Recently, the Madras High Court, while dismissing a writ petition, held that the scope of the proceedings for rectification of a company name will not be in any way influenced by ongoing trade mark infringement proceedings between the same parties. In the present case, Raymond Ltd. (“Respondent”), a prominent clothing and apparel brand, had filed an application with the Regional Director of Companies, Chennai for rectification of the company name, Raymond Pharmaceuticals Pvt. Ltd. (“Petitioner”), which was allowed. Prior to this application, the Respondent had also filed a suit for trade mark infringement before the Bombay High Court, where it was denied interim relief. The Petitioner had, thereafter, filed an appeal before the Supreme Court, which was also dismissed. The Petitioner, aggrieved by the order of the Regional Director of Companies, Chennai, filed a writ petition before the Madras High Court. The Petitioner submitted that the Respondent’s application for rectification of company name was not maintainable since it was filed subsequent to its failure to obtain any interim relief. The Respondent, on the other hand, argued that trade mark infringement proceedings and rectification of company names operate in different spheres and are governed by separate laws. The court, after considering the arguments advanced, held that the proceedings for rectification of a company name and a suit for infringement of trade marks operate in completely distinct and separate spheres. The court further placed reliance on precedential case law and held that the grant or the lack thereof of an interim order in favour of an applicant will not have any bearing on the Regional Director of Companies while deciding an application for rectification of a company name, and that both proceedings are completely independent of each other. Accordingly, the court refused to interfere with the order of the Regional Director of Companies, Chennai, and upheld the order of rectification of the name of the Petitioner. M/s Raymond Pharmaceuticals Pvt. Ltd. v. Union of India & Ors. [W.P. no. 28593 of 2012], order dt. December 2, 2022.

A division bench of the Delhi High Court recently, in its appellate jurisdiction, set aside an order of a single judge refusing to grant an interim injunction in favour of Hamdard National Foundation (“Appellant”). The Appellant had originally filed a civil suit to restrain Sadar Laboratories (“Respondent”) from using the mark SHARBAT DIL AFZA or any other marks deceptively similar to its famous mark ROOH AFZA in respect of sharbats (syrups). The single judge had denied granting the interim injunction on the ground that the Appellant cannot claim exclusivity over the “common to trade” component of its mark, i.e., AFZA. He was of the view that, in the absence of any registration for the standalone term, AFZA, the Respondent cannot be restrained from using this term. The division bench, while agreeing that the rival trademarks cannot be dissected and must be compared as a whole, noted that the word AFZA is an integral part of both the marks. It observed that the Appellant’s mark ROOH AFZA was a source identifier for over a century and that the word AFZA was not descriptive of sharbat or a common to trade term. It further noted that the commercial impression of the DIL AFZA mark and trade dress was deceptively similar to that of the ROOH AFZA mark and trade dress. Accordingly, the court set aside the impugned order and restrained the Respondent from using the mark DIL AFZA until the disposal of the suit. Hamdard National Foundation (India) & Anr. v. Sadar Laboratories Pvt. Ltd., FAO(OS) (COMM) 67/2022, Order dated December 21, 2022.

The Delhi High Court recently dismissed a motion filed by the Commissioner of Customs (“Applicant”) seeking its impleadment as a proper party in a trademark infringement suit filed by Western Digital Technologies & Anr. (“Plaintiffs”) against Syt Solutions Pvt. Ltd. (“Defendant”). In 2018, by virtue of its powers under the customs law, the Applicant had seized various goods bearing the Plaintiff’s marks imported by the Defendant. The Applicant’s motion for impleadment was based on the premise that the Plaintiffs’ rights were being infringed by the import of these goods. Both parties to the suit opposed the Applicant’s motion. Under the law, custom officers are authorized to destroy the confiscated goods after obtaining a ‘no objection certificate’ from the IP right holder, if no legal proceedings are pending in relation to such goods. The Court observed that no relief against the Applicant had been sought by the Plaintiff in its plaint. Further, while the Applicant had the jurisdiction to determine if the seized goods were infringing the Plaintiffs’ rights if no legal proceedings were pending in relation to such determination, the present suit was a proceeding where the question of infringement was to be determined. Therefore, the Applicant could not go into the question of infringement till the final adjudication of the present suit. Nor was the presence of the Applicant required to enable the court to completely, effectively, and properly adjudicate upon the issue in the suit. In view of the above, the Court held that the Applicant is neither a necessary nor a proper party for the adjudication of the suit and, accordingly, dismissed the Applicant’s motion. Western Digital Technologies, Inc & Anr. v. Syt Solutions Pvt. Ltd. [CS(COMM) 835/2018], order dt. December 13, 2022.

