Recently, the Delhi High Court refused to grant an interim injunction to Campus Active Wear Ltd. (“Plaintiff”) against Rama Shankar Garg & Ors. (“Defendants”), from using the CAMPS and CAMPS Device marks. The Plaintiff submitted that it has been using the CAMPUS mark since 1984 and adopted its logo of the reverse red double-tick in the year 1997. As per the Plaintiff, the Defendants obtained a registration for the mark CAMPS only in the year 2001, and the Defendants have adopted the Plaintiff’s reverse red double-tick logo in its entirety. The Plaintiff also relied on screenshots from the Defendants’ website showing counterfeit goods of other brands being sold by the Defendants. On the other hand, the Defendants claimed that they have been using the mark CAMPS since 1980 and the CAMPS logo since 1996. As per the Defendants, the Plaintiff starting using the CAMPUS mark only after the Defendants’ goods started gaining popularity in the 2000s. The Defendants also submitted that the Plaintiff’s claim of infringement is invalid since the Defendants are protected as prior users under Indian trade mark law. The court observed that both parties have equal standing in terms of their statutory rights. The court, further noted that in the absence of a plea of invalidity of the Defendants’ registration by the Plaintiff, it cannot press for an interim injunction on the ground of infringement. The court then addressed the question of passing off. The court noted that the Plaintiff had not placed any document on record to show that it is the prior user, and opined that the rights of a prior user are legally superior over those of a registered proprietor who obtained registration later. Further, it was held that the Plaintiff had failed to place any evidence on record to show that the adoption of the Defendants’ mark was dishonest. Lastly, the court observed that the substantial delay in filing the suit tilts the balance of convenience in favour of the Defendants. In light of this, the Plaintiff’s application for an interim injunction was dismissed. Campus Active Wear Ltd v. Rama Shankar Garg & Ors., CS(COMM) 387/2022, Judgement dt. March 7, 2023, Delhi High Court

Recently, the Madras High Court, in a writ petition filed by Galatea Ltd. (“Petitioner”), directed the Registrar General of the Madras High Court to frame rules to transfer pending cases from the erstwhile Intellectual Property Appellate Board (“IPAB”), Chennai to the High Court, and directed the State of Tamil Nadu (“State”) to notify the Intellectual Property Division Rules, 2022 in the official gazette at the earliest. The Petitioner, aggrieved by the abolishment of the IPAB, sought a writ of mandamus directing the Registrar General to frame rules to transfer pending cases from the erstwhile IPAB and list them before appropriate benches of the court. The Petitioner had earlier filed an appeal before IPAB, Chennai, to challenge an order passed by the Controller General of Patents, Chennai, rejecting its patent application, which has now hit a dead-end. The court noted that, out of over two thousand cases received from the erstwhile IPAB, over one thousand are pending for notification of rules and, in many cases, the patents would expire. The Registrar General submitted that he had, earlier reached out to the State to notify the Madras High Court Intellectual Property Division Rules, 2022 in the official gazette, and is prepared to inaugurate the Intellectual Property Division of the court within a week from the date of such notification, following which, the court granted a week’s time to the State to issue the notification. The court, while acknowledging the delay caused to litigants, directed the State to notify the Madras High Court Intellectual Property Rights Division Rules, 2022, within one week, and asked the Registrar General to make necessary arrangements to inaugurate the IP Division of the Madras High Court, upon notification of the rules in the official gazette.

The Delhi High Court recently restrained R.G Biocosmetic Pvt Ltd (“Defendant”) from manufacturing, marketing or selling disposable female urination device identical to registered design of Sirona Hygiene Pvt. Ltd. (“Plaintiff”) or any other product deceptively similar to the Plaintiff’s suit design. The suit was based on the Plaintiff’s earlier rights in the Registered Design No. 263764 titled “Disposable Female Urination Device” sold under the mark PEE-BUDDY. The Defendant submitted that the Plaintiff’s Registered Design lacks novelty as a similar product intended to serve the same purpose was already in commercial circulation under the brand “P-MATE” and registered in the United States, much before the Plaintiff visualized the Registered Design. Hence, the Plaintiff’s Registered Design is merely a trade variant of P-MATE. The Court, while rejecting the Defendant’s contention that the Plaintiff’s Registered Design lacks novelty, found the differences between the Plaintiff’s Registered Design and P-MATE sufficient to impart novelty to the Plaintiff’s Registered Design. In particular, the court observed that since the shape of both the designs which would come in contact with the body are different, such difference impacts the manner in which the respective products will be used, and hence, PEE-BUDDY is not a mere a trade variant of P-MATE. Since the Defendant did not even contest that its design is, in fact, identical to the Plaintiff’s Registered Design, the Court found a clear case of infringement. Accordingly, the Court granted an ad interim injunction in favour of the Plaintiff. The Defendant was, however, given the liberty to sell off the current stock that is already in circulation within two (2) months. SIRONA HYGIENE PRIVATE LIMITED vs. AMAZON SELLER SERVICES PRIVATE LIMITED & ORS. CS(COMM) 503/2022 & I.A.20127/2022, I.A.458/2023, I.A.2491/2023, I.A.4887/2023.

