H.K. Acharya & Company - Advocates, Patent and Trade Marks Attorneys

H.K. Acharya & Company - Advocates, Patent and Trade Marks Attorneys

NEWSLETTER

Trademark Newsletter in August

• HIGH COURT OF DELHI HELD THAT DELAY DOES NOT AFFECT THE RIGHT OF THE PLAINTIFF IN A CASE OF INFRINGEMENT OF TRADE MARK.

• DIVISION BENCH OF CALCUTTA HELD THAT NON-USE OF MARK MEANT TO RECTIFY FROM THE TRADEMARK REGISTER.

• TRADEMARK REGISTRY KOLKATA PROTECTS THE WELL-KNOWN MARK “PEPSI”.

HIGH COURT OF DELHI HELD THAT DELAY DOES NOT AFFECT THE RIGHT OF THE PLAINTIFF IN A CASE OF INFRINGEMENT OF TRADE MARK

The plaintiffs are using their registered mark “ZEVIT” in respect of pharmaceuticals and veterinary and sanitary preparation. The defendant is using the word “EVIT” for its preparation being vitamin-E.

The last three letters “VIT” is a well-known common abbreviation used in the pharmaceutical trade to denote Vitamin preparation. Comparing the marks “ZEVIT” and “EVIT “, found that the prefixes “ZE” and “E” are quite similar. The suffix “VIT” is common to both the marks and is indeed, identical. The marks are taken as a whole, therefore, include identical suffixes and quite similar prefixes; therefore inescapable conclusion is that the mark “EVIT” is deceptively similar to the registered trade mark “ZEVIT” of which the plaintiff is proprietor.

The defendants have raised plea of delay, the court has not much concerned with such a plea inasmuch as the present action is more of one of consideration as delay and acquiescence have relevance.

DIVISION BENCH OF CALCUTTA HELD THAT NON-USE OF MARK TO RECTIFY FROM THE TRADEMARK REGISTER

Kabushiki Kaisha Toshiba (Toshiba Corporation) V/s Toshiba Appliances Co. & Ors

It is admitted in the above stated case that the registered user never used the trademark. When the registered proprietor obtains particular trademark in respect of certain goods but the registered proprietor does not deal in those goods at all, the obvious purpose is to prevent others dealing with the goods. Therefore, it does not become bonafide use of the registered trademark. Here the appellant committed the impropriety of blocking the register, which is facet of trafficking the trademark. If the person who applies for the rectification is engaged in the same trade and who in development of his trade may find it necessary to use registered words alone or in conjunction with some other words, if those words had not been on the register, then that person is also a person aggrieved as the mark which is on the registered prevents him from using the words in way which he likes. Whenever it is shown that the applicant for rectification is in the same trade as the person who has registered a trade mark and if such trade mark remains on the register it might limit the legal rights of the applicant to do something which, for the existence of the mark upon the register, he cannot lawfully do, it appears that the person has a locus standi to be heard as a person aggrieved.

TRADEMARK REGISTRY KOLKATA PROTECTS THE WELL-KNOWN MARK PEPSI

Application for registration of trademark PEPSI in respect of hosiery and readymade garments in class 25 and same trademark “PEPSI” has been registered in the name of opponent Pepsico Inc. in class 32 and several other applications is pending for registration in different classes. The Ld. Registrar of Trademark held in decision that “It is correct that the applicant has not given any plausible explanation as to how and why he has adopted the impugned mark. It is also correct that the opponents’ registered trade mark ’PEPSI’ enjoys huge reputation and goodwill not only in India but also internationally as is evidence filed in this proceeding. It is also correct that the rival goods are meant for common class of customers and are being used by the common customers and are being used by a common man. Therefore the applicant fails to give explanation for adopting a mark ’PEPSI’ and failed to produce documentary evidence in support of use of the mark opposition allowed and application is abandoned.

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