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Tag: trademark infringement

  • 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

  • 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

  • Mankind Pharma Stops Sepkind from Using Similar Trademark

    Case 6: Mankind Pharma Ltd. v. Sepkind Pharma Pvt. Ltd. & Ors.

    Citation: 2024 SCC OnLine Del 3143
    Court: Delhi High Court
    Date Decided: 23 December 2024
    Judge: Justice Mini Pushkarna

    Background

    Mankind Pharma Ltd. (“Mankind”), a leading pharmaceutical company in India, has been using the trademark “MANKIND” since 1986 and holds multiple registrations under the Trademarks Act, 1999. The mark “MANKIND” has been recognized as a well-known trademark by the Registrar of Trade Marks under Rule 124 of the Trade Marks Rules, 2017. Mankind has developed a family of trademarks incorporating the “KIND” suffix, such as “HEPAKIND,”“GLYKIND,” and “METROKIND,” establishing a strong brand identity in the pharmaceutical sector.

    In December 2024, Mankind discovered that Sepkind Pharma Pvt. Ltd. (“Sepkind”) was using the mark “SEPKIND,” which incorporated the “KIND” suffix, and a logo and tagline (“Save your Life”) that were deceptively similar to Mankind’s own logo and tagline (“Serving Life”). Mankind filed a suit seeking a permanent injunction against Sepkind to restrain them from infringing its trademark, passing off, and engaging in unfair trade practices.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether Sepkind’s use of the mark “SEPKIND” infringes upon Mankind’s registered trademark “MANKIND” under the Trade Marks Act, 1999.
    2. Whether Sepkind’s use of a similar logo and tagline constitutes passing off and unfair trade practices.
    3. Whether Mankind is entitled to an ex-parte ad-interim injunction to prevent irreparable harm pending the final adjudication of the suit.

    Parties’ Contentions

    Plaintiff (Mankind Pharma Ltd.):

    • Asserted that “MANKIND” is a well-known trademark with significant goodwill and reputation in the pharmaceutical industry.
    • Claimed that Sepkind’s use of “SEPKIND,” along with a similar logo and tagline, is likely to cause confusion among consumers and amounts to trademark infringement and passing off.
    • Argued that the adoption of the “KIND” suffix by Sepkind was a deliberate attempt to capitalize on Mankind’s established brand identity.

    Defendants (Sepkind Pharma Pvt. Ltd. & Ors.):

    • 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 Mankind Pharma Ltd., restraining Sepkind Pharma Pvt. Ltd. and others from:

    • Using the mark “SEPKIND” or any other mark deceptively similar to “MANKIND” in any manner, including on products, packaging, promotional materials, or online platforms.
    • Using a logo or tagline that is deceptively similar to Mankind’s registered trademarks and associated branding elements.

    The court held that Mankind had established a prima facie case for the grant of an injunction and that the balance of convenience favored Mankind. It also noted that Mankind would suffer irreparable harm if the injunction were not granted.

    Ratio Decidendi

    • The use of a mark that is deceptively similar to a well-known registered trademark constitutes infringement under Sections 29(1) and 29(2)(b) of the Trade Marks Act, 1999.
    • The adoption of similar branding elements, such as logos and taglines, can lead to consumer confusion and amounts to passing off and unfair trade practices.
    • 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)(b), 29(4)
    • Trade Marks Rules, 2017: Rule 124
    • Code of Civil Procedure, 1908: Order XXXIX Rules 1 and 2
    • Indian Copyright Act, 1957

    Bibliography

    Author: Suhani Sharma

  • MP High Court Bans Reuse of STOK Beer Bottles Over Trademark Row

    Case 5: Mount Everest Breweries Ltd. v. MP Beer Products Ltd. & Ors.

    Citation: 2024 SCC OnLine MP 7367
    Court: Madhya Pradesh High Court
    Date Decided: 12 November 2024
    Bench: Justice Sanjeev Sachdeva and Justice Pranay Verma

    Background

    Beer bottles are at the center of a dispute in which Mount Everest Breweries Ltd. (MEBL), the manufacturer of the “STOK” beer brand, discovered that MP Beer Products Ltd. and other respondents were reusing its distinctive glass beer bottles embossed with the “STOK” trademark and a panda logo to market their beer products. MEBL contended that this practice infringed upon its trademark rights and misled consumers.

    In response, the Excise Commissioner of Madhya Pradesh issued an order on 7 November 2020, prohibiting all beer and liquor bottling units from reusing embossed bottles. The respondents challenged this order, arguing that it was unreasoned and violated their industrial practices. A single judge quashed the Commissioner’s order on 13 March 2024, directing a reconsideration. MEBL appealed this decision.

