Ratio Decidendi

Territorial jurisdiction of court - Trademark Section 134 and Copyright Section 62 are not in exclusion to Section 20 of CPC

Delhi High Court has held that territorial jurisdiction of a Court in a trademark action could be invoked where there is use 'upon' or 'in relation' to goods. It noted that the phrase 'in relation to' includes advertising, promotion, etc. The court was of the view that today in the age of e-commerce and online businesses, the defendants' conduct of seeking franchise queries in Delhi would itself confer jurisdiction of this Court under Section 20 of the CPC. It observed that a test to hold that unless and until an outlet is set up there would be no jurisdiction, would be too stringent.

The Single Judge thus held that in addition to actual sale of goods and providing services, if a person advertises his or her business under the mark in a territory, promotes his or her business under the mark in a territory or invites franchisee queries from a particular territory, sources goods from a particular territory, manufactures goods in a particular territory, assembles goods in a particular territory, undertakes printing of packaging in a particular territory, exports goods from a particular territory, it would constitute 'use of a mark'.

The court also noted that Section 134 of the Trademark Act and Section 62 of the Copyright Act are in addition to and not in exclusion of Section 20 of the Civil Procedure Code, and if the plaintiff can make out a cause of action within the territorial jurisdiction of the Court under Section 20 of CPC, then no reference needs to be made to Section 134. The Supreme Court judgment in the case of IPRS v. Sanjay Dalia and Delhi High Court's Order in Ultra Home Construction Pvt. Ltd. v. Purshottam Kumar Chaubey, were relied upon. [Burger King v. Techchand 17221/2015, I.A. 17220/2015 and I.A. 23496/2014 in CS (COMM) 919/2016 & CC(COMM) 122/2017, decided on 27-8-2018,Delhi High Court]

Maggi, a well- known trademark, to be protected for kitchen/household products

Observing the popularity and large range of products which are sold under the registered trademark 'MAGGI' Delhi High Court has held that the mark is to be protected not just in respect of products which are similar to those for which the trademark is registered and used but also in respect of other cognate/allied products including products used in kitchens and households.

The Defendant was using the trademark 'MAGGI' in respect of 'Roti Maker' while Plaintiffs sold a large range of products including noodles, sauces, soups, etc. under the trademark 'MAGGI' in Indian and international markets. The court observed that the usage of the word 'MAGGI' in 'MAGGI Roti Maker', which is also is a kitchen product, would result in infringement and passing off.

It was also held that the mark's long use in India and abroad as also in advertising, clearly shows that the word 'MAGGI' is now a well-known trademark, not only in India, but internationally as well. [Societe Product Nestle v. Shiny Electricals Pvt. Ltd. - CS(COMM) 1 175/2016, decided on 278-2018, Delhi High court]

Trademark in combination of commonly used parts

The Delhi High Court has restrained a company from using marks "Everest Coconut Oil" and "Everest Jasmine Hair Oil" which were prima facie held to be deceptively and confusingly similar to plaintiffs' marks for "Parachute" (lables), flag device, broken coconut device, Parachute bottle/jar and Parachute Advanced Jasmine (labels). The Court observed that the get-up of the plaintiff's goods was not only novel, but distinctive and acted as a source identifier, even though it consisted of a combination of commonly used parts.

It noted that through-out the proceedings the defendant persisted in retaining the elements like blue colour similar to plaintiff, bottle shape identical to plaintiff, a flag device with the brand EVEREST written in a script almost identical to the plaintiff's PARACHUTE, almost identical device of broken coconut with a splash of coconut water, almost identical coconut tree, and all descriptive and other written material in white on the blue background.

The court noted that the plaintiff was not claiming exclusivity in blue colour as a stand-alone factor, but in a combination of factors, which includes the blue colour. Defence of delay and acquiescence was also rejected for this purpose. [Marico Ltd. v. Mukesh Kumar I.A. No. 14758/2016 in CS(COMM) 1569/2016, decided on 27-8-2018, Delhi High court]

Trademark - Delay in moving court for infringement not fatal

The Delhi High Court has held that delay is not fatal in a case of infringement since every infringement of a registered trademark is a recurring cause of action. The defendants had claimed that they started their business in 1995 and the Single Judge in the impugned order had held that the plaintiffs had delayed in moving the court and therefore, stood disentitled for interim relief. The Division Bench of the Court, however, observed that opposition to the defendants application for registration was pending, and that there was no evidence to establish that the plaintiff was aware about defendants user. The court also took note of the fact that there was no figure or document supporting any sale of the defendant's products and use of the trade name. It was also held that mere filing of opposition to an application for registration of a trademark would not entitle an inference that the appellant was aware of the situation of the respondents.

