1.

TRADEMARK

WELL KNOWN TRADEMARK

https://excelonip.com/what-are-well-known-trademarks/

1. kamal trading coop vs Gillette uk

https://indiancaselaw.in/kamal-trading-co-and-ors-v-gillette-u-k-ltd/

In the matter of Kamal trading Co. v. Gillette UK Limited, 6 the plaintiff wanted an injunction
against the defendants because on their toothbrushes they used the 7’O Clock mark. The court
held that the plaintiff had a huge reputation of the mark 7’O Clock on their razors and shaving
cream across the world. If the defendant was allowed to use the mark of the plaintiff, then it will
definitely create confusion and deceive the customers.

2. Whirlpool Co. & Another v. NR Dongre

https://blog.ipleaders.in/n-r-dongre-and-ors-v-whirlpool-co-and-anr-1996-case-study/

In the case of Whirlpool Co. & Another v. NR Dongre, 7 the mark of the plaintiff was
Whirlpool and it was registered in India in 1977. But the mark was not renewed. This mark had a
reputation all over the world and the mark was used by the defendant on washing machines.
Some of the machines of the plaintiff were sold to the US Embassy in India. The plaintiffs made
advertisements in various international magazines which are being circulated in India. The court
held that the Whirlpool mark has a trans-border reputation established in India and an injunction
was given to the defendants from using the Whirlpool mark on their goods.
COMPARATIVE DISPARAGEMENT

https://blog.ipleaders.in/comparative-advertisement-disparagement/

https://blog.ipleaders.in/analysis-infringement-trademark-comparative-advertising/

1. 1. Britannia v Unibic Biscuits India (2007)– Britannia is the owner of a registered

trademark ‘Good Day’ for their biscuit product. A manufacturer Unibic India
launched a biscuit named ‘Great Day’ along with its tag line – ‘Why have a Good
Day, when you can have a Great Day!’ This was a direct comparison to Britannia’s
Good Day biscuits which states that consumers must not try any plaintiff’s biscuit
when Great Day biscuit is available. The plaintiff’s allegation that the defendant has
directly infringed their trademark Good Day. Bangalore City Civil Court on 12
December 2007 granted an injunction to the defendant for disparaging the ‘Good
Day’ biscuits of the plaintiff. While deciding this case, the court has taken into
consideration the intent of the advertiser, the manner and
the message communicated to the public.

2. Hindustan Unilever Ltd v Reckitt Benckiser (India) Ltd on 23 September, 2013,

(VIM and Dettol Case) order dated April 23, 2013 by Calcutta High Court. In this
case four advertisements were involved. Two have been published by Hindustan, the
other two by Reckitt. Each company contended their advertisements that the other has
disparaged their products. Hindustan is the owner of the brand names “Lifebuoy” and
“VIM”. Reckitt also manufactures these products, in addition to its well-known
antiseptic liquid, “Dettol”. It had introduced a utensil cleaning liquid in the market,
called “Dettol Healthy Kitchen Gel”. The white plate shown in the advertisement
divided into two halves in which it was depicted that after cleaning with these liquids,
the one halves of the plate left with several germs for which Yellow color Gel was
depicted to be used and other half of plate is clean since it was washed with Dettol
liquid. While granting the injunction on the defendant, Hon’ble court observed that
comparison should not be more than ‘Puff’. Though the advertisers did not
show ‘VIM’ in their commercials, it referred to it as a ‘leading dishwash’ which
would lead any reasonable person to think that the dishwash being referred to was
 ‘VIM’. Thus, this will not amount to an honest practice. The comparison shown in the
commercial is not just puffing up the product but it’s a serious comparison thereby
lowering the reputation of the defendant’s product.

3. Colgate Palmolive Company and Anr. v Hindustan Unilever Ltd.: In this case the
Pepsodent toothpaste of HUL was shown as 130% better than Colgate. The basic
contention of the HUL that their product has higher efficiency in dealing with dental
cavities as compared with Colgate and it was substantiated on the basis of
detailed study about retention of Triclosan on dental plaque. Hon’ble Delhi High
Court while disposing of the matter opined that, The advertisement must be viewed in
its entirety and it is not necessary to dissect each word or expression. It is also
important to examine the storyline and the message that the impugned TVC conveys
to an average person who is a consumer or a prospective consumer of the products
that are advertised. No injunction granted against the respondent but directed was
given to suitably modify the commercial on the basis that the trader cannot, while
saying that his goods are better than his competitors’, say that his competitors’ goods
are bad. If he says so, he really slanders the goods of his competitors.

