The Bombay High Court has prohibited the Registrar of Trade Marks’ from removing a trademark registration, on the grounds that the Registrar could not prove that it sent the registrant a renewal notice prior to the registration lapsing.

In Kleenage Products (India) Private Limited vs The Registrar of Trade Marks and Anr. [Writ Petition No. 850 of 2015], the Petitioner sought that the Registrar of Trademarks be prohibited from removing the Petitioner’s registration from the Register of Trade Marks for non-renewal. The Petitioner alleged that the Registrar had failed to issue the statutorily mandated renewal notice to the registrant prior to the lapse of its registration. The Petitioner consequently also sought that the Bombay High Court issue directions to the Registrar to allow the Petitioner to restore and renew its registration.

In its judgement dated January 17, 2018, the Bombay High Court allowed the Writ Petition, placing reliance on an earlier ruling of the Delhi High Court as per which “The scheme of the Act and the Rules…is that before the removal of the mark from the register, the Registrar must give prior notice…to the registered proprietor in writing…of the impending expiry of registration of the mark.” The Court further observed that “In the absence of documentary evidence…by the respondent, it cannot be concluded that such notices were sent and the petitioner is in receipt of the same.”

[Image sourced from http://ipindia.nic.in]

The Delhi High Court has determined the mark CNN to be a well-known mark in its November 16, 2017 judgment in Cable News Network, Inc. vs. Anshu Jain and Ors [CS(Comm.) 924/2016].

The Plaintiff, Cable News Network, Inc. sought an injunction against the Defendants’ use of CNN DIGITAL for its internet marketing services. The Defendants had registered and were using the domain name <cnndigital.com> for their services.

The Defendants did not appear to contest the suit, which was decided ex-parte. The Court awarded the Plaintiff an injunction, observing that the possibility of customers or users being confused or misled due to the Defendants’ use of www.cnndigital.com cannot be ruled out. The Court observed further “Well settled position is that potentiality of harm on the internet in much higher as compared to ‘brick and mortar’ i.e.  physical world, due to anonymity and ubiquity of the internet.”

[Image sourced from http://cnnpressroom.blogs.cnn.com/2014/09/03/cnn-ranks-2-in-cable-news-in-august-has-50-advantage-over-msnbc-in-prime-time-full-release/]

 

The Delhi High Court (vide its December 12, 2017 order) has found Christian Louboutin SAS’ “Red Sole Trademarks” to be well-known marks. The reasons for such finding, as extracted from the order, are as follows –

• The plaintiff is well-known luxury brand with presence in over 60 countries including India;

• The plaintiff has been using its ‘RED SOLE’ trademarks extensively and continuously since 1992;

• The plaintiff’s ‘RED SOLE’ trademarks are known to customers throughout India;

• The plaintiff is recognised as a sole licensor of the Christian Louboutin trademarks and has successfully enforced its rights in the said trademarks;

• The plaintiff has extensively promoted its luxury products under its Christian Louboutin trademarks including the ‘RED SOLE’ trademark in India;

• The plaintiff has extensive presence over the Internet;

• The plaintiff’s website is accessible to consumers in India and have served in making customers in India aware of the plaintiff, the various luxury products of the plaintiff and the plaintiff’s well known trademarks including the ‘RED SOLE’ trademark;

• The plaintiff has received various awards and accolades for the luxury products made available under the plaintiff’s well- known trademarks including the ‘RED SOLE’ trademark.”

(Image from:- https://www.glamour.com/story/the-true-story-of-how-christia))