Recently, Modicare Limited (“Appellant”) appealed an order passed by the Registrar of Trade Marks refusing to register its application for the mark ‘SALON PROFESSIONAL’ covering hair care products in Class 3 before the IP Division of the Delhi High Court. One of the grounds for refusal of the application by the Registry was that the mark is descriptive of the goods covered by the application. The Appellant, in support of registration of its mark, claimed that it adopted the mark back in 2003 and had spent huge sums of money in promoting goods under the mark. It also relied on its registration for the mark ‘MODICARE SALON PROFESSIONAL’ dated 2016 to argue that registration of the refused mark should also be allowed. On perusing the manner in which the mark was used, the court noted that, while the Appellant’s application was for the word mark SALON PROFESSIONAL, it was using the mark in a logo form. The court observed that, since the mark which is in use by the Appellant is a device mark, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words ‘SALON’ and ‘PROFESSIONAL’. The Appellant, however, was willing to modify the application for the word mark to a device mark. Considering the long use of the mark and the registration for the mark ‘MODICARE SALON PROFESSIONAL’, the court directed to advertise the device mark on the conditions that: (a) the device mark will be associated with the prior registration for MODICARE SALON PROFESSIONAL, (b) the word mark will be replaced by the device mark in use pursuant to the Appellant filing the appropriate request at the Registry, and (c) there would be no exclusive rights in the words ‘SALON’ or ‘PROFESSIONAL’. MODICARE LIMITED vs REGISTRAR OF TRADEMARKS, C.A.(COMM.IPD-TM) 8/2022, Decision dated April 4, 2022

This past week, the Delhi High Court refused to grant an interim injunction for usage of tagline “STIMULATES MIND. ENERGIZES BODY.” by the Pepsico. The Plaintiff, Red Bull, filed a suit for trademark infringement against the defendants claiming the use of their tagline to be deceptively similar to Plaintiff’s registered trademark “VITALIZES BODY AND MIND” which has been in use since 1987. Plaintiff stated that this tagline has become a source identifier of their products and due to their long and extensive usage it has acquired distinctiveness, in relation to their products. It was the case of Defendants that they filed a rectification against the said tagline of Plaintiff on the grounds that it is descriptive and laudatory. Further, Defendants claimed that the tagline is being used by them only in a descriptive manner and thus there has been no trademark registration sought till now. The Defendants further contended the usage and layout of cans is used by both parties is totally different and thus the case of passing off cannot be made. The court after hearing the arguments of both sides held that there is no prima facie case of passing off and trademark infringement. The appearance of both products is different and there appears to no similarity between them. Further, the court held that the taglines of both the parties are descriptive and laudatory in nature and thus there is no registration granted in favor of Plaintiff’s. Further the court opined that the impugned tagline of Defendant only appears in a small font on the products and there lies no registration for the same. Whether the tagline of Plaintiff has acquired distinctiveness or secondary meaning in respect of Plaintiff’s products has to be established at the stage of trial. The court held that the Balance of convenience lies in the favor of the defendants for not granting interim injunction as their products are being sold in the market with impugned tagline for almost five years and hence the injunction application was dismissed.

HTC Corporation, one of the leading manufacturers of consumer electronic items, recently filed a suit in the Delhi High Court against multiple Chinese firms for infringement of the HTC mark. The plaintiff relied upon its registrations, revenue figures, etc. and averred that the defendants are selling hair clippers, dryers, etc. bearing the HTC mark. The plaintiff also claimed that despite a cease and desist letter, defendants continue to sell their products and that the listings of defendants on Amazon India have links which redirect to the plaintiff’s website. The defendants argued that the products are dissimilar, and that the defendant had a valid registration for its mark in Class 8. It was further argued that the plaintiff had not filed any proceedings against the defendant’s mark for the last six years except a rectification filed just prior the suit. The court observed that the plaintiff has through its extensive and continuous use of the HTC mark developed a reputation which the defendants are trying to unlawfully gain from. It was also held that the defendants have no valid explanation for adopting the HTC mark and hyperlinking website of the plaintiff on its listings clearly reflects dishonesty on part of the defendants. The court also rejected the contention of the defendant that the goods are different in light of the plaintiff’s reputation in India. Accordingly, the court passed an interim order restraining the defendants from using the HTC mark till the rectification proceeding is decided. HTC Corporation vs. Mr. LV Degao & Ors. CS(COMM) 263/2020.

