Some of the noteworthy trademark-cases decided /considered by various courts under the Trademarks Act 1999 are:

1. Inter IKEA Systems BV v. I Key Home Studio LLP -Delhi High Court-CS(COMM) 1143/2024- decided on 18-12-2024

Inter IKEA Systems BV is the proprietor of the well-known and internationally renowned trademark IKEA and along with its color combination and trade dress, which are the subject of many trademark registrations across several countries of the world, including, in India, since 1943.  The trademark IKEA forms a part of nearly all the trade names of all the companies under the plaintiff Group umbrellas as well as companies of the plaintiff Group’s franchisees. IKEA is a unique and coined word having all the trappings of an invented mark and is an inherently strong mark.

The Court noted that ‘IKEY’ along with other variants which is deceptively and confusingly similar to the plaintiff’s IKEA trademark.  The intention is to piggyback on the plaintiff’s entrenched goodwill and reputation in the IKEA marks, which is highly unethical, dishonest and illegal.  Hence, the Court restrained I Key Home Studio LLP from using the impugned mark IKEY and the logos / or any other variation thereto as part of its trade name and trademark ‘IKEY Home Studio’/ ‘IKEY Home Studio LLP’, which amounts to infringement of plaintiff’s registered trademark IKEA in any manner.

2. Mankind Pharma Limited v. Sepkind Pharma Private Limited –Delhi High Court- CS(COMM) 1091 of 2024-Decided on 06-12-2024.

Mankind Pharma Limited adopted the trade mark “MANKIND” in 1986 and registered the same in various classes under the Nice Classification for various goods and services which meant that Mankind enjoyed a statutory protection over its trade mark under the Trade Marks Act, 1999.  Mankind’s trade mark had also been declared as a ‘well-known’ trade mark by the Registrar of Trade Marks under Rule 124 of the Trade Marks Rules, 2017.  Mankind submitted that “KIND” had become a core component of their branding strategy and that its extensive use of “KIND” formative trade marks had established a strong reputation for quality in the pharmaceutical industry. It was also submitted that the original artistic work in the device marks was conceived, designed, and created for it and thus, it was the owner of the copyright subsisting in the said artistic work under the provisions of the Indian Copyright Act, 1957.

In the first week of December 2024, Mankind came to know  that ‘Sepkind’ was not only using the trade mark “SEPKIND” which was deceptively similar to Mankind’s well-known trade mark but also contained the prefix “KIND”.  ‘Sepkind’ was also using a deceptively similar logo and had copied the tag line of Mankind — “Serving Life” by using the tag line “Save your Life”.

The Court said that Mankind had demonstrated a prima facie case for grant of injunction and if no ex-parte ad-interim injunction is granted, Mankind would suffer an irreparable loss. It was also stated that the balance of convenience was against ‘Sepkind’. Accordingly, the Court barred ‘Sepkind’ and its proprietors, partners, or directors from selling, offering for sale, advertising, directly or indirectly dealing in any goods and services under the impugned trade mark “SEPKIND” or any other trade mark that may be identical or deceptively similar to Mankind’s trade mark or “KIND” formative trade marks and their artistic works.

The matter would next be listed on 16-04-2025.

3.Lenovo (Singapore) Pte. Ltd. v. RPD Workstations Private Limited- Madras High Court 2024 – decided on 03-12-2024.

Lenovo is exclusive proprietor of THINK Family of Marks, for which, trade mark registrations have already been obtained both in India as well as in Abroad; that Lenovo has acquired distinctiveness for its THINK Family of Marks by its long and continuous usage; and that the mark ‘THINBOOK’ is deceptively and phonetically similar to that of the Lenovo’s THINK Family of Marks. Hence, the court directed the Trade mark Registry to cancel the impugned mark ‘THINBOOK’ in Class 9 from the Register of Trade marks allowing the petition under Section 57 of the Trademark Act 1999.

4.Devi Prasad Shetty v. Medicine Me, 2024 Delhi High Court – decided on 28-11-2024.

