Burger King Secures Interim Stay: The Story Behind Suit Dismissal

On August 26, the Bombay High Court issued a stay on the Pune District Court’s ruling from last month, which had dismissed the Burger King Corporation’s suit against the owners of Pune-based restaurants alleging infringement of its registered and well-known trademark.[1] This interim stay will remain in effect until the next hearing scheduled for September 6.

In this post, we highlight the key aspects of the case and delve into why the Pune Court ruled against the global giant in this longstanding 13-year trademark dispute despite it being the first in the world market.

The case before Pune District Court:

Brief facts

The plaintiff company, incorporated under the laws of the State of Florida and operating over 15,000 restaurants globally, has used the trademark Burger King since 1954 and registered it in over 122 countries.

It became aware of the defendants’ trademark application for BURGER KING and their use of the same name for restaurants at two locations in Pune. The plaintiff filed a suit in 2011 after its cease-and-desist notice was rejected by the defendants, seeking permanent injunction, damages, rendition of accounts, and the relief of delivery up.

While the plaintiff launched its first Burger King restaurant in India in 2014 (and in Pune in April 2015), the defendants claim to have been operating their restaurant since 1989 and using the impugned name since 1992. The plaintiff secured an interim order of injunction in January 2012, through which the defendants were restrained from using the plaintiff’s registered trademark in India.

The plaintiff validly holds the trademark in food articles

The Court accepted that the plaintiff proved that it was validly holding the trademark in the name of Burger King in the field of hamburgers, chicken sandwiches, etc. In this regard, it was also pointed out that the defendants had withdrawn the application for cancellation of the plaintiff’s registration before the Intellectual Property Appellate Board (IPAB).

No infringement – oral and documentary evidence not considered

As to the evidence affidavit filed on behalf of the plaintiff, the defendants contended that the verification was not in accordance with Order 19 Rule 3 (1) of the Civil Procedure Code, 1908. Agreeing with this view, the Court held that it couldn’t be accepted as evidence to prove the contentions made in the plaint. The admissions of the witness during cross-examination were pulled up to show that he had no personal knowledge about facts, events, averments, etc., made in the evidence affidavit of the examination-in-chief. It was stated that he ought to have disclosed the source of his information, which he referred to in the affidavit. Moreover, while the suit was filed in 2011, the witness came in association with the plaintiff company in 2018.

The Court noted that the documents which the plaintiff had placed on record in support of its claim could not be proved. It was held that even if documents were exhibited following a previous Court order, the mere exhibition did not dispense with its proof. With this, the Court held that the plaintiff ‘miserably failed’ to prove that the defendants had infringed its trademark while running their restaurant in Pune.

Suit not instituted by authorised representatives

The plaintiff maintained that Cecilia Dempsey, being a principal officer of the plaintiff corporation at the time of the institution of the suit, was duly authorised to sign and verify the plaint. This authorisation was said to be accorded vide a power of attorney executed in February 2009. It was also averred that the amended plaint was signed and verified by Pankaj Pahuja, who was also authorised to do the same.

Finding merit in the defendants’ arguments, the Court noted that there was no resolution passed by the Board of Directors authorising said persons to sign and verify the plaint. Further, it was not proved that they were principal officers of the plaintiff company, and neither did they step into the witness box to clarify under which capacity and authority they had signed and verified the plaint.

Consequently, the Court held that the suit was not instituted by authorised persons in accordance with Order 29 Rule 1 of the Civil Procedure Code, 1908, and thus was not maintainable.

In view of the above and the absence of evidence regarding proof of infringement of the trademark and actual damage caused to it, the plaintiff was held not entitled to damages of INR 20 lakh and rendition of accounts.

