Delhi High Court restrains threats of infringement of Burj Al Arab’s shape

In the matter of Designarch Consultants Pvt. Ltd. & Anr. v. Jumeirah Beach Resort LLC [I.A. No. 7792/2020 in CS(COMM) 366/2020], the Delhi High Court, vide its order dated September 10, 2020, has granted an ex parte ad interim injunction restraining Jumeirah Beach Resort LLC (Defendant) from threatening Designarch Consultants Pvt. Ltd. (Plaintiff) with respect to the shape of the Plaintiff’s building.

The Plaintiff is engaged in the construction business and is the proprietor of trademark BURJNOIDA in class 37 (for building and construction services) as of February 2, 2011, which it claims to have been using since December 24, 2010. The Plaintiff is in the process of constructing the “Burj Noida” tower and owns several copyright registrations for BURJNOIDA, including for the shape of the planned building, as well as a trademark registration for.

The Defendant issued a legal notice to the Plaintiff on August 13, 2020, alleging infringement of its trademarks BURJ AL ARAB and

 and its copyright in the shape of the ‘Burj Al Arab’ hotel building located in Dubai, UAE. The Defendant owns various trademark registrations for its mark BURJ AL ARAB in India, but allegedly not in respect of construction services. The Plaintiff had filed the instant suit seeking a permanent injunction against the Defendant, to restrain it from making allegedly groundless threats of trademark and copyright infringement.

The Plaintiff contended that there is no infringement as the word ‘Burj’ means ‘tower’ in Arabic and it is a commonly used dictionary term, thereby being publici juris. The Plaintiff further contended that the shape of its planned BURJ NOIDA building is dissimilar to the shape of the Defendant’s BURJ AL ARAB building.

The Court held that “the Plaintiffs have also placed on record material to show that the shape of defendant’s building is also not unique and there are other buildings with similar shapes. Considering the averments in the plaint and the documents filed therewith, the plaintiff has made out the prima facie case in its favour”. Accordingly, the Court directed the Defendant to give the Plaintiff 7 days’ notice before initiating any proceeding claiming infringement of the Defendant’s trademarks or shape marks. The Court also granted an ex parte ad interim injunction restraining the Defendant from extending any threat to the Plaintiff in respect of the Plaintiff’s registered mark/ logo or designs of the Plaintiff’s building until the next hearing.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Injunction granted against use of ‘CORONIL’ in relation to immunity boosting tablets

In the matter of M/s. Arudra Engineers Private Limited v. M/s. Pathanjali Ayurved Limited & Anr. [O.A. No. 258 of 2020, A. Nos. 1532 and 1533 of 2020 in C.S. No. 163 of 2020], the Madras High Court, vide its order dated August 6, 2020, granted an interim injunction restraining the Defendants from using the mark ‘CORONIL’ in relation to immunity boosting tablets for cold, cough and fever.

The Plaintiff is the registered proprietor of the marks ‘CORONIL-92 B’ and ‘CORONIL-213 SPL’ since 1993, in relation to chemical cleaning agents used for preventing corrosion of machinery. The Defendant No. 2 (Divya Yog Mandir Trust) is the applicant for the mark CORONIL in relation to tablets which were manufactured and initially marketed by Defendant No. 1 as the cure for COVID-19. Upon seeing such marketing, the Plaintiff filed the instant suit for infringement of its CORONIL marks under Section 29(4) of the Trade Marks Act, 1999. This Section provides that a registered trademark having a reputation is infringed by an identical or similar mark being used in respect of dissimilar goods and services and use of which “without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark” (emphasis supplied). The plaintiff was granted an ex parte interim injunction, which the Defendants subsequently applied to have suspended and vacated.

The Plaintiff argued that owing to lack of evidence of efficacy of the tablets in treating/preventing COVID-19, the Defendants lacked “due cause” for adoption and use of ‘CORONIL’, which was resulting in dilution of the Plaintiff’s mark. The Defendants contended that there was no infringement as their goods were completely dissimilar to the Plaintiff’s goods and their adoption of the mark CORONIL was justified as it is an immunity booster against the Coronavirus.

The Court held that in the absence of evidence of efficacy against COVID-19, the Defendants’ adoption and use of CORONIL was without “due cause” under Section 29(4)(c) of the Act. Further, while confirming the interim injunction, the Court recognized the Plaintiff’s reputation and rights in the mark and held:“It is also detrimental to the repute of the registered trademark Coronil of the plaintiff since…the general public might question whether the trademark ‘Coronil’ of the plaintiff would also not prevent corrosion by drawing the analogy of the ‘Coronil’ of the defendants, which does not cure Coronavirus…”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Ad interim injunction granted against satire web portal in Budweiser infringement and disparagement case

In the matter of Anhueser Busch Llc vs Rishav Sharma & Ors [IAs 6320/2020, 6321/2020, 6322/2020 & 6323/2020 in CS(COMM) 288/2020], the Delhi High Court, vide its order dated July 30, 2020, granted an ad interim injunction restraining the Defendants from, inter alia, broadcasting the alleged fake news of the Plaintiff’s employees urinating in its ‘Budweiser’ beer.

Defendant Nos. 1, 2 and 3 (“Defendants”) are the alleged proprietors of the website www.thefauxy.com. The Plaintiff argued that the Defendants’ posts (which include a short video) on social media, such as YouTube (Defendant No. 4) and Twitter (Defendant No. 5), perpetrated fake news stating that the Plaintiff’s employees have been urinating in its ‘Budweiser’ beer sold to the customers. The Defendants’ social media posts, as per the Plaintiff, contain no disclaimer that such news is fake or fictitious.

