Trademark Case Brief – Venugopal v Ushodaya

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Citation – (2011) 4 SCC 85.

Facts:The appellant is the sole proprietor of a firm carrying on business inter alia as manufacturers of and dealers in incense sticks (agarbathis) in the name and style of Ashika Incense Incorporated at Bangalore and adopted the mark ‘Ashika’s Eenadu’. According to the appellant the word `Eenadu’ in Kannada language means `this land’. In Malayalam and Tamil language it conveys the same meaning. In Telugu language it means ‘today’.
The respondent company (i.e. Ushodaya Enterprises) was engaged in the business of publishing a newspaper in Telugu entitled as ‘Eenadu’. The respondent company in the year 1999 filed a suit for infringement of copyrights and passing-off trade mark. The respondent company therein claimed that they have been in the business of publishing a newspaper, broadcasting, financing and developing a film city.

Procedural History:
The Second Additional Chief Judge, City Civil Court, Hyderabad had granted an ex-parte ad interim injunction restraining the appellant from using the expression `Eenadu’. Thereafter, the appellant, aggrieved by the said order, moved the High Court of Andhra Pradesh at Hyderabad. The High Court suspended the interim injunction. The appellant was not injuncted from using the words `Eenadu’ in the entire country other than in the State of Andhra Pradesh by the Trial Court. Aggrieved by the said order of the learned Single Judge, the respondent company filed Letters Patent Appeals before the Division Bench of the High Court. The High Court allowed its appeal.

Issues:
1)
Whether the defendant is passing off the product of the plaintiff by deceiving and causing confusion among the minds of the consumers by using the Mark Eenadu.
2) Whether Eenadu is a common word with generic interpretation literally meaing `Today’ in Telugu and `this land/our land’ in Kannada, Tamil and Malayalam?
3) Whether the Mark is Suggestive or Descriptive and has it acquired distinctiveness?
4) Whether the use of mark Eenadu by the defendant would affect the goodwill of respondent company as they both are involved in entirely different business.

Holding:
The Court found that the respondent company’s mark `Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company’s products and services are correlated, identified and associated with the word `Eenadu’ in the entire State of Andhra Pradesh. `Eenadu’ means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark `Eenadu’.
The adoption of the words `Eenadu’ is ex facie fraudulent and mala fide from the very inception. By adopting the mark `Eenadu’ in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company. The Court has clearly ruled on the basis of dilution of the trademark “Eenadu” registered to the respondent. A trademark is diluted when its uniqueness is lost owing to its unauthorised use in relation to products that are not identical or similar to the product of the trademark owner.
Use of similar words by a competitor coupled with dishonest intentions and bad faith would empower a court to restrain such user to do justice to the aggrieved party. The protection qua common fields of activity has now been expanded and been interpreted to mean other product lines than what is manufactures by plaintiff and hence common field of activity is not restricted to same products. No one can be allowed to encroach upon the goodwill of other parties.

Applying the TWO STEP TEST to decide whether mark is descriptive of suggestive:
1) How much imagination does it takes by consumer about qualities, characteristics, effects, purpose or ingredients of the products or source is there.
§ More the imagination, more chances that the mark is suggestive.
Here, people in Andhra Pradesh are well aware about the relation between Eenadu Daily newspaper and Eendau Margadasi Group. Eendau daily simply concludes that this may be a news service only.
2) Whether sellers of similar products/services are likely to use or actually do use a term in connection with their goods and services.
§ Yes, it is likely to be used other sellers ex: AP Eenadu, Eenadu weekly, Eenadu’s Exclusive, Real Eenadu, etc.
Hence it’s a descriptive mark
But, in our case, mark ‘Eenadu’ has acquired distinctiveness. It has acquired a secondary meaning during the course of plaintiff’s business practice as the word Eenadu became the household name among the people of Andhra Pradesh and the Telugu speaking public in the other States and the rest of the world.