Registration of trademark for restaurant service under class 42

As mentioned earlier, the plaintiff started providing services through a restaurant under its trademark Burger King in India in 2014, whereas the defendants had been using the said trademark to provide restaurant services since 1992. Considering that the plaintiff registered its trademark under class 42 pertaining to restaurant services in 2006 (after the enforcement of new Trademark Rules, which enabled the registration of service marks) and the defendants were prior users of the trademark, the Court opined that the plaintiff had no cause of action to seek relief of perpetual injunction.

Counter-claim dismissed

Due to lack of evidence, the Court also dismissed the counterclaim of the defendants, who sought to permanently restrain the plaintiff from using the name Burger King for their restaurant service in Pune, compensatory damages to the tune of INR 20 lakh along with costs.

Comments

Although this case had the potential to be a landmark ruling on trademark infringement, it was derailed by procedural lapses. As a result, the matter was argued solely on technicalities rather than on its substantive merits. The Hon’ble Court’s remark that the plaintiff had not even presented the registration certificate under Class 42 before 1991-1992 underscores the gravity of these oversights and highlights the Court’s awareness of the underlying facts.

References:

[1] Burger King Corporation v. Anahita Irani & Anr. (IA/11936/2024)

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The plaintiff started providing services through a restaurant under its trademark Burger King in India in 2014, whereas the defendants had been using the said trademark to provide restaurant services since 1992. Considering that the plaintiff registered its trademark under class 42 pertaining to restaurant services in 2006 (after the enforcement of new Trademark Rules, which enabled the registration of service marks) and the defendants were prior users of the trademark, the Court opined that the plaintiff had no cause of action to seek relief of perpetual injunction.

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'INFOSYS' Trademark: Injunction Against Use in Corporate Name

In a judgment dated May 27, 2024, the Delhi High Court issued an injunction restraining the use of the registered and well-known trademark, ‘INFOSYS’, as part of the corporate name of the Defendant, Southern Infosys Limited.[1]

The present suit was filed by Infosys Limited, the plaintiff, against the Defendant, alleging infringement under Section 29(5) of the Trade Marks Act, 1999.

Incorporation of Companies:

Incorporated in the year 1981, the Plaintiff, six years after its incorporation, secured registration of ‘INFOSYS’ as a wordmark in Class 9. Since then, the mark has been registered across several other classes.

The Defendant company, on the other hand, was incorporated in 1994 under the name ‘Disha Financial Services Limited’. Subsequently, it shifted its business focus and changed its name to ‘Southern Infosys Limited’ in 1998.

The decision of the Delhi High Court:

The decision of the Court is summarised below:

  • Trademark as part of corporate name

As per Section 29(5) of the Act, the use of a registered trademark by a person amounts to infringement if a) such mark is used as his trade name, name of business concern, or part thereof, and b) the person deals in goods or services in respect of which the trademark is registered. Both the conditions were said to be fulfilled in the instant case. The adoption of the trademark by the Plaintiff and its registration predated the mark’s incorporation in the Defendant’s corporate name. Further, specific references were made to the overlap in the parties’ business activities, the objects clause in the Defendant company’s MOA and failure on the part of the Defendant to show dissimilarity in the goods and services.

  • Likelihood of consumer confusion

Though the Court clarified that the said Section did not require one to prove that the use of the trademark resulted in public deception or dilution of the mark, it went on to address this aspect as well. Considering the visual, phonetic, and conceptual similarity between the marks, on a prima facie assessment, the Court observed that there was a likelihood of consumer confusion.

  • Concealment regarding issuance of previous notices not intentional

As to the submissions made by the Defendant asserting deliberate concealment by the Plaintiff of the issuance of notices in 2001 and April 2020, the Court noted that there was no documentation regarding the 2001 notice and also accepted the Plaintiff’s contention that operational disruptions owing to the pandemic led to the oversight in disclosing the April 2020 notice.

