Indian Government’s latest weapon in the battle against Fake Drug – ‘Oracle’s Blockchain Solution’

October 16, 2018
ISSUE No. 22
October 30, 2018

Indian Government’s latest weapon in the battle against Fake Drug – ‘Oracle’s Blockchain Solution’



Anti-Counterfeiting Menace and India

It is evident that counterfeiting of products continues to be a bane to the Indian economy as well as the world-wide image of the country. Globalization has brought the positives of increased commerce and opened India up for direct foreign investment, which is excellent for the country’s economy. However, India’s status as a low-cost manufacturing base also opens it up for use by counterfeiters as a prime location for the production of counterfeit goods both for domestic sale and export.

The owners being more aware of their rights have now become more prudent and are swift in taking action. Various government agencies in cases of counterfeiting have taken action both on their own accord as well as upon receipt of a complaint, either from the private sector, the right owners or the consumers themselves. The health ministry in India has also undertaken various steps to clamp down on the illegal trade such as launching a reward program, offering $55,000 to those who provide information about fake-drug syndicates amongst others. Important changes have also been proposed to the country’s IP laws such as the procedure stipulated by the Drug Controller General of India in January 2011, which required an amendment to Rule 96 (manner of labeling requirement) of Drugs and Cosmetics Act. The proposed amendment made it mandatory for every drug manufactured in India to bear on its primary label Unique Identifier Code and 2D bar code by which anyone can verify the drug through an SMS.

In the News

The Indian Government has become proactive in its fight against counterfeiting especially in case of medicinal drugs. The latest weapon in the battle against the fake drug is Oracle’s Blockchain Solution. NITI Aayog, has partnered with the technology giant Oracle and local chain of hospitals, Apollo Hospitals, where Oracle will integrate its blockchain technology and a distributed ledger solution in pharmaceutical supply chain, which will create records that are unchangeable for each pharma transaction.[1]



India: Delhi High Court grants injunction to Hennes & Mauritz for infringement of their mark ‘H&M’

high court in delhi


On May 31, 2018 the Hon’ble Delhi High Court, in the case of Hennes & Mauritz AB & ANR. vs. HM Megabrands Pvt. Ltd. & Ors., passed an official order granting interim injunction in favor of Hennes &Mauritz and restraining HM Megabrands Pvt. Ltd. from making any direct or indirect usage of Plaintiff’s mark/style or name, with effect from July 9, 2018. The Court was of the view that online presence of HM Megabrands Pvt. Ltd, would bring the suit against him within its territorial jurisdiction.

Brief Facts

  • Hennes & Mauritz AB, Sweden (hereinafter referred to as “Plaintiff no. 1”) is the proprietor of the trademarks H&M; and H & M Hennes & Mauritz Retail Pvt. Ltd., New Delhi (hereinafter referred to as “Plaintiff no. 2”) is a subsidiary of Plaintiff no.1 in India.
  • The Plaintiffs are designers / marketers / sellers of wide and varied fashionable clothing collection and ancillary products / services for women, men, teenagers and children. They have more than 4000 outlets worldwide along with their online presence in over 21 countries.
  • The information pertaining to the Plaintiff is readily available on all search engines as well as on their
  • HM Megabrands (hereinafter referred to as the “Defendant 1”) along with its officers (hereinafter referred to as “Defendant 2 & 4”) are engaged in the business of marketing, supplying, selling of garments and ancillary products under the mark HM since the year 2011 and applied for registration thereof on April 11, 2014.
  • The representatives of the Plaintiff No.2 came across the goods of the Defendants bearing the mark “HM” along with use of HM MEGABRANDS, and on making enquiries they came to know that the Defendants had registered a domain name comprising “HM” viz. “ ” and were operating a websitewww.hmmegabrands.comand offering products / goods / services similar to that of the Plaintiffs under the mark “HM” through the said website. Further, Defendants were also offering goods bearing the mark “HM” through other online shopping portals such,,www.myntra.cometc. and the Defendants also had retail stores in Mumbai and various other cities in India.
  • On June 2, 2016, the two Plaintiffs sued HM Megabrands Pvt. Ltd. & others (hereinafter collectively referred to as the “Defendants”) for injunction restraining passing off / infringement of trade mark H&M of the Plaintiffs, by use of the trade mark HM MEGABRANDS and for ancillary reliefs.

