LB-4036- Intellectual Property Rights Law- I

By Somay Mendiratta

N. R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714

This case is a landmark ruling in Indian trade mark law concerning passing off and
transborder reputation. It established that a foreign company could assert
goodwill in India even without direct sales if their trade mark had gained
recognition among Indian consumers.

1. Facts of the Case

 Whirlpool Corporation, a U.S.-based company, had been using the
"Whirlpool" trade mark for home appliances (especially washing
machines) since 1950 internationally.
 They had not sold washing machines in India before 1987, but the trade
mark "Whirlpool" was well-known due to advertisements in international
magazines, TV, and tourist interactions.
 N. R. Dongre & Others, an Indian company, obtained registration for the
"Whirlpool" trade mark in India and began selling washing machines under
this name.
 Whirlpool Corporation objected, arguing that Dongre was passing off their
products as if they were connected to Whirlpool, misleading consumers.
 Whirlpool filed a case to restrain N. R. Dongre from using the Whirlpool
trade mark in India.

2. Issues Before the Court

1. Does a foreign company (Whirlpool) have goodwill and reputation in
India without direct sales?
2. Can a foreign company file a passing off suit against an Indian company
that has legally registered the trade mark in India?
3. Does advertising and brand recognition among Indian consumers
(without actual sales) constitute goodwill?

3. Observations of the Court

 Goodwill is not restricted by geographical boundaries – If a trade mark
has international fame and Indian consumers recognize it, the company can
claim goodwill in India.
 Presence of a trade mark in international media and advertisements
creates brand awareness in India, even if the company does not sell
 products directly.
 A trade mark registration in India does not automatically grant
exclusive rights if it is used to mislead consumers.
 The doctrine of transborder reputation applies – Indian consumers
associated the name "Whirlpool" with the U.S. company, proving that
Whirlpool Corporation had goodwill.

4. Judgment of the Supreme Court

 The Supreme Court granted an injunction against N. R. Dongre,
preventing them from using the "Whirlpool" trade mark in India.
 The Court ruled that Whirlpool Corporation’s trade mark had a
reputation in India due to its international presence, even before direct
sales started in India.
 It held that N. R. Dongre was passing off their goods as those of
Whirlpool, misleading Indian consumers.
 Significance of Transborder Reputation: The Court recognized that
international brands could have goodwill in India even without physical
sales if the brand was known to Indian consumers through advertisements
and international exposure.

Case Analysis: Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd.

(2004) AIR SC 3540
This case is a landmark judgment in Indian domain name protection and
established that domain names can be protected under trade mark law.

1. Facts of the Case

 Satyam Infoway Ltd. (Plaintiff) was a well-known IT services company
that had been using the domain names "Sifynet", "Sify", "Sify.net", and
"Sify.com" for its online services since 1999.
 Sifynet Solutions Pvt. Ltd. (Defendant), a later entrant, registered the
domain names "Siffynet.net" and "Siffynet.com" and offered similar
services in 2001.
 Satyam Infoway claimed that "Siffynet" was deceptively similar to
"Sify", leading to confusion among consumers.
 They filed a case for passing off, arguing that Sifynet Solutions was unfairly
benefiting from their established goodwill and reputation.
2. Issues Before the Court
1. Can a domain name be protected as a trade mark?
2. Does using a confusingly similar domain name amount to passing off?
3. Does the lack of trade mark registration affect domain name
protection?

3. Observations of the Court

 Domain names are more than just internet addresses – they can function
as brand identifiers similar to trade marks.
 A domain name can acquire goodwill if it is widely recognized among
consumers.
 Satyam Infoway had prior use of "Sify" and had built a strong
reputation before Sifynet Solutions entered the market.
 Sifynet Solutions' use of a similar domain was likely to confuse
consumers into believing that the two businesses were connected.
 Passing off applies even to online businesses – if a name misleads
consumers and takes advantage of an established brand, it amounts to unfair
competition.

4. Judgment of the Supreme Court

 The Supreme Court ruled in favor of Satyam Infoway and held that
domain names are entitled to trade mark protection.
 It found that Sifynet Solutions was guilty of passing off as it was using a
confusingly similar name in the same industry.
 Sifynet Solutions was restrained from using the domain names
"Siffynet.net" and "Siffynet.com".
 The Court clarified that even unregistered domain names can be
protected under the common law remedy of passing off.

Case Analysis: M/s Hindustan Development Corporation

Ltd v. The Deputy Registrar of Trade Marks, AIR 1955 Cal
319
This case is an important ruling on descriptive trade marks and absolute
grounds for refusal under Section 9 of the Trade Marks Act, 1999 (previously
Trade Marks Act, 1940). It clarifies whether a common or laudatory word can
be granted trade mark protection.
1. Facts of the Case
 M/s Hindustan Development Corporation Ltd. (the appellant) applied for
the registration of the trade mark "Rasoi" for edible oils and vanaspati ghee.
 The Deputy Registrar of Trade Marks refused the registration on the
grounds that the word "Rasoi" (meaning "kitchen" in Hindi) is a
common, descriptive word in India.
 The appellant challenged this refusal in the Calcutta High Court, arguing
that "Rasoi" had acquired a distinctive character through continuous use.

2. Issues Before the Court

1. Whether the word "Rasoi" is a descriptive or generic term that cannot
be registered as a trade mark?
2. Can a common word acquire distinctiveness over time, allowing it to be
registered?

3. Observations of the Court

 The court examined whether "Rasoi" was a purely descriptive term or had
acquired a secondary meaning.
 It observed that "Rasoi" is a commonly used word in India for
"kitchen", which is directly related to edible oils and vanaspati products.
 The court referred to Section 6(e) of the Trade Marks Act, 1940 (now
Section 9(1)(b) of the Trade Marks Act, 1999), which states that
descriptive or laudatory words cannot be registered unless they have
acquired distinctiveness.
 The court noted that merely using a word for some time does not
automatically make it distinctive.

4. Judgment of the Calcutta High Court

 The court upheld the Registrar’s refusal to register "Rasoi" as a trade
mark.
 It held that "Rasoi" was descriptive and commonly used in the food
industry, making it ineligible for trade mark protection.
 The appellant failed to prove that "Rasoi" had acquired distinctiveness.
 The court reaffirmed that a common word cannot be monopolized unless
it has developed a strong secondary meaning among consumers.
 Case Analysis: The Imperial Tobacco Co. of India v. The
Registrar of Trade Marks, AIR 1977 Cal 413

This case deals with the refusal of trade mark registration on absolute grounds
under Section 9 of the Trade Marks Act, 1940 (now Section 9 of the Trade
Marks Act, 1999). It particularly focuses on whether a laudatory and descriptive
word can be monopolized as a trade mark.