  • Delay in initiating action does not extinguish rights under trademark law

Before proceeding to the objection regarding delay, the failure on the part of the Defendant to conduct due diligence before adopting its corporate name was pulled up. This was considered against the backdrop of the trademark being recognised in the industry for over 17 years (before Defendant’s adoption). The Court went on to hold that the delay of over 20 years on the part of the Plaintiff in initiating action did not extinguish its trademark rights, especially in light of the continuous use of the trademark. The mere delay was also held not to constitute acquiescence.

  • Trademark has acquired distinctiveness

Citing the concept of acquired distinctiveness, the Court dismissed assertions that the Plaintiff’s trademark was generic and merely descriptive of the services provided. The Court remarked, “‘INFOSYS’ has transcended its ostensibly descriptive origins to embody a unique identifier of the Plaintiff’s goods and services. Over decades, ‘INFOSYS’ has been consistently used, promoted, and legally protected as a trademark, deeply embedding it in the public consciousness as synonymous, not with a general category of technology services, but specifically with the Plaintiff’s goods and services.”

Finally, the Court issued an injunction restraining the Defendant from using the Plaintiff’s trademark in its corporate name. Since the Defendant had been using the trademark for over twenty years, it was considered prudent to give the defendant four months to transition to a non-infringing trade name. The matter will be heard next on August 20.

Remarks:

While there have been numerous cases of Infringement of Infosys marks in India and some landmark cases as well, this will indeed be added to the list provided the final rulings are in favour of the Plaintiff. This is purely due to the Court’s acknowledging the infringement even though the delay in filing the suit was over two decades. This ground, if upheld upon appeal, will help in future action where the delay in initiating the suit denied an injunction.

References:

[1] Infosys Limited v. Southern Infosys Limited [IA 6817/2024 in CS(COMM) 257/2024]; Judgment can be accessed here.

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As per Section 29(5) of the Act, the use of a registered trademark by a person amounts to infringement if a) such mark is used as his trade name, name of business concern, or part thereof, and b) the person deals in goods or services in respect of which the trademark is registered. Both the conditions were said to be fulfilled in the instant case. The adoption of the trademark by the Plaintiff and its registration predated the mark’s incorporation in the Defendant’s corporate name. Further, specific references were made to the overlap in the parties’ business activities, the objects clause in the Defendant company’s MOA and failure on the part of the Defendant to show dissimilarity in the goods and services.

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Counterfeiting: IndiaMART not Entitled to Safe Harbour Protection

In a counterfeiting case involving the infringement of the ‘PUMA‘ trademark, the Delhi High Court held that the defendant, IndiaMART IndiaMESH Ltd., was not entitled to safe harbour protection as it did not comply with the prescribed due diligence requirements.[1]

Upon receipt of complaints from its consumers in August 2021, the plaintiff, Puma SE, conducted a search and realised that counterfeit products bearing its registered trademarks were listed for sale on the defendant’s e-commerce website. It was also found that at the time of registration on the platform, the seller was presented with a drop-down menu with a list of brand names under which the product could be sold, and there was no verification of the seller’s credentials. The present suit was instituted by the plaintiff, alleging that the defendant, by including “Puma shoes” in the said menu, was “aiding, abetting and facilitating” the infringement of its trademarks.

The Court accepted the reliance placed by the plaintiff upon the decision of the Division Bench of Justice Vibhu Bakhru and Justice Amit Mahajan in Google LLC v. DRS Logistics (P) Ltd.[2] The interpretation of “use of a mark” under Sections 2(2)(b) and 2(2)(c)(i) of the Trade Marks Act, 1999, was adopted in the present case; the said expression was not limited to use in visual form but included “use in relation to goods in any form whatsoever” and Section 2(2) did not “control or limit the width of Section 29(6)“. Hence, the use of the plaintiff’s trademark in the drop-down menu amounted to “use” under said Sections. The Court added that the plaintiff’s trademark was visually represented as it appeared to the seller at the time of registration, and the fact that it was a backend feature was held to be immaterial in this context.