Further, setting aside single judge Order, it was held that the defendants/respondents trademark OMEX was deceptively similar to registered trademark MEX of the plaintiff/appellant. It was held that the addition of the letter 'O' to 'MEX' by the respondents makes no difference at all. Defendant was restrained from using the mark also noticing that the defendants were also in the same area of business activity and trade. [Mex Switchgears v. Omex Cables FAO(OS) 267/2017 & CM No. 36340/2017, decided on 3-82018, Delhi High court]

IPAB can hear copyright matter in absence of Member Copyright

The Delhi High Court has held that though it may be apposite for the government to appoint Member Technical (Copyright), a vacancy in this regard does not impinges upon jurisdiction of the Act. Setting aside the Order passed by Registrar IPAB, the Court observed that the Copyright Rules, providing for composition of Copyright Board, serve no purpose after amendment by the Finance Act 2017 with effect from 26-5-2017. It was noted that Copyright Act, itself, does no longer provide for constitution of a Copyright Board. The court was of the view that Appellate Board constituted under Section 83 of the Trademarks Act would also have jurisdiction to perform functions under the Copyright Act. [Radio Next Webcastion v. UOI Order dated 27-9-2018 in W.P.(C) 5893/2018 & C.M. No. 22982/2018, 32754/2018]

News Nuggets

Posting copyrighted photo from freely accessible website, on another site 

Court of Justice of the European Union has held that the inclusion of a work, which is freely accessible to all internet users on a third-party website with consent of copyright holder, on a person's own publicly accessible website, constitutes 'making available of that work to the public'. CJEU in Land NordrheinWestfalen v. Dirk Renckhoff noted that the work was first copied onto a server and then uploaded on another website, and hence constituted making available same to new public. It also noted that if the holder of the copyright decides not to continue the communication of his work on the website on which it was initially communicated with his consent, the work would still remain available on the website in which it has been newly posted, thereby effectively nullifying the Author's right to end the exploitation of the work.

Trademark when cannot be indicative of geographical origin of goods/service

Court of Justice of the European Union has held that word sign 'Neuschwanstein' designating the castle bearing that name could not be indicative of geographical origin of the goods and services it covers. It observed that the castle was famous not for the souvenir items it sells or the services it offers, but for its unusual architecture. The Court in Bundesverband Souvenir v. EUIPO held that it could not be said that in the mind of relevant public, the place of marketing was as such a description of quality or essential characteristic of the goods and services covered by the said trade mark. The appellant had sought appeal against General Court Order dismissing action seeking annulment of the decision of the EUIPO in invalidity proceedings.

Interim relief denied against use of words DON'T BE A BAKRA in advertisement

The Delhi High Court has allowed defendants' to continue with use of words DON'T BE A BAKRA in an advertisement which was alleged to be disparaging plaintiffs' advertisement and giving impression to public that plaintiffs are fooling them with false promises. It observed that use of said words does not refer to plaintiffs and denigrate plaintiffs' services. The Court in Global Car v. Droom Technology noted that on settlement with plaintiffs', defendant had given up colour combination, font and style of tagline Car Becho Sahi Price Mein and posture of their mascot.

Trademark infringement - Bombay HC imposes exemplary costs

Observing that the defendant was a habitual offender, copying trademarks of pharmaceutical products of well-known companies, Bombay High Court has imposed a huge cost of Rs. 15 million. Court also took note of the fact that goods were not of standard quality. The court in Glenmark Pharmaceuticals Ltd. v. Curetech Skincare observed that pharmaceutical companies have greater responsibility before public. Directing all Directors to give undertaking, court noted that the conduct of the defendant was not only dishonest but audacious.

Visual, phonetic and conceptual similarity in 'Seven' and 'Sevenfriday'

In a case involving comparison of marks SEVEN and SEVENFRIDAY, CJEU has held that the existence of similarity between two marks does not presuppose that their common component forms dominant element. The Court in Sevenfriday AG v. EUIPO observed that though the consumer generally pays greater attention to the beginning of a mark, both parts should be taken into consideration for comparison. Observing that there was average degree of visual, phonetic and conceptual similarity between the marks, it was held that there was likelihood of confusion on the part of the relevant public.