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Tag: Section 29 Trade Marks Act

  • Delhi High Court Protects Amul’s Trademark: Pharma Firm Barred from Using “AMUL” Brand

    Case 10: Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr.

    Citation: 2024 LiveLaw (Del) 1035
    Court: Delhi High Court
    Date Decided: 10 September 2024
    Judge: Justice Mini Pushkarna

    Background

    Kaira District Cooperative Milk Producers Union Ltd., widely known as Amul, is a prominent dairy cooperative in India, recognized for its extensive range of dairy products. Amul holds registered trademarks for the brand name “AMUL,” which has become synonymous with quality dairy products across the country.

    Bio Logic and Psychotropics India Pvt. Ltd., a pharmaceutical company, began marketing an antipsychotic medication under the brand name “AMUL.” These products were sold through various e-commerce platforms. Upon discovering this usage, Amul issued a cease and desist notice to the defendants. In response, the defendants claimed to have invented the trademark in 2013 and filed a trademark application for “AMUL” eight days after receiving the legal notice.

    Amul filed a suit seeking a permanent injunction to restrain the defendants from using the “AMUL” mark or any other mark deceptively similar to it, alleging trademark infringement and passing off.

    Legal Issues

    1. Whether the defendants’ use of the “AMUL” mark for pharmaceutical products constitutes infringement of Amul’s registered trademark under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off, leading to confusion among consumers and dilution of Amul’s brand identity.
    3. Whether Amul is entitled to a permanent injunction and damages for the unauthorized use of its well-known trademark.

    Parties’ Contentions

    Plaintiff (Amul):

    • Asserted that “AMUL” is a well-known trademark with significant goodwill and reputation in the market.
    • Claimed that the defendants’ use of the identical mark for pharmaceutical products is likely to cause confusion among consumers and tarnish the brand’s image.
    • Argued that the defendants acted in bad faith by adopting the “AMUL” mark without any plausible justification.

    Defendants (Bio Logic and Psychotropics India Pvt. Ltd.):

    • Contended that they had invented the “AMUL” trademark in 2013 and had been using it for their pharmaceutical products since then.
    • Filed a trademark application for “AMUL” shortly after receiving the legal notice from Amul.
    • Did not file a written statement or provide substantial evidence to support their claims.

    Decision

    The Delhi High Court granted a permanent injunction in favor of Amul, restraining the defendants from using the “AMUL” mark or any other mark deceptively similar to it for their pharmaceutical products. The court observed that the defendants had no plausible justification for adopting the “AMUL” mark and acted with mala fide intent to ride upon Amul’s immense reputation and goodwill. The court also imposed costs and damages totaling ₹5 lakhs against the defendants for infringing Amul’s well-known trademark. Additionally, the court directed the defendants to destroy the infringing goods that had been confiscated by the Local Commissioner and returned to them, in the presence of Amul’s representatives.

    Ratio Decidendi

    • The unauthorized use of a well-known trademark, even in a different class of goods, constitutes infringement under Section 29(4) of the Trade Marks Act, 1999, if it takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark.
    • Adoption of an identical or deceptively similar mark without a plausible justification indicates mala fide intent and is actionable under trademark law.
    • In cases of infringement of well-known trademarks, courts may grant permanent injunctions and award damages to protect the brand’s reputation and prevent consumer confusion.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 29(6), 29(8), 29(9), 134
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Kaira District Cooperative Milk Producers Union Ltd. & Anr. v. Bio Logic and Psychotropics India Pvt. Ltd. & Anr., 2024 LiveLaw (Del) 1035

    • ‘Delhi High Court restrains Bio Logic and Psychotropics India Pvt Ltd from using mark similar to “AMUL”‘ (SCC Online, 21 September 2024) https://www.scconline.com/blog/post/2024/09/21/dhc-restrains-bio-logic-and-psychotropics-india-pvt-ltd-from-using-mark-similar-to-amul/
    • ‘Delhi High Court Restrains Businesses From Using Amul’s Trademark On Their Pharmaceutical Products, Directs Payment Of ₹5 Lakhs In Damages & Costs’ (LiveLaw, 19 September 2024) https://www.livelaw.in/high-court/delhi-high-court/amul-trademark-infringement-pharmaceutical-tablets-costs-damages-270042
    • ‘Court Stops Trademark Infringement of “AMUL”‘ (BananaIP, 21 September 2024) https://bananaip.com/pharma-companys-buttery-slip-court-stops-trademark-infringement-of-amul/

    Author: Suhani Sharma

  • Emami vs. Hindustan Unilever: Calcutta HC Rules in Favor of ‘Fair and Handsome’ in Trademark Battle

    Case 9: Emami Limited v. Hindustan Unilever Limited

    Citation: 2024 SCC OnLine Cal 3579
    Court: Calcutta High Court
    Date Decided: 9 April 2024
    Judge: Justice Ravi Krishan Kapur

    Background

    Emami Limited, a prominent Indian FMCG company, launched its men’s skincare product “Fair and Handsome” in 2005. Over the years, Emami invested significantly in building the brand’s identity, emphasizing the term “Handsome” through extensive advertising campaigns and achieving a substantial market share in the men’s fairness cream segment.

    In 2020, Hindustan Unilever Limited (HUL) rebranded its men’s skincare product from “Fair & Lovely Men” to “Glow & Handsome.” Emami perceived this rebranding as an attempt to capitalize on the goodwill of its established brand and filed a suit against HUL, alleging trademark infringement and passing off.

