Intellectual
Property Rights Cases: TRADEMARK CASES
1.
Astrazeneca UK Ltd & Anr vs Orchid Chemicals &
Pharmaceutical Ltd
2. Neol Pharma & Anr.
Vs Guruchem laboratories Limited
3. Hindustan Pencils Ltd
vs Aparna Enamel Industries
4. Intel Corporation vs Dinakaran
Nair vs Anr
5. Dr. Reckeweg and Co. GMBH
through Constituted Attorney Mr. Subash Gupta and Dr.
Roshan Lal Agarwal and Sons Pvt. Ltd. vs Mr. S.M. Sharma
Managing Director Lord's Homeopathic Lab Pvt. Ltd. and
Lord's Homeopathic Lab Pvt. Ltd.
6. Poysha Power Generation
Pvt. Ltd. A company incorporated under the Companies
Act, 1956 vs Doctor Morepen Limited and Kare Laboratories
Pvt Limited
7. Devi Pesticides Private
Ltd. rep. by Power of Attorney Holder Sankar M.V. vs
Shiv Agro Chemical Industries
8. Zee Telefilms Ltd. and
Ors. Vs Zee and Ors.
9. The Heels vs Mr. V.K.
Abrol & Anr
10. Mahindra and Mahindra
Limited vs Ashwani Kumar
11. Asian Paints Limited
vs Balaji Paints and Chemicals Ltd
12. Bikanervala vs Aggarwal
Bikaner Wala
13. Pelikan Vertriebsgesellschaft
MBH. and Co. KG. vs Pelikan Engineering Corporation
14. Infosys Technologies
Limited vs Pravarthan Infosys Pvt Ltd & Ors
15. Aktiebolaget Volvo and
Ors. Vs Mr V.N. Prasad and Anr
16. Ms J.K. Rowling and
Ors. vs Vikas Balvant Shukla & Ors
17. Visakha Chemicals vs
Mala ram & Sons
18. Glaxosmithkline Pharmaceuticals
Limited vs Theodar laboratories Private Limited
19. P.M. Diesels Pvt. Ltd.
Vs Thukral Mechanical Works and The Intellectual Property
Appellate Board
20. Yahoo! Inc Vs Sanjay
V. Shah and Ors
21. Merck KgaA & Anr Vs Natco Pharma Limited & Anr
1. Astrazeneca
UK Ltd & Anr vs Orchid Chemicals & Pharmaceutical
Ltd
(MANU/ DE/ 847/ 2006)
Facts:
The plaintiff seek restraint of infringement of their
trademark namely ‘MERONEM’ a pharmaceutical
product by the defendant company who manufactures and
sells the pharmaceutical goods with similar composition
namely ‘MEROMER’, a registered trademark.
The plaintiff company is registered in the UK under
English laws and has obtained the registration of the
trademark in India valid up to the year 2014 by virtue
of an assignment from its parent company. Both plaintiff
as well as the defendant uses the same chemical composition
except the defendants goods have extra components, is
priced at a lower price and has a shelf life of four
years as compared to that of the defendants’ goods
which has a shelf life of two years. The plaintiff contends
that the names of the two marks are deceptively similar,
to this he defendants say that the prefix ‘MERO’
is common to many other marks and there is no reason
why the defendant cannot have the same. The plaintiffs’
then filed an application for rectification of the trademark
‘MEROMER” before the Registrar. The application
was alleged to be barred under Section 125 of the Trademarks
Act, as when a suit is pending rectification application
lies before the Intellectual Property Board. As soon
as the plaintiffs realized that they are barred by section
125 of the Trademarks Act, they filed an application
before the Intellectual Property Appellate Board in
contravention of the procedure prescribed under section
124 of the Act. With reference to the passing off action
it was pleaded that added material is sufficient to
distinguish the product of the defendant and so no passing
off action can be taken against the defendant also on
account of surrounding circumstances and the trade practices
and trade channels through which the goods pass. The
defendant also contended that interim injunction will
cause irreparable loss and hardship as defendant is
the largest pharmaceutical company in India.