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Trademark Case Brief- Reckitt & Colman v Borden

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Citation – [1990] 1 ALL E.R. 873 (House of Lords)

Facts: Reckitt and Colman Products Limited, the Plaintiff (hereinafter referred to as “P”), was a lemon juice manufacturer and sold it in yellow containers having an appearance similar to a natural lemon and having a removable cap at one end. The product was generally known as “Jif Lemon Juice” and attached to this container was a loose paper label of green colour with “Jif” and other statutory information written on it in yellow, held in place by the cap. P did not have any of its marks registered as Trademark (T.M.), but had a monopoly in selling lemon juice in such containers since more than 40 years in U.K.
Borden Inc., the Defendant (hereinafter referred to as “D”), started selling lemon juice with the name “ReaLemon” in containers similar to that of the Respondent (i.e. lemon shaped and colored). D produced three different versions of plastic lemon containers with minor changes in size, colour of the cap, and colour pattern of the labels. Owing to D starting to sell lemon juice in containers similar to that of P, P filed a suit for passing-off seeking to restrain D from selling.

Procedural History: 
P approached the Trial Court, which ruled in P’s favor. D approached the Court of Appeals, which also ruled in P’s favor. D has now approached the House of Lords.

Issues:
1)
Does the public associate lemon-shaped containers filled with lemon juice exclusively with P?
2) Does the get-up under which D propose to market their lemon juice amounts to a representation that the juice which they sell is “Jif” lemon juice?
3) If D is not restrained, will a substantial amount of public be misled into purchasing D’s lemon juice in the belief that it is the P’s “Jif” juice?

Holding: 
Yes, D’s selling of lemon juice in lemon shaped containers constituted passing-off. A permanent injunction was imposed on D from selling lemon juice in such containers.

Rationale:
The House of Lords applied the Three Part Test (Goodwill; Misrepresentation; Damage) to find out whether D was passing-off its product as that of P. Each issue was dealt with separately as explained below:
1) The House of Lords held that since P was the only player in the lemon-juice market who was selling it in lemon-shaped containers, and since P had been exclusively doing it for more than 40 years, such containers for lemon juice had become something people associate exclusively with P.
2) The House of Court held that since lemon-shaped containers were exclusively associated with P by the public, if D wanted to sell its product in similar containers, it should make sure that people will not confuse its products with that of P. The Court held that the change in color of label will not eliminate the confusion as the label is taken off once the product is bought and therefore, the product is unadorned for the most part it is in use with the customer. Therefore, an innocent customer will not remember how the label looked like when he/she goes to buy it again and will only remember the shape and the label us hardly paid any attention.
The court further held that a small change in the colour of the cap is not distinctive enough to alarm the customer that the product they are buying is not “Jif Lemon Juice”, therefore each of the get-ups proposed by D was just an immaterial variant of Jif Lemon and would amount to misrepresentation.
3) D contended that people will eventually figure out that P was no longer the only player in the lemon juice market with lemon-shaped containers and will start paying attention to the labels and colour of caps. The House of Lords did not accept this argument and held that the number of people who will be initially misled before realizing this could be huge and probably running into millions. Therefore if D is allowed to sell such products, it would cause a substantial harm to P.
Thus, since all the three parts of the three-part test are met, the House of Lords held that the Trial Court and the Court of Appeals was right in restraining D from selling lemon juice in containers similar to that of P.
Rule: Passing-off: This rule essentially means that no person is to sell his/her goods under the pretence that they are the goods of another person and applies in cases of unregistered trademarks.
Three-Part Test: The Courts have developed a three-part test to find out if an action constitutes as passing-off i.e. reputation and goodwill, misrepresentation, and damage. To establish a claim under passing-off, the Plaintiff must prove:
1) that his goods/services have acquired a particular goodwill or reputation in association with the “get-up” of the goods/services;
2) that the Defendant’s representation of his/her products is (or is likely to) mislead the people who wish to buy Plaintiff’s product into buying Defendant’s product/service.
3) that he/she will suffer damages if the Defendant is allowed to continue with such a representation.

