Leading Decisions on Intellectual Property Rights

Leading Decisions on Intellectual Property Rights 

South India Beverages Pvt Ltd v. General Mills Marketing Inc [2014] GCtR 5518 (Delhi) has held that the analysis of composite marks in the cases of trademark infringement pose peculiar problems and has led the Courts to develop the rules of ‘anti-dissection’ and identification of ‘dominant mark’.

It is held in Rolex SA v. Alex Jewellery Pvt Ltd [2014] GCtR 6278 (Delhi) that It is settled law that in order to prove the case for infringement of trade mark, the plaintiff has to show that the essential features of the registered trade mark which has been adopted by the defendant has been taken out from the plaintiff’s registration. Only the marks are to be compared by the Court and in case the registration is granted in favour of the plaintiff, he acquires valuable right by reason of the said registration.

It was held in Oliver Bernd Frier GMBH & Co. KG v. Jaikara Apparels [2014] GCtR 6279 (Delhi) that ocular comparison is not always the decisive test and that the resemblance between two marks must be considered with reference to the ear as well as the eye. Once deceptive similarity with respect to a registered trademark is evident, there is also no reason for the Court to refuse injunction merely because the Registrar, Trade Marks is seized of the matter pertaining to the challenge by the plaintiff to the application for registration of the defendant’s trademark.

In case of Ford Motor Co. v. C.R. Borman [2014] GCtR 6280 (Delhi) it was held that Section 2 (1) (zg) of the Trade Marks Act, 1999 defines “well-known trade mark”, in relation to any goods or services as a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.