Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

In my earlier posts (here and here), I discussed the position of law on injunctions, the requirements for grant of temporary injunction and relevant cases with respect to trademarks in India. So let’s assume that we managed to restrain the defendants from using our trademark, what next? We want the defendants to pay (literally) for what they did and compensate our losses, to the maximum possible extent. This sum of money claimed as compensation for loss or injury is what we refer to as damages.…

The year 2014 has witnessed a lot of goods entering the family of Geographical Indicators ( GI ). Goods such as Madurai Malli (jasmine), Pattamadai Pai (Pattamadai mat), Nachiarkoil Kuthuvilakku (Nachiarkoil lamp), Toda Embroidery, Thanjavur Veena and Chettinad Kottan (palmyra basketry) have all become a part of the GI family thus bringing Tamil Nadu with the second highest number of registered GIs in the country; A total of 24.

In my last post, I dealt with the first condition i.e. ‘prima facie case’ to be established when praying for a grant of temporary injunction. It is only when all the three conditions are fulfilled that the Court will take into consideration the prayer of temporary injunction. As in the case of prima facie, the other two conditions can be best explained with reference to principles and tests laid down by the Courts. However, there is no straight jacket formula to ascertain whether they exist or…

The Tea Board of India holds the famous GI “Darjeeling” and the logo of a woman holding tea leaves, as well as the certification trade mark “Darjeeling” under the Trade Marks Act, in connection with “tea”. ITC, Limited used “Darjeeling Lounge” as the name for its executive lounge at its Kolkata hotel, the ITC Sonar. The Tea Board had previously filed a suit against ITC for using the word Darjeeling for their lounge. The suit mainly revolved on issues of infringement of the GI and the…

Cases and issues relating to personality and image rights in connection with trademark law have always intrigued me. For one, it raises the question of whether a person can register their name as a trademark solely on the ground that they are a celebrity having brand value and that their reputation is likely be injured otherwise. Unless of course they are using their name for the purpose of sale of goods and providing any services. An example that strikes me is that of Sachin Tendulkar who has…

Registering a trademark is only the first step. What is more challenging is to be wary all those conflicting marks out there in the market trying to make a place for themselves. At the outset, in a suit of trademark infringement or passing-off, the two probable reliefs that can be sought are an injunction and then damages. This is apart from an account of profits (any likely profit that the defendant has made by using the infringing mark) and delivery of any goods (goods in the possession of…

Pepsico India Holdings Pvt Ltd has won yet another trademark battle, this time in respect of its mineral water brand “Aquafina.” The Delhi High Court, in a recent judgement, upholding the submissions of Pepsico, has restrained the defendant Aqua Mineral (India) from using the trademark “Aquafine” for infringement of Pepsico’s trademark rights in the mark "Aquafina." Pepsico has naturally banked upon the well-known status attained by the mark "Aquafina," not to mention its (alleged) long term…

The Delhi High Court recently had the opportunity to decide a case on trademark infringement and passing off where they examined the concept of usage of a trademark in India. While we have blogged about the concept of usage earlier (read our posts here and here) what was interesting in this case was the evidence that was submitted by the Plaintiff and the factors that were relied on to prove spill over reputation and trans-border reputation.

Most people who want to get a trademark registered, search for the Super Mark. What is this Super mark? Super mark is the Invincible Superman of the Trademark world, i.e. it is a mark that would less likely to be objected to by the Registry.

Not too long ago, advertisements on the radio, print media and television were the best means to spread the word about any goods or services that were to be marketed. Times have changed and it takes more than just a few ads and discounts to retain consumers and maintain a steady market share. Marketing, publicising and brand building have reached new heights in the last few years, thanks to the internet. Keeping pace with changing times and making a prominent place in the cyber space seems to…