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Trademark Case Brief- Bollinger v Costa Brava Wine Co Ltd

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Citation – [1961] 1 W.L.R. 277

Facts: There were 12 plaintiffs duly incorporated in France, who carried on the business of producing wine in the Champagne district of France, and supplied this wine to England and Wales. The wine that came from these vineyards were sold under the name “Champagne”, and there was immense goodwill attached to this name and its brand of wines. This wine was made through a detailed process, and was placed at a high standard in the United Kingdom, and was mainly associated with celebratory occasions.
The defendants are a company incorporated in England, and were importing and selling a wine named, “Spanish Champagne”. This Wine was alleged to possess some characteristics of the “Champagne” produced in France. However, the Wine sold by the defendants was produced in Spain, and is not associated in any way with the Champagne district of France. Consequent to the common usage of the word “Champagne” in both products, a dispute arose between the two parties.

Issue: 
Whether the Defendants’ usage of the Name or Mark intended to deceive or mislead the public, thereby by amounting to passing off?

Rationale:
§ The Defendants’ primary contention was that the wine they sold was “Spanish” champagne, and therefore it could not have been mistaken for “Champagne” produced in France.
§ Although this was plausible, the Court recognized that this argument would accommodate only the educated class of people, who are well versed with wines and are generally accustomed to buying different products.
§ In addition, the Court considered a large amount of evidence that concerned the term “Champagne” in England. Most of the evidence obtained, suggesting that “Champagne” in England is always associated with the product of the plaintiffs and nothing else. The evidence further suggested that the term “Champagne” in England is not generic, and is related only to the Plaintiff’s product.
§ On assessing whether the Defendants’ product “Spanish Champagne” was deceiving – The Court opined that the resemblance between the two products was deceiving. As a result, the usage of the word “Spanish” could not be used to deem both products different.
§ In addition, the Court opined that it is not easy for individuals to assess and have enough knowledge about different types of wines and their origins. The Court stated that these classes of individuals might have to make such decisions only when it comes to celebratory occasions (wherein the Plaintiff’s product was more sought after). The evidence, in this regard, suggested that not everyone was accustomed to different types of wine. Therefore, it was stated that there is a likelihood of individuals being misled by “Spanish Champagne” as “Champagne”.
§ The Court also stated that the Plaintiffs had satisfied their burden of proof of showing that the Defendants’ product reflects untrue statements.
§ More importantly, the Respondents’ product was deceiving, as the Defendants’ product was sold in Spain as “Perelada” and not “Spanish Champagne”. This created a serious doubt as to why the Name was changed to “champagne” in the British Market, where the Plaintiff’s product was widely recognized as “Champagne”. Additionally, the Defendants’ brochure was blatantly trying to “secure the sale of the Plaintiff Company”, as it stated, “Giving a Champagne Party”.

Rule: 
For the actions to be deceptive, a substantial portion of the public must be likely to be misled by the defendants’ product “Spanish Champaign”.

Holding: 
It was held that this was not a case of innocent passing off, and the Defendants try to attract the goodwill of the plaintiff’s company in a deliberate and dishonest manner.

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Trademark Case Brief- Dongre v. Whirlpool

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Citation – 1996 (16) PTC 583 (SC)

Facts: The respondents (initially plaintiffs) are the original and earlier users of trademark “WHIRLPOOL” for their electrical goods including washing machines since the year 1937. They got their trademark registered in the year 1956-57 in India. These registrations were renewed periodically. However, in 1977, the registrations in India lapsed on account of failure to apply for renewal. Later in the year 1988, the appellants (initially defendants) applied with the Registrar of Trade Marks for registration of the trademark ‘WHIRLPOOL’ for certain goods including washing machines. Post this application, information was released by advertising in the trademark journal and accordingly the respondents filed an objection. The registrar dismissed the objection and allowed the plaintiff’s application for registration on the grounds of the proposed user. The respondents filed an action for passing off and grant of an interlocutory injunction.

Procedural History  :  
After the grant of registration to the appellants in the year 1992, the respondents filed an action for passing off and grant of an interlocutory injunction. A temporary injunction was granted by the learned Single Judge of the Delhi High Court in an original suit by order dated 31st October 1994, which has been affirmed on appeal by the Division Bench by its order dated 21.04.1995. Hence, aggrieved by the decision, the appeal was filed in the Supreme Court.

