The Delhi High Court recently decided an application filed on behalf of the Plaintiffs seeking permission to file a rectification petition against the Defendant’s trademark registrations for the TRAVELXP mark. The Plaintiffs had filed the civil suit seeking permanent injunction against the Defendant alleging infringement of the Plaintiffs’ TRAVELEX mark as well as passing off. The Defendant, in its reply, alluded to its registration for the TRAVELXP mark and use of the TRAVELXP mark since 2009. Upon learning of the Defendant’s trademark registration, the Plaintiffs filed an application seeking leave to file a rectification against the registration. The Court observed that, while ruling on such an application, the Court is only required to render a prima facie view regarding tenability of the plea of invalidity of the Defendant’s registered trademark. Placing reliance on the dicta of the Supreme Court in case of Patel Field Marshal Agencies & Anr. v. P.M. Diesels Ltd. & Ors., (2018) 2 SCC 122, the Court observed that two things need to be examined, namely, (a) whether the Plaintiffs have raised a plea of invalidity, and (b) prima facie tenability of the plea of invalidity. The Court after perusal of the amended plaint filed by the Plaintiffs, held that the Plaintiffs have sufficiently pleaded the invalidity as required under law. Furthermore, upon consideration of the alleged phonetic and visual similarity between the rival marks and the commonality of activity, the Court held the plea of invalidity to be prima facie tenable. Travellers Exchange Corp Ltd & Ors v. Celebrities Management Pvt Ltd CS (COMM) 51/2016, Decision dated October 20, 2022.

Recently, the Delhi High Court granted an interim injunction restraining the PIKASHOW mobile application from being broadcasted or accessed in any manner whatsoever in a suit filed by Star India Pvt. Ltd. (“Plaintiff”). It was the case of the Plaintiff that Pikashow Applications (“Defendant”), through its mobile application, PIKASHOW, hosting/streaming infringing content over which the Plaintiff has exclusive rights. As per the Plaintiff, the PIKASHOW app claims openly to be providing free content from all well-known OTT platforms, including that of the Plaintiff. Further, the Plaintiff alleged that the Defendant is using various circumvention measures to bypass the security set up by OTT platforms to prevent streaming of copyrighted content. In this regard, the Plaintiff has also filed a criminal complaint filed with the DCP Strategic Operations Special Cell, Dwarka, New Delhi. The court observed that the non-availability of the PIKASHOW app on any mainstream platforms depicts the enormous steps that have been taken by the owners/operators of the app to ensure that its illegal streaming and broadcast continues without any obstruction or hindrance. In light of this, the court restrained the Defendant from making available the PIKASHOW app through any domain names/websites. The court also ordered various websites like 1xBet App, an advertiser on the PIKASHOW app, and GitHub India Pvt. Ltd. which provides infrastructure services for the PIKASHOW app, as well as the government bodies that have been impleaded as defendants to disclose all relevant details pertaining to the app. The court further directed the domain name registrars and government bodies to issue blocking orders against the PIKASHOW app, and against all the current source domains and any further domain names/source domains, that would be brought to notice by the Plaintiff. Star India Pvt. Ltd. and Anr. v. Pikashow Applications and Ors., Delhi High Court, CS (COMM) 759/2022, Order dt. November 4, 2022.

