Degree Of Similarity In Packaging And Labels Can Negate Plea Of Coincidence

In Parle Products Pvt. Ltd. & Anr. v. Future Consumer Ltd. & Ors.[I.A. No. 4133/2020 in COMM IP Suit No. 4120/2020], a Single Judge [K. R. Shriram, J.] of the High Court of Bombay (“Court”) on October 9, 2020, ruled that the Defendant’s packaging and trade dresses of its goods under the marks “CrackO”, “Kracker King” and “Peek-a-Boo” is nearly identical to the Plaintiff’s trade dresses of rival goods.

The Plaintiff claims that it is in the business of manufacturing and selling of biscuits, wafers, cakes, etc. The Plaintiff submits that it adopted the marks MONACO, KRACKJACK and HIDE & SEEK in respect of biscuits, in the years 1939, 1971 and 1996, respectively. The Plaintiff further submits that it created the packaging (see image) in respect of its goods under the marks MONACO, KRACKJACK and HIDE & SEEK in July 2013, July 2014 and May 2017, respectively.

The grievance of the Plaintiff is that the Defendant adopted the trade dresses / packaging / labels (see image) in respect of biscuits, which are identical and/or deceptively similar to the Plaintiff’s packaging and trade dresses. The Plaintiff submitted that the Defendant has copied all distinctive elements and features including the layout, color combination and placement from the Plaintiff’s packaging and trade dresses. The Plaintiff also alleges that the Defendant has intentionally stocked its goods under the impugned trade dresses / labels alongside the Plaintiff’s goods to cause deception in the mind of consumers.

The Court prima facie observed that the Plaintiff’s goods under the said packaging / trade dresses have acquired substantial goodwill and reputation. The Court also noted that “…A comparison of the rival products hardly leaves any doubt about the manner in which Defendants have blatantly copied Plaintiffs’ Packaging / labels…the rival labels are being used for identical products under nearly identical packaging and trade dresses”. The Court granted an ex parte ad interim injunction order restraining the Defendant from infringing the Plaintiff’s trade dresses / labels.

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.

Royalty Rate for Statutory Licensing Of Musical And Sound Recordings Broadcast Via Radio

In the matters of Music Broadcast Ltd. v. Tips Industries Ltd. & Ors. [SR.NO.18/2020/CR/DEL & Ors.], the Intellectual Property Appellate Board, vide its order dated September 18, 2020 held that status quo will be maintained and the rate of royalty for broadcast of musical and sound recordings via radio fixed by the erstwhile Copyright Board vide its order dated August 8, 2010 will be applicable retrospectively w.e.f. October 1, 2020.

It was submitted on behalf of the applicants that if an order for maintenance of status quo is not passed before September 30, 2020 when the licence(s) granted by the Copyright Board expires, the applicants will be forced to enter into voluntary agreements with various music labels for exploitation of the repertoire. The applicants submitted that, alternatively, an interim relief be granted to them by determination of an interim rate of Royalty/license fee to be paid for broadcast of sound recordings through radio. While objections were raised on behalf of the respondents in earlier hearings, almost all parties were agreeable to status quo being maintained in view of a final date of hearing on substantives being fixed.

The IPAB, therefore, stated that “…without going into the merits of the case, we direct that till the petitions/applications are decided, the status quo shall continue between the parties in as per order of Copyright Board dated 25th august 2010…”. In light of the applications, the IPAB has also issued a public notice notifying its intention to fix royalties for statutory licensing of musical works and sound recordings broadcast via radio, and inviting suggestions for determining the same. The public notice was issued in compliance with Section 31D of the Copyright Act read with Rule 31 of the Copyright Rules, 2013 whereby once an application is made, the IPAB is required to fix a rate of interest by following the process laid out therein.

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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Lack Of Use Indicates Lack Of Legitimate Interest In Domain Name

In the matter of Sazerac Brands, LLC v. Dean Chandler [INDRP/1243], the Arbitral Tribunal under the Indian Domain Name Dispute Resolution Policy (INDRP), vide order dated September 23, 2020, transferred the disputed domain name <fireball.in> to the Complainant.

The Complainant claimed to be using the mark FIREBALL for selling whisky internationally since 1977 and in India since 2013. The complainant claimed to be the owner of various domain names such as <fireballwhisky.com>, <fireballwhiskey.in>, <fireball.red>, etc. and trademark registrations across jurisdictions, including in India (since July 19, 2013). Aggrieved by the Registrant obtaining the domain name <fireball.in>, the Complainant initiated the instant INDRP proceeding. The complainant submitted inter alia that the impugned domain name is identical to their mark FIREBALL and is a parked page which has never been used by the Registrant. The Complainant relied on Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna [WIPO Case No. D2000-0869], to submit the fact that users once so diverted or attracted, are confronted with an inactive page does not cure the initial and illegitimate diversion.

The Registrant claimed to have registered <fireball.in> to establish an alumni network for the McMaster Faculty of Engineering, which he claimed was referred to as the ‘Fireball Family’ since at least 1995. The Registrant also claimed that FIREBALL is a generic word having a dictionary meaning and hence the Registrant is not barred from adopting the same. The Registrant relied on various cases such as Javier Narvaez Segura, Grupo Loading Systems S.L. v. Domain Admin, Mrs. Jello, LLC [WIPO Case No D2016-1199], to substantiate that a parked page generating ‘pay per click’ revenue can be deemed to be a bona fide offering of goods or services if the mark in question is a generic or non-exclusive term.  

