Important Cases in IP

1. Theos Food Pvt. Ltd. & Ors. V. Theobroma Foods Pvt. Ltd.

FACTS

The case is majorly revolving around a trademark dispute involving two bakery entities, Theos Food Pvt. Ltd. ("Theos") and Theobroma Foods Pvt. Ltd. ("Theobroma"). Both parties were engaged in the business of producing and selling bakery-related products, patisseries, and confectionery.

Theos, as the plaintiff, contended that it possesses the sole right to use the "THEOS" and "THEO'S" marks for its bakery products, with an emphasis on restricting this use to the Delhi-NCR region. Furthermore, Theos claims that Theobroma should not engaged in the use of the word "THEOS" or "THEO'S" as a mark and should prohibit him for using "THEO" without the 'S.'

Conversely, Theobroma, as the defendant, asserted its ownership of the "THEOBROMA" mark and maintains its unrestricted right to use this mark. Additionally, Theobroma argued that it has utilized the "THEO'S" mark with the 'S' for a significant period and should not face any problem on its use. Theobroma expressed concerns about the geographical constraint imposed on the use of its "THEOBROMA" mark, specifically within the Delhi-NCR region, as it may affect its ability to enforce rights outside this territory.

Court Observation

In this case, the court permitted Theobroma to expand its outlets across India under the mark "THEOBROMA." However, it imposed a geographical restriction on Theos, which restrict its operations to the Delhi-NCR region for goods and services offered under the mark "THEOS" or "THEO'S."

The court considered that the geographical limitation as a reasonable approach to address the confusion or conflict between the two parties in different regions. 

The court clarified that the geographical restriction on Theos's use of the mark "THEOS" or "THEO'S" to the Delhi-NCR region would not violate its statutory and common law rights and they may also take legal action against the misuse of identical or similar marks in any part of India, except by Theobroma.

Theobroma was allowed to use the mark "THEOS" or "THEO'S" for specific bakery items which includes

• Theos Dutch Truffle Cake
•  Theos Chocolate Mousse Cup
• Theos Mava Cake
• Theos Dense Loaf
•  Theos Quiche

This usage was limited to physical menu cards in Theobroma's physical outlets. The court believed that allowing Theobroma to use the mark for specific items in its physical outlets would not lead to confusion or trademark infringement as their abovementioned products are very famous and are in the minds of the customers which does not lead to confusion. 

Also, Theos was prohibited from conducting online sales outside the Delhi-NCR region under the mark "THEOS" or "THEO'S." If Theos intended to expand its commercial activities beyond this region, it must use a different mark or name that was not identical or deceptively similar to "THEOBROMA."

 These all are the findings of the court which the court has looked after before giving its judgement and considers all of these observation to give its judgement.

Court Judgement

In this case the court said that Both parties agreed not to oppose each other's marks or object to them, provided they complied with the terms of the settlement that are mentioned above. Theobroma retained all its trademark registrations, including "THEOBROMA," "THEOS," and "THEO," and could take necessary enforcement actions.

Trademark ruling

There is a restriction on using the mark within a defined territory by the plaintiff as this will not lead to any infringement of trademark and no other right is violated of any party by this action and this will not lead any confusion regarding the marks that are used by both the party as they are deceptively similar to each other.

2. SUBWAY VS SUBERB

Facts

Subway IP LLC (Subway) brought a trademark infringement and passing off suit against Infinity Food & Ors (Infinity Food) for the use of the mark SUBERB and a similar colour scheme.

Subway alleged that the following acts of Infinity Food infringed their intellectual property rights:

• the use of the brand name and logo for two restaurants with an identical yellow and green colour scheme;
• use of the brands ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ which are deceptively similar to their registered ‘VEGGIE DELITE’ and ‘SUBWAY CLUB’ marks;
• use of food preparation procedures, techniques, service ingredients, formulae, recipes, ingredients, and placement of the service counters identical to those seen in Subway outlets; and
• similar use and reproduction of recitals on the website of Infinity Food with a similar layout as used by Subway.

At the initial stage of the suit, Infinity Food sought the Court’s permission to modify the colour scheme, layout, website, signage, etc., to redress the grievances of Subway. Infinity Food also changed the names of the sandwiches ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ to ‘VEG LOADED REGULAR’ and ‘TORTA CLUB’, respectively.

SUBWAY applies for an injunction on the following grounds:

• Infinity Food was intentionally infringing Subway’s rights prior to making the changes. Moreover, they intended to copy and make their business successful on the goodwill and reputation of Subway.
• The marks SUBWAY and SUBERB are deceptively similar. Even the changes made to the colour scheme will not make any difference as the rival word marks continue to be deceptively similar.
• As Infinity Food was a licensee of Subway, it is a clear case of dishonesty entitling Subway to injunctive relief.

Infinity Food contended:

• Pursuant to the changes made by Infinity Food, no action for infringement and passing off will lie against them.
• They have made wholesome changes, including the wall décor of their outlets, colour schemes, uniforms, menu cards, signage, etc.
• Subway cannot claim exclusivity over the prefix ‘SUB’ in SUBWAY as it is a generic word concerning the products in relation to which it is used.

