Recently, the Delhi High Court in the case of TATA SIA Airlines v. Shenzhen Colorsplendour Gift Co. Ltd. & Anr., restrained the Defendant from using the Plaintiff’s VISTARA marks, and decreed suit for permanent injunction along with relief against passing off, dilution, tarnishment and unfair competition in favor of Plaintiff. The Plaintiff found the Defendant’s use of the Plaintiff’s marks in an identical colour combination on keychains and baggage tags on a Chinese e-commerce website namely AliExpress, which delivers products to India as well. The Court had granted an ex parte ad interim injunction in favour of the Plaintiff in September 2020. The defendant, in spite of being served with an injunction order, did not contest the suit. The Plaintiff’s counsel further contended the word mark of the Plaintiff, that is ‘VISTARA’, was declared to be a well-known trade mark as defined under Section 2(1)(zg) of the Trade Marks Act, 1999 by the Court in the decision in TATA SIA Airlines Limited v. M/s Pilot18 Aviation Book Store & Anr. Considering the fact that the Plaintiff is the registered proprietor of the ‘VISTARA’ marks, and since none entered appearance for the Defendant, the Court observed that the Defendant has no justification for the adoption of an identical trade mark for sale of its goods. Accordingly, the suit was decreed in favor of the Plaintiff and against the Defendant, permanently restraining the Defendant from manufacturing, selling, or using the mark/logo VISTARA. Further, the Plaintiff was held entitled to damages and costs quantified at Rs. 20 Lakh. TATA SIA Airlines v. Shenzhen Colorsplendour Gift Co. Ltd. & Anr., CS(COMM) 352/2020

Recently, Disruptive Health Private Limited (“Appellant”) filed an appeal before the IP Division of the Delhi High Court against an order passed by the Registrar of Trade Marks refusing its application for the mark HEALTHSKOOL, in Class 10, filed on ‘proposed to be used’ basis. The objection raised by the Registrar was under Section 9(1)(b) of the Trade Marks Act, 1999 (the “Act”), citing that the mark HEALTHSKOOL was descriptive of the products falling in Class 10, being, bandages, condoms, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles suture materials, etc. The Registrar, while passing the refusal order, cited that, in order to claim exclusivity over a mark, it must consist of some arbitrary or fanciful term, figure, device, or phrase, to constitute a trademark, and its usual or ordinary meaning does not denote or describe goods or services to which they are applied. The Court, while overturning the decision of the Registrar, opined that the Registrar erred in law while applying the standard requirement for registration of marks. The Court emphasized on the general principle of ascertaining distinctiveness, and held that descriptive marks are certainly entitled for registration, provided that the Appellant could establish secondary meaning. Considering the Appellant’s mark as distinctive, the Court held the following – a) The Appellant is the registered proprietor of the word mark HEALTHSKOOL as well as the logo, in classes 3, 5 and 44, and has a right to expand its business to products falling in Class 10 ; b) The Appellant has been using the mark HEALTHSKOOL since the year 2015 and had generated sales of approximately INR 23 crores in 2020-21 ; c) The Appellant has prominently displayed the mark HEALTHSKOOL on its website www.healthskoolpharmacy.com which was registered in May, 2021; d) Just because some portion of the mark may have some reference or indication as to the products or services intended for, the same may not be liable to be rejected straightaway. In such a case, the merits of the marks would have to be considered along with the extent of usage; e) The Appellant is not claiming any exclusive rights in the word ‘health’ per se. Accordingly, the Court set aside the refusal order passed by the Registrar and allowed the application to be published in the trademark journal within the next two months with the condition “No exclusive rights in the word ‘Health’ ”. DISRUPTIVE HEALTH SOLUTIONS PRIVATE LIMITED V. REGISTRAR OF TRADE MARKS, C.A.(COMM.IPD-TM) 133/2022, Decision dated July 8, 2022