Comparative Analysis of Plaintiff’s and Defendant’s Marks

Defendants Marks


  • Whether the Court had the jurisdiction to entertain the suit filed.
  • Whether the mark of the Defendants infringed the mark of the Plaintiffs’ and/or whether the Defendants’ by adopting the impugned mark were passing off their goods as that of the Plaintiffs’?
  • Whether the mark of the Plaintiffs’ had any recognition in India at the time when the Defendants’ started using their mark?
  • Whether the adoption by the Defendants’ of their mark was bona fide and if so to what effect?
  • Whether the Plaintiffs’ were not entitled to claim exclusive rights to the two letters “HM” or “H&M” and whether the said letters didn’t have any trade mark significance?
  • What was the effect, if any of other manufacturers/companies using the alphabets “HM” in their trade name, trading style and trade mark?
  • Whether the Plaintiffs’ used the mark in India for five years from the date of registration and if not, whether such non-use had any impact on the present case?

Plaintiff’s Contentions and Written Submissions

  • The Plaintiffs’ contended that they got their mark registered in various countries including India and were using various registered domain names to provide online services. Thus, emphasized their exclusive and prior rights in the mark and claimed the mark to be well-known.
  • Plaintiffs’ contended that the Defendant represented the alphabets “H” & “M” in an informal and asymmetrical italicized manner similar to that of the Plaintiffs’ artwork and also used the color combination of red and white identical to that of the Plaintiffs’. It was further submitted that the Defendants were found to be marketing their product under other brands such as “Femme” and “Bonjour” which were popular French words show implying intent to pass off their goods as those of the Plaintiffs.
  • The Plaintiffs pleaded that the Defendant’s objection regarding the territorial jurisdiction was misconceived since the Defendants themselves invoked the jurisdiction of Bombay High Court based on their online presence through various e-commerce sites,,
  • It was further submitted that though the Plaintiffs opened their first store in India in 2015 but they had been manufacturing clothes, garments bearing the trade / service mark / name H&M in India for the purpose of export since 1972 and as per Section 56 of the Trade Marks Act, 1999, use of trade marks in respect of export outside India constitutes use of trade mark in India.
  • It was submitted that trade and public were even otherwise very well aware of the reputation and goodwill vesting in the mark on account of media, television and newspaper. Further, on account of extensive use and promotion, a secondary meaning was attached in respect of the mark / name / artwork H&M and the same was exclusively associated by members of the trade and public with Plaintiffs and the Plaintiffs’ products.
  • It was further submitted that the stay of suit under Section 124 (5) of the Trade Marks Act does not preclude the Court from making interlocutory orders and it was only in exceptional circumstances such as the registration being ex facie illegal, fraudulent which shocked the conscience of the Court, that the Court refused the interim injunction in favor of registered proprietor of the trade mark
  • The Plaintiffs objected the contention of Defendants that the marks “H&M” were non-distinctive. They stated that Megabrands was descriptive of the service of the Defendants and in effect the mark of which registration was applied was “HM”, since the Defendants had tried to claim exclusivity over the letters “H” and “M” could not contend the same to be non-distinctive.
  • Lastly, relying on the cases of Prakash Roadline Ltd. Vs. Prakash Parcel Service (P) Ltd. and Pankaj Goel Vs. Dabur India Ltd., the Plaintiffs objected the Defendants defense of use of alphabets “H” and “M”.

Defendants Contentions and Written Submissions

  • The Defendants contested the plaint stating that the name and the mark was honestly and bona fidely conceived and adopted by the Defendants and had been derived from the initials of their proprietor, Mr. Hashim Merchant and his brother Mr. Hamza Merchant being Defendant No. 4 and 3 respectively and that “HM” had always been an integral part of the Defendants, their sister concern’s business, corporate name / trade name, trading style and trade mark since the year 2011.
  • Defendant challenged the Courts jurisdiction (territorial) to entertain the suit as the Defendants did not have any physical outlets in Delhi and claimed that the suit was instituted with mala fide intention. It was added that the present suit was liable to be stayed owing to the pendency of previously instituted suit filed by the Defendant no.1 against the Plaintiff at Bombay.
  • It was contended that the alphabets “H” and “M” did not have any trademark significance and no person could claim exclusive rights to the acronym / two letter mark “HM” or “H & M”. A trademark search revealed that several manufacturers were using the alphabets “H” and “M” or the term “HM” as their tradename, style or trademark. Further the Defendants challenged the validity of Plaintiffs registration and stated that the mark was inherently not distinctive or capable of distinguishing the goods / services of the Plaintiffs from those of others, relying on para 12.2.5 of Draft Manual of Trademarks.
  • It was submitted that the Plaintiffs’ had neither pleaded nor had filed any documents to show that they had any trans-border reputation in India before the adoption of the mark “HM Megabrands” by the Defendants. The Defendants had established a reputation parallel to the Plaintiffs for their products in India based on the extensive online sales and revenue generated in the financial year 2015-16. The Plaintiffs trade mark “H&M” had not been declared as a well-known trade mark by the Trade Marks Registry or by any Court and the Plaintiffs of their own could not declare their trade mark as well-known.
  • Further, it was pleaded that there was no similarity between the Plaintiffs’ trade mark “H&M” and the Defendants trade mark “HM Megabrands” since comparison of the two marks should be done in entirety and not in separate components.
  • Lastly, it was submitted that the Plaintiff had not been using their mark for the last five years and therefore it was liable to be rectified.

