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LEGAL UPDATES

Intellectual Property Rights Cases: TRADEMARK CASES

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.

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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.

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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.

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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.

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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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