Infringement of Trademark and Grant of Injunction

In a case of infringement of trademark injunction would ordinarily be granted where it is established that the defendant had infringed the trademark and had not been able to discharge its burden as regards the defense taken by it. It is therefore, directed in Ramdev Food Products Pvt. Ltd. versus  Aravindbhai Rambhai Patel by the Supreme Court that – 1)The respondents be restrained from using the trade name “Ramdev Masala” in any of their products; 2)They may, however, carry on their business in any other name insofar as manufacturing of spices is concerned; 3) The appellant shall, as and when demands are made, supply spices produced by it for retail sale thereof to seven outlets belonging to respondents on usual terms; 4) The appellant shall deposit a sum of Rs. 50 lakhs before the Trail Court or furnish a bank guarantee for the said sum by way of security; 5) Despite pending applications for specification before the Registrar of Trademarks, the final hearing of the Civil Suit shall be expedited and completed preferably within the period of six months from the date of communication of the order.

infringement

Use of the plaintiff’s mark by the defendant beside constituting infringement and passing off as well as unfair trade competition also amounts to dilution of mark. The plaintiff is entitled to permanent injunction. The plaintiff company is engaged in business of manufacturer and sale of perfumery, cosmetic, hair-lotions, bleach cream preparations etc., with the mark “SIMCO”. Mark “SIMCO” of the plaintiff was adopted by the defendant company and it was also engaged in perfumery, essential oil business. The defendant company sought for trademark registration in respect of perfumery and cosmetic which are absolutely identical goods. The plaintiff is entitled to the relief of injunction.

Infringement of Trademark: Interim Injunction not Granted

In International Applications of Lions Clubs versus Association of Lions India, filed a suit of interim injunction and other reliefs after 14 years from the date of service of notice on the defendant for using the similar name, trademark and logo. Thus, the plaintiff was not entitled to add-interim injunction. But to secure interest of the unwary public the defendant was directed to give wide publicity of the fact that the defendant-Association is neither constituent nor affiliated to the plaintiff-Association. The Bombay High Court in another case refused to grant interim injunction on the ground of delay for one year to file the suit in spite of knowledge of infringement. For example, the plaintiff was the prior user of the  trademark  “Aachi”. The defendant company was incorporated as Aachi Cargo Channels Private Limited. The plaintiff was running the business of spices. The defendant rendered cargo services. Both were operating in different fields having no connection and no similarity in goods manufactured or services rendered. There is no likelihood of causing any confusion in the minds of the public that the business of the defendant was that of the plaintiff. No parameter provided in section 29(4) of the Trade Marks Act, 1999 was satisfied.

Infringement of Trademark – Interim Injunction

infringement

The registered trademark of the plaintiff is “Ultratech Cement”. The said trademark is used by the plaintiff on exclusive scale in respect of cement. The defendant was using the trademark “Ultratuff Cement” in respect of cement subsequently. The fact is that the plaintiff’s mark was registered without any disclaimers or limitations showing that the word “Ultra Tech” is a distinctive mark and the plaintiff had satisfied the criteria laid down in section 9 and section 11 of the Trademarks Act, 1999. Though the word Ultra Tech is not separately registered nor is a subject of separate application for trademark registration, yet the same being distinctive shall not be hit by section 17(2) of the Act. The plaintiff is entitled to interim injunction. Hence, even words “ULTRA” or “ULTRATECH” are not subject-matter of the separate application, case is covered by the sub-section (1) of section 17 of the Acts. Product of the plaintiff and the defendant was identical. Similarly between two marks was striking that it would create confusion in minds of the users of the product. The case of plaintiff would fall under section 17(1) of the Act and as such the plaintiff was entitled to infringement injunction.

Infringement of Registered Trademark – Injunction Granted

In Dhunsri Tea & Industries Ltd. Versus Dhansiri Plantation Pvt. Ltd., the appellant has registered trademark of “DHUNSERI” for the purpose of tea and other various allied articles. The respondent used the word “Dhansiri” with slight difference in spelling which sounds phonetically the same. It was held that in view of the fact that large percentage of population are illiterate, they are likely to be deceived or confused in respect of goods which are covered by trademark registration. Thus, the appellant was entitled to injunction. In  Ranbaxy Laboratories Ltd. versus PE MM Sp. ZO. O, the plaintiff company is proprietor of registered trademark “RANBAXY”. Its trademark is registered in 62 countries including India and Poland.

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It has spent a lot of money and effort in developing and marketing its products under the trademark “RANBAXY”. It is also registered owner of domain name www.ranbaxy.com. The defendant does not have any interest in the name “Ranbaxy” and it is also not registered proprietor of the same. Thus, the plaintiff was entitled to a decree of injunction. Injunction being an equitable remedy is governed by the principles of primary case, balance of convenience and irreparable injury. Thus, where the agreement is silent with regard to copyright for the word “MILKA” for cakes and trademark “MILKA” was not the subject-matter of the agreement, rejection of prayer for infringement of injunction by overlooking relevant documents is not proper.

Infringement of Trademark, No Interim Relief Granted

Plaintiffs in Rajesh Chheda versus Shubham Plywood Park, Mumbai were carrying on business of plywood and were owners of registered trademark “SHABHAM” along with the symbol of Swastik. Defendants were already doing business under the name and style of ” SHUBHAM SANITARY & HARDWARE”. They subsequently adopted the name SHUBHAM PLYWOOD PARK for plywood business. But defendants were not using logo “SHUBHAM” with swastik mark and not selling plywood by using trademark registration of plaintiff on plywood. Thus, the infringement of Interim Injunction relief as claimed by plaintiff cannot be granted.

