In a suit filed by Pepsico Inc. & Anr. (“Plaintiffs”), the Delhi High Court restrained the Defendant from using a logo deceptively similar to that of Plaintiffs’ Sun Banner Device. It was the case of the Plaintiffs that they are the registered proprietor of the Sun Banner Device in Class 29 and that the Defendant is using a deceptively similar logo under the name “MADHAV” in relation to allied goods, namkeens (savoury snacks). The Plaintiffs clarified that their grievance is limited to the logo and that they have no objection to use of the mark MADHAV. The Plaintiffs also asserted that have spent large sums of money towards in promoting the Sun Banner Device and defending rights in the mark through various legal actions. The Court opined that the Plaintiffs have made out a prima facie case in their favour. The Court while granting an ad-interim injunction in favour of the Plaintiffs observed that “These are goods that are bought off the shelf in normal grocery shop and therefore, there is a likelihood of confusion, especially keeping in view the unwary consumer”. The Court through its order appointed a local commissioner to visit the Defendant’s premises to seize the Defendant’s goods bearing the infringing mark. Pepsico Inc. & Anr. v. Ramdev Industries CS(COMM) 540/2021, Order dt. 05/08/2022 Delhi High Court

Recently, the Delhi High Court in an appeal before it, upheld the decision of the lower court opining existence of a prima facie case of infringement on the basis of the word CENTURY being prominent in the rival marks SHIVAM CENTURY and CP CENTURY. It was the case of the respondent that the appellant’s mark is similar to its mark phonetically, visually and structurally. It was the claim of the appellant that the word CENTURY is a descriptive word thus, no monopoly can be claimed on such a word. The appellant also claimed that the word CENTURY is used by many other brands/companies in the same business as that of the appellant. Lastly the appellant asserted that the fonts and styles used in the rival marks are distinctive and therefore the marks are distinguishable. The lower court while coming to the prima facie conclusion that the appellant had infringed the respondent’s trademark, opined that the appellant has failed to substantiate its claim that the word CENTURY is commonly associated with modular kitchens. The court noted that although the term CENTURY has a dictionary meaning, since the respondent has a registration, and is the prior user, it has the right to protect its mark. The Delhi High Court while dismissing the appeal reiterated that the word CENTURY forms the most prominent part of the rival marks and therefore the court cannot accept the contention that the prima facie conclusion that the trademarks used by the appellant are likely to cause confusion as to source warrants any interference. Ms. Shivam Hardware Store Vs Ms. Century World FAO(COMM) 102/2022

Recently the Delhi High Court granted a permanent injunction restraining Raaj Computer (“Defendant”) from using Western Digital Technologies Inc.’s (“Plaintiff”) registered trademarks WESTERN DIGITAL, WD, etc. It was the Plaintiff’s case that it is one of the largest manufacturers of hard-disk drives in the world. It further claimed to have adopted the mark WESTERN DIGITAL in 1971, and that is has registered rights in India since as early as 2004. The Plaintiff further claimed that apart from its retail consumer business, it also manufactures and sells hard-disk drives to various system manufacturers. The Plaintiff submitted that hard-disk drives sold to such system manufacturers are not meant for retail consumers, since they are tailor made for each third-party system manufacturer and may not be compatible with other systems. As per the Plaintiff, it came to know of the Defendant in early November 2019 when it came across sale of counterfeit and refurbished hard disk-drives bearing its trademarks. The Plaintiff noticed that the hard-disk drives being sold by the Defendant were either from a batch it had manufactured in 2013 solely for third-party system manufacturers or were warranty expired drives which had been tampered with and re-labelled. In 2019, an ex-parte ad-interim injunction was granted in favour of the Plaintiff and a Local Commissioner was appointed to conduct an investigation of the Defendant’s premises. The Local Commissioner had come across a large number of infringing products and stickers bearing the Plaintiff’s trademarks at the Defendant’s premises. Thereafter, in 2022, owing to non-appearance of the Defendant, the suit was proceeded ex-parte. The Court, looking into the Local Commissioner’s report, held that this is a clear case of trade mark infringement as well as passing off, since the goods of the Plaintiff were being passed off as new and un-used, thereby leading to deception, loss and injury to an unwary consumer as also dilution of the Plaintiff’s trademarks. The Court, importantly, noted that the Defendant cannot seek protection under the doctrine of exhaustion since it has clearly tampered with the Plaintiff’s goods. The suit was, accordingly, decreed is favour of the Plaintiff along with damages to the tune of INR 3 lakhs. Western Digital Technologies Inc. v. Raaj Computer, CS (COMM) 677/2019, Judgement dt. September 21, 2022, Delhi High Court

