Infringement of Trademark

1
Infringement of Trademark
2
Infringement of Trademark and Grant of Injunction

• In a case of infringement of trademark
  injunction would ordinarily be granted where it
  is established that the defendant had infringed
  the trademark and had not been able to discharge
  its burden as regards the defence taken by it. It
  is therefore, directed in Ramdev Food Products
  Pvt. Ltd. versus  Aravindbhai Rambhai Patel by
  the Supreme Court that 1)The respondents be
  restrained from using the trade name Ramdev
  Masala in any of their products 2)They may,
  however, carry on their business in any other
  name insofar as manufacturing of spices is
  concerned 3) The appellant shall, as and when
  demands are made, supply spices produced by it
  for retail sale thereof to seven outlets
  belonging to respondents on usual terms 4) The
  appellant shall deposit a sum of Rs. 50 lakhs
  before the Trail Court or furnish a bank
  guarantee for the said sum by way of security 5)
  Despite pending applications for specification
  before the Registrar of Trademarks, the final
  hearing of the Civil Suit shall be expedited and
  completed preferably within the period of six
  months from the date of communication of the
  order.

3
Trademark Registration
4

• Use of the plaintiffs mark by the defendant
  beside constituting infringement and passing off
  as well as unfair trade competition also amounts
  to dilution of mark. The plaintiff is entitled to
  permanent injunction. The plaintiff company is
  engaged in business of manufacturer and sale of
  perfumery, cosmetic, hair-lotions, bleach cream
  preparations etc., with the mark SIMCO. Mark
  SIMCO of the plaintiff was adopted by the
  defendant company and it was also engaged in
  perfumery, essential oil business. The defendant
  company sought for trademark registration in
  respect of perfumery and cosmetic which are
  absolutely identical goods. The plaintiff is
  entitled to the relief of injunction.

5
Infringement of Trademark Interim Injunction not
Granted

• In International Applications of Lions Clubs
  versus Association of Lions India, filed a suit
  of interim injunction and other reliefs after 14
  years from the date of service of notice on the
  defendant for using the similar name, trademark
  and logo. Thus, the plaintiff was not entitled to
  add-interim injunction. But to secure interest of
  the unwary public the defendant was directed to
  give wide publicity of the fact that the
  defendant-Association is neither constituent nor
  affiliated to the plaintiff-Association. The
  Bombay High Court in another case refused to
  grant interim injunction on the ground of delay
  for one year to file the suit in spite of
  knowledge of infringement. For example, the
  plaintiff was the prior user of the
   trademark  Aachi. The defendant company was
  incorporated as Aachi Cargo Channels Private
  Limited. The plaintiff was running the business
  of spices. The defendant rendered cargo services.
  Both were operating in different fields having no
  connection and no similarity in goods
  manufactured or services rendered. There is no
  likelihood of causing any confusion in the minds
  of the public that the business of the defendant
  was that of the plaintiff. No parameter provided
  in section 29(4) of the Trade Marks Act, 1999 was
  satisfied.

6
Trademark Registration
7
Infringement of Trademark Interim Injunction

• The registered trademark of the plaintiff is
  Ultratech Cement. The said trademark is used by
  the plaintiff on exclusive scale in respect of
  cement. The defendant was using the trademark
  Ultratuff Cement in respect of cement
  subsequently. The fact is that the plaintiffs
  mark was registered without any disclaimers or
  limitations showing that the word Ultra Tech is
  a distinctive mark and the plaintiff had
  satisfied the criteria laid down in section 9 and
  section 11 of the Trademarks Act, 1999. Though
  the word Ultra Tech is not separately registered
  nor is a subject of separate application
  for trademark registration, yet the same being
  distinctive shall not be hit by section 17(2) of
  the Act. The plaintiff is entitled to interim
  injunction. Hence, even words ULTRA or
  ULTRATECH are not subject-matter of the
  separate application, case is covered by the
  sub-section (1) of section 17 of the Acts.
  Product of the plaintiff and the defendant was
  identical. Similarly between two marks was
  striking that it would create confusion in minds
  of the users of the product. The case of
  plaintiff would fall under section 17(1) of the
  Act and as such the plaintiff was entitled
  to infringement injunction.

8
Infringement of Registered Trademark Injunction
Granted

• In Dhunsri Tea Industries Ltd. Versus Dhansiri
  Plantation Pvt. Ltd., the appellant has
  registered trademark of DHUNSERI for the
  purpose of tea and other various allied articles.
  The respondent used the word Dhansiri with
  slight difference in spelling which sounds
  phonetically the same. It was held that in view
  of the fact that large percentage of population
  are illiterate, they are likely to be deceived or
  confused in respect of goods which are covered
  by trademark registration. Thus, the appellant
  was entitled to injunction. In  Ranbaxy
  Laboratories Ltd. versus PE MM Sp. ZO. O, the
  plaintiff company is proprietor of
  registered trademark RANBAXY. Its trademark is
  registered in 62 countries including India and
  Poland. It has spent a lot of money and effort in
  developing and marketing its products under the
  trademark RANBAXY. It is also registered owner
  of domain name www.ranbaxy.com. The defendant
  does not have any interest in the name Ranbaxy
  and it is also not registered proprietor of the
  same.

9
Trademark Registration
10
Infringement of Trademark, No Interim Relief
Granted

• Plaintiffs in Rajesh Chheda versus Shubham
  Plywood Park, Mumbai were carrying on business of
  plywood and were owners of registered trademark S
  HABHAM along with the symbol of Swastik.
  Defendants were already doing business under the
  name and style of SHUBHAM SANITARY HARDWARE.
  They subsequently adopted the name SHUBHAM
  PLYWOOD PARK for plywood business. But defendants
  were not using logo SHUBHAM with swastik mark
  and not selling plywood by using trademark
  registration of plaintiff on plywood. Thus,
  the infringement of Interim Injunction relief as
  claimed by plaintiff cannot be granted.