1. Facts of the Case

 The Imperial Tobacco Company of India Ltd. (now ITC Limited) applied
for the registration of the trade mark "Simla" for cigarettes.
 The Registrar of Trade Marks rejected the application, stating that
"Simla" is a geographical name (referring to the famous hill station in
India).
 The applicant company appealed to the Calcutta High Court, arguing that
"Simla" had acquired distinctiveness through long-standing use in
connection with their cigarette brand.

2. Issues Before the Court

1. Can a geographical name be registered as a trade mark?
2. Has "Simla" acquired distinctiveness due to the applicant’s use?
3. Would granting exclusive rights over "Simla" cause confusion or
unfairly restrict others?

3. Observations of the Court

 The court noted that "Simla" is a well-known geographical location in
India, and geographical names cannot be monopolized unless they acquire
a secondary meaning in the minds of consumers.
 It referred to Section 9(1)(b) of the Trade Marks Act, 1999 (previously
covered under the 1940 Act), which prohibits registration of geographical
names unless they have acquired distinctiveness.
 The court found that Imperial Tobacco had not provided sufficient
evidence to prove that "Simla" was exclusively associated with their
cigarette brand.
 It further held that allowing registration of "Simla" as a trade mark could
 mislead the public into believing that the product had a connection to the
geographical location of Simla (now Shimla).

4. Judgment of the Calcutta High Court

 The court upheld the Registrar’s refusal to register "Simla" as a trade
mark for cigarettes.
 It ruled that "Simla" remained a geographical name and had not acquired
a distinctive secondary meaning linked only to the applicant's cigarettes.
 The judgment reinforced that geographical names cannot be monopolized
unless they have become uniquely identified with a brand in public
perception.
 The appeal was dismissed, and the refusal of trade mark registration was
confirmed.

Case Analysis: Geep Flashlight Industries Ltd. v.

Registrar of Trade Marks, AIR 1972 Del 179
This case revolves around the refusal of the trade mark "JANTA" for electric
torches on the grounds that it was generic and lacked distinctiveness.

1. Facts of the Case

 Geep Flashlight Industries Ltd. applied for registration of the word
"JANTA" as a trade mark for electric torches.
 The Registrar of Trade Marks refused the application, citing that
"JANTA" was a common and non-distinctive term in trade.
 The word "JANTA" (meaning "public" in Hindi) was commonly used in
business and was already in use by multiple traders for different products,
including torches.
 Geep Flashlight Industries appealed this refusal before the Delhi High
Court, arguing that they had been using the word "JANTA" for torches
for a long time and that it had gained distinctiveness through usage.

2. Issues Before the Court

1. Was "JANTA" a generic and commonly used term in trade?
2. Could "JANTA" be exclusively registered as a trade mark for electric
torches?
3. Had Geep Flashlight Industries acquired distinctiveness through prior
and continuous use of the mark?
3. Observations of the Court
 The court analyzed whether "JANTA" had become distinctive enough
to serve as a trade mark for Geep Flashlight Industries.
 It noted that "JANTA" was widely used by multiple traders for various
goods, including electric torches and other electrical products.
 The court relied on the principle that words of common use cannot be
monopolized by one trader unless they have acquired a secondary
meaning associated exclusively with their goods.
 The court found that Geep Flashlight Industries was not the only user of
"JANTA" for torches, and thus, the mark lacked uniqueness.

4. Judgment of the Delhi High Court

 The court upheld the Registrar's decision to refuse the trade mark.
 It ruled that "JANTA" was a generic term and lacked the distinctiveness
required for trade mark registration under Section 9(1) of the Trade
Marks Act.
 The court stated that since other traders were also using the word
"JANTA" for torches, Geep Flashlight Industries could not claim
exclusive rights over it.
 It emphasized that a common word cannot be registered as a trade mark
unless it has acquired a secondary meaning, which was not established
in this case.
 As a result, the appeal was dismissed, and the refusal of registration was
upheld.

Sunder Parmanand Lalwani & Ors. v. Caltex (India)

Ltd.
Facts of the Case:
1. Sunder Parmanand Lalwani & Co. applied for the registration of the
trademark "Caltex" for horological and other chronometric instruments
(watches and timepieces) under Class 14.
2. Caltex (India) Ltd., a prominent company in the petroleum industry,
opposed this application, asserting that:
o They had been using the trademark "Caltex" in India since 1937 for
petroleum products and had established substantial goodwill and
reputation.
 o The use of "Caltex" for watches by Lalwani & Co. could lead to
public confusion, associating the watches with Caltex's petroleum
business.
Issues Before the Court:
1. Whether Lalwani & Co. could register the trademark "Caltex" for watches,
given Caltex (India) Ltd.'s established reputation in the petroleum sector.
2. Whether the use of the trademark "Caltex" for watches would likely deceive
or cause confusion among the public.
3. Whether a well-known trademark in one industry should be protected from
use in an unrelated industry to prevent potential confusion.
Observations of the Court:
1. Reputation and Goodwill:
o The court acknowledged that "Caltex" was a well-known trademark
associated with petroleum products and had acquired significant
goodwill in India since 1937.
2. Likelihood of Confusion:
o Despite the differences between petroleum products and watches, the
court observed that the use of the trademark "Caltex" for watches
could mislead consumers into believing there was a connection
between the two products, thereby causing confusion.
3. Protection of Well-Known Trademarks:
o The court emphasized that the protection of well-known trademarks
extends beyond their original class of goods or services. Even if the
goods are dissimilar, the use of a well-known trademark in a different
class can still cause confusion and should be prevented to protect the
trademark's distinctiveness and the public from deception.
Judgment:
 The Bombay High Court upheld the opposition by Caltex (India) Ltd. and
refused the registration of the trademark "Caltex" for watches by Lalwani &
Co.
 The court held that allowing the registration would likely deceive or cause
confusion among the public, given the established reputation of the "Caltex"
trademark in the petroleum industry

