June 3, 2022
IPR News Letter- April - May 2022
Protection for individual words used in a registered trademark
The case of HAMDARD NATIONAL FOUNDATION (INDIA) & ANR. vs. SADAR LABORATORIES PVT. LIMITED, also known as ROOH AFZA vs. DIL AFZA, is a classic example of seeking protection for individual words used in a registered trademark (a phrase), where the individual words are commonly used in the specific product market. In this case, the plaintiff, Hamdard National Foundation (India), is a charitable foundation founded in 1906 by Hakeem Abdul Hameed that primarily focuses on distributing the company’s profits to advance the interests of society. For numerous years, the Hamdard company’s profits have gone solely to its foundation. The Plaintiffs have been manufacturing and marketing Unani and Ayurvedic medicines, oils, syrups, and non-alcoholic beverages for than a century. The defendant company/Sadar Laboratories Pvt. Ltd. has been producing Unani medicines, syrups, and botanical goods since 1949, when it was founded by M/s. Sadar Dawakhana.
FACTS OF THE CASE:
- The current complaint was filed because the defendant was not only infringing on the plaintiffs’ well-known trademarks in ‘Hamdard’ and ‘Rooh Afza,’ but was also passing off its products as the plaintiffs’ by using the name ‘Dil Afza.’
- The plaintiffs contend that they have established a tremendous reputation and goodwill for ‘Rooh Afza,’ with revenues of Rs.30983.57 lakhs in 2019-20 and Rs.16, 281.41 lakhs in 2020-21. (Till August 2020). The plaintiffs spent a large amount of money on advertising, as demonstrated by their spending of Rs.459.10 lakhs in 2019-20 and Rs. 577.89 lakhs in 2020-21, up to August 2020.
- The plaintiffs have also established in great detail the years when the trademark ‘Rooh Afza’ was originally registered in relation to these articles, the first being on August 3, 1942. The registration is still valid today. For almost a century, the plaintiffs’ product/sharbat was marketed in bottles under the trademark ‘Rooh Afza,’ with a one-of-a-kind colour scheme, layout, set-up, and arrangement of features, most notably a unique and unusual floral arrangement.
ISSUES OF THE CASE:
- Did the defendant infringe on the plaintiff’s trademark rights?
- Is the defendant’s trademark registration is valid?
- Whether the defendant’s trademark would confuse the consumers if used for similar products?
JUDGEMENT:
Justice Menon agreed with Hamdard’s claim of having built a vast reputation and goodwill around their trademark ‘Rooh Afza,’ but added that it “would be taking an extreme position, even if the consumers were connoisseurs, to believe that the use of the words ‘Rooh’ and ‘Dil’ would cause confusion because they connote deep emotion.”
“…Those who appreciate this profound emotion would be the first to be able to discern between ‘Rooh’ and ‘Dil,'” the judge stated, adding that the phrases ‘Dil’ and ‘Rooh’ do not mean the same thing to the average customer.
“Even if the sharbat was just manufactured in 2020, no case has been made out to prevent the defendant from distributing it under the name ‘Dil Afza.’
K&S COMMENT
Hamdard National Foundation (India) may only claim exclusivity over the entire phrase ‘Rooh Afza,’ not the two words that comprise the trademark. In other words, the Hamdard Foundation registered the entire trademark “ROOH AFZA,” not just “AFZA.” Despite the fact that DIL AFZA hit the market in 1976, it appears that there has been happy cohabitation with no confusion in the minds of customers for such a long time in the more sensitive market of medicine. As a consequence, Dil Afza got a positive judgment, bolstering the notion of the word combination utilized for trademark protection.
