There has been a steady rise in the significant trademark cases in India during the recent past. Some of the judgments have been landmark in terms of the precedents set by them.

There has been a steady rise in the significant trademark cases in India during the recent past. Some of the judgments have been landmark in terms of the precedents set by them. Here is a look at the recent landmark trademark cases in India.

1. Yahoo!, Inc. v Akash Arora & Anr [1999 (19) PTC 201 (Del)]

Judgment: In what is known till date as a Landmark judgment in cybersquatting, the Delhi High Court held that a domain name served the same function as a trademark and was therefore entitled to equal protection. As the domain names of the plaintiff ‘Yahoo!’ and defendant ‘Yahoo India!’, were nearly identical and phonetically similar, there was every possibility that internet users would be confused and deceived into believing that the domain names had a common source or a connection. The court further observed that the disclaimer used by the defendants was not sufficient because the nature of the Internet is such that use of a similar domain name cannot be rectified by a disclaimer, and that it did not matter that ‘yahoo’ is a dictionary word.

The name had acquired uniqueness and distinctiveness and was associated with the plaintiff. The Bombay High Court, in Rediff Communication v. Cyberbooth & Anr 2000 PTC 209 also observed that the value and importance of a domain name is like a corporate asset of a company.

2. DM Entertainment v. Baby Gift House and Ors.

Daler Mehendi, the famous pop star from Punjab had a large fan base and was extremely popular amongst Punjabi pop music lovers. DM Entertainment was incorporated in 1996 to manage the artist’s escalating career. The defendant company was making a large business by selling miniature dolls of the artist and cashing on his popularity. The plaintiff company was extremely aggrieved and filed for permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off. The plaintiff company was assigned all rights, titles and interests in the personaliy of the artist along with the trademark, Daler Mehendi. The plaintiff argued that the unauthorized or unlicensed use of the artist’s reputation with respect to goods or services will deceive the public into believing that the goods and services are associated with the singer and hence, would lead to passing off. The plaintiff further submitted that such use was done for commercial exploitation without adequate permission from the person or any other authorized by him and shall constitute infringement of the person’s right to publicity. Character merchandising is an area of law that is still unexplored in India. This was the first case that dealt with the issue of celebrity merchandising where the publicity rights of the artist was given due recognition.

3. The Coca-Cola Company Vs. Bisleri International Pvt. Ltd [Manu/DE/2698/2009]

Issue: In the present matter, the defendant, Bisleri by a master agreement, had sold and assigned the trade mark MAAZA including formulation rights, know-how, intellectual property rights, goodwill etc for India only with respect to a mango fruit drink known as MAAZA to Coca-Cola. In 2008, the defendant filed an application for registration of the trade mark MAAZA in Turkey started exporting fruit drink under the trade mark MAAZA. The defendant sent a legal notice repudiating the agreement between the plaintiff and the defendant, leading to the present case. The plaintiff, the Coca Cola Company also claimed permanent injunction and damages for infringement of trade mark and passing off.

Judgment: The Delhi High Court held that if the threat of infringement exists, then this court would certainly have jurisdiction to entertain the suit. It was also held that the exporting of goods from a country is to be considered as sale within the country from where the goods are exported and the same amounts to infringement of trade mark. It was held by the court that the intention to use the trade mark besides direct or indirect use of the trade mark was sufficient to give jurisdiction to the court to decide on the issue. The court finally granted an interim injunction against the defendant (Bisleri) from using the trade mark MAAZA in India as well as for export market, which was held to be infringement of trade mark.

4.    TATA SIA Airlines Limited V. Pilot18 Aviation Book Store

Issue –Whether the Pilot18 Aviation Studies portal which operates the web portal www.pilot18.com can sell unauthorized products under the VISTARA brand?

Judgment – Pilot18 was found to be selling goods such as badges, name tags and other accessories under the brand name of Vistara. This was found not only to be violative of trademark but also poses a grave threat to airport security, as unauthorized person may enter using counterfeit such accessories. Therefore, the court restrained the portal from selling goods such as badges, name tags and other accessories under the brand name of Vistara. The court also directed Pilot 18 to pay Rs 2 lakh as cost to the operator of Vistara Airlines within a month.

5. Starbucks Corporation v. Sardar Buksh Coffee & Co

Issue- In 2001, Starbucks, in India, registered their trademark with a word-mark pronounced as STARBUCKS along with a logo visualising “crowned maiden with long hair”. Whereas, the defendant, being a local vendor, initiated his business in 2015, with a name called “Sardarbuksh Coffee & Co”. Slowly and steadily the defendant earned fame and as a result, in May 2018, the defendants formed a private limited company with the name “Sardar Buksh Private Limited”. Pouring some light on the logo of the defendant, you will see a circular black band with the words ‘SARDARBUKSH COFFEE & CO.’ and a turban Commander along with wavy lines extending from the edges. Everything was going smooth for the defendant, however, recently, Starbucks filed a suit against them in the Hon’ble Delhi High Court. The ground for the case was “duplicitous word mark and logo” also legally known as “deceptively similar analogy”.