Recently, the Delhi High Court decreed the suit in the favour of Mondelez India Foods Private Limited, Formerly Cadbury India Ltd. (“Plaintiff”). The Delhi High Court, in its decision, has permanently restrained Neeraj Food Products (“Defendant”) from using the mark ‘James’ or ‘James Bond’ for its products. The Court also awarded costs of over INR 15 lakh in favour of the Plaintiff. The Plaintiff, in 2005, had filed a suit before the Court alleging that the Defendant launched a chocolate product under the mark ‘James Bond’ with an identical colour scheme, layout, and arrangement as that of the Plaintiff’s ‘Cadbury Gems’ or ‘Gems’ products. The Plaintiff owns trademark registration for ‘Cadbury’s Gems’ and ‘Gems’, and also has copyright registrations for the artistic works in respect of a character known as ‘Gems Bond’. The Court, while granting permanent injunction, held that GEMS is one of India’s most popular chocolate brands and are usually consumed by small children, both in urban and rural areas. The products of the Plaintiff and Defendant are strikingly similar where the Defendant’s product’s colour scheme is identical to the Plaintiff’s label, packaging and colour scheme. Undoubtedly, the Defendant’s mark is even confusingly and deceptively similar. In view of the same, the Court opined that a comparison of the Defendant’s infringing products and the packaging thereof, left no doubt that the same was a complete knock-off, of the plaintiff’s ‘CADBURY GEMS’. Here, a notable fact was that the products were sold by the Plaintiff, not only in bigger packs, but also in smaller pillow packs, due to which the Plaintiff’s mark may not even be fully visible. Hence, the product’s get up, layout, as also, the colour combination of the packaging plays a significant role at the point of purchase. Clearly, there is an immense likelihood of confusion, particularly considering the class of consumers that the product is targeted at, that is, children. In the backdrop, it was held that the use of the Defendant’s mark ‘JAMES BOND’/‘JAMEY BOND’ and the product packaging bearing the said mark, was infringing the Plaintiff’s registered trademark ‘CADBURY GEMS’/’GEMS’, its copyright registrations featuring the character ‘GEMS BOND’ and also constituted passing off. The Hon’ble Delhi High Court ordered that the Defendant shall pay the costs and damages to the Plaintiff within three months, failing which the Plaintiff shall be permitted to seek execution of the decree or avail of its remedies, in accordance with law. Mondelez India Foods Pvt. Ltd. And Anr. v. Neeraj Food Products, CS (COMM) 393 of 2018

Recently, the Delhi High Court granted an ad interim injunction in favour of Usha International Limited (“Plaintiff”) restraining Mr. Haseen Ahmed, trading as Tusha Sewing Machine (“Defendant”) from using the mark TUSHA in respect of sewing machines. Established in the year 1934, the Plaintiff is one of India’s leading consumer durable manufacturing and marketing companies, and deals in various electrical appliances, such as fans, sewing machines, water heaters, etc. The Plaintiff adopted the trade mark USHA as early as the year 1936, and its first registration for the mark USHA in respect of ‘sewing machines’ dates back to 1942. The Plaintiff has also secured copyright registrations for its USHA logos in the 1970s. It was the case of the Plaintiff that it gained knowledge of the use of the mark TUSHA and TUSHA logo in the first week of March 2022, and thereafter sent the Defendant a cease and desist letter. On the other hand, the Defendant asserted that the mark TUSHA was registered with respect to sewing machines and its parts. Countering this, the Plaintiff argued that the registration granted to Defendant in respect of the mark TUSHA was during the COVID-19 pandemic, and pursuant to the order of Hon’ble High Court of Delhi allowing oppositions against these registrations, the Plaintiff has opposed the Defendant’s application. Further, the Plaintiff submitted that its mark USHA has been declared to be a “well-known” trade mark. The court was of the view that the Defendant’s mark was deceptively similar to the Plaintiff’s well-known trade mark USHA, and accordingly granted an ad interim injunction in its favour. The court has also appointed a local commissioner to visit the Defendant’s premises, and take stock of the Defendant’s goods bearing the mark TUSHA and/or the TUSHA logo. Usha International Limited Vs Haseen Ahmed, trading as Tusha Sewing Machine Co. [CS (COMM) 549/2022] Order dt. 08/08/2022, Delhi High Court

In another infringement case, Star India Private Limited, a leading entertainment company, filed a suit seeking permanent injunction against rogue websites for infringement of copyrights of the Plaintiff in the film ‘Brahmastra Part One: Shiva’. The Plaintiff contended that given the film is a work of visual recording including sound recordings and qualifies as a ‘cinematograph film’, hosting, streaming, communicating the film to the public etc., without authorization from the Plaintiff, by any means, on any platform, would infringe Plaintiff’s copyright. The Plaintiff further claims that the Defendant websites are primarily and substantially engaged in communicating to the public, hosting, streaming, etc. unauthorizedly, the copyright work of others. The Plaintiff also added that the rouge websites, in order to make illegal gains make available the infringing copies of a film to general public, which had been merely released for theatrical exhibition, which the Plaintiff states is an important step towards releasing a film in a larger platform. The Plaintiff contended the same infringing act has happened with the Plaintiff earlier as well and accordingly, they apprehended that the rogue websites will attempt to do the same for the present film. The court, observing the above, stated that piracy must be curbed from all ends and has to be dealt with a heavy hand by granting injunction against screening of copyrighted content by such rogue websites. The court thus while taking into account the vestments made by the Plaintiff in the production and promotion of the film and also its exclusive rights vested under Copyright Act, granted ex parte ad-interim injunction to the Plaintiff and ordered the rogue websites to restrain from hosting, streaming etc., to the public the copyrighted content of the Plaintiff, and ordered for blocking of the domain names and access to the rogue websites. Star India Private Limited Vs 7MOVIERULZ.TC & ORS. CS (COMM) 604/2022, Order dated September 2, 2022

