Trademark Registration

The Famous Trademark Cases from which Businesses can Learn

Famous Trademark Cases from which Businesses can Learn
| Updated: Feb 06, 2021 | Category: Trademark

Trademark means a mark which is used by a company or an individual to provide its products and services a distinctive identity. Trademark protects a brand from being infringed by others. Obtaining trademark registration provides many legal rights to the trademark holder. There has been a significant rise in the trademark cases in India during the recent times. Some of the judgments have been landmark in terms of the precedents set by them. This article will help you to know the famous trademark cases from which businesses can learn.

Coca Cola Company vs. Bisleri International Pvt. Ltd.

In this present case, the defendant (Bisleri) sold the trademark MAAZA including its formulation rights, intellectual property rights, know- how, and goodwill through a master agreement. The defendant applied for registration of TM MAZAA in Turkey and imported fruit drinks under the same name. The Hon’ble High Court of Delhi held that the intention of using a trademark besides the direct or indirect use of the mark was enough to give jurisdiction to the court to decide on this issue. Further, the Court granted an interim injunction against the defendant (Bisleri).

Yahoo! Inc. vs. Akash Arora & Anr

It was the first time that the Hon’ble High Court of Delhi under this case held a registered domain name equivalent to the trademark giving it the equal protection. In this case, the plaintiff was the owner of Trademark “Yahoo!” and domain name “Yahoo.Com”. The defendant used the name “Yahoo India” for similar services. The court held that the principle underlying the action of passing off is that no person shall carry out business in such a manner that it would lead to belief that the person is carrying on the business of another person or has any connection with another person’s business.

The court stated that the people will be deceived in thinking that both domain names are carrying same source. Since, Yahoo! was a renowned name globally the Court observed that “Yahoo India” used by the defendant is almost similar except is uses the suffix “India”. The issue of deception was large, therefore, the defendant was liable for an action of passing off and injunction was granted in favour of plaintiff.

Also, Read: Know how Indian Trademark Registration Will Boost Your Business

Zara Food vs. Zara Fashion

ZARA fashion is a renowned fashion brand having its operations across the world. In this case, the owner of the fashion brand ZARA filed a suit for infringement and passing off of their renowned brand ZARA against the owner of a restaurant in Chennai which was using the name ZARA TAPAS BAR. Since it was quite possible for the consumers to get confused in taking consideration that the restaurant ZARA was started by the brand ZARA fashion. Therefore, the Hon’ble High Court of Delhi held that the mark ZARA was a well known mark and had trans- border reputation and the restaurant was ordered to change its name and remove the word ZARA from the name.

Louis Vuitton vs. Louis Vuiton Dak

The French high- end leather products retailer, Louis Vuitton filed a suit against the South Korean fried chicken fast food company “Louis Vuiton Dak”. The Court held that the South Korean restaurant was liable for trademark infringement as the name used by the restaurant was quite similar to the Louis Vuitton’s name. Further, the wrapper in which fried chicken was wrapped was with the iconic LV symbol.

However, this did not end here. After the ruling of the court, the restaurant changed its name to “Louisvui Tondak”. This rearrangement of letters was considered to be quite similar to the letters arranged in “Louis Vuitton”. Therefore, the restaurant was fined again for non- compliance.

Academy of Motion Picture Arts and Sciences vs. GoDaddy. Com, INC.

The plaintiff Academy of Motion Picture Arts and Sciences filed a suit against the defendant GoDaddy.com, INC under the anti- cybersquatting consumer protection act (ACPA). The suit was filed by the plaintiff alleging GoDaddy’s decision to let customers buy confusing similar domain names. It claimed on allowing individuals to pass on the profits that wished to “park” on these domains and claimed a part of the revenue. The plaintiff initially demonstrated to the court that there were 57 domains sold by the defendant that were potentially confusion.

The plaintiff had hoped to win and looked to be the heavy favourite on the basis of the earlier rulings in the case, but the Court held that there was a lack of proof that GoDaddy has bad faith intent to traffic in trademarks like the “Academy Awards” or “Oscars”.

Cadila Health Care vs Cadila Pharmaceutical Ltd.

The case is a landmark judgment in relation to the passing off of an unregistered trademark. The court laid down certain criteria to determine the passing off of an unregistered trademark which are as follows:

  • The nature of the marks.
  • Nature of goods.
  • Area where the goods are being used.
  • Extent of similarity between the competing marks- visual and phonetic similarity.
  • Similarity in the goods in relation to its performance, nature, effectiveness and etc.
  • Target consumers for the goods, their intelligence and the requisite degree of care that is required to be taken.
  • The class of purchasers likely to buy goods.
  • The nature, performance and character of the goods of rival traders.
  • Method of purchasing goods and any other relevant circumstances.

Conclusion

It is important for every business to understand the seriousness of trademark laws and the application of it for the growth of the company. It is quite important to register a trademark so as to protect it from any sort of infringement. Also, only those marks having distinctive identity can be registered under the Trademarks Act, 1999. A trademark helps a product to be easily distinguished from the other products. It provides reputation to the brand. Some of the famous trademark cases from which the business can learn have been discussed above. Taking into consideration the above cases, one must choose and use a trademark for its brand accordingly.

Also, Read: Procedure and Cost Involved in the Trademark Registration?

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Japsanjam Kaur Wadhera is an Advocate and has completed her BA.LLB (Hons) and has experience of writing various research papers during her college time. Earlier she was working as an Associate Advocate in a reputed Law Firm. She has an extreme interest in writing legal content and her core area falls under legal enactments, tax and finance.

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