Delhi High Court permanently restrains DLH Express Service Private Limited (Defendants) from using “DLH” trademark:-
A Single Judge Bench of Justice Prathiba Singh decided on the above issue on a suit filed by DHL (“Plaintiffs”). Plaintiffs is a German-based very widely known popular logistics services company indulged in offering various services ranging between parcel and international express service, freight transport, and supply chain management as well as e-commerce logistics solutions. The mark/trade dress “DHL”, adopted in year 1969, derives its origin from three entrepreneurs who founded the company i.e. Adrian Dalsey, Larry Hillblom and Robert Lynn. Currently, it is used as ‘DHL’ in a stylized red font in a yellow background, with the letters ‘D’, ‘H’ and ‘L’ being displayed prominently and three straight red lines in a stylized form on either side of ‘D’ and ‘L’. Plaintiff’s mark is also used in various forms and variants as ‘DHL Supply Chain’, ‘DHL Express’, ‘DHL Global Forwarding’, etc. The “DHL” mark and logo are also registered in India and in several countries of the world. Plaintiff has also undertaken various successful enforcement actions for its mark in India and abroad.
Defendants were using the mark ‘DLH Express Services Pvt. Ltd.,’ in respect of courier services. The case of Plaintiff is that the marks and logos adopted by Defendant are almost identical to the “DHL” mark and logo, the colour combination is also identical, writing style and all the features of the “DHL” mark are being used by Defendant, and Defendant is also using the email address dlhmarketing1@gmail.com. Initially the court granted an ex-parte injunction restraining Defendants from using their impugned mark. Defendant submitted that has already changed its name from DLH Express Services Pvt. Ltd. to M/s. Dogra’s Cargo Express Private Limited with effect from 29th January, 2021, and Defendants do not intend to use the mark DHL, DLH or the logo for the services provided by it.
The court held that the marks are almost identical to Plaintiff’s mark and logo has also been copied, the services for which Defendant is using this mark are identical, and there is clearly no defense that Defendant has taken, except the fact that the Defendant is, in fact, using various channels of Plaintiff from 2013, but that too won’t give any permission to them to use Plaintiff’s mark and logo. Accordingly, the suit got decreed through grant of permanent injunction, and directed Defendants to withdraw its application for the mark ‘DLH Express Services Pvt. Ltd., Lastly, the court, after referring to the decisions of NR Dongre v. Whirlpool Corporation & Anr and Tata Sons v Manoj Dodia, declared the “DHL” mark to be” well-known” trademark in the field of logistics, freight transport, courier services, etc.
K&S COMMENT
DHL is one of the biggest freight companies in the world with huge turnover. The mark DHL having been adopted from the initials of the names of the founders is an extremely distinctive and arbitrary/inventive mark. It would be entitled to the highest protection. DHL’s logo is also a distinctive logo, which is easily recognizable. The Court was opined that the DHL mark is a well known mark owing to the extensive evidence placed on record showing the global use of the mark DHL and continued use of the mark DHL in India as also the registrations and the independent third party write-ups and articles, and enforcement actions which are placed on record, this Court unhesitatingly holds the mark DHL to be a well-known mark, especially in the field of logistics, freight transport, courier services, international money, etc. Therefore Court has rightfully protected well known mark. It is important for the owner of the well-known mark to keep checking on the e-commerce / internet whether any person is copying their mark.
The Delhi High Court Bench of Justice Jyoti Singh granted an ex parte ad interim injunction against Dipali Santosh Rao & Ors (“Defendants”) on a suit filed by HT Media Ltd (“Plaintiffs”). Plaintiffs are renowned print media company with Plaintiff No.2 operating under the Hindi leading publication “Hindustan”. Plaintiffs No. 1 and 2 belong to the same group of Companies, i.e., the ‘Hindustan Times’ Group, and operating through domains www.hindustantimes.com and www.livehindustan.com. It is further averred that Plaintiffs offer their news-related services in Marathi as well, through the domain name, marathi.hindustantimes.com.
It is the case that Plaintiffs came across the impugned domain name/website https://www.hindustantimesmarathi.com/, which appears to be owned and operated by Defendant No.1, who is primarily and substantially engaged in publishing, hosting, communicating, etc. news, articles, stories, columns, etc. in Hindi and Marathi to Indian readers and viewers. Plaintiffs said that impugned domain name/website offers services identical to those of Plaintiffs and the impugned mark logo “Hindustan Times Marathi” which is deceptively similar/nearly identical to that of Plaintiffs’ mark/logo “Hindustan” (Hindi). Plaintiffs had issued a cease-and-desist letter to Defendants No. 1 and 2, however, Defendants have not responded to the same and are instead continuing to infringe the Plaintiffs’ statutory and common law rights.