Recently, the Bombay High Court refused the stay the release of the Hindi movie ‘Jersey’ in a suit alleging copyright infringement. The suit was filed by a scriptwriter who claimed that the Hindi movie is plagiarised from his registered script ‘The Wall’. The plaintiff also claimed to have issued a legal notice to the defendants in which he sought compensation through the revenue generated by the Telugu movie on which the Hindi movie was based. The defendants, on the other hand, argued that they had issued a public notice inviting objections at the time it had applied for the remake rights of the Telegu movie. The defendants further asserted that the Telugu film had already released back in 2019 and since then has been aired on various channels and OTT platforms. It was also stated that the trailer and publicity of the Hindi movie has been going on since 2019 and that the present suit suffers from inordinate delay. The court sided with the defendant to state that such delay would be fatal in this case as the Telegu movie was already in public domain and the defendant had sought objections from the public. Accordingly, the court refused to grant interim relief this close to the release date. COMIP SUIT(L) NO. 10429 of 2022, Order dt. April 13, 2022

Recently, Kerzner International Limited (“Plaintiff”) successfully enforced its rights in the ATLANTIS mark in relation to entertainment services, hotels, resorts and other connected services before the Delhi High Court against defendants who were using the ATLANTIS PARK BALLROOM mark in relation to a banquet hall in Delhi. The Plaintiff claimed that it is one of world’s most renowned service providers in management, development and operation of resorts, hotels, etc. with properties in China, Dubai and Bahamas. It averred that its earliest registration for the ATLANTIS mark worldwide dates back to 1993, while its use commenced in 1994. The Plaintiff also relied on its registrations in India in Classes 35, 36, 39, 41 and 42. The Plaintiff claims that it learnt of an application for the ATLANTIS PARK BALLROOM mark, in Class 43, filed by the defendants. This application was dated October 2020 and claimed use since December 2017. The Plaintiff also claimed to have sent the defendants a legal notice, to which the defendants replied that the services provided by the parties and the trade channels are different. The defendants also stated that the Plaintiff has no reputation in India. The Plaintiff argued that, even though it does not have any resort in India, there is sufficient use and reputation in India owing to the Internet and due to Indians traveling abroad and visiting its properties. The Plaintiff also cited its revenue figures to show the bookings made from India in support of its contentions. In light of the above, the court held that the Plaintiff had made a prima facie case and passed an order restraining the defendants from making any fresh bookings under the ATLANTIS PARK BALLROOM mark. However, the court allowed the defendants to honour the bookings already made. KERZNER INTERNATIONAL LIMITED v. VIKAS AGGARWAL & ORS., CS(COMM) 321/2022, Order dt. May 13, 2022

Recently, Blue Heaven Cosmetics Pvt. Ltd successfully enforced its rights in the distinctive packaging which is used in relation to eye liners before the Delhi High Court against a defendant which was using a nearly identical packaging. The plaintiff claimed that the defendant’s eye liners are sold in a packaging that is virtually identical to that of the plaintiff and that the defendant has copied various elements including the letter styling, colour scheme, placement of various features, colour combination etc. of the packaging. The court had, in 2021, granted an ex-parte ad interim injunction and restrained the defendant from copying the trade dress of the plaintiff’s eye liners. However, despite repeated summons, the defendant refused to enter appearance before the court or file any response to the suit. Given this, and in the light of the plaintiff’s submissions, the court decreed the suit in favour of the plaintiff and restrained the defendant from copying the trade dress of the plaintiff’s products. The court stated that considering the fact that the goods in question are used by consumers on their eyes, the standard of quality that is expected is quite high, and the adoption of a nearly identical packaging cannot be a case of innocent adoption. Given this, damages and costs to the tune of INR12 lakhs were awarded to the Plaintiff. Blue Heaven Cosmetics Pvt Ltd V. Shivani Cosmetics [CS(COMM) 702/2021]. DHC Order dt. May 18, 2022