Alleging trademark infringement and disparagement, the Plaintiff submitted that the aforesaid video became viral and resulted in several defamatory posts across social media. Further, the Plaintiff submitted that a few publications even reported the fictitious news as being a legitimate fact. The Plaintiff contended that the Defendants have knowingly and with malice published the defamatory posts to propagate the fictitious/fake news of the Plaintiff’s employees urinating in the Budweiser beer sold to the customers.

Observing that the Plaintiff has made out a prima-facie case and established the balance of convenience in its favour, the Court held “… it is directed that the defendant Nos. 1, 2 and 3 defendant Nos. 1, 2 and 3, their partners, agents, assigns, officers, servants, affiliated entities, as the case may be, and all others acting for and on their behalf are restrained from reproducing, broadcasting, communicating to the public, screening, publishing and distributing the impugned video or any other video on any media or platform and promoting the impugned video on various social media amounting to infringement of plaintiff’s registered mark ‘Budweiser’ and also amounting to commercial disparagement of the plaintiff’s products including but not limited to the video / post published on the following four URLs till the next date of hearing….”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Differences in font and style sufficient to render trademarks dissimilar

In the matter of Shri Shakti Schools Private Limited v. M/s. Chirec Public School [Civil Miscellaneous Appeal No. 160 of 2020], the Telangana High Court, vide its order dated July 3, 2020, refused to grant an interim injunction to Shri Shakti Schools Private Limited (Appellant) in a trademark infringement suit, finding that there is prima facie dissimilarity between the font and stylization of the parties’ trademark CHIREC.

The Appellant provides educational services at its schools ‘CHIREC PUBLIC SCHOOL’ and ‘CHIREC INTERNATIONAL SCHOOL’ in Hyderabad. The Appellant claimed that it has been using the trademark CHIREC since 1989 and has acquired exclusive rights therein. The Appellant alleged that in February 2017, it learnt of the Respondent’s use of an identical mark – CHIREC PUBLIC SCHOOL, for educational services offered at a school in Karnataka. The Appellant claimed that the Respondent’s unauthorized use amounts to infringement of the Appellant’s registered trademark CHIREC. After a cease-and-desist notice issued to the Respondent did not yield compliance, the Appellant filed the instant suit for trademark infringement. The District Court refused the Appellant’s application for interim injunction. Thus, the Appellant filed the present appeal.

The Respondent denied the Appellant’s alleged longstanding use of the trademark CHIREC in respect of educational services and claimed that the Appellant had not acquired any reputation beyond Hyderabad. The Respondent contended that it adopted the trademark CHIREC in respect of its school/educational activities in 2005 and that it was an honest and concurrent user. The Respondent further contended that the fonts and colour combination in the respective marks are entirely dissimilar. On these grounds, the Respondent asserted that it had not infringed the Appellant’s mark.

On a comparative study of both parties’ trademarks, the Court found significant differences in the font, style and colour combination applied therein, holding that “…it appears that the respondent is using the word ‘CHIREC’ with a logo and its name is written only in blue colour with same font, but the appellant is using the said trade name with different style and with different font without any logo. Therefore, it is unlikely that the parents of the children who would admit their children into the schools would be misled into thinking that the respondent is using the appellant’s trade mark…”. The Appeal was accordingly dismissed.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Defendant ordered to give prior notice of initiation of legal proceedings in a suit in which the Plaintiff alleged groundless threats by the Defendant

In the matter of Hindustan Unilever Limited v. Emami Limited [LD/VC/IA/1/2020 in LD/VC/144/2020], in which the Plaintiff alleged groundless threats by the Defendant, the Bombay High Court granted ad-interim relief to the Plaintiff vide ex-parte Order dated July 6, 2020. As per the Order, the Defendant is required to give at least 7 clear working days’ notice to the Plaintiff before initiating legal proceedings against Plaintiff’s use of the trademark ‘GLOW & HANDSOME’.

The Plaintiff claims to be the proprietor of the trademarks ‘Fair & Lovely’ and ‘Men’s Fair & Lovely’ for fairness creams. Further, the Plaintiff claims to have made a formal announcement on July 2, 2020, regarding re-branding of the aforementioned trademarks as ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ respectively, and also claims to have had filed trademark applications for the rebranded marks (in word and stylized forms) in 2018 and 2020.

Following the rebranding announcement, the Defendant allegedly released statements in newspapers, threatening to initiate legal action against the Plaintiff for violating its alleged rights in ‘Emami Glow and Handsome’.

The Plaintiff filed the instant suit, contending that the Defendant’s statements amount to groundless threats within the meaning of Section 142 of the Trade Marks Act, 1999. The Plaintiff sought the limited ad-interim relief of a prior notice from the Defendant, if the Defendant were to initiate any proceedings against the Plaintiff, as threatened.

Considering the evidence on record, the Court was of the prima facie view that the Plaintiff is the prior adopter of the mark ‘GLOW & HANDSOME’. Granting the limited ad-interim relief to the Plaintiff, the Court observed: “…The statements made by the Defendant…do amount to a threat…the Plaintiff is pressing for a limited relief that the Defendant should give at least 7 clear days prior written notice to the Plaintiff before initiating any legal proceedings in any court or claiming any interim or ad-interim reliefs against the Plaintiff as threatened in the statements issued / made on behalf of the Defendant against the Plaintiff’s use of the trade mark ‘GLOW & HANDSOME’. Considering the facts and circumstances of the present case, I believe that no harm or prejudice would be caused to the Defendant if the said limited relief is granted.”

An Appeal to the Order (granting the ad-interim relief) was preferred by the Defendant, but the same was dismissed by the Division Bench.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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