In the matter of Shri Shakti Schools Private Limited v. M/s. Chirec Public School [Civil Miscellaneous Appeal No. 160 of 2020], the Telangana High Court, vide its order dated July 3, 2020, refused to grant an interim injunction to Shri Shakti Schools Private Limited (Appellant) in a trademark infringement suit, finding that there is prima facie dissimilarity between the font and stylization of the parties’ trademark CHIREC.

The Appellant provides educational services at its schools ‘CHIREC PUBLIC SCHOOL’ and ‘CHIREC INTERNATIONAL SCHOOL’ in Hyderabad. The Appellant claimed that it has been using the trademark CHIREC since 1989 and has acquired exclusive rights therein. The Appellant alleged that in February 2017, it learnt of the Respondent’s use of an identical mark – CHIREC PUBLIC SCHOOL, for educational services offered at a school in Karnataka. The Appellant claimed that the Respondent’s unauthorized use amounts to infringement of the Appellant’s registered trademark CHIREC. After a cease-and-desist notice issued to the Respondent did not yield compliance, the Appellant filed the instant suit for trademark infringement. The District Court refused the Appellant’s application for interim injunction. Thus, the Appellant filed the present appeal.

The Respondent denied the Appellant’s alleged longstanding use of the trademark CHIREC in respect of educational services and claimed that the Appellant had not acquired any reputation beyond Hyderabad. The Respondent contended that it adopted the trademark CHIREC in respect of its school/educational activities in 2005 and that it was an honest and concurrent user. The Respondent further contended that the fonts and colour combination in the respective marks are entirely dissimilar. On these grounds, the Respondent asserted that it had not infringed the Appellant’s mark.

On a comparative study of both parties’ trademarks, the Court found significant differences in the font, style and colour combination applied therein, holding that “…it appears that the respondent is using the word ‘CHIREC’ with a logo and its name is written only in blue colour with same font, but the appellant is using the said trade name with different style and with different font without any logo. Therefore, it is unlikely that the parents of the children who would admit their children into the schools would be misled into thinking that the respondent is using the appellant’s trade mark…”. The Appeal was accordingly dismissed.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Hindustan Unilever Limited v. Emami Limited [LD/VC/IA/1/2020 in LD/VC/144/2020], in which the Plaintiff alleged groundless threats by the Defendant, the Bombay High Court granted ad-interim relief to the Plaintiff vide ex-parte Order dated July 6, 2020. As per the Order, the Defendant is required to give at least 7 clear working days’ notice to the Plaintiff before initiating legal proceedings against Plaintiff’s use of the trademark ‘GLOW & HANDSOME’.

The Plaintiff claims to be the proprietor of the trademarks ‘Fair & Lovely’ and ‘Men’s Fair & Lovely’ for fairness creams. Further, the Plaintiff claims to have made a formal announcement on July 2, 2020, regarding re-branding of the aforementioned trademarks as ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ respectively, and also claims to have had filed trademark applications for the rebranded marks (in word and stylized forms) in 2018 and 2020.

Following the rebranding announcement, the Defendant allegedly released statements in newspapers, threatening to initiate legal action against the Plaintiff for violating its alleged rights in ‘Emami Glow and Handsome’.

The Plaintiff filed the instant suit, contending that the Defendant’s statements amount to groundless threats within the meaning of Section 142 of the Trade Marks Act, 1999. The Plaintiff sought the limited ad-interim relief of a prior notice from the Defendant, if the Defendant were to initiate any proceedings against the Plaintiff, as threatened.

Considering the evidence on record, the Court was of the prima facie view that the Plaintiff is the prior adopter of the mark ‘GLOW & HANDSOME’. Granting the limited ad-interim relief to the Plaintiff, the Court observed: “…The statements made by the Defendant…do amount to a threat…the Plaintiff is pressing for a limited relief that the Defendant should give at least 7 clear days prior written notice to the Plaintiff before initiating any legal proceedings in any court or claiming any interim or ad-interim reliefs against the Plaintiff as threatened in the statements issued / made on behalf of the Defendant against the Plaintiff’s use of the trade mark ‘GLOW & HANDSOME’. Considering the facts and circumstances of the present case, I believe that no harm or prejudice would be caused to the Defendant if the said limited relief is granted.”

An Appeal to the Order (granting the ad-interim relief) was preferred by the Defendant, but the same was dismissed by the Division Bench.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Hindustan Unilever Limited v. Endurance Domains Technology LLP & Ors [IA No. 1 of 2020 in LC-VC-GSP-24 of 2020], the Bombay High Court, vide its order dated June 12, 2020, held that Domain Name Registrars can merely suspend the registration of domain names, but cannot block access to or ensure their continued suspension.

The Plaintiff claimed to be the registered proprietor of a number of trademarks covering a range of products, and of the domain names www.hul.co.in and www.unilever.com.

The suit was filed in relation to certain domain names which were, as alleged by the Plaintiff, fraudulently using variants of the Plaintiff’s domain name. Domain Name Registrars viz. Endurance Domains Technology LLP, GoDaddy LLC and Porkbun LLC were also added as Defendants.

The Court agreed that the registration of the aforementioned domain names, prima facie, constitutes an infringement of the Plaintiff’s rights.