Burger King Corporation, (“Plaintiff”), filed a suit before the Delhi High Court against the defendants for registering misleading domain names similar to the Plaintiff’s BURGER KING mark. It was the case of the Plaintiff that it has been continuously and extensively using the mark BURGER KING since 1954 worldwide, and in India since 2014. The Plaintiff averted that it had over 250 restaurants in India and also uses the domain names that incorporate the BURGER KING mark, such as BURGERKING.COM, BURGERKING.IN and  BURGERKINGINDIA.IN. The Plaintiff claimed that in March 2021, it came to know about the existence of the website located at www.burgerkingfranchises.in and that the defendant was duping unsuspecting members of the public into believing that he was a representative of the Plaintiff and inviting the general public to apply for the Plaintiff’s franchise opportunities. The court held that the Plaintiff had made out a prima facie case and that the balance of convenience also lay in favour of the Plaintiff and granted an ad-interim injunction against the defendant. The court restrained the defendant from offering any services and using or registering corporate or domain names bearing the mark BURGER KING. The court also ordered freezing of the Defendant’s bank account and blocking of the fraudulent website. Burger King Corporation v Swapnil Patil & Ors., Delhi High Court decision dt. 10.5.2022 in CS (COMM) 303/2022.

The Supreme Court of India recently ruled upon a question of law and held that an offence under Section 63 of the Copyright Act is a cognizable and non-bailable offence. The question arose from an order of the Delhi High Court where the Delhi High Court quashed criminal proceedings under the section on the ground that the offence was not a cognizable and non-bailable offence. Both the parties presented pleadings and arguments in support of their contentions, but the Apex Court took note of the fact that under the section of the Copyright Act, the maximum punishment which could be imposed was of three (3) years. The Supreme Court also took into account the fact that the criminal procedure code of the country states that if the offence is punishable with imprisonment for three (3) years and above but not more than seven (7) years, then such offence is a cognizable offfence. In light of the above, the Apex Court ruled that Section 63 of the Copyright Act is a cognizable and a non-bailable offence. M/s Knit Pro International vs The State of NCT of Delhi & Anr, Criminal Appeal no. 807 of 2022, Order dt. May 20, 2022.

The Delhi High Court recently decreed a suit filed by Sholay Media Entertainment Pvt. Ltd. & Anr. back in 2002 against defendants that were infringing on the title of the iconic film, SHOLAY. The defendants had unauthorizedly registered the domain name SHOLEY.COM, published a magazine under the name ‘Sholay’ and were selling merchandise bearing the movie’s name and iconic movie scenes and characters. In their defense, the defendants contended that the website will be used by educated people, resulting in a lower likelihood of confusion, and, in any case, comprises a dictionary word ‘SHOLAY’ which means “burning coal”. The court, while recognizing that ‘SHOLAY’ is one of the biggest, record-breaking films that has ever been produced in the history of Indian cinema, observed that it would be simple for anyone, not just educated people, to establish a link between the movie, SHOLAY, and the defendant’s website. The use of identical logos, marks and names from the film further complicated matters. It also observed that certain films cross the boundaries of just being ordinary words, and the title of the film ‘Sholay’ is one of them. It concluded that movie titles are entitled to protection under trademark law and, thereby, restrained the defendants from using any variation of the mark or name ‘Sholay’ on the Internet or otherwise, including use as a metatag in the source code. Also taking note that the defendants had, clearly, adopted the name in a mala fide and dishonest manner and contested the matter for 20 years, the court imposed a whooping INR 25 lacs as costs and damages on the defendants.

The Delhi High Court recently examined the question of valuation for IPR suits and held that, IPR suits should, ideally, be valued above INR 3 lakhs. However, the court also noted that valuation is at the discretion of plaintiff and stated that if a suit is valued below INR 3 lakh, such suit must first be listed before the appointed commercial court judge at the district level to determine whether the suit has been properly valued. Further, it was also held that even suits that are correctly valued below INR 3 lakhs will be governed by rigors of the Commercial Courts Act to maintain consistency. As per this order, all pending IPR suits valued below the above amount will now be placed before the appointed commercial court judge at the district level to determine whether the suits have been properly valued. The Court further held that by simply undervaluing the suit, the parties should not be permitted to escape provisions of Commercial Courts Act or indulge in forum shopping or bench hunting. Vishal Pipes Limited vs. Bhavya Pipe Industry- FAO-IPD 1/2022 & CM APPLs. 12-14/2022, Order dt. June 3, 2022