DEVELOPMENTS IN JUDICIAL ENVIRONMENT & IMPORTANT JUDGMENTS ON TRADEMARK

AMENDMENT IN DELHI HIGH COURT ACT

The Central Government has notified the Delhi High Court Amendment Act (Act NO. 35 of 2003) in terms of which the pecuniary jurisdiction of Delhi High Court stood enhanced to Rs. 20 Lac (approximately 45000 US$) which as earlier Rs. 5 Lac (approximately 11100 US$).

ESTABLISHMENT OF INTELLECTUAL PROPERTY APPELLATE BOARD

Intellectual Property Appellate Board (IPAB) has been constituted under Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. The IPAB has started functioning since April, 2004 on a regular basis. Its headquarters are at Chennai and sittings are held at Chennai, Mumbai, Delhi, Kolkata and Ahmedabad on regular basis. All cases of appeals arising out of the order or decision made by the Registrar and all cases pertaining to rectification of the register pending before any High Court prior to 6th October, 2003 stood transferred to the Appellate Board. The Intellectual Property Appellate Board has so far, decided more than 125 cases and continues to put in its efforts to clear the backlog at the earliest.


JUDICIAL DEVELOPMENTS AND IMPORTANT CASES

The intellectual property regime in India is expanding to keep pace with the rapidly growing economy. The enforcement mechanisms enable businesses to keep a grip on their intellectual property rights and serve to make India more attractive to business ventures from abroad.

Indian courts have also guided case law in a direction that accommodate the interests of multinational business as well as take into account the establishment of goodwill and reputation via diverse media.

These developments augur well for a robust Intellectual Property regime in compliance with the TRIPS requirements and will provide a ground for healthy competition, at the same time preventing usurpation of the time, money and effort expended by an international venture in augmenting the value of its trademark.

Some latest cases decided by Hon’ble Supreme Court of India as well as Hon’ble High Court of India are given as under:-


PROTECTION FOR WELL-KNOWN MARKS

Christian Dior Couture v. Ajay Haryani & Ors (Interim order issued by Hon’ble High Court of Delhi)- CHRISTAIN DIOR

Christian Dior obtained an ex parte ad interim injunction on the basis of trademark infringement and passing-off, restraining the defendant, a New Delhi department store, Deepsons, from manufacturing, selling, marketing and exporting garments bearing the CHRISTIAN DIOR mark, or any deceptively similar mark. The Court also appointed local commissioners to search for and seize the infringing goods. The raids resulted in the seizure of a large number of men’s shirts and packaging material bearing the CHRISTIAN DIOR mark. Although the original CHRISTIAN DIOR clothes were not currently available in India, the CHRISTIAN DIOR brand was known to the Indian public through international magazines such as Vogue and Cosmopolitan, which had a wide circulation in India, and sale of the product in duty free stores around the world. Furthermore, Christian Dior had registered its trademark in India and it was not considered necessary for them to establish a case based on passing-off.

Glaxo Group Ltd. vs R.A.S. Mani Iyer and Anr. (decided by Hon’ble High Court of Delhi)- ZINACEF AND FORTUM

Hon’ble High Court of Delhi passed a decree for permanent injunction against Lyka Laboratories restraining them from dealing in pharmaceutical preparations under the trade mark LYNACEF or any other trade mark which may be identical or deceptively similar to the trade mark ZINACEF and SUPACEF amounting to infringement of plaintiff's mark. The Hon’ble Court also restrained the defendants from using the colour scheme arrangement of features, layout on the packaging, cartons, bottles or any packaging or labelling of their product CEFTIDIN which was similar to the packaging and labelling of the plaintiff's product FORTUM.


NON-USER DUE TO TRADE RESTRICTIONS

Hardie Trading Ltd. Vs. Addison Paints and Chemicals Ltd.

The Registrar directed removal of the registered mark from the register on allowing of non-use. However, the said order was set aside by Hon’ble Supreme Court of India. Appellants registered the words “Spartan” and “Spartan Belox” to commence business in India. There was a Collaboration agreement entered between the appellant and the respondent for selling surface coatings and pursuant to the agreement appellant's products marketed in India through respondents. Thereafter, Appellant agreed to assign its right in the trademarks to respondents for a sum payable and Appellant were granted permission to the respondent to use its trademark in India. Thereafter respondents filed two applications for registration of appellant device. The appellants filed Rectification to the said trademarks. Between 1946 to 1971 respondents were using the trademark as a chief agent of the appellant under the collaborative agreement and then under the registered user's agreement and never used the trademark on their own account as it was always used for the appellants benefit. The Respondents had also publicly disassociated themselves from the mark. It was admitted position that both appellant and respondent were engaged in the sale of paints and lacquers prepared according to appellant's preparations and under appellant's trademark and under the input policies, the paints and lacquers would only be imported by the manufacturer or producers and the Appellant had no factory in India. The Hon’ble Supreme Court of India came to the conclusion that Joint registrar of Trademarks erred in coming to the conclusion that there were no special circumstances, which justified the non-user i.e. the respondent for the period in question. Hence, appeal against the said order was allowed.