1. Recently on 12th November, 2018, Justice Pratibha M.

Singh of Delhi HC passed

landmark judgments in case Skullcandy Inc. v. Shri Shyam telecom & Ors. And L’Oreal
v. Brandworld & Ors1, against sale of counterfeit goods online.
The brief facts of the case are the suits were filed before the Hon’ble Delhi High Court by
Skullcandy and L’Oreal for sale of counterfeit products on the website www.shopclues.com by
numerous sellers. The Hon’ble court granted Ex-Parte Ad-Interim Injunction orders in both the
suit in 2014 restraining the website www.shopclues.com and other sellers from conducting any
sale of counterfeit goods. The Hon’ble court after considering the facts and circumstances and
after lengthy arguments delivered the final judgment on 12th November, 2018.
Shopclues is a known violator of Trademark Right Holders
Shopclues in the present matters claimed the benefit of being an intermediary under Section 79
of Information Technology Act, 2000 wherein it stated that the website www.shopclues.com is
simply a platform for sellers to conduct sale of goods therein and has no role in conducting sale.
However, the plaintiff successfully proved before the court that the involvement of Shopclues is
not restricted to only providing a platform but active involvement was evident. The court took
away the benefit of being an intermediary and termed Shopclues involvement to be that of a
primary violator on the following considerations:
a) The websites guarantee that “all the product are 100% genuine” (which they are not actually)

b) Shopclues is a repeat offender and numerous complaints have been made against it.

c) Despite several infringement action, no precautionary steps taken by Shopclues.

d) On the website there is a separate category for “replicas” on which on the face of it, it denotes
the product to be lookalike or a copy of the original.

e) The replica page encourages sellers to sell counterfeit goods constituting to be an act of aiding
and abetting of violation of Intellectual property.

The court repetitively referred to the finding made in the case of Christain Louboutin SAS v.
Nakul Baja & Ors. dated 2nd November, 2018 which was recently passed by the Hon’ble judge
Pratibha M. Singh itself wherein the court delved into defining and discussing in detail Section
79 of Information Technology Act, 2000 and laying down a ground breaking judgment against
websites conducting sale of counterfeits online and claiming protection of being an intermediary.
1
IN THE HIGH COURT OF DELHI AT NEW DELHI, Reserved on : 24th July, 2018 Date of decision :12th
November, 2018 CS(COMM) 979/2016 & I.A. 24578/2014
 Court Directions
The Hon’ble court took a strict stand against the impugned activity of the
website www.shopclues.com directing them to disclose all details of all the sellers to the
Plaintiff. The court on a positive note, directed Shopclues, to obtain a certificate from the sellers
that the goods sold are genuine and whenever a product is provided to be listed on the website,
the plaintiff be notified about the same and be listed on the website only on the plaintiff’s
concurrence. The court further directed to take down the “replica” widow from its website all
together.
2. Recently, in the case of TM No. 13592/2016 Lacoste S.A vs. Puneet Kumar & Anr., the
Hon’ble Judge Ms. Twinkle Wadhwa of Patiala House District Court, New Delhi passed a
judgment granting permanent injunction against two infringers selling counterfeit LACOSTE
trademarked goods and granted damages to LACOSTE on account of loss to goodwill and
reputation suffered from sale of fakes.

Facts
Lacoste filed the suit before the Patiala House District Court, New Delhi in order to restrain the
trademark infringing and counterfeiting activity being pursued by the Defendants.

The Hon’ble court accepted the suit filed by Lacoste and directed for the appointment of the
Local Commissioner in order to carry out the Search and Seizure Action on the Defendant’s
premises at which they are conducting sale of counterfeit goods of the Plaintiff. The court
adjudicated the matter on the major issues as to:

 Whether the Plaintiff is entitled for decree of permanent injunction?

 Whether the Plaintiff is entitled for decree of delivery up of counterfeit goods seized?

 Whether the Plaintiff is entitled to rendition of accounts and damages for sale of counterfeit
goods?