Recently, the Delhi High Court granted an ad-interim injunction restraining Ultra Plus Cement Pvt. Ltd. and others (“Defendants”) from using the mark ULTRA PLUS in a deceptively similar packaging as that of Ultra Tech Cement Ltd. (“Plaintiff”). The Plaintiff submitted that it is one of the world’s largest manufacturers of cement and concrete, and claimed that it adopted the mark ULTRA TECH in 2003. The mark ULTRA TECH also features in the list of well-known trademarks maintained by the Registrar of Trade Marks. As per the Plaintiff, it came to know of the Defendant’s adoption of the mark ULTRA PLUS as a trademark and corporate name in 2020, and thereafter came across the Defendants’ trade mark application and registration and filed an opposition and rectification, respectively. It was also submitted that the rival packaging is highly similar. The Defendants, on the other hand, contended that their mark ULTRA PLUS was registered in 2009, and that no one can claim exclusivity in the word ULTRA inasmuch it is laudatory and descriptive in nature and placed reliance on an order of the Bombay High Court holding that the word ULTRA is laudatory. The Defendants’ also disputed that since they do not have any business operations in Delhi, the court does not have the territorial jurisdiction to entertain the suit. The court observed that, prima facie, the Plaintiff has sufficiently established its goodwill and reputation in the mark ULTRA. The court took into account the well-known status of the Plaintiff’s mark and differentiated the dicta of Bombay High Court on the ground that in the said case, the use of the rival marks was dissimilar. The court also refused to entertain Defendants’ assertions as to the lack of territorial jurisdiction at this stage. Ultra Tech Cement Ltd. & Anr. v. Ultra Plus Cement Pvt. Ltd. & Ors., Delhi High Court, CS(COMM) 755/2022, Order dt. November 4, 2022.

In a suit filed by Impresario Entertainment & Hospitality Pvt. Ltd (“Plaintiff”), the Delhi High Court restrained the defendant from using the mark SOCIAL HUB or any marks/ trade name identical/ deceptively similar to the Plaintiff’s mark SOCIAL. The Plaintiffs claimes to be engaged in restaurant services and is running various well-known cafes such as Smoke House Deli, The Tasting Room, Salt Water Cafe etc. The Plaintiff further claims to have conceived unique concept of “workspaces combined with coffee” in 2011-2012 and adopted the mark SOCIAL in 2014 in relation to its restaurant/ bars, for which it owns multiple registrations. Further the mark is written in a stencil font. The Plaintiff also promotes its services under the SOCIAL mark through its websites located at www.socialoffline.in and www.impresario.in. The Plaintiff also uses the SOCIAL mark in its social media pages and has generated huge revenue, thus has fame and reputation in general public. As per the Plaintiff, the defendant opened a restaurant in Udaipur, under the mark SOCIAL HUB. According to the Plaintiff, the defendant intentionally used the term SOCIAL, to create consumer confusion that the Plaintiff has opened another outlet in Udaipur. The Plaintiff further claims that the defendant is using the website https://lnkd.in/gpiWGXPG and is using a tagline ‘Let’s Get Social’ with is identical/deceptively similar to the Plaintiff’s tagline ‘GET SOCIAL’. The Court observed, based on the submissions made by the Plaintiff, that the Plaintiff has made out a prima facie case, balance of convenience lies in its favour and is likely to suffer irreparable harm in case the injunction is not granted. Accordingly, till date of next hearing, the court restrained the defendant from using the mark SOCIAL HUB or any other mark identical/ deceptively similar to the Plaintiff’s SOCIAL mark in any manner whatsoever. Impresario Entertainment & Hospitality Pvt. Ltd. v. Social Hub, through its proprietor Mr. Laxman Singh Jhala, CS(COMM) 773/2022, Order dt. 10/11/2022.

The Delhi High Court recently decreed a trademark infringement and passing off suit in favour of LT Foods Limited (“Plaintiff”) against Saraswati Trading Company (“Defendant”) for using identical marks and packaging for sale of counterfeit basmati rice. The Plaintiff submitted that it is the owner of the DAWAT/DAAWAT marks used in relation to basmati rice. As per the Plaintiff, the DAWAT mark was adopted in 1985, registered in 1987 and assigned to the Plaintiff in 2003. The Plaintiff also claimed that it has a strong distribution network in all major basmati rice consuming cities in India, as well as in other countries, including the US, Canada, UK, and EU. The Plaintiff further claimed that owing to its strict quality control standards, the DAWAT/DAAWAT marks have attained enormous goodwill and reputation in several countries around the world apart from India. As per the Plaintiff, it came to know about the Defendant’s product in late 2021. Upon examining the product, the Plaintiff found that, though the rice was being branded as basmati rice and sold in a packaging nearly identical to that of the Plaintiff’s, it was, in fact, a low-quality variant of rice which does not match the standards of the Plaintiff’s basmati rice. The court had, while granting an ex-parte ad interim injunction in favour of the Plaintiff, appointed a Local Commissioner to prepare an inventory of the infringing goods. Based on the report submitted by the Local Commissioner, the court held that the Defendant is in blatant violation of the Plaintiff’s statutory and common law rights in the DAWAT/DAAWAT marks and packaging. The court further observed that while the owners of the Defendant entity were present during the execution of the Local Commission, they did not enter appearance or contest the suit. Accordingly, the court observed that the Local Commissioner’s report forms a part of the evidence in the suit, and no further evidence is required to adjudicate upon this matter. Given the fact that the product is rice for human consumption, and the Defendant is using an identical mark and packaging, the court observed that the acts of the Defendant are clearly dishonest. Consequently, the court decreed the suit and awarded the Plaintiff damages to the tunes of twenty lakh rupees and costs of five lakh rupees. Lt Foods Limited v. Saraswati Trading Company, Delhi High Court, CS (COMM) 413/2021, Judgement dt. November 11, 2022.

