Abstract:
A trademark is one of the most essential aspects of any brand and to build a brand, you’ll need something more than just some amount of money. Businesses usually register trademark rights in India to preserve their brands in the domestic market. There are, however, additional options available for obtaining worldwide protection, such as the Madrid Protocol and the International Trademark Association. When many businesses move out into the open market, they run a high risk of infringement since even slight lapses in vigilance may cost millions of dollars and ruin a brand’s image.
The best way for businesses to learn is from landmark rulings in the field which may provide better insights and solutions to queries. The article thus provides a descriptive analysis to five landmark cases on trademark infringement in India.
Introduction:
Much like a brand’s seasonal garments and accessories, trademarks are valuable assets. They make it easier for consumers to quickly identify the source of given goods and services. Instead of reading the description of a device of Apple, consumers can look for the Apple trademark. Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a unique pattern of stripes. By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods. Just because, if a consumer tries a brand and finds the quality lacking, it will be easy for the consumer to avoid that particular brand in the future and instead buy another. Trademark law strengthens these goals by regulating the legitimate use of trademarks.
If a party owns the rights to a particular trademark, it can sue subsequent parties for trademark infringement. Now you might be wondering what is trademark infringement? In the quest of making huge benefits without efforts owners of small businesses adopt the established trademarks either exactly or in a modified way making it difficult to be differentiable.This kind of exercise by such small businesses is trademark infringement and the standard that decides it is “likelihood of confusion”.To get better clarity on how trademark law works, we will further some famous trademark infringement cases in India.
Analysis with Case Laws:
1. The Coca Cola Company v. Bisleri International Pvt. Ltd.
Who owns exclusive rights to Maaza?
Facts: Bisleri International Pvt. Ltd. (hereinafter referred to as“Defendant”) is company famous for providing mineral water in India, introduced the drink named Maaza. Lately the defendant company came into agreement with the plaintiff (The Coca Cola Company) on 12th November 1993, wherein Bislerigave away the formulation rights, IPR, and know-how along with the goodwill for India for bottling and selling a mango fruit drink – MAAZA to Coca Cola.
Now, the defendant has filed a trademark application in Turkey in 2008 for registering the word‘MAAZA’ and has begun exporting the same fruit drink under that name. Coca-Cola sought a permanent injunction and infringement damages for passing off and trademark infringement against the defender, Bisleri, as they sold the rights to Coca Cola.
Court’s insights: Bisleri was awarded with an interim injunction for using the MAAZA trademark in India, and putting it up for export, which was clearly an instance of trademark infringement.
2. Yahoo! Inc. v. Akash Arora &Anr
Is Yahoo India similar to Yahoo?
Facts: Yahoo Incorporation (hereinafter referred to as “Plaintiffs”) is the owner of the registered trademark, Yahoo, as well as the domain name Yahoo.com; both the trademark and the domain name have developed a distinct identity, goodwill, and reputation. Lately, In the name of ‘Yahoo India’, Akash Arora (hereafter referred to as “Defendants”) began to offer web-based services that were almost identical to those supplied by the Plaintiffs. The plaintiffs then filed a permanent injunction against the defendant under Order 39 Rules 1 & 2 CPC for using a trademark that was deceptively similar to its own and passing off its services.
Court’s Insights: According to the court, internet users would be misled and deceived into believing that both domain names are from the same source. The defendant claimed that it had posted a disclaimer on its website as a defense. However, it was noted that a simple disclaimer was insufficient since the nature of the internet is such that the use of a similar domain name cannot be remedied by a disclaimer, and it makes no difference if ‘yahoo’ is a dictionary term. The plaintiff’s name has acquired distinction and uniqueness as a result of its association with him.
(1st landmark Judgment on cyber-squatting in India)
3. Academy Awards v. GoDaddy
Will the Daddy go clear?
Facts: A further case of cyber-squatting pitted the Academy Awards against domain registrar GoDaddy. Five years have passed since the fight began. In 2010, Academy filed a lawsuit against GoDaddy for allowing users to purchase “confusingly” similar domain names such as 2011Oscars.com and others. It offered to let individuals who wanted to “park” on these domains and claim a portion of the money to pass on the earnings. Initially, the Academy submitted to court that GoDaddy sold 57 names that can be classified as “potentially misleading.”
Courts insights: The ultimate decision favored cyber-squatting. The court was of opinion that GoDaddy lacked the “necessary bad faith intent to profit” from its domain transactions.
(Better to prevent such cases, just as you cannot expect a third-party to “guard” your registered trademark, as GoDaddy claimed.)
4. Zara Fashion vs Zara Food
Battle will stand for Food or Fashion?
Facts:ZARA is a name that everyone should be familiar with because it is one of the most well-known and expensive fashion brands in the world. The matter was first brought to light in 2010 when this Spanish clothing giant discovered a Delhi-based restaurant carrying a similar brand name. As a result, ZARA fashion filed a lawsuit against the restaurant, which was heard in the Delhi High Court
Courts Insights: The court ruled in favor of Zara Fashion (Hereinafter referred as ‘plaintiff’), and ordered the Restaurant to change its name.
- Cadila Health Care v. Cadila Pharmaceutical Ltd.
Confused between ‘Falcigo’ and ‘Falcitab’?
Facts: Both the Appellant and the Respondent were pharmaceutical businesses that had taken over the Cadila Group’s operations after it was restructured under the Companies Act. The right to use the word Cadila was awarded to both companies. The Appellant Company first created a medicine to treat cerebral malaria under the brand name ‘Falcigo,’ and was granted license to distribute it across India by the Drugs Controller of India in 1996. The Respondent was also given license to commercialize medications for cerebral malaria under the name ‘Falcitab’ in 1997. Both drugs were schedule L and were to be sold by exclusively by professionals but it is the deceptive similarity of drugs,which can lead to confusion.
Courts insights: The Apex Court after analyzing the requirements of the Trademarks Act, 1999 and Section 17-B of the Drugs and Cosmetics Act, 1940 concluded that there was a probability of passing off and that it was a matter of deceptive similarity.
(Landmark judgment on passing off of an unregistered trademark)
Conclusion:
Businesses need to understand the importance of trademark and the effects of infringing same. In this era full of competition establishing brands presence in market is a difficult task. Building and maintaining a brand value is not possible without having a trademark, it can registered or unregistered. Trademark protection is of extreme importance given the fact that there are businesses targeting established trademarks with intent of creating huge profits. The analysis of the cases discussed above can provide a fair idea about possible disputes and courts opinion on such disputes.
No comment