    Plaintiff’s MARK

    Legal Issues

    1. Whether reusing embossed bottles with another manufacturer’s trademark constitutes infringement under the Trade Marks Act, 1999.
    2. Whether the Excise Commissioner had the authority under the MP Foreign Liquor Rules to prohibit such reuse.
    3. Whether such reuse violates the MP Foreign Liquor Rules and misleads consumers.

    Parties’ Contentions

    Appellant (Mount Everest Breweries Ltd.):

    • Argued that the reuse of its embossed bottles by the respondents infringed its trademark rights and misled consumers.
    • Asserted that such practices violated the MP Foreign Liquor Rules, which require labels and brands to uniquely identify the manufacturer.

    Respondents (MP Beer Products Ltd. & Ors.):

    • Contended that reusing empty beer bottles is an industry norm and environmentally sustainable.
    • Claimed that they procured bottles legally from scrap dealers and affixed their own labels, preventing consumer confusion.
    • Argued that the Excise Commissioner’s order lacked legal basis and violated their right to trade under Article 19(1)(g) of the Constitution.

    Decision

    The Madhya Pradesh High Court upheld the Excise Commissioner’s order prohibiting the reuse of bottles with embossed trademarks, recognizing it as a measure to prevent trademark infringement and consumer deception. However, the court set aside the restriction on reusing bottles after removing or scratching off the embossed logos, leaving this issue open for determination in appropriate proceedings.

    Ratio Decidendi

    • Reusing bottles with another manufacturer’s embossed trademark constitutes trademark infringement and violates the MP Foreign Liquor Rules.
    • The Excise Commissioner is empowered to enforce rules preventing label misuse and brand confusion.
    • While environmental concerns are valid, they do not justify practices that infringe upon intellectual property rights.

    LEGAL ANALYSIS

    • Trade Marks Act, 1999: Sections 29(1), 29(2)(b)
    • MP Foreign Liquor Rules, 1996
    • MP Beer and Wine Rules, 2000
    • Constitution of India: Article 19(1)(g)

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Restrains ‘Baap Ki Adalat’ for Trademark Infringement

    Case 4: Independent News Service Pvt. Ltd. & Rajat Sharma v. Ravindra Kumar Choudhary & Ors.

    Citation: 2024 SCC OnLine Del 3142
    Court: Delhi High Court
    Date Decided: 30 May 2024
    Judge: Justice Anish Dayal

    Background

    Independent News Service Pvt. Ltd. (INS), the proprietor of the 24-hour Hindi news channel “India TV,” and its Chairman and Editor-in-Chief, Rajat Sharma, filed a suit against Ravindra Kumar Choudhary and others. The plaintiffs alleged that the defendants were using the mark/logo “Baap Ki Adalat,” which was deceptively similar to their registered trademark/logo “Aap Ki Adalat,” a well-known television program featuring interviews with prominent personalities. The defendants, particularly Choudhary, a self-proclaimed political satirist, were creating and publishing various video and audio content on social media platforms under the impugned mark.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the mark/logo “Baap Ki Adalat” infringed upon the plaintiffs’ registered trademark/logo “Aap Ki Adalat” under the Trade Marks Act, 1999.
    2. Whether the defendants’ actions constituted passing off, leading to confusion among the public.
    3. Whether the unauthorized use of Rajat Sharma’s name, photograph, and video violated his personality rights.

    Parties’ Contentions

    Plaintiffs (Independent News Service Pvt. Ltd. & Rajat Sharma):

    • Asserted that “Aap Ki Adalat” is a registered trademark and a widely recognized television program, thereby possessing significant goodwill and reputation.
    • Claimed that the defendants’ use of “Baap Ki Adalat” was deceptively similar, both phonetically and visually, leading to confusion among the public.
    • Alleged that the defendants’ use of Rajat Sharma’s name, photograph, and video without consent infringed upon his personality rights.

    Defendants (Ravindra Kumar Choudhary & Ors.):

    • At the time of the interim injunction, the defendants had not filed a response.

    Decision

    The Delhi High Court granted an ex-parte ad-interim injunction in favor of the plaintiffs, restraining the defendants from:

    • Using the mark/logo “Baap Ki Adalat” or any other mark/logo deceptively similar to “Aap Ki Adalat” in any manner, including as a trademark, logo, trading style, domain name, social media posts, audio-video content, or in relation to any services.
    • Using the photograph, video, or name of Rajat Sharma in any manner that would violate his personality rights.

    The court directed the defendants to remove the infringing content from their social media platforms and scheduled the next hearing for 18 October 2024.