The Tribunal observed that <fireball.in> was identical to the Complainant’s mark and that the Registrant had failed to establish legitimate interest in the said domain name. The Tribunal held “Tribunal is of the view that the Respondent has been unable to prove that it has been using the mark ‘FIREBALL’ or the disputed domain name ‘fireball.in’ in connection with a bona fide offering of goods or services. The Complainant has thus proved that the Respondent has no rights or legitimate interests in the disputed domain name”. Accordingly, the Tribunal directed <fireball.in> to be transferred to the Complainant.

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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Madras High Court Injuncts Use Of O2 Trademark

In Shyam Investments and Ors. Vs. Masti Health and Beauty Pvt. Ltd. [C.S. No. 345 of 2011], the Madras High Court vide its order dated September 11, 2020, granted a permanent injunction restraining the Defendant from infringing Plaintiffs’ registered trademarks and tradename O2 ; from passing off its business under the name  O2 SPA AND SALON as that of Plaintiff’s; and for damages of Rs. 1,00,000 and costs.

It was claimed that Plaintiff 1 had been carrying on business in the field of gymnastics, aerobics, fitness centers and other related fields under the trade name O2 since 2001 and had registrations for the O2 Logo marks. It was asserted that Plaintiff 1 had issued various notices to the Defendant before instituting the instant suit in 2011 wherein the single judge vide interim injunction (order dated 10.07.2012) restrained the Defendant from infringing the trademark of Plaintiff 1. It was also placed on record that by virtue of assignment deed dated 27.02.2017, Plaintiff 1 assigned its aforesaid trademarks to Plaintiff 2 who was part of the same group of companies as Plaintiff 1. Accordingly, Plaintiff 2 was impleaded in the suit by court order dated 02.02.2018.

The Defendant argued inter alia, that the relief sought in the plaint was with respect to Trade mark No. 1574694 which had been registered for classes 28, 42 and 5 which does not cover Spas and Salons and that Trade mark No. 1903167 in the name of Plaintiff 2 was not the subject matter of the suit and therefore there is no infringement.

The court while ordering in favour of the Plaintiffs held that “However, in the order permitting the second Plaintiff to be joined as a party to the lis, it had been noted that the second Plaintiff has a registration O2 for Spas and Salons and thereafter the application was allowed. When the Defendant themselves have not filed any additional written statement, questioning this fact, it will not lie in their mouth to assert that the Plaintiffs’ cannot lay their suit on those registration certificates… In this case, it was very essential for the Defendant to have filed an additional written statement…There can be no doubt the Trade mark O2 can be pronounced in only one way. Both the marks of the Plaintiffs and the Defendant are phonetically exactly the same.”

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 In Favour Of Ching’s SCHEZWAN CHUTNEY Trade Dress

In the matter of Capital Food Pvt. Ltd. v. Radiant Indus Chem. Pvt. Ltd. [I.A. 8147/2020, 8148/2020 and 8149/2020 in CS(COMM) 379/2020], the Delhi High Court, vide Order dated September 16, 2020, granted an ad-interiminjunction against the Defendant’s reproduction and imitation of Plaintiff’s original works in its marketing and advertising content as well as unauthorized use of a similar trade dress.

The Plaintiff claims to be the registered proprietor and user of the trademarks ‘SCHEZWAN CHUTNEY’‘CHING’S’ and ‘CHING’S SECRET’ in word and/or stylized forms in India, in respect of its range of ready to eat food products like dips, spreads, etc. The Plaintiff allegedly came across the Defendant’s product “Mrs. Food Rite SCHEZWAN CHUTNEY” for saleon an e-commerce platform. The Plaintiff also allegedly discovered that the Defendant has, on its social media page, copied the Plaintiff’s marketing and advertising content in relation to its claimed brand ‘SCHEZWAN CHUTNEY’.

The instant suit was filed alleging imitation of the Plaintiff’s original works in the marketing and advertising material, unauthorized use of an identical trademark and a similar trade-dress – all in relation to the Plaintiff’s ‘SCHEZWAN CHUTNEY’ product.

PLAINTIFF’S LABELDEFENDANT’S LABEL

The Defendant contested the Plaintiff’s allegations by asserting that ‘SCHEZWAN CHUTNEY’ is generic and descriptive in respect of Indianized Chinese cuisine. The Defendant also relied on its ‘MRS. FOOD RITE’  mark being prominently displayed on its products.

While adjudicating on the interim applications, the Court took the view that ‘SCHEZWAN CHUTNEY’ is a descriptive term. Basis its prima facie findings vis-à-vis inter alia similarity in features of trade-dress, however, the Court granted an ad-interim injunction and held “…since the plea of the plaintiff is that there is a similarity of the trade dress, get up and SCHEZWAN CHUTNEY has been written in a highlighted manner so as to form a prominent label mark in red colour and that the defendant has also reproduced and copied its original works for marketing and advertising contents, this Court deems it fit to grant an ad-interim injunction…”

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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