Accordingly, the court restrained Defendants No. 1 and 2 from using directly or indirectly the name/mark ‘Hindustan Times’ and the Hindi mark/logo “Hindustan” amounting to infringement of Plaintiff’s trademarks and copyrights and passing off unfair competition or dilution and garnishment until next hearing, and further ordered for blocking/suspension of the domain/website, https://www.hindustantimesmarathi.com/.
K&S COMMENT
The Delhi High Court came to this conclusion on the ground that Defendants trademark and website domain was deceptively similar to that of the HT Media and on account of this finding the Court was of the view that HT Media have made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience also lies in favour of the HT Media and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted”. It is important to note that even though there is similarity in two words in a registered mark or there is a similar mark using one of the words then the Court may not grant relief if it finds that it will not cause any confusion to the consumers as the Trademark law is more towards consumers’ interest then the Trademark owners’ interest.
DELHI HIGH COURT GRANTS AN EX-PARTE INJUNCTION IN FAVOUR OF HINDUSTAN UNILEVER AND ORDERS THE BLOCKING OF FIVE ROGUE WEBSITES.
The Delhi High Court recently granted ex parte interim injunction in favour of FMCG giant Hindustan Unilever Ltd. and against 5 rogue websites including “Unilever1.in” on ground that their trademark and website domain is deceptively similar to that of the plaintiff.
The Delhi High Court Bench of Justice Jyoti Singh recently granted an ex-parte ad interim injunction against certain rogue websites on a suit filed by the FMCG giant Hindustan Unilever Ltd (“Plaintiff”). Plaintiff No. 1 is a subsidiary of Unilever, who is implicated as Plaintiff No. 2. Plaintiff No. 2 is the owner of various trademarks including the trademark (“Unilever logo”) and has licensed the use of the same to Plaintiff No. 1 in India. Registration for the “Unilever logo” and “Hindustan Unilever” has been obtained by Plaintiffs and continues to be in the name of Plaintiff.
It is the case where there are certain rogue websites that are offering jobs/programs for selling and marketing products of the Plaintiffs in return for monetary considerations, and are attracting unsuspecting members of the public by utilizing and/or using trademarks of Plaintiffs herein. The information regarding such jobs is made available by the rogue Defendants through Instagram, Telegram and various other social media platforms as well as messaging apps and on the impugned domain name/i.e. https://unileverr1.in/#/home, which blatantly copies the house mark/trademark ‘UNILEVER’ in order to deceive and lure customers into believing that they have some association/affiliation with Plaintiffs.
Considering the above facts and circumstances and upon being satisfied by the case of the plaintiff the court restrained Defendants from using the impugned mark/logo “UNILEVERR” and/or any other mark identical/deceptively similar to Plaintiffs’ “Unilever Logo” and “Hindustan Unilever” trade mark and other additional directions being called upon to block/suspend the domain name and the fake social media handles being used to disseminate the information.
K&S COMMENT
It goes without a doubt that Hindustan Unilever are popularly known, recognized and referred to, globally and in India, as ‘Unilever’, which word, apart from being a house mark, also forms a prominent, inseparable and integral part of their corporate names. Justice Jyoti Singh appreciated the arguments of Hindustan Unilever (“Plaintiffs”), that the use of the Plaintiffs trademark ‘Unilever’ by the Defendant No. 1 as a part of its domain name as well as use of the Plaintiffs’ Unilever Logo, in an identical manner, is used essentially to deceive the public at large and the Defendants’ using Plaintiffs’ Unilever Logo, which is nearly identical constitutes infringement of the Plaintiff’s trademark, passing off, dilution of the Plaintiffs’ goodwill and unfair trade practice. It is important to note that your Company may have been famous and registered the mark but in case you are not vigilant and do not take legal action against infringement then you will have serious consequences in future. Therefore it is important that al companies should be vigilant and take timely action against infringement of their Trademark.
