BananaIP Counsels presents Part-3 of “Trademarks in the Courtroom: Noteworthy Decisions from India,” continuing our exploration of significant trademark judgments. This edition succinctly examines recent court decisions that shape India’s trademark landscape.
Letters Patent Inter-Court Appeal is permitted in trademark rectification petitions, says Delhi High Court.
In a case involving the trademarks, PhonePe and PostPe, and variations of Pe, the Delhi High Court stated that Inter-Court appeals under clause 10 of the Letters Patents are available with respect to dismissal of trademark rectification applications. It stated that the Trademarks Act does not explicitly exclude Inter-Court appeals, and that following abolition of IPAB, the procedures followed by the Court would be applicable for Inter-Court appeal matters. The Court in the case stated that dismissal of rectification petitions of the Appellant by the Single Judge was not valid, and that such a decision can be made only if an issue relating to validity is not framed.
Citation: Resilient Innovations Pvt. Ltd. Vs. Phonepe Private Limited and Ors. [RFA (OS) (COMM) 8/2021, CM Appls. 43721-22/2021, RFA (OS) (COMM) 11/2021, CM Appls.43731-32/2021, RFA (OS)(COMM) 12/2021, CM Appls. 43734-35/2021, RFA (OS) (COMM) 13/2021 and CM Appl. 43737/2021]
Business School INSEAD succeeds in removing INSAID from the Register of Trademarks.
The Delhi High Court recently gave a decision in favour of the popular business school, INSEAD, ordering the Registrar of Trademarks to remove the registration of INSAID. The Court stated that INSAID is phonetically similar to INSEAD with prior registration and use and that as both are used for educational institutions, there is a likelihood of initial confusion. Though the logos/devices are different, the Court opined that differences in devices would not have any bearing on confusion among consumers in this case as the prominent elements of the marks are similar.
Citation: Institut Europeen D Administration Des Affaires, Insead, Association Vs. Fullstack Education Private Limited and Ors. [C.O. (Comm. IPD-TM) 1/2021]
The trademark, NJBROS, was removed from the register based on prior registration and use of the FYBROS mark.
The Delhi High Court has recently passed an order rectifying the register by removing the mark, NJBROS, from the Register of Trademarks. The mark was ordered to be removed as the Court concluded that the mark is similar to the prior registered and used mark FYBROS, which was being used for cognate goods in classes 9 and 11. The Court did not agree that BROS is a common word in the industry.
Citation: Fybros Electric Private Limited Vs. Vasu Dev Gupta Trading and Ors. [C.O. (Comm. IPD-TM) 13/2021 and I.A. 13372/2021]
These cases represent nuanced judicial approaches to trademark disputes in India. Stay tuned to BananaIP Counsels for further insights into groundbreaking decisions in our subsequent series installments.
Trademarks In The Courtroom: Noteworthy Decisions From India Part 1
Trademarks In The Courtroom: Noteworthy Decisions From India Part 2
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