VOL IX                                                      ISSUE NO. 17                                        August 21, 2017          


In This Issue

India: BBC settles a suit before the Delhi High Court Mediation and Conciliation Centre

Recently, in the case of The British Broadcasting Corporation vs Kuldeep Singh Kalra & Ors., The British Broadcasting Corporation prayed for a decree of permanent injunction, restraining Kuldeep Singh Kalra from using any mark which is deceptively and confusingly similar to the mark ‘BBC’. However, during the pendency of the suit the parties entered into a settlement before the Delhi High Court Mediation and Conciliation Centre, because of which Honorable Justice Mukta Gupta of the Delhi High Court decreed the suit as per the terms and conditions of the settlement

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India: Delhi High Court grants INR 5 lakh damages to Yahoo for Trademark Infringement

Recently, the Delhi High Court on July 3, 2017 in the case of Yahoo Inc vs Mr Rinshad Rinu & Ors., directed payment of INR 5 lakh as damages to US based Yahoo Inc, for trademark infringement by a website called ‘YahooKochi’. The Court restrained the website from using its trademark or any other deceptively similar mark.

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Pakistan: Competition Commission grants damages worth 10 Million Rupees against Proctor & Gamble for engaging in Deceptive Marketing Practices

In a recent order delivered by the Competition Commission of Pakistan, pursuant to a complaint filed by M/s Reckitt Benckiser Pakistan Limited, against M/s Proctor & Gamble Pakistan Private Limited for violation of Section 10 (‘deceptive marketing practices’) of the Competition Act, 2010 , the Commission imposed a penalty in the amount of PKR 10 Million!! (USD 94899 approx.)

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India: Jurisdiction not considered by Delhi High Court while Granting Injunction?

On July 10, 2017, in the case of Impresario Entertainment & Hospitality Pvt. Ltd. v M/S Urban Masala LLP, Hon’ble Mr. Justice Manmohan of the High Court of Delhi passed an interim injunction in favour of Impresario Entertainment and Hospitality Pvt. Ltd. restraining M/s. Urban Masala LLP from manufacturing, selling, marketing, advertising, and/or offering its services or permitting third parties to manufacture, market, advertise or use the trade mark SOCIAL, SOCIIAL.

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India: BBC settles a suit before the Delhi High Court Mediation and Conciliation Centre

 

Source: bbc.co.uk

 

 

Recently, in the case of The British Broadcasting Corporation vs Kuldeep Singh Kalra & Ors., The British Broadcasting Corporation (hereinafter referred to as the ‘Plaintiff’) prayed for a decree of permanent injunction, restraining Kuldeep Singh Kalra (hereinafter referred to as the ‘Defendants’) from using any mark which is deceptively and confusingly similar to the mark ‘BBC’. However, during the pendency of the suit the parties entered into a settlement before the Delhi High Court Mediation and Conciliation Centre, because of which Honorable Justice Mukta Gupta of the Delhi High Court decreed the suit as per the terms and conditions of the settlement

 

Brief Background

 

In the present suit the Plaintiff have prayed for the following reliefs:

  • A decree of permanent injunction restraining the Defendants, their directors/proprietor/partners, their principals, employees, agents, distributors, franchisees, representatives and assigns from using the impugned marks and any other trademarks or trade name which are deceptively or confusingly similar to the Plaintiff's registered mark ‘BBC’ in any manner whatsoever without the permission, consent, license of the Plaintiff, thereby infringing the rights of the Plaintiff in its registered trademarks amounting to infringement thereof.

  • An order of delivery up be passed, thereby directing the Defendants to hand over to the Plaintiff all goods, packaging and promotional material, catalogues, stationery and any other material whatsoever in its possession or under its control bearing the impugned marks or any other mark as may be confusingly or deceptively similar to the Plaintiff's mark BBC;

  • A decree in favor of the Plaintiff for recovery of damages to the tune of INR 1,00,01,000 (USD 155888 approx.) as punitive/compensatory damages for committing the illegal activities of infringement of trade mark, passing off & falsification.