Including the plaintiff’s trademark in the drop-down menu was said to increase the likelihood of consumer deception as it enabled counterfeiters to depict their products as genuine. It was held that, with such use, there was a likelihood of unfair advantage being taken of the mark “in a manner which would be detrimental to its distinctive character and repute“.

It was observed that the safe harbour protection under the Information Technology Act, 2000 was not applicable to the defendant since a) its function was not limited to providing access to the communication system, b) it selected the receivers of transmission, and c) it failed to take reasonable steps to ensure that users did not post infringing listings as required under Rule 3(1)(b)(iv) of the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021.

Rejecting the defendant’s contention that it promptly took down the infringing listing once the same was brought to its notice, the Court remarked, “There is obviously no use in closing the stable doors after the horses have bolted. An e-commerce platform cannot become a haven for infringers.”

Holding that a prima facie case of infringement was made out, the Court issued an injunction restraining the defendant from providing the ‘PUMA’ trademark or other registered marks of the plaintiff as options in the drop-down menu for registration on its portal. Further, the defendant was directed to remove the listing of products infringing the plaintiff’s trademarks on being so notified by the plaintiff.

The matter will be heard next on February 7, 2024.

References:

[1] Puma SE v. IndiaMART IndiaMESH Ltd. [IA 15564/2021 in CS(COMM) 607/2021]

[2] FAO(OS)(COMM) 2/2022

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It was observed that the safe harbour protection under the Information Technology Act, 2000 was not applicable to the defendant since a) its function was not limited to providing access to the communication system, b) it selected the receivers of transmission, and c) it failed to take reasonable steps to ensure that users did not post infringing listings as required under Rule 3(1)(b)(iv) of the IT Rules, 2021.

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‘NEW BALANCE’ and ‘NB’ Get Recognised as Well-Known Trademarks

In an order dated November 2, 2023, the Delhi High Court declared the Plaintiff, New Balance Athletics Inc’s marks, ‘NEW BALANCE’ and ‘NB’ as well-known marks.[1]

In May 2022, the Plaintiff came to know that the Defendant, New Balance Immigration Private Limited, a Noida-based company incorporated on March 30, 2022, was using marks “deceptively similar” to its ‘NEW BALANCE’ marks and ‘NB’ device marks. When the Defendant failed to revert to the cease-and-desist notices sent to it, the Plaintiff proceeded to file the present suit before the Delhi High Court seeking a permanent injunction. It was contended that the adoption of the impugned marks by the Defendant was “with a view to encash upon the immense goodwill and reputation” of the Plaintiff.

After noting that the Plaintiff was the registered proprietor of the said marks and making a comparison between the marks of the parties, the Court concluded that the mark and the domain name of the Defendant were “deceptively similar” to those of the Plaintiff. Further, it was held that the acts of the Defendant amounted to trademark infringement as per provisions of the Trade Marks Act, 1999, and passing off the services of the Defendant as that of the Plaintiff. Hence, the Court ruled in favour of the Plaintiff vide judgment dated June 1, 2023. Considering the continued use of the infringing marks by the Defendant despite the service of cease-and-desist notices in May 2022 and the issue of interim injunction in October 2022, and that the resolution to voluntarily wind up the Defendant company was passed only on May 30, 2023, the Court awarded costs to the tune of Rs. 4 lakhs.

The matter regarding the declaration of Plaintiff’s marks as well-known marks was pending to be decided on the day the said judgment was passed; the Plaintiff was directed to furnish evidence in support of the same. Accordingly, the Plaintiff made submissions regarding the registrations obtained in India under various classes since 1987, registrations obtained in other countries, the amount invested in advertising and promotions, etc. to depict compliance under Section 11(6) of the 1999 Act. The said Section provides the list of factors to be taken into account by the Registrar in determining whether a trademark is a well-known trademark.