Court held:
The court held that the defendants have a registered
trademark duly advertised in the trademark journal without
any opposition from the plaintiffs’. Applying
the principle of balance of convenience and upholding
the arguments given by the defendants and after due
comparison of both the drugs the court rejected the
plea of interim injunction in favor of the plaintiffs’
but ordered the defendants to produce accounts every
month.
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2.
Neol Pharma & Anr. Vs Guruchem laboratories Limited
(MANU/ DEL/ 850/2006)
Facts:
The plaintiff asserted that they have a trademark 'COLINOL'
for their pharmaceutical products and defendants are
using the confusingly similar mark 'POLINOL' and passing
off their goods as that of plaintiffs. The plaintiffs
have invested a lot of capital in research and development
to bring out many different pharmaceutical drugs in
the market. The plaintiffs contended that they were
prior users of their trademark. The plaintiffs contend
that because of the deceptively similar mark used by
the defendants they are undergoing tremendous losses.
An interim injunction was passed by the lower court
for which the defendants did not appear nor were any
replies filed by the defendant.
Court held:
That since the plaintiffs were successful in proving
the abovementioned without an aorta of doubt a decree
for perpetual injunction should be passed against the
defendants.
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3.
Hindustan Pencils Ltd vs Aparna Enamel Industries
(MANU/ DE/ 1774/2006)
Facts:
Plaintiff being he manufacturer of pencils and other
stationary was the registered user of the trademark
‘NATRAJ’ and ‘APSARA’. The cartons
of ‘NATRAJ’ have also been registered as
a copyright over the word label as well as the device.
The claim of the plaintiffs is that the defendants started
using the same trademarks in respect of hard board slates.
The plaintiff contends that the goods of the defendant
as well as the plaintiff are similar in as much as thae
end users are the same hence the marks being identical
and the goods being similar the defendant is passing
off its goods in the name of the plaintiff company,
therefore infringing their trademark.
Court held:
That in light of the facts and circumstances it is inevitable
for the court to pass a decree in favor of the plaintiffs
and on the question of damages the court held that even
though the defendant does not come before the court
but since the plaintiff has been unnecessarily dragged
into litigation it is in the interest of justice that
damages be awarded to the plaintiff.
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4. Intel
Corporation vs Dinakaran Nair vs Anr
(MANU/DE/1677/2006)
Facts:
The plaintiff was a company incorporated under the laws
of State of Delaware. They claim that the defendants
have used a deceptively similar mark to its trademark
‘INTEL’ in the form of ‘ARTINTEL’.
The goods of the plaintiff are also similar to that
of the defendants ie. computer goods which includes
software, software development etc. The plaintiff claims
to be engaged worldwide in the business relating to
the field of computers since 1968, which is the year
of its incorporation. The defendant had applied for
registration of the mark but received opposition from
the plaintiff and the Registrar disallowed their mark
to be registered. The defendants still continued using
the said mark.
Court held:
That since the defendants have been unable to give any
explanation as to why the name ‘ARTINTEL’
it appears that it is a case of passing off where the
defendants are using the good will of the plaintiffs
for their benefits. Further, a perpetual injunction
is granted and the plaintiffs are also awarded damages.
TOP 5.
Dr. Reckeweg and Co. GMBH through Constituted
Attorney Mr. Subash Gupta and Dr. Roshan Lal Agarwal
and Sons Pvt. Ltd. vs Mr. S.M. Sharma Managing Director
Lord's Homeopathic Lab Pvt. Ltd. and Lord's Homeopathic
Lab Pvt. Ltd.
(MANU/DE/1688/2006)
Facts:
The plaintiffs are a company incorporated in Germany
and manufacture as well as market homeopathic medicines
in the name of R alphanumeric series. The plaintiffs
also possessed the copyrights over the said series.
The defendants were on the verge of launching their
L series which had the same purpose and content as that
of the plaintiff. The plaintiff filed an application
for injunction which forcefully led the defendants to
change their catalogue.
Court held:
That even after the changed catalogue the content was
substantially similar to that of the plaintiffs. The
court said that even after a close look at the two catalogues
they appear to be similar which would mislead the buyer.
