The landscape of trademark law in India is dynamic, shaped significantly by judicial decisions. This post provides a concise overview of recent judgments from Indian courts, specifically focusing on developments related to trademark distinctiveness and the criteria for registration. Highlighted below are key cases that offer insight into the current trends and interpretations in trademark law.
Refusal of ’42 Orchids’ trademark set aside by the Calcutta High Court.
The Calcutta High Court recently set aside the refusal of the trademark, 42 Orchids, for quilled artwork as the refusal order was devoid of reasons. The mark was refused under Section 11 based on prior marks, but the trademark officer failed to explain how the prior trademarks made the 42 orchids mark unregistrable. The trademark was filed in class 16 with respect to quilled artwork.
Citation: Bidisha Ghoshal Vs. The Registrar of Trade Marks [TMA 4 of 2023]
Plaintiff can plead invalidity of a trademark of the defendant in replication after the defendant takes a defence to infringement under Section 30(2)(e) based on trademark registration, says Delhi High Court.
In a case involving Section 124 of the Trademarks Act, the Delhi High Court stated that the plaintiff can plead invalidity of the defendant’s trademark in its replication of the plaint. The plaintiff can plead this after the defendant raises a defence of trademark registration to infringement under Section 30(2)(e) of the Trademarks Act. The Court rejected the argument that the plaint has to be amended to challenge trademark validity, and differentiated between the words ‘plead’ and ‘pleading’. As the word plead was used in Section 124, the Court stated that the challenge to trademark validity can form part of the replication.
Citation: Dharampal Satyapal Limited Vs. Basant Kumar Makhija and Ors. [CS (Comm.) 806/2017 and I.A. 14129/2018]
Liv.55 and Liv.999 for liver tonic held to infringe Liv.52 trademark of Himalaya Wellness.
In a case involving the adoption of the trademarks Liv.55, Liva55, and Liv.999 by Abony Healthcare, the Delhi High Court held that the trademarks infringe the popular Liv.52 trademark of Himalaya Wellness that is used for liver tonic. The Court stated that the trademarks were likely to cause confusion and deception and that the defendant had also adopted the orange, white, and green trade dress of Himalaya consciously. The Court therefore granted a permanent injunction against the use of the Liv marks by the defendant.
Citation: Himalaya Wellness Company and Ors. Vs. Abony Healthcare Limited and Ors. [CS (COMM) 476/2021, I.A. 12699/2021 and I.A. 2201/2023]
Sel Vs. Isel for TMT Bars: Calcutta High Court grants a permanent injunction against use of the Isel mark for TMT bars.
In a case involving the marks Sel and Isel, the Calcutta High Court granted a permanent injunction in favour of the plaintiff. After reviewing the facts, the Court came to the conclusion that the plaintiff had made out a case for passing off. As the defendant did not file a written statement, the case was decided based on facts on record.
Citation: Shyam Sel and Power Limited Vs. Atibir Industries Company Limited [CS 1 of 2020]
Delhi High Court restrains use of Centuary Plus for Kitchen related items based on prior registration and use of CP Century.
In a case involving the trademarks CP Century and CWPL Century held by the plaintiff, the Delhi High Court restrained the defendant from using Centuary Plus and Ace Centuary Plus. The trademarks were being used by both parties for kitchen-related items such as hinges, plastic products, etc. The plaintiff in the case was the prior adopter and user, and the Court stated that the plaintiff was able to make out a prima facie case.
Citation: M/S. CP Century Hardware Pvt. Ltd. Vs. Divyam Gupta [CS(COMM) 758/2023, I.A. 20880/2023, 20881/2023, 20882/2023 & 20883/2023]
In summary, the cases discussed in this post demonstrate the intricate nuances and critical considerations within India’s trademark law. These judgments, covering a range of issues from trademark refusal to infringement, not only reflect the complexities of legal interpretation but also emphasize the importance of thorough and reasoned decision-making in trademark matters. For practitioners and stakeholders in intellectual property, staying abreast of these developments is essential for navigating the legal landscape effectively and safeguarding intellectual rights.
For expert assistance with trademark queries, reach out to BananaIP’s Trademark department. Visit us at www.bananaip.com/trademarks for specialized support.
