Recent cases on Trademark laws in India

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1 (ISKCON) vs. Iskcon Apparel Pvt. Ltd and Ors[1]

1.1 FACTS

1.2 HELD

1.2.1 The Court held that[3]

2 Jagran Prakashan Ltd. vs. Telegram FZ LLC &Ors[4]

2.1 FACTS

2.2 HELD

3 M/s ITC Limited vs. Nestle India Limited[6]

3.1 FACTS

3.2 HELD

4 Reference

4.1 Related

(ISKCON) vs. Iskcon Apparel Pvt. Ltd and Ors[1]

FACTS

• The International Society for Krishna Consciousness (ISKCON) filed a commercial suit against the apparel company ISKCON Apparel Pvt Ltd at the Bombay High Court.
• The ISKCON alleged that the apparel company had infringed its registered trademark to sell clothes online.

HELD

The High Court of Bombay held the ISKCON registered trademark International Society for Krishna Consciousness as a “well-known trademark” Sections 2 (1) (zg) of the Trade Marks Act, 1999[2].

The Court held that[3]

a) the Plaintiff’s trademark ISKCON has wide acceptability;

(b) the popularity of the Plaintiff’ s trademark ISKCON extends not only in India but in other countries as well;

(c) the Plaintiff is using its trade mark ISKCON openly, widely and continuously since the beginning; and

(d) the Plaintiff has taken several actions against various infringers in the past.

Jagran Prakashan Ltd. vs. Telegram FZ LLC &Ors[4]

FACTS

• Telegram have created channels on the platform whereby e-papers of Jagran Prakash Limited (JPL) are being shared in PDF format daily. As per JPL, Telegram through these anonymous users was not only permitting the availability of current editions of the e-paper but permitted its users to download all the previous editions of JPL’s Newspaper published in the past, which is otherwise available to a user only if he/she pays a subscription fee.
• JPL had also placed reliance on Section 79 of the Information Technology Act, 2000 to state that Telegram could not escape from its liability on the ground that it is an intermediary for the reason that it was required to conduct due diligence and in terms of Rule-3 (4) of the Information Technology (Intermediaries Guidelines) Rules, 2011, and on being informed about the misuse

HELD

A Single Judge of the Delhi High Court passed an interim injunction in a suit for copyright and trademark infringement where it directed the messaging app, Telegram to disclose the identity of users who were running channels on its platform to illegally share e-newspaper of JPL on a daily basis. The High Court also directed Telegram to take down the channels which were indulging in similar infringement activities against JPL newspaper, within 48 hours of passing of the order[5]

M/s ITC Limited vs. Nestle India Limited[6]

FACTS

• A suit was filed by ITC against Nestle India for using the expression magical masala for its Maggi noodles product, ITC entitlements it was elevated from the branding for its SunfeastYipee! Noodles product.

HELD

The Madras High Court held that the words magic and magical are both common trade words. Neither plaintiff nor defendant can claim monopoly over these expressions. Both these words are important and common to the culinary and Indian cuisine world.

The court also observed that the plaintiff (ITC) has filed for an application of the use of ‘magic masala’ as a word mark. The court rejected the trademark registry under section 9[7] trademark act 1999.

Reference

Recent cases on Trademark laws in India

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[1]COMMERCIAL IP SUIT (L) NO. 235 OF 2020

[2]“well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be take as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mention goods or services.

[3]https://indiankanoon.org/doc/83405343/

[4]CS(COMM) 146/2020

[5]https://indiankanoon.org/doc/193622459/

[6]C.S No. 231 of 2013

[7] Section 9 Absolute ground for refusal for trademark