Hence injunction was passed against the defendants restraining
them from using the medicinal products for the same
products as per the catalogue of the plaintiffs.
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6.
Poysha Power Generation Pvt. Ltd. A company incorporated
under the Companies Act, 1956 vs Doctor Morepen Limited
and Kare Laboratories Pvt Limited
(MANU/ DE/ 1630/2006)
Facts:
The Boots company plc England used to manufacture a
cream with the trade name ‘Burnol’. It assigned
its trade mark to Dr. Morepen. The Morepen Labs was
a sister company of Dr. Morepen . Morepen Labs required
finances and thus, entered into an agreement with Morgan
for a loan of a certain sum of money. The loan was not
repaid. This lead to many disputes. An arbitration award
was passed in favor of Morepen labs. Morepen Labs still
did not make repayment. This led to an execution petition.
The Court then attached its bank accounts. Somehow the
two parties entered into an understanding whereby Morepen
Labs gave post-dated cheques to Morgan. Trade mark ‘Burnol’
was also pledged with Morgan. However, Morepen unconditionally
assigned trade mark to Poysha. Agreement provided Morepen
to pay royalty, fee, commission or other remuneration
to Poysha. After permitted user agreement expired, Poysha
filed suit for permanent injunction restraining Morepen
from infringing trade mark ‘Burnol’. Monthly
payments were also not paid. Poysha sought recovery
of the amount with interest. Another suit filed by Dr.
Morepen and Morepen Laboratories Limited praying for
cancellation of assignment of trade mark to Poysha.
Court held:
That there was no reason for Morepen to assign trade
mark to Poysha for Rs. 20 lakhs since value of trade
mark ‘Burnol’ in market was about Rs. 12
crores. Further, though Morepen was to pay monthly royalty
to Poysha, no payment was made. Also, Poysha took no
action to prevent violation of permitted user agreement
for more than a year If the transaction between parties
was genuine, Poysha would have taken steps during continuance
of agreement. Failure of Poysha to enforce agreement
proved that it did not intend to act upon documents.
No case was made out for grant of injunction in favour
of Poysha. Injunction application filed by Poysha was
dismissed and the application filed by Morepen allowed.
TOP 7.
Devi Pesticides Private Ltd. rep. by
Power of Attorney Holder Sankar M.V. vs Shiv Agro Chemical
Industries
(MANU/TN/1436/2006)
Facts:
The plaintiff in the instant case was the manufacturer
of a particular flowering stimulant by the name of ‘BOOM
PLUS’. The defendants also manufactured a particular
flowering stimulant by the name of ‘SUPER BOOM’.
The plaintiff moved the court for an interim injunction
which was refused. In appeal the plaintiff contends
that he has a prior user since 1987, of the same. Also,
that since the target buyers are farmers who are illiterate
phonetically similar marks shall lead to confusion.
Court held:
That since the consumers were agriculturalists it might
lead to confusion as they are similar sounding marks.
Applying the principle of balance of convenience the
plaintiff/ appellants would be entitled to interim injunction.
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8. Zee
Telefilms Ltd. and Ors. Vs Zee and Ors.
(MANU/ DE/1555/2006)
Facts:
The plaintiffs stated a group of companies engaged in
the production of programmes/broadcasting of various
channels which constitute Zee Network. The domain names
which the defendants have got registered are identical
to the plaintiffs' channel names. The plaintiff contends
that the word ‘Zee’ is a fanciful word and
that it has been using the same since 1992. It strongly
contends that the defendant is using the said domain
space only to use the good will of the plaintiffs.
Court held:
That the plaintiff has adduced clear evidence to show
its user and that a permanent injunction should be passed
in favor of the plaintiffs.
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9.
The Heels vs Mr. V.K. Abrol & Anr
(MANU/DE/1559/2005)
Facts:
In the instant case the plaintiff is the owner of the
trademark and copyright in the artistic work ‘THE
HEELS’ with respect to all different kinds of
foot wear, belts and other leather goods. The defendant
opened a shop with the same name and the same logo.
