scotzshweta@gmail.com (n/a) 06 October 2007

AMUL Trade Mark Case

I am enclosing AMUL Trade Mark Case

Some gud topics on Trade Marks

3 Replies

Prakash Yedhula (Lawyer) 07 October 2007

I differ from the view taken by the High Court. I feel that when the goods used by the parties are admittedly different, then the injunction is unwarranted.

mmn (n/a) 08 October 2007

[align=left][font=""times new roman""]I am in respectful agreement with the view taken by the Gujarat High Court. [/font][/align]
[align=left][font=""times new roman""]I do not agree with Mr. Yedhulaprakash.[/font][/align]
[align=left][font=""times new roman""]There have been a catena of decisions wherein the right to use an established trademark in respect of certain classes of goods has been held to extend to goods of a very different nature from the goods sold by the proprietor of the trademark. [/font][/align]
[align=left][font=""times new roman""]There are 2 very famous cases on this point.[/font][/align]
[align=left][font=""times new roman""]First is Daimler Benz Aktiegesellsehaft v. Hybo Hindustan, AIR 1994 Delhi 239. In this case the two products involved were the cars and the undergarments but the defendant was injuncted from carrying on trade in any undergarments in the name of ""Benz"" and ""three pointed Human beings in a Ring. It was held that the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world-wide. It was observed that ""Benz"" as name of a car would be known to every family that has ever used a quality car; the said name as applied to a car has a unique place in the world and thus the defendants boxes, in which it was selling undergarments, showing thereon a man with his legs separately and hands joined together above his shoulders, all within a circle indicate the strong suggestion of the link between the three pointed stars of ""Mercedes Benz"" car and the undergarments sold by the defendant of the abovesaid symbol. It was further held that none should be continued to be allowed to use a world famous name to goods which have no connection with the type of goods which have generated world-wide reputation. [/font][/align]
[align=left][font=""times new roman""]Secondly in Bata India Limited v. Pyare Lal and Company, AIR 1985 All 242, the defendant using the mark ""Bata foam"" on the mattresses, sofa cushions and other articles was injuncted from the user of the said mark on the ground that the name Bata was well-known in the market and the user of such a name was not only likely to cause deception in the mind of ordinary customer but could also cause injury to the plaintiff company and the fact that the plaintiff was not producing foam was not enough to hold that there could not be passing off action in respect of the user of the name 'Bata' to the products marketed by the defendant.[/font][/align]
[align=left][font=""times new roman""]Thus the case of Amul has been properly decided.
[/align][/font]
[align=left][font=""times new roman""][/font] [/align]

Prakash Yedhula (Lawyer) 08 October 2007

[font=""trebuchet ms""]Hello mmn,

Nice to see you differ from my view point. However, it is my pleasure to bring to your notice the following cases decided recently and reported in cdjlawjournal.

1) Balkrishna Hatcheries Versus Nandos International Ltd. & Another
High Court of Judicature at Bombay
Date of Decision: 04-06-2007
THE HONOURABLE MR. JUSTICE D.K. DESHMUKH

Civil Procedure Code ΓÇô Order 39 Rule 1, 2 - Trade Mark Act, 1999 - Section 29(1), 29(2)(b), 29(4) - Similarities ΓÇô Goods and services - Plaintiffs goods are not similar to or associated with the Defendants services and sale of sauces. The goods of the Plaintiff (processed or frozen meat products) and the 1st DefendantΓÇÖs services/goods (restaurants/food outlets and sale of sauces) cannot be said to be similar or associated because: (i) The Plaintiffs products are bought for cooking at home; the 1st DefendantΓÇÖs services are those of hospitality, entertainment and social interaction apart from the specialized Afro-Portuguese Cuisine at a restaurant. The Plaintiffs advertisements are clearly for frozen goods. On the other hand the Defendants Menus are the antithesis of that. The Menus say ""Freshest (never frozen)"" - (ii) The Plaintiffs products are bought by shoppers for groceries/foods to be consumed at home; the 1st DefendantΓÇÖs services are enjoyed by those who wish to go outside their homes and to socialize and enjoy the ambience of a specialized restaurant (usually of a higher middle or upper income bracket) - (iii) The Plaintiffs products are uncooked or processed frozen meat products and they have to be fried or cooked to be eaten; the 1"" DefendantΓÇÖs services are of a restaurant - (iv) The Plaintiffs products are sold at cold storages, wholesale distributors and supermarkets. They have to be fried or cooked to be eaten; the 1st DefendantΓÇÖs food is served at its restaurants and is chosen from a menu - (v) The Plaintiffs products would be found at cold storages or at the frozen foods, meats counters at supermarkets; the 1st DefendantΓÇÖs food would not be found at supermarkets - (vi) The Plaintiffs frozen and processed meat products do not compete with the 1st DefendantΓÇÖs restaurants/food outlets nor with the 1"" DefendantΓÇÖs sauces - (vii) Frozen and Processed meat products are not traded/provided by the same business as a restaurant or a manufacturer of sauces. It is, therefore, apparent that there is no similarity or association between the PlaintiffsΓÇÖ products and the first Defendant Restaurant and sale of sauces - The plaintiff has not made out prima facie case. Moreover the balance of convenience is also in favour of the Defendants: (i) The Plaintiff has not even commenced any restaurant/food outset business; (ii) The Plaintiff had knowledge of the Indian operations of the 1st Defendant since at least 2003. (iii) The Defendants restaurant at Malad was opened and has been operating since December, 2005; (iv) The two alleged letters relied upon by the Plaintiff to show confusion apart from being disputed, both emanate from Bangalore. There is no real evidence of confusion. (v) On the other hand no prejudice will be caused to the Plaintiff if the injunction is refused -The plaintiff is not entitled to any interim relief. The notice of motion is disposed of.

2) Radico Khaitan Limited Versus Saroj Bhatt & Others
Date of Decision: 04-06-2007
THE HONOURABLE MR. JUSTICE A.K. SIKRI
High Court of Delhi

Code Of Civil Procedure, 1908 ΓÇô Order 39 rules 1, 2 - Trademark Act, 1999 - Section 29 (4), 2, 11(6), 28, 29, 159 - the defendants' own case they have no intention to deal with the goods in which the plaintiff is dealing. The only question, therefore, is as to whether the defendant should be allowed to diversify and/or expand the use of their trademark RADICO. After taking holistic view of the matter and aforesaid facts cumulatively, I am of the view that the defendants may be allowed to continue to manufacture, sell and/or trade in dealing with henna products, body dots/bindis, fashion bags, belts, pashmina products, aroma products, silver and fashion jewellery, embroidered dresses, scarves, Indian handicrafts and ayurvedic products as well as other products in which they are dealing at present. However, in so far as diversification/expansion is concerned, the defendants would be allowed to do so limited to products falling in Class 3 alone and would not use the trade name/trademarks RADICO in respect of other products falling in other Classes without the prior permission of the Court. Subject to this, injunction order granted shall continue - Application stands disposed of.

[/font]