    Ratio Decidendi

    • The court found a prima facie case of trademark infringement and passing off, noting the deceptive similarity between “Aap Ki Adalat” and “Baap Ki Adalat.”
    • Recognized the significant reputation and goodwill associated with the plaintiffs’ trademarks, and the potential for confusion and deception among the public due to the defendants’ use of a deceptively similar mark.
    • Acknowledged the violation of Rajat Sharma’s personality rights through the unauthorized use of his name, photograph, and video.

    LEGAL ANALYSIS

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
    • Code of Civil Procedure, 1908: Order XXXIX, Rules 1 and 2
    • Common law principles relating to passing off and personality rights

    Bibliography

    Author: Suhani Sharma

  • Delhi HC Rules in SPARX vs HRX Trademark Dispute: No Injunction Granted

    Case 3: Relaxo Footwears Ltd. v. XS Brands Consultancy Pvt. Ltd. & Ors.

    Citation: 2024 SCC OnLine Del 3141
    Court: Delhi High Court
    Date Decided: 13 May 2024
    Judge: Justice Anish Dayal

    Background

    Relaxo Footwears Ltd., a prominent Indian footwear manufacturer, has been using the “SPARX” brand since 1976. The company developed a distinctive “X” device mark derived from its “SPARX” logo, which it used prominently on its footwear products. In 2024, Relaxo filed a suit against XS Brands Consultancy Pvt. Ltd., associated with the “HRX by Hrithik Roshan” brand, alleging that the defendants’ use of a similar “X” mark on their footwear products infringed upon Relaxo’s trademark rights.

    Plaintiff’s MARK

    Defendant’s MARK

    Legal Issues

    1. Whether the defendants’ use of the “X” mark infringed upon Relaxo’s registered trademark under the Trade Marks Act, 1999.
    2. Whether the similarity between the two “X” marks could cause confusion among consumers, constituting passing off.
    3. Whether the defendants’ use of the “X” mark was honest and concurrent, given their market presence since 2013.

    Parties’ Contentions

    Plaintiff (Relaxo Footwears Ltd.):

    • Asserted that their “X” mark, derived from the “SPARX” logo, had acquired distinctiveness and was associated exclusively with their products.
    • Argued that the defendants’ use of a similar “X” mark on identical goods (footwear) was likely to cause confusion among consumers.
    • Claimed that the defendants’ adoption of the “X” mark was dishonest and aimed at capitalizing on Relaxo’s established reputation.

    Defendant (XS Brands Consultancy Pvt. Ltd. & Ors.):

    • Contended that their “X” mark was distinct and had been used in conjunction with the “HRX” brand since 2013.
    • Argued that the marketplace was crowded with similar “X” marks, and Relaxo had previously agreed to coexist with other entities using similar marks, undermining their claim to exclusivity.
    • Maintained that their use of the “X” mark was honest, concurrent, and had not caused any actual confusion in the market.

    Decision

    The Delhi High Court refused to grant an interim injunction against the defendants. The court observed that:

    • The defendants had been using the “X” mark in conjunction with the “HRX” brand since 2013, indicating honest and concurrent use.
    • Both parties used their respective “X” marks alongside their principal brand names, reducing the likelihood of consumer confusion.
    • The balance of convenience favored the defendants, given their substantial investment in developing the “HRX” brand and the absence of evidence showing actual consumer confusion.

    Ratio Decidendi

    • The court held that the mere similarity of the “X” marks was insufficient to establish infringement or passing off, especially when both marks were used alongside distinctive brand names.
    • Emphasized the importance of considering the overall presentation of the marks, including their use in conjunction with other brand identifiers.
    • Recognized the defendants’ honest and concurrent use of the “X” mark since 2013, which weighed against granting an injunction.

    LEGAL ANALYSIS

    Principles of passing off under common law

    Trade Marks Act, 1999: Sections 29(1), 29(2)(b), 29(4)

    • (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    • (b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark; or
    • (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

    Bibliography

    Author: Suhani Sharma

  • TRIPLE IDENTITY TEST IN TRADEMARK

    A trademark is a distinctive word, symbol, sign, or combination thereof that distinguishes the goods or services of one enterprise from those of others in the marketplace. It functions as a distinctive mark or a unique identifier for a business’s products or services, giving customers a simple means of identifying and differentiating brands. Trademarks are crucial for safeguarding a company’s reputation, intellectual property, and brand identity.

    A trademark, as defined by law, is any word, name, symbol, device, or combination of these that is used to identify and set one entity’s goods or services apart from another. A trademark confers upon its registered proprietor the exclusive right to use the mark in relation to the specified goods or services and protects against unauthorized use of confusingly similar marks.

