201802.26
1

The perils of adopting and enforcing a generic mark

The Delhi High Court by its recent order set aside an ex-parte injunction that it granted seven years back and which continued until the matter was set down for arguments. The Court order has once again stressed the inherent difficulties in enforcing a generic mark. The Court was adjudicating an injunction application filed by the…

201802.22
1

Tug of war between real estate companies over ‘Lotus’

The dispute between the parties who are in real estate business revolves around the use of the word ‘Lotus’. The Plaintiff, Lotus Green LLP, (Lotus Green) filed the suit before the Delhi High Court to restrain the Defendant, Renowned Buildtech Private Limited (RBPL) from using the mark “Lotus” in relation to their business and obtained…

201802.22
2

Patent holders caught by surprise-Licenses / Sub-licenses must be disclosed!!

As per the Indian Patent Act and Rules (Section 146 and Rule 131) every year Patentee/licensee is required to furnish details of the “extent of working” of the patented Invention. This has been subject of intense debate considering the patent holders have reservation in providing such ‘business/commercially’ sensitive information which is accessible publically through patent…

201802.22
1

Bangalore’s real Adiga

Adiga, family name that originated from coastal belt of Karnataka was subject matter of dispute between parties in food business. The current post discusses an appeal filed by Adiga Sweets (AS) before the Karnataka High Court against the judgement of the Additional City Civil Judge, Bengaluru City. The City Civil Court had after trial granted…

201802.22
2

Patent granted to Chocolate Flavour Tea

The current post draws its reference from a pre-grant opposition filed by FEDERATION OF ALL INDIA TEA TRADERS ASSOCIATION (FAIITTA) to a patent application bearing no. 3293/CHE/2011 titled “Process for preparing fresh Tea with chocolate flavour”. The Invention in summary relates to process for preparing fresh tea having chocolate flavour. According to applicant’s reply to…

201802.22
1

The new mantra “Sell in India” to protect your brand

In the intensely fought litigation between the parties involving use of identical PRIUS mark/name, Supreme Court fired the final salvo on 14th December 2017 by holding that it is necessary to establish local goodwill and reputation of the trade mark to sustain an action for passing off. The court affirmed the decision of two judge…

201802.22
1

The coveted status of “well known mark” eludes SAMSUNG

Recently, two different judges of the Delhi High Court while being asked to consider prayer for declaration of a mark as well known took completely different stand. The marks involved were: SAMSUNG and its oval shape device  Christian Louboutin’s ‘RED SOLE’ for shoes  The proprietors of above-mentioned trademarks sought relief to declare their trademarks as well-known…

201802.22
2

Chill Barbie – freedom of speech and expression is sacrosanct

In an interesting dispute, Mattel, Inc., owner of the brand name BARBIE sought to seek an injunction for use of the mark BARBIE being used in a song of a movie Tera Intezaar. It was alleged by Mattel that the title and lyrics of the song used its registered and well known trademark “BARBIE” without…

201802.22
1

Sue and Settle–no Damages please!

Quite often than not, IP cases result in settlement soon after injunction application is decided. In many cases an exparte interim injunction coupled with search and seizure (through local Commissioner) at the manufacturing unit of the infringing party results in sufficient pressure on the party to negotiate settlement. As a part of settlement, the Defendant…

201802.22
1

‘SWAD’ (taste) for Rice not as tasty when it comes to enforcement

This post highlights challenges in enforcing descriptive marks. The marketers are of course more in favour of adopting descriptive marks given the consumer appeal and brand recall. On the other hand IP legal team would recommend staying away from descriptive words to be used as brands. The Court in this case was considering an injunction…

201802.22
1

Court rejects ‘Turky’ is a geographical name

All Well Formulations (AWF), the defendant, aggrieved by the injunction order passed against them by the Additional City Civil and Sessions Judge, Bengaluru City, has filed the appeal before the Karnataka High Court. The Plaintiff Swati & Co (Swati) filed the action against AWF for infringement of trademark, design, passing off, etc. The High Court…

201802.22
1

Territorial jurisdiction in the new interconnected world

The interesting issue in this case was whether the Plaintiff can invoke territorial jurisdiction of Delhi High court considering the Defendants were based in United Arab Emirates offering for sale their goods and services through App Store, Google Play Store and e-commerce portals such as www.amazon.in. The case concerns use of the mark ifit/IFIT on fitness…