India: Bombay High Court on the test to be applied in Passing-Off cases

Source: www.bombayhighcourt.nic.in

Recently, the Division Bench of Bombay High Court in Ansari Bilal Ahmadlal Mohd. V. Shafeeque Ahmed Mohammed Sayeed held that ‘in case of passing off the test to be applied is of a person of average intelligence and imperfect recollection. The device, label mark has to be seen in its entirety and after taking into consideration the facts of the case, a decision has to be arrived at as to whether the mark of the Appellant is deceptively similar to the Respondent’s one.’

Brief Facts

Ø  In 1993, Mohammad Sayeed Gulam Husaain Attarwale (hereinafter referred to as the ‘Respondent’s Father’), independently created a distinctive label i.e. ‘SUKOON OIL’ and ‘NAGEENA SUKOON OIL.’ The Respondent’s father was using the label since 1993. ‘SUKOON OIL’ used as a pain-relieving massage oil was, manufactured and marketed under the said distinctively designed label and mark. The Respondent’s father in the name and style of M/s. Nageena Ayurvedic Pharmacy carried out the said business.

Ø  Shafeeque Ahmed Mohammed Sayeed (hereinafter referred to as ‘the Respondent’) has been running the said pharmacy business, after the death of his father, Mohammad Sayeed Gulam Husaain Attarwale, in 2000.

Ø  In July 2016, the Respondent discovered that JBM Herbal Pharmacy (hereinafter referred to as ‘the Appellant’) is also selling products under the mark ‘SUKOON’ in Mumbai.

Ø  The Appellant was also engaged in the manufacturing, marketing and selling a similar Ayurvedic/Unani medicine under the Trademark ‘SUKOON’ and under the deceptively similar label bearing the word ‘HEENA’ written and depicted in similar manner to the word ‘NAGEENA’, the Respondents’ label.

Ø  The Respondent filed a suit for infringement of registered trademarks being a label mark of ‘SUKOON OIL’ and infringement of copyright in ‘SUKOON’ label, before the Learned Single Judge Bench of the Bombay High Court. 

Ø  The Learned Single Judge Bench after carefully listening to the contentions of the parties as well as considering the statement of year-wise purchases and sales from the year 2002-2003 to 2014-2015, granted interim relief to the Respondent in Notice of Motion dated October 26, 2016.  

Ø  Being aggrieved by the order of the Learned Single Judge, an appeal was filed by the Appellant before Learned Division Bench of the Bombay High Court. 

Appellant’s Contentions

Ø  The Appellant contended that the calligraphy used by the Appellant Company is of different style compared to that of the Respondent Company. The differences pointed out by the Appellant were:

o   The Respondent’s label display lungs, whereas the label of Appellant display full skeleton.

o   Representation is different.

o   Respondent’s label is totally different from that of Appellant,

o   In no manner both the bottles i.e. bottle of Appellant and Respondent is likely create confusion,

o   The word ‘SUKOON’ reflects the nature of the product,

o   The word ‘SUKOON’ written in one of the bottles of the Appellant is different in fonts, color, and style as compare to the bottle of the Respondent.

Ø  It contended that since the two trademarks are entirely different, the Respondent could not seek protection on the ground of usage of the word ‘SUKOON’, as the same is not even registered at the behest of the Respondent.

Ø  It is submitted that the word ‘SUKOON’ on the product is being used in the descriptive sense and not as a trademark.

Ø  On the claim of passing off, the Appellant took protection under Section 35 of the Trade Marks Act, 1999, since the expression used by them is bonafide expression of character and quality of its own goods. It also submitted that the Respondent has failed to make out a prima-facie case of passing off.

Ø  It submitted that the word ‘SUKOON’ is used in association with ‘HEENA’, which is distinctive in nature. Further, the Appellant states that it is using the word ‘HEENA’ since the year 2012.

Ø  It was further submitted by the Appellants, that the registration of the label mark titled ‘SUKOON OIL’ was on the condition that the Appellants put a disclaimer that registration of the mark shall give no right to the exclusive use of the device of lungs and the independent use of the word OIL and the letters N, A, and P. Therefore, ‘SUKOON’ Trademark is not distinctive with the ayurvedic preparation of Respondent and is not exclusively associated with the Respondent.  

Ø  It submitted that there is nothing distinctive in the label mark of the Respondent. The registration of the Respondent is a device mark. Color combination of Respondent's label and Appellant's label are entirely different. The design and description of the words are entirely different and dissimilar; therefore, there is no question of the Appellant carrying his trade transaction with the product ‘HEENA SUKOON OIL’ with a deceptively similar label as of the Respondent, which is sold in the market as ‘NAGEENA SUKOON OIL’.

