In the matter of Kamdhenu Limited v Aashiana Rolling Mills Limited [I.A.647/2018 in CS (Comm.) 90/2018], a single judge [Prateek Jalan, J.] of the High Court of Delhi vide judgment dated May 12, 2021, ruling in the favour of the defendant, has held prima facie that published standards constitute prior publication of a design.

Section 4(b) of the Design Act, 2000 (the Act) states that “A design which – has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or…shall not be registered”. The question therefore arises if limited disclosure for compliance with published industry standards amounts to publication in a way?

The plaintiff contended that conformity to acceptable standards for production of goods (published standards) cannot render a design prior published. It further submitted that such a finding would denude several designs of protection by reason merely of compliance with published standards. The defendant contended that the plaintiff’s design was not an original design, but one which had been disclosed by publication prior to the date of the plaintiff’s application for registration, contrary to Section 4 of the Act. In support of its claim, the defendant relied on procedures in several International standards such as British Standard B500C, the German Standard of 1984, the Polish Standard of 2006, International Standard 6935-2 of 2007 etc.

The court accepted the defendant’s claim that such compliance with published standards requires approval from the members of the organization. The design is therefore circulated among all the members which amounts to publication. The court further observed that, “if a document is to constitute prior publication then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind’s eye and should not have to depend upon his own originality to construct the design from the ideas which the document may put into his head.”

The court concluded and held that compliance with published standards is sufficient to constitute prior publication. Therefore, the design under the present case, was incapable of registration under the Act. In addition, it was stated that, “The situation would have been different if the standard had been of a characteristic which was not related to the design but to some other feature of the product, for example, the length of the rod, its weight, etc. Where the novelty claimed by the owner of the registered design resides in the very element which is described in the standard with a reasonable degree of specificity, the design cannot be said to be novel or original.”

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In the matter of N. Dinesh Kumar v. Shweta Khandelwal [Miscellaneous First Appeal No. 790/2021], a Single Judge [P. Krishna Bhat, J.] of the Karnataka High Court vide judgment dated March 15, 2021, held that the main question that arises for consideration is – “whether there is a likelihood of confusion arising between the two trademarks, in the mind of a ‘quintessential common man’ who looks at any one of them for a fleeting second and whether he is likely to take it for the other trademark?”

Section 2(1)(h) of the Trademarks Act, 1999 defines “deceptively similar”.—A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion”. The section does not specify to whose eyes should there be near resemblance. Nor does it specify the type of person whose likelihood of confusion or deception should be determinative. The test can be from the perspective of several possible different persons such as either the quintessential common man or the participant in the relevant channel of trade or the informed consumer. 

The name ‘Matru Ayurved’ was used by the Plaintiff  for doing business since 2015. Defendant started a business with the name ‘Matruveda’ in the year 2018. In the suit, the City Civil Court granted a temporary injunction restraining the infringement and passing off of the mark. 

In appeal before the Karnataka High Court, Defendant argued that the “plaintiff had started her business under the tradename and trademark ‘Matru Ayurveda’ which is laid inside a logo and similarly the appellant/defendant had started his business under the tradename ‘Matruveda’ with a logo and there is no such resemblance between the same as will lead any purchaser of the products of either party to confuse between the same”. The Defendant also argued that there were several other manufacturers who are using trademarks closely similar to the trademarks of the parties with the prefix ‘Matru’.

Vacating the order of the City Civil Court, it was held by the High Court that while deciding such cases, one should have in mind “the ‘quintessential common man’ who goes to the neighbourhood shop with the idea of purchasing a product of his liking. This ‘quintessential common man’ is neither blessed with the wisdom of Solomon nor the trained eyes of Sherlock Holmes. …In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered.

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In the matter of M/s Phenomenon Agents Limited v. Ganga Devi [Com.O.S.No.9485/2018], a Single Judge [H.R. Radha, J.] of the District Court of Bangalore vide an order dated May 24, 2021, granted a perpetual injunction restraining the defendant from using the mark ‘SMART AKAI’ and ‘GOLDEN AKAI’ and/or any other mark deceptively similar to the plaintiff’s registered ‘AKAI’ mark and ordered to pay Rs 1,00,000/- as damages to the plaintiff.

Section 135(1) of the Trademarks Act, 1999 provides that ‘the relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure’. The question can arise whether proof of at least some actual damage is required to succeed on opting for damages instead of account of profits. Further, even if it is not required to succeed on ordinary damages,  whether it is required to succeed on exemplary damages? 

The plaintiff contended that its registered  trademark ‘AKAI’ has become a household name in India since 1990 and the defendant has infringed and passed off its goods under the name ‘SMART AKAI’ and ‘GOLDEN AKAI. The plaintiff claimed that it suffered intangible loss in terms of loss of confidence and trust of its customers. Taking loss of goodwill and reputation into consideration,  it should be awarded exemplary damages of Rs 1,00,000/-. The plaintiff however could not adduce any evidence to be able to justify the quantification.