Courts View

  • The Court rejected the Defendant’s argument with respect to territorial jurisdiction (issue 1) on the grounds that the Defendants had generated revenue of over INR 12 crores (USD 1744059 approx.) in the financial year 2015-2016 including extensive online sales through websites. The Court stated that it had the cause of action to entertain the suit as long as the effect of infringement or passing off, if any by the Defendants of the trademarks and/or goods of the Plaintiffs could be felt in Delhi.
  • The Court rejected the Defendants contention regarding stay on the present proceedings on account of pendency of a previous suit instituted by the Defendants against the Plaintiffs at Bombay. It was opined that such suit was instituted only to prevent the Plaintiffs from meting out threats of infringement to the defendants i.e. under Section 142 of the Trade Marks Act.
  • With respect to Issue 6, the Court referred to P.M. Diesels vs. S. M. Diesels wherein it was held that in a suit for infringement, it is the right of the two parties before the Court only which are to be examined and not qua others. The Court concluded that the proprietor is not expected to pursue each and every insignificant infringer. Thus, use, even if any by others of the alphabets “HM” or “H&M” as part of their trade mark/ trade name, cannot deprive the Plaintiffs, if otherwise found entitled to interim injunction against the Defendants of such injunction.
  • The Court then held that the adoption could have been said to be bona fide if to attract customers by disclosing the identity of the proprietor who was well known to the customers or commanded a goodwill, unless adoption of name itself in childhood was mala fide.
  • As regards the similarity and likelihood of deception between the two marks the Court was of the view that the business of the two was the same and/or alike i.e. fashionable theory and the trade circles and patrons / customers of the two were also the same. In addition to this, the usage of the generic word “Megabrand” which means a big and strong brand along with “HM” would only imply association and affiliation with H&M. The only other point of difference that remained was the character “&” for which the Court opined that the patrons of the Plaintiffs’ as well as the Defendants’ were only likely to remember and recollect the alphabets “H&M” in the mark of the Plaintiffs’ and not the symbol “&” between the said two alphabets. Therefore, it was held that “HM MEGABRAND” was deceptively similar to “HM”.

  • Also, “H&M” or “HM” were not considered to be generic or publici juris to the trade or business for which they were being used by the Plaintiffs’ and the Defendants. The said alphabets were alien to the trade / business of clothing / garments / accessories and were applied thereto by the Plaintiffs’, admittedly much prior to the Defendants.

  • With respect to issue 7, the Court relied on its judgements in Sun Pharmaceutical Industries Limited Vs. Cipla Limited wherein it was held that a Defendant in a suit for infringement, without seeking remedies under Section 47 of the Trade Marks Act before the Registrar of Trademarks, cannot set up pleas of non-use and the same if permitted, will undermine the efficacy of registration and the presumption of validity of registration under Section 31 of the Act and an action for infringement of trade mark cannot be defeated for disuse. Therefore, the present case was not of non-use.

  • The Court was of the opinion that due to opening up of Indian Economy, the world has shrunk to a global village and therefore for a brand/mark to have a reputation or goodwill in India, setting up a shop in India or sale in India is no longer a necessity. The Court relied on Cadbury UK Ltd. Vs. Lotte India Corporation Ltd., wherein it was held that for the purpose of establishing reputation, visibility in India of webpages displaying the product was sufficient to show that buyers or Indians travelling abroad were aware of the product and were likely to associate it with Plaintiffs.


The Court was of the opinion that the Plaintiffs’ had established a prima facie case. It acknowledged that the Defendants were in business since 2011 but believed that if they were permitted to continue their business during the pendency of the suit, would be likely to develop further goodwill under the impugned mark and once a prima facie case is found in favor of the Plaintiffs’, it is not deemed appropriate to allow the Defendants’ to gather further goodwill and business in the mark. The Plaintiffs’ were thus found entitled to an order of interim injunction as claimed.

