December 3, 2021
Indian IPR Newsletter- October - November 2021
Latest updates on Indian Trademark Law
Breezer v. Freez Mix
The Delhi High Court on 12th November 2021 granted interim relief to alcohol manufacturer Bacardi (plaintiff) in a trademark dispute relating to its alcoholic beverage Breezer, by restraining makers of a non- alcoholic beverage ‘FREEZ Mix’ from using the trademark ‘FREEZ’ or any other mark, label, sign, device or name identical to ‘BREEZER’
The Court said that the mark ‘FREEZ Mix’ and the shape of the bottle it was sold in were deceptively similar to that of Breezer. The names were also phonetically similar, the Court observed.
K S & Co Comments
Breezer is a rum-based beverage made by Bacardi that is combined with various fruit essences. Bacardi also had trademark registrations in Classes 32 and 33 for the word mark ‘BREEZER.’ The shape of the bottle that Breezer was sold in has also been granted trademark registration.
Britannia Industries Ltd v. Good Day Oral Care and Ors
The Plaintiff has several registered trademarks under the mark “GOOD DAY” which has been continuously and uninterruptedly used since 1986 for the goods viz. biscuits and cookies. Defendant No. 1 [Good Day Oral Care], is stated to be a manufacturer of the impugned product under the impugned mark “GOOD DAY” and is using the infringing trademark. The Plaintiff learnt that the Defendant was using the mark “GOOD DAY” for Toothpaste – which is identical to Plaintiff’s well-known mark “GOOD DAY”.
The Plaintiff also learnt that Defendant No. 1 is in fact operating a website under the domain name ‘gooddayoralcare.com’, which subsumes the Plaintiff’s well-known mark “GOOD DAY”. The Defendant’s not only adopted the impugned mark “GOOD DAY”, but they also have wrongly adopted several representations of the Plaintiff’s ‘smile device’ as well, which when seen together are deceptively similar to the Plaintiff’s registered marks. The Defendant was unable to convincingly demonstrate how the use of the mark would not amount to infringement of the trademark. “In the prima facie opinion of the court, there is sufficient material placed on record by the plaintiff which demonstrates that plaintiff’s mark has been acknowledged to be a well-known mark. The Defendant adoption is not honest and is intending to take advantage of the reputation and goodwill of “GOOD DAY”, which is likely to mislead an average man of ordinary intelligence. All the rights and contentions are kept open for consideration at a later stage when the Defendants file their reply, however, at this stage, Plaintiff has established a prima facie case and the balance of convenience also lies in favour of the Plaintiff, and in case an ex-parte injunction is not granted, it is likely to cause irreparable loss to the Plaintiff.
K S & Co Comments
The Delhi High Court rules in favour of Britanniawith respect to its Good Day biscuits. Britannia is the country’s biggest biscuit company with several registered Trademarks under the Trade name “GOOD DAY”.
Himalaya Wellness Company vs Abony Healthcare Ltd
In Himalaya Wellness Company v. Abony Healthcare Limited, the Delhi High Court awarded an ex-parte preliminary injunction in favour of the plaintiff in a trademark infringement dispute concerning the mark ‘Liv52.’ “Liv.52”, a formulation for treatment of hepatic ailments, was launched by the predecessor in interest of the plaintiffs in 1955.
It is available in the market in different variants; such as, “Liv 52 Syrup”, “Liv 52 DS Syrup”, “Liv 52 Tablets” etc. All the products are sold under the plaintiffs’ umbrella brand ‘Himalaya’.
The plaintiff’s registered trademark was allegedly infringed upon by the defendant, who attempted to pass off their products as being linked with the plaintiff’s by utilising the marks ‘Liv55’ and ‘Liv999.’ The defendant’s use of the mark, according to the Court, was intended to profit from the plaintiff’s goodwill.
K S & Co Comments
The passing off doctrine operates on the general principle that no person is entitled to represent his or her business as the business of another person. Hence, the injunction is justified.
Blue Heaven Cosmetics Pvt Ltd vs. TRN Corporation – Delhi High Court
The Delhi High Court on 22nd October 2021 in CS (COMM) 523/2021, M/S Blue Heaven Cosmetics Pvt Ltd v. M/S TRN Corporation granted an ex-parte injunction in favour of the plaintiff in a trademark infringement case. The plaintiff had requested a permanent injunction to prevent the defendant from infringing on the “Blue Heaven” trademark.
The defendant had used a similar mark and trade-dress as the plaintiff to pass-off its inferior goods as the plaintiff’s product, according to the Court. The plaintiff had shown a prima facie case, the balance of convenience was in their favour, and irreparable harm would be inflicted to the plaintiff if an injunction was not granted, according to the court.
K S & Co Comments
The plaintiff adopted the trademark in 1972 and has been using the mark continuously till now so by virtue of its adoption more than sixty years ago and extensive use thereof, the trademarks – “BLUE HEAVEN” is the sole and exclusive intellectual property of the Plaintiff.
No exclusivity on ‘Pe’, spell it right “PAY” or wrong “PE”
PhonePe, a Flipkart-owned payments app, has filed an injunction in the Bombay High Court to prevent rival Resilient Innovation Pvt Ltd. i.e. BharatPe from “misusing” the ‘Pe’ suffix in the latter’s ‘buy now, pay later’ product, named ‘PostPe.’
PhonePe claimed in a statement that the court agreed that PostPe or postpe is a “natural evolution of the phrase PhonePe” and that the former was “phonetically, structurally, and visually similar” to the Flipkart-owned company during the hearing.
Both the companies have been going against each other over the suffix ‘Pe’ in their names since 2018. Spokesperson for BharatPe said, “Even though both the Delhi High Court and the Bombay High Court have prima facie found PhonePe’s assertion to be incorrect, Resilient has filed these cancellation actions to provide a level-playing field to all stakeholders in the digital payment space once and for all,”.
K S & Co Comments
PhonePe has no registration of the word ‘Pe’, instead it has a label with the devanagari word Pe. To say that this calls for a matter of infringement is unjustified. The matter has been going on for years now and it has been run on lack of substance. The court even went on to say that it did not find any prima facie case to grant injunction in favour of Phone Pe and held that just because it has a common “Pe” suffix, it cannot be said that the trademarks “PhonePe” and “BharatPe” are confusingly or deceptively similar.
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