The Delhi High Court recently restrained the website www.haute24.com from copying, publishing and issuing to the public photographs infringing the copyright in them owned by the French high-end luxury fashion brand, Louis Vuitton Malletier (“LV”). LV claimed that it hires world-renowned photographers and high-end fashion models on contract to advertise its products displayed for sale on its website. Since such photographs were taken by people commissioned by LV and used by LV to advertise its products, LV claimed that it is the owner of the copyright in all such photographs that qualify as “artistic works” under Indian copyright law. In January and November 2022, LV came across unauthorized use of its copyrighted photographs by the defendants on the website www.haute24.com. Neither did the Defendants have a commercial relationship with LV, nor was there any authorisation from LV to use or publish the impugned photographs. As per LV, such unauthorized use of photographs by the defendants amounted to copyright infringement. The Delhi High Court, on being satisfied that LV had made out a prima facie case with the balance of convenience in its favour, passed an ex-parte ad interim order injuncting the website www.haute24.com from copying, issuing to the public or publishing the infringing photographs. It also directed the Domain Name Registrar of HAUTE24.COM to block access to the said website and provide relevant details of the registrant so that he/she could be impleaded in the proceeding. Louis Vuitton Malletier v. www.Haute24.com& Ors, CS (COMM) 874/2022 Order dated December 16, 2022.

The Delhi High Court, recently, refused to grant interim injunction to restrain a television commercial (“TVC”) aired by Dabur India Ltd. for lack of a direct reference to the product of the plaintiff, Zydus Wellness Products Ltd. The TVC in question featured one of the losing participants in a race being recommended to have Dabur’s GLUCOPLUS-C orange flavoured glucose powder drink, which contains 25% more glucose and micronutrients than that contained in other glucose powders. It was the plaintiff’s case that, since it is the market leader in the orange glucose powder drink category under its GLUCON-D TANGY ORANGE brand, it was directly impacted by the TVC which misrepresents the nutritional value in Dabur’s product under the garb of puffery. The court, after considering the arguments advanced, reiterated the importance of factors such as intent, manner, storyline, direct comparison, and message of the TVC while examining any element of disparagement by comparative advertisement. It further noted that a case for generic disparagement is made out only when the depiction refers to the aggrieved party’s product or the entire product category. The court ruled out the presumption that Dabur’s comparison of its product with generic products will have any reference to Zydus’ product by ordinary consumers merely because it is the market leader in orange drinks. Accordingly, it refused to grant interim relief to Zydus. Zydus Wellness Products Ltd. v. Dabur India Ltd. [CS (COMM) 304/2022], Judgment dated December 22, 2022.

PhonePe Private Limited v. DigiPe Fintech Private Limited, O.A.Nos.809 to 812 of 2022 in C.S(Comm.Div).No.248 of 2022 The Madras High Court recently restrained DigiPe Fintech Private Limited (“Defendant”) from using the DIGIPE mark following a trademark infringement suit filed by PhonePe Private Limited (“Plaintiff’). The suit was based on the Plaintiff’s earlier rights in PHONEPE mark used in relation to digital payment and other fintech related services. The court observed that the DIGIPE mark is similar to the PHONEPE mark which stands registered in Class 9, 35, 36 and 42 in the name of the Plaintiff. The court went on to observe that since the Defendant has not yet started use of the DIGIPE mark on UPI services, the balance of convenience lies in favour of the Plaintiff. Accordingly, the court granted an ex-parte ad-interim injunction in favour of the Plaintiff.