    THE TRIPLE IDENTITY TEST

    As branding becomes more and more important in the marketplace, courts are frequently asked to decide whether a mark has been violated by another’s use. In such cases, Indian courts have implemented a structured judicial standard called the ‘Triple Identity Test’, particularly those involving direct copying.

    The ‘Triple Identity Test,’ as a judicially developed standard, looks at three concurrent elements to determine whether a trademark has been violated.

    • Whether the mark in question is identical or deceptively similar to the registered trademark;
    • Whether the goods or services in question are identical or of the same description, and
    • Whether the trade channels or distribution networks used by the parties overlap.

    Under Sections 29(1) to 29(3) of the Trade Marks Act, 1999, courts establish infringement where all three limbs are satisfied and which presume likelihood of confusion by the consumers.

    Section 29(1), (3) of the Trade Marks Act, 1999

    (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

    (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to confuse the part of the public.

    In cases where the marks are either identical or deceptively similar, and the infringement occurs on the same class of goods through comparable distribution networks, this test has proven especially helpful. It not only makes judicial reasoning easier, but it also strengthens the enforcement of statutory rights conferred upon registered trademark owners.

    CASE ANALYSIS

    1. M/s Jain Electronics v Cobra Cables Pvt Ltd and Ors [2011] 45 PTC 52 (Del)

    Facts

    M/s Jain Electronics, the petitioner, applied on 19 November 1987, to register the trademark ‘COBRA’ for voltage stabilizers under Class 9. The Cobra Cables Pvt Limited opposed the application, claiming that it had previously registered the identical ‘COBRA’ mark for electrical apparatus and that it had obtained the mark through a series/chain of assignments. The Deputy Registrar rejected the petitioner’s application on the grounds that the triple identity test was satisfied, as the goods were of the same description, the mark was identical, and the channels of trade and sale were similar. This decision was affirmed by the Intellectual Property Appellate Board (IPAB), leading the petitioner to file a writ petition before the Delhi High Court.

    Petitioner’s Contention

    The petitioner contended it had been using the mark “COBRA” since 1978 and that such prior use justified the registration.

    Respondent’s Contention

    The respondent argued that they were the lawful proprietor of the registered trademark, which was acquired through a valid assignment, and that the petitioner’s use was insufficiently evidenced.

    Held

    The Hon’ble Delhi High Court dismissed the writ petition, upholding the findings of the Deputy Registrar and the IPAB. The Court observed that the petitioner’s 1984 invoices did not prove that the mark ‘COBRA’ specifically was used in connection with voltage stabilizers. The Court reiterated that:

    • That the marks were identical;
    • That the goods, voltage stabilizers, and electrical apparatus were identical in description;
    • There was an overlap in the sales channel.

    Hence, the Triple Identity Test was deemed to be met, and it was assumed that the general public would become confused.

    “The use of an identical mark in respect of the two goods is bound to cause deception and confusion in the market.”– Delhi High Court

    2. Sumeet Research and Holdings Pvt Ltd v Sipra Appliances [2018] CS (COMM) 428/2016 (Del HC)

    Facts

    Sumeet Research and Holdings Pvt Ltd, the plaintiff, was the registered owner/proprietor of the well-known trademark ‘SUMEET’, which is widely used in relation to kitchen appliances. After, the defendant, Sipra Appliance, started using a similar mark ‘SUMEET’ on similar goods. The plaintiff filed a permanent injunction under the Trade Marks Act, 1999, for trademark infringement and passing off.

    Issue

    Whether the defendant’s use of the identical mark ‘SUMEET’ for similar goods sold through the same channels amounted to trademark infringement under the ‘Triple Identity Test’.

    Petitioner’s Contention

    The plaintiff claimed that the defendant’s use of “SUMEET” was dishonest, amounted to infringement under Section 29(1) of the Trade Marks Act,1999, and by deceiving customers into thinking that it was an association or affiliation.

    Defendant’s Contention

    The defendant was unable to provide convincing evidence of prior use or lawful adoption of the said mark.

    Held

    The Delhi High Court granted a permanent injunction, holding that the plaintiff had established infringement by satisfying all three limbs of the Triple Identity Test:

    • That the trademarks were deceptively similar;
    • That the goods, namely kitchen appliances, were identical in nature and the way they function;
    • The trade channels, retail stores, and electronic marketplaces were also similar.

     The Court further noted that the reputation and goodwill attached to the plaintiff’s mark would be diluted and that the consumer confusion was inevitable/unavoidable. Infringement under Section 29(1)(3) of the Trade Marks Act, 1999 was held to be clearly established.

