Trademark Act cracks the whip on IPR infringements

MUMBAI: What is common between Shaw Wallace, Samsung, Tata Sons and Infosys? All these corporates have recently won different cases related to infringement of their well-established brandnames, thanks to stricter Intellectual property rights (IPR) regime now in place in India.

Tata Sons recently won a case against Balbir Vohra and others over infringement of the trademark ‘Tata’. The Delhi High Court held that the brand ‘Tata’ is known worldwide and is associated with the products of Tata Sons, while the defendants had been using the brandname ‘Tata’ for buckets and washers “only to encash on the goodwill and reputation of Tata Sons.” The court granted a permanent injunction against using the ‘Tata’ trademark.

Similarly, in April, Samsung Electronics Company won a similar case against Bharat Bhushan Ahuja and others, when the Delhi High Court allowed a compromise in relation to infringing use of the ‘Samsung’ mark on electronics goods made by a local firm.

Pooja Dodd, head (Intellectual Property) at legal firm Fox Mandal, said there has been a sudden increase in such cases involving trademarks and brandnames. “Corporates are getting increasingly aware, and the IPR regime is getting stricter in India, thanks to the new Trademark Act of 1999, which was notified in ‘03. Many corporates are now fighting similar cases,” said Ms Dodd.

Another case filed by Shaw Wallace and Company saw the UB group company win an ad-interim order. The suit was filed against Mohan Rocky Spring Water Breweries (MRSWB) to restrain them from infringing and passing off a registered trade mark (‘Haywards 5000’).

According to Shaw Wallace, MRSWB committed infringement and passing-off by using the trade mark ‘Prestige 5000’ and ‘Four Square 5000’ as a trade mark of which the numeral ‘5000’ was an essential feature and was deceptively similar to Shaw Wallace’ registered trade mark.

Though MRSWB contended that numeral ‘5000’ was descriptive and that Shaw Wallace could not claim any exclusive right because there was a disclaimer, the latter was granted an ad-interim injunction.

The Bombay High Court held that in view of registration of trade mark and label, Shaw Wallace had a statutory right to prevent MRSWB from using a deceptively similar mark. The numeral ‘5000’ was held to be an essential part of the trademark of Shaw Wallace and associated exclusively with the company.

Another interesting case involves the software major Infosys Technologies. It fought a case in the Delhi High Court against KTL Infosys and won hands down. The Bangalore-based IT major said it became aware of the existence of this “little known” IT company using its trade name in June ‘00, and sent a notice demanding that they cease from using the trade name ‘Infosys’.

Initially, a writ petition was filed against the Registrar of Companies, West Bengal, seeking restraint against permitting registration of companies with the expression ‘Infosys’ as a part of the corporate name. The registrar passed an interim order in favour of Infosys.

Since KTL Infosys continued to use the ‘Infosys’ tag, the IT major was forced to move court. The court subsequently restrained KTL Infosys from using the corporate name ‘Infosys’ as a part of tradermark and/or business name in respect of goods and/or services for publicity or propaganda.

It also restricted the company from using the mark ‘Infosys’ in isolation or in combination with words/letters/numbers in respect of goods, advertisements and publicity campaigns.