1. Crocs Inc USA v. Bata India Ltd and Ors.
Issue – Whether a Design can function as trademark?
Judgment – Crocs USA filed cases against shoe manufacturers alleging infringement of their design No. 197685 which is valid up to 28.05.2019.The plaintiff was unsuccessful in a suit filed for design infringement as the designs on which the suit was filed were found to be not new or original and therefore the Plaintiff pressed for the injunction on the ground of passing off which is an action in common law. It was settled by an earlier judgment of five judge bench that as long as the elements of design are not used as a trade mark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a passing off claim can sustain. A passing off action has been held to be maintainable with respect to elements of trade dress and overall get up, other than registered design and not with respect to registered design. It was argued by the Defendant that if the passing off is claimed of elements of the design as a trade mark, no passing off action lies. Since the plaintiff itself relied on use of its registered designs as a shape trade mark and no additional features qualifying as trade dress, which are not part of the registered design have been pleaded or pointed out, the passing off suit is not maintainable. The court agreed with the Defendant that the plaintiff has not been able to show any extra features, besides the design, which is used as a trade mark.
The Court interpreted the legislative intent of the Design Act which is to grant limited monopoly by design registration and after the term of registration, it should be open for anyone to use the said design. The legislative intent will be defeated if the design after its term was allowed to be used as trademark. The court used the analogy of patents rights which is granted for a limited period and observed that the intention to give design protection for a limited time cannot be extended to protection in perpetuity by claiming trademark rights. Therefore, the court gave an opinion that not only the registered design cannot be a trade mark during the period of design registration but even thereafter. Accordingly, the court held that a registered design cannot constitute a trade mark; however if there are features other than those registered as a design and are shown to be used as a trade mark and with respect to which goodwill has been acquired, it is only those extra features which can be protected as a trade mark. If there has been a copy of registered design, only an action for infringement under the Designs Act would lie.
2. ChristanLouboutin SAS v. Abubaker and Ors.
Issue – Whether a color can become a trademark or not?
Judgment – The Division bench of Delhi High court in April 2019 allowed an appeal filed by Christian Louboutin which challenged the judgment by a single judge of the court in a suit for seeking monopoly on the RED SOLE trademark. The division bench has set aside the judgment and observed that the judgment was contrary to the other orders passed in favour of Christian Louboutin by coordinate single benches of the Delhi High Court, specifically the judgment that recognized the RED SOLE trademark as a well known trademark. The suit was restored before the Single Judge. On August 13, 2019, the Single Judge, noticing that the defendants did not appear before the Single Judge or even file their written statement, decreed the suit against the defendants in terms of the prayers sought in the plaint. The judge decreed the lawsuit granting a permanent injunction against the defendants restraining them from infringing the plaintiff’s RED SOLE trademark following the dicta of the judgment dated April 11, 2019, passed by a coordinate bench of the Delhi High Court, wherein the court had declared the RED SOLE trademark to be well-known by a reasoned judgment. The court also passed a decree of damages and costs in favour of the plaintiff of Rs2 million (US$28,100) jointly and severally against the defendants.
3. TATA SIA Airlines Limited V. Pilot18 Aviation Book Store
Issue –Whether the Pilot18 Aviation Studies portal which operates the web portal www.pilot18.com can sell unauthorized products under the VISTARA brand?
Judgment – Pilot18 was found to be selling goods such as badges, name tags and other accessories under the brand name of Vistara. This was found not only to be violative of trademark but also poses a grave threat to airport security, as unauthorized person may enter using counterfeit such accessories. Therefore, the court restrained the portal from selling goods such as badges, name tags and other accessories under the brand name of Vistara. The court also directed Pilot 18 to pay Rs 2 lakh as cost to the operator of Vistara Airlines within a month.
4. Exxon Mobil Corporation v. Exoncorp Private Ltd.
Issue – Whether the trademark can be similar when the area of business and services are different?
Judgment – A suit for trademark infringement and passing off was filled by the plaintiff, which adopted the trademark “EXXON” since 1967 in the USA and has been using the said mark in over 160 jurisdictions, including in India. The plaintiff is in the business of gas exploration, oil production, refining and marketing of petroleum products, chemical products, research and development and various services related to the petroleum, chemicals and oil industry.
The dispute was between the Plaintiff’s well-known trademark ‘EXXON’ and the use of the mark ‘EXON’ by the Defendant as part of its corporate name and trading style for rendering information technology services. The Defendant pleaded that its business is limited to the territory of India and its area of business is different from the plaintiff. The court while granting injunction noted that the plaintiffs’ mark was well- known mark and is entitled to protection even in respect of IT services. The Court ruled against the Defendant’s stand that the services are distinct and different from that of the Plaintiff and passed a decree in favor of the plaintiff.
5. Bigtree Entertainment Pvt Ltd v. D Sharma and Anr.
Issue – Whether the mark ‘BOOKMY’ has attained an exclusive meaning and that the plaintiff can claim exclusive rights on it?
Judgment – The Plaintiff had filed a suit for trademark infringement, seeking to restrain the use of trademark “BOOKMYEVENT” or prefix “BOOKMY” by the Defendant. The court refused to grant an injunction as the prefix “ BOOKMY” is very common in the English language and the visual effects are also very different, therefore, it is unlikely that the customers would be confused by the said trade names or marks. The court also mentioned that the mark ‘BOOKMYSHOW’ belonging to the plaintiff has not attained any exclusivity.