Ø  It submitted that there is an error on the part of the Learned Single Judge in allowing the Notice of Motion. It has suffered a grave loss and injury due to restrictive orders passed by the learned Single Judge of this Court, which has affected his business.

Respondent’s Contention

Ø  According to the Respondent, in 1993, his father, Mohammad Sayeed Gulam Husaain Attarwale (hereinafter referred to as the ‘Respondent’s Father’), independently created a distinctive label i.e. ‘SUKOON OIL’ and ‘NAGEENA SUKOON OIL.’ The Respondent’s father was using the label since 1993. ‘SUKOON OIL’ used as a pain-relieving massage oil was, manufactured and marketed under the said distinctively designed label and mark. The Respondent’s father in the name and style of M/s. Nageena Ayurvedic Pharmacy carried out the said business.

Ø  On February 12, 1994, the Respondent’s father applied for Trademark registration of ‘SUKOON’ label. However, on June 4, 2000 the Respondent’s father had expired.

Ø  After the Respondent’s father expired, the Respondent has been running the pharmacy and manufacturing labels. Again, on August 17, 2005, the Respondent applied for registration of Trademark ‘SUKOON’ label. The said Trademark was registered in Class 05. The Respondent also stated that he is registered proprietor of word mark ‘NAGEENA.’

Ø  The Respondent states that by manufacturing, selling and/or offering for sale the impugned product, the Appellant is violating Respondents’ valuable, intellectual and intangible proprietary rights contained in the registered Trademark ‘SUKOON’ label and/or its essential ingredients i.e. word ‘SUKOON.’

Ø  It is stated that Appellant has deliberately adopted the impugned Trademark with malafide intention of passing off their product as and for that of the Respondent.

Ø  It contended that the Appellant is applying wrong test in trying to establish that there is no deceptive similarity. The label of the Respondent is an essential prominent feature, which is ‘SUKOON’. It has also applied separately for registration of the word ‘SUKOON’ and is using the mark since 1993.

Ø  It further submitted that the Learned Single Judge has gone through the entire record and after taking into consideration the material placed on record and submissions advanced, has reached the conclusions mentioned in the order.  

Court ’s Decision

Ø  The Learned Division Bench of the Bombay High Court (hereinafter referred to as ‘the Court’) threw light on the observations of the Learned Single Judge. It noted that the statement of year-wise purchases and sales from the year 2002-2003 to 2014-2015 submitted by the Respondent showed that, the sale of the product had risen considerably from INR 29,208/- in 2002-2003 to the extent of INR 1.52 Crores in the year 2014-2015. It also took note that the Learned Single Judge had even described in detail the discrepancies in labels of both the parties.

Ø  The Court stated that the Respondent has obtained the registration of the mark, hence prima-facie the Respondent has established that the Appellant has been using the label marks on his products, ‘HEENA SUKOON OIL’, which is deceptively similar to the Respondent's product known and styled as ‘NAGEENA SUKOON OIL’.

Ø  The Court held that ‘during the course of hearing it was submitted that majority of consumers of these products are laborers from Bhiwandi area. The test to be applied in the case is of a person of average intelligence and imperfect recollection. The device, label mark has to be seen in its entirety and after taking into consideration the facts of the case, a decision has to be arrived at as to whether the mark of the Appellant is deceptively similar to the Respondent's one.’

Dismissing the appeal, the Court noted that the Respondent has made out a strong prima-facie case of passing off. In addition, there is no arbitrariness in the view adopted by the Learned Single Judge. The Learned Single Judge has dealt with the issues in a reasonable and judicious manner.

For the knowledge of the reader, the details of the status of various Trademarks of the Respondent as per the records of the Trademark Registry is given below:

India: Delhi High Court clarifies on what is new and original under the Designs Act

Source: www.delhihighcourt.nic.in

Design is that aesthetic feature which adds the exclusive quality to the product. Any product can become visually appealing through its design. This is exactly what the Designs Act, 2000 (hereinafter referred to as ‘the Act’) protects i.e. the aesthetic appearance. Designs, as defined by the Act, is the ‘features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article in two or three-dimensional form, or both, by any industrial process or means – whether manual, mechanical or chemical, separate or combined – which in the finished article appeal to and are judged solely by the eye’. The Act also lays down the necessary parameters that are requisite conditions for a design to be registered under the Act. The very first and foremost condition is that the design should be new or original, not previously published or used in any country before the date of application for registration. Focusing on this criterion, recently, the Delhi High Court its judgement, in the case of Crocs Inc. Usa V Liberty Shoes Ltd. & Ors., on February 8, 2018, cancelled the registered design of Crocs Inc. USA and dismissed the claim of piracy of design made by the Company. The Court held that, ‘it is necessary for protection of a registered design that the registered design must be an Intellectual Property Right created after application of sufficient time, labor, effort, etc. and that there must be sufficient newness or originality i.e. existence of requisite innovation and that trade variations of known designs cannot result in newness and originality.’

