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Top 5 Indian and Global Trademark Wars of last decade

Introduction

Trademarks are one of the most important intellectual property rights as they help the customers identify and distinguish between the products of one company from others. This is why a company with an established trademark will do anything to protect it from being copied by competitors. Trademark wars are cases wherein a company uses a name, logo or tagline already registered by another as a trademark with the Trademark Registry. The company which has already established and registered a trademark, will then either demand the infringing company to take down the concerned mark and if that is in vain then it will approach the concerned authorities. Trademark wars are becoming more and more common from the past two decades.  This is because companies are becoming more aware of their rights and how to protect the same. Nowadays companies have special teams just to keep a check that no other company is using their registered marks. The purpose of a trademark is defeated when a smaller/newer company uses a mark which is similar to an established mark, as that would confuse the public that the two products are from the same maker. This would essentially help the infringing company to benefit out of the established goodwill of the other company. 

This paper aims to discuss 10 of the most recent trademark wars that have taken place globally and within India.

Indian Cases

1. Titan v. Saint Watches [1] 

In this case, the plaintiffs (Titan) had filed an application before the Deputy Registrar of the Trademark Registry where they challenged the logo of the respondents. The appellants claimed that they have been in the business of manufacturing and selling watches since the year 1987 and the respondents recently entered the market and created a logo which is deceptively similar to their established logo. However, Deputy Registrar dismissed their application. The appellants then appealed to the Intellectual Property Appellate Board (IPAB) where the matter was remanded back to the Deputy Registrar. The IPAB gave reasoning that the Deputy Registrar should have also considered grounds raised by the respondents. 

The appellants claimed that the Registrar failed to take cognizance of the fact that the respondent’s logo was very similar to their registered logo and the class of goods was also the same i.e. watches. This could easily cause the public to be confused between the products of the two companies. The challenged it by invoking section 11(1) of the Trademark Act, 1999. 

The respondents challenged the application filed by the appellants on the ground that it was barred by limitation and hence was not maintainable. The IPAB held that the Deputy Registrar should have considered both the arguments and hence they remanded the case. 

2. ITC v. Cadbury’s [2] 

This case was brought before the Intellectual Property Appellate Board (IPAB) by ITC Ltd. that claimed that the defendants owned three trademarks registered in the country. These were on the marks “Chocolate Éclairs”, “Chocolate Éclairs Pop” and “Orange flavoured Chocolate Éclairs”. The plaintiffs submitted that the marks have not been used by the defendants for several years. The mark “Chocolate Éclairs Pop” has not been renewed since the year 2006. The ground of non-user falls under section 47 of the Act and hence they are liable to be removed. 

The IPAB ruled in favour of ITC Ltd. because it was clear from the facts that the respondents only wanted to keep their ownership on the marks and had not been using it. 

This case was decided after a struggle of 7-8 years. 

3. American Eagle v. Pantaloons [3]

This appeal was brought before the Delhi High Court by a US-based company named American Eagle. The appellants have contended that they have registered trademarks on the marks “American Eagle”, “American Eagle Outfitters” and an Eagle device (their logo). It is their submissions that the respondents have started to use the mark “Urban Eagle Authentic Outfitters” and the eagle device as their logo. 

The class of goods that the mark is being used for is the same. Therefore it can be inferred that the respondents had malafide intent to create such a deceptively similar mark. 

The Delhi High Court ruled in favour of the appellants holding that there is a prima facie case in their favour. The court thereby awarded an injunction but also gave the defendants a time period of a month to clear their stock which bore the concerned mark. 

4. Ajanta Pharma v. Theon Pharmaceuticals [4] 

The facts of this case were such that the plaintiff (Ajanta Pharma) filed an application seeking an injunction against the defendants (Theon Pharmaceuticals). The claim raised by the plaintiff was that the defendant started to use a trademark which was very similar to their registered mark. The former has registered the mark, “Feranta” and the defendants created a mark called “Ferinta”. The plaintiff filed the concerned application before the Bombay High Court. It brought to the court’s attention that it was a well-known manufacturer and exporter of medicines and pharmaceuticals. It also proved that it has been in this field for around 4 decades and it also has a registered trademark on the concerned mark. 

The defendant started using a deceptively similar mark and also applied for its registration. The plaintiff found out about this and filed an opposition. The marks are very similar and they also belong to the same class of goods under the Trademark Act. 

The Court held that the two marks are phonetically, structurally and visually similar and it is a clear case of infringement on the part of the defendant. The Court stated that this act of the defendants is a direct encroachment on the statutory and common law rights of the plaintiff.  It, therefore, granted a temporary and interim injunction against the defendants. The order was is in favour of Ajanta Pharma.

5. Fevikwik v. Kwikheal [5] 

This was a case brought before the Bombay High Court by the company manufacturing the famous product called “Fevikwik”. It is the contention of the plaintiff that the defendant has manufactured a similar product as theirs and has named it “Kwikheal”. They have also submitted that they have been in the market since the year 1959. They are worldly renowned for products such as adhesives, sealants, construction and paint chemicals etc. Their products are sold under various well-known trademarks such as “Fevikwik”, “fevikol”, “fevistick”, “fevibond” etc. With respect to the present application, they have brought to the Court’s attention that their mark “fevikwik” was registered as a trademark in 1987 underclass 1 products of the Act. They also obtained registration for the distinctive packing of the product “fevikwik” in the year 2008(class 16). 

It is their contention that the mark of the defendants is visually and phonetically similar to their registered and established mark. It is also prima facie clear that the intention of the defendants to create a mark so similar to theirs is to pass their products as the same as the plaintiff’s products. The defendants have been in the business only since the year of 2011. 

Another very important fact to be considered was that the defendant used the tagline “one drop instant adhesive” for their product and this was also the same as the tagline used by the plaintiff. The plaintiff had also registered this tagline under class 1 and 16 of the act.  

The Court ruled in favour of the plaintiff and it held that it is prima facie clear that the defendant had a dishonest intention. The Court held that it was a clear case of trademark infringement and passing off.

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