The plaintiffs send them legal notices but they refused
to comply with the same. Finally they filed a suit.
Court held:
That in such a case where the defendant does not reply
or comply with legal notices and avoids legal proceedings
does not in any way benefit the defendant. A perpetual
injunction was passed against the defendants and were
also ordered to pay punitive and compensatory damages.
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10. Mahindra
and Mahindra Limited vs Ashwani Kumar
(MANU/ DE/548/2006)
Facts:
The plaintiff in the instant using the registered trademark
and copyright in ‘MAHINDRA’ files a suit
against the defendant for infringement of their copyright
and trademark. A suit for perpetual injunction is filed
.The plaintiffs state that the defendants have not only
been using their mark ‘MAHINDRA’ but have
also been copying the unique way of using the adhesive
tapes, price labels and plastic labels, thus causing
infringement.
Court held:
That a decree of perpetual injunction be passed keeping
in mind the facts and circumstances and even though
the plaintiffs have been unable to adduce evidence regarding
the loss that has accrued to them, yet punitive damages
to the tune of 1 lac rupees is still awarded to the
plaintiffs.
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11. Asian
Paints Limited vs Balaji Paints and Chemicals Ltd
(MANU/DE/491/2006)
Facts:
The plaintiff is engaged in the business of manufacturing
and marketing of paints, varnishes, enamels and other
like products and colour concentrates for the last more
than 50 year and is stated to be the market leader in
its field. The products of the plaintiff are stated
to be marketed under distinctive brand names in containers
and packaging bearing a distinctive trade dress and
get up. The plaintiff claims original artistic work
within the meaning of Section 2(c) of the Copyright
Act in respect of its container and packaging material
as the same are stated to have distinctive colour scheme,
layout and get up. The trade mark of the plaintiff is
also stated to be written in a distinctive manner. The
plaintiffs figured that the defendants were using their
various trademarks and manufacturing paints and synthetic
enamel. The plaintiff claims for injunction and damages.
Court held:
That both injunction and damages to the tune of 3 lac
rupees is awarded to the plaintiff, along with costs.
TOP 12.
Bikanervala vs Aggarwal Bikaner Wala
(MANU/DE/319/2006)
Facts:
In the instant case the plaintiff is the registered
owner of the trademark ‘BIKANERVALA’. The
defendant on the other hand has been using the mark
‘AGARWAL BIKANER WALA’. The plaintiff brings
an action of passing off against the defendant. The
plaintiff has been using the said mark since 1981 and
has been successful in proving the same.
Court held:
The court held that the suit be decreed in favor of
the plaintiff with costs.
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13. Pelikan
Vertriebsgesellschaft MBH. and Co. KG. vs Pelikan Engineering
Corporation
(MANU/ DE/320/2006)
Facts:
The case of the plaintiff is for the infringement of
copyright and passing off. The plaintiff is in the stationery
business and has been marketing and selling its products
under the trade name ‘PELIKAN’. The plaintiff
has been using the trade mark PELIKAN in a special script
and the device of a Pelican sitting on its nest and
feeding two small pelicans. The plaintiff is also the
owner of the copyright in the artistic work. The plaintiff
have been using the said mark in 130 countries. The
defendant being a website dealing in engineering works
carried the mark in its entire form on its website.
The plaintiff notified the defendant and even suggested
to the defendant ways by which they could change the
said mark not to cause any confusion for the consumers.
The plaintiff through this suit only claims injunction
without any damages and / or costs.
Court held:
That in light of the obvious, an injunction is granted
in favor of the plaintiffs.
TOP 14.
Infosys Technologies Limited vs Pravarthan Infosys Pvt
Ltd & Ors
(MANU/DE/300/2006)
Facts:
The plaintiff is the proprietor of the trademark ‘INFOSYS’.
The defendant is a company which uses the website by
the name of www.pravathaninfosys.com. The present suit
by the plaintiff is with reference to this usage of
the term ‘infosys’. The plaintiff had issued
the defendant company a legal notice to stop using the
term ‘infosys’ in any way possible. They
restrained from doing the same except in the website.