  • For an order for rendition of account of profits earned by the Defendants by its impugned illegal trade activities and a decree for the amount so found in favor of the Plaintiff on such rendition of accounts;

However, during the pendency of the suit before the issues could be settled, the parties entered into a settlement before the Delhi High Court Mediation and Conciliation Centre.

Terms of Settlement Agreement

 

The Defendant undertook not to use the Plaintiff's well-known mark BBC in a standalone manner or in any manner whatsoever including but not limited to its publications, books, stationary, pamphlets, visiting cards, etc.

 

Both the parties understand that the concern of the Plaintiff is with the word bbc and the same has been addressed by the Defendants by agreeing to not use bbc in isolation but always in conjunction with Brajindra Book Company. Amongst others, the Plaintiffs agreed to the following terms - :

  1. The term 'bbc' shall always be used in small characters; and

  2. The term 'bbc' shall always be used and reflected in close conjunction with Brajindra Book Company; and

  3.  The font size ratio of the terms 'bbc' and Brajindra Book Company for all purposes shall be such that bbc is not more than half the size of the word Brajindra Book Company.

After complying with the aforesaid conditions the Defendants may seek any registration of the trade mark bbc Brajindra Book Company and/or bbc Brajindra Book Company COMPACTA or bbc Brajindra Book Company with any other suffix. Additionally, the Defendant is fully entitled to use the word COMPACTA in any manner as it deems fit, but when used with the bbc brand the aforesaid conditions will apply.

 

The Defendants shall immediately cease further publication of the marks impugned in CS (COMM) 1144/ 2016 and agrees not to adopt any identical or similar mark in the future, other than the allowed manner of use as defined in the settlement agreement. The Defendants further undertakes to voluntarily amend its trade mark application bearing no. 2639325 in Class 16 for the mark bbc compacta (stylized) within a period of six weeks from the date of signing of this agreement to bring it in conformity with the aforesaid terms.

 

The Plaintiff agreed that in view of the undertakings by the Defendants recorded in the settlement agreement, it shall not oppose the application(s) if any, filed by the Defendants for the registration of the mark "bbc" in conjunction with 'BRAJINDRA BOOK COMPANY', and/or with COMPACTA in conformity with the terms of the present settlement deed.

 

Judgement

 

In view of the settlement arrived at between the parties, Hon’ble Justice Mukta Gupta decreed the suit as per the terms of the agreement. Further the terms of settlement arrived at between the parties will be incorporated in the decree sheet and since the parties have entered into a settlement before the Delhi High Court Mediation and Conciliation Centre, the Court fees will be returned to the Plaintiff under Section 16 of the Court Fees Act.

 

 

 

 

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India: Delhi High Court grants INR 5 lakh damages to Yahoo for Trademark Infringement

 

 

Source: livelaw.in

 

Recently, the Delhi High Court on July 3, 2017 in the case of Yahoo Inc vs Mr Rinshad Rinu & Ors., directed payment of INR 5 lakh as damages to US based Yahoo Inc, for trademark infringement by a website called ‘YahooKochi’. The Court restrained the website from using its trademark or any other deceptively similar mark.

 

Brief Background

 

Mr. Rinshad Rinu & Others (hereinafter collectively referred to as ‘the Defendants’) operated under the trademark “YahooKochi”, which was unquestionably similar to Yahoo Inc’s (hereinafter referred to as the ‘Plaintiff’) trademark YAHOO, registered in various classes. Present suit was filed for permanent injunction restraining the Defendant no. 1 to 5 from;

  1. offering services and advertising using the Yahoo trademark;

  2. passing off their services as the Plaintiff’s;

  3. operating the website www.yahookochi.com;

  4. diluting and tarnishing the Plaintiff’s trademarks by virtue of their below par services

The Plaintiff also prayed to the Court to pass an order directing Defendant no. 6, GoDaddy.com, the Registrar of the domain name , to suspend the operation of the said domain.