Final Judgment
There were two defendants in the present matter who were engaged in sale of counterfeits under
the plaintiff’s trademark LACOSTE. One Defendant (Puneet Kumar) tendered an undertaking
before the court and suffered permanent injunction on compromise basis. In regards to Defendant
No. 2, The Hon’ble Court after considering the LC report and uncontroverted testimony of
Lacoste and the fact that there was non-appearance of Defendant No. 2, held that Lacoste is
entitled to permanent injunction restraining defendants from sale of counterfeit LACOSTE
products. The court further injuncted the Defendants from dealing or disposing of the counterfeit
goods and decreed for delivery up of impugned goods.

Damages Awarded
Hon’ble Court took a strict note of the illegal activity of the Defendant No. 2 and awarded
Lacoste with Rs. 1 lakh damages.

RELATED TO TRADEMARKS

3. Kokanratna Holiday Resorts v. Millennium & Capthorne International Limited 2

FACTS

The Plaintiff is a hotel based in Maharashtra, while the Defendant is a multinational hospitality
company, although, it does not have a hotel in India yet. The Plaintiff approached the court under
Section 142 of the Trade Mark Act, 1999, which prohibits groundless threats of legal
proceedings against holders of registered trademarks. The Plaintiff’s claim was that, the
Defendant, through a series of letters threatened to sue the Plaintiff for using the trademark
‘Hotel Millennium Park’.

The Plaintiff, on a prima facie examination, were found to be using this trademark continuously
since 2001, and were concerned that the Defendant could initiate legal proceedings against it
anywhere within India, since the trademark was also used in the domain name of its website. It is
to prevent this from happening that the Plaintiff approached the Bombay High Court.
JUDGMENT

 In ruling for the Plaintiff, the Court found the prima facie finding pertaining to the validity of
the Plaintiff’s trademark, along with the series of letters threatening legal action from the

2 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN

ITS COMMERCIAL DIVISION NMCD (L) NO.2611 OF 2018 IN COMIP (L) NO: 1474 OF 2018
 Defendant to be sufficient. In the order, Justice Kathwala also remarked that providing this
relief to the Plaintiff would not cause much harm to the Defendant. Given that
communication has been ongoing between the parties have been going on for 6 years, it
would be fair to presume that depriving the Defendant the speedy relief of an ex parte order
would not cause any harm.
 Section 142 expressly states that in cases where there is a groundless threat, the plaintiff can
obtain a declaration stating that the threats are unjustified, an injunction against further
threats, and recover any damages sustained due to these threats. These remedies seem to be
listed in an exhaustive manner, suggesting that the provision does not warrant any additional
remedy.
 However, in the present case, an order which effectively bars the Defendant from
initiating ex parte proceedings in any situation has been passed. This is clearly outside the
ambit of Section 142. It is also inconsistent with existing jurisprudence on the provision,
which has consistently refused to pass an order that prohibits the Defendant from initiating
legal proceedings of passing off, despite finding their threats to be groundless.

This order, therefore, clearly strikes a discordant note with existing jurisprudence, which firmly
refrains from granting reliefs that prohibit the Defendant from pursuing legal remedies through
means other than infringement suits.

The matter is still sub-judice, but it would be interesting to see if this particular order is
challenged by the Defendant.

4. Glenmark Pharmaceuticals Ltd. v. Curetech Skincare and Anr3

RATIO
Mr. Justice Kathawalla of the Bombay High Court imposed costs of 1.5 crores against the
defendant found to be ‘habitually’ committing trademark infringement of pharmaceutical
products. The decision is significant for the quantum of damages awarded and the reasoning (or
lack thereof) behind the award of exemplary costs.

3
IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN
ITS COMMERCIAL DIVISION NOTICE OF MOTION (L) NO. 1890 OF 2018 IN COMIP (L) NO. 1063 OF 2018
Brief Background
The dispute concerns Mumbai-based generics manufacturer Glenmark, and its product Candid –
B (an anti-fungal cream). The principal defendant is Galpha Laboratories is the proprietor of a
similar drug, selling under the trade name Clodid – B. The two products have similar packaging
and trade dress, as made out from the images in the judgment. Having been nabbed for what
appears to be obvious infringement, the defendant claimed that the mark was adopted by
mistake, and chose not to contest the suit.