The plaintiff files this suit for injunction against
the plaintiff in this respect.
Court held:
Considering the facts and circumstances of the case
the court held, in the instant case an injunction in
favor of the plaintiff should be passed in the form
of relief.
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15. Aktiebolaget
Volvo and Ors. Vs Mr V.N. Prasad and Anr
(MANU/ DE/ 216/2006)
Facts:
In the instant case the plaintiff is the registered
owner of the trademark ‘VOLVO’, which they
have been using for since 1927 in manufacturing of spare
parts and other car goods. The defendant company by
the name of ‘Indian Volvo’ was operating
a bus against which this action has been brought. The
plaintiffs had sent a legal notice to the defendants
pursuant to which they altered the name from ‘VOLVO’
to ‘VOLWO’ changing just the spelling of
the same. The plaintiffs contend that the mark used
by the defendants is phonetically similar to that of
the plaintiffs’ mark.
Court held:
The court held that it is a clear case of passing off
and in light of the Hero Honda case damages both compensatory
and punitive ought to be awarded to the tune of rupees
2 lac as only one bus was being used.
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16. Ms
J.K. Rowling and Ors. vs Vikas Balvant Shukla &
Ors
(MANU/DE/161/2006)
Facts:
The plaintiff in the instant case is the author an owner
of the series of books titled Harry Potter. The defendants
have agreed to the fact that they have illegally been
translating the said books in different languages like
Marathi. The two parties have compromised and the defendants
have decided not to engage in any infringing activity.
Also the defendants have decided to pay a sum of rupees
75,000 to the plaintiff.
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17.
Visakha Chemicals vs Mala ram & Sons
(MANU/DE/208/2006)
Facts:
The plaintiffs are the users of the two marks ‘ROCHAK’
and ‘AM PANCH’ since the years 1982 and
1985 respectively. The plaintiffs bring an action against
the defendants as they are using the same marks for
the same purpose as that of the plaintiff namely ‘churan’.
The plaintiffs have the copyright over the artistic
works in the two marks. The defendants claimed that
the trademark and the packaging are not identical nor
are they deceptively similar. Further it was stated
by the defendant that the word ‘AM PANCH’
is commonly used in the trademark by numerous persons
/ firms in relation to churan tablets. The defendants
claimed that the plaintiff is not the proprietor of
the trademarks or labels of ROCHAK and AM PACHAN. The
defendants also disputed that the plaintiff has been
using the trademarks continuously since the year 1982
and, thus, have claimed that the plaintiff has no goodwill
in the packaging of the mark. To this the plaintiff
adduced sufficient evidence to the contrary like the
drugs licence acquired in the year 1982.
Court held:
That after a comparison of both the goods and their
packaging there is a clear similarity between the two.
Further the court also held that since the plaintiff
had been using the said marks for a longer time as compared
to that of the defendants they can claim a user on the
same. The court held that it is a clear attempt to pass
off the defendants goods as the goods of the plaintiff.
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18.
Glaxosmithkline Pharmaceuticals Limited vs Theodar laboratories
Private Limited
MANU/DE/133/2006
Facts:
The plaintiffs are engaged in the manufacture of the
pharmaceutical, medicinal and veterinary preparations
and are the proprietor of the registered trademark ‘VIMERAL’.
The plaintiff claimed that its cartons has distinctive
colour scheme, get up, lay out and unique features.
Court held:
After a comparison of the two cartons it seems that
the defendant has adopted the identical colour scheme
and arrangement of the trade name. Taking into consideration
that the product is utilised as a supplement of Vitamin
for cattle and poultry feeding, the innocent purchaser
is likely to be misled in associating the product of
the defendant with that of the plaintiff. The court
laid down that it was a clear attempt on the part of
the defendants to imitate the goods of the plaintiff.
The court thus passed an order for permanent injunction
in favor of the plaintiffs.
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19.
P.M. Diesels Pvt. Ltd. Vs Thukral Mechanical Works and
The Intellectual Property Appellate Board
MANU/DE/0588/2006
Facts:
The primary question in this case was that relating
to section 46(1) of the Trade and Merchantise Act, 1958.