Sony Kabushuki Kaisha v. Samrao Masker, AIR 1985 Bom

327
Facts of the Case:
1. Sony Kabushiki Kaisha, a renowned Japanese corporation, is globally
recognized for its electronic products under the trademark "SONY".
2. Shamrao Masker, an Indian entrepreneur, sought to register the trademark
"SONY" for nail polish under Class 3.
3. Sony opposed this application, arguing that the use of their established
trademark "SONY" on unrelated products like nail polish could lead to
public confusion and dilute their brand's distinctiveness.
Issues Before the Court:
1. Whether the registration of the trademark "SONY" for nail polish by
Shamrao Masker would likely cause confusion or deception among
consumers, associating the nail polish with Sony's electronic products.
2. Whether a well-known trademark in one industry should be protected from
use in an unrelated industry to prevent potential confusion and protect the
brand's integrity.
Observations of the Court:
1. Distinctiveness and Reputation of "SONY":
o The court acknowledged that "SONY" is a distinctive and well-
established trademark associated primarily with electronic goods.
2. Nature of Goods and Trade Channels:
o The court observed that electronic goods and nail polish are entirely
different products, catering to different consumer needs and sold
through distinct trade channels.
o Electronic products are typically sold in specialized stores, whereas
nail polish is commonly available in cosmetic shops and general retail
outlets.
3. Likelihood of Confusion:
o Considering the significant differences in the nature of the products,
their uses, and the markets they serve, the court found that the average
consumer is unlikely to associate nail polish branded as "SONY" with
Sony's electronic products.
o The court noted that the possibility of consumers believing that the
nail polish originated from or was endorsed by Sony was minimal.
Judgment:
 The Bombay High Court dismissed Sony's opposition and allowed the
registration of the trademark "SONY" for nail polish by Shamrao Masker.
 The court concluded that, given the vast differences between electronic
goods and nail polish, there was no reasonable likelihood of confusion or
deception among consumers.
K. R. Krishna Chettiar v. Sri Ambal & Co, AIR 1970 SC 146

Facts of the Case:

 Both parties were engaged in the manufacture and sale of snuff products in
Madras.
 Sri Ambal & Co. had a registered trademark featuring the image of the
goddess "Sri Ambal" seated on a globe floating on water, enclosed in a
circular frame, with the legend "Sri Ambal parimala snuff" at the top and
"Sri Ambal & Co., Madras" at the bottom.
 K.R. Chinna Krishna Chettiar applied for the registration of a trademark
comprising the image of the goddess "Sri Andal" with the words "Sri Andal
Madras Snuff" written in multiple languages.
 Sri Ambal & Co. opposed this application, asserting that the proposed mark
was deceptively similar to their registered trademarks, potentially leading to
consumer confusion.
Issues Before the Court:
1. Whether the trademark "Sri Andal" was deceptively similar to the registered
trademark "Sri Ambal."
2. Whether the registration of "Sri Andal" would likely cause confusion or
deception among consumers, considering the similarity in the names and the
identical nature of the goods (snuff).
Observations of the Court:
 Phonetic Similarity: The Court observed that the words "Ambal" and
"Andal" have a striking phonetic resemblance, which could lead to
confusion among consumers with average intelligence and imperfect
recollection.
 Visual Elements: Although the visual representations of the goddesses
differed, the Court emphasized that phonetic similarity alone could be
sufficient to establish deceptive similarity, especially when the goods in
question were identical.
 Consumer Perception: The Court noted that consumers might not distinguish
between the subtle differences in the names and could assume that "Sri
Andal" snuff was associated with or originated from the same source as "Sri
Ambal" snuff.
Judgment:
 The Supreme Court upheld the opposition by Sri Ambal & Co. and refused
 the registration of the trademark "Sri Andal" by K.R. Chinna Krishna
Chettiar.
 The Court held that the phonetic similarity between "Ambal" and "Andal,"
coupled with the identical nature of the goods, was likely to cause confusion
among consumers, thereby justifying the refusal of registration under
Section 12(1) of the Trade and Merchandise Marks Act, 1958.

Carrefour v. V. Subburaman, 2007 (35) PTC 225 (Mad.)

Facts:
1. Carrefour, a well-known French multinational retail corporation, had been
using the "CARREFOUR" trademark globally for various goods and
services, including retail, supermarkets, and other commercial activities.
2. The company had extensive international recognition and registrations,
though it had not yet established a physical presence in India at the time of
the dispute.
3. V. Subburaman, the respondent, applied for the trademark
"CARREFOUR" in India for furniture and related goods.
4. Carrefour opposed this application, arguing that their trademark was well-
known worldwide and that allowing the respondent's mark would mislead
consumers, creating a false association between the two businesses.
5. The Trade Marks Registry refused publication of the respondent’s
trademark application under Section 11(3) of the Trade Marks Act, 1999,
citing a likelihood of confusion and the risk of passing off.
6. The matter was taken up before the Madras High Court.
Issues:
1. Whether Carrefour’s trademark was a well-known trademark under
Indian law, despite not having direct operations in India.
2. Whether the respondent’s trademark application for "CARREFOUR"
for furniture should be refused under Section 11(3) of the Trade Marks
Act, 1999.
3. Whether the use of the respondent's trademark could result in passing
off, thereby misleading consumers into believing that there was a connection
between the two businesses.
Observations by the Court:
1. Recognition of Carrefour's Well-Known Status:
o The court recognized that Carrefour was a globally well-known
brand with a strong reputation, even though it did not have an
immediate physical presence in India.
 o As per Section 11(2) of the Trade Marks Act, 1999, a well-known
trademark is protected even for different goods and services,
preventing later registrations that may dilute its reputation.
2. Likelihood of Confusion & Passing Off (Section 11(3)):
o The court noted that allowing the respondent's trademark for furniture
could lead to consumer confusion, as people might mistakenly
believe that the goods were associated with or endorsed by Carrefour.
o Under Section 11(3)(a), if the use of a mark in India is likely to be
prevented by law—especially under passing off—its registration must
be refused.
o The court found that the respondent's mark was misleading and
taking unfair advantage of Carrefour’s established goodwill.
3. Protection Against Trademark Misuse:
o The Trade Marks Act protects well-known trademarks from
unauthorized use, ensuring that their reputation is not exploited by
unrelated parties.
o The court emphasized that a brand does not need to be physically
present in India to qualify for protection under well-known
trademark laws.
Judgement:
1. The respondent’s trademark application for "CARREFOUR" was
refused due to:
o The well-known status of Carrefour’s mark (Section 11(2)).
o The likelihood of confusion and passing off (Section 11(3)(a)).
2. The court upheld the decision of the Trade Marks Registry, stating that
Carrefour’s trademark could not be diluted or misused by the respondent.
3. The respondent’s mark was not published due to Section 11(3) of the
Trade Marks Act, 1999.
4. The judgement reinforced the principle that foreign brands with a strong
reputation are entitled to protection in India, even if they do not have
direct operations in the country.

Parle Products (P) Ltd. v. J.P. & Co., Mysore

Citation: (1972) 1 SCC 618
Facts in Brief:
Parle Products (P) Ltd., the manufacturer of "Parle Gluco" biscuits, claimed that
J.P. & Co., Mysore, was using a deceptively similar wrapper for its "Glucose
Biscuits," leading to consumer confusion. The Supreme Court had to determine
whether the defendant's packaging infringed upon Parle's registered trademark.

