INTRODUCTION
Any name, sign, or insignia used in or by a business to distinguish the producer or supplier of a product or service as well as to recognize products or services is referred to as a trademark.[1] Trademarks act as a brand identifier that attaches to itself the goodwill and reputation of the company and hence becomes a company’s most valuable asset. A good and valid trademark is distinct and creates a strong identity for the brand while offering robust legal protection.
The following paragraph briefly uncovers some of the most famous trademark cases in India:
1. Imperial Tobacco Company Of India Limited Vs Registrar Of Trade Marks And Another[2]
This is an important judgment as it lays down the interpretation of the term “capable of distinguishing” in trademarks. The court in the said case held that the expression “capable of distinguishing” involves both present capability and future potentiality of distinguishing by the trademark. In this case, the Imperial Tobacco Company is a famous company that is involved in the manufacturing and distribution of cigarettes with the mark “SIMLA” throughout the country. However, the registrar refused the application for registration in response to which an appeal was preferred to the Calcutta High Court. The case revolved around the issue of whether the geographical name “SIMLA” could be registered as a trademark for manufactured tobacco products. The Hon’ble Calcutta High Court, based on the aforementioned principles, dismissed the appeal on the ground that the mark “SIMLA” is a famous geographical place and hence cannot be registered as a trademark.
2. M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks[3]
In this case, Hindustan Development Corporation Ltd. submitted an application for registration of the trademark “RASOI” for the ‘refined deodorized groundnut oil for cooking purposes’ they manufactured. However, the registration of the trademark was refused in response to which, the company filed an appeal against the decision of the Deputy Registrar. The Calcutta High Court in the said case concluded that the term ‘RASOI’ directly refer to the character and quality of the oil product. Thus, it was held to beineligible for registration under Section 6(1)(d) of the Trademark Act, 1940[4]. Thus, the court’s judgment dismissed the appeal and rejected the registration of ‘RASIO’ as a trademark, citing its direct reference to the product’s character and quality, the necessity of distinctiveness, and the principle against monopolizing common words.[5]
3. Starbucks Vs Sardarbuksh[6]
In this case, Starbucks registered their word mark “STARBUCKS” and a corresponding device mark as a trademark in the year 2001. The defendants herein established their business in 2015 under the name or the mark “SARDARBUKSH COFFEE & CO.” along with a logo. Based on similarity, the plaintiff filed a suit against the defendants for trademark infringement by using a similar trademark under Section 11 of the Trade Marks Act, 1999[7]. The Delhi High Court in the present case, ruled that both the trademarks were fairly similar and that a man of ordinary intelligence might be confused between the two, and thus rejected the registration of the mark “SARDARBUKSH COFFEE & CO.” for it being deceptively similar to the mark of the plaintiffs which had previously been registered.
4. Cadila Health Care Ltd. Vs Pharmaceuticals[8]
The appellant, Cadila Healthcare, and the respondent, Cadila Pharmaceuticals, are both pharmaceutical companies that introduced medications for the treatment of cerebral malaria. Cadila Healthcare launched its medicine under the name “FALCITAB,” while Cadila Pharmaceuticals introduced its product as “FALCIGO.” Upon discovering that Cadila Pharmaceuticals was using the mark “FALCITAB,” which closely resembled their own mark “FALCIGO,” Cadila Healthcare initiated a suit in the court. They alleged that the similarity between the marks, particularly for similar medicines, was likely to cause confusion among consumers. In the lawsuit, Cadila Healthcare sought an injunction to restrain Cadila Pharmaceuticals from using a deceptively similar mark.
The Hon’ble Supreme Court in the said case ruled that, despite the drug being prescribed by medical practitioners and sold directly to hospitals, the likelihood of confusion between the two marks cannot be ignored. The Court further outlined specific principles to be considered when determining whether a mark is deceptively similar:
- “Examining the nature of the marks, including word marks, composite marks, and others.
- Assessing both visual and phonetic similarities.
- The mode of purchasing the goods or placing order for the goods.
- Evaluating the similarity in the nature, performance, and characteristics of the products in question.
- The nature of goods in respect of which they are used as trademarks.
- Identifying the target class of consumers, among other factors.
- Any other relevant circumstances important for determining the distinctiveness of the mark.”[9]
5. Yahoo! Inc. Vs. Akash Arora & Anr[10]
Yahoo Inc., the plaintiff in the said case, was the proprietor of the trademark “YAHOO” and the domain name “YAHOO.COM,” both of which were globally recognized and associated with internet services. Established in 1995, Yahoo Inc. had registered its trademark in numerous countries, although India was not one of them at the time. The defendant, Akash Arora, began operating under the domain name “yahooindia.com,” offering services similar to those provided by Yahoo Inc. in India. In response, Yahoo Inc. filed for an interim injunction to prevent the defendant from using the domain name “yahooindia.com” or any name resembling its trademark. The court ruled in favor of Yahoo Inc., finding Akash Arora liable for trademark infringement. It concluded that the use of a deceptively similar domain name for comparable services constituted cybersquatting.
The judgment emphasized that the goodwill of a company is intricately tied to its name and trademark, which is particularly true for a globally recognized brand like Yahoo Inc. As a result, the court granted Yahoo Inc. a remedy for passing off, thereby restraining the defendant from using the infringing domain name.
Conclusion
In conclusion, intellectual property laws, including trademark and copyright protection, are crucial to safeguarding the rights of creators, innovators, and businesses in India. The discussed aforementioned cases illustrate the importance of maintaining distinctiveness in trademarks. The precedents reflect the need for a balanced legal framework that not only protects the commercial interests of businesses but also recognizes the creative efforts of individuals. These most famous trademark cases in India contribute to the evolving landscape of intellectual property law in India, reinforcing the significance of protecting creativity, innovation, and business interests in a rapidly globalizing economy.
Name: Ishita Goel, Pursuing 3rd Year BCom LLB (Hons), Jindal Global Law School
Wish to read similar articles? Click the link to read more: https://jpassociates.co.in/nandini-vs-nandhini/
Link to IPindia’s official page: https://www.ipindia.gov.in
[1]Anshika Srivastava, ‘METAVERSE AND INTELLECTUAL PROPERTY RIGHTS’, 3.3 JCLJ 195, 198 (2023).
[2] Imperial Tobacco Co. Of India Ltd. vs Registrar Of Trade Marks And Anr., AIR 1968 Calcutta 582.
[3] M/s Hindustan Development Corporation Ltd. Vs The Deputy Registrar of Trade Marks, AIR 1955 CAL 519.
[5] ‘M/s Hindustan Development Corporation Ltd v. The Deputy Registrar of Trade Marks’, DRISHTI THE VISION FOUNDATION, INDIA (March 07, 2024) https://www.drishtijudiciary.com/landmark-judgement/intellectual-property-rights/ms-hindustan-development-corporation-ltd-v-the-deputy-registrar-of-trade-marks-air-1955-cal-519.
[6] Starbucks Vs Sardarbucksh, CS (COMM) 1007/2018.
[8] Cadila Healthcare Limited vs Cadila Pharmaceuticals, 2001 AIR SCW 1411.
[9] Ibid, para 35.
[10] Yahoo! Inc. Vs Akash Arora & Anr, 78 (1999) DLT 285.
