Lall & Sethi

Lotte vs. Cadbury (Madras High Court, LIT-IN814) CS 215/2009
Date of judgment: September 30, 2021
Lead Partner was Jyoti Kaur & Nancy Roy
Others that worked on the deal were: Renuka Rajan, Karan Bajaj (from Bahl and Bajaj), Rajesh Ramanathan (from Factum Law)

Brief description of deal

Suit for permanent injunction restraining the Defendants from interfering with Plaintiff’s use of the trademarks CARAMILK and ECLAIRS, picture of broken eclairs by issuing letters, circulars, notices, advertisements or otherwise, under Sections 134, 142 of TM Act and 60 of Copyright Act. In the Plaint, Lotte stated that the present suit was being filed on account of the legal notice sent by Cadbury (Defendants) to Lotte (Plaintiff), wherein Cadbury claimed that they had been using the trademark CARAMILK in Canada for more than 40 years and they have been using the mark CADBURY DAIRY MILK ECLAIRS and its label from 1971, which has been applied for registration and registered worldwide.

In the legal notice, Cadbury had asked Lotte to cease and desist from using the marks CARAMILK, ECLAIRS, the Broken ECLAIRS device and the use of purple and white color combination, and threatened that such use would amount to infringement.  Lotte then made claims regarding extensive use and the fact that

ÉCLAIRS is a generic term and should not be used in isolation. They further said that Cadbury couldn’t claim exclusive rights over the said color combination.

HELD in favor of Cadbury - Once it is found that the Defendants have a semblance of right for the trademarks, which are in dispute, the issuance of notice by the Defendants could not be termed as unjustified or groundless. Considering the scope of Section 142, it will not be proper for the Court to go into the evidence and decide on the question of infringement or the right of the defendants based on the registrations abroad.

Why is this deal particularly significant?

The Indian High Court held that mere issuance of a notice seeking discontinuance of the user and warning of a statutory suit by a person, who has a semblance of a right over the marks would not amount to a groundless threat or unjustified threat.  Deal is significant because it reiterates that a simple cease & desist notice (which contains adequate information on the sender’s rights) would not be equivalent of a groundless / unjustified threat.

Intercontinental Great Brands vs. Sumo Biscuits & Anr. (Delhi High Court, LIT-IN2771) CS COMM 286/2021
Date of interim order: June 04, 2021
Lead Partner was Jyoti Kaur
Others that worked on the deal were: Nancy Roy, Renuka Rajan, Abhishek Kotnala

Brief description of deal

Suit for interim and permanent injunction restraining the Defendant from infringement of trade marks, copyright, passing off and unfair competition under Sections 27 and 29 of the Trade Marks Act and 62(1) of the Copyright Act. Plaintiff initiated the present action on the basis of its rights in the brand OREO, against the impugned product BLACK PEARL, owing to the blatant misuse by the Defendants through their acts of imitating and/or copying unique and distinctive features of the Plaintiff’s well-known brand OREO comprising of the trademarks OREO, OREO label/trade dress and OREO Cookie trade dress.

Why is this deal particularly significant?

The High Court granted an interim injunction in the very first hearing even though the judge had informed at the outset that they were not in favor of passing an ad interim injunction order. Further, this was a case where the brand names were not in dispute, but only the label/ trade dress and stylization along with a similar cookie trade dress.

Phillip Morris vs. Pelican Tobacco (Delhi High Court, Lit-IN2781) CS (COMM) 378/2021
Date of interim order: August 16, 2021
Lead Partner was Jyoti Kaur
Others that worked on the deal were: Nancy Roy, Renuka Rajan, Abhishek Kotnala

Brief description of deal

Suit for interim and permanent injunction restraining the Defendant from infringement of trade marks, passing off and unfair competition under Sections 27 and 29 of the Trade Marks Act and 62(1) of the Copyright Act. Plaintiff initiated the present action on the basis of its rights in the brand FOUR SQUARE, against the impugned product RED SQUARE, owing to the blatant misuse by the Defendants through their acts of imitating and/or copying unique and distinctive features of the Plaintiff’s well-known brand FOUR SQUARE and its associated stylization and labels.

Why is this deal particularly significant?

The High Court granted an interim injunction in the very first hearing. Further, this was a case where the two parties had tried to negotiate a settlement beforehand. However, despite several discussions across months, the settlement negotiations fell through and a suit was filed. The Court, in light of the similarity between the plaintiff’s product FOUR SQUARE and the defendants’ product RED SQUARE, restrained the Defendants from packaging and labelling their products by means of the impugned get-up also on their cigarettes as highlighted in the plaint.

POPSOCKETS vs. Flipkart India & Ors. (Delhi High Court, Lit-IN2758) CS(Comm) 496/2020
Date of interim order: December 18, 2020
Lead Partner was Jyoti Kaur
Others that worked on the deal were: Nancy Roy, Renuka Rajan, Abhishek Kotnala

Brief description of deal

Suit for interim and permanent injunction restraining the Defendant from infringement of trade marks, copyright, passing off and unfair competition under Sections 27 and 29 of the Trade Marks Act and 62(1) of the Copyright Act. Plaintiff initiated the present action on the basis of its rights in the brand POPSOCKETS, against the Defendants, owing to the illegal acts of the Defendants, through their unscrupulous acts of imitating and/or copying the Plaintiff’s unique and distinctive trademarks and the Plaintiff’s copyrights, through the website www.flipkart.com, interalia selling, offering for sale, manufacturing, supplying, distributing, exhibiting, soliciting, advertising, promoting, displaying, stocking, storing, packaging, shipping, delivering, conducting trade and dealing in inferior quality collapsible mobile grips / mobile holders.

Why is this deal particularly significant?

Online e-commerce website was directed by the High Court to furnish the names and addresses of the third-party sellers who are concerned with the URLs which have been taken down by defendant. Court also directed the Defendant to carry out an exercise, on its own and, remove wherever possible those URLs which infringe the plaintiff's mark(s) without waiting for a specific intimation, in that behalf, by the plaintiff.

This particular order was significant because the e-commerce website was directed to proactively remove URLs which infringed trademarks without waiting for specific intimation.

Woodland vs. Woodley India & Ors. (Delhi High Court, Lit-IN2754) CS(COMM) 385 of 2020
Date of interim order: September 18, 2020
Lead Partner was Jyoti Kaur
Others that worked on the deal were: Nancy Roy, Renuka Rajan, Abhishek Kotnala

Brief description of deal

Suit for interim and permanent injunction restraining the Defendant from infringement of trade marks, passing off and unfair competition under Sections 27 and 29 of the Trade Marks Act. Plaintiff initiated the present action on the basis of its rights in the brands WOODS and WOODLAND, against the Defendants, owing to the blatant misuse by the Defendants through their unscrupulous acts of using the Plaintiff’s unique, distinctive and well-known prior trademarks. The Defendants were also operating retail stores under the impugned mark WOODLEY.

Why is this deal particularly significant?

The High Court granted an ex parte interim injunction in the very first hearing. Further, this was a case where the Court held that the Plaintiff had made out a prima facie case in its favor and against the defendants and in case no ex parte ad interim injunction was granted, the Plaintiff would suffer an irreparable loss. The balance of convenience was also held to be in favour of the Plaintiff.