    PLAINTIFF’S MARK

    DEFENDANT’S MARK

    Legal Issues

    1. Whether HUL’s use of the mark “Glow & Handsome” infringes upon Emami’s registered trademark “Fair and Handsome.”
    2. Whether HUL’s adoption of the mark constitutes passing off by creating confusion among consumers and leveraging Emami’s brand reputation.
    3. Whether Emami is entitled to an interim injunction restraining HUL from using the “Glow & Handsome” mark pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Emami Limited):

    • Asserted that “Fair and Handsome” is a well-established brand with significant goodwill and recognition in the market.
    • Claimed that HUL’s adoption of “Glow & Handsome” is deceptively similar and likely to cause confusion among consumers.
    • Argued that the term “Handsome” has acquired distinctiveness and a secondary meaning associated with Emami’s product due to extensive use and promotion.

    Defendant (Hindustan Unilever Limited):

    • Contended that “Handsome” is a descriptive term commonly used in the industry and lacks distinctiveness.
    • Argued that Emami had disclaimed exclusive rights over the term “Handsome” during trademark registration, limiting its ability to claim infringement.
    • Maintained that there is no likelihood of confusion between the two marks due to differences in packaging and marketing strategies.

    Decision

    The Calcutta High Court granted an interim injunction in favor of Emami, restraining HUL from using the “Glow & Handsome” mark for its men’s skincare products. The court observed that while Emami could not claim infringement due to the disclaimer over “Handsome,” it had established a prima facie case for passing off. The court noted that HUL’s adoption of a mark with a prominent and essential feature of Emami’s brand suggested an attempt to benefit from Emami’s goodwill, leading to potential consumer confusion. HUL was granted one month to comply with the order.

    Ratio Decidendi

    • Even if a term within a trademark is descriptive and disclaimed, extensive use and promotion can confer it with distinctiveness and secondary meaning, warranting protection against passing off.
    • Adoption of a mark that closely resembles a competitor’s established brand, especially with knowledge of its market presence, can constitute passing off due to the likelihood of consumer confusion and deception.
    • Interim injunctions can be granted in passing off cases where the plaintiff demonstrates a strong prima facie case, potential for irreparable harm, and a balance of convenience in its favor.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2), 29(4), 30, 34, 35
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2

    Bibliography

    Author: Suhani Sharma

  • Delhi High Court Grants Ex-Parte Injunction to Moti Mahal

    Case 8: Moti Mahal Delux Management Services Pvt. Ltd. & Ors. v. SRMJ Business Promoters Pvt. Ltd. & Anr.

    Citation: CS(COMM) 1115/2024
    Court: Delhi High Court
    Date Decided: 12 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Moti Mahal Delux Management Services Pvt. Ltd. (“Moti Mahal”), a renowned restaurant chain with a legacy dating back to 1920, owns several registered trademarks, including “MOTI MAHAL,”“MOTI MAHAL GROUP,”“MOTI MAHAL MANAGEMENT SERVICES,” and “TANDOORI TRAIL.” These marks are associated with high-quality North Indian cuisine and have garnered significant goodwill both in India and internationally.

    SRMJ Business Promoters Pvt. Ltd. (“SRMJ”) was previously a franchisee of Moti Mahal under a Franchise Agreement dated 5 October 2013, which expired on 5 October 2022. Despite the termination of the agreement, SRMJ continued to operate its restaurant business using the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX,” prompting Moti Mahal to file a suit seeking a permanent injunction against SRMJ for trademark infringement, passing off, and unfair trade practices.

    Legal Issues

    1. Whether SRMJ’s continued use of the marks “MOTI MAHAL DELUX TANDOORI TRAIL” and “MOTI MAHAL DELUX” after the termination of the franchise agreement constitutes trademark infringement under the Trade Marks Act, 1999.
    2. Whether such use amounts to passing off and unfair trade practices, causing confusion among consumers and diluting Moti Mahal’s brand identity.
    3. Whether Moti Mahal is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiffs (Moti Mahal Delux Management Services Pvt. Ltd. & Ors.):

    • Asserted that they are the rightful and exclusive owners of the registered trademarks in question, which have acquired immense goodwill over the years.
    • Claimed that SRMJ’s continued use of the marks post-termination is unauthorized and constitutes deliberate infringement and passing off.
    • Argued that SRMJ’s actions are likely to cause confusion among consumers and damage the reputation and distinctiveness of Moti Mahal’s trademarks.

    Defendants (SRMJ Business Promoters Pvt. Ltd. & Anr.):

    • At the time of the ex-parte hearing, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of Moti Mahal, restraining SRMJ and its affiliates from:

    • Using the marks “MOTI MAHAL,”“MOTI MAHAL DELUX,”“MOTI MAHAL DELUX TANDOORI TRAIL,” or any other mark deceptively similar to Moti Mahal’s registered trademarks.
    • Operating any restaurant or catering business under the impugned marks.
    • Using any logos, signage, promotional materials, or digital content bearing the infringing marks.

    The court held that Moti Mahal had established a prima facie case for the grant of an injunction, with the balance of convenience in its favor, and that it would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The unauthorized use of a registered trademark by an ex-franchisee post-termination of the franchise agreement constitutes infringement under Sections 29(1) and 29(2)(c) of the Trade Marks Act, 1999.
    • Such use also amounts to passing off and unfair trade practices, leading to consumer confusion and dilution of the trademark’s distinctiveness.
    • In cases where the plaintiff demonstrates a strong prima facie case and the likelihood of irreparable harm, courts may grant ex-parte ad-interim injunctions to preserve the status quo pending final adjudication.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(c), 29(4)
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2
    • Copyright Act, 1957: Sections 2(c), 17

    Bibliography

    Author: Suhani Sharma