In the matter of ITC Limited v. N. Ranga Rao & Sons Private Ltd. [O.S.A Nos. 183 and 184 of 2021], a Division Judge Bench [Sanjib Banerjee and P.D. Audikesavalu, JJ.] of the Madras High Court, by judgment dated November 15, 2021, allowed the appeal and set aside the previously passed injunctions, holding that similarity in the combination of primary colours of the colour scheme on the packaging, cannot by itself be a ground for injunction.

Section 29 (7) of the Trade Marks Act, 1999 (“the Act”) states, “A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services…” and Section 2(1)(zb) of the Act defines, “‘trade mark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;”. The question that arises is whether similarity in a ‘combination of colours’ can be a ground for trademark infringement by itself, or does it need to be assessed as a whole with the packaging?  

The Respondent argued for their “specific” colour combination of yellow-gold, which they have conceived and adopted for their products and have obtained statutory protection by obtaining registration under the Act. The Respondent alleged that the Appellant was engaged in the business of similar goods and had used a similar combination of colours.

The Appellant argued that no one can claim exclusivity or ownership over any colour combination, particularly if two primary colours are involved. And further argued that their names, get-up, and packaging materials are distinct.

The Court upheld the Appellant’s claims clarifying that the packaging was distinct except for the similar colour combination and that a combination of colour scheme of primary colours cannot by itself form a basis for issuing an injunction on the grounds of passing off; and made relevant observations: “upon a look at the defendant’s packaging material, notwithstanding the colour combination thereof, there is scarcely any resemblance to the plaintiff’s packaging apart from the fact that the red and yellow hues are somewhat common” and that “… there does not appear to be any element of passing-off, notwithstanding the similarity in the colour scheme where two primary colours are used in both cases, there was no justification or basis for issuing any 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 Jumeirah Beach Resort LLC vs Designarch Consultants Pvt Ltd. & Anr. [CS (COMM) 124/2021], Single Judge [Jayanth Nath, J.] of the High Court of Delhi, vide judgment dated November 9, 2021, ruling in the favour of the plaintiff granted an interim injunction against the defendant under order XXXIX R1&2 of CPC, holding effectively that the principle of anti-dissection and identification of dominant mark complement each other, hence using of the dominant part would amount to trademark infringement.

Section 17 of the Trademark Act, 1999 states “Effect of registration of parts of a mark.  (1) When a trademark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trademark taken as a whole.”  The question that arises for consideration is whether an infringing trademark would be determined strictly when ‘taken as a whole’ or if even the adoption of a dominant or essential part of the infringed trademark can be brought within the ambit of ‘taken as a whole’.

The plaintiff contends that the defendant’s marks are identical and/or deceptively similar to the plaintiff’s prior registered and well-known marks in which copyright also subsist. The plaintiff’s BURJ marks have been extensively, continuously, and uninterruptedly used on a worldwide basis including in India. Further, it is urged that the dominant part of the trademark of the plaintiff is infringed and hence, an injunction ought to be granted.

The defendant contended that using the composite mark BURJ AL ARAB by the plaintiff does not give the right over the word BURJ as it is a prefix and common to trade. Plaintiff is not permitted to claim infringement by inviting the court to dissect its mark and conferring right over BURJ per se. Further, the defendant owns the composite mark BURJNOIDA that has been in use since 2010 and has spent a huge amount of money for its ongoing construction.

The court accepted the plaintiff’s claim that their dominant part (BURJ) has been copied malafidely and held “that the principle of anti-dissection does not impose an absolute embargo upon the consideration of the constituent elements of a composite mark.” Further, the Court passed an injunction order in favour of the plaintiff and against the defendants, restraining the defendants from in any manner using the trademark BURJBANGALORE, BURJMUMBAI, BURJDELHI, BURJGURUGRAM, and BURJGURGAON or any other similar trademark.

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 Tata Sons Private Limited v. Hakuna Matata Tata Founders [IA 8000/2021 in CS (COMM) 316/2021], a single judge [C. Hari Shankar, J.] of the High Court of Delhi, vide Judgment dated October 26, 2021, while dismissing an injunction application against trademark infringement, held that necessary connection between the foreign-seated defendants’ activities and India must be established for the exercise of jurisdiction by the Court.

Section 134 of the Trade Marks Act, 1999 provides that “No suit…..shall be instituted in any court inferior to a District Court having jurisdiction to try the suit”. Further, Section 20 of the Code of Civil Procedure, 1908 confers jurisdiction on courts where “the defendant….carries on business” or “cause of action, wholly or in part, arises”. The question for consideration is whether the expression “carries on business” or “cause of action….arises” would include activities on the internet thereby providing jurisdiction to the Court to issue injunction.