Without filing its Written Statement, the defendant appeared through its counsel only for arguments. 

Decreeing a perpetual injunction, the Court held that though “the plaintiff has not established the actual damage or damage caused to the goodwill or its reputation. Nor has it examined any independent witness to establish that the defendants’ action has resulted in dilution of trust and confidence of the customers in AKAI products…However having regard to the peculiarities of such type of cases involving intellectual property rights and the established principles of law that rough and ready calculation for award of general damages can be adopted,..”.

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In the matter of M/s Golden Tobie Pvt. Ltd. v. M/s Golden Tobacco Ltd., a [I.A. No. 6080/ 2021 in CS(COMM) 178/2021], the High Court of Delhi [J Nath, J.] by judgement dated June 04, 2021, held that disputes related to Trademark License Agreement are arbitrable because the rights under a Trademark License Agreement emanate from a contract and is not a statutory right.

The Court in this case took note of Section 8 of the Arbitration and Conciliation Act, 1996, which gives “Power to refer parties to arbitration where there is an arbitration agreement” and Schedule-3 of the agreement, which mentions the exclusive brands of the Defendant, i.e., “Golden’s Gold Flake, Golden Classic, Taj Chhap, Panama and Chancellor”. The underlying question in this case is seen to be whether the Trademark License Agreement is arbitrable, or in other words, whether the dispute is prima facie arbitrable under a valid arbitration agreement.

The Plaintiff entered into a Master Long Term Supply Agreement with the Defendant by which the Defendant on an exclusive basis had supplied to the Plaintiff, the exclusive brands of the Defendant. The Defendant claims that the Plaintiff specifically sought to enforce the Trademark license Agreement and the Assignment Agreement through a suit, despite there being an arbitration clause in the agreement for mutually resolving their disagreements.

The Plaintiff contended the termination of the assignment and license of trademarks in favor of the Plaintiff is the issue and since the issue touched upon the validity of trademarks, it was outside the scope of arbitration. The Defendant has, on the other hand argued that the question raised by the Plaintiff in the suit was an arbitrable dispute and was liable to be referred to arbitration in view of the arbitration agreement between the parties.

The Court allowed for arbitration as the essential infraction as allegedly committed by the Defendant was not under the provisions of the Act but under the provisions of the agreements in question. The Court while allowing the application, referred the parties to the Arbitration as per the Arbitration Agreement. The Court further held that “the right that is asserted by the Plaintiff is not a right that emanates from the Trademark Act but a right that emanates from the Agreement… The assignment of trademark is by a contract and not by a statutory act. It does not involve any exercise of sovereign functions of the State. It cannot be said that the disputes are not arbitrable.”

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In the matter of Natures Essence Pvt Ltd v Protogreen Solutions Pvt Ltd & Ors [2021 SCC OnLine Del 1538] the High Court of Delhi [C. Hari Shankar, J]  by its judgement dated March 9, 2021, held that any claim of monopoly over a generic word component is irrelevant to the test of deceptive similarity of marks. 

Section 29 (1) of the Trade Marks Act, 1999 provides –“A registered trademark is infringed by…a mark which is identical with, or deceptively similar to, the trade mark...” The case is authority for the proposition that the entire mark against the entire mark test of deceptive similarity for the purposes of this Section is not compromised by the presence of a generic word as component or part of the trade mark. This is notable given the concern of the statute with the limitation on the scope of right accorded to a part of a mark upon registration – Section 17 provides that “(1) When a trade mark consists of several matters, its registration shall confer…exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark— … (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.” 

The defendant had submitted that “…it is asserted that the expression “NATURE” is publici juris” when it is used in the context of beauty and cosmetics products and about 1100 trademarks with the word “NATURE” are registered in the Registrar of Trademarks and that “…the plaintiff cannot claim any exclusive monopoly over the word “NATURE” or “NATURE’S”. The plaintiff had contended  that the expression “NATURE’S” and “NATURE’S ESSENCE” and any goods or products, in the market, sold using brands containing the word “NATURE’S” and “NATURE’S ESSENCE”, are necessarily associated with the plaintiff alone and not with anyone else. Hence,  the defendant’s mark “NATURE’S TATTVA” infringes.

The court ruled in favour of the plaintiff saying it would be totally antithetical to all canons of trademark jurisprudence to question the validity of the plaintiff’s marks because “Nature” is a descriptive word as “once “Nature’s” is used in conjunction with “Inc.”, or “Essence”, it assumes a definite and distinct – as well as distinctive – connotation and meaning, which is totally different from “Nature” per se.”

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