The Defendants, with effect from July 9, 2018, were restrained from using in any manner whatsoever the trade / service mark / trade name “HM” or “HMMEGABRANDS” or any deceptive variation/s thereof, singularly or in conjunction with any other word or monogram/logo or label in relation to their products/services/business whether as a trade mark, service mark, trade name, corporate name, trading style or as website, domain name and e-mail address.


Madrid Protocol: Change in Amount of Individual Fee for African Intellectual Property Organization (OAPI) and Republic of Korea

Organisation Affricaine


WIPO, through two independent Madrid Information Notices, has notified that in accordance with Rule 35(2)(c) of the Common Regulations under the Madrid Agreement and Protocol, the Director General of the World Intellectual Property Organization (WIPO) has, at the individual requests of the African Intellectual Property Organization (OAPI) and Office of the Republic of Korea , established the following new amounts, in Swiss francs, of the individual fee that is payable when OAPI or Republic of Korea is designated in an international application, in a designation subsequent to an international registration and in respect of the renewal of an international registration in which OAPI or Republic of Korea has been designated:

Change In The Amounts Of The Individual Fee: African Intellectual Property Organization (OAPI)

* This change shall have effect on September 9, 2018

Supreme Court

Change In The Amounts Of The Individual Fee: Republic Of Korea

* This change shall have effect on September 7, 2018

Subsequent Designation

a. is designated in an international application which is received by the Office of origin on or after that date; or

b. is the subject of a subsequent designation which is received by the Office of the Contracting Party of the holder on or after that date, or is filed directly with the International Bureau of WIPO on or after that date; or

c.has been designated in an international registration which is renewed on or after that date.


India: Supreme Court of India says that ‘monopoly’ cannot be enjoyed over entire class of goods

Supreme Court in India


Trademark are not monopolies, they are just brand names or logos that identify the producers of products or services in the marketplace. Trademarks only increase the competition in the market by giving a stronger foothold to one business in comparison with another, as it would give better recognition to that company in the eyes of the consumer.

Recently, the Hon’ble Supreme Court of India in the case ofM/S. Nandhini Deluxe vs. Karnataka Co-Operative Milk Producers Federation Ltd held ‘that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods particularly when he is not using the said trade mark in respect of certain goods falling under the same class.’

Brief Background

  • Karnataka Co-Operative Milk Producers Federation Ltd (hereinafter referred to as ‘the Respondents’) stated that they adopted the mark ‘NANDINI’ in 1985 and since then has been producing and selling milk and milk products. The Trademark registration of the mark ‘NANDINI’ belongs to it in Class 29 and Class 30.
  • Nandhini Deluxe (hereinafter referred to as ‘the Appellants’) was running restaurants under the mark ‘NANDHINI’ since 1989. It applied for registration of the said mark in respect of various foodstuff items sold by it in its restaurants.

  • The registration of the same was opposed by the Respondent. However, the objections of the Respondent were dismissed by the Deputy Registrar of the Trade Mark who allowed the registration of the ‘NANDHINI’ mark in favor of the Appellant.

  • The Respondent’s grounds for opposing the registration of the ‘NANDHINI’ mark were that:

    • It was deceptively similar to the mark of the Respondent and was likely to deceive the public or cause confusion.

    • The Respondent argued that it has maintained a long and sustained use of the mark ‘NANDINI’, because of which it has acquired a distinctive character and was well-known to the public which associated ‘NANDINI’ with the Respondent.

    • It further contended that it had exclusive right to use the said mark and any imitation thereof by the Appellant would lead the public to believe that the foodstuffs sold by the Appellant were in fact that of the Respondent.

  • After rejection by the Deputy Registrar, the Respondent filed an appeal with the Intellectual Property Appellate Board, Chennai (hereinafter referred to as ‘the IPAB’) praying that the registration given accorded to the Appellant should be cancelled.

  • Vide order dated October 4, 2011, the appeal of the Respondent was allowed by the IPAB. Further, vide order dated December 2, 2014 (hereinafter referred to as ‘the impugned order), the writ petitions filed by the Appellant in the High Court of Karnataka (hereinafter referred to as ‘the High Court’), against the order of the IPAB, were dismissed by the High Court.