The Plaintiff contended that they provide a platform for crypto-currency trading under their well-known trademark ‘TATA’ and since the defendants dealt with crypto-currency under the name “TATA coin/$TATA” which was accessible in India through website and social media pages, there was purposeful availment of jurisdiction of the court. They further contended that the effect of defendant’s infringing activity was felt in India as the accessibility of the same led to the dilution of plaintiff’s goodwill and had adversely affected their business. Hence, the defendants should be restrained from using the trademark of the plaintiff. The counter-argument to this being that mere accessibility of the website of the overseas defendants, by persons located within the jurisdiction of the Court, is not sufficient to clothe the Court with jurisdiction to act against the defendants.

The Court denied interim relief to the plaintiff and, after analyzing various judgments on the issue, which provided that the intent to target customers in India is a mandatory governing consideration for courts to exercise jurisdiction, held that “The operation of the Trademarks Act and the CPC statutorily extend only to the boundaries of India. In the case of internet infringements, no doubt, the decision of the Court may, at times, operate against entities located outside India. That, too, however, would be subject to existence of the necessary connection between the activity of the foreign-seated defendants and India. More specifically, intent, of the defendants, to target India, must be established.”

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 M/S DRS Logistics (P) Ltd & Anr. v. Google India Pvt. Ltd. & Ors [CS (COMM) 1/2017], Justice V Kameswar Rao of the High Court of Delhi (the “Court”) vide judgment dated October 31, 2021, held that invisible use of trademark to divert traffic from proprietor’s website to advertiser’s website amounts to infringement of trademark.

Sections 29(9) of Trade Marks Act, 1999 (the “Act”) state that “where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation …”. That question that arises is whether ‘spoken use’ would include invisible use of a registered trademark in the form of keywords?

Plaintiff was the owner of the registered trademark, “Agarwal Packers and Movers” and sought to restrain Google from using or permitting third parties to use their registered trademark either as a keyword or as a trademark. It was contended by the Plaintiff that keywords trigger search results on Google by way of Google Ads. These keywords are used by third-party infringers using Google’s services for inserting their infringing advertisements when users searched for the Plaintiff, amounting to use as per Section 29(9) of the Act.

The Defendant contended that Google Ads is an advertising service wherein advertisers can create and display their online advertisements in relation to their websites and keywords provided by them are just backend triggers used for displaying of Ads and do not amount to use within the meaning of Section 29(9) of the Act.

Granting protection to the plaintiff’s registered trademark, the court noted that “a perusal of Section 29(9) makes it clear that an infringement of a trademark can be by way of spoken use which is different from printed or visual representations of the mark. That is invisible use of the mark can also infringe a trademark”. The court further observed that, “it is clear that the use of the mark as meta-tags was held to be infringement of trademark. It follows, that invisible use of trademark to divert the traffic from proprietors’ website to the advertisers’ / infringers’ website shall amount to use of mark for the purpose of Section 29”.

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 Metso Outotec Corporation v Registrar of Trade Marks [Commercial Appeal (L) No. 18137 & 18138 of 2021], a Single Judge [G.S. Patel, J.] of the High Court of Bombay on October 6, 2021, allowed an appeal and quashed two trademark refusal Orders passed by the Registrar of Trade Marks, while clarifying that a refusal order cannot merely note submissions without explicit consideration of the submissions made by the Applicant.

Section 18(5) of The Trade Marks Act, 1999 reads that “In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.” The interpretation of what would count as “writing the grounds” in a refusal order or a conditional acceptance passed by the Registrar requires clarity. Would mere noting the progression of the prosecution and duplicating the relevant objection suffice or would the Registrar be required to put in writing the process and grounds for arriving at a decision?

The Registrar of Trade Marks, Bombay had passed Orders refusing two trademark applications. The Registrar, in its Orders claimed to have noted submissions made on behalf of the Applicant and simply recorded that the marks applied for registration are objectionable under Section 9 of the 1999 Act for being descriptive. The Applicant filed the present appeal arguing that no reasons were stated for refusal order and that refusal by dissecting the trademark is not allowed and the trademark as a whole cannot be rejected as a result of such dissection. 

The High Court, at the outset noted that the Orders contained no reasons and merely recite a Section and further observed that “…that process of analysis must surely reflect in the order itself. It is not permissible for the authority to merely note that submissions have been made and directly arrive at a conclusion with no findings or consideration of the submissions at all… the total elision of all reasons, is contrary to the statutory mandate of Section 18(5) in Chapter III of the Trade Marks Act 1999. That Section requires written reasons if an application is rejected or only conditionally accepted. The grounds for the refusal or conditional acceptance and also, importantly for our purposes, the materials used by the Registrar must be reflected in the order” [colly]. Accordingly, the appeal was allowed, and the refusal orders of the Registrar of Trade Marks were quashed. 

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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