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August 2018

IPR Amicus: June 2018

by Prince Bharti Manoj Gupta

Infringement or passing off in use of single colour as trademark

Last month Delhi High Court held that use of a single colour as against a combination of colours does not qualify as a ‘mark’ under Section 2(1)(m) and as a ‘trademark’ under Section 2(1)(zb) of the Trademark Act. It was also held that when a registered trademark is being used as a characteristic or characteristics of a good, i.e. it is serving a non-trademark function, then the use of the same by another person as characteristic or characteristics of his goods cannot be termed as infringement. The issue involved trademark in “RED SOLE” which is not a wordmark, but a red colour shade applied to the soles of the ladies’ footwear. Interestingly, a similar dispute was decided by the European Court of Justice this month to hold that “RED SOLE” is a position mark and consequently, a valid trademark under the laws of European Union, though the Advocate General had expressed doubts as to whether use of colour red can perform the essential function of a trademark. The US Court of Appeal has also held that the mark has acquired limited “secondary meaning” as a distinctive symbol identifying the brand. It may also be noted that Single Judge of the Delhi High Court in December 2017, had, in a different matter though involving same trademark, held that the trademark has acquired a well-known character. It seems the legal fraternity is still dealing with the dilemma whether use of a single colour can qualify as a trademark.

 

Ratio decidendi

  • Trademark – Amendment of plaint permissible for incorporating facts which are necessary for effectual and complete determination of the controversy raised in the suit – Delhi High Court
  • No passing-off in abbreviation used along with another different mark – Delhi High Court
  • Trademark passing-off – Use of surname not prohibited – Karnataka High Court
  • Infringer choosing not to contest proceedings - Damages may be awarded – Delhi High Court
  • Trademark – Section 124 applicable to stay infringement suit and not suit for passing-off – Delhi High Court
  • Designs - Invalidity of registration of prior registrant when cannot be claimed – Delhi High Court

 

News Nuggets

  • EU Trademark – No confusion in ‘Messi’ and ‘Massi’
  • EU Trademark – Three dimensional shape of Kit-Kat 4 fingers
  • Permanent injunction granted for infringement of mark P&G
  • Trademark – Interim injunction against use of mark HM MEGABRANDS

 

June, 2018/Issue-82 June, 2018/Issue-82

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