While adjudicating on the forms of interim relief prayed, inter alia, continued suspension and blocking of the infringing domain names by the Domain Name Registrars and a dynamic injunction, the Court observed that the process of domain name registration is a fully automated one and requires no manual/human intervention on part of the Domain Name Registrars. The Court further observed that the Domain Name Registrars cannot ‘block access’ to a domain name, which is usually done under directions of a government agency, issued to internet service providers.

Partially granting the interim relief prayed, the Court held that “ …a domain name may have its registration suspended, but the domain name registrar cannot ‘block access’ to that domain name. …the entire process of registration itself is entirely automated and machine-driven. No domain name registrar can put any domain names on a black list or a block list. The notion that domain name registrar’s have a person or a team of persons scanning and checking every domain name application betrays a wholesale lack of understanding of how domain name registration actually works…..A ‘continued suspension’ is…not possible or practicable at least in the current technology…it is therefore not possible to allow the prayer clause…to include the words ‘ensure continued suspension of and block access to’.”

The Court denied grant of a dynamic injunction and held that “…for the technical reasons I have outlined above, it is not possible to pass an order granting an injunction operating either dynamically or otherwise in future in this fashion. The very technology behind domain name registration does not permit this.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Author: Sunidhi Bansal

In the connected matters of M/s Liberty Footwear Company v. Liberty Innovative Outfits Limited and M/s Liberty Footwear Company v. M/s Liberty Fashion Outfit [CS(COMM) 637/2019 and 638/2019], the Delhi High Court, vide its order dated May 26, 2020 in a suit for trademark infringement, held that a delay by the TM Registry in registering an assignment cannot preclude the assignee from claiming rights in the assigned mark.

The Plaintiff claimed to be the proprietor of the mark LIBERTY in respect of footwear. The Plaintiff is a part of a group of companies, which includes, inter alia, a partnership firm – Liberty Enterprises (“LE”). The Plaintiff was aggrieved by the Defendants’ use of the mark LIBERTY for similar goods.

The Defendants alleged that since the trademark registrations on which the Plaintiff was relying were in the name of LE, and the request for assignment of the same from LE to the Plaintiff had not been recorded by the TM Registry, the Plaintiff could not claim any ownership therein.

The Plaintiff argued that it acquired rights in the LIBERTY marks immediately upon execution of the assignments and mere non-registration of the assignments did not preclude it from asserting its rights, especially when the requests for registration of assignments were pending with the TM Registry.

The Court noted that that (i) as per Section 45 of the Trade Marks Act, 1999, registration of assignment is mandatory; and (ii) it is mandatory for an assignee of a registered trade mark to apply in the prescribed manner to the Registrar of Trade Marks to register his title.

Observing that the Plaintiff had been assigned the trademarks and had also filed requests for registration of the assignment, the Court accepted the Plaintiff’s contentions and granted an interim injunction. While placing reliance on Sun Pharma Industries vs. Cipla Ltd., 2009 (108) DRJ 207, the Court held that, “Any delay on the part of the Trade Marks Registry cannot…prejudice…the plaintiff…. The observation…in Sun Pharmaceuticals…that, “…allowing a person who is divested by assignment of title to registered trade mark to nevertheless continue exercising such rights…would play havoc with assignability and trading in trade mark, expressly permitted under the Act. If the person in whom title has vested by assignment is held to be not entitled to exercise such rights owing to non-registration, the same result will follow besides giving premium to third parties”, is important and conclusive.”

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In the matter of M/S Sagar Ratna Restaurants Pvt. Ltd. v. M/S D S Foods and Ors. [C.S. Comm No. 40 of 2020], the Saket District Court, vide its order dated February 27, 2020, held that all trademark and copyright disputes cannot be non-arbitrable and courts must determine arbitrability on a case-to-case basis.

The instant dispute arose over the Plaintiff’s termination of its franchise agreement with the Defendants, whereby it had licensed its trademark SAGAR RATNA to the Defendants. The Plaintiff claimed that it had rightfully terminated the agreement and had communicated the termination to the Defendants via e-mail. The Plaintiff further submitted that the Defendants continued to use its trademarks even after the termination. Accordingly, the Plaintiff had brought the instant suit seeking a permanent injunction restraining the Defendants from using the SAGAR RATNA marks.

The Defendants submitted that the Plaintiff illegally terminated the agreement and such termination was never communicated to the Defendants. The Defendants further contended that the instant suit was not maintainable as the dispute was to be resolved through arbitration as per the arbitration clause in the franchise agreement. The Plaintiff countered that the nature of the dispute was such that it could not be referred to or settled through arbitration. Therefore, the issue before the Court was whether such trademark disputes are arbitrable.

The Court analysed the jurisprudence and noted that judicial intervention should be very limited and minimal in cases where there is a clear and unambiguous arbitration clause. The Court observed that in the instant case, there is a specific arbitration clause in the franchise agreement and held that the dispute is arbitrable as the relief sought is not an ‘action in rem’ exercisable against the world at large but is an ‘action in personam’ solely against the Defendants. Dismissing the suit and referring the parties to arbitration, the Court noted that “…it is altogether too broad a proposition to accept that no action under the Trade Marks Act or the Copyright Act can ever be referred to arbitration…in the present case, no question arises of those disputes being non arbitrable…plaintiff is seeking a specific particularized relief against a particular defined party i.e. defendants and not against the world at large”.

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