The main question was regarding the interpretation of
the said section. It was held that a bona fide user
under section 46(1), of a registered trademark can only
be by the proprietor or any person authorized by him.
Also that even though the section does not use the words
‘registered proprietor’, the section suggests
that it is only the registered proprietor of a trademark
or a person authorized by a registered proprietor. The
main object of this section is to avoid trafficking
of trademarks.
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20.
Yahoo! Inc Vs Sanjay V. Shah and Ors
(MANU/DE/167/2006)
Facts:
The plaintiff has been using the said trademark ‘YAHOO’
since the year 1994. The defendants have used the plaintiffs
mark ‘YAHOO’ even after the issuance of
a legal notice by them. The main contention of the plaintiff
is that the usage of the mark by the defendant is mala
fide and is causing loss to the reputation of the plaintiff.
The plaintiff seeks permanent injunction from the court.
The defendants state that the plaintiffs have no locus
standi to file the suit, further the defendants also
contend that the suit suffers from delay of laches.
Court held:
In light of the facts and circumstance of the case a
decree for permanent injunction is passed in favor of
the plaintiffs also the amount 5,05,000 /-claimed as
damages is decreed in their favor.
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21.
Merck KgaA & Anr Vs Natco Pharma Limited & Anr
(IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 182 OF 2010 IN SUIT NO. 165 OF 2010)
Facts:
Plaintiffs by filing this present suit and Notice of Motion seeks to retrain Defendants from
infringing and passing off Plaintiffs’ registered trade mark “OSTONATE”. Plaintiffs and
Defendants operates in the field of Pharmaceuticals, Chemicals, Medicinal preparations
and substances. The plaintiff is the registered proprietor of the word mark
“OSTONATE”. The mark is registered under class 5 i.e. in respect of medicinal and
pharmaceutical preparations. The application for registration was made on 24th July,
1997. The application was advertised for acceptance. There was no opposition
thereto. The same proceeded to registration and the registration certificate was granted
to plaintiff No.1 on 22nd April, 2005. The registration was, therefore, with effect from the
date of its application i.e. 24th July, 1997. The plaintiffs started using the mark from
January, 2009. The defendants are using the mark “OSTONAT” since the year 2003.
The plaintiffs’ products sold under the said mark “OSTONATE” are calcium tablets. The
defendants' products sold under the deceptively similar mark “OSTONAT” are kits
containing 4 alendronic acid tablets USP & 24 calcium and colecalciferol tablets BP.
Court held:
J. Vazifdar relied upon his order in Drums Food International Pvt. Ltd. v Euro Ice
Cream & Anr., in Notice of Motion No.1307 of 2011 in Suit No.953 of 2011, and held
that
“the Act encourages proprietors to have their marks registered. If the Defendant’s case
is upheld, it would not only be contrary to, but destroy the object of the Act as it would
positively discourage registration of trade marks. It would cause havoc and virtually
erode the rights of the proprietors of trademarks. There is always a time-lag between
an application for registration of a mark and the order registering the same.
Applications for registration are in public domain. They are advertised. If Defendants’
case is allowed, it would be possible for any person to use it immediately, thereby
rendering the valuable rights of the registered proprietor in respect of the mark nugatory
even before the mark is registered. This would render an essential and substantial part
of the Act redundant.”
There is no question of passing off as the Plaintiffs’ use of the mark is subsequent to the
Defendants. But the defendants started using the mark OSTONAT in the year 2003
either negligently or dishonestly.
There has, therefore, been no delay whatsoever on the plaintiff's part in protecting its
mark. Any user by the defendants, therefore, cannot enure to their benefit whether on
the ground of waiver, acquiescence or otherwise. The reference to other products with a
similar prefix has not been backed by any evidence of actual user. The claim of bona
fide user of the mark by the defendant is, at the highest, relevant only on the question of
damages. In the circumstances, the Notice of Motion is made absolute in
terms of prayer (a) to retrain the Defendants from infringing Plaintiff mark OSTONATE
or any other mark deceptively similar thereto. There shall be no order as to costs.
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