Facts:
1. Parle Products (P) Ltd., the plaintiff, was a leading biscuit manufacturer
selling biscuits under the trademark "Parle Gluco" with a distinctive
wrapper featuring:
o A young girl in a farmyard setting, carrying a pail of water.
o Cows, hens, a house, and trees in the background.
o The words "Gluco Biscuits" prominently displayed.
2. J.P. & Co., Mysore, the defendant, started selling "Glucose Biscuits"
using a wrapper that resembled the Parle Gluco packaging. Their design
included:
o A young girl in a similar setting, balancing a bundle of hay on her
head and holding a sickle.
o Cows, hens, a house, and trees, similar to Parle’s wrapper.
o The use of the words "Glucose Biscuits", resembling the plaintiff’s
branding.
3. Parle filed a suit claiming that J.P. & Co.'s packaging was deceptively
similar, leading to consumer confusion, and thus amounted to trademark
infringement.

Issue:
 Whether the defendant’s packaging was deceptively similar to that of Parle
Products, leading to a likelihood of consumer confusion and trademark
infringement.

Observations:
Trial Court:
 Found more differences than similarities between the two wrappers.
 Concluded that the defendant’s packaging would not mislead consumers
into thinking it was Parle’s product.
 Dismissed the suit.
High Court:
 Noted some similarities, but emphasized distinguishing factors.
 Argued that customers of Parle biscuits would specifically ask for them,
reducing the risk of confusion.
 Upheld the trial court’s decision.
Supreme Court:
 The Court emphasized that trademark infringement is determined by the
overall impression created by the two marks and not just minor differences.
  Observed that an ordinary consumer does not analyze every detail but
remembers general appearances and essential features.
 Identified several key similarities between the two wrappers:
o The presence of a girl in a farm-like setting.
o Cows, hens, a house, and trees in both wrappers.
o Similar color schemes and packaging sizes.
o The words "Gluco Biscuits" and "Glucose Biscuits", leading to
phonetic and visual resemblance.
 Concluded that these similarities were substantial enough to confuse
consumers, leading to potential deception.

Judgment:
 The Supreme Court allowed the appeal and ruled in favor of Parle
Products.
 It held that J.P. & Co.'s wrapper was deceptively similar to Parle’s,
causing likelihood of confusion among consumers.
 The Court issued an injunction, restraining J.P. & Co. from using the
infringing wrapper.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.

Citation: (2001) 5 SCC 73 : 2001 PTC 300 (SC)

Facts of the Case

1. Cadila Health Care Ltd. and Cadila Pharmaceuticals Ltd. were both
Indian pharmaceutical companies.
2. Cadila Health Care launched an anti-malarial drug under the trademark
"Falcigo."
3. Cadila Pharmaceuticals manufactured and marketed an anti-malarial drug
under the trademark "Falcitab."
4. Both drugs contained artesunate, an active ingredient for treating malaria.
5. Cadila Health Care Ltd. filed a suit against Cadila Pharmaceuticals Ltd.
in the District Court, Vadodara, claiming that:
o "Falcigo" and "Falcitab" were deceptively similar.
o The similarity could lead to confusion, causing patients to take the
wrong medicine.
o This confusion could have life-threatening consequences.
6. The Trial Court ruled in favor of Cadila Health Care Ltd., restraining
 Cadila Pharmaceuticals from using "Falcitab."
7. Cadila Pharmaceuticals Ltd. appealed to the Gujarat High Court, which
overturned the decision, holding that:
o Doctors prescribe medicines, and hence, confusion was unlikely.
o Pharmacists and consumers could differentiate between the two
names.
8. Cadila Health Care Ltd. then appealed to the Supreme Court of India.

Issue Before the Supreme Court

 Whether "Falcigo" and "Falcitab" were deceptively similar, creating a
likelihood of confusion in the minds of consumers and healthcare
professionals.

Observation of the Supreme Court

The Supreme Court made several key observations regarding trademark protection
for pharmaceutical products:
1. Stricter Approach for Pharmaceutical Trademarks
 In pharmaceutical cases, confusion in trademarks can have serious health
risks.
 Even minor phonetic or visual similarities can lead to fatal medication
errors.
2. Public Health is More Important than Commercial Interest
 Unlike consumer goods, medicine is a life-saving product.
 Even one mistake due to name confusion could be dangerous.
3. Possibility of Confusion Even with Prescription Medicines
 The Gujarat High Court wrongly assumed that doctors always prescribe
medicines correctly and pharmacists do not make mistakes.
 In reality:
o Handwritten prescriptions can be misread.
o Pharmacists may confuse similar-sounding names.
o Patients often self-medicate without prescriptions.
4. Relevance of International Trademark Practices
 The Supreme Court stated that India should follow international best
practices, where strict regulations prevent similar drug names.
5. Factors to Determine Deceptive Similarity
The Court emphasized the following factors to assess deceptive similarity in
pharmaceutical trademarks:
✅ Nature of the marks – Whether they look, sound, or mean the same.
✅ Degree of resemblance – Whether phonetic and visual similarity exists.
✅ Nature of goods – If both medicines treat the same or similar diseases.
✅ Consumer base – Patients, pharmacists, and doctors could be confused.
✅ Mode of purchase – Whether drugs are available over-the-counter (OTC) or
only by prescription.
✅ Likelihood of confusion – The risk of dispensing the wrong drug due to
name similarity.

Judgement of the Supreme Court

The Supreme Court held that the Gujarat High Court's approach was incorrect
and ruled as follows:
1. Set aside the Gujarat High Court’s decision.
2. Sent the matter back to the Trial Court to reconsider the case using the
guidelines laid down in this judgment.
3. Emphasized that public health and safety are paramount, and even the
slightest possibility of confusion in drug names should be avoided.
4. Stressed the importance of strict scrutiny for pharmaceutical trademarks.

Milmet Oftho Industries & Ors. v. Allergan Inc.

Citation: (2004) 12 SCC 624

Facts of the Case:

1. Allergan Inc., a multinational pharmaceutical company, developed an
ophthalmic antibiotic preparation under the trademark "OCUFLOX". The
company claimed to have been using this mark since September 9, 1992,
and had obtained trademark registrations in various countries, including
Australia, Bolivia, Ecuador, Mexico, Peru, South Africa, Canada, and the
USA. At the time of the dispute, Allergan had applied for trademark
registration in India, but the application was still pending.
2. Milmet Oftho Industries, an Indian pharmaceutical company, introduced a
similar ophthalmic antibiotic product under the trademark "OCUFLOX" in
the Indian market. They applied for trademark registration in India and
commenced sales before Allergan's product entered the Indian market.
3. Allergan Inc. filed a suit for passing off against Milmet Oftho Industries,
seeking to restrain them from using the "OCUFLOX" trademark in India.
Allergan argued that despite not having commenced sales in India, their
trademark had acquired a substantial international reputation, and Milmet's
 use of an identical mark would likely cause confusion.