4. ‘Pepsi Co. Inc. and Ors. V/s Hindustan Coca Cola Ltd. and Ors.’ 2003 (Delhi
High Court) wherein the appellant is registered trademark Owner of mark PEPSI,
PEPSI COLA, GLOBE DEVICE and also copyright owner of words “Yeh Dil Mange
More” which is their famous tagline. Appellant’s contention that respondent while
promoting their product “Thums Up” and “Sprite” launched series of television
commercials in which the word PAPPI was written on the bottle shown in comparison
and also, it was indicated that liquid in that bottle is “Bacchon wala drink” and this is
disparagement of the product of appellant and thereby infringing its trademark.
Respondent defense that they are just puffing up their claim to promote their product
which is healthy competition in the market.
The division bench of Hon’ble Delhi Court while granting injunction against the
respondent for publication and screening of impugned advertisement observed that the
 comparison in the advertisement was with PEPSI. The word PAPPI written on the bottle
shown in respondent’s advertisement was fairly indicating the trademark PEPSI of the
appellant. In such cases the “manner of the commercial”, is very important. If the manner
is ridiculing or the condemning product of the competitor then it amounts to
disparaging. Respondents projected PEPSI to be only a sweet drink hence of inferior
quality and by calling it as “Yen Bacchon Wali Hai”, the respondents depicted the
commercial in a derogatory and mocking manner which is not at all allowed under the
law.

5. BMW and another v Deenik [1999] ETMR 339, the CJEU was asked whether
advertisements such as "Repairs and maintenance of BMWs", infringed a BMW trade
mark.The CJEU responded at paragraph 64 that:"...Articles 5 to 7 of the directive do
not entitle the proprietor of a trade mark to prohibit a third party from using the
mark for the purpose of informing the public that he carries out the repair and
maintenance of goods covered by that trade mark and put on the market under that
mark by the proprietor or with his consent, or that he has specialised or is a specialist
in the sale or the repair and maintenance of such goods, unless the mark is used in a
way that may create the impression that there is a commercial connection between the
other undertaking and the trade mark proprietor, and in particular that the reseller's
business is affiliated to the trade mark proprietor's distribution network or that there is
a special relationship between the two undertakings."

6. SUN PHARMACEUTICALS LTD VS CIPLA LTD- In the instant case, Cipla Ltd filed a
suit seeking a permanent injunction against Sun Pharma for infringing the trademark “Respule”.
The mark “Respule” owned by Cipla Ltd has been in use since 2013 and Cipla had been selling
medicines that treat respiratory ailments under the names Budecort Respules and Duolin
Respules. It had accordingly, contended that Sun Pharma had been illegally using the mark
“Respule” and has attempted to pass off by imitating the artistic trade dress, packaging and label.
The Court, upon hearing the case, passed an interim injunction on 30.4.21 against Sun Pharma
from using the mark till 2.06.21. Against the order of injunction, Sun Pharma filed three
 counterstatements seeking to vacate the interim order, stating that the products under the alleged
infringing mark had already been stocked due to the unprecedented medical emergency.

Issue

Whether the ad-interim order should be allowed in favour of Cipla Ltd on the grounds of passing
off, trademark and copyright infringement when there is an ongoing pandemic?

Cipla’s Contentions

Cipla contended that Sun Pharma:

 Indulged in colourable imitation and substantial reproduction of the mark “Respule” by
replicating the artistic trade dress, packaging and label which amounts to copyright infringement
in the Artistic Works.
 Adopted a mark deceptively similar its own, which amounts to infringement of its earlier
“Respule” mark.
 Attempted to imitate the trade dress thereby causing confusion in the market and resulting in an
act of passing off.
 By virtue of using the mark “Respule”, had taken unfair advantage of the pandemic and has
caused detriment to the distinctive character and reputation of Cipla’s well-known mark.

Sun Pharma’s Contentions

The Applicant/ Defendant, Sun Pharma stated that they would adopt a new package/label totally
different from the one which has been currently used by them as the medicine has been stocked
up which has an expiry period of one year.

Observations of the Court

The Court held that “The respective label and the trade dress adopted by the plaintiff has been
copied by the defendant is prima facie slavish imitation of the plaintiff’s label wrapper to take
advantage of the unprecedented demand in the market for these medicines. It is clearly intended
to ride on the goodwill and reputation of the plaintiff”.
It also asserted that, “The balance of convenience to continue the interim order granted by the
court on 30.4.2021 still continues in favour of the plaintiff notwithstanding the fact that an
attempt has been made by the dependent to nix the public interest due to the medical emergency
in the country and world over with the rights of the plaintiff”.

