5 LANDMARK CASES FOR TRADEMARK INFRINGEMENT IN INDIA

INTRODUCTION:

Trademark includes a symbol, logo, word design, phrase and any other combination of any or all of these things. It is used for the recognition of goods and services. Examples of trademark includes logo of Apple, Nike, logo and phrase (I’m lovin it) of McDonald’s and any such phrases and logos those are registered.

A dispute occurs when there is any disagreement or any argument. A trademark dispute arises when any two entities claims for the similar or same trademark. Section 11 of the Trademark Act, 1999 deals with grounds on which trademark might be refused from being registered. The Act makes the infringement of the trademark an offence in India and an offender is liable to bear the consequences for infringing.

Now, since we now know what is trademark and trademark disputes means. Let’s discuss few cases related to the infringement of trademark.

1.    STARBUCKS COFFEE V. SARDARBUKSH COFFEE :

Starbucks coffee i.e. the plaintiff, in the year 2001 registered the word mark “STARBUCKS” and its logo as a trademark in India. In 2015, the Defendants started using the name “Sardarbuksh Coffee & Co.” with the logo having face of turban commander comprising with wavy lines around the face. The plaintiff in 2017 asked the Defendants to change their logo via letter of demand. The Defendants in response to this only changed the colour scheme to black and yellow. The Defendant commenced his operation again in May 2018 using the same name again. Even goods and services provided by the Defendants were similar to that of Plaintiff. In August 2018, the Plaintiff filed the suit against the Defendants for infringement for their trademark in the Hon’ble High Court of Delhi since “Sardarbuksh” sounds like “Starbucks” and was creating suspicion in the minds of the customers of Starbucks.

The court held the decision in the favour of the Plaintiff. Various tests were used to prove deceptive similarity such as test of likelihood, confusion and goodwill and so on. National Sewing Thread Co. Ltd. V. James Chandwick and Bros  was cited in which it was held that deceptive similarity can be identified by taking the steps into the shoes of customers considering that customer is the man with ordinary intelligence. If customer is of the view that there is confusion in differentiating the two brands, they could be deemed deceptively similar.
The court ordered the Defendants to change the name of their business from “Sardarbuksh Coffee & Co.” to “Sardarji-Bakhsh Coffee & Co.”.
The Defendants accepted the order and changed the name of all the outlet’s to Sardarji-Bakhsh Coffee & Co. the court held that if any third party uses the word “Bakhsh”, the Defendant would be granted the right for its protection from such infringement.

2.    COCA-COLA COMPANY V. BISLERI INTERNATIONAL PVT. LTD.  :

The Defendant in September 1993 via Master Agreement sold the Intellectual Property Rights on Limca, Citra, Gold spot, Thums up and MAAZA to the plaintiff. The Intellectual Property Rights included the trademark, formulation rights, goodwill, and now-how. In November 1993, the plaintiff and defendant signed a deed of assignment by which they entered into an agreement via which MAAZA was concluded and trademark of MAAZA was transferred to Coca-cola company for the consideration of One Million US Dollar, the Deed of Assignment assigned the goodwill for the amount of Fifty Thousand US Dollar, the know-how was transferred for the amount of One Lakh US Dollar. The plaintiff, defendant, Mr. Ramesh Chauhan, his wife and the owners of secret formula of MAAZA signed a Confidentiality, non-use and Non-Compete Agreement was signed for the consideration of One Lakh US Dollar. 

The Agreement on License was signed with Bisleri. The Agreement on relinquishment and compensation of franchise was also signed. In October 1994, finally the License Agreement to transfer all Intellectual Property Rights to the plaintiff was executed by all the parties involved.
In March 2008, the plaintiff filed to register the trademark of MAAZA in Turkey. The defendants got to know about the same on 7th September 2008 and took the legal action for repudiation of the Agreement. The defendants relied on the point that the Agreement that was signed between them for the use of MAAZA in India only and not for exporting purpose. The defendants were also intending the use of MAAZA trademark that they have licensed to the Plaintiff in India for forever. It was also alleged that the plaintiff unauthorizedly permitted the third party to manufacture few ingredients od MAAZA. The third party was “Varma International” of Chittor, India.