The Himachal Pradesh High Court recently restrained Accord Distillers & Brewers Pvt Ltd. (“Defendant”) from using “MISSIONARY MONKS AUTHENTIC PURE XO BRANDY”, and/ or any other marks that are identical or similar to the Mohan Meakin Limited’s (“Plaintiff”) OLD MONK and/ or MONK marks. The suit was based on the Plaintiff’s earlier rights in the marks OLD MONK and MONK. It was the Plaintiff’s case that the Defendant’s adoption of the mark “MISSIONARY MONKS AUTHENTIC PURE XO BRANDY” in a manner to portray the word MONK prominently amounts to passing-off of the Defendant’s goods as goods originating from the Plaintiff and infringement of the Plaintiff’s right in its registered marks. The court observed that the Plaintiff has prior statutory rights as well as common law over the marks OLD MONK and MONK and has made a prima facie in its favour. Accordingly, the court granted an ad interim injunction in favour of the Plaintiff and restrained the Defendant from using the mark “MISSIONARY MONKS AUTHENTIC PURE XO BRANDY” till the next date of hearing. Mohan Meakin Limited vs. Accord Distillers & Brewers Pvt. Ltd., COMS No.1 of 2023, Order dt. March 17, 2023.

The Delhi High Court recently dismissed a writ petition by Kaira District Cooperative Milk Producers (“Petitioner”) under Article 226 of the Constitution of India seeking issuance of writ of mandamus to the Registrar of Trade Marks to withdraw acceptance, quash publication, cancel registration, and pass detailed reason for accepting marks that are identical or similar to the Petitioner’s registered AMUL marks. It was the Petitioner’s case that it holds several registrations for its AMUL marks across various classes of goods and service and in spite of this, multiple applications for registration, acceptance, publication and registration of various marks incorporating AMUL are recorded on the Register of Trade Marks. The Court, however, came down heavily on the Petitioner for invoking the Court’s extraordinary jurisdictions without exhausting the remedies available under the Trade Marks Act, 1999 (“TM Act”). In particular, the Court noted that the TM Act provides adequate avenue to oppose published marks, seek cancellation of registered mark and also seek for extension of time to oppose published marks, subject to the Registrar’s satisfaction that there exists sufficient cause to grant such extension. The Court, accordingly, re-emphasised on the constitutional requirement of exhausting alternate remedies before writ jurisdictions can be invoked. The Court also opined that the prolonged duration of opposition or cancellation proceedings is not a sufficient ground to invoke this Court’s writ jurisdiction, and even in such cases, the Court would only be justified to expediate such proceedings, and nothing beyond it. Though the Court dismissed this petition without cost, it re-iterated that any order passed under the TM Act should be well reasoned and speaking in nature. Kaira District Cooperative Milk Producers Union Ltd & Anr vs. Registrar of Trade Marks & Ors. W.P.(C)-IPD 14/2021.

