28 Sep 2009

Trade Mark, Passing Off: Recent decisions of Delhi High Court

In a series of three recent decisions, the Delhi High Court has upheld the uniqueness and brand-sanctity of leading companies to grant injunctions against the alleged-imitators of their products. 

In the first, holding that the term 'Vardhman Silk Mills' had inconspicuously carried "reputation for its products and services and that its mark 'VARDHAMAN' is distinctive of its business in India" and therefore the use of the name 'Vardhman Sarees' by a competitor was not allowed. The Court also observed that "the mark is a contrived one in relation to silks and garments, and has acquired distinctiveness, connecting it with the plaintiff’s services. The facts revealed to this court are sufficient to hold that the defendant is indulging in infringement of the plaintiff’s trademarks, with the attendant confusion". 

The second case related to the allegations that a product (MULEX) was being sold as "a colourable imitation or substantial reproduction of the plaintiffs’ product “CASTROL SUPER TT” / “CASTROL 2T”. The Court noted that "the two competing products with their similar packaging is more than likely to be confused. Although the trade names under which the two competing products are sold are different words i.e. CASTROL and MULEX, the overall appearance of the pouches are similar- the most prominent common feature is the device of “Hockey Sticks”, which is popular and is distinctive of the plaintiffs’ products, although in the plaintiffs’ product the upper band is in red and the lower one in green and vice versa in the defendants’ product but it still more or less appears to be the same. The colour scheme used by the defendants is similar to that used on the plaintiffs’ product. The plaintiffs’ have been able to show that they are the prior users and adopters of the said device. The court has to also bear in mind the sale process as mentioned aforesaid, due to which the likelihood of confusion increases. The consumer in such purchase will barely examine the packaging closely while purchasing the same as the product is hanging at a distance from the consumer and it is a small price item i.e. Rs. 5/-, where two such similar products bear an overall resemblance. The plaintiffs are thus, held entitled for a decree of injunction as is claimed."

In the third decision, the 'India Today' group has successfully sought the direction of the Delhi High Court on the sale of a "newspaper under the name and style of ‘Today News’ in Hindi". The High Court noted, "I have visually examined the infringing name ‘Today’ in Ex.-PW1/30 with that of the registered trademark ‘India Today’ in Hindi Ex.-PW1/27. I do find that defendants have copied the trademark of the plaintiff ‘Today’ in Hindi in an identical and similar manner which, for a common person, visually could appear to be the same. A common man under these circumstances would go for purchasing the paper published by the defendants taking it to be published by the plaintiff company i.e. the same publisher who published ‘India Today’ in Hindi or in English and other magazines carrying the trademark name ‘Today’. Phonetically also, when spoken, the name ‘Today’ as registered would be identical to name ‘Today News’ when spoken." 

On these facts, the High Court ruled in the favour of the India Today group, thereby passing "a decree of permanent injunction in favour of the plaintiff and against the defendants thereby restraining the defendants themselves, their agents or any other persons on their behalf from printing/publishing, offering for sale, advertising, directly or indirectly dealing in respect of printing and publication material bearing the name ‘Today’ or ‘Today News’ and from passing off their newspaper or any other publication as the publication of the plaintiff or any other trademark/name/tile/name of a publication which is deceptively similar to the plaintiff’s trademark ‘Today’, in Hindi or any other language and from using the name ‘Today in any manner or in the same logo script or an obvious or fraudulent imitation or a substantial reproduction of the plaintiff’s logo script used in characteristic manner or any other logo script which is imitation and substantially reproduction of plaintiff’s highly artistic work amounting to infringement of the plaintiff’s copyright therein." 

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