The Delhi High Court recently passed a decree permanently injuncting the defendant, a café in Rajasthan, from using the mark FRAPPUCCINO which is identical to Starbucks Corporation’s registered trade mark FRAPPUCCINO. Recognising the plaintiff’s right over the mark FRAPPUCCINO, the Court awarded the plaintiff damages of INR 2,00,000 and full legal costs. It was the plaintiff’s case that in 2018 it learned that the defendant was selling a beverage under the name ‘BROWNIE CHIPS FRAPPUCCINO’ without the plaintiff’s permission, authorization, or license. Moreover, the defendant also referred to the beverage name FRAPPUCCINO on the menu cards of their establishment. The Plaintiff further submitted that it sent notices to the defendant to stop the use of the plaintiff’s registered mark FRAPPUCCINO but even after repeated reminders no response was received. The Court noted that the plaintiff is a registered proprietor of the mark FRAPPUCCINO and opined that the defendant had adopted an identical mark, with the prefix ‘Brownie Chip’ with the intent to deceive customers and to ride upon the reputation of the mark. Moreover, the court noted that the plaintiff itself used its FRAPPUCCINO mark with suffixes depicting the flavours of its beverages, like ‘Java Chip Frappuccino’. The Court, thus, held that the adoption of the FRAPPUCCINO mark by the defendant is dishonest and is intended to deceive consumers. Moreover, it amounts to infringement of the plaintiff’s trade mark and also results in passing off the goods of the defendant as that of the plaintiff

The Delhi High Court recently declared the mark BUKHARA, the name of an iconic restaurant in New Delhi, as well-known is a suit for trademark infringement and passing off filed by ITC Limited (“Plaintiff”) against Central Park Private Limited and St. Jerome Hospitality Management Services Pvt. Ltd. (“Defendants”), for using the nearly identical mark BALKH BUKHARA in relation to their restaurant. The Plaintiff submitted that it adopted and has used the mark BUKHARA in relation to its restaurant and hospitality services since the late 1970s in India. As per the Plaintiff, the BUKHARA restaurant is known for its interiors, decor, layout, cutlery, the wooden menu cards, etc. which it has maintained over the years. The Plaintiff also submitted that some of the dishes served in the restaurant are globally acclaimed, and that it has been visited by various world-renowned celebrities, presidents, and heads of states. While the suit was decreed by the court in terms of the agreement between the parties, the court also declared the Plaintiff’s BUKHARA mark to be a well-known mark. The court, in arriving at this decision, considered the Plaintiff’s trade mark registrations, the awards won by the BUKHARA restaurant, the restaurant’s revenues, media coverage, etc. The Defendants, on the other hand, submitted that the Plaintiff’s BUKHARA mark was refused protection in the United States. The court, while analyzing the judgments of the US courts held that, these judgements would not be applicable in India, as the mark originated in India and enjoys substantial goodwill and reputation in the country which is evident from the voluminous evidence submitted by the Plaintiff. The court held that not only is the BUKHARA mark intrinsically connected to Indian cuisine, but the Plaintiff’s restaurant has internationalized India’s cuisine, and is therefore, evidently well-known. Accordingly, the court directed the Registrar of Trade Marks to add the BUKHARA mark to the list of well-known marks. ITC Limited v. Central Park Estates Private Limited & Anr., CS (COMM) 781/2022, C.O. (COMM IPD-TM) 763/2022 and CO (COMM IPD-TM) 764/2022, Judgment dt. November 14, 2022.

