11 judgments of the Delhi High Court, the Orissa High Court and 4 other courts applying Trade Marks Act s.134, from 2023–2026, each with a headnote by BRB Legal.
CALPOL declared a well-known trade mark for medicinal and pharmaceutical products under section 2(1)(zg), the Court finding the criteria in sections 11(6) and 11(7) satisfied. It relied on continuous use since 1991, sales exceeding Rs 300 crore in 2024 alone with more than 20 crore pack units sold, sustained marketing and advertising spend, extensive coverage in widely circulated publications, consistent visibility in pharmacies across the country and on third party e-commerce platforms, and a series of earlier injunctions and consent decrees obtained against infringers.
Appeal allowed and an injunction granted against use of a mark sharing the appellant's dominant textual element. Following the Supreme Court in the AMBAL and ANDAL case, the Division Bench held that where the main feature of rival composite marks is phonetically similar and likely to confuse the average consumer, visual dissimilarity between the whole logos does not mitigate infringement. It added that a word mark registration entitles the proprietor to injunct not only a deceptively similar word mark but also any device mark whose prominent feature is textual, where that text infringes. Once a prima facie case of infringement is made out, an injunction must follow under Midas Hygiene.
Summary judgment and a permanent injunction granted against use of a whisky mark incorporating the plaintiff's registered element. The defendants did not controvert the pleadings, and the Court relied on continuous use since 1988, roughly 160 registrations covering the marks, labels and variants, and a body of earlier orders and judgments, to find reputation, goodwill, arbitrariness in the mark and distinctiveness with secondary meaning built over decades.
Interim injunction refused and an ex parte order vacated in a dispute over pharmaceutical marks built around two letters of the alphabet. The Court held that the plaintiff cannot claim protection against use of letters of the English language on the strength of a copyright registration in a stylised rendering of them, the letters in the impugned mark being written in a completely different manner. The overall impression of the competing trade dresses differed in font and colour scheme, so neither the marks nor the trade dress were deceptively similar and the plaintiff had no exclusive right in the letters themselves.
Appeal against refusal of interim relief dismissed. Where a rectification petition against the plaintiff's own registration is pending, section 124(1)(b)(i) requires the suit to be stayed until it is determined, and although section 124(5) preserves the power to grant interim relief, its exercise is discretionary. The District Judge was entitled to assess whether a sufficiently strong prima facie case had been made out and to find none, there being no sufficient material that the relevant class of consumers was likely to be confused. Authorities affirming the statutory presumption of confusion under section 29 were distinguished as decided where validity was not in issue.
Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.
Both writ petitions allowed and the suit at Jaipur dismissed, with liberty to the plaintiff to sue afresh in a court having jurisdiction. The plaintiff's registered mark having been cancelled in December 2019, the claim for injunction and damages founded on infringement did not survive. The suit could not be continued at Jaipur on prior user and passing off instead, because the prayer was wholly based on infringement, the pleadings on prior user and passing off lacked material facts, and no cause of action on that footing arose within the territorial jurisdiction of the District Court at Jaipur, the defendant's school being at Pune. Since passing off is a recurring cause of action, the Court exercised its inherent power under section 151 CPC ex debito justitiae to dismiss the suit rather than let it continue with those defects.
Appeal dismissed and the return of the plaint for want of territorial jurisdiction upheld. The plaintiff relied on an FIR lodged by the Excise Department within Chhattisgarh, under which goods bearing the impugned mark were confiscated. The Division Bench held that the plaint nowhere alleged that the FIR was made against any officer of the defendant company, that the defendant resided and carried on business at Indore, and that there was no plea that it had sought an excise licence to sell within Chhattisgarh. A bald statement about a seizure by the police was not enough to show that the defendant sold the goods there or that any part of the cause of action arose there.
Appeal dismissed and the injunction restraining use of MUSA KA GUL SUPER confirmed. The district court had recorded cogent findings on all three ingredients, noting that the plaintiff's registration subsisted and that the appellants held no registered mark or copyright of their own. Inter se family arrangements by way of dissolution of partnership and assignment, made while a Calcutta High Court injunction remained operative until publication of the arbitral award, could not be used to defeat the registered proprietor's rights, Article 261 requiring full faith and credit to be given to that order. Registration is prima facie evidence of validity under section 31. The court below was not required to hold a mini trial, and questions of pecuniary and territorial jurisdiction could be left to be decided after issues were framed.
Appeal allowed, the temporary injunction set aside and the application remanded for fresh consideration. The District Judge had rested the injunction on the plaintiff's registration alone, with no discussion of prior user, of sections 31 and 34 of the Trade Marks Act, or of the defendant's documents, and only a cryptic treatment of prima facie case, balance of convenience and irreparable loss. The Court held that while a mini trial is not justified at the injunction stage, that does not relieve the trial judge of the duty to analyse the ingredients. Order 41 Rules 23 to 27 CPC, including the powers of remand and to admit additional evidence, apply to appeals from orders through Order 43 Rule 2. The respondent's request that the injunction continue during the remand was refused: once the appeal is allowed setting the injunction aside, a contrary order on the same lines cannot be passed.
Appeal against refusal of a temporary injunction disposed of without interference, so the refusal stands. The plaintiff, proprietor of VANKON, had moved a rectification application against the defendant's registered mark VANTON on February 3, 2021, well before filing the suit on July 23, 2021, and so could not escape the rigour of section 124 of the Trade Marks Act; Patel Field Marshal did not assist it. Applying Wander and Gujarat Bottling, the plaintiff's delay and the defendant's unrebutted use of VANTON since 2016 meant that neither irreparable loss nor the balance of convenience favoured the plaintiff. As to classes 7, 11, 21 and 35, the defendant stated it carried on no business in those goods, so no injunction was needed.