Upon perusal of relevant case laws, and the evidence furnished, the Court declared the Plaintiff’s marks, ‘NEW BALANCE’ and ‘NB’ as well-known marks. However, it was clarified that this declaration would not operate as a bar on the use of the words ‘New’ or ‘Balance’ separately in respect of any other goods or services.

Remarks

Now that the Delhi High Court has declared the Plaintiff’s marks as well-known marks, the Plaintiff can approach the Trademarks Registry for the publication and inclusion of trademarks in the list of well-known trademarks. As per Rule 124 of the Trade Marks Rules, 2017, for such inclusion, an application has to be made electronically in Form TM-M and the applicable fee (i.e., Rs. 1 lakh for each mark) has to be paid. Section 11(8) of the 1999 Act specifies that if a trademark is “determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”. The same has been interpreted by the Delhi High Court in the case of Tata SIA Airlines Limited vs. Union of India [WP(C)-IPD 64/2021], to mean that the Registrar is not entitled to re-determine the status of the trademark declared by the Court as a well-known trademark. 

References:

[1] New Balance Athletics Inc. v. New Balance Immigration Private Limited [CS(COMM) 444/2022 and IA 11940/2023]

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Section 11(8) of the 1999 Act specifies that if a trademark is “determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act”. The same has been interpreted by the Delhi High Court in the case of Tata SIA Airlines Limited vs. Union of India [WP(C)-IPD 64/2021], to mean that the Registrar is not entitled to re-determine the status of the trademark declared by the Court as a well-known trademark. 

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Facets of Conceptual Similarity and Semantic Similarity in Trademark Infringement Cases

In this article, we aim to anatomize the facets of conceptual similarity and semantic similarity vide the many judgments that have envisaged their principles and other cognate principles that arise when the question of conceptual similarity is effectuated between rival trademarks.

Introduction

The idea that rival marks should be assessed as a whole rather than in terms of their individual components is a well-established and widely accepted tenet of trademark law. Confusion, likelihood, similarity, etc. – these terms are allied to the concept of trademarks. An infringement action calls for a comparison of trademarks based on various factors. One crucial factor, and very often not considered part of strategies, is “conceptual similarity”. A test to the latter’s effect, namely the conceptual similarity test, compares competing marks based on the underlying idea or concept that the marks imply or portray. To portray instances, what has been the idea behind the inception of the impugned mark? Whether solely a word mark has been used or a logo/device has also been attached to the word mark? Like many other facets of trademark law that have been established through judicial acumen, the test of conceptual similarity is also one such. 

Similarity vis-à-vis trademarks: Conceptual Similarity and Semantic Similarity

The concept of similarity is extremely crucial to the edifice of trademark law. As per Section 2(h) of the Trademarks Act, 1999, the marks will be deemed to be deceptively similar if the resemblance is likely to deceive or cause confusion. The said section implies that the resemblance should be such that it produces a hazy understanding of the rival mark being that of the victim mark. While certain marks are visually and/or phonetically similar, some marks do not fall in the latter category; however, they are still considered infringement. Here is where conceptual similarity steps in.

The conceptual similarity test compares competing marks based on the underlying idea or concept they indicate or project. The main issue in such a test is whether or not the average man might be misled or confused by two conceptually similar marks because of their similarity. This concept can be better explained with the help of the Delhi High Court judgment in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd[1].  The marks in the present case were “OFFICER’S CHOICE” and “COLLECTOR’S CHOICE/OFFICER’S SPECIAL”. While a prima facie view herein would indicate a lack of phonetic similarity, the conceptual similarity test brings in a pivotal and exciting aspect to consider the words’ semantic synonymity. Citing the decision in the case of Corn Products v. Shangrila Foods[2] (wherein the marks “GLUVITA” and “GLUCOVITA” were considered), the semantic similarity was relied upon to decide on the basis for infringement beyond the normal binds of visual or phonetic similarity.