A division bench (‘DB’) of the Delhi High Court recently set aside an order of a Single Judge that granted an interim injunction in favour of KEI Industries Ltd. (‘Respondent’). The Respondent had originally filed a civil suit to restrain Raman Kwatra & Anr. (‘Appellants’) from using the KEI device or any marks similar to the Respondent’s registered KEI marks in relation to electrical goods or instruments or allied or similar goods. The injunction was granted on the ground that, prima facie, the Respondent’s word mark KEI is infringed by the Appellant’s KEI device mark as it was used in relation to allied and similar goods, namely, electric fan, geyser and water immersion rods. While ruling so, the Ld. Single Judge had disregarded the Appellant’s contention that the Respondent cannot now claim relief against use of the KEI device mark based on similarity between the rival goods when, at the examination stage of its application for the KEI mark, it had distinguished its services from those covered by the Appellant’s KEI device mark. He further held that, after the grant of registration, neither the Examination Report nor the Respondent’s reply would be relevant in a suit. Accordingly, it ruled that there is no estoppel against a statute and the Respondent’s stand taken in a proceeding before the Trade Marks Registry is not relevant in the suit. The DB observed that the Ld. Single Judge has erred in its application of the principle of ejusdem generis (Latin for ‘of the same kind’) by interpreting the goods description covered by the Respondent’s application, i.e., ‘other kinds of electrical and electronic instruments’ to cover household electrical appliances. As per the DB, a correct application of ejusdem generis would mean to include only goods related to conduction and manipulation of electricity, and not electrical appliances per se. The DB also dismissed the ruling of the Ld. Single Judge that there is no estoppel against a statute. Rather, it held that the Respondent shall not be allowed to make representation and assertions contrary to the ones made in a proceeding before the Registry. Accordingly, the DB set aside the impugned order. With respect to the Respondent’s claim of infringement of its trademarks on grounds of dissimilar goods, the DB remanded the matter to the Ld. Single Judge for prima facie examination. Raman Kwatra & Anr. v. M/S KEI Industries Limited FAO(OS) (COMM) 172/2022. Order dt. January 6, 2023.

Recently, the Delhi High Court granted a temporary injunction restraining Pioneer Trading Corporation (“Defendant”) a tyre manufacturing company, from using a tread pattern on its tyres which is deceptively similar to the tread pattern used by Apollo Tyres Limited (“Plaintiff”) on its tyres. It was the Plaintiff’s case that, in 2015, it learned that the Defendant was manufacturing and selling tyres with a tread pattern identical to that of its tyres. Accordingly, the Plaintiff filed a suit before the Delhi High Court, and was granted an ad interim injunction. Subsequently, the parties arrived at a settlement by way of which the Defendant agreed to cease all use of the identical tread pattern, and the suit was decreed. As per the Plaintiff, the Defendant has breached the settlement agreement and launched new tyres with a pattern similar to its old tread pattern with minor cosmetic changes. Therefore, the Plaintiff filed the instant suit, in which it was granted an ex-parte ad interim injunction. The Defendant, on the other hand, submitted that tread patterns of radial tyres were bound to have similarities in design, and relied on a certificate issued by the Indian Rubber Manufacturers Research Association certifying that the tread patterns of the tyres of the Plaintiff and the Defendants were distinct. Accordingly, the Defendant sought to have the ex-parte ad interim injunction vacated. The Court noted that the tread pattern used by the Plaintiff is unique and not common to the trade, and that this was acknowledged by the Defendant in the settlement agreement. Furthermore, the court was of an opinion that the target consumers, largely truck drivers, recognise tyres from the tread patterns and not from the brand name. Therefore, the court held that Defendant has dishonestly adopted a similar tread pattern again in an attempt to deceive consumers and, accordingly, re-affirmed the ex-parte ad interim injunction granted in favour of the Plaintiff. Apollo Tyres Limited v. Pioneer Trading Corporation & Ors., order dt. December 19, 2022.