Issue:
Whether interlocutory injunction can be granted in a passing-off action even against the proprietor of a registered trade mark?

Analysis:  
The Court noted that Whirlpool Corporation had been the prior user of the trademark and were associated with it since the year 1937 whereas the appellants only applied for it in the year 1988. The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretense that they are the goods of another man. The Court further observed that since the year 1937, Whirlpool Corporation has registered itself in 65 countries and has a large scale business. It was further noted that though Whirlpool products were only sold in US embassy and few other United States offices in India but the brand ‘Whirlpool’ had been frequently advertised in leading international magazines having circulation in India and as a result the brand was gaining reputation not just in the United States but throughout the world including India. As a result, Whirlpool Corporation acquired trans-border reputation and goodwill throughout the world and people began associating washing machines and other electronic goods with the trademark ‘Whirlpool’. It further noted that buyers were likely to be deceived or confused as to the origin and source of the goods with appellants selling their goods marked as ‘Whirlpool’ and as a result the respondents are likely to suffer irreparable injury as the products sold by appellants were not of the same engineering standards and did not give the same quality of performance as the respondents’ machines.

Conclusion: 
The Court affirmed the order of the Division Bench of the High Court and dismissed the appeal. It noted that the decision of the trial court and the High Court was based on settled principles of law. Therefore there was no ground to interfere with the grant of an interlocutory injunction.

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Trademark Case Brief- Pepsi Co., Inc. v. Hindustan Coca Cola Ltd.

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Citation -2003 (27) PTC 305 (Del)

Facts: The appellants, in this case, were Pepsi Co Inc and they were suing the respondents, Hindustan Coca-Cola Ltd (henceforth Coca-Cola) over a series of advertisements carried out by the respondents. In some of these advertisements, a drink with the word PAPPI on its label with a mark similar to the Pepsi’s globe mark was used in comparison to the respondent’s own drink. The adverts proceeded like so: a child was asked by the protagonist to name his favourite drink, to which the child responds saying that his favourite drink is Pepsi. At this point, the audio is bleeped out though, from the movement of the child’s lips it is evident that he is uttering the word Pepsi. The child is then asked to perform a blind tasting of the two drinks and pick his favourite out of the two. On making his selection, it is shown that the child picks the respondent’s drink and the other drink is revealed to be PAPPI with a mark similar to that of Pepsi. When asked for the reasons behind his choice, the child remarks that PAPPI is too sweet and is something that only children would want to drink and shows embarrassment on learning that he once called that his favourite drink. The adds also contained the lead actor saying “Wrong choice baby” when the child initially states that Pepsi (bleeped out) is his favourite drink and uttering the phrase “Yeh Dil Maange No More.”
The appellants alleged, that in another advertisement the respondents had copied a roller coaster commercial that they had launched earlier and sought to receive an injunction on the alleged copy. They also claimed that the use of the globe design and the phrase “Yeh Dil Maange No More” amounted to trademark infringement while the nature of the respondent’s adverts amounted to the disparaging of the appellant’s products.

Issues:
1) Whether prima facie the respondents have disparaged the products of the appellants;
2) Whether the globe devise and the phrase “Yeh Dil Maange More” is copyright-able and if so whether this copyright has been infringed by the respondent;
3) Whether the essence of the roller coaster has been copied by the respondents and if so the effect of the same.

Rule: 
Comparative advertising is permitted as long as it doesn’t discredit or denigrate the trademark or trade name of the competitor. Mere puffing of goods is not actionable. Tradesman can say his goods are best or better. But by comparison, the tradesman cannot slander nor defame the goods of the competitor nor can call it bad or inferior. To decide the question of disparagement following factors have to be kept in mind
(1) Intent of commercial
(2) Manner of the commercial
(3) The storyline of the commercial and the message sought to be conveyed by the commercial.

