Article

Passing of an interim order during stay on a suit of infringement proceedings

By Raghav Sarda, Sidharth Shahi and Anushka Verma

The first article in this issue of IPR Amicus discusses a recent Delhi High Court decision reiterating the principle encapsulated in Section 124 of the Trade Marks Act, 1999 while also clarifying the scope of Section 124(5). The Court confirmed that an interim order can be passed even if the infringement suit has been stayed in view of Section 124. However, the Court stated that in order to analyze whether an interim order can be passed under Section 124(5), it is imperative to look at the question whether the use of the Defendant’s mark would result in confusion to the consumers. The authors note that consumer protection and avoidance of consumer confusion/deception lies at the heart of trademarks law and hence even where there are ongoing rectification proceedings an interim order could be passed if the factual matrix indicates that consumer confusion is caused...

Dishonest use of a well-known and descriptive trademark amounting to infringement

By Godhuli Nanda and Vindhya S. Mani

The second article in this issue of the newsletter analyses yet another decision of the Delhi High Court which has held that once the Plaintiff has shown that the use by the Defendants is of the exact word i.e., the registered trademark of the plaintiff, and that the goods or services are identical, the Court will necessarily presume that confusion would arise in the minds of the public or consumers as to the origin of the goods or services and accordingly, an interim injunction would have to be issued. The authors state that even though the law is clear on the fact that there will be no case of infringement in case a registered trademark is being used for descriptive purposes, proving a mark to be descriptive is not enough, a bona fide intention to use the mark for descriptive purpose will have to be additionally shown to assert a legitimate defence. Discussing various case law, the authors also note that the approach by the Courts when it comes to descriptive and well-known trademarks has been varied...

Ratio decidendi

• Trademarks – Words ‘OM’ and ‘Logistics’ when cannot be monopolised – Delhi High Court
• Every Single Judge Order, though may cause some inconvenience, is not a ‘judgement’ for filing appeal – Supreme Court
• Tag line ‘Vitalizes Body and Mind.’ is descriptive and laudatory in respect of energy drink – No prima facie infringement by use of tag line ‘Stimulates Mind. Energizes Body.’ – Delhi High Court

News Nuggets

• Trademark infringement – Absence of expert testimony not material
• Trademarks ‘MAGIC MOMENTS’ and ‘EVENING MOMENT’ are deceptively similar
• Copyrights – Private copying exception applies to cloud storage for private purpose
• Trademarks – Use of recycled bottles of another manufacturer will amount to infringement and passing off
• Hearing before Trademarks Registry – Delhi High Court asks CGPDTM to device proper mechanism
• No confusion between test kits OMISURE and medicine OMIPURE
• Supreme Court’s extension of limitation period owing to Covid-19 applicable to Trade Marks Opposition Proceedings
• Patents – Lack of inventive step – Points to be considered by the Controller
• Eveready is a ‘well known trade mark’