Brief Background

• Crocs Inc. USA (hereinafter referred to as ‘the Plaintiff’) are proprietors of certain registered designs related to footwear in India. The registered design in issue in the case bear registration numbers 197685 and 198786. The tabular representation of the designs are given below -

• In the plaint, the Plaintiff stated that Liberty Shoes Ltd. and others (hereinafter referred to as ‘the Defendants’) has been violating the rights of the Plaintiff by imitating its registered design shown above. It claimed piracy of design under Section 22 of the Act.
• The Plaintiff filed a suit for permanent injunction against all the Defendants from manufacturing, marketing, supplying, using, selling, soliciting, exporting, displaying, advertising by any other mode or manner the impugned design or any other design which is deceptively similar to or is a fraudulent and/or any obvious imitation of the Plaintiff ‘s design.
• The Plaintiff also filed interim applications seeking pendente lite restraint against the Defendants from manufacturing, marketing, supplying, selling etc. the footwear of the Defendants which footwear as per the Plaintiff have been manufactured and sold by infringing the registered designs of the Plaintiff.
• The Defendants challenged the interim injunction application.

Issues

1. Whether the registered designs, of the Plaintiff, lacked novelty and originality?
2. Whether the registered designs existed in public domain prior to the registration being granted in favor of the Plaintiff?
3. Whether the Defendants are guilty of piracy of designs? 

Plaintiff’s Contentions

• The Plaintiff alleged that the footwear manufactured by the Defendants were more or less same or similar, with color variations or other changes with respect to placements of the perforations/open spaces/holes in the footwear or certain other aspects for creating visual appeal.
• With regard to the website evidence filed by the Defendant in pursuance of issue no. 2, it argued that depiction in the website is no guarantee that depiction of the footwear in question in fact took place as on December 10, 2002, as stated in the printouts downloaded and filed by the Defendants.
• The Plaintiff contended that once the registration is done, there must be a presumption of newness and originality and the onus should be on the Defendant to prove that there is no newness or originality.

Defendant’s Contentions

• They contended that the registration of design with respect to footwear is in itself invalid. Taking defence under Section 22 (4) of the Act, they argued that since the registration of the design granted to the Plaintiff is not valid, hence no case could be made out of piracy of the registered design of the Plaintiff.
• They further claimed that the registered design of the Plaintiff’s when registered lacked any newness/originality. The design was in public domain at the time of registration.
• To prove issue no. 2, the Defendants produced the internet-downloaded pages from the website of the company ‘Holey Soles’, the footwear designs of which were similar to that of the Plaintiff. The designs on the page were stated to be archived on the page since December 12, 2002. The 'Holey' in the 'Holey Soles' is because of holes/spaces/gaps existing in the footwear of this company.
• It was submitted that the registration date granted to Plaintiff in India was May 28, 2004. Since, the design of the footwear of the Plaintiff was found in the public domain since 2002, therefore, the registration granted to the Plaintiff was clearly faulty and liable to be cancelled under Section 19 of the Act.