The Court vide its order dated October 20, 2015, granted an ex parte ad interim inunction in favor of the Plaintiff. The Defendants no.1 to 5 were restrained from using the mark YAHOO in relation to the trademark as well as domain name obtained by them, and Defendant no.6 was directed to suspend the domain name within one week from the date of receipt of order.

 

Since, the Defendants refrained themselves from appearing, they were proceeded ex parte and the ex parte injunction was confirmed.

 

Issue  

 

Whether the Defendant infringed the Plaintiff’s YAHOO trademark?  

 

Contentions: Plaintiff  

 

The Counsel submitted that the registered trademark YAHOO, which was well recognized and reputed, was owned by the Plaintiff. Referring to the website ‘www.yahookochi.com’ and also to the logo used by the Defendant which was strikingly similar to the old logo used by the Plaintiff, it was contended that the Defendants clearly infringed the trademark in question. It was brought to the Court’s attention that the Defendants refused to change their name, even after the Plaintiff’s notice dated May 23, 2015.

 

Judgment  

 

The Court held that the Plaintiff operated various websites under its YAHOO trademark and that the mark used by Defendants was dishonest. It further stated that the font used by the Defendants to represent YAHOO in their trading name was identical to the unique stylized font which the Plaintiff used to represent its YAHOO trade mark till 2014. It was concluded that the potentiality of the mark was enormous on the internet as the Plaintiff had a wide internet presence. The Court thus established infringement of the Plaintiff’s trademark. The Court assessed the cost at INR 4,91,114 (approx. USD 7675) and awarded compensatory damages of INR 2 lacs (approx. USD 3125), and punitive damages worth INR 3 lacs (approx. USD 4688) to the Plaintiff.

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Pakistan: Competition Commission grants damages worth 10 Million Rupees against Proctor & Gamble for engaging in Deceptive Marketing Practices

 

 

Source: cc.gov.pk

 

In a recent order delivered by the Competition Commission of Pakistan, pursuant to a complaint filed by M/s Reckitt Benckiser Pakistan Limited (hereinafter referred to as the Complainant), against M/s Proctor & Gamble Pakistan Private Limited (hereinafter referred to as the Respondent) for violation of Section 10 (‘deceptive marketing practices’) of the Competition Act, 2010 (herein after referred as Act), the Commission imposed a penalty in the amount of PKR 10 Million!! (USD 94899 approx.)

 

Brief Background

  • On November 21, 2014, the Complainant filed the complaint alleging that the Respondent in its marketing and advertising claims has represented Safeguard as ‘Pakistan’s No. 1 rated Anti-bacterial Soap*' along with a disclaimer/disclosure in fine prints '*based on product in use test by AC Nielsen in April 14 amongst 600+ consumers’. The said claim tantamounts to dissemination of false or misleading information to consumers and competitors' and hence, a violation of Section 10 of the Act.

  • The impugned advertisement goes like – “the TVC portrays a typical household scene in which two children and (their) mother are talking about how flu and cold (influenza) are epidemics in winters. The conversation between the three characters suggests that the use of 'Safeguard' can protect them from germs causing influenza, among other things. It is then endorsed and further explained by a doctor, who states that the spread of flu and cold is rampant in winters. He then goes on to state that Safeguard is Pakistan's No. 1 antibacterial soap, which provides protection against germs causing flu and cold. The TVC ends on this note with set vocals and image claiming that Safeguard is a well-recognized No. 1 antibacterial soap in Pakistan.”

  • The Complainant submitted AC Nielson's data reflecting share of the leading antibacterial soaps in Pakistan:

     

  •  

  • The Complainant stated that Nielsen's data reflects the falsity of the Respondent's claim whether taken in value share or volume share. Furthermore, the Respondent lacking any substantial proof or reliable scientific healthcare related evidence in support of its claim is distributing false or misleading information to consumers.