The Bombay High Court recently dismissed an application for interim injunction by PhonePe Pvt. Ltd. (“Plaintiff”) against Resilient Innovations Pvt. Ltd. (“Defendant”) from using the mark “postpe” for its alleged similarity with Plaintiff’s PhonePe and Pe Marks. This comes as a fresh setback to the Plaintiff on its claim of exclusive right on PhonePe and Pe Marks. It was the Plaintiff’s case that the Defendant’s adoption and use of the mark “postpe” amounts to infringement of the Plaintiff’s right in its registered PhonePe and Pe Marks and passing-off of the Defendant’s services as the services originating from the Plaintiff. The Plaintiff further claimed that the suffix “Pe” after the word “Phone” in its trademark has colloquial Hindi meaning of “On”, denoting services made available on phones. The Court disagreed with the Plaintiff and found the rivals marks, the rival services and the target consumers of the rival services are different. The Court also considered Plaintiff’s inconsistency over the meaning of the term Pe with the stand taken before Delhi High Court in a prior infringement suit filed against the Defendant’s Mark “BharatPe”. The Plaintiff in that case asserted that “Pe” is a misspelling of Pay and it refers to payment. The Court, applying the principle of estoppel to this proceeding, held that, the Plaintiff shall not be allowed to make representation and assertions contrary to the ones made in a similar proceeding. In view of this contradiction and overall dissimilarity of the rival marks and target consumers, the Court denied any interim relief to the Plaintiff. PhonePe Private Limited Vs. Resilient Innovations Private Limited COMMERCIAL IP SUIT NO.160 OF 2022.

The Trade Marks Registry, Delhi (“Registry”) recently refused an application for registration of the device mark BURGER KING FAMILY RESTAURANT (“Impugned Mark”) by one Mr. Virendra Kumar Gupta (“Applicant”), pursuant to an opposition filed by Burger King Corporation (“the Opponent”). The Applicant had applied to register the Impugned Mark for foodstuffs covered in Class 29 with a user claim since 2005 and the opposition was based on the Opponent’s earlier rights in the BURGER KING marks. It was the Opponent’s case that the Impugned Mark is deceptively similar to the Opponent’s BURGER KING marks and owing to immensely popularity and exclusive recognition of the BURGER KING marks in the Opponent’s favour, Applicant’s adoption and use of the Impugned Mark would confuse and deceive the consumers. The Applicant, on the other hand, submitted that since BURGER KING in relation food products and related service is generic and common to trade, no single party, including the Opponent can claim exclusive right over BURGER KING. The Applicant also asserted use of the Impugned Mark since 2005 to allude to the Impugned Mark’s distinctiveness and exclusive association with the Applicant. The Registry, while rejecting the Applicant’s both the contention noted that not only is the Applicant’s mark deceptively similar to the Opponent’s BURGER KING marks and the descriptive terms Family Restaurant do not add anything to the distinctiveness of the Impugned Mark, but the Applicant has also not substantiated the use since 2005 claimed in the application. The Registry accordingly the refused the application. The Registry, while doing so, stressed on the pre-requisite of bona fide adoption, genuine use claim in any trade mark application since it is the Registry’s duly to maintain purity of the Trade Marks Register.

The Delhi High Court, in a recent judgment, vacated an ad-interim injunction granted in favour of Central Park Estates Private Limited (“Plaintiff”) against Samvara Buildtech Private Limited’s (“Defendant”) use of identical CENTRAL PARK marks, and instead directed the Defendant to ensure that the expression CENTRAL PARK is used in a smaller font with more prominence given to Defendant’s other registered marks and is never used in isolation. The Plaintiff owns various registrations for the CENTRAL PARK marks and claims to enjoy unparallel goodwill and reputation under them. As per the Plaintiff, it came across the Defendant’s use of the infringing CENTRAL PARK mark on its websites in 2017. The Defendant, on the other hand, claimed that the Plaintiff is estopped from claiming exclusivity over the CENTRAL PARK marks owing to prosecution history estoppel. As per the Defendant, given that the Plaintiff had, while responding to objections raised by the Trade Marks Registry (“Registry”) during the examination of its trade mark applications, contended that the cited marks which comprised of the words CENTRAL PARK, were conceptually and visually different from its marks, it cannot now claim exclusive rights in these marks. The Defendant also argued that it is using the words CENTRAL PARK in a descriptive and generic sense. The Plaintiff, in response to the Defendant’s submissions, contended that the words CENTRAL PARK are the prominent and essential feature of both the rival parties’ marks and the Defendant’s stance that the mark CENTRAL PARK is generic cannot be sustained only on the ground that third parties are also using the mark. The court took note of the Plaintiff’s stance before the Registry and observed that the Plaintiff cannot now take a contrary stand. In the court’s view, the ad-interim injunction deserves to be vacated on this ground alone. The court also prima facie observed that there is merit in the Defendant’s assertion that the mark CENTRAL PARK is per se descriptive in character and common to trade. Accordingly, the court was of the opinion that the Plaintiff was unable to make out a case of for an interim injunction. Pertinently, the court despite holding the Plaintiff’s marks to be generic and common to trade and vacating the interim order, observed that the manner of usage of the CENTRAL PARK mark by the Defendant is likely to cause confusion amongst the potential consumers. Therefore, the court restrained the Defendant from using the expression CENTRAL PARK in a standalone manner or in a font size conspicuously larger than the Defendant’s other registered marks. Central Park Estates Pvt. Ltd. & Ors. v. Samvara Buildtech Private Limited & Anr., CS(Comm) 189/2017, Judgement dt. March 29, 2023.