Court’s Decision

• The Court analyzed Sections 2 (d), 4, 19 and 22 of the Act.
• Regarding issue no. 1, the Court went on to evaluate the meaning of a design being new or original. The Court revisited its judgement in Pentel Kabushiki Kaisha & Anr. Vs. M/S Arora Stationers & Ors., and held that mere variations to existing products which do not result in requisite amount of newness or originality cannot be considered as innovations having newness and originality for being granted monopoly for fifteen years.
• Further adducing the test of newness and originality, the Court held that it is necessary for protection of a registered design that the registered design must be an Intellectual Property Right created after application of sufficient time, labor, effort, etc. and that there must be sufficient newness or originality i.e. existence of requisite innovation and that trade variations of known designs cannot result in newness and originality.
• Dealing with issue no. 2, the Court reiterated that according to Section 19 of the Act a design, which existed in the public domain prior to grant of registration under the Act, is a ground for cancellation of the design. Rejecting the contentions of the Plaintiff, the Court prima facie accepted that such design existed in public domain prior to Plaintiff's registration, the Plaintiff therefore, cannot claim exclusivity for its registered design merely on the ground that Plaintiff ‘s footwear/registrations does have a strap at the back of its footwear.    
• The Court opined that in cases where the registered design is associated with something so common to human lifestyle, for example in this case footwear, the bar of newness and originality automatically increases. It said that it requires an effort larger than an ordinary effort to create a different footwear than the known types of footwear, to be an innovation/creation having such requisite newness and originality for that creation to become an Intellectual Property Right as a design in terms of the Designs Act.
• In the present case, in Court’s view the design of Plaintiff’s footwear is nothing but a sandal. Sandal with open spaces are only trade variations of a sandal. Trade variations of footwear/sandals cannot be and should not be given exclusive monopoly. In addition, the features which were argued on behalf of the Plaintiff, as existing in its sandals/footwear of mounds or humps or straps (or lack of them) or soles designs or perforations/open spaces etc., even when taken as a whole, or even individually for that matter, cannot be said to result in innovation or creation of newness or originality.
• The Court also assessed the claim of cost payable to the Defendants. Taking into consideration the Commercial Courts Act, 2015, read with Section 35 of the Code of Civil Procedure, the Court held that ‘the Court had the power to order costs at the interim stage, and that, in this case, the Plaintiff, in refusing to settle the interim applications with the Defendants, and ‘obdurately and illegally continuing proceedings’, and imposed costs of a whopping INR 2 lakhs per Defendant, in addition to legal costs’.

India: Delhi High Court grants injunction for unauthorized use of the mark ‘Tata Water Plus’

Source: www.delhihighcourt.nic.in

The Hon’ble High Court of Delhi on November 9, 2017, in the case of Tata Sons Limited & Ors. vs. M/S Mayuri Beverages held against Mayuri Beverages and in favor of Tata Sons Limited for passing off packet water pouches containing the mark “TATA Water Plus” which is the trademark of the  Tata Sons Limited is the proprietor and owner.

Brief background

• Tata Sons Limited (hereinafter referred to as ‘Plaintiff no. 1’) is the holding company of the renowned Tata Group and holds the bulk of shareholding in these companies. The Company’s name is derived from the surname of the Plaintiff’s founder, Shri Jamsetji Nusserwanji Tata that is a rare patronymic name possessing the distinctiveness of an invented and coined the word.
• Plaintiff No.1 has continuously and consistently been using the trademark/trade name ‘TATA’ and its variations thereon, since its inception in the year 1917, whereas the use of the name/trade mark TATA by the predecessors-in-business of the Plaintiff No.1 company dates back to the year 1868.
•  Plaintiff No.2 company is an associate company of Plaintiff no.1 which focuses on branded natural beverages such as tea, coffee and water. Nourish Co Beverages Ltd. (hereinafter referred to as ‘Plaintiff no.3’) was created in light of a joint venture between Plaintiff no.2 and PepsiCo India Holdings Private Limited.
• Plaintiff no. 1 is the proprietor of trademarks ‘TATA’ and ‘TATA WATER PLUS’ in respect of Nutrient Water which seeks to provide essential micronutrients.
•  Plaintiffs No. 2 and 3 were given permission by Plaintiff no. 1 to use the trademark ‘TATA WATER PLUS’ by vide license agreement dated August 26, 2011. 
• In September 2016, the Plaintiffs learnt that Mayuri Beverages (hereinafter referred to as ‘the Defendant’) was manufacturing, selling and distributing package drinking water pouches under the name ‘TAZA WATER PLUS’.
• Thus, the Plaintiffs subsequently brought upon a suit before the Delhi High Court (hereinafter referred to as ‘the Court’) seeking permanent injunction for infringement along with an application for appointment of a Local Commissioner.
• The Local Commissioner, appointed by the Court by an order dated October 24, 2016, also confirmed the infringing activities of the Defendant entity and its proprietor in its findings.  

Infringing Marks

Plaintiff	Defendant

Plaintiff’s Contentions:

•  The Plaintiffs contended that the mark ‘TATA’ is derived from a rare name possessing the distinction of an invented word. It claimed to be using the mark since 1917. It further claims that due to continuous use of this trademark over a long period spanning a large geographical area and extensive publicity, the trademark has gained substantial amount of goodwill. Thus, the trademark has acquired the status of a ‘well-known trademark’ in India.
•  It was also contended that similarity in packaging of ‘TAZA WATER PLUS’ made the malafide intention of the Defendant clear as someone trying to pass off their product as the ones made by the Plaintiff.
•  It alleged that the Defendant has adopted an identical trade-dress for its products as that of the Plaintiffs i.e. the brown and blue strips and even the font size and style in which the words appear on the product packaging of their product ‘TATA WATER PLUS’.
• It was further alleged that the illegal activities of the Defendant have greater magnitude of negative consequences as this is drinking water, which being of inferior quality can lead to health issues and even prove to be fatal.
• It submitted that the activities of the Defendant have resulted in the loss of the Plaintiffs reputation and in weakening of the value and strength of its brand name and trademarks.