  • The Complainant stated that Respondent has violated Section 10(2)(b),(a)&(c) of the Act by disregarding Commission’s Public Notice ‘Business Be Aware Before You Advertise’ dated September 23, 2013.

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  • On December 04, 2014, the Office of Fair Trade (hereinafter referred to as ‘OFT’) of the Commission sent a copy of the complaint to the Respondent seeking clarification.

Issues raised before the Commission

  • Whether or not the advertising claim 'Pakistan's No. 1 rated Antibacterial Soap' and materials submitted by the Respondent have a reasonable basis related to the product's character, properties and suitability for use?

  • Whether or not the disclaimer/disclosure 'based on a product in use test by AC Nielsen in April 2014 amongst 600+ consumers' is easily noticeable and easily understandable by consumers to qualify the claim and/or offset the liability arising out the claim?

Respondents’ Submission

  • Respondent claimed that their claim ‘Pakistan’s No. 1 rated Anti-bacterial Soap*' is based on number of reliable market surveys such as Neilson's In-Market Usage Test, GfK Brand Health Tracker (BHT), IPSOS Equity Study and IPSOS Doctor's No. 1 Choice.

  • Respondent contended that Safeguard is not claiming to be ‘Pakistan’s No. 1 Anti-bacterial Soap’ rather ‘Pakistan’s No. 1 rated Anti-bacterial Soap’. Further contented that the term ‘rated’ has been used to clarify and inform consumers about the Product’s brand rating position in Pakistan as conducted by the Nielsen on 600+ consumer and BHT study.

  • Respondent reiterated that the advertising claim is inclusive of disclaimer which is very obvious to a reasonable consumer.

  • Finally the Respondent submitted that it is in full compliance with the commission’s notice and there claim is not absolute in nature rather qualified by a limited sample conducted Nielson and confined to the category of antibacterial soaps in Pakistan.

Complainants’ Submission

  • First, none of the reports submitted by the Respondent support the claim that 'Safeguard is Pakistan's No. 1 rated Antibacterial Soap'. The claim of the Respondent is not supported by any actual sales data i.e. Nielsen retail audit. Second, if the Respondent's claim is based on BHT (a total base of 1370 Respondents), it is anomalous and not mentioned in the disclaimer. Moreover, the sample size is less than one percent of Pakistan's population in both studies. Therefore, the claim of the Respondent is false and misleading the consumers' as well as the competitors to their detriment.

  • The word 'rated' is too small as compared to other words in the advertising claim, which reflects the Respondent's intention to showcase and market Safeguard as 'No.l' antibacterial soap in Pakistan. Even according to Nielsen's report, it is clear that in the leading antibacterial soaps category, Safeguard is not of the highest in the volume of sale or value.

  • Mere presence of a disclaimer in an advertisement does not suffice as the purpose of disclaimer is its likelihood to be read and that it is also likely to alter the general impression of the overall advertisement. Even if it is read, the question is what is the overall impression of the advertising claim without the disclaimer? Whether the 'main message' is strong enough that it allows the disclaimer to alter the same? Since the advertising claim and disclaimer/disclosure in question have been placed in a perfunctory manner, it does not reflect the essence and spirit in which disclaimers are required to be placed. The main advertising message overshadows the statement in the disclaimer.

  • Additionally, the Complainant highlighted that since Commission's notice, the Respondent has removed all hoardings carrying the advertisement.

Commissions’ Decision

  • The Respondent has clearly disregarded the Commission's public notice, in specific making claims, 'No.1 in Pakistan' or 'No.1 Selling Brand'. The claim of Safeguard 'Pakistan's No. 1 rated Antibacterial Soap' in which the word 'rated' is written or displayed in significantly smaller font at the bottom of the ad/TVC, the advertising claim thus creates an impression and/or conveys the message that Safeguard is 'Pakistan No. 1 Antibacterial Soap' in violation of Section 10(2)(b) of the Act. In view of the foregoing, the Respondent's claim is both false as well as misleading.