The above-mentioned case is a pioneer in the establishment of principles pertaining to semantic similarity. It has, for instance, referred to various case studies, for instance, the “Distinctive Brand Cues and Memory for Product Consumption Experiences[3]“, wherein one line is of utmost relevance to this article – that the conceptual background behind the brand name is what triggers the recollection of memory in a consumer, and not the brand name in itself. Further, the word “Collector” can be seen as a hyponym of the word “Officer”, in common parlance, both signifying a “Person holding an office of authority”.

Thus, since both trademarks in the current case are used in the same context for one single product, that is whisky, when a consumer is forced to decide on a purchase and is presented with the product of the appellant with the mark “Collector’s Choice”, the word “Collector” will cause him to think of the cue “Person holding an office of authority,” which is related to the word “Officer”. This signal may induce the consumer to mistakenly believe that the appellant’s whisky is the respondent’s or cause a false recollection that may confuse consumers. Thus, this concept of semantic synonymy is highly relevant to trademark jurisprudence and can be subdivided as follows.

Expanding horizons of synonymy

The general understanding of synonymy is the phenomenon of two or more different linguistic forms with the same meaning. To this extent, synonymy can further be categorized. For example, synonyms of different degrees signify words with the same (although extended) meanings, but the degree of effectuation differs. For instance, fury, rage, and anger are synonyms with the same extended meaning of emotional excitement induced by intense displeasure. In contrast, anger is used commonly without a substantial degree of intensity, rage focuses on a loss of self-control, and fury empathizes with a rage so violent that it may approach madness. Similarly, are concepts of synonyms with different emotions, styles, collocations, etc.

What becomes vital in each case, thus, is to establish the degree of synonymy with respect to other factors of similarity, which has been highlighted in the recent case of Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors.[4] The court held that conceptual similarity could not be judged in isolation, and the overall phonetic, visual or structural similarity is also required to be seen holistically.

In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

Hyponymy & Hypernymy: An extended branch of conceptual similarity

Alongside synonymy are two other important concepts we must look at – hyponyms and hypernyms. As per the Oxford English Dictionary, a Hypernym is a “word with a broad meaning constituting a category into which words with more specific meanings fall; a subordinate”. An example of this effect would be that ‘colour’ is a hypernym of ‘blue’, ‘dog’ is a hypernym of the breed ‘dachshund’, etc. On the contrary, a Hyponym is a “word of more specific meaning than a general or super-ordinate term applicable to it”; for example, ‘Spoon’ is a hyponym for ‘cutlery’, etc. Having a basic conceptual understanding of Hypernyms and Hyponyms, we now look at their relevance in trademark infringement actions.

What hyponyms and hypernyms do is create a sense of inclusion. Sharing a hyponym in the form of a conceptual background would make the consumer think of the same thing, making it harder for him to remember the name of his favoured brand. Similarly, when two or more brand names are similar, for example, men’s perfume brands being called rugged and macho, while the meaning of each of these terms may vary according to the situation, in the context of men’s perfumes, they all refer to masculinity, and hence, are very likely to confuse the relevant category of consumers.

Conclusion

Time and again, courts have taken the lead and strived to bring into the picture the diverse ways trademark infringement can occur. Nevertheless, a restricted and cautious approach must be followed in applying the concepts of conceptual similarity (including hypernyms and hyponyms), semantic similarity and synonymy. Best explained using an example, let us consider the men’s perfume example. Would trademark protection of synonyms cover all equivalent words, preventing the naming of any masculine fragrances after any phrase synonymous with “Tough”? Such situations may lead to malpractices such as monopoly, squatting, etc. Thus, to protect words that share a sense relation, a restrictive application must be made, preserving only those sense relations of the term where the context in which they are applied to the brand name is the same, causing identical concepts to be conveyed to consumers.

References:

[1] Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd, FAO (OS) 368 and 493/2014.

[2] Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142.

[3] International Journal of Research in Marketing [22 (2005) 27-44].