Issues Before the Court:

1. Whether Allergan Inc.'s prior international use and reputation of the
"OCUFLOX" trademark could be protected in India, despite the mark not
being used in the Indian market at the time.
2. Whether Milmet Oftho Industries' use of the "OCUFLOX" trademark in
India constituted passing off, given Allergan's established international
reputation.

Observations of the Supreme Court:

1. Recognition of Transborder Reputation: The Court acknowledged that in
the modern globalized world, trademarks could acquire a reputation that
transcends national borders. It held that if a trademark has established a
significant international presence, it deserves protection even in jurisdictions
where it has not yet been used, provided there is an intention to enter that
market.
2. Priority in Adoption: The Court emphasized that the priority of adoption
and use of a trademark on a global scale is crucial. If a company is the first
to use a particular trademark internationally, it should not be deprived of its
rights merely because it has not commenced use in a specific country. This
principle is especially pertinent in the pharmaceutical industry, where
confusion between similar drug names can have serious health implications.
3. Public Interest and Health Considerations: The Court underscored the
importance of public health and safety in trademark disputes involving
pharmaceutical products. It noted that allowing similar trademarks for
medicinal products could lead to confusion, resulting in potential health
risks. Therefore, a stricter standard must be applied to prevent any
possibility of confusion in such cases.

Judgment:
The Supreme Court ruled in favor of Allergan Inc., granting a permanent
injunction restraining Milmet Oftho Industries from using the "OCUFLOX"
trademark in India. The Court held that Allergan's prior international use and
established reputation of the "OCUFLOX" trademark warranted protection in
India, even though the product was not yet sold in the Indian market. The decision
reinforced the principle that multinational companies with a significant
international reputation should be protected against the unauthorized use of their
trademarks, even in countries where they have not commenced business, especially
when there is an intention to enter that market.
 Balakrishna Hatcheries v. Nandos International Ltd.
Citation: 2007 (35) PTC 295 (Bom)

Facts:
 Balakrishna Hatcheries: An Indian company established in 1989, engaged
in the poultry business, including the sale of processed and frozen meat
products under the trademark "NANDU'S." The term "Nandu" is derived
from the founder's name, Nand Kumar. The trademark "NANDU'S" was
registered under Class 29, which pertains to processed and frozen meat
products.
 Nandos International Ltd.: A South African company operating a global
chain of restaurants specializing in Afro-Portuguese cuisine, particularly
peri-peri chicken, under the trademark "NANDO'S." The company sought to
enter the Indian market using its established brand name.
Balakrishna Hatcheries filed a suit against Nandos International Ltd., alleging
trademark infringement and passing off, claiming that the use of "NANDO'S" by
Nandos International would cause confusion among consumers due to the
similarity with their "NANDU'S" trademark.

Issues:
1. Whether Nandos International Ltd.'s use of the trademark "NANDO'S"
constitutes infringement of Balakrishna Hatcheries' registered trademark
"NANDU'S."
2. Whether Nandos International Ltd.'s use of the trademark "NANDO'S"
amounts to passing off, leading to potential confusion among consumers
regarding the origin of goods and services.

Observations:
 Trademark Infringement: The court examined Section 29 of the Trade
Marks Act, 1999, which pertains to infringement. It noted that for
infringement to occur, the impugned mark must be used in relation to goods
or services that are identical or similar to those for which the trademark is
registered. In this case, Balakrishna Hatcheries' trademark "NANDU'S" was
registered for processed and frozen meat products (Class 29), while Nandos
International used "NANDO'S" for restaurant services (Class 42). The court
observed that there was no similarity between the goods (processed meat
 products) and services (restaurant services), and thus, the infringement claim
under Section 29(1) could not be sustained.
 Passing Off: Regarding the passing off claim, the court emphasized that
Balakrishna Hatcheries had not been engaged in the business of running
restaurants or selling sauces under the "NANDU'S" mark. Since there was
no overlap in the business activities of the two parties, the court found no
likelihood of confusion among consumers. Consequently, the passing off
claim was also dismissed. Indian Kanoon

Judgment:
The Bombay High Court dismissed the suit filed by Balakrishna Hatcheries,
concluding that:
1. There was no trademark infringement, as the goods and services associated
with the respective trademarks were not similar.
2. There was no passing off, as there was no likelihood of confusion among
consumers due to the distinct nature of the businesses operated by the
parties.

Case Summary: Kapil Wadhwa & Ors. vs. Samsung

Electronics Co. Ltd. & Anr.
Facts: Samsung Electronics Co. Ltd. (Plaintiff) and its Indian subsidiary filed a
lawsuit against Kapil Wadhwa and others (Defendants) for importing and selling
Samsung printers in India without authorization. These printers, although genuine
Samsung products, were sourced from markets outside India and sold at prices
significantly lower than those offered by Samsung's official channels in India.
Issues:
1. Does India adhere to the principle of national exhaustion or international
exhaustion concerning trademark rights?
2. Are parallel imports (importing genuine products without the trademark
owner's consent) permissible under Indian law?
Observations: The court examined Sections 29 and 30 of the Trademarks Act,
1999. Section 29 pertains to trademark infringement, while Section 30 outlines
limitations on the effect of a registered trademark. Specifically, Section 30(3)
indicates that once goods are lawfully acquired, the purchaser can further sell those
goods without it constituting trademark infringement. This provision aligns with
the principle of international exhaustion, suggesting that the trademark owner's
rights are exhausted after the first sale, regardless of the sale's location.
Judgment: The Division Bench of the Delhi High Court overturned the earlier
decision of the Single Judge. It held that India follows the principle of international
exhaustion of trademark rights. Consequently, parallel imports of genuine goods
are permissible under Indian law. However, the court mandated that the defendants
provide clear disclaimers in their shops, stating that the imported products are not
covered by the manufacturer's warranty applicable in India. This ensures
consumers are informed about the nature of the products they purchase.
Implications: This landmark judgment clarified that in India, once a genuine
product is sold anywhere globally, the trademark owner's rights over that specific
item are exhausted. This allows for the legal resale of genuine goods without
constituting trademark infringement, provided consumers are adequately informed
about warranty and service differences.