It added “If the defendant is allowed to release the products in the market, it will result in
incalculable damage to the proprietary rights of the plaintiff and by permitting the defendant to
sell the good it will be allowing dilution of the proprietary rights of the plaintiff.”

Decision

The Court dismissed the applications filed by Sun Pharma for vacation of the interim order and
held that the interim injunction shall continue subject to the final decision. The HC ruled that,
“The court cannot allow a party to violate another person’s intellectual property rights viz
copyright and trademark and remain a mute spectator where there also is an attempt to pass-off
the goods notwithstanding fact that the country is facing unprecedented medical emergency and
possibly the patients suffering from covid symptoms require the drugs manufactured both by the
plaintiff and the defendant for treating patients with respiratory ailments during these tough
times”.

Analysis

The significance of the case lies in the fact that Sun Pharma did not dispute the allegation of
infringement of the mark but instead resorted to the ground of medical urgency in order to sell
the already stocked up supplies of the medicine using the infringing mark/packaging. Medical
supplies being the need of the hour during the pandemic, the infringement of intellectual
property rights poses a difficult conundrum to regulators and the judiciary, who have to balance
public requirements against private property rights.

It is pertinent to note that Sun Pharma had stocked up medicines with the intention to disregard
the goodwill and reputation of Cipla. This is clear from the fact that they have used the same
packaging and label. The Court therefore noted that no concession can be granted to recall the
products and repack the same without further loss to itself and release the same with the revised
label/package on the ground of an ongoing pandemic.

An important aspect which the Hon’ble High Court of Madras observed is that there would be no
harm if the interim order is allowed to continue but it would result in an incalculable damage to
the proprietary rights of Cipla if the injunction was vacated. The Court directed Sun Pharma to
suitably alter not only the trade dress, layout, colour combination, design and artistic work on the
label but also the words which are deceptively similar to Cipla’s earlier mark Respule.

The judgement serves as an important notice to all the pharmaceutical companies to refrain from
willful trademark infringement even during the prevailing pandemic situation. It is evident that
third parties cannot take shelter under the umbrella of public interest that the mark is used for
treating COVID-19. A balanced approach mindful of the intellectual property of rights holders
must be weighed against the public interest, particularly in the present circumstances so as to
prevent profiteering. The courts have time and again held that force majeure cannot be a ground
to infringe IP rights. Therefore, third parties cannot attempt to use the pandemic as a convenient
excuse to trade on the reputation and goodwill of genuine rights holders.
 2. DESIGN

https://blog.ipleaders.in/a-critical-analysis-of-design-protection-in-india/

1. RAJESH MASRANI VS TAHILIANI DESIGN

https://blog.ipleaders.in/rajesh-masrani-vs-tahiliani-design-pvt-ltd-discussing-
artistic-works/
The plaintiff is a private company, which deals with fashion and is under the leadership of
renowned fashion designer Tarun Tahliani, had accused the defendant of copyright infringement
in the “artistic works” created by the plaintiff’s company. These “artistic works” include the
drawings created by the plaintiff while it developed garments and accessories. The plaintiff
claims that these fall under the category of artistic works mentioned in Section 2(c)(i) of the
Copyright Act. The patterns printed on the fabric as well the final garments designed were also
claimed to be artistic works by the plaintiff. The plaintiff also claims to be first owner of
copyright of all the company’s products under Section 17(c) of the Copyright Act.

An interim injunction had been ordered in this regard in the plaintiff’s favour, restraining the
defendant from reproducing, printing, publishing, distributing, selling or offering for sale in any
form, the print which are imitations of the designs of the plaintiff.

The current case in the High Court is an appeal against this order as the defendants claim that the
plaintiff’s drawings of designs were not “artistic works” and were only “designs” and hence, it
falls under the purview of the Designs Act. Regardless of this, the drawings had not been
registered under Section 15(2) of the Copyright Act.

VI) ISSUES

* Is there a clear cut distinction between an “artistic work” and a “design”? Do these prints fall
under the category of “artistic work” in the Copyright Act or “design” under the Design Act,
2000?

* Whether the copyright subsists in the plaintiff’s agreements in view of Section 15 of the
Copyright Act, 1957?