Holding:  
With regards to the first issue, the Court found that the respondent’s advertisements did, in fact, disparage the appellant’s products. In deciding this, the Court looked into the following factors:
(i) Intent of commercial
(ii) Manner of the commercial
(iii) Storyline of the commercial and the message sought to be conveyed by the commercial.
They reasoned that even though the word Pepsi had been censored in the commercial, a viewer could make out the word from the movement of the actor’s mouth. Further, the use of the word PAPPI and the symbol similar to Pepsi’s globe, clearly pointed to Pepsi as they were the only cola brand in the market that aligned with these descriptions. The Court reasoned that the adverts amounted to disparage as they clearly sent out the message that the appellant’s drink was an inferior one as it was too sweet and something only children would drink as this affected the appellant’s market of adolescent and adult consumers. Further, the actor’s apparent embarrassment in finding out that the sweet drink is what he had initially claimed to like also indicates that being fond of the appellant’s drink is something to be ashamed of. It is because of this negative portrayal of the competitor that the adverts were not passed off as mere puffing and disparagement was held.

With regards to the second issue, the Court ruled that the nature of both the phrase and the globe had to be deduced from the manner in which they are used. By this, both are trademarks of the appellant and infringement, if any, has to be measured accordingly. Here the Court ruled that there was no infringement as the respondents had not used either of these marks in the course of their trade and, in that, were not in contravention with section 29(1) of the Trade Marks Act.
With regards to the final issue, the Court applied the test laid down in R.G. Anand v. Deluxe Film and found that apart from minor embellishments and changes, the essence of both the adverts was the same. Hence, the respondents had violated the copyright of the appellants.
Therefore, the court granted the injunction with regards to the publication and screening of this advertisement.

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Trademark Case Brief – Tata Chemicals Limited Vs. Deputy Registrar of Trade Marks

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Citation – 2003(27) PTC 422 (DEL)

Facts: There was a dispute regarding proprietary rights over the trade mark ‘TATA’ which defendant stated was assigned to M/s Tata Pressure Cooker Manufacturing Company and was being used by the company from 1981. The D then filed for an application for registration of trademark in the year 1994 and the application for registration was opposed by the plaintiff House of Tata.

Procedural History:
Application for registration was filed by the Tata Pressure Cooker Manufacturing Company and opposition has been filed by M/s Tata Chemicals Ltd. challenging the impugned order passed by the Registrar of Trade Marks whereby he had allowed application for registration filed by in both the petitions and had disallowed the objections of the House of Tata. The same order has been challenged in this case.

Issues:
1)
Whether the P could use the trade mark TATA to sell pressure cooker?
2) Whether P could then be given registration for the trade mark TATA?

Holding:
The court held that TATA was the trade mark of the P group since the word TATA is a household expression. Since the P group had considerable of reputation, accrued to the trademark TATA, the use of an identical trade mark would cause confusion and deception. Since the Defendant had no evidence to prove he was an honest concurrent user, the application for registration of trade mark was quashed.

Rationale:
§ The P proved that House of Tata was in existence since the 19th Century founded by late Sir Jamshed Ji Tata. Since the name TATA was not descriptive it had limited protection under trade mark act of 1991 unless P could prove that it acquired distinctiveness.
§ The P could prove that manufacturing activities of the House of TATAS touched almost every aspect of day to day life from edible products to household products, automobile and computers.
§ The trade mark TATA is a “well known” trade mark and is exclusively associated in the minds of the public with THE HOUSE OF TATAS. By the year 1981, the House of TATAS had become a household name and various products under the mark TATA’ were available in every nook and corner of this country.
§ P showed that House of Tata consisted of over 50 companies, out of which, about seven are overseas companies and had an annual turnover of approximately Rs. 16,000/- crores.
§ P was able to prove that D company’s products were likely to deceive or cause confusion, and their trade mark was colourable imitation of the mark of the P.
§ Even though D showed evidence of user and reputation in respect of pressure cookers sold by them since 1981, their mark does not qualify for registration because TATA was not the surname of partners of the D company. How these persons picked up the word TATA as their trade mark remained a mystery.
§ Section 12 of Trade Marks Act, 1991 states that in a special circumstance the Registrar would allow one or more proprietor to use the same trade mark if the applicant for registration can prove he is an honest concurrent user. Even though the D used the trademark since 1981 he cannot register his trademark as it was not an honest user and the taint could not be purified by continuous user.