Levi Strauss & Co. (Levi) has been a pioneer in denim jeans manufacture since 1873. In 1873, Levi received a patent in the United States for a “Improvement in Pocket-Opening Fastenings,” which included riveted pockets and the creation of sturdy and long-lasting work pants for working men. Levi’s trademark stitching design, called as ‘Arcuate Stitching Design,’ was adopted and utilised on all of the company’s textiles, including denim jeans.
Facts of the Case:
Imperial Online Services Private Limited (Imperial Online) was selling denim pants with the same ‘Arcuate Stitching Design’ label on the website www.urbanofashion.com and other e-commerce platforms, which displeased Levi. Levi discovered the infringing products on numerous e-commerce sites.
Imperial Online received legal notices from Levi. Following that, Imperial Online had executed undertakings as of February 16, 2021, which included acknowledging Levi’s rights in the ‘Arcuate Stitching Design’ mark and promising to cease all use of the mark and remove all goods bearing the impugned mark from circulation within six months of the date of undertakings. Despite this, Imperial Online continues to produce and sell denims using the ‘Arcuate Stitching Design’ trademark. Levi sought an interim injunction with the Delhi High Court to prevent Imperial Online from infringing on its trademark in the stitching design.
On December 2021, the Court granted Levi an ad-interim injunction, prohibiting Imperial Online from producing, selling, or offering for sale any items carrying any mark that was deceptively similar to Levi’s registered mark.
When the injunction order was placed on Imperial Online, the company filed a written statement asking for a six-month extension to dispose of the shares. However, it stated that owing to the pandemic period and lockdowns, the deadline could not be met. However, it has cleared all stock carrying the Arcuate Stitching Design Trademark and was in the process of changing its product listings across platforms to reflect its changed designs, as required by the undertaking.
Meanwhile, Levi filed a takedown request with Imperial Online for its product listings on e-commerce sites like Amazon, citing a breach of the Undertaking’s responsibilities. Imperial Online requested an extension of three weeks to complete the removal. Levi gave Imperial Online until October 2021 to stop using the Arcuate Stitching Design mark.
Levi, on the other hand, alleged that Imperial Online’s items were still accessible on numerous e-commerce platforms, claiming that this was a violation of Imperial Online’s undertakings and the ad-interim injunction imposed by the Court at a previous date, and that it was therefore guilty of contempt.
Imperial Online, on the other hand, stated that it was ready to accept the permanent injunction and that it had no intention of making or selling fabrics or clothing with the Levi’s ‘Arcuate Stitching Design’ logo. It did, however, oppose to Levi’s claim for 8.5 lakhs in legal costs and damages.
Judgment:
The Court decided whether a stitching pattern, which was not a product design but rather a pattern, incorporated into Levi’s products, served as a trademark in the sense of linking the jeans with Levi? The Court reached a favorable conclusion after consideration. The trademark owner’s stitching pattern, even in the absence of a corresponding name or emblem, uniquely recognized the jeans as coming from Levi; the Court held that the design achieved its purpose as a trademark.
Based on the following circumstances, the Court concluded that the ‘Arcuate Stitching Design’ mark had acquired a secondary meaning after examining all of Levis’ representations and various precedents cited by Levis:
Since the company’s first pair of jeans in 1873, the Stitching Design label has appeared on Levi’s jeans, slacks, and trousers.
In the United States, the first trademark registration for the ‘Arcuate Stitching Design’ mark was awarded in 1943.
Levi has registered the mark as a trademark in various countries since then.
The mark is also a class 25 registered trademark in India.
The Court was glad to rule in Levi’s favour and award minimal costs of Rs. 4 lakhs to put the case to a close as quickly as possible. In addition, a declaration certifying the mark to be “well-known” was passed. All e-commerce platforms have been instructed to delete the photos bearing the Levi’s mark from their websites and to stop selling any clothes with the ‘Arcuate Stitching Design’ logo on their platforms.
K&S Comment:
This judgment is significant in India’s recognition and protection of non-traditional trademarks, and it will undoubtedly be cited in future cases involving similar issues.
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