11
Infringement of Trademark by Advertisement
against reputation

• Respondent and appellant both were manufacturers
  of pain relievers. Respondent in T.V. Commercial
  showed by way of advertisement a pain reliever in
  same color similar to the appellants product
  which sent an indirect message and suggestion
  that the product of the appellant had been
  acquired good quality for remedy of backache,
  lower backache and joint pain and that the
  respondent product was better and true pain
  reliever. It was held that it amounted
  to infringement of trademark registration to the
  appellant. There, relief by  way
  of infringement of injunction was granted.

12
Trademark Registration
13
Infringement of Trademark and Claim for
Injunction

• Where the trademark RANGILI used by the
  defendants for Agarbati was structurally and
  phonetically similar to the registered trademark R
  ANGOLI of the plaintiff and confusion was likely
  to be created in the minds of the customer of
  average intelligence who are purchasing Agarbati
  .There are infringement of the trademark
  registration and injunction would be granted
  restraining the defendants from using the mark
  RANGALI.

14
Removal of Label Infringement

• In Microsoft Corp. versus Computer Future
  Distribution Ltd., there was a cause of removal
  of labels with distinguishing marks on them. It
  was not repackaging case as no substitute labels
  were affixed. The case is thus a combination of
  the law on exhaustion of trademark rights and
  repackaging. Microsoft applied for summary
  judgement against CFD claiming injunction
  for infringement of Trademark registration,
  copyright and passing-off in respect of CFDs
  sale of Microsofts software. The Court granted
  summary judgement holding that with respect
  of trademark infringement , CFD has deliberately
  destroyed Microsofts outer packaging to
  facilitate sales of the software in a manner
  which Microsoft had not Authorised.

15
Infringement Onus to prove

• It was well settled that the plaintiff mast prove
  the essential features of his registered
  trademark have been copied. The onus to prove
  deception is on the part of the plaintiff who
  alleges infringement. A mark is said to be
  infringed by another trader if, even without
  using the whole of it, the latter uses one or
  more of its essential feature. The
  identification of essential feature depends
  partly on the Courts own judgement and partly on
  the burden of the evidence that is placed before
  it. Ascertainment of an essential feature is not
  to be the ocular test alone It is impossible to
  exclude consideration of the sound of words
  forming part or the whole of the mark. The
  plaintiff was using registered trademark RED
  HAT as well as SHADOWMAN device under various
  classes. RED HAT was well-known trademark and had
  acquired a goodwill in India and abroad as well.
  The defendant used the trademark RED HAT as part
  of their corporate name. Registration of name of
  the company under the Companies Act would not
  entitle them to use it. Merely because the
  plaintiff applied for trademark
  registration mentioned proposed to be used user
  of the said trademark in other countries not to
  be ignored. Hence, the defendant can be said to
  have infringed trademark of the plaintiff.

16
Infringement of Trademark Passing-off Action

• The Plaintiff having a registered trademark PRESTI
  GE in respect of non-electrical cooking utensils,
  where as the defendant started selling the
  pressure cooker under the trade name PRE/STAGE.
  The defendant had no right, title or interest in
  the trademark in relation to goods under the
  class 21 specifically the pressure cooker. So far
  as challenging the validity of the trademark is
  concerned. It can be done in rectification
  proceedings. Since no rectification proceedings
  were filed, the court declined to go into that
  question. In case the plaintiff used
  the trademark 555 whereas the defendant was
  carrying on its business under the trademark VR
  with the device of swan and the numerals 555. No
  satisfactory explanation was offered by the
  defendant as to how he came to adopt
  the trademark 555. Adoption of the mark
  registered in the name of the plaintiff by the
  defendant for his products cannot be considered
  to be honest. The plaintiff was entitled to
  injunction as prayed for. In another case a suit
  was filed by the plaintiff for a perpetual
  injunction restraining the defendant from
  manufacturing and selling under the trade name
  HOWRAH BIRI. In view of the fact that the
  defendant SUPER BIRI 202 , the plaintiff filed to
  make out the primary case for interim injunction

17
Trademark Registration
18
Innocent Infringement

• In Fram Mfg. Co. versus Eric Morton and Co., the
  proprietor of the trademark who had formed the
  company of which he was the principal shareholder
  to sell the goods to which the mark was applied,
  but had not assigned the Trademark to it, was
  held to be entitled to an injunction and to
  restrain infringement of it, but not to damages,
  as he had suffered none, and the Company were not
  his agents. In this case the defendants pleaded
  innocence. But damages were refused on the ground
  that the plaintiff was not as a shareholder of
  the company entitled to damages.

19
Infringement of Trademark and Domain Name

• Suit for permanent injunction was instituted by
  the plaintiff for restraining the defendant from
  using the trademark/domain name
  www.tatainfotech.in or any other mark/domain name
  which is identical with or deceptively similar to
  the plaintiffs trademark TATA/TATA INFOTECH
  WHOIS search conducted on registry website for
  domain name www.tatainfotech.it clearly showed
  that it was created on February 19,2005 in the
  name of the defendant. E-mail correspondence
  between contesting parties also conclusively
  demonstrated that the defendant not only had the
  knowledge that the plaintiff was  a legitimate
  owner and the user of the trademark TATA
  INFOTECH, but also get impugned domain name
  registered deliberately in bad faith, to take
  unfair advantage of distinctive character and
  repute of the plaintiff trademark.
  This, infringement of injunction was granted.