Recently, the Delhi High Court restrained forty rogue websites from hosting, streaming, reproducing, distributing, making available and/or communicating to the public, works in which leading global entertainment companies, such as Universal City Studios LLC, Warner Bros. Entertainment Inc., Netflix Studios, LLC, etc. (“Plaintiffs”) hold exclusive rights. As per the Plaintiffs, the defendant websites are engaged in online piracy by making available online, original content in which the Plaintiffs hold rights. These websites allow (a) viewing the content, (b) downloading the content to a device for watching later, and/or (c) identify other locations on the Internet which enables such activities. As per the Plaintiffs, the defendant websites are using “pirate branding” to signal that they are merely new iterations of websites that have been previously blocked, with the same functionality and purpose. Further, the details of owners of these websites are either incomplete or hidden by domain privacy services. The Plaintiffs submitted before the court that such acts of the defendant websites which allows communicating, copying and storing of the Plaintiffs’ works constitute infringement and ought to be restrained. The court was of the opinion that the Plaintiffs have made out prima facie case against acts of the defendant websites. Accordingly, the court restrained the defendant websites, their mirror/redirect/alphanumeric websites and other associated websites/parties from hosting, streaming, reproducing, distributing, making available/communicating to public, works in which the Plaintiffs hold rights. Further, Internet service providers were directed to block access to the URLs of these websites and the Department of Telecommunications and the Ministry of Electronics and Information Technology were directed to issue notices for immediate action against these websites. The Plaintiffs have also been allowed to add any additional websites engaged in similar activities as parties, during the pendency of the suit. Universal City Studios LLC & Ors. v. FZMOVIES.NET & Ors., CS(COMM) 202/2023, Order dated April 11, 2023.

The Delhi High Court recently restrained SNJ Distillers Pvt. Ltd. and Empee Distillers Ltd., (“Defendants”) from using the GREEN CHOICE mark or any other marks that are identical or similar to Allied Blenders and Distillers Pvt. Ltd.’s (“Plaintiff”) prior OFFICER CHOICE, OFFICER’S CHOICE BLUE and other CHOICE-formative marks for alcoholic beverages and Indian Made Foreign Liquor (IMFL). It was the Plaintiff’s case that the Defendants dishonestly adopted the GREEN CHOICE mark for identical products as the Defendants had failed to provide any justification for the adoption of the mark, and that such adoption amounts to infringement and passing-off. The Court observed that the Plaintiff not only has prior statutory as well as common law rights over the CHOICE-formative marks, but the OFFICER’S CHOICE mark has also been recognized as a well-known mark. Further, different courts had previously restrained various third parties from using CHOICE-formative marks such as, Emperor’s Choice, Master’s Choice, etc. The Court also observed that since the Plaintiff also offers various variants of the OFFICER’S CHOICE mark, the public will associate GREEN CHOICE with Plaintiff. The Court further noted that since the Defendants had entered a bottling arrangement with Plaintiff, the Defendants had knowledge of the Plaintiff’s reputation and huge sales turnover for whiskey under the mark ‘Officer’s Choice’. The Court also rejected the Defendants’ contention that the word CHOICE was common to trade of whiskey, since the Plaintiff owned registrations of more than 70% of the CHOICE-formative marks cited by the Defendants. Accordingly, the court made the ex parte ad interim order previously granted in favour of the Plaintiff absolute and restrained the Defendants from using the GREEN CHOICE mark till the disposal of the suit. Allied Blenders and Distillers Pvt. Ltd. v. SNJ Distillers Pvt. Ltd. and Anr. [CS(COMM) 115/2022], Judgment dated April 19, 2023.