Infringement of Trademark by Advertisement against reputation

infringement

Respondent and appellant both were manufacturers of pain relievers. Respondent in T.V. Commercial showed by way of advertisement a pain reliever in same color similar to the appellant’s product which sent an indirect message and suggestion that the product of the appellant had been acquired good quality for remedy of backache, lower backache and joint pain and that the respondent product was better and true pain reliever. It was held that it amounted to infringement of trademark registration to the appellant. There, relief by  way of infringement of injunction was granted.

Infringement of Trademark and Claim for Injunction

Where the trademark RANGILI used by the defendants for Agarbati was structurally and phonetically similar to the registered trademark RANGOLI of the plaintiff and confusion was likely to be created in the minds of the customer of average intelligence who are purchasing Agarbati .There are infringement of the trademark registration and injunction would be granted restraining the defendants from using the mark RANGALI.

Removal of Label : Infringement

infringement

In Microsoft Corp. versus Computer Future Distribution Ltd., there was a cause of removal of labels with distinguishing marks on them. It was not repackaging case as no substitute labels were affixed. The case is thus a combination of the law on exhaustion of trademark rights and repackaging. Microsoft applied for summary judgement against CFD claiming injunction for infringement of Trademark registration, copyright and passing-off in respect of CFD’s sale of Microsoft’s software. The Court granted summary judgement holding that with respect of trademark infringement , CFD has deliberately destroyed Microsoft’s outer packaging to facilitate sales of the software in a manner which Microsoft had not Authorised.

Infringement : Onus to prove

It was well settled that the plaintiff mast prove the essential features of his registered trademark have been copied. The ‘onus’ to prove deception is on the part of the plaintiff who alleges infringement. A mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its ” essential feature”. The identification of essential feature depends partly on the Courts own judgement and partly on the burden of the evidence that is placed before it. Ascertainment of an essential feature is not to be the ocular test alone; It is impossible to exclude consideration of the sound of words forming part or the whole of the mark.

infringement

The plaintiff was using registered trademark “RED HAT” as well as “SHADOWMAN” device under various classes. RED HAT was well-known trademark and had acquired a goodwill in India and abroad as well. The defendant used the trademark RED HAT as part of their corporate name. Registration of name of the company under the Companies Act would not entitle them to use it. Merely because the plaintiff applied for trademark registration mentioned “proposed to be used” user of the said trademark in other countries not to be ignored. Hence, the defendant can be said to have infringed trademark of the plaintiff.

Infringement of Trademark: Passing-off Action

The Plaintiff having a registered trademark PRESTIGE in respect of non-electrical cooking utensils, where as the defendant started selling the pressure cooker under the trade name PRE/STAGE. The defendant had no right, title or interest in the trademark in relation to goods under the class 21 specifically the pressure cooker. So far as challenging the validity of the trademark is concerned. It can be done in rectification proceedings. Since no rectification proceedings were filed, the court declined to go into that question. In case the plaintiff used the trademark 555 whereas the defendant was carrying on its business under the trademark “VR” with the device of swan and the numerals 555. No satisfactory explanation was offered by the defendant as to how he came to adopt the trademark 555. Adoption of the mark registered in the name of the plaintiff by the defendant for his products cannot be considered to be honest. The plaintiff was entitled to injunction as prayed for. In another case a suit was filed by the plaintiff for a perpetual injunction restraining the defendant from manufacturing and selling under the trade name HOWRAH BIRI. In view of the fact that the defendant SUPER BIRI 202 , the plaintiff filed to make out the primary case for interim injunction.

infringement

The plaintiff company has been using the name “Infosys” in its business concern two decades. Products and services of the plaintiff company under this brand name have become distinctive to that company. Use of such name by the defendant company in IT-related services is likely to create impression of connection with the plaintiff company. This impression is likely to cause confusion in the minds of the customer as regards source of services being offered to him. Hence, the use of expression INFOSYS by the defendant while offering IT-related services constitutes infringement under section 29(2) of the Trademarks Act, 1999.

Innocent Infringement

In Fram Mfg. Co. versus Eric Morton and Co., the proprietor of the trademark who had formed the company of which he was the principal shareholder to sell the goods to which the mark was applied, but had not assigned the Trademark to it, was held to be entitled to an injunction and to restrain infringement of it, but not to damages, as he had suffered none, and the Company were not his agents. In this case the defendants pleaded innocence. But damages were refused on the ground that the plaintiff was not as a shareholder of the company entitled to damages.

Infringement of Trademark and Domain Name

infringement

Suit for permanent injunction was instituted by the plaintiff for restraining the defendant from using the trademark/domain name www.tatainfotech.in or any other mark/domain name which is identical with or deceptively similar to the plaintiff’s trademark TATA/TATA INFOTECH – WHOIS search conducted on registry website for domain name www.tatainfotech.it clearly showed that it was created on February 19,2005 in the name of the defendant. E-mail correspondence between contesting parties also conclusively demonstrated that the defendant not only had the knowledge that the plaintiff was  a legitimate owner and the user of the trademark TATA INFOTECH, but also get impugned domain name registered deliberately in bad faith, to take unfair advantage of distinctive character and repute of the plaintiff trademark. This, infringement of injunction was granted.

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