The Court granted ex parte ad interim injunction restraining defendants  from misusing, misappropriating or exploiting the name, likeness, image, videos, or any other aspects of Plaintiff s registered trade marks ‘NARAYANA HEALTH’, ‘NARAYANA HRUDAYALAYA’ . The matter would next be listed on 28-11-2025.

5. Hind Rectifiers Ltd. v. Chrome21 India Pvt. Ltd., 2024 Bombay High Court – decided on 26-11-2024.

The court restrained Chrome21 India from infringing Hind Rectifiers’s mark ‘HIRECT’ and  declared ‘HIRECT’ as a well-known trade mark.

6. Metro Brands Ltd. v. Nice Shoes LLP, 2024 -Bombay High Court- decided on 18-11-2024..

Bombay HC grants temporary injunction to Metro Brands Ltd. for mark ‘MOCHI’ against mark ‘DESIMOCHI’; declares ‘MOCHI’ as a well-known mark.

7. Louis Vuitton Malletier v. Abdulkhaliq Abdulkader Chamadia- 2024 Delhi High Court -decided on: 12-11-2024 :  Delhi High Court permanently restrains counterfeiters from infringing and passing off Louis Vuitton trade mark.

8. Novakind Bio Sciences Private Limited v. Mankind Pharma Limited, FAO(OS) (COMM) 212/2023- Delhi High Court -decided on 05-10-2024 : Delhi High Court upholds injunction against Novakind Bio Sciences for infringing Mankind Pharma’s ‘KIND’ trademark.

9.Kaira District Cooperative Milk Producers Union Ltd. v. Bio Logic and Psychotropics India (P) Ltd, 2024, Delhi High Court- decided on 10-09-2024

The word ‘AMUL’, irrespective of the goods it is applied upon, was the sole repository and identifier of the plaintiffs and its members. The word ‘AMUL’ symbolized a movement among Indian rural community towards prosperity and the Indian public perceives the word ‘AMUL’ having association or connection with the plaintiffs alone and no other. The trade mark ‘AMUL’ was recognized as a well-known trade mark. The trade mark ‘AMUL’ was also listed in the List of Well-Known Marks, as maintained by the Registrar of Trade Marks.

The plaintiffs stated that the defendants had knowingly infringed the plaintiffs’ well known and household trade mark ‘AMUL’ and the defendants’ could not plead ignorance of prior existence as well as the reputation of the plaintiffs’ ‘AMUL’ trade mark. The plaintiff’s filed the present suit on the ground that the defendants were found to be advertising and offering to sell/selling the impugned products under the mark ‘AMUL’. Defendant 1 was found to be engaged in the business of dealing in pharmaceutical tablets, i.e., Pharmaceutical Preparation, which was seemingly used as an antipsychotic medication under the mark ‘AMUL’, being sold on various E-commerce websites such as www.1mg.com, www.company.pharmahopers.com, www.indiamart.com. …

The court observed that the conduct of the defendants highlights their malafide and dishonesty in adopting the same mark, as that of the plaintiffs’. Thus, it is clear that the defendants have infringed the plaintiffs’ registered trademark, which, has also been recognised as a well-known trademark. The defendants are not entitled to use the mark ‘AMUL’ or any other mark, which is deceptively similar to the plaintiff’s trademark.

An ordinary consumer, having average intelligence and without minute examination on the background of the defendants, is likely to be confused that the defendants have some association or connection with the plaintiffs. Thus, use of the mark ‘AMUL’ by the defendants gives an unfair advantage to the defendants and is detrimental to the distinctive character or repute of the plaintiff’s well-known registered trademark.

Accordingly, considering the aforesaid discussion and considering the statement of the defendants, as recorded in the order dated 26th April, 2023, expressing their readiness to suffer the decree of injunction, the plaintiffs are entitled to decree of permanent injunction in their favour, and against the defendants.

 Further, the court ordered that  the plaintiffs are entitled to costs of Rs. 4,00,000 and damages of ₹ 1,00,000, totalling to ₹ 5,00,000, which should be paid by the defendants to the plaintiffs within a period of six months. In case the amount was not paid within the aforesaid period, the same should carry an interest at the rate of 9% per annum.