Hawkins Cookers Limited v Murugan Enterprises,

2012(50)PTC389(Del)

Facts:
Hawkins Cookers Limited, the plaintiff, is the registered proprietor of the
trademark "HAWKINS" for pressure cookers and their components, including
gaskets. Murugan Enterprises, the defendant, manufactured and sold gaskets under
the trademark "MAYUR." On the packaging of these gaskets, the phrase "Suitable
for: Hawkins Pressure Cookers" appeared, with "Hawkins" printed in red to stand
out.
Issues:
1. Whether the defendant's use of the "HAWKINS" trademark on its gasket
packaging constituted trademark infringement.
2. Whether such use fell under the exception of nominative fair use as per
Section 30(2)(d) of the Trade Marks Act, 1999.
Observations:
 Single Judge's Findings: The Single Judge observed that the defendant
prominently displayed its own "MAYUR" trademark on the packaging and
used "Hawkins" on the back to indicate compatibility. It was noted that this
use was reasonably necessary to show that the gaskets were suitable for
Hawkins pressure cookers, falling under the exception provided in Section
30(2)(d) of the Trade Marks Act, 1999.
 Division Bench's Analysis: Upon appeal, the Division Bench scrutinized
 the applicability of Section 30(2)(d), which permits the use of a registered
trademark by another party if it is necessary to indicate the intended purpose
of a product, such as compatibility with another product, provided such use
is in accordance with honest practices and does not harm the trademark's
reputation. The Bench emphasized that this exception applies only when the
use of the trademark is indispensable to convey the product's compatibility.
In this case, evidence indicated that the defendant's gaskets were compatible
with various pressure cookers, not exclusively Hawkins'. Therefore,
mentioning only "Hawkins" was deemed unnecessary and suggestive of an
association with the Hawkins brand

 Judgment:
The Division Bench concluded that the defendant's use of the "HAWKINS"
trademark was not "reasonably necessary" to indicate the suitability of its gaskets,
as they were compatible with multiple pressure cooker brands. This selective use
could mislead consumers into believing an association with Hawkins Cookers
Limited, thereby constituting trademark infringement. Consequently, the court
ruled in favor of Hawkins Cookers Limited, granting an injunction against
Murugan Enterprises to prevent further use of the "HAWKINS" trademark on their
product packaging.
This case underscores the careful application of the nominative fair use doctrine,
highlighting that the use of another's trademark is permissible only when it is
genuinely necessary to describe the product's compatibility or intended purpose,
without implying any false association or endorsement.

ITC Limited v Philip Morris Products S.A., 2010(42) PTC

572 (Del)

Facts:
 ITC Limited: An Indian conglomerate with diverse business interests,
including hospitality and tobacco. Since 1975, ITC has used the
'WELCOMGROUP' logo, characterized by a 'W' resembling folded hands in
a traditional Indian 'Namaste' gesture. This logo is registered in multiple
classes and countries, prominently associated with their hospitality services.
 Philip Morris Products S.A.: A global tobacco company marketing
Marlboro cigarettes. In India, Philip Morris introduced a 'Flaming Roof'
 logo—a stylized 'M' resembling flames—on Marlboro cigarette packaging.
Issue:
Whether Philip Morris's use of the 'Flaming Roof' logo infringed upon ITC's
'WELCOMGROUP' logo by diluting its distinctive character under Section 29(4)
of the Trade Marks Act, 1999.
Observations:
1. Similarity of Logos: The court observed that while both logos incorporated
a stylized 'W' or 'M', the overall presentation differed significantly. ITC's
logo featured a 'W' symbolizing the 'Namaste' gesture, primarily used in the
hospitality sector. In contrast, Philip Morris's 'Flaming Roof' logo was a
tilted 'M' with a flame design, used exclusively for Marlboro cigarette
packaging.
2. Distinctiveness and Reputation: ITC's 'WELCOMGROUP' logo was
recognized for its association with hospitality services. However, there was
no substantial evidence that this logo extended to or was recognized in
relation to tobacco products.
3. Market Overlap: The court noted a clear distinction between ITC's
hospitality services and Philip Morris's cigarette products. There was no
evidence suggesting that consumers would associate Marlboro cigarettes
with ITC's services or that the use of the 'Flaming Roof' logo would harm
ITC's brand reputation.
Judgment:
The court concluded that ITC failed to establish the necessary criteria for
trademark dilution under Section 29(4) of the Trade Marks Act, 1999. Specifically:
 Lack of Identity or Similarity: The logos were not identical or sufficiently
similar in their overall presentation to cause confusion.
 No Unfair Advantage or Detriment: There was no evidence that Philip
Morris's use of the 'Flaming Roof' logo took unfair advantage of or was
detrimental to the distinctive character or reputation of ITC's
'WELCOMGROUP' logo.
Consequently, the court dismissed ITC's application for an injunction against
Philip Morris, allowing the continued use of the 'Flaming Roof' logo on Marlboro
cigarette packaging.
 N Ranga Rao v. Anil Garg, 2006 (32) PTC 15 (Del)

Facts:
 Plaintiff: N. Ranga Rao & Sons, a partnership firm under the Rangsons
Group, engaged in manufacturing and selling incense sticks under the
trademark 'LIA'.
 Defendants: Anil Garg and associated entities, producing and marketing
incense sticks under the trademark 'DIA'.
 The plaintiff alleged that the defendants' 'DIA' products bore a striking
resemblance to their 'LIA' products in terms of:
o Color Scheme: Both products featured a pink base softening to white
towards the center of the box.
o Typography: The trademarks 'LIA' and 'DIA' were presented in
similar fonts, underlined by a curved line.
o Packaging Design: The overall layout, including the use of vernacular
scripts (Devanagari, Tamil, Kannada, and Telugu) at almost identical
positions, was notably similar.
 The plaintiff contended that such similarities were not coincidental but a
deliberate attempt by the defendants to deceive consumers and capitalize on
the plaintiff's established reputation.
Issues:
1. Whether the defendants' trademark 'DIA' and its associated trade dress were
deceptively similar to the plaintiff's 'LIA' trademark and trade dress.
2. Whether the defendants adopted the 'DIA' trademark and trade dress in good
faith, entitling them to the benefit of honest and concurrent use.
Observations:
 Trademark Analysis: The court observed that the defendants' primary mark
was 'DIA', not 'Lotus Dia' as claimed. This conclusion was based on:
o The word 'Lotus' appeared as a prefix in a smaller, less prominent
font.
o The defendants had applied for registration of the 'DIA' mark alone.
 Similarity Assessment: A detailed comparison revealed:
o Visual and Phonetic Similarity: Both marks consisted of three letters,
differing only by the first letter, leading to potential consumer
confusion.
o Trade Dress: The color schemes, font styles, packaging layouts, and
overall get-up of both products were nearly identical, enhancing the
 likelihood of deception among consumers.
 Intent of Defendants: The court inferred that the defendants intentionally
designed their products to mimic the plaintiff's, aiming to ride on the
goodwill and reputation of the 'LIA' brand.