Judgment-The first and foremost aspect noted by the court was the product both the companies were dealing with as it is an unwritten yet significant rule that if companies to the suit is dealing with a different product, then having a name almost identical still won’t be counted as an infringement. However, in our scenario, the product was identical which took the proceeding to the next step. Moving further, the court observed that the name used by the defendant was, to a large extent, confusing. As a consequence, the court ordered the defendant to change the name of its outlet to “Sardarji-Bakhsh Coffee and Co.” from “Sardarbuksh Coffee & Co”. However, the court provided a privilege to the defendant that if any other third party, in future, uses the word mark “Bakhsh” the defendant can sue them for the same. Now, the defendant operates with the name uttered as “Sardarji-Bakhsh Coffee and Co”.

6. Milmet Oftho Industries & Ors. V. Allergan Inc.

In this case, the Supreme Court granted trademark protection to a well-known foreign brand. The court restrained an Indian company from using the mark OCUFLOX. The judgment was given irrespective of the fact that the mark was neither used nor registered in India. The court held that the respondent was the first to enter the market and adopt the mark. It does not matter that the respondent has not used the mark in India if they are the first to enter the world market.

In the field of health care, it is highly important that all chance of deception and confusion should be avoided, keeping in mind that the public interest is not jeopardized.

7. Academy Awards v. GoDaddy

Another cyber-squatting problem where the Academy award was sued the popular domain retailer GoDaddy. It was the dispute that continued for five years. In the appeal the plantiff claimed that the defendant was intentionally letting the consumers buy  a deceptively identical domain name like 2011Oscars.com, etc. It claimed on permitting individuals to pass on the profit that wished to part on said domains & claimed a part of revenue. ‘Potentially confusing’. Eventually, the judge ordered that the defendant has no malicious intent to profit from their domain sales. Initially, the Academy argued that there were 57 domain names sold by the defendant who had no requisite bad faith to profit from the sales of the domain name. This legal dispute lasted for five years and was considered a costly affair. While this legal dispute was remarkably costly, it favoured the cybersquatting space & the defendant came out clean.

8. N.R. Dongre v. Whirlpool Corporation

Issue: Whirlpool Corporation brought a suit for passing off to restrain the defendants from manufacturing, selling, advertising or in any way using the WHIRLPOOL mark as part of another mark in respect of its goods. The subject matter of the appeal was the manufacture, sale and advertisement of washing machines under a mark which included WHIRLPOOL.

Whirlpool based its claim on its prior use of the WHIRLPOOL mark and a trans-border reputation, which suggested that any goods marketed under the WHIRLPOOL mark had been marketed by the plaintiff.

Judgment: The Apex Court held that:

It cannot be denied that insofar as WHIRLPOOL is concerned, the plaintiff has been the first in point of time to be in the market, the question of exact geographical reasons apart…Whirlpool has been frequently advertised and has featured in international magazines circulated in India. Through the pleadings, documents and affidavits filed by the plaintiffs positively make out a case of actual sales by the plaintiffs of Whirlpool products including washing machines in a number of geographical regions around the world, insofar as India is concerned, Plaintiff does not make out a case of actual sales in the markets in India. The plaintiff has made limited sales to US Embassy and US AID in India. However, the products have been advertised in magazines having international circulation including in India…Whirlpool associated with plaintiff was gaining reputation through the world. The reputation was travelling trans-border to India as well as through commercial publicity made in magazines which are available in or brought in India. These magazines do have a circulation in the higher and upper middle income strata of Indian society. A washing machine is a household appliance used by the middle and upper class of the society.

Whirlpool was a ground-breaking decision in IP jurisprudence, insofar as the Apex Court confirmed that advertising a trademark is considered to be use and is sufficient to prove reputation and goodwill in India, even when no goods are being sold on the market.

9. Bigtree Entertainment Pvt Ltd v. D Sharma and Anr.

Issue – Whether the mark ‘BOOKMY’ has attained an exclusive meaning and that the plaintiff can claim exclusive rights on it?

Judgment – The Plaintiff had filed a suit for trademark infringement, seeking to restrain the use of trademark “BOOKMYEVENT” or prefix “BOOKMY” by the Defendant. The court refused to grant an injunction as the prefix “ BOOKMY” is very common in the English language and the visual effects are also very different, therefore, it is unlikely that the customers would be confused by the said trade names or marks. The court also mentioned that the mark ‘BOOKMYSHOW’ belonging to the plaintiff has not attained any exclusivity.

10. Zara Food vs Zara Fashion

Another case of food industry vs fashion for the brand name – Zara. It is a renowned fashion brand having major operations across the world found a restaurant operating in Delhi under the same name. It is highly possible that any consumer would confuse one for the other and take into consideration that the restaurant was started by the fashion brand. And this what Delhi High Court ruled out. Zara had a presence in India since 2010 when it opened its first store through a joint venture and has also applied for a few trademarks in India. The restaurant was forced to change its name and now it operates under the name of Tapas Bar.