The court held that the Delhi High Court held that since in the present case the use of mark was malafide, it was held to be an infringement of the trademark. 
After the investigation was done by the commissioners appointed by the court, it was found that there was a connection between defendant no. 1, overseas party and Mr. Vishal Sharma, operating business under the name Varma International and was exporting MAAZA products to Australia. Since it’s a settled law that exporting goods from a country, is considered as a sale within the country from where the goods are being exported and this amounts to an infringement of trademark. Hence, “Varma International” was considered a party to the lawsuit.
Interim order of injunction was granted in favour of the plaintiff, to prevent the plaintiff from irreparable loss and injury suffered by him under Section 42 of the Specific Relief Act, 1963. And on an appeal filed by the defendant against the plaintiff for the order given by the Delhi High Court in favour of the plaintiff, the Court expressly barred Bisleri from selling MAAZA products outside the soil of India.

3.    RAJEEV SAUMITRA V. NEETU SINGH & ORS 

The high court of Delhi on 4th March 2017, granted an interim injunction in favour of the plaintiff. The case was related to copyright infringement in literary work. The court took a look on the facts that copyright was granted to the plaintiff when he was the director with the defendant. And it was taken into consideration that the defendant was not able to show on record any material that can show that the literary work was a part of the plaintiff’s duties as a director. Any agreement, Article of Association or Memorandum of Association of the company was also not able to show that the works done by the plaintiff will come under his duties as director. And hence the decision was given in favour of the plaintiff.

4.    M/S BENGAL WATERPROOF LIMITED VS M/S BOMBAY WATERPROOF MANUFACTURING COMPANY & ANOTHER :

The hon’ble Supreme court of India observed in the case that whenever a new or fresh deceitful act is committed against the person, then the person who is deceived would have a fresh cause of action against that act. Thus, every time when a person commits the breach or infringement of trademark registered under the name of another entity, gives a recurring and fresh cause of action every time when such infringement occurs. Thus, this doesn’t attract the Order II Rule 2 of the Civil Procedure Code.

5.    N.R. DONGRE V. WHIRLPOOL CORPORATION :

The whirlpool Corporation, the plaintiff filed the suit against N.R Dongre and others i.e. the defendants at the Delhi high court. The Appellant-defendants were using the name of “Whirlpool” in India for manufacturing and selling the washing machines in India. Whirlpool claimed that they already had their mark registered in India. Thus, this is infringement of their legal right. During the initiation of the case, Whirlpool Corporation failed to renew its trademark in India. Meanwhile, N.R. Dongre and others got the mark “Whirlpool” registered in India.
The Delhi high court made the decision in the favour of Whirlpool Corporation. Even the division bench of the Delhi High Court held the decision in the favour of the Whirlpool since the respondent were not able to prove that they were using the trademark with bonafide intention.
The Supreme Court was not able to alter the decision held by the High Court, since there was no appropriate reason for that. The goodwill and reputation of the Whirlpool was affected and was irreparable. The Supreme Court of the first time recognized a multinational company’s common law right for using its trademark that was well-known.

CONCLUSION:

We hereby conclude that, the present cases motivate the entities to register their trademark to safeguard their legal rights on it. Once a trademark is registered there in no way in which it can be used deceptively or for any financial advantage or using the goodwill of the owner by any other person or entity.

However, if anyone tries to infringe these rights will be subjected to a legal action. 
 A trademark has a goodwill and reputation. So, it is very important to protect it from any exploitation and misuse. The above case makes us understand that court can interpret the written laws to preserve justice, and protect the rights and interests of the traders and so of its consumer.
Trademark covers brands, name, business concepts, etc. And is one of the aspects of Intellectual Property Rights. From these cases, we conclude that the trademark is a global phenomenon and protects the rights of proprietor across boundaries. Also, it doesn’t matter whether the name is assigned in one country and registered in another country. When there is an assignment conferring and assigning rights in its entirety, it can be registered anywhere. 

REFERENCES:

http://delhihighcourt.nic.in/writereaddata/orderSan_Pdf/mmh/2018/189207_2018.pdf
https://indiankanoon.org/doc/109517976/
https://indiankanoon.org/doc/88568544/
https://indiankanoon.org/doc/134913/
https://indiankanoon.org/doc/1732339/

Submitted by: Riya Dubey