  • The reasons for rejecting the writ petitions of the Appellant in the impugned order of the High Court were:
    o The mark NANDINI as held by the Respondent has acquired a distinctive character and has become well-known;
    o The use of another mark is different only in one alphabet but with no difference in spelling or pronunciation in the local language and would very likely to cause confusion in the minds of public if allowed to be registered for the commodities falling in the same class;
    o Argument of the Appellant herein that it was running the business of restaurant since 1989 and the Respondent had started using the mark ‘NANDINI’ since the year 1985 only for milk and not for other products was rejected on the ground that there is no foundation in facts for the aforesaid argument and no material was produced to substantiate the same.

Competing Marks

Competing Marks


  1. Whether the Appellant is entitled to seek registration of the mark ‘NANDHINI’ with respect of the goods in Class 29 and 30?

  2. Whether the mark ‘NANDHINI’ of the Appellant infringed the mark ‘NANDINI’ of the Respondent?

  • It contended that both the High Court and IPAB grossly erred in interpreting the provisions of Section 11 of the Trademarks Act (hereinafter referred to as ‘the Act’) to mean that once a Trademark has acquired a distinctive character, then registration of the trade mark is barred and is likely to cause confusion if it is allowed to be registered in the commodities within the same class.
  • It contended that no proper weightage and consideration was given to the fact that goods and services of the Appellant were totally different from that of the Respondent and, therefore, there was no likelihood of confusion or deception among the public.
  • It highlighted the principle of law laid down in Vishnudas Trading Co. v. Vazir Sultan Tobacco Co. Ltd wherein it was held that the monopoly under Trademark only extends to the goods which are falling in a particular class and not the entire class of goods and the trade mark which is identical or similar in nature can be registered for the goods which are falling within the same class inasmuch as giving the monopoly to the entire class of goods and services to the registered proprietor would lead to trafficking in the trade mark which is not the object and the purpose of the Trade Mark Act.
  • It argued that since the Respondent was in the business of manufacture and marketing of milk and milk products only and had admittedly not expanded its business to any other items in Class 29 or 30, the case of the Respondent at the highest could be qua milk and milk products only. It further submitted that the Appellant was ready to give concession by not claiming any registration or Trademarks which fell in the category of milk and milk products.

Respondent’s Contentions

  • It contended that the IPAB not only concluded that ‘the word Nandhini has acquired a distinctiveness’ but also that ‘there is no doubt that if goods under Class 29 and 30 bearing the Respondent’s Trademark come out in the market, the average consumer would conclude that it belongs to the Respondent’.
  • It further contended that all the essential characteristics of a well-known mark as understood under Section 11(2) read with Section 11(8) of the Act were found by the IPAB in the Respondent’s mark ‘NANDHINI’.

  • It submitted that its mark ‘NANDHINI’ was a household name in entire South India, and more so in Karnataka. Therefore, there was no doubt as to ‘NANDHINI’ being a well-known mark. It further submitted that the significance of Nandhini, as a symbol of purity and the source of wholesome milk was the reason for the adoption of that word by the Respondent.

  • It argued that the Appellant’s contention regarding honest and concurrent user was untenable as it was well aware of the widespread use of the mark Nandhini by the Respondent and has admitted that they were purchasing Nandhini milk for their restaurant.
    Court’s Judgement

  • The Court took note of the fact that though the Respondent was a prior user, the Appellant was also using its trade mark ‘NANDHINI’ for 12-13 years before it applied for registration of the said Trademarks.
  • It held that though the goods of the Appellant as well as Respondent fall under the same Classes 29 and 30, they were different from each other. It further took note of the fact that ‘NANDINI/NANDHINI was a generic word, as it represents the name of Goddess and a cow in Hindu Mythology, and not an invented or coined word of the Respondent.
  • Therefore, on question of deceptive similarity it was held that, ‘though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the Appellant has written NANDHINI as its mark is totally different from the style adopted by the Respondent for its mark ‘NANDINI’. Further, the Appellant has used and added the word ‘Deluxe’ and, thus, its mark is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device of lamp with the word ‘NANDHINI’. In contrast, the Respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the Appellant’s mark with that of the Respondent when these marks are seen in totality.’
  • It also observed that ‘the reasoning of the High Court that the goods belonging to the Appellant and the Respondent (though the nature of goods is different) belong to same class and, therefore, it would be impermissible for the Appellant to have the registration of the concerned trade mark in its favour, would be meaningless. That apart, there is no such principle of law.’
  • On the issue of monopoly and Trademarks, the Court held that:

    ‘The proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods, but the provisions of this Section do not cover the same class of goods.’
  • Therefore, the impugned order was set aside and restored the Registrar’s order allowing registration in favor of the Appellant.

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