IMPORTANT JUDGMENTS IN TERMS OF TRADEMARK

PROTECTION TO ALPHA-NUMERAL MARKS

Charak Pharma Private Limited Vs. Respondent: Prashi Pharma Private Limited (decided by Hon’ble High Court of Delhi) Trademark-M2 TONE

In this case, the plaintiff clamed to be a manufacturer and merchant of Ayurvedic medicinal and pharmaceutical preparations. The plaintiff claimed to be the registered proprietor of various trade marks in India in respect of goods falling in clause 5. The plaintiff was also manufacturing and marketing a product under the distinctive trade mark ''M2 Tone'' in a syrup base as well as in the form of tablets. The aforesaid trade mark ''M2 Tone'' of the plaintiff was registered in India since 1965 in respect of goods falling in class 5. According to the plaintiff, the said trade mark was an invented word coined by Charak Pharmaceuticals in and about the year 1965 and has been in use since then as a registered trade mark. It was alleged that sometime in November, 2003 the plaintiff came to know that the defendant was manufacturing and marketing a medicinal preparation under a deceptively similar and infringing trade mark ''MV-Tone''. On the facts of the case, a temporary injunction was granted in favour of the plaintiff and against the defendant, its servants, agents, distributors, stockists or anyone acting on its behalf from in any manner manufacturing, marketing, distributing or offering or sale any product under the trade mark ''MV Tone'' or any other deceptively and confusingly similar trade mark of the plaintiff, namely, ''M2 Tone'' till the disposal of the suit.


DOMAIN NAMES

Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. (decided by Hon’ble Supreme Court of India)

The principal question raised in the present appeal was whether internet domain names were subject to the legal norms applicable to other intellectual properties such as trade marks? The appellant which was incorporated in 1995 registered several domain names like www.sifynet, www.sifymall.com, www.sifyrealestate.com etc. The respondent started carrying on business of internet marketing under the domain names, www.siffynet,net and www.siffynet.com from 5th June 2001. The appellant filed a Suit filed by appellant on ground of passing off its business and services by using appellant’s name and domain name and a temporary injunction was granted by Trial Court on ground that appellant was prior user of trade name ‘Sify’ and that confusion would be caused in mind of general public by deceptive similarity between the two domain names. However, Hon’ble High vacated the injunction on the ground of business being different from that of the appellant. Hon’ble Supreme Court of India granted leave observing that use of same or similar domain name may lead to diversion of users which could result from such users mistakenly accessing one domain name instead of another and held that a domain name may have all characteristics of a trade mark and could find an action for passing off





DISPARAGEMENT

Dabur India Limited Vs. Emami Limited (decided by Hon’ble High Court of Delhi)

In the present case, the Plaintiffs were manufacturing and marketing Chyawanprash, an ayurvedic formation, under well known brand name "Dabur" and having market share of 63% of total market of Chyawanprash. The Defendants were also manufacturing Chyawanprash under brand name "Himani Sona-Chandi Chyawanprash having about 12% market share, introducing a new product "Himani Sona-Chandi Amritprash". The Defendant advertised through a T.V. commercial, their product featuring a popular film star as hero who makes the impugned declaration "GARMION MEIN CHYAWANPRASH BHOOL JAO, HIMANI SONA CHANDI AMRITPRASH KHAO" (Forget Chyawanprash in summers, eat Amritprash instead). According to the plaintiffs, the message sought to be conveyed was "Consumption of Chyawanprash during summer not advisable and Amritprash is more effective". Even if no direct reference to product of the plaintiffs were made but only to entire class of Chyawanprash in general sense, even then disparagement was held to be possible. Hon’ble High Court of Delhi, after going through the facts, injuncted the Defendants from telecasting impugned T.V. commercial pending disposal of the suit and stated that a tradesman is entitled to declare his goods to be the best or better than his competitors' but while declaring so he cannot say that the goods of his competitors are bad so as to puff and promote his goods. Statements for puffing of his goods should not give rise to a cause of action to other traders or manufacturers of similar goods to institute proceedings for disparagement or defamation.


TRANS-BORDER REPUTATION
Advertisement amounts to user of the mark

Milment Oftho Industries Vs Allergan Inc. (decided by Hon’ble Supreme Court of India) Trademark OCUFLOX

In the present case, the marks were the same. They were in respect of pharmaceuticals products. The mere fact that the Respondents did not use the mark in India was considered irrelevant as they were first in the world market. The Division Bench relied upon material which prima-facie showed that the Respondents products were advertised before the Appellant entered the field. On the basis of material on record the Bench concluded that the Respondents were first to adopt the mark. If that be so then no fault could be found with the conclusions drawn by the Division Bench. On the other hand, the appellants stated that the respondents were not the first to use the mark in India. It was submitted that there was no proof that the Respondents had adopted the mark and used the mark before the Appellants started using the mark in India. The Hon’ble Supreme Court of India came to the conclusion that these were matters which would require examination on evidence. Considering the fact that for all these years, because of the injunction Order, the appellants have sold their products under some other name, the balance of convenience was that the injunction order be continued and the hearing of the suit be expedited. The Supreme Court however observed that if on evidence it was proved that the respondents had adopted the mark prior to the Appellants doing so, on the settled law, then the Respondents would become entitled to an injunction. However, if on evidence it was proved that Appellants were prior then, undoubtedly, the trial Court would vacate the injunction. The trial Court would undoubtedly then assess the damage which Appellants have suffered for having wrongly not been allowed to use the mark for all these years.

George V. Records, SARL Vs.Kiran Jogani and Anr. (decided by Hon’ble High Court of Delhi) Trademark- BUDDHA BAR

In The present case, plaintiff claimed its proprietary rights in trade mark "BUDDHA-BAR" in respect of music albums on the basis of prior adoption and use by its affiliate company in 1996 in respect of restaurant and by plaintiff in respect of music album in case of reputation established in 2000 in France. Spill over of the reputation it gathered in foreign countries was pleaded. The Court held that Plaintiff and its sister companies constitute one economic entity for the purpose of proprietary rights and prior adoption. On the basis of spill over reputation ex-parte ad interim injunction granted against defendant was confirmed by the Hon’ble High Court of Delhi.


EXECUTION OF DECREE AND GRANT OF DAMAGES

ABRO Industries Inc. Vs. K.V. International and Ors. (decided by Hon’ble High Court of Delhi)

During the perusing of a suit for infringement and passing off concerning trade marks "ABRO" and "AMBROS", parties arrived at a settlement. In the settlement deed, judgment debtors categorically stated that they had never ever directly/indirectly manufactured, advertised and/or supplied any product with trade mark "ABRO", and confirmed that failure of the representation would be material breach of the deed - consequences whereof to follow including execution of money decree in the sum of Rs. 35 lakh (approximately US$ 77.000/-) as agreed. Thereafter, the Decree holder came across a dispatch register produced before the Local Commissioner evidencing dealing and marketing by judgment debtors of their products under the trade mark "ABRO". After inspection, on certain pages of the dispatch register, the word "ABRO" or "AMBRO" was seen to be erased and overwritten by some other brand/trade name. The Hon’ble High Court of Delhi came to the conclusion that the Judgment debtors manipulated the records giving a wrong picture to decree-holder which amounts to misrepresentation and mis-statement, hence a breach of the settlement deed entitling plaintiff to get the money decree for Rs. 35 lakh (approximately 77,000/- US$) executed.