Recently the Delhi High Court granted an interim injunction in favour of the plaintiff, Sun Pharma, restraining the defendant, DWD Pharma, from manufacturing, selling, advertising or otherwise dealing in medicinal preparations under the mark FOLZEST, based on the mark’s deceptive similarity to Sun Pharma’s mark, FORZEST. The court, however, imposed costs to the tune of INR 10 lakhs (approx. USD 12,150) on Sun Pharma for concealing material facts from the court. The plaintiff claimed to be the prior registered proprietor and user of the mark FORZEST since 2003. In May 2022, the court had passed an ex parte ad interim injunction in Sun Pharma’s favour restraining DWD Pharma from using the FOLZEST mark or any other mark deceptively similar to the plaintiff’s FORZEST mark. DWD Pharma, in turn, moved an application for setting aside the ex parte order on the ground that Sun Pharma concealed material facts from the court. DWD Pharma claimed that it is the registered proprietor of the mark ZEST and ZEST family of marks since 1983 and alleged that the plaintiff was well aware of these facts but did not disclose them intentionally in its plaint. The court, ultimately, granted interim relief in Sun Pharma’s favour by observing that DWD Pharma cannot, under the garb of having exclusivity over the term ZEST, adopt a mark that is deceptively similar to a mark in which Sun Pharma has superior rights. The disastrous consequences on public health caused by any confusion between the rival marks, that were used in respect of completely different ailments, also led the court to rule in Sun Pharma’s favour. However, the court imposed costs on Sun Pharma for concealment of material facts and allowed the defendant’s request to grant it time to petition to cancel Sun Pharma’s registration for FORZEST. Sun Pharma, thereafter, filed an appeal to set aside the order imposing costs on it. The appellate court stayed the direction to deposit costs until the next hearing date. Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd. CS(COMM) 328/2022 Order dt. 22.11.2022 and FAO(OS) (COMM) 310/2022 Order dt. 30.11.2022.

FMC Corporation & Ors. V. Natco Pharma Limited, FAO(OS) (COMM) 301/2022 A division bench of the Delhi High Court dismissed an appeal filed by FMC Corporation and held that the respondent, Natco Pharma Limited’s insecticide containing Chlorantraniliprole (“CTPR”) does not infringe FMC Corporation’s patent for a process to prepare CTPR. The product patent IN’307 in respect of CTPR and the process patent IN’332 had expired on August 13, 2022. The examination in the suit was limited to infringement of the suit patent IN’645, which is a process patent. On the basis of doctrine of equivalence, the FMC Corporation claimed that Natco’s process infringes the suit patent. The division bench while dismissing the appeal, observed that the doctrine of equivalence must be applied to each element of the process and awarded cost of INR two lakhs seventy thousand (2,70,000) to the respondent, Natco Pharma Limited.

Recently, Sukam Systems Private Limited was granted an ad interim injunction against Lithium Power Energy Private Limited, restraining it from using the SNOW-KAM, BIG CONQUEROR TUBULAR BATTERY and BIG WARRIOR TUBULAR BATTERY marks. The plaintiff claimed to be a renowned manufacturer of inverters and batteries. The plaintiff asserted that it is the owner of the SU-KAM, BIG CONQUEROR and BIG WARRIOR marks and has used these marks on inverters since at least as early as 1998. The plaintiff was also asserted that the SU-KAM mark forms a dominant part of its corporate name. The Delhi High Court, on the basis of the plaintiff’s averments and on a comparison of the rival marks held that the defendant’s marks were substantially similar to the plaintiff’s registered marks. The court held that such substantial similarity gives rise to a clear possibility of confusion in the mind of an average consumer. The court thus held that a clear prima facie case of trademark infringement and passing off was made out.