided On-: 31/07/2023

CORAM: Hon’ble Justice Mr. Ilesh Vora

INTRODUCTION- FIR under section 103 and 104 of the Act, in view of section 115(4) of the Act read with Rule 110 of the Trade Mark Rules, it is mandatory upon the Investigating Officer to obtain opinion of the Registrar for infringement of Trade Mark about infringement of the trade mark.

FACTS OF THE CASE

The petitioner operates an auto parts business in Ahmedabad City under the name and brand Rushab Automobiles. An individual named Sanjay Kumar Verma claimed to be an officer of the IPR Vigilance India Company and to have contracts with numerous businesses to file FIRs. He learned on November 25, 2013, that Rushab Automobiles, the petitioner’s and accused’s owner, was selling a duplicate Hyundai Motor Company component. Following the receipt of this tip, the complainant went to CID (Crime), Gandhinagar, and presented some supporting documentation. As a result, the police and the complainant both raided the petitioner’s store. The shop had duplicate Hyundai motor company spare parts, it was discovered. After the raid, a FIR with the reference number C.R.3432 of 2013 was filed with the Naranpura Police Station in Ahmedabad for the violation of sections 101, 102, 103, 104, and 105 of the Trade Mark Act, 1999 A charge sheet has also been filed after the investigation was finished.So, along with Criminal Case No. 305 of 2013, Criminal Case No. 96 of 2014 is still pending before the learned Metropolitan Magistrate Court.

COURT ANALYSIS AND DECISION

Advocate Mr. Sachin Vasavada would submit submissions in two parts. First of all, he would contend that in accordance with section 115(4) of the Act read with Rule 110 of the Trade Mark Rules, the Investigating Officer must obtain the Registrar for Infringement of Trade Mark’s opinion regarding the infringement of the trade mark before filing a FIR under sections 103 and 104 of the Act. The opinion has not been acquired by the investigating officer. Consequently, a statutory provision has been broken. He would also contend that a cursory reading of the FIR does not suggest that the sale of duplicate Hyundai Motor Company spare parts would constitute a violation of sections 101 to 105 of the Act.

The petition was granted, and the court quashed and overturned the FIR. According to these arguments, eminent lawyer Mr. Vasavada asserts that the FIR is illogical, improbable, and in violation of the law on its face, and that allowing proceedings to proceed under it would be an abuse of the legal system. As a result, he offers to approve this petition.

Both the knowledgeable complainant’s attorney and the knowledgeable APP are silent regarding the argument that the first informant lacks the authority to file a FIR on behalf of Hyduai Motor Company. The charge sheet papers omit any mention of the first informant’s legal right to file a complaint in accordance with the Act’s provisions.

It was attempted to be argued that the prohibition in section 115(4) of the Act, when read with Rule 110 of the Trade Mark Rules, would prevent the filing of a First Information Report (FIR) for an offence punishable under sections 103 to 105 of the Act without first obtaining a Registrar’s opinion on trade mark infringement. The charge sheet papers are silent regarding the first informant’s acquisition of this opinion.

A knowledgeable APP or knowledgeable advocate for the complainant is not qualified to explain a lacuna. It is obvious that the mandatory rules were broken when the FIR was filed. The complainant hasn’t proven that he has the legal right to file a complaint. Without first seeking the Registrar’s opinion for trademark infringement, he cannot express an opinion that the accused is using a trade mark or trade description, or falsifying and applying a complaint’s trade mark. The situation clearly violates a statutory provision, according to the circumstances.

Written by- Steffi Desousa

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