Court Finding and Judgement

In this case, the issue is that whether, subsequent to the changes made by Infinity Food still cause an action for infringement and passing off will lie against them. The Court ruled in favour of Infinity Food and provided the reasons below.

• It is a settled legal principle that marks must be considered entirely. Further, it is also permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Therefore, a particular element of a composite mark that enjoys greater importance as compared to other constituent elements may be termed as a ‘dominant mark’.
• ‘SUBERB’ is not phonetically similar to ‘SUBWAY’, though both are words of two syllables. The first syllable, ‘SUB’, is very common when used in the context of sandwiches. It is also well known that ‘SUB’ is an abbreviation for ‘Submarine‘, which represents a well-known variety of long-bodied sandwiches, generally 6 or 9 inches in length.
• Subway cannot claim a monopoly over all two-syllable words, of which the first syllable is ‘SUB, ‘especially when used in the context of eateries that serve sandwiches and similar items. In the circumstances, once the ‘SUB‘ part of the SUBWAY mark is taken out, there is no similarity between ‘WAY‘ and ‘ERB. ‘
• The Court found no merit in the contention that SUBWAY is a well-known brand, and there is hardly any chance that a person who wishes to take food from a Subway outlet will get confused with an Infinity Food outlet and take food from there. Subway has not placed on record any material which could lead to any such inference. Thus, no case of passing off is made out.
• Subway initially contended that SUBWAY CLUB and VEGGIE DELITE stood infringed by the marks ‘VEGGIE DELICIOUS’ and ‘SUB ON A CLUB’ used by Infinity Food. However, the latter has modified the said marks to ‘VEG LOADED REGULAR’ and ‘TORTA CLUB’. The said modifications set any allegation of infringement at rest as there is no similarity between ‘VEGGIE DELITE’ and ‘VEG LOADED REGULAR’ or between ‘SUBWAY CLUB’ and ‘TORTA CLUB’. In this regard, it is to be noted that both ‘Veg’ and ‘Club’ which are the common elements in the rival marks, are public juris and use as a common word by the person in food business.
• With regard to similarities alleged by Subway, such as the layout of restaurants, counters, uniforms, etc, that cannot be a ground for injunction as no claim of exclusivity in respect of the décor or layout of premises or staff uniforms, is available in Indian law. Moreover, as Infinity Food has already modified the layout and other alleged similarities, the question does not arise for consideration.

The Court dismissed the injunction application filed by Subway in light of the above findings.

Trademark Ruling

In this case the injunction application by the plaintiff is rejected on the grounds that the common words do not have any registry and can use as a prefix or suffix by the businessman as on these common words no one can claim any right and sue another person for the infringement and passing off action.

3. Domino’s Pizza vs.  Dominick Pizza

Facts

Domino's is a Limited Liability Corporation that holds the intellectual property of "Domino's Pizza" trademarks and operates Domino's franchises in India. Domino's Pizza originated in 1960 and in 1996, they began operations in India, growing to 1,567 outlets in 337 cities.

Defendant 'DomiNick's Pizza' faced accusations of offering identical pizza and fast-food services as the plaintiffs, including alleged replication of registered trademarks such as "CHEESE BURST" and "PASTA ITALIANO" for various food items.

The plaintiffs raised allegations of trademark infringement, primarily aimed at preserving the reputation of their unique brand and preventing consumer deception through the use of a deceptively similar mark to represent their services as those of the plaintiff. 

The plaintiff contended that the trademark "Domino's," along with its distinctive logos featuring domino faces, possesses a unique and arbitrary nature. They asserted that the term "Domino's" lacks any etymological significance related to the services associated with this trademark. Due to its distinctiveness and arbitrary character, the plaintiff claimed that this trademark should be granted intellectual property protection.

The primary contention of the plaintiff was to protect their brand's reputation and prevent consumer deception caused by the use of a deceptively similar mark.

Court Finding

The High Court noted that in cases of trademark infringement, the comparison is based on a mark-to-mark basis. When device marks include textual elements that are prominently similar to those of the plaintiff's mark, infringement is likely to be established. This is because an average customer with imperfect memory would recall the textual aspects of the marks more than their visual appearance. Additionally, visual elements in device marks can change over time, making textual similarity a crucial factor in determining infringement.

Section 29 of the Trademarks Act outlines the situations in which infringement can be considered to have occurred. The mere similarity between two marks and the identity or similarity of the goods or services they represent does not automatically constitute infringement under Section 29(2)(b). To establish infringement, the court must also determine whether this similarity leads to a likelihood of confusion among the public or if the public believes that the defendant's mark is associated with the plaintiff's registered trademark.

Court Judgement

The Delhi High Court pointed out that the phonetic similarity observed between "Domino's" and "Dominick's," coupled with the resemblance in their logos, as well as the fact that both marks represent identical products and services, which creates confusion between these two marks.

The Court held, “The matter has to be viewed from the perspective of a customer of average intelligence and imperfect recollection, who is not over-familiar with one or the other” and made out a case of trademark infringement against the defendants.