Rule:
The term “well-known trade mark” refers to a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.
Any trade mark with the status of a “well-known” substantially improves the extent of protection available to it, as it provides the owner of the brand, the exclusive right to the trade mark against all unlawful users, regardless of the differences in the field of business, goods or services. To make action successful, it is required to be established that the adoption of the brand by the unauthorized users is mala fide and without due cause.

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Trademark Case Brief – ITC V. Philip Morris

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Citation – 2010 (42) PTC 572 (Del.)

Facts: ITC is the company that owns the mark “WELCOME GROUP”. Under the same banner ITC owns 14 hotels which include ITC Maurya (Delhi), ITC sonar (Kolkata), ITC Windsor (Bengaluru) etc. ITC also claims that the same mark has been in extensive use for its series of products “Kitchens of India”, which are ready to eat.
Philip Morris is the company that owns the mark “Marlboro”, which is an established mark in the cigarette industry. In the year of 2010, Marlboro festive pack was introduced in India.
In this case, ITC alleges that Philip Morris has by launching its product, has diluted the mark owned by ITC called as the “Welcome group”. They allege that there is a high resemblance between the two logos and the well-established ITC logo is losing its distinctiveness that it has acquired over the years. They file for an injunction at the High Court of Delhi in order to stop Marlboro from trading under such a similar mark.

Issue: 
Whether the High Court of Delhi should grant such an injunction in favour of ITC based on its claim of distinctiveness for the “Welcome group” logo?

Judgment: The Court, in this case, took into the consideration arguments raised by both the Counsels for the plaintiffs and the defendants.
The gist of the plaintiff’s contention was that ITC had acquired distinctiveness over the years in the usage of the mark ‘Welcome group” as it had been in use in ITC’s hospitality services and food products.
The gist of the defendant’s contention is that the mark “Welcome group” was one of the many composite marks, which ITC owned. Further, though ITC has been involved in the manufacturing of cigarettes, it has never used this particular mark for the purposes of trade.
The Court laid down the following criterion to be satisfied for determining Dilution:
a) Impugned mark is either similar or identical to the senior mark
b) The senior mark is a well –known mark in India
c) The usage of the impugned mark in the trade is detrimental to the distinctiveness of the senior mark.
The Court then adopted a Global outlook in determining the case at hand. They said that the distinctiveness associated with a mark is based on its impression in its entirety, taking into consideration the principal constituents. They further said that the characteristic of the “Welcome group” logo might extend to the market of luxury goods, but not to the market for cigarettes.
They concluded that the Injunction could not be granted based on the above grounds and the introduction of the “Marlboro” mark will not dilute the “Welcome group” mark.

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Trademark Case Brief – Cadila Health Care Ltd. v. Cadila Pharmaceuticals

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Citation – 2001 (21) PTC 541 SC

Facts:
§ The appellant and the respondent are pharmaceutical companies. They had taken over the assets and business of the erstwhile Cadila Group after its restructuring under Sections 391 and 394 of the Companies Act.
§ Under the restructuring scheme both the appellant and the respondent got the right to use the name “Cadila” as a corporate name.
§ The appellant manufactured a drug “Falcigo” containing artesunate for the treatment of cerebral malaria commonly known as “Falcipharum”. On 7-10-1996, the Drugs Controller General (India) granted permission to the appellant to market the said drug under the trademark of “Falcigo”.
§ On 10-4-1997, the respondent got permission from the Drugs Controller General (India) to manufacture a drug containing “Mefloquine Hydrochloride”. This drug was also used for the treatment of “Falcipharum Malaria” and was being sold by the respondent under the trademark of “Falcitab”.
§ The appellant filed a civil suit for injunction against the respondent from using the trademark “Falcitab” on the ground that the same would be passed off as the appellant’s drug “Falcigo” for the treatment of the same disease in view of confusing similarity and deception in the names and more so because the drugs were medicines of last resort.
§ The respondent contended, inter alia, that the two products in question were Schedule ‘L’ drugs which could be sold only to the hospitals and clinics with the result that there could not even be a remote chance of confusion and deception.