    “The concurrent satisfaction of all three conditions—the mark, the goods, and the trade channels—creates a presumption of confusion and deception.” – Delhi High Court

    CONCLUSION

    Under Indian law, the ‘Triple Identity Test’ has established a solid reputation as a useful and judicially accepted technique for identifying trademark infringement. Examining the concurrent similarity of the mark, the products or services, and the trade routes, this test provides a targeted method for determining the possibility of consumer confusion, which is a crucial component of both infringement and passing-off cases. As evidenced by landmark rulings like Sumeet Research and Holdings Pvt Ltd v. Sipra Appliances and Jain Electronics v. Cobra Cables Pvt Ltd, the courts have continuously used the test to maintain trademark protection in cases where obvious imitation is present.

    Although the test is not legally codified, judges have endorsed it, indicating that it is a useful tool for expediting infringement analysis in cases with clear-cut facts. Its rigidity, however, might make it less applicable in complicated disputes that call for a more nuanced multifactorial analysis. Finally, by striking a balance between doctrinal clarity and business viability, the ‘Triple Identity Test’ strengthens trademark law’s fundamental goals of safeguarding marks, distinctiveness, and preventing consumer deception in the marketplace.

    Author: Suhani Sharma

  • USING TRADEMARK SYMBOLS

    INTRODUCTION

    In today’s competitive business environment, building and defending your brand identity is imperative. One of the most important steps is realizing the difference between the trademark symbols TM (™) and R (®). Although the symbols look alike, they are used for different purposes and have varying legal consequences. The TM symbol usually means an unregistered trademark, indicating that a company asserts rights over a brand or logo that is perhaps still under registration.

    The ® symbol, on the other hand, represents a registered trademark, providing greater legal protection under the Trademarks Act, 1999 in India and other foreign trademark legislations. This article examines the meanings, applications, legal implications, and branding effects of the TM and ® symbols to enable businesses to make informed choices in asserting and defending their intellectual property.

    With expert trademark registration services, TMWALA can help businesses navigate this process, ensuring proper use of symbols and compliance with applicable laws.

    Knowing the distinction between the TM (™) and R(®) symbols is important since it can help you promote your brand identity. After completing the Trademark Registration process in India, there are no restrictions on where the ® symbol can be placed.

    WHAT DOES THE TM (™) SYMBOL MEAN?

    When products have applied for Trademark Registration, they are frequently branded or advertised using the TM (™) sign, which indicates an unregistered trademark. This indicates that you claim trademark rights over the mark. After text, images, or other content that they claim to be their own but have not yet formally registered with a regulatory body, businesses may use the trademark superscript, ™. Sometimes companies will use ™ to signify that they have applied for registration or that this is their first use. From a business standpoint, it implies that the person marketing a certain good or service thinks it is unique.

    WHAT MAKES USING THE TM SYMBOL CRUCIAL?

    Because it alerts consumers that you are trying to register the mark, which is protected by common law rights, it is essential to use the TM symbol for trademarks. If you don’t use the TM symbol, customers might not identify your mark as a trademark.

    The TM emblem safeguards your common law rights to the mark and alerts possible infringers that you believe it is currently in use.

    WHAT DOES THE R (®) SYMBOL MEAN?

    A product is a Registered Trademark if it bears the R (®) symbol. This indicates that the logo is protected by law under the 1999 Trademarks Act. Trademark Registrations are valid for ten years, however, they can be extended by going through the renewal procedure. A person or company may face trademark infringement charges if they use the registered name, logo, or symbol without the owner’s prior permission.

    WHAT MAKES USING THE ® MARK CRUCIAL?

    When it comes to registered trademarks, the ® symbol is essential since it alerts consumers that the mark is protected by federal law. If you don’t use the ® symbol, customers might not know that your trademark is registered.

    On the other hand, the ® sign notifies potential infringers that your mark is registered with the USPTO and deters potential infringers by demonstrating that you have a valid claim to the mark.

    FOLLOWING ARE THE KEY DIFFERENCES BETWEEN TM (™) AND R (®)

    The ® and ™ symbols are interchangeable for the average person. However, that is untrue. The symbols ® and ™ have several meanings. Usage Following the successful registration of the company’s trademark, the ® symbol may be used.

    However, if a trademark for the specific commodity or service is still pending registration, the ™ symbol may be used. The ® symbol cannot be used in certain circumstances because the mark has not yet received approval.

