We have crossed the half-way of the year 2023, and this has been a significant year for intellectual property law.
This has been an influential year for intellectual property rights in India, such as a trademark and patent registration surge. Also, the initiatives to improve and speed up the examination procedure. Even for the top IPR lawyers in India, it has been a challenging year, as several well-known brands approached the Court with trademark infringement claims.
Intellectual property protection encourages business innovation and safeguards company assets and goods. To obtain a competitive advantage over rivals. Patents, copyrights, and trademarks are important applications of all types of IP protection. According to the FY22 annual report of the Office of the Controller General of Patents, Trademarks, Designs and Geographical Indications India (CGPDTM), the total number of applications for various intellectual property rights (IPRs) increased to 5.68 lahks in FY22 from 5.28 lakh in FY21, exhibiting an increase of 7.5%.
This included a rise in patent applications from 58,503 to 66,440 in FY22, an increase in copyright applications from 24,451 to 30,988, and an increase in trademark applications from 4,31 lakh to 4,47 lakh.
We have listed a few trademark cases which have marked their significance this year:
Loreal India Pvt. Ltd. vs. Pornsricaroenpun Co. Ltd. & Anr. (Loreal Hair Spa)
The Delhi High Court’s ruling in Loreal India Pvt. Ltd. v. Pornsricaroenpun Co. Ltd. & Anr. over a trademark dispute concerning the term “HAIR SPA” was held by the Supreme Court of India on May 17, 2023.
By order dated 17.05.2023 in SLP (C) No. 32/2023, the Supreme Court of India was happy to stay the Hon’ble High Court of Delhi’s ruling from 4/11/2022 and was equally pleased to accept the Special Leave Petition.
The lawsuit Loreal filed against the respondents gave rise to the petition, which asked for relief, including a permanent injunction against the use of the trademark HAIR SPA in connection with cosmetic products.
The phrase “HAIR SPA” is registered as a trademark in the name of Loreal. A trademark infringement case was brought against the respondent for using the term “Berina Hair Spa” before the Patiala House Court and the Ld. Trial Court. The Court was happy to grant Loreal’s application under Order 39 Rule 1 and 2 CPC. The respondents/defendants were forbidden from using the phrase “HAIR SPA.”
The merits stated that no exclusive rights are granted on a single word in a trademark consisting of two or more words. It is indicated that the proprietor shall enjoy rights on the entire word mark.
As a result, Loreal asserts its ownership of the trademark “HAIR SPA” in the current situation. This ownership cannot be contested simply because the phrases “HAIR” and “SPA” are dictionary words on their own.
The Respondents/Defendants, Pornsricaroenpun Co. Ltd. and others, filed the subject Appeal with No. AO-IPD No. 43/2021 before the Hon’ble High Court of Delhi in opposition to the passing of this injunction order. The Hon’ble High Court of Delhi vacated the injunction order granted in favour of Loreal in a judgement dated 04.11.2022 issued in the appeal referred to above, FAO-IPD No. 43/2021.
The Special Leave Petition with SLP (C) No. 32/2023 was submitted in response to the Hon’ble High Court of Delhi’s decision in the appeal with the number AO-IPD No. 43/2021, rendered on November 4, 2022.
The Supreme Court halted the activities backed by the Delhi High Court’s ruling on Wednesday, and the case has been scheduled for further hearing
Casio vs. Riddhi Siddhi Retail Ventures
The musical keyboard, which is confusingly similar to the Plaintiff’s registered design, cannot be manufactured, advertised, or sold, according to an interlocutory decision issued by the Delhi High Court in favour of the Plaintiff, Casio.
The Plaintiff, Casio, is a well-known company that manufactures a variety of goods, with musical keyboards being one of the important ones. The objection claims that one of the keyboards with a registered design that has been in use since 2009 has, over time, acquired secondary significance and been inextricably linked to Plaintiff. It is argued that the suit’s design is inextricably linked to the Plaintiff’s keyboard among consumers.
By using a substantially similar design for its keyboard sold under the brand name Nexus32 and its registered trademark “Blueberry,” Defendant infringes on the rights of Plaintiff. To highlight how similar the designs of the plaintiff’s and defendant’s keyboards are, the plaint included images of both.
When delivering its ruling in favour of Plaintiff, the Court noted that there was no need to navigate a difficult path because it was immediately apparent from a glance that the keyboards made by Plaintiff and Defendant were surprisingly similar in appearance.
Regarding the claim made by Defendant that Plaintiff’s design is not innovative or unique, the Court held that the burden of proof would lie with Defendant when claiming lack of novelty or originality as a ground of defence.
Determining that the date the suit design was registered was not new or original requires the defendants to present evidence to the Court. The Court held that nothing supports the claim that the suit design was subject to cancellation due to a lack of novelty or originality. No such material is forthcoming on the record to suggest that it suffers from prior publication
Bulgari Spa vs Samaira Jewels Pvt. Ltd.
The Delhi High Court prohibited six Delhi jewellery stores from mentioning the registered designs and word marks on any websites or locations, whether online or offline, on April 10, 2023.
Plaintiff “BULGARI” claimed that the defendants, jewellery stores in New Delhi, are creating and marketing fake jewels while imitating its registered designs and confusingly similar word marks.
The Plaintiff produced tabular photos of the jewellery designs and knockoffs that the defendants sold. According to the Delhi High Court, the jewellery the defendants are selling imitates the Plaintiff’s registered design because the defendants’ embossed word marks are misleadingly similar to the Plaintiff’s registered word marks.
