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October 2018

IPR Amicus: July 2018

Goodwill and reputation of trademark in India - Worldwide prior use plays significant role

Delhi High Court recently granted interim injunction to the plaintiffs restraining the defendants from using the trade mark or the trade name ‘HM Megabrands’. The plaintiffs had submitted that their trademark ‘H&M’ was a well-known trademark and formed a prominent part of their corporate name. The High Court observed that since the opening up of the economy in 1991, there had been a rise in Indians traveling outside the country, interaction of Indians with foreigners along with increase in online shopping which has led to the mark having goodwill/reputation without necessarily setting up a brick-n-mortar shop in India. It is believed that with the increase in the knowledge of international brands in India, the worldwide prior use of a mark will play a significant role in determining the goodwill and reputation of the mark in India. It however remains to be seen whether the application of the “first in the market test” as applied in the present judgment will give primacy to unregistered marks in India which are otherwise in prior use worldwide or to a mark which is used and registered in India...

 

Ratio decidendi

  • Trademark – No infringement if mark not used as trademark - Delhi High Court denies interim injunction against use of trade name MERCYKIND alleged to be infringing the mark MANKIND
  • Copyright of producer in cinematographic work when cannot be restricted by an agreement between performer and producer – Madras High Court
  • Trademark - No passing off for using mark SPLITVIEW – Delhi High Court rejects interim relief observing absence of elements of irreparable injury and balance of convenience
  • Pre-cut Eye Drape having only functional value does not qualify as Design – Delhi High Court
  • ‘Defensive registration’ of non-invented words when not valid – Madras High Court observes that Section 47 of Trade & Merchandise Marks Act, 1958 dealt with defensive registration only of invented words which have become well known

 

News Nuggets

  • Implantable medical devices may now be ‘drugs’ – CDSCO invites comments
  • Geographical Indication – Protection not against mere suggestion of area
  • IPR enforcement – Reference to ‘patent’ removed from Indian Customs Rules
  • WTO panel upholds Australia's tobacco plain packaging measures

 

July, 2018/Issue-83 July, 2018/Issue-83

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