    Three differences exist between the TM and ® symbols:

    1. When they’re used
    2. Their meaning
    3. Their influence

    Usage

    The TM symbol can be used with both registered and unregistered trademarks, while the ® symbol is only allowed for registered trademarks. You can’t use the ® symbol unless you’ve registered your trademark with the USPTO.

    The ® symbol is only permitted for registered trademarks, whereas the TM symbol can be used regardless of whether your brand is registered with the USPTO.

    Meaning

    The ® symbol denotes that a trademark is registered with the USPTO and is protected by federal law, whereas the TM symbol indicates that someone asserts exclusive rights to a trademark, which may or may not be registered.

    Influence

    Since the TM symbol lacks federal protection, it is less potent than the ® symbol. Even so, adopting the TM symbol can assist in shielding your trademarks from infringement and avoiding consumer confusion.

    The Legal Aspects Concerning

    • The ® mark is legally protected and penalized for copying
    • The ™ trademark symbol has no legal support or advantage.

    Branding Purpose:

    • While awaiting the process to be finished, the ™ symbol typically indicates a preference for the brand identity of the business, organization, or person.
    • You will feel more confident using your intellectual property to develop strong brand equity if you utilize the ® symbol to market your goods or services.

    TMWALA can assist you not only in registering your trademark but also in monitoring and enforcing it, ensuring that your brand identity stays secure from misuse and infringement.

    CONCLUSION

    The main distinction between the two symbols is that one (TM) is used with a mark that is not registered, and the other (R) is used with one that is registered. Knowing the distinction will be beneficial to those looking to protect their brand because the user of just TM may be a notification, and the infringement of the brand by any other party will not be treated as a serious issue. Proper use of these symbols will also make the brand of the business strong and prevent the brand from being misused by unauthorized persons.

    In India and worldwide, the business has the liberty to label its products using the symbol (TM) and (R), and it can use it in its company’s name as well. Always use these symbols according to the norms of the applicable laws.

    With end-to-end trademark solutions from filing to post-registration support, TMWALA empowers businesses to take full control of their brand protection journey.

  • TRADEMARK SEARCH REPORT

    INTRODUCTION

    Trademark search report is the first step taken by an individual, company or any other person when they need to know whether a specific mark exists, or they want a mark to get registered. Conducting a Trademark Search helps in ensuring that the logo, slogan or mark is unique and distinctive in nature. Trademark search reports becomeuseful in identifying the marks that can arise conflict or infringe the right of the owner of the mark. Trademark search is a very simple and easy process to do, anyone can do it.

    The result of Trademark search is based on the product description, which class it belongs too, which word or mark is being used. It not only shows the existing marks but also their present status like whether the mark is registered, opposed, abandoned etc.., In this article we are going to discuss what is Trademark, the importance of Trademark Search, types of Trademark Search, the process of Trademark Search, how it can be used as evidence and common mistakes during Trademark Search.

    WHAT IS TRADEMARK?

    A Trademark is a form of intellectual right property that distinguishes one brand’s goods and services with other brands goods and services. A trademark consists of a word, phrase, insignia, symbol or combination of all in one. The Trademark identifies that a particular goods or service belongs to whom, if anyone else tries to have the same mark for their goods or service the owner has the right to claim opposition as he has exclusive right on that Trademark.

    THE IMPORTANCE OF TRADEMARK SEARCH REPORT

    Trademark Search is an excellent example of ‘Precaution Is Better Than Cure’, as it can help in identifying the mark which can cause conflict in future. Conducting a Trademark Search is important as it can minimize the risk of investing in a mark that is already being used by some other party. It helps you to avoid any kind of legal dispute which can occur by using such mark and it also helps in saving your money from those legal processes which you may face using that disputed mark.

    TYPES OF TRADEMARK SEARCH

    In India various type of Trademark search can be done based who that trademark is going to be used by the Applicant, few of them are: –

    Phonetic search:

    It is done to find out that if there is any mark which soundsto the mark you are applying for, the words can be different but do those two marks sound similar? For example, Organic and Organik or Frooti and Fruiti

    Exact match:

    It is the most basic trademark search as it used to find the identical word to that of the proposed mark.

    For example: AYN and AYN

    Class wise search:

    There is a total of 45 classes of trademark, class 1 to 34 is for goods and 35-45 is for services. The class wise search ensures that no identical mark as of proposed mark exists in same class.

    For example: class 9 electronics, marks Sony and Soni

    Comprehensive search:

    Comprehensive search is in depth search of a mark, it includes all the above-mentioned searches and search of the status the similar mark whether it is opposed, abandoned or pending.

