In today’s post, we present three recent trademark cases. These cases relate to the re-publication of trademark applications, disparagement, and similarity of detergent names.
Case Notes
Kalpaka’ Word mark published instead of device, and Court confirms re-publication.
In a case involving the trademark ‘Kalpaka’, the trademark registry published a word mark in the journal while the mark applied for was a device. An opposition was filed based on the publication, and the IPAB asked the trademark registry to republish the mark. While deciding a writ petition challenging the order for republication, the Court stated that there was no infirmity in the IPAB’s order, and that the mark has to be republished as it was erroneously published as a word mark.
Citation: KALPAKA BUILDERS PRIVATE LIMITED vs INTELLECTUAL PROPERTY APPELLATE BOARD & Ors., High Court of Kerala, 11th January, 2024, WP(C) NO. 26986 OF 2012
‘Tazza Patta’ is deceptively similar to ‘Hara Patta’ for detergent washing powder, says the Allahabad High Court.
In a case involving the marks ‘Hara Patta’ and ‘Tazza Patta’ for detergent washing powder, the Allahabad High Court confirmed the interim order granted by the trial court against the use of ‘Tazza Patta’. The Court stated that the labels were deceptively similar as they are of the same size, same colour scheme, and same style. Though Tazza Patta label had a girl instead of a boy as in Hara Patta, and the prefixes were different, the Court stated that there is deceptive visual similarity. It rejected the argument of publici juris with respect to the suffix ‘Patta’.
Citation: M/S Sai Chemicals vs M/S Sai Chemicals, High Court of Allahabad, 17th January, 2024, FAFO No. 1623 of 2023, 2024:AHC:7630
Tata vs. Puro: Puro Healthy Salt commercial is not disparaging or denigrating, says Delhi High Court.
In a case involving a commercial of Puro Healthy Salt in which Ms. Keerthy Suresh appears, the Delhi High Court rejected Tata’s contentions that the advertisement is disparaging and denigrating. The commercial shows a white salt, and Keerthy Suresh decides to use Puro Healthy Salt instead of the white salt because it is not bleached, does not have any chemicals, and has natural iodine. Tata filed a case against Puro because it holds significant market share in white salt, and contended that the commercial is meant to disparage its product. The Delhi High Court did not agree with Tata because the commercial merely extols Puro’s salt and its characteristics, but does not in any manner denigrate or ask consumers to not use the white salt. As the commercial was not prima facie denigrating or disparaging, the Court refused to grant an interim injunction restraining Puro.
Citation: Tata Sons Private Limited and Ors. Vs. Puro Wellness Private Limited and Ors. [CS (OS) 582/2023]
Conclusion
As seen in the above cases, the court ordered the re-publication of the application where the word mark was published instead of the applied-for device mark. In the Tata Salt case, the court found no disparaging action. Disparagement generally requires false information and either direct statements or indirect implications of inferiority. However, comparative advertising and promotion of one’s own products over competing products is permitted, and the advertisement in the case was allowed for this reason.
Disclaimer
The case notes in this blog post have been written by IP attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases, or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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