* Is the registration of copyright compulsory to claim protection under the Copyright Act, 1957?
VII) SECTIONS OF THE LAW INTERPRETED BY JUDGES
Copyright Act, 1957 Section 15

15. Special provision regarding copyright in designs registered or capable of being registered
under the Designs Act,1911. (1) Copyright shall not subsist under this Act in any design which is
registered under the 51*** Designs Act, 1911. (2) Copyright in any design, which is capable of
being registered under the Designs Act, 1911, but which has not been so registered, shall cease
as soon as any article to which the design has been applied has been reproduced more than fifty
times by an industrial process by the owner of the copyright or, with his license, by any other
person.

Indian Copyright Act, 1957 Section 2(c)

2. Interpretation (c) “artistic work” means- (i) a painting, a sculpture, a drawing (including a
diagram, map, chart or plan), an engraving or a photograph, whether or not any such work
possesses artistic quality; (ii) work of architecture; and (iii) any other work of artistic
craftsmanship;

Designs Act, 2008 Section 2(d)

2. In this Act, unless there is anything repugnant in the subject or context d) “design” means only
the features of shape, configuration, pattern, ornament or composition of lines or colors applied
to any article whether in two dimensional or three dimensional or in both forms, by any
industrial process or means, whether manual, mechanical or chemical, separate or combined,
which in the finished article appeal to and are judged solely by the eye; but does not include any
mode or principle of construction or anything which is in substance a mere mechanical device,
and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the
Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the
Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act,
1957

VIII) APPELLANTS CONTENTIONS

Since the plaintiff is the owner of the copyright in the creative work done by Tahiliani Designs,
or by the employees employed by Mr. Tarun Tahiliant, the protection of The Copyright Act 1957
was available to them.

The drawings made by the plaintiff for creation of the garments or accessories fall under the
category of artistic work under the meaning of Section 2(c)(i) of the Copyright Act, 1957.
The plaintiff claims that the print have been reproduced a maximum of 20 times, or even fewer.
This does not exceed the limit of 50 reproductions, hence it can seek protection under the
Copyright Act.

Furthermore, the prints drawn remains an artistic work and is distinct from the garment or
clothes to which it is applied. Thus, it excluded from the Designs Act 2000 according to Section
2(d).

As long as the subject matter of the copyright is covered under Section 2 of the Copyright Act,
there is no compulsion for registration under the Copyright Act to seek protection from it.

XI) DEFENDANT’S CONTENTIONS

The defendant claims that the plaintiff is not registered under The Designs Act, 200 and thus
cannot seek protection under it.

It also points out that the plaintiff is not the registered owner of the copyright and hence has to
right to claim protection under Copyright Act, 1957.

The apparent “artistic work” for which the plaintiff seeks protection for is in fact a “design”
which falls under the domain of the Designs Act, 2000. However, since the plaintiff is not
registered under the Designs Act, it is not entitled to seek protection under it. Textile designs do
not constitute “artistic works” as defined under Section 2(c)(i) of the Copyright Act.

XII) THE JUDGMENT

The Court ordered that the plaintiff’s work was indeed entitled for protection under Section 2(c)
of the Copyright Act as it is an “artistic work.” Since it is an original artwork, it is not capable of
being covered under Section 2(d) of the Designs Act, 2000.

The Court also cleared any doubts regarding registration of the copyright. It stated that
registration of the work was not a compulsory condition for claiming damages against copyright
infringement. Thus, the plaintiff can seek full protection under the Copyright Act.

It also ruled that the scope of power held by the Appellate Court in interfering with an order
passed by the learned Single Judge were limited. Thus, any further observations made by the
Appellate Court should not have any bearing on the final decision of the suit. As the court was
not inclined to interfere with the orders passed by the learned Single Judge, the appeal was
dismissed.

2. METRO PLASTIC INDUSTRY VS GALAXY FOOTWEAR

The plaintiff firm claims to be engaged in business of manufacturing, marketing and selling of
footwears. One such footwear of the plaintiff is popularly known as "Scandal". It has distinctive
shape, design, configuration and surface pattern propounded and originated by the plaintiff. The
plaintiffs said design is registered at No.169611 in Class-10 since 2nd August, 1995. The
plaintiff is an inventor and originator of the said designed footwear in India. Their product on
account of the aesthetic form of the design, shape and surface pattern offers great fascination to
the purchasers and the plaintiff has effected considerable sales of the said footwear throughout
India. The plaintiff has the exclusive right to manufacture and sell the said product in view of the
registration of the design in Class-10. The plaintiff has copyright in the design in terms of
Section 47(i) of the Designs Act, 1911. The defendants are admittedly using the same or
deceptively similar design in respect of the same class of goods. The plaintiff has come to know
recently about the piracy being committed by the defendants in the first week of November,
1996. Accordingly, the plaintiff through mediators apprised the defendants about their legal and
proprietory rights in the impugned design. But it is of no effect. Thus, action of the defendants
amounts to infringement of copyright as well. It is claimed that the plaintiff is entitled to
injunction, as prayed for, in terms, purpose and scheme of the Designs Act. Hence, the above
mentioned suit has been filed seeking above mentioned reliefs.