Procedural History:
§ The trial court refused to grant an interim injunction.
§ The High Court upheld the order of the trial court.

Laws Involved:
§ In the case of unregistered trade-marks, a passing-off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words, a man is not to sell his goods or services under the pretence that they are those of another person.
§ What has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is the likelihood of deception or causing confusion. It is not correct to say that the difference in essential features is more relevant. The principle of phonetic similarity cannot be jettisoned when the manner in which the competing words are written are different.
§ Broadly stated, in an action for passing off on the basis of unregistered trade-mark generally for deciding the question of deceptive similarity the following factors are to be considered:
i. The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
ii. The degree of resemblance between the marks, phonetically similar and hence similar in idea.
iii. The nature of the goods in respect of which they are used as trade-marks.
iv. The similarity in the nature, character and performance of the goods of the rival traders.
v. The class of purchasers who are likely to buy the goods bearing the marks they require, their education and intelligence and the degree of care they are likely to exercise in purchasing and/or using the goods.
vi. The mode of purchasing the goods or placing orders for the goods.
vii. Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.

Issue: 
Whether the respondent’s trade-mark could be passed off as the appellant’s trade-mark?

Analysis:
§ Drugs have a marked difference in the compositions with completely different side effects, and therefore, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant’s drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff’s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. Schedule ‘H’ drugs are those which can be sold by the chemist only on the prescription of the doctor but Schedule ‘L’ drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise especially where the trade-marks are deceptively similar.
§ In the present case, although both the drugs are sold under prescription this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of the medical profession in India due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
§ Trademark is essentially adopted to advertise one’s product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing-off action, the plaintiff’s right is against the conduct of the defendant which leads to or is intended or calculated to lead to deception.
§ Public interest would support a lesser degree of proof showing confusing similarity in the case of the trademark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life-threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.
§ The decisions of English courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand.
§ While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trademark is written and to whom different words with a slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important test which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to the similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. Stringent measures should be adopted especially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.
§ Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940, it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Mark Office pertaining to the trademark in question which will enable the Drug Authority to arrive at a correct conclusion.

Conclusion: The Supreme Court refused to interfere with the orders of the courts below but gave directions for expeditious disposal of the suit. In the instant judgment, the Supreme Court gave the reasons for non-interference with the impugned orders while setting out the principles which are to be kept in mind when dealing with an action for infringement or passing off, especially in the cases relating to medicinal products.

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Trademark Case Brief – Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd

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Citation – [2004] All ER (D) 301

Facts: 
The petitioner is Philips Electronic, which had presented a shaver in 1966. The shaver had a plate with three rotational shavers orchestrated in an equilateral triangle. It had enlisted its trademark for the shaver. The imprint was a plate of three turning razor-sharp edges in an equilateral triangle. The other producer i.e., Remington then concocted shavers that were sold in the American market. Philips asserted that Remington had encroached its trademark by utilizing the characteristic of a shaver with three turning sharpened pieces of steels orchestrated in an equilateral triangle which made disarray in the psyches of the customer as they thought it was an item produced by Philips. Remington then again denies that it is trademark infringement and actually the enlistment of the imprint for Philips ought to be denied.
Remington battled that only on the grounds that the imprint has gained a distinctive character in light of the fact that Philips concocted the shaver, to begin with, the trademark law does not permit him to enrol such stamps. The enlistment of such checks ought not to be permitted in light of the fact that it is important to acquire a fundamental specialized result and in this way such enrolment is invalid.

Issue: 
Whether the shape of the mark should be necessary in order to obtain a specific technical result?

Holding: 
Philips had not obtained a particular character despite the fact that it was the dealer that presented the shaver with such a shape in the business. The courts held that it couldn’t enrol as it was a shape, which is important to get a specialized result, and consequently, enlistment of such an imprint is invalid. Hence it was held that Remington has not encroached the trademark of Philips, since it was never a legitimate trademark and Philips had neglected to demonstrate that it had obtained distinctive attributes.