[4] Metis Learning Solutions Private Limited v. Flipkart India Private Limited and Ors., CS (COMM) 393/2022 and Crl. M. A. 12694/2022.

[5] Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited, 2019 (80) PTC 491 (Del).

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In Make My Trip (India) Private Ltd v. Make My Travel (India) Private Limited[5], the Court had to examine any deceptive similarity between the marks MakeMyTrip and MakeMyTravel. From a prima facie view, one part of the mark “MAKEMY” is identical, visually and phonetically, and hence, warrants no application of conceptual similarity. The test comes into the picture by comparing the rival marks’ latter half – “TRIP” and “TRAVEL”. While these two words are neither identical visually nor phonetically, they are synonyms and convey a similar idea with respect to the services they provide. Thus, the marks could be considered deceptively similar for establishing an infringement action.

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Application of Prosecution History Estoppel in Trademark Infringement Proceedings

The doctrine of prosecution history estoppel, which was initially prevalent in determining the infringement of patents, also has its uses in trademark infringement proceedings. It prevents individuals from claiming the advantages associated with a right waived on a previous occasion.

When applied to trademarks, the doctrine dissuades applicants from misusing the opportunity bestowed upon them to amend their claims of infringement by relying on the submissions made to the Registry while making the trademark application or during the examination. In this context, it is relevant to understand the estoppel concept, defined under Section 115 of the Indian Evidence Act, 1872. This section states as follows: –

“When one person has, by his declaration, act or omission, intentionally caused or permitted another person to believe a thing to be true and to act upon such belief, neither he nor his representative shall be allowed, in any suit or proceeding between himself and such person or his representative, to deny the truth of that thing.”

Although judges make infrequent use of the doctrine in disposing of trademark infringement cases, its significance in this domain cannot be understated. For instance, this doctrine was applied by the Delhi High Court in Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr.[1] Back when the plaintiff had applied for the registration of the mark ‘ATORVAKIND’, the examiner found that it was similar to the marks ‘ATORKIND’ and ‘ATORKIND-F’. In its reply to the examination report, the plaintiff contended that its mark was different from the cited trademarks. The defence proved that the plaintiff’s reply took the publici juris defence for the term ‘KIND’. Subsequently, the court held that the defendant’s use of the mark ‘MERCYKIND’ did not constitute trademark infringement, and accordingly, the plaintiff’s plea for injunction was dismissed.

Here are some instances wherein the doctrine of prosecution history estoppel can be applied, and prosecution history (I.e., history of the proceedings right from application filing to trademark registration) can be relied upon in trademark infringement cases: –

Trademark includes a generic or descriptive term

If an application is made for the registration of a trademark with a generic or descriptive term, subsequently, the claimant cannot assert in the infringement proceedings that the mark used by the defendant is generic or descriptive. This principle also extends to determining the scope of goods and services. If the claimant in the prosecution stage claims the difference in goods or services compared to another mark, then the claimant can be said to have misclassified the goods at the prosecution stage. However, if the claimant has stated that there exists a difference in goods or services amongst rival companies, then infringement suits will backfire against the claimant.

Failure to make disclosures

Claimants must disclose statements given in the prosecution case that are potentially contradictory to the infringement claims posed in the infringement proceedings. And failure to make said disclosure could lead to the claimant’s incrimination. In some cases, the failure of the defendant to challenge the claimant’s trademarks can lead to prosecution history omission, just as in the Dish TV[2] case.

One can conclude that the doctrine of prosecution history estoppel calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

References:

[1] 2018 SCC OnLine Del 9678.

[2] Dish TV India Ltd. v. Prasar Bharti, 2019 SCC OnLine Del 9141.

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The doctrine calls for cautious handling of arguments and submissions at every stage of the prosecution of trademark applications. The arguments should be made considering their implications in the future as it unlocks an ambit for approbation and reprobation, which in most cases is used against the proprietor of the IP.