  • The Respondent's reliance on Nielsen's and BHT study/survey to rank itself as Pakistan's No.l antibacterial soap is irrelevant and misleading for two main reasons: firstly, the study reveals that Dettol ranks much higher in terms of value share and volume share than Safeguard. Secondly, the main message contained in the Respondent's marketing and advertising campaigns involves health and safety claim that Safeguard purportedly prevents cold and flu in winters. The claims involving health and safety need to be backed up with 'competent and reliable scientific evidence’. Therefore, the rule is that strong product claims require strong evidence to back them up.

  • Section 10(2)(a) of the Act states 'the distribution of false or misleading information that is capable of harming the business interests of another undertaking' constitutes deceptive marketing practice for the purposes of Section 10(1) of the Act. With regard to harm caused to competing business undertakings, the Commission has in its Order in the matter of Jotun Pakistan (Pvt) Limited, held that: "[...] to prove conduct under Section 10(2)(a) of the Act, it is not necessary to show actual harm to a competitor. It is sufficient to show the existence of a deceptive marketing practice that has the potential to harm the business interest of the competitors […]". Therefore, the Commission is of the view that the Respondent has violated Section 10(2)(a) of Act by engaging in deceptive marketing practices.

  •  Respondent's disclaimer placed at the bottom of the advertisement was neither easily noticeable/legible nor easily understandable by an ordinary consumer. Furthermore, the most part of the TVC and other marketing and advertising campaigns material was in Urdu, whereas the disclaimer/disclosure was in English and appeared for not more than 2 seconds (momentarily) out of a total of 30 seconds TVC, which was inadequate to correct the deceptive impression. In the Zong Order, the Commission has observed that 'Even if express or implied representation in an advertisement is accompanied by disclaimers or qualifiers (i.e. disclosures); Such caveat will nullify a misleading (practice) only, if they appear, in such a way as to eliminate the advertisement tendency to mislead in its overall effect'. Therefore, the Commission is of the considered opinion that the disclaimer/disclosure used by the Respondent in its marketing and advertising campaigns itself tantamount to the distribution of false and misleading information to the consumers in violation of Section of the Act.

  • In view of the above, the Commission imposes following penalties:

    1. For violation of Section 10 of the Act related to the advertising claim and associated disclaimer, the Commission hereby imposes a penalty in the amount of PKR 10,000,000 (USD 94899 approx.)

    2.  With regard to the advertisements, the Respondent is directed to inform the public at large, the falsity of its claim that Safeguard is Pakistan's No. 1 rated Antibacterial Soap through appropriate clarifications in all Urdu and English dailies and through TV channels for a period of one (1) week from the date of this order.

    3. The Respondent is directed to file a compliance report with the Registrar of the Commission within the period of forty-five (45) days from the date of issuance of this order and is reprimanded from indulging in deceptive marketing as well as other anti-competitive practices provided in the Act.

 

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India: Jurisdiction not considered by Delhi High Court while Granting Injunction?

 

Source: delhihighcourt.nic.in

 

On July 10, 2017, in the case of Impresario Entertainment & Hospitality Pvt. Ltd. v M/S Urban Masala LLP, Hon’ble Mr. Justice Manmohan of the High Court of Delhi passed an interim injunction in favour of Impresario Entertainment and Hospitality Pvt. Ltd. (hereinafter referred to as the Plaintiff) restraining M/s. Urban Masala LLP (hereinafter referred to as the Defendant) from manufacturing, selling, marketing, advertising, and/or offering its services or permitting third parties to manufacture, market, advertise or use the trade mark SOCIAL, SOCIIAL.