Recently, Fashnear Technologies Private Limited, the owner of the online platform “Meesho”, filed a suit seeking permanent injunction against rouge websites for unauthorizedly using the Plaintiff’s trade marks and/or copyright to defraud and dupe general public in the name of the Plaintiff. The plaintiff alleges that the rouge websites with the infringing domain names being ‘www.meeshogift.in’, ‘www.meeshogift.com’ and ‘www.meeshoonlineluckydraw.in’ have been approaching customers and informing them that they have won a lottery prize and inducing them to submit their bank account details and pay advance charges (by way of processing fees or other charges) to receive the prize amount or to avail free gifts such as cars, motor bikes, cash prize, electronics, etc. The court observing that the plaintiff’s well-known mark “MEESHO” has been infringed and various illegal activities are carried out in the name of the plaintiff, passed necessary directions, so as to restrain the three fake online marketplaces with the infringing domain names from operating and ordered that the domain names shall remain suspended or deactivated by the Domain Name Registrar (“DNR”) and that the contact details of the persons, who have registered domain names shall be handed over to the Plaintiff, for further investigation to be carried out. The court further directed for issuing blocking orders for the said three domain names, till further orders of the Court, and ordered all the Internet Service Providers to also give effect to these directions, to further ensure no other fake websites/domain names containing the mark/name ‘Meesho’ is registered by them. The order further stated that if Plaintiff gives notice of any other infringing websites, the DNR shall deactivate the said website/domain name, within 48 hours. While, taking into account similar other cases where the well-known marks are being used fraudulently and public at large are being deceived, the court order that the investigation of all such similar cases shall continue together and a consolidated report must be presented before the next hearing date. Fashnear Technologies Private Limited Vs Meesho Online Shopping PVT. LTD & ANR. CS (COMM) 475/2022

A Division Bench of the Delhi High Court recently put quietus to one of the more hotly contested design infringement cases of the past few years as it dismissed the appeal filed by Kamdhenu Ltd. (“Kamdhenu”) against an order of the Single Judge of the Delhi High Court whereby Kamdhenu’s suit for infringement in its registered design on surface pattern of steel bars against Aashiana Rolling Mills (“Aashiana”) was summarily dismissed under Order XIII-A of the CPC, holding that the design in question was a prior published design and was, hence, falling foul of Section 4 of the Designs Act, 2000. Kamdhenu claimed to have created a unique design having new/ original features of surface pattern comprising of double ribs applied to steel bars, for which it obtained design registration in 2013. The Ld. Single Judge, however, found that elements of this rod design were reasonably described in the British Standard BS4449-2005 rod specification, which was published in 2005, and, held that Kamdhenu’s design was incapable of registration. The British Standard BS4449-2005 rod design was published as a marking for identification of the steel grade of steel bars and provided for the surface of the Grade B500C steel bars to carry a specified surface pattern of two transverse ribs at specified angles. The Appellate Court, concurring with the decision of the Single Judge, observed that Kamdhenu had claimed novelty vide its design registration only in the surface pattern of two transverse ribs at acute angles and not in respect of any specified angle, and rejected Kamdhenu’s argument that there were minor variations in the angles of the ribs which resulted in different design from the B500C standard. The Court also rejected Kamdhenu’s contention that expert evidence should be allowed for determining novelty in its design. The Court held that the only test of novelty provided under the Designs Act is that of judging “solely by the eye” which could not be left to expert opinions, and, accordingly, dismissed the appeal. Kamdhenu Limited vs. Aashiana Rolling Mills Ltd. [RFA(OS)(COMM) 4/2021]