Judgment:
 Deceptive Similarity: The court held that the defendants' 'DIA' trademark
and trade dress were deceptively similar to the plaintiff's 'LIA' trademark
and trade dress.
 Lack of Honest Adoption: Given the evident imitation, the defendants could
not claim the defense of honest and concurrent use.
 Relief Granted: The court issued a permanent injunction restraining the
defendants from using the 'DIA' trademark and any packaging or trade dress
similar to that of the plaintiff's 'LIA' products.
This case underscores the importance of protecting trade dress and ensuring that
businesses do not engage in practices that could mislead consumers or unfairly
exploit the reputation of established brands.

Pepsi Co Inc v. Hindustan Coca Cola Ltd.,

2003 (27) PTC 305 (Del) (DB)

Facts (In Brief):

1. Parties Involved:
o Plaintiff: Pepsi Co., Inc. and its associates, the owners of trademarks
"PEPSI", "PEPSI COLA", and the Globe Device.
o Defendant: Hindustan Coca-Cola Ltd., which markets "Thums Up".
2. Advertisement Controversy:
o Coca-Cola aired a television commercial featuring a young boy at a
roadside stall.
o When asked which cola he prefers, the boy appears to say “Pepsi”
based on lip movements, though the audio is muted.
o He is given two unmarked bottles to taste. He describes one as
“sweet” and fit for children, while the other is “strong” and meant
for adults.
o The sweeter drink is revealed to be "PAPPI", a name resembling
 "PEPSI", implying Thums Up is the superior choice.
o The phrase “Wrong choice, baby” was used, playing on Pepsi’s
tagline "Yeh Dil Maange More", modifying it to "Yeh Dil Maange
No More".
o Coca-Cola’s commercial also featured a roller-coaster theme, similar
to Pepsi’s previous advertisement.
3. Plaintiff’s Claims:
o Trademark Infringement: Use of "PAPPI" and a similar globe
design allegedly resembled Pepsi’s brand.
o Copyright Violation: The roller-coaster theme in Coca-Cola’s ad
was allegedly copied from Pepsi’s advertisement.
o Product Disparagement: The ad implied Pepsi was a childish,
inferior drink, while Thums Up was for adults.

Issues:
1. Does the use of "PAPPI" and the similar globe design amount to
trademark infringement?
2. Does the roller-coaster theme in Coca-Cola’s commercial infringe upon
Pepsi’s copyright?
3. Does the ad’s portrayal of Pepsi as a "sweet" drink for children amount
to product disparagement?

Observations of the Court:

1. Trademark Infringement:
 The term "PAPPI" was similar to "PEPSI" both phonetically and visually.
 However, the court noted that "PAPPI" was not a real product in the
market but only used for comparative purposes in the ad.
 Under Indian trademark law, comparative advertising is permitted as long
as it does not cause confusion or deception.
 Since "PAPPI" was a fictitious name and not actually sold, it did not
amount to trademark infringement.
2. Copyright Violation:
 The court applied the test from R.G. Anand v. Deluxe Films (1978), which
states that an ordinary person must see the allegedly copied work as
substantially similar to the original.
 Pepsi had previously used a roller-coaster theme in its advertisement.
 The roller-coaster sequence in Coca-Cola’s ad was substantially similar
to Pepsi’s version, with only minor variations.
 The court concluded that the respondent's roller-coaster commercial was
nothing but a literal imitation of the copyright work of the appellant,
 with some variation here and there.
 Thus, Coca-Cola’s advertisement was found to have copied the concept
and violated copyright law.
3. Product Disparagement (Comparative Advertising and Tarnishment):
 Comparative advertising is legal, but misleading or disparaging
comparisons are not allowed.
 The phrase “Wrong choice, baby” was a mockery of Pepsi’s "Yeh Dil
Maange More" slogan.
 By portraying Pepsi as a child’s drink and Thums Up as a stronger, adult
drink, the ad unfairly misled consumers.
 The court held that the commercial’s intent was to demean Pepsi’s brand
and went beyond acceptable comparative advertising.

Judgment (In Detail):

 The court issued an injunction restraining Hindustan Coca-Cola from
airing the advertisement.
 Key Findings:
o Trademark Infringement: Not proven, as "PAPPI" was only used
in an advertisement and not in trade.
o Copyright Violation: Proven, as the roller-coaster theme was a
direct imitation with minor changes.
o Product Disparagement: Proven, as the ad mocked Pepsi’s tagline
and brand identity.

 The court ruled that while comparative advertising is allowed, it must not
be misleading or tarnish a competitor’s product.

Conclusion:
 This case set a legal precedent on the limits of comparative advertising
in India.
 Businesses can compare products but cannot unfairly demean or
mislead about a competitor’s brand.
 Using deceptive similarities (like “PAPPI” for Pepsi) in advertising is
legally risky.
 The case also reaffirmed copyright protection for unique advertising
themes.
 Dabur India Ltd. v. Colgate Palmolive (India) Ltd.
2004 (29) PTC 401 (Del)

Facts (In Brief):

1. Parties Involved:
o Plaintiff: Dabur India Ltd., a leading manufacturer of Ayurvedic and
herbal products.
o Defendant: Colgate Palmolive (India) Ltd., a well-known company in
oral care products.
2. Dispute Over Advertisement:
o Colgate Palmolive aired a TV commercial promoting its Colgate
Dental Cream and Colgate Tooth Powder.
o The advertisement compared tooth powders unfavorably to
Colgate’s toothpaste and tooth powder, showing tooth powders as
ineffective.
o Dabur’s product, Lal Dant Manjan, was not named directly, but as
one of India's leading tooth powder brands, it was indirectly
affected.
3. Plaintiff’s Claims:
o The advertisement was misleading, implying all tooth powders
were ineffective.
o It amounted to product disparagement and unfair trade practices.
o The visual representation of tooth powders caused harm to
Dabur’s brand reputation.

Issues Before the Court:

1. Whether Colgate’s advertisement amounted to product disparagement
under trademark law?
2. Whether the comparative advertising in the commercial was
misleading?
3. Whether Dabur was entitled to an injunction against the telecast of the
TV commercial?

Observations of the Court:

1. Product Disparagement and Misrepresentation:
 The advertisement did not name Dabur directly but portrayed tooth
powders negatively.
  Since Dabur was one of the most prominent manufacturers of tooth
powder, the commercial indirectly harmed its business.
 Colgate failed to provide sufficient scientific evidence to support its
claims that all tooth powders were ineffective.
2. Legality of Comparative Advertising:
 Comparative advertising is permissible if:
o It is truthful and verifiable.
o It does not mislead consumers.
o It does not unfairly disparage a competitor's product.
 The advertisement in question exceeded permissible limits by implying
all tooth powders were inferior, without a direct basis for comparison.
3. Impact on Dabur’s Business:
 The court acknowledged that Dabur’s tooth powder was widely
recognized.
 The commercial misled consumers and damaged Dabur’s goodwill,
affecting its sales.
 The false impression created by the ad violated fair advertising
standards.