10.Sporta Technologies Private Limited v. John Doe, 2024 – Delhi High Court- decided on 04-11-2024]

A suit was filed by Sporta Technologies Private Limited (plaintiff) seeking permanent injunction restraining infringement of registered trademarks passing off, infringement of copyright, rendition of accounts, damages and delivery up on account of adoption and use of the marks “DREAM”, the domain name “dream11lotery.com”, and the plaintiffs’ email address “admin@dream11.com” by defendant 1, which amounts to infringement and passing off of the plaintiffs “Dream 11” trademarks. Mini Pushkarna, J., held that the defendants’ use of marks similar to “DREAM,” domain names such as “dream11lotery.com,” and the email address “admin@dream11.com” amounted to an infringement of Sporta Technologies’ registered trademark “Dream 11.” The present case involves a lawsuit filed by the plaintiffs, Dream11 and its parent company, a popular fantasy sports platform, against entities allegedly infringing on its registered trademarks, copyright, and overall brand identity. The suit arises from the plaintiffs discovering a website, “dream11lotery.com,” run by the anonymous defendant John Doe (Defendant 1), which closely replicates Dream11’s official website and misuses their brand name and elements. Defendant 2, the domain name registrant of “dream11lotery.com,” was found to be facilitating this infringement by registering a domain deceptively similar to the plaintiffs’ own “dream11.com.” The plaintiffs alleged that Defendant 1’s actions amount to infringement of their trademark rights, as well as unauthorized imitation of Dream11’s unique trade dress and design elements. Dream11 was founded as a platform where users create fantasy sports teams, earning points based on real-life player performances. Since its inception, it has become a prominent brand in fantasy sports, partnering with international sports leagues and garnering awards that underscore its credibility. With over 20 crore users and numerous sponsorships, including with the BCCI for the Indian Premier League (IPL), Dream11 has established a significant presence and reputation. Defendant No. 1’s imitation website purportedly uses Dream11’s trademarks and other identifiers to mislead the public into thinking it is associated with Dream11, violating both trademark and copyright laws. After the plaintiffs discovered the infringing website in December 2023, on 08-01-2024, the Court granted an interim injunction favoring the plaintiffs, prohibiting Defendant 1 and associated parties from using any marks or domains similar to Dream11’s. The Court also directed Defendant 2, the domain registrar, to suspend access to the infringing website and reveal the details of the registrant. Despite being served via email, the defendants failed to respond or file written statements within the statutory period, leading the Court to close their right to file such statements and proceed ex parte. The Court, exercising its authority under Order VIII Rule 10 of the Civil Procedure Code, deemed it unnecessary to go through a trial process as no defense was presented. The Court also observed that recording ex parte evidence would waste judicial resources since the evidence on record was sufficient to rule in favor of the plaintiffs. Thus, the Court held that the defendants had infringed on Dream11’s intellectual property rights. The Court issued a permanent injunction restraining the defendants from further infringing activities and upheld the plaintiffs’ claims, thus providing Dream11 with comprehensive relief against unauthorized use of its brand.

11. Reliance Retail Ltd. v. Md. Sirajuddin and Beauty Bibi, 2024 –Bombay High Court- decided on 24-10-2024 : Bombay HC granted temporary injunction to mark “CAMPA” in a trade mark infringement case against “JHAMPA”.
12. Moti Mahal Delux Management Services (P) Ltd. v. SRMJ Business Promoters (P) Ltd- Delhi High Court -CS(COMM) 1115 of 2024 – decided on 12-12-2024.

Moti Mahal Delux Management Services (P) Ltd  is the rightful and exclusive owner and registered proprietor of the trade marks ‘MOTI MAHAL’, ‘MOTI MAHAL GROUP’, ‘MOTI MAHAL MANAGEMENT SERVICES’.  SRMJ Business Promoters (P) Ltd  , the ex-franchisee of  Moti Mahal Delux Management Services (P) Ltd  continuing to carry on its operations under the trade mark ‘MOTI MAHAL DELUX TANDOORI TRAIL’/ , despite the termination of the Franchise Agreement.

