In our ongoing series, “Trademarks in the Courtroom: Noteworthy Decisions from India,” BananaIP Counsels brings forth Part – 2, highlighting critical judgments from the Indian judiciary. Each judgment encapsulates key facets of trademark law, helping readers grasp the essence of pivotal decisions.
Bennett Coleman Strengthens Rights in NOW Trademark, Court Limits Use of VNOW
Bennett, Coleman and Company Limited filed a rectification petition to rectify the registration of the mark “VNOW” owned by VNOW Technologies Private Limited for specific services under Class 38. The Petitioner claimed exclusive rights to use the word “NOW” in any trademark related to Class 38 due to continuous usage and previous registrations of trademarks such as “TIMES NOW”, “MOVIES NOW”, “ET NOW”, “MIRROR NOW” and “ROMEDY NOW”.
The Court observed that, where a family of marks is involved, the identification of the dominant part is greatly simplified and, in this case, “NOW” would be the dominant part of the mark. If a viewer with average intelligence and an imperfect recollection encounters another channel that provides similar services and has “NOW” as the latter part of its title, there is a high chance that the viewer would consider it as part of the Petitioner’s channels or at least associated with the “NOW” family of channels. The Court held this despite observing that the Defendant registered the word “VNOW” as a single word, which has no meaning in the English language and would likely be pronounced as “vee-now”.
Therefore, the Delhi High Court held that the registration of the “VNOW” mark of the Defendant would stand rectified and the competing services/products of the Defendant would be removed from the trademark registration.
Citation: Bennet, Coleman and Company Limited Vs. VNOW Technologies Private Limited and Ors. [C.O. (COMM.IPD-TM) 117/2021]
Differences in devices not enough if there is phonetic similarity of marks, says Delhi High Court.
While deciding a rectification petition, the Delhi High Court stated that a mark wrongfully registered can be removed from the Register of Trademarks if there is phonetic similarity even if devices are dissimilar. It also stated that an applicant for rectification need not prove damage, and when a mark is registered for the entire class, the argument that the goods for which the mark is being used are different cannot be sustained. The Court however did not agree that there was any malafide intent in registering the mark as mere registration of a similar mark does not amount to malafide intent.
Citation: Fybros Electric Pvt. Ltd. Vs. Mukesh Singh and Ors. [C.O. (Comm. IPD-TM) 10/2021 and I.A. 12679/2021]
PIZZA GALLERIA mark was rectified based on an earlier, similar mark.
The Delhi High Court has recently rectified a trademark registration over PIZZA GALLERIA based on an earlier device mark filing using the same words in the mark. The Court stated that Respondent’s trademark may be rectified to exclude Rewari City from the scope of its rights as the petitioner does not have any objection to the Respondent’s use of PIZZA GALLERIA outside the city. While arriving at its decision the Court stated that classes in which trademarks are registered are not important if the goods/services are similar.
As a post-judgment observation, the Court asked the Registrar to look into the conflict between Section 7 of the Trademark Act, and Rule 20 of Trademark Rules, 2017, with respect to classifying marks based on NICE Classification.
Citation: Raj Kumar Sharma vs Sandeep Kumar & Anr. [C.O. (COMM.IPD-TM) 39/2021]
The cases dissected here underscore the nuanced interpretations and standpoints adopted by the Indian courts. BananaIP Counsels remains dedicated to unraveling and presenting the complexities of trademark jurisprudence. Await our next installment for more intricate details and insights.
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Trademarks In The Courtroom: Noteworthy Decisions From India Part 1