 

Background of the case-

 

The Plaintiff is the owner of 17 cafes/ restaurants under the trademark “SOCIAL”, and has claimed that the said trade mark was adopted in 2012. The Plaintiffs claimed that the nomenclature of their restaurants involves a simple process of adding the name of the location of the restaurant before the trade mark “SOCIAL”, for instance, Hauz Khaz Social, Church Street Social and Odean Social. The trademark “SOCIAL” has been registered in classes 9, 25, 30, 32, 33, 42 and 43

 

In May, 2017, the Plaintiff became aware that the Defendant had engaged in the similar trade and business as that of the Plaintiff, and was operating a multi cuisine restaurant under the trademark SOCIAL DISTRICT in Hyderabad. The Plaintiff also informed the Hon’ble Court that it had sent a cease and desist notice to the Defendant, to which the Defendant had replied stating the word “SOCIAL” is generic and no one can claim exclusive right over the same. Aggrieved by this unauthorized use of its registered trade mark, the Plaintiff filed the present suit bearing no. CS (COMM) 447/2017.

 

Contentions of the Plaintiff

  • That the Defendant not only copied the trade mark but also the entire model of the Plaintiff’s restaurant which includes selected items from its menu.

  • That the Defendant had been advertising its restaurant under the name “SOCIAL DISTRICT” on social networking sites such as Zomato, Dineout and Facebook where it has received sub-standard reviews and ratings which has adversely affected the goodwill of the Plaintiff’s high quality restaurants. This contention was supported by one review on Zomato which depicted customers mistaking the Defendant’s “SOCIAL DISTRICT” restaurant as one of the outlets for Plaintiff’s “SOCIAL” restaurants.

  • That the Plaintiff is the prior adopter and user of the trade mark SOCIAL and its variant and use of plaintiff’s trade mark SOCIAL for identical trade and services by the Defendant constitutes infringement as well as passing off.

Observations of the Court

  • “Keeping in view the aforesaid, this Court is of the opinion that a prima facie case of infringement and passing off is made out in favour of the plaintiff and balance of convenience is also in its favour. Further, irreparable harm or injury would be caused to the plaintiff if an interim injunction order is not passed.”

  • “This Court is prima facie of the opinion that the word ‘Social’ is arbitrary and fanciful with regard to restaurants. For instance, Arrow is a generic word with regard to bows and arrows but is arbitrary and fanciful with regard to shoes and shirts.”

Conclusion:

 

Though this may seem like a run of the mill injunction granted in a trade mark infringement matter, there is one aspect which calls for the reader’s attention. It appears that the Hon’ble Delhi High Court did not analyze whether the present suit was filed under Section 134 of the Trade Marks Act, 1999, or Section 20 of the Civil Procedure Code, 1908. It is pertinent to note that the Plaintiff has its registered offices in Mumbai, the Defendant resides and carries on business in Hyderabad, and the cause of action (infringement of the Plaintiff’s trade mark) also occurred in Hyderabad.

 

In this regard it is pertinent to point out the Hon’ble Delhi High Court’s judgment in the case titled Ultra Home Construction Pvt. Ltd. vs. Purushottam Kumar Chaubey and Ors. [2016 (65) PTC 469 (Del)], wherein the Hon’ble Division Bench had given a tabular representation of how jurisdiction of a Court can be decided in trademark/copyright infringement cases. The said table is reproduced hereinbelow:

 

 

The third column as seen above can confer jurisdiction to a Court under Section 20, CPC, whereas the fourth column shows where jurisdiction shall lie when a case is to be filed under Section 134 of the Trade Marks Act, 1999. The said judgment seems to be directly in contradiction to the Hon’ble Division Bench’s judgment as mentioned above. Therefore, it shall be interesting to see where the said Suit shall proceed from hereon, and what submissions the Defendants shall make before the Hon’ble Delhi High Court.

 

 

 

 

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