Judgement and Order as to Costs

Given that the suit was not contested, the defendants submitted to the imposition of costs and
prayers preferred by the plaintiff. The manner and rationale for the imposition of costs is
important to examine. Further, the Court also examined the defendant’s history of producing
sub-standard drugs, which had been pointed out both by the Central Drugs Standard Control
Organisation as well as the Maharashtra Office of the Drug Control Administration.
Chastising the defendant for its practices, the Court held that it was a fit case for imposing
exemplary costs, despite the fact that the matter was being finally settled in terms of the
plaintiff’s prayers, and imposed costs of 1.5 Crores (which the plaintiff generously agreed to be
deposited into the CM’s Kerala Flood Relief Fund).

 As far as I am aware, this is the largest order of such exemplary costs in a trademark
infringement case, and is particularly interesting given the compromise reached between
the parties.
 However, the Court’s order is also notable for its examination of the public interest in
preventing such undesirable practices in the pharmaceutical sector in India, which is
notorious for rampant trademark malpractice, leading to significant public health concerns
due to spurious drugs, something that has been repeatedly stressed by courts when
assessing pharma trademark cases.
 On that note, I end with this grave observation by Mr. Justice Kathawalla –
“Drugs are not sweets. Pharmaceutical companies which provide medicines for health of the
consumers have a special duty of care towards them. These companies, in fact, have a greater
responsibility towards the general public. However, nowadays, the corporate and financial goals
of such companies cloud the decision of its executives whose decisions are incentivized by
profits, more often than not, at the cost of public health. This case is a perfect example of just
that.”

5. Ansari Bilal Ahmadlal Mohd vs Shafeeque Ahmed Mohammad Sayeed (Bom HC)4

RATIO:
This judgment helps to us to have a quick revision of settled legal principles vis-a-vis interim
relief in trademark infringement suits. Firstly, in case of interim reliefs, the extent of interference
by Appellate forums in the discretion exercised by trial courts is limited. Secondly, in judging
confusion, the test to be applied is that of a person of average intelligence and imperfect
recollection.
FACTS:
 The Plaintiff-Respondent filed a trademark infringement suit concerning “SUKOON
OIL” [bearing registration nos.1421905 (class 03) and 1377947 (class 05)] and
“NAGEENA” (registration No.1838403 in class 03)]. As per the Plaintiff, in the year
1993, his father independently created distinctive labels viz., “SUKOON OIL” and
“NAGEENA SUKOON OIL”.
 The business was carried out under M/s. Nageena Ayurvedic Pharmacy. The Plaintiff
applied for the aforesaid registrations in 1994 and 2005. The Plaintiff had also applied for
word mark “SUKOON” separately in class 05 and the said application is pending
registration.
In 2016, the Plaintiff- Respondent came to realize that a product under the mark “SUKOON”
was sold by the Defendant – Appellant. The Defendant was engaged in the business of
manufacturing, marketing and selling Ayurvedic/Unani medicine under the Trade Mark
“SUKOON” and using the deceptively similar label bearing the word “HEENA”, allegedly
written and depicted like “NAGEENA”, the plaintiff’s label. The Appellant-defendant inter alia
argued that the calligraphy used by Defendant-Appellant is different from that of the Plaintiff.

4
IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL APPEAL NO. 94 OF 2017 IN NOTICE OF MOTION (L) NO. 2311 OF 2016 IN SUIT (L) NO.
810 OF 2016
Accepting the contentions of Plaintiff-Defendant including pertaining to the statement of year-
wise purchases and sales from the year 2002-2003 to 2014-2015, the Single Judge granted
interim relief. An appeal was filed against this Single Bench Order.

