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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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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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], a Single Judge [Mukta Gupta, J.] of the High Court of Delhi (“Court”), vide Order dated September 16, 2020, granted an ad-interim injunction 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 LABEL	DEFENDANT’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.

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In the matter of Adidas India Marketing Pvt. Ltd vs Kumar Garments [TM No. 23/2018], the Delhi District Court, videOrder dated August 27, 2020, granted an ex-parte injunction and imposed punitive damages amounting to Rs. 5,00,000/-, after finding the Defendant to be infringing the Plaintiff’s “ADIDAS” marks.

The Plaintiff claims to be the registered proprietor and user of the “ADIDAS” marks (word and logo) in India, in relation to, inter alia, sportswear. As claimed by the Plaintiff, in January 2018, it became aware of the Defendant and its wholesale business of stocking, distributing and selling of counterfeit apparels bearing the falsified “ADIDAS” marks (word and/or logo), and other marks deceptively similar to the Plaintiff’s “ADIDAS” marks.

The instant suit was filed by the Plaintiff alleging, inter alia, passing off and infringement of its marks “ADIDAS” (word and logo). The Plaintiff placed on record several documents in support of its claims, including photographs of the counterfeited product(s), and sought a permanent injunction, rendition of accounts as well as damages against the Defendant.

During the course of trial, on two separate occasions, Orders were passed imposing costs amounting to Rs. 20,000/- on the Defendant. The Defendant did not comply with these Orders. Following the non-compliance, the suit proceeded ex-parte.

After due consideration of the evidence adduced by the Plaintiff, the Court imposed punitive damages amounting to Rs. 5,00,000/-, and also granted an injunction against the Defendant. Placing reliance on the decisions in Times Incorporated Vs. Lokesh Srivasta & Anr. [2005 (30) PTC 3] and Microsoft Corporation Vs. Rajendera Pawar & Anr., [2008 (36) PTC 697], the Court held  “…though the damages as claimed by the plaintiff cannot be granted in absence of any substantive evidence to the contrary…punitive damages should be granted in favour of plaintiff. Therefore, in my considered opinion an amount of Rs.5,00,000/­…is granted to the plaintiff in the form of punitive damages…along with interest @ 12% per annum during the pendency of the suit till its realization alongwith costs of the suit… Defendants, their its associates and agents are restrained from using the mark “adidas” and its logo and other registered trade­marks and copyright of the plaintiff…”

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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In the matter of Bayer Intellectual Property GMBH v. Titan Laboratories Pvt. Ltd. [CS(COMM) 243/2020], the Delhi High Court, in its ex-parte order dated July 8, 2020, granted an ad-interim injunction restraining the Defendant from exporting the Plaintiff’s patented drug RIVAROXABAN in commercial quantities. The Court ruled that such use will amount to use in India and the Defendant cannot claim exemption under Section 107A of the Patents Act.

Plaintiff’s suit patent for the drug RIVAROXABAN is valid in India till November 11, 2020. Plaintiff filed the suit of patent infringement alleging that the Defendant is exporting the drug RIVAROXABAN in large quantities to Peruvian entities. Plaintiff alleged that at least two shipments of the drug RIVAROXABAN (under brand “MEZOSER-S”) have been exported from India to Peru, and that Peruvian entities have commenced commercial dealing of the drug RIVAROXABAN in Peru. The Plaintiff also submitted that the Defendant was in the business of contract manufacturing and while Defendant’s website lists a product “Rivaroxaban IR Tablets I0/25/20 mg”, it has not yet launched the product in India.

While this was an ex-parte order, the Court did consider the possibility of defence under Section 107A, which provides that the use of a patented invention solely for the purpose reasonably related to the development and submission of information required under any law for the time being in force in India, or in any other country, shall not be considered as infringement of patent rights.

The court, while granting the ad-interim injunction against the Defendant, observed that “…exports have been of finished RIVAROXABAN products and that too in commercial quantities, the defendant primarily is not exempted under Section 107-A of the Patents Act and use of the defendant while exporting will be considered as use in India”.

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.