In so far as the question of passing off action is concerned, the plaint does not disclose that the
plaintiff has acquired any reputation in the market by giving sale figures, expenses incurred on
advertisement etc. Besides the fact that the sister concern was already using the trademark
"Scandal" cuts at the very root of the claim of the plaintiff's exclusive use of the trademark
"Scandal". Consequently, it become difficult to say that the plaintiff has got prima facie case to
claim injunction.

In Delhi Metro Plastic Industries v. Galaxy Footwear case, it was held the definitions of "design"
in Section 2(5) of the 1911 Act and Section 2(d) of the 2000 Act were slightly different and the
present definition had certain additional features. The legislation has amplified the definitions of
article and design to confirm them with international accepted definitions for providing wider
protection. The definition of article has been broadened to include parts of articles sold
separately within its scope. The definition of Design has also been amplified to incorporate the
composition of lines and colors to avoid overlapping with Copyright Act, 1957 regarding the
definition of design with respect to artistic work.

3. GAMMETER V.THE CONTROLLER OF PATENTS AND DESIGNS

Facts:The matter arises in connection with an application which was made by Mr. Gammeter to
the Controller of Patents and Designs whereby the Controller was requested to register the
accompanying design in class. The Controller registered that design on the 5th of February 1915.
On the 23rd of July 1915, Messrs. J, Boseck& Co. applied to the Controller for cancellation of
the registration; and, after hearing both patties, that is to say, Mr. Gammeter and Messrs.
Boseck& Co., on the 7th of August 1915, the Controller cancelled the registration. On the 23rd
of February 1916, notice of an application to the learned Judge was given; and the notice was
that an application would be made for an order that the Controller of Patents and Designs should
place the Design No. 2611 upon the register of designs in such manner as the same was on and
prior to 4th August 1916.

Issues: Whether the controller had exceeded his jurisdiction? Even if had jurisdiction, should he
have cancelled the registration of a new and an original design?

Provisions- S. 62 of the Indian Patents and Designs Act provides that, 'The Controller may, on
request in writing accompanied by the prescribed fee,-(a) correct any clerical error in or in
connection with an application for a patent or in any patent or any specification; (b) cancel the
registration of a design either wholly or in respect of any particular goods in connection with
which- the design is registered; (c) correct any clerical error in the representation of a design or
in the name or address of the proprietor of any patent or design, or in any other matter which is
entered upon the register of patents or the register of designs."

S. 43 provides, in Sub-section (1) that "The Controller may, on the application of any person
claiming to be the proprietor of any new or original design not previously published in British
India, register the design under this part." Sub-section (4) provides that ' The Controller may, if
he thinks fit, refuse to register any design presented to him for registration; but any person
aggrieved by any such refusal may appeal to the Governor-General in Council": so that, the
Controller upon an application for the registration of a design has discretion either to register or
to refuse to register, but his decision is subject, to an appeal not to the Courts, but to the
Governor-General in Council.

Analysis: S. 62 is limited to oases of applications by the registered owner or somebody in who is

vested the interest of the registered owner, such as the trustees in bankruptcy or the Liquidator, if
the registered owner happens to be a Company. The words "on request in writing" induce one to
think that they must mean on request, by a person who is interested in the patent or design. The
Controller, upon the application of Messrs. Boseck& Co., had no jurisdiction to cancel the
registration, and it can be said that under the Act the proper and ordinary way of expunging the
registration of a design was to apply to this Court under S. 61.

Decision- -Calcutta High Court went on to rule that the test of novelty was the eye of the judge
who must place the two designs side by side and see whether the one for which novelty was
claimed was in fact new. It further observed that it was a matter of first impression. In this case
although in view of the bracelet produced by Messrs. Cooke and Kelvey, the shape of the
"Novelty" band by itself, cannot be said to be new and original, the application of it to a watch to
be worn on the wrist was for a purpose so different from ' and for a use so dissimilar to the
purpose and use of the bracelet that the design in question may be said to be original.

Conclusions: Appeal was allowed by the Calcutta High Court.