Recently, the Bombay High Court heard two appeals together to rule on the same point of law, i.e., whether the Court could go into the question of validity of the registration of a trade mark at an interlocutory stage when the defendant takes up the defense of invalidity of registration of the plaintiff’s trademark in an suit of infringement.
Registering a trademark is only the first step. What is more challenging is to be wary all those conflicting marks out there in the market trying to make a place for themselves. At the outset, in a suit of trademark infringement or passing-off, the two probable reliefs that can be sought are an injunction and then damages. This is apart from an account of profits (any likely profit that the defendant has made by using the infringing mark) and delivery of any goods (goods in the possession of the defendant containing the infringing mark) with the infringing mark which can also be prayed for in such cases. I hope to bring clarity through this three-part post dealing extensively with conditions for grant of temporary injunction and various kinds of damages granted by courts in cases relating to trademark infringement and passing-off.
Pepsico India Holdings Pvt Ltd has won yet another trademark battle, this time in respect of its mineral water brand “Aquafina.” The Delhi High Court, in a recent judgement, upholding the submissions of Pepsico, has restrained the defendant Aqua Mineral (India) from using the trademark “Aquafine” for infringement of Pepsico’s trademark rights in the mark “Aquafina.” Pepsico has naturally banked upon the well-known status attained by the mark “Aquafina,” not to mention its (alleged) long term usage since 1999 and registrations obtained for the mark. Consequently, the Delhi High Court has granted a permanent injunction restraining use of the mark “Aquafine” apart from awarding damages to the tune of Rs. 5 Lakhs.
A recent judgment of the Bombay High Courtt that I came across addressed issues relating to the laws of design which I found very interesting, mainly because they weren’t issues that were touched upon previously. On reading the judgment, I found that it was the Delhi High Court which had first examined these issues in detail and what was also interesting to read was the dissenting opinion by one of the judges.
The Delhi High Court recently had the opportunity to decide a case on trademark infringement and passing off where they examined the concept of usage of a trademark in India. While we have blogged about the concept of usage earlier (read our posts here and here) what was interesting in this case was the evidence that was submitted by the Plaintiff and the factors that were relied on to prove spill over reputation and trans-border reputation.
Passing off is a form of tort, and its substantive part is founded upon the common law principles. The general principle of passing-off states that no man can have any right to represent his goods as the goods of another person. The gist of the concept of passing-off is that the goods are, in effect, telling a falsehood about themselves; they are saying something about themselves which is calculated to mislead. The spirit of law contemplates that unfair competition destroys honest business and should not be allowed. This term has undergone judicial scrutiny several times.
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