Ratio: 
The trademark law goes for keeping and shielding a proprietor from being allowed imposing business model over specialized and utilitarian arrangements. It ought not to turn into a deterrent to alternate contenders who need to enter and uninhibitedly offer their items and administrations. Shapes that give specialized result ought to be openly accessible and accessible to all. Regardless of the possibility that different shapes can give the same specialized result, the law does not give the privilege to exchange check a shape, which gives a specialized result. If a shape has obtained a distinctive character from being utilized over a time of time, it can be permitted to be enrolled. At the same time, the imprint utilized by Philips did not gain any distinctive attributes. The shape utilized by Philips was one, which was important to get that specialized result i.e., the route in which the hair would be trimmed. In this way, such check was to be rejected enrolment. If one needs to enrol their imprint then it is basic that there ought to be an impulsive expansion to the shape, which can’t be credited to perform some useful reason.

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Trademark Case Brief – Rolex SA v Alex Jewellery Pvt Ltd

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Citation – 2009 (6) RAJ 489 (Del.)

Facts:The plaintiff (Rolex) is a company incorporated under the laws of Switzerland and is engaged in the business of manufacture and distribution of premium quality watches. The plaintiff is aggrieved by the action of the defendant (Alex) carrying on business at Mumbai of manufacturing, selling, distributing and trading in artificial jewellery under the mark ROLEX. The Plaintiff had also come across a website of defendant which was registered as www.rolexjewelleryhouse.com and it was brought to light with further investigation that defendant was indeed manufacturing artificial jewellery in the name of ROLEX which was in turn being retailed
The plaintiff (Rolex) claimed the following:
a) Adoption of the trademark ROLEX and the first registration thereof in Switzerland in 1908.
b) Use of that trademark for trading around the world
c) That in India also it is registered in class 14 relating to Horological and chronometric instruments
d) That the plaintiff on 24th April, 2001 also got ROLEX in Hindi registered in class 14 with respect, to chains, charms, diamond earrings, jewel cases, medallions, necklaces, ornaments etc.
e) Have used the trademark ROLEX in India since 1912 i.e., even prior to the registration thereof in 1949
f) It is the case of the plaintiff that ROLEX is a well known trade mark as defined under Article 6 of the Paris Convention to which India is a signatory
The defendant argues that law of limitation bars the suit. The defendant also claims protection under S. 34 and 29 (4)(c) of the Trademarks Act.

Issues:
1) Whether the plaintiff’s mark can be categorized as a well-known mark.
2) Whether S.34 and 29 (4) (c) can be used as a valid defense by the defendant

Rule:
§ Section 33 of the Trademarks Act presents the rule of acquiesce which states that the proprietor of an earlier mark cannot oppose the latter trademark or claim to be invalid where the proprietor of the first trademark has accepted the latter trademark without a protest for a continuous period of five years. Knowledge of the existing latter mark and the unwillingness to oppose is what accounts for acquiesce.
§ Section 34 being a non obstante clause protects the proprietor of marks who (1) holds the first use of the mark in trade in relation to the predecessor in his title or (2) used the mark before the first register of trademark in respect of the goods of his predecessor.
§ Section 29 (4)(c) of the said act protects well-known marks, meaning those whose reputation in India is prominent enough to cause unfair advantage to those who use it in trade, which could also cause detriment to the respect and distinctiveness of their own mark.

Analysis:
The court justifies in its holding that:
§ Section 34 cannot be used as a defense as the defendant could not prove continuous use of the mark since their claim in 1993.
§ For section 33 to apply, the defendant must have registered trademark Rolex in relation to artificial jeweller in 1993. As they had not, they cannot contend for the plaintiff to not follow through with the suit. While they were also unable to present the paperwork relating to the intent to trade until after registration which was in 2001.
§ The defendants must disprove that the plaintiff is well known mark in India, which does not have to be only in regards of jewellery.

Holding:
The Court held that “Rolex” was a well-known trademark since it has been registered in more than 140 districts and also has a reputation in India and therefore, the defendant was restrained under Section 29(4)(c) of the Trade Marks Act from using the trademark “Rolex” in any way and was ordered to take down the website as well. The goods of the plaintiff would cease to be a status symbol if it had continued, which would prove to be detrimental to the plaintiff.

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