Category: Trademark

ISSUE:

Whether the defendant has infringed the plaintiff's W-NAMASTE logo through dilution?

If Plaintiff can successfully shown similarity between the two marks, can they also demonstrate that the mark and the goods or services that incorporate it are distinctive and enjoy a good reputation, which, if utilized in the same manner as the defendants are, would diminish such distinctiveness or exclusivity?

RULE:

Dilution of a Trademark is a surface of Trademark infringement, where the owner of a well-known trademark has the power to prevent others from using their mark on the ground that it kills their uniqueness or lessen their reputation.

For proving dilution of trademark, it is necessary to prove that the two alleged marks are similar and the Plaintiff’s mark must have a reputation in India, so that unauthorised use would tarnish the reputation.

ISSUE:

Whether ""DROPOVIT' is deceptive and similar to the word “PROTOVIT” and it offends the provision of Section 12(1) of the Trade and Merchandise Act, 1958?

Whether “DROPOVIT” was descriptive or an invented word for Section 9 of the Act?

RULE:

As far as the deceptive similarity is concerned, Courts have largely depended upon an ordinary man’s reasoning, that is, of the average customer.

These include the nature of the mark, the degree of visual and phonetic resemblance between the marks, the similarity between the products or services or the class of purchasers and the mode of purchasing, and lastly, any other circumstances relevant to the case, depending on the facts.

ISSUE:

Whether use of a registered trademark as a trade name for dissimilar goods/services amount to infringement?

RULE:

Sections 29(4) and 29(5) of the Trademarks Act,1999 are mutually exclusive

When a registered trademark is used as a company name in relation to dissimilar goods, there would be no cause of action.

ISSUE:

Whether use of a registered trademark as a trade name for dissimilar goods/services amount to infringement?

RULE:

Sections 29(4) and 29(5) of the Trademarks Act,1999 are mutually exclusive

When a registered trademark is used as a company name in relation to dissimilar goods, there would be no cause of action.

ISSUE:

Whether or not the sale of the ‘Falcigo’ drug by the Respondent amounts to passing off?

Whether the mark of Cadila Pharmaceutical i.e., ‘Falcitab’ is similar to the mark of Cadila Healthcare i.e., ‘Falcigo’?

RULE:

Passing off is the act of misrepresenting one's products or services to the public as those of another person or company in an effort to deceive his customers into believing that they are those of another person or company.

The owner must demonstrate that their goods or services have goodwill and that the user is making false statements in order to build a case of passing off. Additionally, the owner must demonstrate that they suffered a loss as a result of the user's creation of false claims.

ISSUE:

Whether the court should grant injunction to prohibit Defendant to open a restaurant under the name “Nando’s”?

Sub issues-

Whether Nandu’s and Nando’s are similar marks?

Whether the goods and service they provide are identical or similar?

RULE:

The rule of law applied in the case of Balkrishna Hatcheries v Nandos International Ltd 2007 is that in order to succeed in a claim for trademark infringement, the plaintiff must establish that the defendant's use of the trademark is likely to cause confusion amongst consumers.

ISSUE:

Whether the mark, “Lakshmandhara”, was likely to deceive and cause confusion under section 8 and section 10 of the Trademark Act?

Whether there was any acquiescence for “Lakshmandhara”, as to bring it under special circumstances, mentioned in section 10(2) of the Trademark Act?

RULE:

The rule of law applied in the case of Amritdhara Pharmacy v Satyadeo AIR 1963 is that trademarks which are deceptively similar to existing trademarks are not registrable. This is to protect consumers from confusion and protect the rights of trademark owners. The standard of comparison between similar trademarks is to be adopted by judging the resemblance from the point of view of a man of average intelligence and imperfect recollection.

ISSUE:

Whether the word "safari" alone can be validly registered as a trademark?

Whether summary judgements may be granted on the Defendant's use of the word "safari"?

RULE:

The Doctrine of Trademark Incapacity states that a word that was once generic is denied trademark protection, even if consumers perceive the word or term as a source signifying. This Doctrine is put in place in order to avoid unnecessary and illogical trademarks from being granted.