9 judgments of the Calcutta High Court, the Delhi High Court and 4 other courts applying Trade Marks Act s.17, from 2023–2026, each with a headnote by BRB Legal.
Ad interim injunction set aside. The Division Bench doubted whether any prima facie case for interlocutory relief had been made out, noting that the suit was essentially one for disparagement with belated pleadings on trade mark infringement and passing off added to it. It held that an expired proprietary right in a design cannot be enforced indirectly, and that a trade mark which requires interpretation cannot be enforced. Injunctions obtained against other private players were held inapplicable on the facts, their products being similar in colour, shape and design to the plaintiff's.
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.
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.
A carefully split outcome on a composite mark. The Court held that the word element was suggestive rather than descriptive but had not acquired distinctiveness, so the plaintiff had no exclusivity in it and the defendant remains free to use the word for its news programme. The device mark was another matter: the defendant's label was deceptively similar, the globe behind the word remaining very similar even in the defendant's revised version, and its use for the same service, class of consumers and trade channels amounted to infringement and passing off.
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.
Appeal allowed, the order rejecting the opposition set aside and the certificate of registration recalled. The Registrar had found the appellant to be the prior user of JUMBO with enormous goodwill, yet allowed the rival BICRAMPORE T.E. label to register on the footing that its prominent feature was the words and not the elephant device, while elsewhere in the same order describing that label as showing Hathi Marka. The Court held the two findings contradictory, since Hathi means elephant and both labels carried an elephant device. The respondent had produced no evidence of use since 1970 as claimed, its documents dating from 2002. Applying J.C. Eno, a trader cannot be permitted to use in one language words that have become distinctive of another trader's goods in a different language, and general consumers simply buy the product looking at the device of the elephant.
Appeal dismissed and the interim injunction restraining use of SVT HOTEL SPECIAL for asafoetida confirmed. A registered mark is prima facie valid under section 31, and to displace that at the interlocutory stage the defendant must show that the registration is ex facie impermissible or was granted in gross violation of the Act, a high threshold not met here. Whether HOTEL SPECIAL merely denotes the intended purpose of bulk sale to hoteliers, and so attracts section 30, is a matter of evidence and not a ground to refuse an injunction against a mark registered after ten years of use. The defendant's use of the registered symbol on an unregistered mark supported the restraint against passing off. The trial court's reasoning that a claim of prior use amounted to an admission of distinctiveness was wrong, but did not warrant interference given the limited scope of Order XLIII Rule 1.
Appeal allowed, the refusal of a temporary injunction set aside and the application remanded to the District Judge. The Judge below had exercised discretion arbitrarily and perversely in two respects. He did not look at the Commissioner's report or the application forms it produced from the defendant's office, which bore directly on whether the two businesses overlapped, both parties advancing loans. He also construed the device in front of the defendant's SAAF mark as the letter S when the defendant's own case was that it depicted a phoenix bird. The comparison required is whether an unwary person of average intelligence with imperfect recollection would be likely to think the defendant was part of the plaintiff.
Applications deemed abandoned under section 21(2) for failure to file counter statements, quashed. The Registry relied on Rules 17 and 18 and on a dispatch record showing a status of success, Rule 18(2) deeming a communication served at the time of sending the email. The Court held that section 21(2) runs the two month period from the receipt by the applicant of the copy of the notice of opposition. Rule 18(2) incorporates a legal fiction which, construed literally, would mean no more than proof of transmission, and so construed it would not be in consonance with the section, particularly given that the statute does not incorporate deemed receipt and that a substantive right of the applicant is at stake. The prescribed time limit therefore runs only from the date of receipt of the email, and a dispatch record does not qualify as evidence of receipt.
