SCHOOL OF LAW
Session:2023-24
Course and Semester: LLB 4rth semester
Assignment/Project
Topic: A study of IPR
Trademark of case
Submitted By: preeti yadav
Roll No.: LLBN1SL22022 Submitted to: Asst. Prof. Ankur Shrotriya
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ACKNOWLEDGEMENT
I would like to thank the faculty of ITM UNIVERSITY GWALIOR (DEPARTMENT OF LAW)
for giving me this opportunity to explore into an area of my interest and their full cooperation
during the different stages of my project.
I would like to thank for Asst. Prof. Ankur Shrotriya guiding me and enriching my project through
her valuable outputs from her reservoirs experience. She was extremely helpful in ensuring that
my project was progressed on the right track.
I would like to acknowledge my wholehearted thanks to all faculty members.
Preeti yadav
Roll no. LLBN1SL22022
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Student declaration
I hereby declare that the work presented in the project in the report entitled “Natural Justice “ in
partial fulfillment of the requirement for degree of "LLB" in itm university gwalior from school
of law, is record of my own work.
Further i declare that this is my original work and the analysis and the findings are for academic
purpose only.
Name:PREETI YADAV
Roll no. LLBN1SL22022
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5 Landmark Cases on Trademark Infringement in India
Abstract:
A trademark is one of the most essential aspects of any brand and to build a brand, you’ll need
something more than just some amount of money. Businesses usually register trademark rights in
India to preserve their brands in the domestic market. There are, however, additional options
available for obtaining worldwide protection, such as the Madrid Protocol and the International
Trademark Association. When many businesses move out into the open market, they run a high
risk of Infringement since even slight lapses in vigilance may cost millions of dollars and ruin a
brand’s image.
The best way for businesses to learn is from landmark rulings in the field which may provide better
insights and solutions to queries. The article thus provides a descriptive analysis to five landmark
cases on trademark infringement in India.
Introduction:
Much like a brand’s seasonal garments and accessories, trademarks are valuable assets. They make
it easier for consumers to quickly identify the source of given goods and services. Instead of
reading the description of a device of Apple, consumers can look for the Apple trademark. Instead
of asking a store clerk who made a certain athletic shoe, consumers can look for particular
identifying symbols, such as a unique pattern of stripes. By making goods easier to identify,
trademarks also give manufacturers an incentive to invest in the quality of their goods. Just
because, if a consumer tries a brand and finds the quality lacking, it will be easy for the consumer
to avoid that particular brand in the future and instead buy another. Trademark law strengthens
these goals by regulating the legitimate use of trademarks.
If a party owns the rights to a particular trademark, it can sue subsequent parties for trademark
infringement. Now you might be wondering what is trademark infringement? In the quest of
making huge benefits without efforts owners of small businesses adopt the established trademarks
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either exactly or in a modified way making it difficult to be differentiable.This kind of exercise by
such small businesses is trademark infringement and the standard that decides it is “likelihood of
confusion”.To get better clarity on how trademark law works, we will further some famous
trademark infringement cases in India.
Analysis with Case Laws:
1.The Coca Cola Company v. Bisleri International Pvt. Ltd.
Who owns exclusive rights to Maaza?
Facts: Bisleri International Pvt. Ltd. (hereinafter referred to as“Defendant”) is company famous
for providing mineral water in India, introduced the drink named Maaza. Lately the defendant
company came into agreement with the plaintiff (The Coca Cola Company) on 12th November
1993, wherein Bislerigave away the formulation rights, IPR, and know-how along with the
goodwill for India for bottling and selling a mango fruit drink – MAAZA to Coca Cola.
Now, the defendant has filed a trademark application in Turkey in 2008 for registering the
word‘MAAZA’ and has begun exporting the same fruit drink under that name. Coca-Cola sought
a permanent injunction and infringement damages for passing off and trademark infringement
against the defender, Bisleri, as they sold the rights to Coca Cola.