Judgment (In Detail):

1. Injunction Against Colgate:
o The plaintiff is entitled to an injunction, and accordingly, the
defendants (Colgate) are restrained from telecasting the TV
commercial "Colgate Tooth Powder."
o The court ruled that Colgate’s advertisement was misleading and
amounted to product disparagement.
2. Key Findings of the Court:
o Colgate's advertisement crossed the limits of fair comparative
advertising.
o Product disparagement was established, as the ad indirectly
tarnished Dabur’s reputation.
o Misrepresentation of facts and misleading claims resulted in unfair
trade practice.
 Case Analysis: Bharat Glass Tube Limited v. Gopal Glass
Works Limited, 2008 (37) PTC 1 (SC)
1. Facts of the Case:
 Gopal Glass Works Ltd. (Respondent):
o Engaged in manufacturing figured and wired glass since 1981.
o Registered a design for diamond-shaped patterns on glass sheets under
the Designs Act, 2000.
o The design was developed using engraved rollers manufactured by
Dornbusch Gravuren GMBH, a German company.
 Bharat Glass Tube Ltd. (Appellant):
o Started imitating the registered design of Gopal Glass Works Ltd. by
producing glass sheets with a similar diamond pattern.
o Gopal Glass Works Ltd. filed a suit against the appellant for design
infringement in the District Court of Mehsana, Gujarat, obtaining
an interim injunction against the appellant.
o In response, Bharat Glass Tube Ltd. filed a cancellation petition
under Section 19 of the Designs Act, 2000, claiming that the design
was not original and had been published before registration.

2. Issues Before the Court:

1. Whether the registered design of Gopal Glass Works Ltd. was "new" or
"original" under Section 4 of the Designs Act, 2000?
2. Whether the design had been previously published or used in India or
elsewhere, making it ineligible for registration?
3. Whether the design registration should be canceled under Section 19 of
the Designs Act, 2000?
4. Whether the appellant had committed piracy of the respondent’s
registered design under Section 22 of the Designs Act, 2000?

3. Observations of the Court:

 Burden of Proof:
o The Supreme Court held that in cancellation proceedings, the
burden of proof lies on the party challenging the design
registration (Bharat Glass Tube Ltd.).
o The appellant had to prove that the design was not original or had
been previously published.
 Prior Publication & Novelty:
o The appellant argued that the diamond-patterned design was
 already available in a German catalogue and existed on engraved
rollers before the respondent’s registration.
o The Court rejected this argument, stating that mere existence of a
design on rollers does not amount to prior publication unless it
was applied to the final product (glass sheets) and made publicly
available.
o Since no evidence was provided that such glass sheets were sold or
publicly available before registration, the design was considered
new and original under Section 4 of the Designs Act, 2000.
 Application of Design to Article:
o The Court emphasized that a design must be assessed in relation to
the final product to which it is applied.
o Even if the pattern existed on rollers, applying it to glass sheets in a
new and original manner made it eligible for protection.
 Piracy of Design:
o Since the design registration was valid, the appellant’s act of
imitating and producing glass sheets with the same design
constituted piracy under Section 22 of the Designs Act, 2000.

4. Judgment:
 The Supreme Court dismissed Bharat Glass Tube Ltd.'s appeal,
upholding Gopal Glass Works Ltd.'s design registration.
 The cancellation petition under Section 19 was rejected because the
appellant failed to prove prior publication or lack of originality.
 The Court held that the appellant had infringed the respondent’s
registered design and was liable for piracy under Section 22.

Reckitt Benckiser(India) Ltd v. Wyeth Limited,

2010 (44) PTC 589 (Del (DB))

Facts:
Reckitt Benckiser (India) Ltd. (Reckitt) registered a design (Design No. 193988,
dated December 5, 2003) in India under Class 99-00 for an S-shaped spatula used
with its "Veet" hair removal cream. Reckitt claimed that Wyeth Limited (Wyeth)
infringed this design by producing and selling a similar spatula. Wyeth countered
that Reckitt’s design lacked originality, asserting it had been registered, published,
and used abroad prior to its Indian registration, thus rendering it ineligible for
protection under the Designs Act, 2000. Reckitt sought an injunction against
Wyeth, which was denied by a Single Judge of the Delhi High Court. Reckitt then
appealed to the Division Bench (FAO(OS) No. 458/2009).
Issue:
1. Does prior registration and publication of a design abroad constitute "prior
publication" under the Designs Act, 2000, sufficient to cancel or challenge
the validity of a subsequent Indian registration?
2. Was Reckitt entitled to an injunction against Wyeth based on its registered
design, considering Wyeth’s defense of prior publication abroad?
Observation:
The Division Bench, comprising Justices Sanjay Kishen Kaul and Valmiki J.
Mehta, observed:
 Under Section 19(1)(b) of the Designs Act, 2000, a registered design can be
canceled if it was published in India or any other country prior to its
registration date in India.
 The Single Judge had correctly noted that Reckitt’s design was similar to
designs registered and published abroad before its Indian registration, and
such prior publication placed it in the public domain.
 The court examined Section 44 of the Act, which provides for reciprocity
with convention countries and allows a six-month window to register a
design in India after filing abroad while retaining the foreign priority date.
However, if no Indian application is filed within this period and the design
becomes publicly available, it loses novelty under Section 4(b).
 The court distinguished cases like Gopal Glass Works and Dabur India Ltd.,
noting they did not fully address the interplay between Sections 4, 19, and
44, particularly regarding designs not kept secret post-registration abroad.
 Wyeth’s spatula design was not deemed a fraudulent or obvious imitation of
Reckitt’s design prima facie.
Judgement:
The Division Bench upheld the Single Judge’s decision on October 8, 2010,
dismissing Reckitt’s appeal. It ruled that:
 Prior registration and publication abroad (where the design was not kept
secret) amounted to prior publication, invalidating Reckitt’s claim to novelty
under the Designs Act.
 This prior publication was a valid defense for Wyeth against Reckitt’s
infringement claim, disentitling Reckitt to an injunction.
 The court clarified that a design remains "new" only if registered in India
within six months of a foreign application under Section 44, and if it enters
the public domain abroad before Indian registration outside this window, it
cannot claim protection.
Thus, Reckitt’s plea for an injunction was rejected, affirming that prior foreign
publication negated the exclusivity of its Indian design registration.