After considering the circumstances, the Court stated that the plaintiffs had demonstrated a prima facie case for grant of injunction and, in case, no ex parte ad interim injunction was granted, the plaintiffs would suffer an irreparable loss. Further, balance of convenience was also in favour of the plaintiffs, and against the defendants. Hence the Court restrained  SRMJ Business Promoters (P) Ltd   from using the impugned marks ‘MOTI MAHAL’, ‘MOTI MAHAL DELUX’ and ‘MOTI MAHAL DELUX TANDOORI TRAIL/ or any other mark deceptively and/or confusingly similar and/or identical/virtually identical to the trade marks of Moti Mahal Delux Management Services (P) Ltd ,  as – as an ex parte ad interim injunction.

The suit  is  one seeking for  permanent and mandatory injunction for infringement and passing off registered trade marks and copyright.  The matter would next be listed on 06-05-2025.

13. Pfizer Products Inc. v. Renovision Exports (P) Ltd., 2024 -Delhi High Court- decided on 01-05-2024.
    

Pfizer Products Inc-Plaintiff owns the trademark ‘VIAGRA’ a well-recognized erectile dysfunction allopathic drug.  Renovision Exports (P) Ltd  is manufacturer of   a medicinal products for curing sexual disorders under the trademark ‘VIGOURA’.

The court  found that  the both the trade marks exhibited a high degree of phonetic similarity.

The Court opined that the similarity in sound could mislead consumers into believing that ‘VIGOURA’ was either a variant of, associated with, or endorsed by the makers of ‘VIAGRA’, potentially resulting in mistaken purchases or the belief in equivalent efficacy. Further, visually also both the trade marks shared notable similarities in the letter structure and length, contributing to strong visual resemblances. Unlike non-medicinal products, where confusion might only result in economic harm to the plaintiff, confusion between medicinal products could pose serious risks to public health. Thus, the Court permanently restrained the defendants or anyone acting on their behalf from manufacturing, selling, or offering for sale, marketing, advertising, or using the mark ‘VIGOURA’ in any manner or any mark deceptively similar to the plaintiff’s trade mark ‘VIAGRA’, in relation to any of their goods as would amount to infringement or passing off. Further, the plaintiff was entitled to nominal damages of Rs. 3,00,000, which would be recoverable jointly and severally from the defendants.

14. Emami Limited v. Hindustan Unilever Limited, 2024 -Calcutta High Court -dated 9-04-2024]

Brief Background Emami, a prominent entity in the skincare industry, has built a strong brand presence over the years with its product line “Fair and Handsome.” Meanwhile, Hindustan Unilever Limited, also a significant player in the market, launched a competing product named “Glow and Handsome.” Emami, perceived this introduction as potentially infringing upon their trademark, given the striking similarity between the two product names. Despite initial attempts at resolution, with Emami expressing concerns about possible trademark infringement and passing off, Hindustan Unilever continued to use the “Glow and Handsome” mark. This ongoing usage led Emami to file a suit against Hindustan Unilever Limited, for trademark infringement and passing off. Analysis, Law and, Decision Upon consideration of the contentions put forth by the parties, the Court delved into the essence of passing off, recognizing that while certain terms may initially be descriptive, they can attain a secondary distinctiveness through extensive use and reputation. In this regard, the Court noted Emami’s substantial efforts in building their brand and the significant market presence of “Fair and Handsome.” The Court observed that the defendant’s adoption of the mark “Glow and Handsome,” despite being aware of Emami’s brand, suggested an intentional attempt to capitalize on Emami’s goodwill. The Court remarked, “Nobody has any right to represent the goods of somebody else. In doing so, the rival takes a ‘free ride’. There is no line between permissible free riding and impermissible free riding. All ‘free riding’ is unfair.” The Court emphasized, “Words and terms which are prima facie descriptive may in certain circumstances by use and reputation acquire a secondary distinctive meaning before they are monopolized.” The judge opined, “At the heart of passing off lies deception or its likelihood. The respondent has an existing brand and in changing its name has intentionally opted to choose a leading, prominent and essential feature of its competitor’s product.” Therefore, despite the absence of infringement, the Court ruled in favour of Emami on the grounds of passing off, granting them relief in the form of an injunction against Hindustan Unilever