    THE PROCESS OF TRADEMARK SEARCH

    The Trademark Search is done by using the Trademark Registry online data, the search can be done by anyone by the following process:

    Visit the Trademark Registry’s official website Official website of Intellectual Property India

    Go to related links, there you find public search

    Click on public search, then it will ask permission to proceed to external site, click on yes

    You will reach the public search page, which looks like this:

    • Then fill in the required information on this page, for example
      • Search type: – type of search you are conducting (e.g. wordmark)
      • Wordmark: – type the wordmark you are searching for (e.g. AYN)
      • Class: – type the class in which you are searching for (e.g. 45)
      • Enter the code shown above: – carefully enter the captcha (e.g. 12345)

    • Search: – Last step is to click the search button, you will get all the similar existing trademark registered in Trademark Registry, like

    HOW IT CAN BE USED AS EVIDENCE

    Trademark Search Report can work evidence in Trademark infringement case where you must prove that you have taken the mark in good faith and in a bona fide intention.

    The Trademark search report includes details of every mark whether they were opposed, pending or abandoned, and if you have taken a mark which was abandoned by its prior user then your intention of applying that mark is in good faith, and this can benefit you in a Trademark infringement case.

    COMMON MISTAKES DURING TRADEMARK SEARCH

    While conducting a trademark search people usually make these mistakes: –

    • Not doing phonetic search: people usually do word mark search if it’s clear they think that there will be no conflict in registering this mark, but the phonetically similar sound can be a challenge later.
    • Not considering unregistered mark: this sounds confusing, how can an unregistered mark be a problem, but it can. If someone in the local area has been using a similar mark for a very long period, then they claim that they are the prior user of the mark which will eventually create a big problem for the present Applicant.
    • Filling the mark without an attorney:Trademark attorney or professionals make sure to check and clear every aspect related to your Trademark Registration. So contact TMWALA if you need any guidance regarding your Trademark Search or Trademark Registration.

    CONCLUSION

    Conducting a Trademark Search is the very first and most crucial process in Online Trademark Registration process. It ensures that your proposed Trademark does not infringe someone else’s Trademark rights. It also provides clarity about whether you should move forward with the present mark or not. A through Trademark Search by yourself or with the help of a profession can help you save a lot of your time, money, energy and help you avoid future conflicts, legal troubles and unnecessary hassle in the long run. 

  • TRADEMARK REGISTRATION IN INDIA: WHAT, WHY, HOW

    INTRODUCTION

    One must obtain Trademark Registration in India to acquire Trademark Rights. In India, Trademark Rights are protected as statutory rights under the Trademark Act of 1999. Under the Act, this kind of protection is administered by the Controller General of Patents, Designs, and Trademarks. The Trademark Act of 1999 addresses trademark fraud prevention, registration, and protection. The rights of the trademark holder, penalties for trademark infringement, damages settlement, and trademark transfer processes are also covered.

    WHAT IS A TRADEMARK?

    A trademark is a type of intellectual property that sets one brand’s products and services apart from those of other brands. A trademark consists of a word, phrase, insignia, symbol, or combination of all in one. A trademark indicates who owns a certain commodity or service, and as the owner has the sole right to use the mark, they may object if someone else attempts to use it for their own goods or services.

    Trademark as defined under section 2(1)(zb) is ““trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;”

    DIFFERENT KINDS OF TRADEMARKS IN INDIA

    According to WIPO, a trademark can be “A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds or fragrances, or color shades used as distinguishing features – the possibilities are almost limitless.” Hence, everything right from signs, symbols, sounds, fragrances, colours to shapes can be trademarked. The possibilities are endless. So long as a mark is unique, distinctive, and helps in source identification, it can be trademarked.

    HOW TO OBTAIN TRADEMARK REGISTRATION IN INDIA?

    You must first rule out the possibility that the mark you want to use as a trademark for your business is free. For this, you must check whether your proposed trademark is already used or registered by someone else. This is done by conducting a thorough trademark search.

    The process of submitting the registration application follows the completion of the search. Depending on one’s jurisdiction, the application must be submitted in Form TM-A either physically at the Trademark Registry Office or online at IP India’s official website. The fees will be determined for each class of products and/or services contained in the application, and the application must be submitted for registration of a single class or several classes.

    The necessary paperwork and all of the trademark’s details must be included with the application. A user affidavit attesting to the mark’s usage and providing proof of its previous use in commerce must be attached if the trademark was already in use prior to the application being filed (i.e., the owner wishes to claim prior use).

    After this comes the different stages of the trademark registration process, namely:

    Formality Check: Here, the Trademark Registry checks whether all the formalities and procedural aspects have been duly and correctly done by the applicant while filing its trademark application. During this stage, the status of your trademark application is either ‘Formality Chk Pass’ or ‘Formality Chk Fail’, depending on whether there are any defaults observed.