Recently, the Delhi High Court granted an ex-parte ad interim injunction in favour of Gemini Edibles and Fats India Limited, restraining the defendant from using a deceptively similar mark ‘FREEDAY’ with an identical product packaging. The plaintiff, is engaged in the manufacture and sale of various FMCG products, including edible oils since 2008. The plaintiff claimed to have used and own a registration for the mark FREEDOM since the year 2009. In 2019, the plaintiff came across use of and registration for the FREEDAY mark by the defendant and sent a cease and desist letter. Since there was no compliance, the plaintiff filed a cancellation petition before the Intellectual Property Appellate Board (“IPAB”) to cancel the FREEDAY mark which was allowed by the IPAB in 2020. Upon conducting an investigation in May 2022, the plaintiff ascertained that goods bearing the FREEDAY mark in an packaging identical to the plaintiff’s packaging were still being sold by the defendant. The court held that the rival marks, FREEDAY and FREEDOM, are nearly identical and the colour combination, overall get up and layout arrangement of the defendant’s packaging is imitative of the plaintiff’s packaging and likely to cause confusion. Given this, the court granted the plaintiff an ex-parte ad interim injunction restraining the defendant from using the mark FREEDAY or any other identical/ deceptively similar mark or packaging in respect of edible oils or any other allied or cognate goods. Gemini Edibles and Fats India Ltd. v. LV Bhavani Sankar, CS(COMM) 566/2022, Delhi High Court

Recently, the Delhi High Court in Bolt Technology OU v. UJoy Technology Private Limited & Anr. held that the institution of pre-litigation mediation required under civil law is not mandatory in cases where urgent interim relief is sought. The plaintiff had filed a suit seeking permanent injunction restraining the defendants, from passing off of trademark, infringement of copyright, etc. Along with the suit, the plaintiff had filed an application seeking exemption from instituting pre-litigation mediation. The defendants raised an objection, and sought rejection of the suit for non-compliance with the ‘mandatory’ requirement of mediation, as set out in civil law and reiterated by the Hon’ble Supreme Court in its recent decision in Patil Automation Private Limited & Ors. v. Rakheja Engineers Private Limited [Civil Appeal Nos. 5333-34/2022 decided on August 17, 2022]. The plaintiff, on the other hand, submitted that the Supreme Court had clarified that when urgent relief is being sought, the suit can be filed without resorting to pre-litigation mediation. The plaintiff further submitted that it had attempted to settle the matter amicably by sending the defendants a legal notice. However, the defendants, had dismissed the plaintiff’s suggestion and stated that its legal notice was frivolous. The Court noted that clearly the defendants were not interested in amicable resolution of the dispute. Moreover, the Court stated that since the plaintiff attempted amicable resolution and sought urgent relief, the suit is maintainable. The Court, importantly, observed that in intellectual property cases, relief of interim injunction, including at the ex-parte and ad-interim stages, is extremely important since such matters not only involve the interest of the parties, but also of consumers. Accordingly, the Court rejected the defendants’ objection and imposed costs. The defendants, thereafter, expressed their willingness to amicably settle the matter. Accordingly, the matter has been referred to mediation, and the Court has stated that if it is not resolved within one week, the plaintiff’s plea for urgent relief would be taken up at the next hearing. Bolt Technology OU v. UJoy Technology Private Limited & Anr., CS (COMM) 582/2022, Order dt. August 29, 2022, Delhi High Court.