The Court ruled that the facts, in this case, support a hypothetical case of the Defendant’s counterfeiting of the Plaintiff’s registered design and their passing off through improper use of the registered word mark.
The defendants are given notice in every way. It was instructed that any necessary replies should be submitted within four weeks of receiving the notice, and the Plaintiff’s knowledgeable attorney must receive a copy in advance.
The defendants and all their representatives, including distributors, stockists, and other representatives, are forbidden from dealing in replica goods or any other goods that violate the registered design of Plaintiff or from using confusingly similar word marks until the next hearing date.
Baby Saffron vs Gulzar Saffron
Since 1965, USMS Saffron Co. Inc., the Plaintiff, has been processing, marketing, and selling saffron. They used the name “BABY BRAND SAFFRON” as a trademark or label for their products and company. The plaintiff has acquired trademark registrations over time.
The object of the current lawsuit, the device mark, was a label with a distinctive colour scheme registered under trademark number 3598117 for goods falling within Class 30. The plaintiff asserts ownership of the preceding artwork that makes up the label and claims to have used it as their trade dress in various forms since 2017. As previously noted, Plaintiff is the only person with whom consumers and the general public are familiar.
The claimant filed a complaint against Gulzar Ahmed Bhat, who operates a company called M/s Gulzar Products and engages in the processing, marketing, trading, distributing, selling, and advertising of saffron through M/s Shree Srinath Agencies and Packnician Private Limited. Plaintiff, however, could not confirm the precise makeup, shareholding, and interrelationship of the businesses indicated above.
Plaintiff’s complaint stems from Defendant’s use of a similar trade dress to sell the same goods as Plaintiff. The overall impression of the contested trade dress may be more accurate and evident to the trademark of the Plaintiff listed above. Plaintiff further clarifies that this lawsuit does not negatively reflect on the “GULZAR” or “GULZAR BRAND SAFFRON” word marks. Its complaint is restricted to using similar colour schemes and trade dress that are identical, misleading, and confusing.
The Court has agreed that the trade dress/label prima facie demonstrates that the Defendants duplicated the Plaintiff’s label/trade dress’s distinctive colour scheme of yellowish and white with lettering style in reddish maroon colour and light yellowish backdrop. Defendant’s trade dress is a colourable imitation and a substantial duplication of Plaintiff’s due to the arrangement of many identical features. The complete product could mislead a buyer.
The Delhi High Court issued an order prohibiting the defendants and anyone else acting for and on their behalf from producing, using, selling, distributing, advertising, exporting, offering for sale, or in any other way, directly or indirectly, dealing in the contested trade dress/packaging or any other trade dress until the next date of hearing, accepting that the grant of injunction is required to prevent the Plaintiff from suffering irreparable harm.
Modern Food vs. Modern Snacks
M/s Modern Food Enterprises Pvt. Ltd. and M/s Modern Snacks Pvt. Ltd., referred to as plaintiff and defendant, respectively, have filed two cross-suits.
A lawsuit was filed by the defendant under Section 142 of the Trademarks Act, 1999, asking for a permanent injunction barring the plaintiff from making unfounded threats regarding the defendant’s use of the trademark “MODERN” on Namkeens, Snacks, Confectionery, Savouries, and other associated and related goods. On the other hand, the plaintiff has filed a different lawsuit to get a permanent injunction barring the defendant from violating and/or passing off its copyright and trademark “MODERN.”
The plaintiff claims in their plaint that its predecessor in title, “M/s Modern Food Industries India Limited,” was established in 1965 and was a public sector undertaking governed by the ministries of agriculture and food processing industries.
According to the claimant, the defendant is a well-known international company that produces bakery goods such as biscuits, cakes, bread, breadcrumbs, bread stuffings, buns, cookies, pies, pav, pizza bread, and breakfast cereals. It began utilising the trade name “MODERN” for bread in 1965 and has done so regularly and unbrokenly ever since. The complainant claims that the trademark “MODERN” is a well-known brand that helped establish and pioneer the Indian bread business. The plaintiff stylizes it and writes it in small characters; only the word “R” is written in capital letters.
The plaintiff asserts that the defendant’s adoption and use of the identical mark constitutes an infringement of the plaintiff’s copyright, trademark/trade dress, passing off, and unfair competition.
The defendant further asserts that it has extensively promoted its products bearing the mark or label “MODERN” and has regularly done so through visual, print, and electronic advertisements in numerous reputable newspapers, trade publications, magazines, word-of-mouth, and online media. The defendant also asserts that it spent significant money on advertising in magazines and newspapers to promote its products.
The defendant was prohibited from using the subject mark “MODERN” (in English, Hindi, or another vernacular language) for any goods other than those being sold by the defendant using the subject mark on the date the plaintiff filed the lawsuit. The court issued this interim order. Only labels used by the defendant on the day that the plaintiff filed the current lawsuit and that were registered in the defendant’s favour with the subject mark are permitted to bear the subject mark.
The IPR framework in India is getting highly supported by the Government of India, and the Judiciary, to improve the IP protection of the registered entities and develop a country leading in the IP ecosystem.
India’s development of a legal framework for better management of IP is a crucial step towards protecting intellectual property rights. This move will provide a much-needed boost to the Indian industry, as it will encourage innovation and creativity while ensuring that the creators receive their due recognition and compensation. With the implementation of this framework, India will be able to attract more foreign investment and establish itself as a hub for innovation and technology. This development will benefit the industry and consumers, ensuring they receive high-quality products and services. Overall, this is a significant step towards the growth and development of the Indian economy.