    Examination Stage: During this stage, the Examiner of Trademarks checks whether your proposed mark qualifies for trademark registration. Here, the examiner basically checks whether a mark possesses trademarkable qualities. For this, the Examiner typically refers to Section 9 and Section 11 of the Trade Marks Act, 1999. During this stage, the status of your trademark application is ‘Objected’.

    The applicant gets 1 month to file reply to the Examination Report to submit its defence on why their trademark deserves to be granted registration. If reply is found satisfactory, the trademark proceeds for acceptance, if not, then Hearing for the matter is scheduled. If the Examiner is not satisfied with the defence of the applicant, the trademark application is abandoned.

    Acceptance and Advertisement: If the Examiner is satisfied regarding the trademark-ability of the proposed mark, they accept the trademark and publish it in the trademark journal. A trademark stays Accepted and Advertised for a total period of 4 month, during which, any person in the entire world, who has an objection over the registration of the advertised mark, may oppose it. If the trademark does not receive any oppositions during this 4 month period, then the trademark receives its registration.

    Opposition: During the 4 month, any person may file opposition against the registration of a trademark under section 21 of the Trade Marks Act, 1999. Such opposition may be filed on varied grounds typically contained under section 9, 11, 27, 28, 29, 102, 103 and 104 of the Trade Marks Act. Grounds for filing opposition may be – Similarity or identicalness with a prior used trademark, descriptiveness of a trademark, trademark being of such a nature that would be likely to cause confusion or deception, lack of bona fide intention, infringement, passing off, false description of trademark etc.

    Counterstatement: After filing of the opposition, the applicant gets an opportunity in the form of counterstatement to file its written defence in support of its trademark within 2 months of service of the notice of opposition. Here, the applicant has to explain why their trademark deserves to be granted registration and how the allegations and contentions contained under the opposition are incorrect.

    Evidence Stage: After counterstatement comes the stage of evidence submission. Both the opponent and the applicant get an opportunity to present evidence by the way of affidavit in support of its opposition and trademark application respectively. They may however, choose not to give evidence at this stage and solely rely on the grounds contained under the opposition and the counterstatement.

    Hearing Stage: During this stage, the opposition proceedings are scheduled for hearing before the Registrar of Trademarks, who, after hearing the contentions of both the side, decides whether such trademark deserves registration or the same shall be refused registration.

    The registrar passes it order based upon written statements, evidences and arguments from both the parties. Such order is a written order.

    Registration: After this stage, if the Registrar is satisfied with the registrability of the trademark application, the trademark is entered into the trademark register and trademark registration is granted.

    REQUIRED DOCUMENTS

    To register a company’s trademark online in India you must follow a process, first you need to provide the following details to the Trademark Registry through TM form:

    • Applicant’s Name: The name of the person, company, or entity applying for the brand Trademark Registration.
    • Class: Specify the class in which your goods or services fall, such as sole proprietorship, partnership, private limited company, etc.
    • Trade Objectives: Provide a brief description of your trade objectives.
    • Brand Name: Clearly mention the name, logo, or slogan that you intend to use as trademark.
    • Registered office Address: Provide your registered office address from where you are going to operate your business. 

    To apply for Trademark Registration online, or simply to register a logo, you will need to submit the following papers in addition to these details:

    APPLICANT TYPEREQUIRED DOCUMENT
    IndividualPAN card
    Aadhar card
    ProprietorshipGST Certificate
    PAN Card
    Aadhar card
    CompanyIncorporation certificate
    Company PAN card
    MSME certificate (if applicable)
    Logo (if applicable)
    Partnership FirmPartnership Deed
    Partnership PAN card
    MSME Registration certificate
    Logo (if applicable)
    Limited Liability Partnership (LLPs)LLP Deed
    Incorporation certificate
    LLP PAN Card
    Logo (if applicable)
    TrustsTrust Deed
    Trust PAN Card
    Logo if applicable

    CONCLUSION

    Trademark Registration is an important process of protecting the identity of a brand and giving exclusive rights over its usage. Trademark protection in India is under the Trademark Act of 1999, which provides legal protection against infringement and abuse. Ranging from word marks to non-conventional marks, a large range of trademark categories can be registered, depending upon the business. The Trademark Registration process entails carrying out an extensive trademark search, submitting the proper application along with supporting documents, and familiarizing oneself with the legal usage of trademark symbols such as ™ and ®. Registration of a trademark not only provides businesses with legal protection but also helps to increase brand value and customer confidence in the marketplace.