01 January 0001

IPR Amicus: March 2019

Trademarks – Use of a generic prefix, how far effective
by R. Parthasarathy & Abhishek Yadav

Proprietors try to seek registration for catchy phrases that could be associated with their products and services and could easily become popular with the target audiences. This has led to frequent registration of phrases comprising descriptive terms which is not in conformity with the trademark laws. Recently Delhi High Court dealt with two cases that involved major online booking portals fighting for exclusive rights with respect to their trademarks. These decisions, at first glance, seem to be contrary, however, differences as discussed in this article need to be considered. In MakeMyTrip v. MakeMyHappyJourney, the High Court by an ex-parte decision granted permanent injunction against the defendant. The High Court noted that defendant’s mark was similar to plaintiff’s registered mark and had a similar colour scheme with emphasis on ‘My’ being also similar. However, in Bigtree Entertainment (P) Ltd v. D Sharma, BookMyEvent (defendant) was able to turn the tables. The court refused to grant injunction and observed that prefix ‘BOOKMY’ is apt for a business involved in booking and the phrase is profusely used in the market…

Ratio decidendi

  • Broadcast of copyright work – De minimis infringement and use for review – Delhi High Court
  • Trademark validity can be determined even during infringement proceedings – Delhi High Court
  • Trademark infringement – Both prior use and registration, when important – Delhi High Court
  • Patents – Cross examination to be allowed in highly technical cases – Delhi High Court
  • Test for violation of patent – Uncommon feature whether exists – Gujarat High Court

News Nuggets

  • Sale of invention prior to patent is deemed as available for public use
  • Ingredient name relating to plant cannot be a trademark, being descriptive for general public
  • Onus of proving proprietors trademark fraudulent, lies heavy on defendant
  • Review petition before High Court maintainable after SLP dismissal by Supreme Court in limine

March, 2019/Issue-90 March, 2019/Issue-90

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