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Rooh Afza has Immense Goodwill: Delhi HC Rules in Trademark Infringement Case

The Delhi High Court gave its verdict in the trademark infringement battle between Hamdard National Foundation (India) and Sadar Laboratories Pvt. Ltd., and prohibited the latter company from using the mark “DIL AFZA” thereby protecting the trademark “ROOH AFZA”.

In a suit for trademark infringement by Hamdard National Foundation (India) against Sadar Laboratories Pvt. Ltd., the Delhi High Court held that the trademark “ROOH AFZA” possesses immense goodwill and that competitors must ensure that their marks are not similar to it. A two-judge bench, in its judgment[1] held that since the mark “ROOH AFZA” has been used for over a century, it can be considered a strong mark and, thus, restrained the Respondent from using the mark “DIL AFZA” until the suit is disposed of.

Hamdard National Foundation has filed the present appeal against the order[2] passed by a single judge bench of the Delhi High Court on 6th January 2022, rejecting an application for an interim injunction against Sadar Laboratories Pvt. Ltd. Both the marks are used with respect to sweet beverage concentrate. The Appellants claimed that the Respondents were infringing their marks “HAMDARD” and “ROOH AFZA”, and by selling these products under the mark “DIL AFZA,” they were passing off their products as those of the Appellants.

The Single Judge Bench held that the Appellants have to show that “AFZA” has a secondary meaning to claim exclusivity of their product. Therefore, the Court dismissed the application on the ground that they can claim exclusivity only for the mark “ROOH AFZA” as a whole and not just for “AFZA.”

Aggrieved by the order, the present appeal was filed by Hamdard National Foundation seeking a permanent injunction refraining the respondents from using the mark “SHARBAT DIL AFZA” or “DIL AFZA” on the ground that it is deceptively similar to the mark “ROOH AFZA.” The appellants further claimed that the use of this mark would deceive consumers and amount to passing off and also submitted that this would amount to dilution of the Appellant’s mark.

It was claimed that the marks “HAMDARD” and “ROOH AFZA” have been used for a wide range of products and constitute a well-known mark under Section 2(zg) of the Trademarks Act, 1999 owing to their widespread reputation and has therefore acquired goodwill with respect to the class of products pertaining to sweet beverage concentrates.

The Respondent submitted that by virtue of Section 29 of the Trademarks Act 1999, the allegations of infringement are not maintainable. It was submitted that the Appellants do not have an exclusive right over the word “AFZA” and that their mark has been coined by joining the terms “DIL” and “AFZA” and are not phonetically or visually similar. The Respondent submitted that there was no possibility of confusion between the two marks and every other aspect, such as the design and color scheme of “DIL AFZA” is also materially different from the Appellant’s mark. Therefore, there was no possibility of confusion between the two marks.

The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. The Court further stated that the use of the word “AFZA” lends a certain degree of similarity, and the trade dress of both products is also similar, making the Respondent’s mark deceptively similar to that of the Appellants.

The Court reiterated that “ROOH AFZA” has been used for over a century and is entitled to protection. The mark is a source identifier with a high degree of goodwill and is susceptible to unfair competitive practices. The Court stated that prima facie, the Respondent’s mark lacks a sufficient degree of dissimilarity and hence set aside the order passed by the Delhi High court and passed an ad interim order restraining the Respondent from manufacturing and selling any product under the mark “DIL AFZA” belonging to Class 32 until the present suit is disposed of.

References:

[1] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Ltd. [Case No. FAO(OS) (COMM) 67/2022]

[2] Hamdard National Foundation (India) & Anr vs Sadar Laboratories Pvt. Limited [Case No. CS (COMM) 551/2020]

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The Delhi High Court, after considering the arguments from both sides, stated that “AFZA” is an integral part of both “ROOH AFZA” and “DIL AFZA.” The word is neither descriptive nor normally associated with the product; hence, it is material in determining whether there is an infringement of the trademark. 

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