Court’s insights: Bisleri was awarded with an interim injunction for using the MAAZA trademark
in India, and putting it up for export, which was clearly an instance of trademark infringement.
2. Yahoo! Inc. v. Akash Arora &Anr
Is Yahoo India similar to Yahoo?
Facts: Yahoo Incorporation (hereinafter referred to as “Plaintiffs”) is the owner of the registered
trademark, Yahoo, as well as the domain name Yahoo.com; both the trademark and the domain
name have developed a distinct identity, goodwill, and reputation. Lately, In the name of ‘Yahoo
India’, Akash Arora (hereafter referred to as “Defendants”) began to offer web-based services that
were almost identical to those supplied by the Plaintiffs. The plaintiffs then filed a permanent
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injunction against the defendant under Order 39 Rules 1 & 2 CPC for using a trademark that was
deceptively similar to its own and passing off its services.
Court’s Insights: According to the court, internet users would be misled and deceived into believing
that both domain names are from the same source. The defendant claimed that it had posted a
disclaimer on its website as a defense. However, it was noted that a simple disclaimer was
insufficient since the nature of the internet is such that the use of a similar domain name cannot be
remedied by a disclaimer, and it makes no difference if ‘yahoo’ is a dictionary term. The plaintiff’s
name has acquired distinction and uniqueness as a result of its association with him.
3. Academy Awards v. GoDaddy
To let individuals who wanted to “park” on these domains and claim a portion of the money to
pass on the earnings. Initially, the Academy submitted to court that GoDaddy sold 57 names that
can be classified as “potentially misleading.”
Courts insights: The ultimate decision favored cyber-squatting. The court was of opinion that
GoDaddy lacked the “necessary bad faith intent to profit” from its domain transactions.
(Better to prevent such cases, just as you cannot expect a third-party to “guard” your registered
trademark, as GoDaddy claimed.)
4. Zara Fashion vs Zara Food
Battle will stand for Food or Fashion?
Facts:ZARA is a name that everyone should be familiar with because it is one of the most well-
known and expensive fashion brands in the world. The matter was first brought to light in 2010
when this Spanish clothing giant discovered a Delhi-based restaurant carrying a similar brand
name. As a result, ZARA fashion filed a lawsuit against the restaurant, which was heard in the
Delhi High Court
Courts Insights: The court ruled in favor of Zara Fashion (Hereinafter referred as ‘plaintiff’), and
ordered the Restaurant to change its name.
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5.Cadila Health Care v. Cadila Pharmaceutical Ltd.
Confused between ‘Falcigo’ and ‘Falcitab’?
Facts: Both the Appellant and the Respondent were pharmaceutical businesses that had taken over
the Cadila Group’s operations after it was restructured under the Companies Act. The right to use
the word Cadila was awarded to both companies. The Appellant Company first created a medicine
to treat cerebral malaria under the brand name ‘Falcigo,’ and was granted license to distribute it
across India by the Drugs Controller of India in 1996. The Respondent was also given license to
commercialize medications for cerebral malaria under the name ‘Falcitab’ in 1997. Both drugs
were schedule L and were to be sold by exclusively by professionals but it is the deceptive
similarity of drugs,which can lead to confusion.
Courts insights: The Apex Court after analyzing the requirements of the Trademarks Act, 1999 and
Section 17-B of the Drugs and Cosmetics Act, 1940 concluded that there was a probability of
passing off and that it was a matter
Conclusion:
Businesses need to understand the importance of trademark and the effects of infringing same. In
this era full of competition establishing brands presence in market is a difficult task. Building and
maintaining a brand value is not possible without having a trademark, it can registered or
unregistered. Trademark protection is of extreme importance given the fact that there are
businesses targeting established trademarks with intent of creating huge profits. The analysis of
the cases discussed above can provide a fair idea about possible disputes and courts opinion on
such disputes similarity