Defendant’s Contentions:

• As the Defendant did not appear before the Court despite service, the suit proceeded ex-parte.

Court’s Decision

•  Hon’ble Mr. Justice Manmohan of the Delhi High Court passed a judgement in favor of the Plaintiffs and against the Defendant, as the Plaintiff’s contentions are uncontroverted.
•  It was held that the Plaintiffs are entitled to a permanent injunction. However, the Court refrained from granting damages as the Plaintiffs could not establish the quantum of damages/costs incurred by it.

Our research team has compiled together a list of TATA formative marks belonging to Tata Sons Limited in Class 32 as per the records of the Trademarks Registry listed below:

Lucy Rana of SSRANA & Co, felicitated with the Business Women of the Year Award

S.S. Rana & Co would proudly like to inform that Ms. Lucy Rana, Managing Associate Advocate of S.S. Rana & Co was felicitated with the Business Women of the Year award under Law firm category at Future Woman Leader Summit & Awards 2018, which was held on March 6, 2018, at The Taj Mahal Hotel, New Delhi.

The Future Woman Leader Summit & Award, 2018 is focused on building next generation women leaders by Understanding, Accepting and Changing. There is a consistency in pattern followed with respect to women all around the world. More than half of the employees in organizations are female at the lowest levels. Moving to each successively higher level in the organization, the number of women steadily shrinks. At the CEO level, worldwide, there are only 3% to 4% who are women. The Future Woman Leader Summit & Awards, 2018 are dedicated, especially for inspiring women who travel one extra mile, successfully change mind-sets, and perceptions about women. The summit also highlights the challenges faced by women towards leadership and aims to take the necessary step towards woman leadership and empowerment.

Motivational & Personal Excellence Skills workshop conducted at SSRana & Co.

Motivation is that wonderful energy, drive, and excitement that employees expend when they are inspired to contribute. Motivation is tapped with goals, clear expectations, recognition and encouraging management.

On February 27, 2018, we at SSRana & Co., organized a motivational session on Personal Excellence Skill, under the guidance of Mr. Yogesh Sharda, a Personal Development Trainer and Facilitator

During the session Mr. Sharda briefly navigated through the trials and tribulations faced by employees and suggested ways on how to improve on them and to have a check on our thoughts. He further elaborated on the ways by which we can take clear decisions in the administration and to have a control on our desires.

The pursuit of work-life balance reduces the stress employees’ experience. When they spend majority of their days on work-related activities and feel as if they are neglecting the other important components of their lives, it results in stress and unhappiness.

At SSRana & Co. we realize that motivation is the most powerful emotion that our colleagues bring to work each day. Because many of our colleagues experience a personal, professional, and monetary need to achieve, work-life balance is challenging. And this is precisely the reason why, we believe that the management can assist our colleagues to experience work-life balance by offering off-beat opportunities like flexible work schedules, responsible time and communication expectations, and firm-sponsored motivational workshops.

It was indeed a wonderful learning experience for us all.

SSRana & Co. celebrates the festival of Colors

Holi is a Hindu spring festival celebrated in the Indian subcontinent, also known as the "festival of colors" It signifies the victory of good over evil, the arrival of spring, end of winter, and for many a festive day to meet others, play and laugh, forget and forgive, and repair broken relationships. It is also celebrated as a thanksgiving for a good harvest. Holi is a two-day festival which starts on the Purnima (Full Moon day) falling in the Bikram Sambat Hindu Calendar month of Falgun, which falls somewhere between the end of February and the middle of March in the Gregorian calendar.

The SSRANA & Co family celebrated Holi this year with much enthusiasm! Everyone participated in the festivities by applying dry organic vegetable colours and played Holi with fresh flowers!
Wishing everyone a safe and Happy Holi!

Script it! ™ Seventh Essay Writing Competition

Vidya Darshan Rana Charitable Trust in collaboration with S.S. Rana & Co, Advocates, on the occasion of World IP Day presents Script it!^™ The 7th All India Essay Writing Competition.

Young minds are encouraged to write essays on World IP Day theme i.e. " Powering

Change: Women in innovation and creativity”

The aim of the competition is to provide a platform to students to share their views on the relevant theme and enable them and their school(s) or college(s) in getting National and International recognition.

Please refer to this link for detailed terms and conditions of the competition.

All the best!!!

All the best!!!