Landmark Infringement Cases of Infringement of Trademark

Landmark Infringement Cases of Infringement of Trademark

Landmark Infringement Cases of Infringement of Trademark

1. Adidas America, Inc. v. Forever 21, Inc[3:17-CV-00377]

In 2015, Adidas filed suit against Forever21 for misusing its trademark "Three Stripes Mark" design. The adidas were using the mark since 1952. The parties chose for out of court settlement in 2016. Also, in 2017, Forever21 was once again sued for wrongfully using the said given mark.

2. Bigtree Entertainment Pvt. Ltd. v. D. Sharma and Anr. [CS (Comm) No. 609 of 2016]

Bigtree Entertainments, filed suit for encroachment of brand name, and , looking for restriction of use of mark 'Book My Event' or prefix 'Bookmy' by the Defendants. The Court observed that the said given mark is a Common English Word and its link with booking for shows, occasions, films, is descriptive. Also, the font, colour & textual style of rival marks were different. Thus, the court refused to allow injunction for the plaintiff.

3. Carlsberg Breweries v. Som Distilleries and Breweries Limited [CS (Comm) No. 690 of 2018]

The Delhi High Court held that a composite suit dealing encroachment of a registered design and passing off is maintainable. The Court observed that, the cause of action relating to the infringement of a design as well as passing off emanated from a similar transaction and therefore to avoid multiplicity of procedures, the cases for encroachment and passing off could be clubbed together in one suit.

4. M/s. Nandini Deluxe v. M/s. Karnataka Co-Operative Milk Producers Federation Ltd. [2937-2942 of 2018]

The Supreme Court has held and seen that specific products may fall in a similar class; in any case, they might be very different in their business applications, organizations and markets which would deter the probability of confusion between the rival marks, particularly when the marks are regularly used words and not created.

5. Yahoo!, Inc. v. Akash Arora & Anr [78 (1999) DLT 285]

In this case, both the domain names 'Yahoo!' and 'Yahoo India!' by Petitioner and Respondent were somehow, same and identical phonetically. The Delhi High Court held that even a domain name served a similar purpose as that of a brand name and should be allowed similar protection, and therefore, Trademark 'Yahoo!' by the plaintiff become distinct in public at large.

6. The Coca Cola Co. v. Bisleri International Pvt. Ltd. (Manu/DE/2698/2009)

The Coca Cola moved towards the Indian Courts for injunction with damages against Bisleri for infringement of its Trademark, MAAZA. Bisleri applied for the given trademark registration and started selling mango drink with the name MAAZA. The temporary injunction was granted to Coca-Cola.

7. Christian Louboutin v. Pawan Kumar [CS (COMM) 714/2016]

The Respondent was selling the Trademark 'RED SOLE' or selling ladies footwear which was found by the Petitioner. The Delhi High Court observed that the given mark is very distinct and recognized worldwide and truly belongs to the Petitioner.

8. M/S Castrol Limited & Anr. v. Iqbal Singh Chawla & Anr. [CS (OS) 4/2011]

In 2010, The Petitioner found out that the Respondent was selling 4T oil under the 'LUMAX ACTIVE' brand name and also trade dress was copied by Respondent. The Delhi High Court allowed Permanent Injunction against Respondent for use of mark ‘ACTIVE’ which looks same like Petitioner’s products.

9. Milmet Oftho Industries & Ors. v. Allergan Inc. [2004 (28) PTC 585 (SC)]

The Apex Court restrained a pharmaceutical company belonged to India, from adopting the trademark 'OCUFLOX'. The order upheld the doctrine of trans-border reputation. The Court held that even if the said mark is not registered by respondent in India and neither used in India, still it has to be protected since the respondent first entered the world market and register it.

10. Cadbury India Limited and Ors. v. Neeraj Food Products [142 (2007) DLT 724]

The petitioner moved towards court for injunction against respondent who was selling products under the mark 'JAMES BOND' which was similar to 'GEMS product of petitioner. The Court held that products of respondents are completely similar like that of petitioner. Therefore, the injunction was granted.