Conclusion
The Division bench clarified that the test to be applied is of “a person of average intelligence and
imperfect recollection. The device, label mark has to be seen in its entirety and after taking into
consideration the facts of the case, a decision has to be arrived at as to whether the mark of the
defendant is deceptively similar to the plaintiff’s one.”

The Division Bench concluded that a strong prima-facie case of passing off has been made out
by the Plaintiff. Further, the Division Bench did not notice any arbitrariness in the Single Bench
Order. As Appellant-defendant has not made out a case for interference, appeal was dismissed.

6. Bigtree Entertainment v. Brain Seed Sportainment5

FACTS

The Plaintiff operates a popular online ticketing platform known as bookmyshow. It has also
secured registration in BOOKMYSHOW word marks and logos under classes 41 (education,
entertainment and training) and 42 (technology and software services). While it has applied for
the registration of the mark BOOKMY, it does not separately possess any trademark over that
term.

The Defendant operates www.bookmysports.com, an online platform used for booking sporting
venues and other sporting facilities. The suit was filed claiming infringement and passing off of
the Plaintiff’s mark by the Defendant and asking for a permanent injunction restraining the same.
The Plaintiff contended that the Defendant’s mark is deceptively similar to its own, and that the
Defendant was liable to mislead consumers into associating itself with the Plaintiff’s goodwill
and publicity. In particular, the Plaintiff claimed that the interplay of the words book, my and
show made BOOKMYSHOW a distinctive trademark. Further, with reference to the words

5
IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 1st November, 2017 and Decided on: 13th
December, 2017 CS(COMM) 327/2016
BOOKMY, the Plaintiff argued that the goodwill in its mark carried over to a part of the mark,
and thus that part of the mark had acquired a secondary meaning, meriting protection.

Firstly, the Court held that the existence of domain names using the prefix BOOKMY, both prior
and subsequent to the Plaintiff’s mark, indicated that the prefix was descriptive.

Secondly, the Court held that the words BOOKMY was not an arbitrary coupling of words, but
rather a phase describing the particular activity that the Plaintiff and others were engaged in. The
Court stated, of the prefix, that ‘it is instead an apt description of a business that is involved in
the booking of a particular thing for its consumers, whether it is a concert, a movie, or a sports
facility.’
Thirdly, the Court held that, because the Defendant had led evidence suggesting that the prefix
BOOKMY was in use by other companies, and the Plaintiffs had not led evidence to show that
BOOKMY is only associated to the Plaintiff’s trademark, the Plaintiff was unable to prove that
the prefix had obtained distinctiveness or a secondary meaning, in order to accord it protection.

Accordingly, the Court dismissed the application for injunction.

CONCLUSION

Finally, even presuming that BOOKMY should be examined for distinctiveness alone, it is
unclear what level of proof the Plaintiff would be required to furnish to show distinctiveness or
secondary meaning on its part. In this case, the Plaintiff provided evidence to show the
popularity of its website, including news reports, awards as well as sales figures. However, this
was not sufficient to overturn the Court’s presumption of non-distinctiveness based on alternate
uses of the term.

GEOGRAPHICAL INDIACTIONS

1. Shahi Litchi from Bihar has received Geographical Indication (GI) tag from Chennai based
Geographical Indication Registry and Intellectual Property India. The GI registration was
done in name of Muzaffarpur-based Litchi Growers Association of Bihar, which had
applied for the tag. Shahi Litchi which famous for its sweet, juicy, unique flavour and
aroma is mostly grown in Muzaffarpur and adjoining areas of East Champaran, Vaishali,
 Samastipur and Begusara districts of state. Bihar produces 40% of the litchis grown in
India on 38% of the area.

Significance

The GI tag for Shahi Litchi will improve demand for fruit and reduce fear of fake and poor
quality litchis. It will also help and benefit thousands of litchi growers who will gain access to
more markets and get better price for their produce in the country and abroad.

Shahi Litchi is fourth agricultural product from Bihar after Katrani rice, Jardalu mango and
Magahi paan (betel vine), to get GI tag. In addition to four GI tags in agricultural field, some art
form from Bihar such as Madhubani painting, applique – Khatwa patch work, Sikki grass work,
Sujini embroidery work and Bhagalpur silk have also been accorded GI tag under handicraft
category.