Recently, in a trademark infringement case, the Delhi High Court while holding Gwalior Distilleries Private Ltd.’s ‘Royal Champ’ whiskey to be deceptively similar to Seagram’s ‘Royal Stag’, has permanently restrained, on Gwalior Distilleries Private Ltd from making and selling ‘Royal Champ’ whiskey and imposed a cost of INR 20 lakh. In the present case, the goods of the plaintiffs and defendant are identical, that is whiskey. The mark of the defendant is deceptively similar to that of the plaintiffs. The test to be applied for judging the claim of infringement and passing off is that of an unwary consumer with average intelligence and imperfect recollection. As per the suit, “the defendant has copied all the features that collectively distinguish the plaintiff’s trade dress of Royal Stag. The bottle of the defendant has a label affixed upon the front panel, having the same colour combination of cream, burgundy and gold – as that of the plaintiffs’ Royal Stag label. The front panel depicts two thick ribbon devices having a burgundy background and gold borders, upon which the trade mark Royal Champ is represented in cream colour in bold capital letters, in the same font and manner as the Royal Stag mark. Justice Navin Chawla, in his recent order, held that the Gwalior Distilleries was clearly intending to deceive the unwary consumer and to ride on the reputation and goodwill of the plaintiff. The court noted that Gwalior Distilleries Private Ltd was selling its product as ‘Royal Champ’ which confused the unwary consumers with the name ‘Royal Stag’. The court also observed that the label of the defendant is a “colourable and slavish” imitation of the plaintiffs’ Royal Stag label and also amounts to copyright infringement under Section 51 read with Section 55 of the Copyright Act. Accordingly, the court decreed the defendant to pay to the plaintiff a sum of Rs 20 lakh as damages and costs of the suit. [AUSTIN NICHOLS & CO INC & ANR v. GWALIOR DISTILLERIES PRIVATE LTD CS(OS) 250/2010]

Recently, the Delhi High Court granted an ad-interim injunction in favor of Carlsberg Breweries A/S (“Plaintiff”) restraining Tensberg Breweries Industries Pvt. Ltd. & Ors. (“Defendants”) from using the mark TENSBERG as well as its trade dress. The Plaintiff submitted that it is the registered proprietor of the mark CARLSBERG since the year 1949, and claimed to have made its first sale under the mark CARLSBERG in the year 1904. The Plaintiff also submitted that it is using a three-dimensional green opaque bottle with its mark CARLSBERG embossed on the bottom since the year 2007, and has a shape mark registration as of 2008. The Plaintiff asserted that the Defendants have adopted a deceptively similar mark and is marketing its beer in a deceptively similar bottle so as to cause consumer confusion. The Defendants, on the other hand, averred that the Plaintiff is guilty of misrepresentation and concealment of facts. However, as per the Defendants, the Plaintiff has been aware of its use since 2019 owing to an order issued by the Excise Office, Dehradun, Uttarakhand, which permitted sale of the Plaintiff’s and the Defendants’ beer in Uttarakhand. The Defendants also claimed to have extensive sales under the mark TENSBERG, and to have advertised its goods on YouTube, Facebook, etc. to the knowledge of the Plaintiff. The Court observed that, prima facie, both the rival marks are deceptively similar, and that the Plaintiff clearly has better rights over the Defendants. The Court also observed that the Defendants, prima facie, appear to be riding on the reputation of the Plaintiff by adopting a nearly identical get-up of the bottle. The Court further noted that the order issued by the Department of Excise cannot be proof of actual use and knowledge. Accordingly, the Court granted an ad-interim injunction in favour of the Plaintiff till the next date of hearing. Carlsberg Breweries A/S v. Tensberg Breweries Industries Pvt. Ltd.and Ors., CS (COMM) 646/2022, Order dt. September 16, 2022, Delhi High Court.

