This running post provides a summary of the latest Trademark cases decided by courts in India in 2022:
Shyam Sel and Power Limited Vs. Shyam Steel Industries Limited
The Plaintiff, Shyam Sel and Power Limited filed a suit against the Defendant, Shyam Steel Industries Limited for the infringement of its Trademark and passing off, as the Defendant was using the plaintiff’s registered trademark ‘SHYAM’ on its invoices. Both the parties were involved in manufacturing and selling Thermo-mechanically treated bars, leading to high likelihood of confusion, and hence the Plaintiff filed the present suit. Later, the Defendant also used the marks ‘SHYAM INFR’ AND ‘SHYAM METALIC’, against which the Plaintiff sought an injunction. The Single Judge of the High Court of Calcutta stated that the word ‘SHYAM’ was being used by the Defendant as a part of the business name and passed no injunction, and granted time to the Defendant to file an affidavit and directed the Defendant to maintain weekly accounts of sale of the production. The Ld. Single Judge also stated that the order passed was at the ad interim stage and the same would not have any relevance at the time of considering and deciding the said application after exchange of affidavits. Following this, the Plaintiff filed an appeal before the Division bench of the High Court, which modified the previous order, but in effect, allowed the appeal and granted an injunction restraining the defendant. The Defendant contended that the order passed by the Single Judge was not a judgment, a preliminary judgement or an interlocutory judgement. The issue which the court tried to resolve while deciding the case was the basic distinction between the words “judgement”, “decree” and “order”. It was reiterated that if any order has the effect of finally determining any controversy forming the subject matter of the suit or has the same effect on the question of jurisdiction, such order would be constituted as ‘judgement’. The Supreme Court of India allowed the appeal and set aside the order passed before and ordered the learned single judge to decide the Defendant’s application under Order XXXIX Rules 1 and 2 CPC expeditiously within six weeks.
Citation: Shyam Sel and Power Ltd. Vs. Shyam Steel Industries Ltd., decided by the Supreme Court of India on 14th March, 2022 available at: https://indiankanoon.org/doc/98979422/, visited on 16th March, 2022.
Om Logistics Ltd Vs. SH Mahendra Pandey
The Plaintiff was registered as a company in the name of “Om Logistics LTD” and had registered various trademark registrations under class 39 which included the wordmark “Om Logistics LTD”, an essential feature of the trademark as well as the corporate name of the Plaintiff. The Defendant was using the mark “Om Express Logistics” for providing logistic services which was within an identical business sector. Further, the mark was phonetically similar to that of Plaintiff’s, with the only difference being the addition of the word “Express”.
The Court stated that the Plaintiff could not monopolize the use of popular religious symbol “OM”, generally used word “Express”, or descriptive word such as “Logistics”. The Court further stated that the distinctiveness claimed by the Plaintiff could only be established at trial and not at the prima facie stage. The Court observed that the plaintiff failed to make out a prima facie case for grant of an interim injunction and dismissed the Plaintiff’s plea.
Citation: Om Logictics Limited Vs. SH Mahendra Pandey, decided by the Delhi High Court, on March 15th, 2022, available at https://indiankanoon.org/doc/114410316/ visited on March 17th, 2022
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Disclaimer
Please note that these case updates have been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the decisions published in the bulletin. You may write to contact@bananaip.com for corrections and take down.