2. Kadaknath Chicken

Chennai based Geographicals Indication Registry and Intellectual Property India has awarded
Geographical Indication (GI) Tag to Madhya Pradesh’s Kadaknath chicken. The GI tag will
ensure that no one else can use name Kadaknath Chicken while selling any other black chicken.
It will also translate into higher prices for producers.

Kadaknath chicken breed is unique for its black colour due to its black-feathers. Its black colour
stems from the deposition of melanin pigment. This breed of chicken is popular for its
adaptability and flavourful good-tasting black meat, which is believed to have medicinal
properties. It is native tribal districts of Jhabua, Alirajpur and parts of Dhar in Madhya Pradesh.

Kadaknath chicken contains 25-27% of protein in comparison with other breeds of chickens that
contain 18% protein. It is also known for its high iron content. It has fat and cholesterol content
lower compared with other chicken breeds. Due to this special characterstics, Kadaknath
chicken’s chicks and eggs are sold at much higher rate than other varieties of chicken. This
chicken breed is very popular among local tribal people mainly due to its adaptability to the local
environment, disease resistance, meat quality, texture and flavour.

Background
Recently, Kadaknath chicken had virtually became bone of contention between Madhya Pradesh
and Chhattisgarh with both the States staking claim over its nativity for GI tag. Both States had
filed applications with the Geographical Indication Registry office in Chennai for the ‘GI tag’ for
this black--winged chicken variety.

3. On March 28, 2018, State of Bihar earned 3 exclusive Geographical Indication Tag for
agricultural products namely, Katarni Rice, Zardalu Mango and Magahi Paan.

1) Katarni Rice

The tag of Katarni Rice was given by the Geographical Indications Registry, Chennai vide
registration no. 553 on March 28, 2018. Katarni Rice is the most prevalent, ceremonial and finest
quality scented rice of Bihar, India. The word "Katami" literally means an awl with a hook at the
end for sewing. Awl is a pointed tool for making holes in wood or leather. The name Katami has
been derived due to the shape of the apex of paddy which is similar to the tip of awl. It is famous
for its aromatic flavour, palatability and chura (beaten rice) making qualities.

Geographical area of production of Katarni Rice as defined by the Department of Agriculture is

comprised of south alluvial Gangetic plane of Munger, Banka and South Bhagalpur.

2) Zardalu Mango

On March 28, 2018, State of Bihar was given Geographical Indication Tag for Zardalu Mango
vide registration no. 551 by the Geographical Registry, Chennai. Bhagalpuri Zardalu mango is a
unique variety of mango grown in Bhagarpur and adjoining districts of Bihar. It is a creamy
yellow coloured fruit which possesses exceptional fruit quality and an enticing aroma. It is
believed that Bhagalpuri Zardalu mango was first cultivated in this region by Maharaja Rahmat
Ali Khan Bahadur of Khadakpur.

3) Magahi Paan

The State of Bihar earned another Geographical Indication Tag for Magahi Paan vide registration
no. 554 on March 28, 2018. Magahi paan is a leading cultivar of Bihar origin, specially grown in
the Magadh regions of four districts-Aurangabad, Gaya, Nawada and Nalanda. Magahi paan
growing in these areas are of excellent quality and it is an expensive among other betel leaf. Its
betel quid is pungent, less fibrous, and easily soluble inside mouth. It is known for appearance,
shiny dark green colour, typical taste, and excellent keeping quality.
 FROM APRIL 2018 – MARCH 2019

Geographical Indications Goods (As per Sec 2 (f) of GI Act State

1999 )

Jhabua Kadaknath Black Chicken Food Stuff Madhya Pradesh

Meat

Boka Chaul Agricultural Assam

Alphonso Agricultural Maharashtra

RajKot Patola Handicraft Gujarat

Shahi Litchi of Bihar Agricultural Bihar