suit based on Dharampal Satya Group’s (“Plaintiff’) RAJNIGANDHA mark for pan masala and trade dress of the RAJNIGANDHA product, against defendants using the RAJNIPAAN mark in a similar trade dress for identical goods. The Plaintiff claimed to have adopted the RAJNIGANDHA mark in respect of flavoured pan masalas in 1983 and owned registrations for multiple variants of the RAJNIGANDHA mark and labels. It also claimed that the mark RAJNIGANDHA was declared as a well-known trademark by the Delhi High Court in 2014. As per the Plaintiff, it came to know about the defendants’ unauthorized sales of the impugned product in late 2018 during a routine market surveillance. While two of the defendants agreed to suffer a decree upon service, the four other defendants abstained from the proceeding despite receiving multiple summons from the court. The court noted that since the defendants had no real prospect of defending the claims and had dishonestly adopted a nearly identical mark/ trade dress, it could pass a summary judgement without recording evidence. Acknowledging the well-known status of the RAJNIGANDHA mark, the court observed that well-known marks are entitled to a higher degree of protection. The court was, however, constrained to decline the relief for grant of damages since no evidence was submitted by the Plaintiff to substantiate the quantum of damages sought and no stocks were recovered by the Local Commissioner appointed by the court at the time of grant of an interim injunction. It took notice of the defendants’ deliberate abstinence from court proceedings despite service, for which repeated efforts had been made by the Plaintiff and, accordingly, granted the Plaintiff notional damages of three lakh rupees. Dharampal Satyapal Limited & Anr v. Mr. Youssef Anis Mehio & Ors., CS(COMM) 1255/2018. Order dt. 27 September, 2022.

Recently, Alphavector India filed a suit before the Delhi High Court based on the deceptive similarity of its alphanumeric mark, NINETY-ONE/ 91 for bicycles, to the mark NINETY-NINE/ 99 for identical goods. The plaintiff contended that it had been using the mark, NINETY-ONE/ 91, in both alphanumeric and word forms, since 2020. It also contended that it had been using various other formatives of 91, such as “91 CARES”, VECTOR91”, etc. that had acquired substantial reputation and goodwill in a short span of time. The plaintiff also asserted that the defendants started using the mark NINETY-NINE/ 99 in the year 2021, through their Facebook page, and on being notified of the similarity between the rival marks and the resultant consumer confusion, executed undertakings to change their mark. The court noted that numbers are, in fact, capable of being used as trademarks when used alone, as part of an alphanumeric combination or spelled out in letters, especially if they are arbitrary and not related to a particular style or a grade of a product. The court further noted that the plaintiff’s mark NINETY-ONE/ 91 has gained reputation and goodwill and that a large section of consumers, including semi-literate persons, can be confused about the origin of bicycles that are bought by a large swath of the population. Keeping in view that the defendants had breached legally binding undertakings, the court granted an ex parte ad interim injunction restraining the defendants from using the mark NINETY NINE/ 99 or any other mark that is deceptively similar to the plaintiff’s mark and also appointed a local commissioner to seize the infringing goods. Alphavector India Pvt. Ltd. v. M/S Sach Industries & Ors. CS(COMM) 691/2022.

The Delhi High Court recently decreed a suit pertaining to infringement of Yonex Co., Ltd.’s (“Yonex”) YONEX trade mark and the copyright in the YONEX label. Aggrieved by the registration of the domain name YONEXINDIASTORE.COM, Yonex, a leading worldwide manufacturer and distributor of sports goods & equipment under the YONEX name and mark had filed a suit against unknown defendants earlier this year. Yonex claimed that the mark YONEX has been registered in India since 1980 and also claimed copyright in the artistic work comprising YONEX. It averred that YONEX products are sold in India through various dealers and wholesalers as well as major e-commerce platforms. Further, the mark YONEX was declared to be a well-known mark by the Intellectual Property Appellate Board in 2020 based on the immense goodwill and reputation attained by the mark in the minds of the general public. When the suit was first listed before the Court, it had directed Yonex to implead the Domain Name Registrar of the domain name YONEXINDIASTORE.COM as a party to the suit and had, thereafter, passed an ex parte ad interim injunction. Observing the well-known nature and global use of the YONEX mark, the Court directed that the domain name shall continue to remain blocked and locked by the Domain Name Registrar and shall be transferred to Yonex. It, accordingly, decreed the suit and declared the mark YONEX as a well-known mark in terms of Yonex’s prayers. Yonex Co., Ltd & Ors. v. John Doe & Ors., CS(COMM) 293/2022 Delhi High Court, Decision dated September 23, 2022.