What exactly is a Trademark?
A trademark serves as a distinctive identifier for goods or services associated with a particular business. It can take various forms, such as a brand name, logo, or slogan. The primary purpose of a trademark is to prevent consumer confusion by ensuring that products or services from different sources are easily distinguishable.
When a business registers a trademark, it receives exclusive rights to use that mark in connection with specific goods and services. This helps protect the brands identity and reputation. Trademarks are valuable assets, and their protection is enforced through legal means, allowing the trademark owner to take legal action against unauthorized use or infringement by others.[i]
Recent Trademark Wars in India
1. Nandhini Deluxe v. Karnataka Cooperative Milk Producers (2018)
Facts:
The respondent, a Cooperative Federation of the Milk Producers of Karnataka, adopted the mark “NANDINI” in the year 1985 and under this brand name it has been producing and selling milk and milk products. It obtained registration of this mark under Class 29 and Class 30. On the other hand, the appellant Nandhini Deluxe, is in the business of running restaurants and it adopted the mark “NANDHINI” for its restaurants in the year 1989 and applied for registration of the said mark in respect of various food items sold in its restaurants.
The mark used by the appellant was objected to by the respondent on the ground that it was deceptively similar to the mark of the respondent and was likely to deceive the public or cause confusion. According to the respondent, the appellant could not use the said mark which now belonged to the respondent inasmuch as because of its long and sustained use by the respondent, the mark “NANDINI” was held to have acquired a distinctive character and was well-known to the public which associates “NANDINI” with the respondent’s organization. According to the respondent, it had exclusive right to use the said mark and any imitation thereof by the appellant would lead the public to believe that the food items sold by the appellant are in fact that of the respondent.
Issues Raised:
“whether or not a comparable trademark or a similar trademark can be utilized by two diverse companies for un-identical and distinctive items”.[ii]
Held:
The Supreme Court believed that not only are the products of both the parties different, indeed the marks of both the parties are dissimilar, unalike, or non-identical. Even the nature of trade among both parties is so different that it may not cause any kind of confusion in the minds of people that the product belongs to the company and not to the appellant. Hence, in conclusion, the Supreme Court held that both the marks are different and shall not cause any form of deceptiveness among the public at large.
2. MakeMyTrip v. Booking.com
MakeMyTrip took legal action against Booking.com and Google, alleging copyright infringement, specifically that Booking.com engaged in unauthorized bidding on MakeMyTrip’s trademarks within Google Ads. The legal battel unfolded in April 2022 when Justice Prathibha M. Singh, on a single-judge bench, ordered Google to cease using “MakeMyTrip” as a bidding keyword due to potential trademark infringement.
However, a significant development emerged in December 2023 when the High Court revisited the matter. In a notable decision, the bench overturned the previous injunction. The High Court emphasized that Google’s use of trademarks as keywords wasn’t inherently illegal. The crucial condition was that such usage would only be deemed problematic if it caused confusion or misled internet users into believing that the sponsored links or ads were associated with the rightful owners of the trademarks
This legal turnaround highlights the considerations surrounding trademark use in online advertising and the delicate balance between protecting intellectual property rights and ensuring fair competition in the digital landscape.[iii]
3. Facebook v. Facebake / Facecake
The Delhi high court has issued a permanent injunction, prohibiting a bakery owner in southern India from using the names “Facebake” or “Facecake,” as well as any trademarks resembling those associated with the social media giant, Facebook. Additionally, the court has barred the bakery from using the website facebook.in and related email addresses.
The court’s decision was influenced by the observation that, although there were some distinctions between the marks used by the plaintiff (Facebook) and the bakery owner (defendants), the overall visual representation chosen by the defendants indicated malicious intent. Notably, when the court issued an interim injunction, the bakery swiftly changed its mark from ‘facebake’ to ‘facecake,’ altering only one alphabet. However, despite being served, the defendants chose not to appear before the court to defend the lawsuit. This lack of response further underscored the court’s perception of mala fide intent on the part of the bakery owner.[iv]
4. Hindustan Unilever Ltd. vs Emami Ltd 2022
Hindustan Unilever Limited (HUL) made the decision to rename its well-known fairness cream brand “Fair and Lovely” to “Glow and Lovely” and the men’s fairness cream brand “Fair and Handsome” to “Glow and Handsome.” This change was officially announced by HUL in July 2020.
Shortly after the announcement, Emami issued a press statement threatening legal action against HUL, alleging a violation of its rights to the mark ‘Emami Glow and Handsome.’ In response, HUL urgently approached the Bombay High Court, asserting that it had filed trademark applications for Glow & Lovely and Glow & Handsome back in September 2018, predating Emami’s filings. HUL provided sales figures and supporting evidence for the “Fair and Lovely” trademark, seeking an interim injunction against Emami.
Upon careful examination of the facts and arguments from both parties, the court determined that HUL seemed to be the prior adopter and user of the “Glow & Handsome” mark. HUL had already launched products with this trademark, while Emami was in the process of introducing goods under the same mark. As a result, the Bombay High Court granted a temporary injunction to HUL against Emami Ltd, preventing them from using the “Glow and Handsome” mark. The court noted that HUL was prima facie the prior adopter and user of the trademark.[v]
Conclusion
In the broader context of trademark wars, it becomes evident that the battle for brand identity is a dynamic and challenging aspect of the business world. These conflicts often center around the nuances of intellectual property rights, prior adoption, and usage. Resolving trademark disputes requires a delicate balance of legal considerations, including timely registrations, comprehensive evidence, and judicial scrutiny. The outcomes of such wars not only impact the involved parties but also set precedents for the evolving landscape of intellectual property law. In navigating these wars, businesses must prioritize strategic trademark management to safeguard their brands and foster a fair and competitive marketplace
[i] What is a trademark?. United States Patent and Trademark Office – An Agency of the Department of Commerce. (2023, November 30). https://www.uspto.gov/trademarks/basics/what-trademark
[ii] Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., (2018) 9 SCC 183 : (2018) 4 SCC (Civ) 303
[iii] SpicyIP. (2022, May 22). MakeMyTrip vs Booking.com – Looking at the Delhi High Court Injunction on Usage of Adwords.
[iv] (2022, July 13). Delhi High Court grants permanent injunction against Facebake or Facecake from using the well known trademark Facebook | SCC Blog. SCC Blog.
[v] Singh, R. D. (2020, September 15). Is Everything ‘Fair And Lovely’ In Business? Hindustan Unilever vs. Emami. Mondaq. https://www.mondaq.com/india/trademark/984766/is-everything-fair-and-lovely-in-business-hindustan-unilever-vs-emami