The Delhi High Court, recently, while refusing to overturn the dismissal of Appellant/Defendant’s application for return of plaint by the court of first instance, upheld the maintainability of quia timet actions in trademark infringement suits and also upheld the apprehension of infringement of Plaintiff’s trademark in the Court’s jurisdiction as valid reason for instituting the suit in that jurisdiction. The Appellant/Defendant had filed an application under Order 7 Rule 10 and 11 of the Code of Civil Procedure seeking return of plaint due to lack of territorial jurisdiction alleging that only the sales office of the Plaintiff was located within the Trial Court’s jurisdiction and not the registered office, and also on the ground that a suit for injunction on the basis of mere apprehension cannot be maintained without cause. The Trial Court rejected the Appellant/Defendant’s arguments and observed that presence of a subordinate office of the Plaintiff within its jurisdiction coupled with Plaintiff’s perceived threat from the Defendant as to sales of infringing products within the jurisdiction of the Trial Court satisfied the requirements of jurisdiction. The Division Bench of the Delhi High Court, while dismissing the appeal, found no reason to strike down the suit for lack of jurisdiction as the Respondent/Plaintiff’s cause of action was based not only on its sales office being located within the court’s jurisdiction, but also on the Appellant/Defendant being in the process of launching the infringing products within the Trial Court’s jurisdiction. The court also rejected the Appellant/Defendant’s argument that mere apprehension of sale of infringing goods in the future will not amount to cause of action and held that such suits, also known as quia timet suits, ensure that aggrieved parties on whom the threat of potential infringement looms large are not left remediless, and accordingly dismissed the appeal M/s Maan Pharmaceuticals Ltd. vs. M/s Mindwave Healthcare Pvt. Ltd., FAO(COMM) 78/2022; Judgment dated September 12th, 2022

Recently, the Delhi High Court granted an ad-interim injunction in favour of Akash Aggarwal (“Plaintiff”) restraining Flipkart (“Defendant”) from allowing third parties to ‘latch on’ to the Plaintiff’s trade name/mark “V-Tradition”, on its e-commerce platform. The Plaintiff is engaged in the sale of women’s clothing on various e-commerce platforms, such as Amazon and Flipkart. As per the Plaintiff, the Defendant is encouraging and allowing third party sellers to ‘latch on’ and use the Plaintiff’s name/mark along with photographs of the Plaintiff’s products, to sell their products on its platform. The Plaintiff submitted that when a third-party seller places a listing on the Defendant’s platform, it suggests the Plaintiff’s products as one of the best sellers, and allows them to add products under the Plaintiff’s name/mark along with the Plaintiff’s photographs into their listings. In support of its claims, the Plaintiff submitted affidavits from various parties who have been adversely affected by this ‘latch on’ feature on the Defendant’s platform. The Defendant, in response, stated that the Plaintiff’s name/mark is not yet registered, and they do not have a mechanism in place to check whether a mark is entitled to protection. However, the Defendant submitted that it would take down third party listings under the Plaintiff’s name/mark. The Court noted that permitting a third-party seller to ‘latch on’ to the Plaintiff’s name/mark and product listings on an e-commerce platform is nothing but ‘riding piggyback’ as is known in the traditional passing-off sense in the brick and mortar world, and amounts to taking unfair advantage of the goodwill that resides in the Plaintiff’s name/mark and business. The Court held that such a feature cannot be allowed to be used to the detriment of the owner of a brand, and accordingly, granted an ad-interim injunction in favour of the Plaintiff. Akash Aggarwal. v. Flipkart Internet Private Limited and Ors., CS (COMM) 492/2022, Order dt. August 2, 2022, Delhi High Court

Recently, the Delhi High Court granted an ex-parte ad interim injunction in favour of Bombinate Technologies Pvt. Ltd. against the unauthorized use of its KOO and bird device marks. The Plaintiff owns the mobile applications, Vokal India, and Koo India, which are social media and micro-blogging platforms. As per the Plaintiff, it adopted the marks KOO and bird device in 2019. The Plaintiff has also launched a reward program called ‘KOO COIN’, which rewards users with redeemable digital coins. The Plaintiff submitted that several websites and mobile applications for block chain based marketplaces and micro-blogging platforms, namely, www.koo.money, www.minekoo.com, KOO NETWORK and KOO TWEET SOCIAL MEDIA were launched by the defendants, namely, Koo Coin, Koo Network and Indian Creatives Koo Tweet Social Media. The Plaintiff’s grievance was that there are several Android Application Package providers, who are providing links to these unauthorized websites/applications. The Plaintiff also apprehended that the Defendants may be involved in fraudulent transactions, and collection of money from innocent users under the garb of offering digital currencies, apart from misuse of the Plaintiff’s marks. The Court, after perusing the websites/mobile applications of the Defendants, held that the Defendants’ websites and platforms appear to be vague, and that they are clearly indulging in misuse of the Plaintiff’s marks. The Court further observed that the Defendants are consciously misleading customers to believe that there exist genuine cryptocurrency/digital currency platforms associated with the Plaintiff, by using similar marks. Accordingly, the Court granted the Plaintiff an ex-parte ad interim injunction restraining the Defendants from offering digital coins/currencies or other services under the marks KOO and bird device, and directed the appropriate government authorities to block the Defendants’ websites and platforms. Bombinate Technologies Pvt. Ltd. v. KOO Coin and Ors., CS 524/2022, Order dt. August 1, 2022, Delhi High Court