11. Pidilite Industries Limited v. Poma-Ex Products & Ors. [2017 (72) PTC 1]

In this case, The Bombay High Court observed that phonetic similarity between marks would confuse the consumers. The plaintiff moved towards the court for injunction claiming that the mark named 'KWIK', is a part of plaintiff’s trademark which was dishonestly used by the defendant. The injunction was granted to plaintiff and restricting defendant from using it.

12. DM Entertainment v. Baby Gift House and Ors. (MANU/DE/2043/2010)

In this, the Court held the defendant was responsible for violation of right of publicity, false endorsement and passing off. A permanent injunction was granted with damages. The plaintiff got the personality rights with the trademark 'DALER MEHNDI' from Pop-star Daler Mehndi.

13. H&M Hennes & Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. (IA-7259/2016)

In this case, the court observed that if there arises an occurrence of brand having trans-border reputation it isn't important for it to set up shop in India for its trademark to be protected in India. The plaintiff asserted that their given mark 'HM' is infringed by the defendant by using same colour combination of red and white same as that of the plaintiff.

14. Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors.[CS (COMM) 1007/2018]

The Delhi High Court held that trade name as well as logo of the Defendants was similar to that of the Plaintiff and allowed relief to the Plaintiff. The Court also ordered the Defendants to adopt the name 'SARDARJI-BAKHSH COFFEE and CO.' for running their business.

15. M/s. Epsilon Publishing House Pvt. Ltd. v Union of India & Ors. [LPA 73/2018, C.M. APPL.7426-7431/2018]

In this case, the Delhi High Court observed that procedural postponements on part of the Trade Marks Registry cannot be an issue on the rights of the registered owner of trademark. The challenge was made on the ground that since renewal application for its brand name 'LOKPRIYAEASYNOTES' was filed by the Respondent after few days of its termination, it must be accompanied by the given surcharge with the said fees, which the Respondent failed to pay.

16. Skechers USA Inc. & Ors. v. Pure Play Sports & Ors. [CS(COMM) 573/2016]

The Court granted the interim injunction in favour of the plaintiff. The plaintiff filed a suit against the defendant asserting that defendant was trying to create confusion among public with regards to footwear and established false association with plaintiff to sell their products under the name of plaintiff’s mark.

17. Royal Orchid Hotels Ltd. v. Kamat Hotels (India) Ltd [SLP (C) No. 6131 of 2017]

In this, The Supreme Court dismissed the petition and observed that respondent was the first user of the mark. The petitioner adopted the Trademark ‘ROYAL ORCHID’ and ‘ROYAL ORCHID HOTELS’ under class 42 which was rejected by Deputy Registrars of Trademarks. Later, the IPAB allowed the mark for registration. The High Court observed that the said two marks being similar would create confusion among the public using the Hotels.

18. Puma Se & Anr. v. Nikhil Thermoplast Ltd. & Ors. [CS (COMM) 992/2016]

The plaintiff moved towards the court for permanent injunction against the defendant for encroachment of trademark, passing off, damages etc. The defendant was using the mark ‘ROCK-STEP’ using a device/logo same as of plaintiff’s Form Strip logo. The injunction was granted.

19. Tata Sons Ltd. vs Sunil Kumar Jangra & Ors. [CS (OS) 2297/2011]

The court granted permanent injunction against the defendant and restraining it from advertising, or moving of goods under the trademark ‘TATA’. The Defendants had started a service under the name ‘TATA Safe Packers and Movers’. The court held that the said given trademark was confusing and similar to the Plaintiff’s registered trademark.

20. The Singer Company Limited & Anr. vs. Ms. Anshu Singh [CS (COMM) 1584/2016]

In this case, The Court observed that the plaintiff is the first user and proprietor of the trademark ‘SINGER’. The Court permanently restrained defendant from using the given mark and to cancel all the trademarks voluntarily.

21. Prudential IP Services Limited v. Prudential Prosperities Company Pvt. Ltd. & Ors. [CS (OS) 3325/2015]

In this case, the Court decided that the Plaintiff’s trademark holds worldwide reputation and acquired goodwill and defendant has used the said mark without any permission. The court, thus, observed that use of the said mark amounts to infringement and passing off. The court granted permanent injunction to the plaintiff and costs of damages.


 

BY:-

ANKITA MISHRA