Recently, the Delhi High Court refused to grant an interim injunction to Subway IP LLC (“Plaintiff”) against Infinity Food & Ors. (“Defendants”), from using marks, layout, décor, etc. allegedly similar to that of the Plaintiff’s marks, in relation to restaurants. It was the Plaintiff’s case that the Defendants are using marks, such as SUBERB, VEGGIE DELICIOUS, SUB ON A CLUB, and décor, wall hangings, food preparation procedures, websites, etc. which are similar to that of the Plaintiff’s SUBWAY, VEGGIE DELITE and SUBWAY CLUB marks, and signage, décor, etc. The Plaintiff submitted that it had sent the Defendants, a cease and desist letter pursuant to which, the Defendants changed the colour scheme of its marks, logos, décor, etc. The Plaintiff continued to be of the opinion that its rights were being infringed, and filed the present suit. The Defendants submitted that the Plaintiff cannot claim monopoly over the words SUB, VEGGIE and CLUB since they are common to trade in respect of sandwiches. Further, the Defendants argued that pursuant to the change in the colour scheme of its marks, décor, etc., they were entirely distinct from that of the Plaintiff’s marks, décor, etc. The court noted that the words SUB, VEGGIE and CLUB are publici juris in respect of sandwiches. As such, the court affirmed the Defendants’ submission that the Plaintiff cannot claim monopoly over these words. Further, the court noted that the Defendants’ marks, décor, etc. are entirely distinct from that of the Plaintiff, after the change in colour scheme. Further, the court observed that no person can claim monopoly over the décor, layout, or appearance of restaurants even if they are identical. Lastly, the court stated that there is no likelihood of a person of average intelligence, who desires to solicit the Plaintiff’s restaurants, mistakenly visiting one of the Defendants’ restaurants. Accordingly, the court refused to grant an interim injunction in favour of the Plaintiff. Subway IP LLC v. Infinity Food & Ors., CS (COMM) 843/2022, order dt. January 12, 2023.

Recently, the Bombay High Court recalled its prior direction to GoDaddy.com LLC (“GoDaddy”) restraining GoDaddy from registering any domain containing the mark SWIGGY without prior permission of Bundl Technologies Pvt Ltd. The plaintiff had filed a suit against a number of infringing entities, alleging infringement of its registered trademark SWIGGY. It was the plaintiff’s case that the infringing entities had been deceiving people by collecting money from them under the false pretense of bringing them on board the Swiggy Instamart Platform. While granting ex-parte relief to the plaintiff, the court also directed GoDaddy to not register any domain name containing the mark SWIGGY. GoDaddy, aggrieved by the order, filed an application requesting part recall of the order to the extent that it restrained GoDaddy from registering any domain name consisting of the mark SWIGGY without the plaintiff’s permission. While considering GoDaddy’s request, the court noted that GoDaddy could potentially prevent users from registering names with words that would infringe upon the plaintiff’s registered marks. However, the court held that disallowing registration of any domain name containing the mark SWIGGY would amount to granting a global temporary injunction. In order to balance the rights of both the parties, the court modified its order to direct GoDaddy to inform the plaintiff as and when a domain name registration is granted which contains the mark SWIGGY. Bundl Technologies Private Limited vs. Aanit Awattam alia Aanit Gupta & Ors., IA (Lodging) No. 38837 of 2022 in IA (Lodging) No. 26556 of 2022 in Commercial IP suit (lodging) No. 26549 of 2022.