In this series we bring you the 10 interesting judgments related to trademark law from the year 2020.

1. HT Media Ltd. & Anr. vs Brainlink International, Inc. CS (COMM) 119/2020 IAs 3767-3771/2020

Court – Delhi High Court

The Court noted that Brainlink had not legitimately used the impugned domain name since 2000 and was squatting upon it only to earn profits from Hindustan Times (HT). The case filed by Brainlink in the US was also considered oppressive by the Court, since there was no assertion of trademark rights by HT in the US.  The Court granted a temporary ex-parte injunction from infringing the trademarks and for proceeding against HT in the US. Our coverage of the same can be accessed here.

2. MS Industries And Spirits Pvt. Ltd. vs Allied Blenders CMA NO. -180, 181 AND 182 OF 2020

Court - Telangana High Court

The Court observed that Order 39 Rule 3 of Civil Procedure Code is not optional and that the requirement for a reasoned order while granting an ex parte injunction, cannot be held to be a mere formality. It acknowledged that there could have been reasonable difficulty in disposing the interim injunction application in March, April or May 2020 given the COVID 19 pandemic, however, there was no reason why the order for ex parte interim injunction was granted without substantiating the same. Our coverage of the same can be accessed here.

3. Shri Shakti Schools Pvt. Ltd. vs M/s Chirec Public School CMA No.160 OF 2020

Court – Telangana High Court

The Court held that education is not a product of consumption, such as medicine or food item and a customer would not be misled by use of similar school names. Our coverage of the same can be accessed here

4. Emami Ltd. vs. Hindustan Unilever Ltd. Adhoc Appeal No. 159 of 2020

Courts – Bombay High Court and Calcutta High Court

When the Black Lives Matter campaign stirred the world, HUL was forced to rebrand “Fair and Handsome” to “Glow and Handsome”. Resultantly, Emami (owner of “Fair and Handsome”) and Hindustan Unilever were at loggerheads regarding use of the trademark Glow and Handsome. Our coverage of the fierce battle can be accessed here, here and here.

5. Hindustan Unilever Ltd. vs. Endurance Domains Technology LLP & Ors. LC-VC-GSP-24 OF 2020

Court - Bombay High Court  

HUL filed the case seeking injunction against various rogue websites that were infringing its trademarks and duping innocent public. It got an injunction against the listed websites. It also prayed before the Court to devise a suitable mechanism and pass appropriate orders to effectively deal with any further fraudulent domain names/websites/email addresses/id encountered by HUL. The Court held that HUL has enough resources to make repeated applications whenever it comes across an infringing domain name. The Court stated, “Eternal vigilance is not just the price of liberty; it is also the cost of doing large-volume business. It does not think it is for any court to come up with mechanisms to protect the Plaintiff’s interest at low or no cost, or by turning a plaintiff into judge, jury, and executioner, let alone sub-contracting out what the Court believed to be a serious judicial function of assessing and balancing rival merits. What should or should not be suspended (or blocked) is for a government to decide, not some litigant.”

Our coverage of the case can be accessed here.

6. Arudra Engineering Private Ltd. vs. Patanjali Ayurved Ltd. C.S.No.163 of 2020

Courts - Supreme Court of India and Madras High Court

Arudra appealed before the Supreme Court against an order of the division bench of Madras High Court granting interim relief to Patanjali seeking suspension of the operation of the injunction order against it for 2 weeks.  The Supreme Court refused to interfere with the order of the division bench of the Madras High Court and noted that the matter is already listed for hearing before the Madras High Court and that Arudra was at liberty to pursue it there. Our coverage of the Coronil Case can be accessed here, here and here.

7. M/s Aman Engineering Works vs. Registrar Trade Marks, Trade Marks Registry, New Delhi & Anr. C.M. (M) 388/2020

Court - Delhi High Court

The Court stayed the order of a Senior Examiner of TradeMarks Registry, which condoned the delay of 17 years to review certain trademark applications. The Court   held that the issue of the jurisdiction of the Senior Examiner to condone the delay beyond a maximum period of 60 days provided under the Rules, requires its consideration. It would also have to test how the delay of over 16 years has been condoned and the review applications were allowed. Our coverage of the case can be accessed here.

8. Designarch Consultants Pvt. Ltd. vs. Jumeirah Beach Resort LLC (CS(COMM) 366/2020)

The Court granted an injunction against Jumeirah restraining it from initiating any groundless legal action against Designarch in relation to the trademark infringement and/ or passing off of its trademark “BURJ AL ARAB” and ship shaped hotel device

Our coverage of the case can be accessed here.

9. Mittal Electronics vs. Sujata Home Appliances (P) Ltd and Ors. CS (COMM) 60/2020

Court – Delhi High Court

The Court concurred with the ratio in the landmark Nandhini Deluxe Case and allowed Sujata to manufacture and sell water purifiers, water filters, and RO systems under the mark “SUJATA”, since they were not being manufactured or sold by Mittal Electronics (“Mittal”), the registered proprietor of “SUJATA” under class 11. Our coverage of the case can be accessed here.

10. Pepsi Co Inc. vs. Magfast Beverages OS No. 95 of 2004

Court - City Civil Court of Hyderabad

Magfast and PepsiCo filed suits against each other. Each claimed to be the proprietor of the mark MOUNTAIN DEW and sought injunctive relief against the other. PepsiCo was not able to persuade the judge that Magfast was at fault, in adopting and using the mark Mountain Dew prior to its own use of the mark in 2004. At the same time, Magfast, having claimed that its mark was used for goods which were different from the goods for which PepsiCo had adopted the mark, could not itself claim infringement against PepsiCo. Magfast was not able to persuade the judge that PepsiCo had infringed or violated the mark by launching its product in the year 2004.

Our Coverage of the case be accessed here.