‘Family Of Marks’ Concept Not Expressly Recognised Under Trademarks Act, But Can Be Applied To Injunct Specific Marks: Delhi High Court
The Delhi Excessive Courtroom has held that although the Commerce Marks Act 1999 doesn’t expressly recognise the idea of a ‘household of marks’ nevertheless, the identical is judicially developed and could be invoked by a registered trademark proprietor to hunt injunction in opposition to particular marks.
A division bench of Justices C. Hari Shankar and Ajay Digpaul dominated,
“When an entity is the proprietor of numerous registered emblems containing a typical prefix or suffix, or a typical first or second phrase, some other mark by a 3rd celebration which might comprise the identical first or second phrase, if used for comparable items or service, may end in chance of confusion…It’s this idea which is elliptically described because the “household of marks” idea. Thus, the idea of a household of marks will not be alien to the Commerce Marks Act, however merely a recognition of the rules that underlie the statute.”
The bench nevertheless clarified that the injunction granted underneath this idea can’t be absolute and needs to be selected a case to case foundation, in opposition to marks that are particularly underneath problem earlier than the courtroom. It reasoned,
On this case, the Appellant having registered trademark ‘CONTIN’ sought to restrain the Respondent from utilizing impugned ‘FEMICONTIN’ mark or any of the CONTIN household of marks.
As the only choose had rejected the swimsuit, the Appellant approached the Excessive Courtroom.
The Appellant claimed exclusivity over the usage of CONTIN as a prefix or a suffix in any trademark by any third celebration for items coated by Class 5 or that are allied or cognate thereto.
Disagreeing, the Excessive Courtroom held,
“Although the precept of a household of marks is properly recognised, the Courtroom can not, with out precise info earlier than it, presume that each mark of which CONTIN is part, and which can take care of pharmaceutical preparations, is essentially infringing in nature. One could, for instance, hypothetically, envisage the usage of a mark with the phrase “CONTINUOUS” or “CONTINGENT” which, hypothetically, will not be infringing even whether it is used for pharmaceutical preparations, and comprises “CONTIN”.”
On this regard, the Excessive Courtroom relied on Bennett Coleman and Co. Ltd v Vnow Applied sciences Pvt Ltd (2023) and Bennett Coleman and Co. Ltd v Trend One Tv LLC (2023) the place the marks VNOW and FASHION NOW utilized by the Respondents have been in query.
The Excessive Courtroom had allowed the petitions in each the circumstances, noting the proprietorial rights of Bennett Coleman within the “NOW” household of marks, which included TIMES NOW, ET NOW, and many others.
Nevertheless, the Excessive Courtroom didn’t grant an absolute injunction, throughout the board, in favour of the household of marks holder and in opposition to all third events from utilizing the frequent characteristic of the household of marks in any case.
The one choose had additionally dominated that the household of marks idea applies solely to passing off, and to not infringement.
Disagreeing with this view, the division bench cited Amar Singh Chawal Wala whose infringement declare in opposition to Shree Vardhman Rice over use of ‘Qilla’ mark for rice was allowed.
“The discovering of the realized Single Decide that the household of marks idea would apply solely to passing off, will not be right,” the Excessive Courtroom dominated.
Look: Mr. Pravin Anand and Ms. Prachi Agarwal, Advs for Appellant; Mr. Gagan Gupta, Sr. Adv. with Mr. Saurabh Gupta, Adv. for R-1
Case title: Modi Mundipharma Pvt. Ltd v. Speciality Meditech Pvt. Ltd. & Anr.
Case no.: RFA(OS)(COMM) 8/2023
