Article
Battle of the Armours: When ‘Under’ meets ‘Aero’ in trademark turf war By Eeshita Das and Dr. Malathi Lakshmikumaran
The article discusses a recent Delhi High Court decision which not only brings into focus the legal standards applied to determine trademark infringement but also explores the boundaries of protection for globally recognized brands under Indian law. Elaborately discussing the judgement of the Division Bench which overruled the Single Bench decision, the article notes that the decision establishes that initial interest confusion is sufficient for infringement under Section 29 of the Trade Marks Act, 1999. The decision also revolved around the likelihood of confusion, dishonest adoption, protection for strong marks, non-dissection rule, global appreciation, and consumer sophistication. According to the authors (Kriti Sood, Divya Vishvapriya and Geethanjali Kv), the decision marks a pivotal moment in Indian trademark jurisprudence, as the recognition of the doctrine of initial interest confusion brings Indian law in alignment with international standards and better reflects the realities of digital consumer behaviour.
Ratio decidendi
- Patents – No discrepancy or inherent contradiction in Section 53 vis-à-vis Section 11A – Argument that 20 years tenure should commence from date of grant/publication, rejected – Calcutta High Court
- Patents – Rejecting patent under Section 3(b) with subjective concerns of morality, public order or health is wrong – Calcutta High Court
- Copyrights – Compulsory license – Unreasonable terms for making copyrighted work available amounts to ‘refusal’ under Section 31(a) on part of the owner – Delhi High Court
- Designs – No inflexible principle in design law for not breaking up features of a design while comparing with a registered design – Delhi High Court
- Trademark rectification – Timelines for notice, as provided in Rule 100, are mandatory – Delhi High Court
- Trademark infringement – Defence that the allegedly infringed mark had died by non-user, is not sustainable – Delhi High Court
- Trademarks ‘Pro-ease’ used for hygiene products and ‘Pruease’ used for medicine can prima facie co-exist – Delhi High Court
News Nuggets
- Trademarks – Action for infringement whether can lie against a registered trademark – Matter referred to Larger Bench of Delhi High Court
- Trademarks – Trade channel test must be applied with greater contextual sensitivity
- Patents – Rejection of patent without elaborating as to how the amendment broadens the scope of original claim is serious infirmity
- Patents – Rejection under Section 3(d) – Controller to identify ‘known substance’ in hearing notice
- Design and Copyright – Registration of photograph of a product, which is covered under Design law, is correct under Copyright law
- Trademarks – Stay of suit to file rectification petition – Provisions of Section 124(1)(b)(ii) are not available as matter of right
- Trademarks – Priority of user by itself cannot sustain a finding of passing off or justify grant of interim injunction
- Trademark ‘FIZIFREAK’ is visually, structurally, phonetically and conceptually similar to ‘fi’zi:k’ and ‘FREE:K’
- RITZ and RITZ-CARLTON declared well-known marks in hotels and other related services in hospitality industry
- LV (acronym of LOUIS VUITTON) declared well-known mark for leather goods, apparel, footwear, watches and accessories
- TikTok – Bombay HC upholds rejection of recognition as well-known mark
- EU releases report on intellectual property rights in third countries, counterfeit & piracy watch list
