Trademarks.docx

Trademarks 1. The Eastman Photographic Materials Company Limited v. The Comptroller General of Patents, Designs, and Trademarks (‘Solio’ case)-Two common English words combined won’t be distinctive, but ‘sol’ meaning sun + io used for photographic paper won’t be descriptive, have to look at the word as a whole 2. Armstrong Paint v. Nu Enamel Corp-Nu-enamel though descriptive of enamel paint had acquired secondary meaning 3. British Sky Broadcasting Group v. Microsoft Corporation-Former’s TM had acquired goodwill such that ‘Skydrive’ for latter’s technology could not be allowed 4. Gucci Am v. Guess Inc-Guess made shoe line using Gucci’s Red-Green stripe designheld damaging to reputation 5. Yale University v. Yale Academy-Using university name and similar logo for coaching classes not allowed 6. Daimler Benz v. Hybo Hindustan-Using Benz logo for underwear-not permissible 7. PepsiCo v. Hindustan Coca Cola-Disparaging advertisement-Showing ‘Pappi’ with similar logo as a kid’s drink-amounts to TM infringement 8. Dabur India Ltd v. Colgate-Disparaging advertisement in respect of a generic class of goods including the plaintiff’s without specific reference will also be TM infringement 9. Godrej Sara Lee v. Reckitt Benckiser-Showing positive/better characteristics of one’s own product without denigrating the other will not amount to TM infringement 10. Eureka Forbes v. Pentair Water-Saying the other product is inferior and does not work will be TM infringement 11. Glaxosmithkline Consumer Healthcare v. Heinz India (P) Ltd-Complan and HorlicksCalling Horlicks cheap is not permissible, but price comparison and saying Horlicks makes you taller and stronger is permissible 12. Yahoo Inc v. Akash Arora-Passing off action can be brought in respect of services such as similar domain name though not covered by the Act 13. Satyam Infoway v. Sify Net Solutions-same as above 14. Mattel Inc v. MCA Records-Use of ‘Barbie’ in I’m a Barbie Girl Song-protected by parody exception under US patent law

15. Amrithdhara Pharmacy v. Satya Deo Gupta-Medicinal preparations-Amritdhara and Lakshmandhara-Former claimed TM infringement-Court held have to look at it from the perspective of average man of reasonable intelligence-have to look at overall similarity and not individual components-the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion, however ‘doctrine of acquiescence’ would apply as appellant had not objected to the use of trademark earlier in spite of being aware 16. De Cordova v. Vicks- Trademark over triangle shape - d/f copied VAPORUB - held infringement - word essential to the trademark, would make deceptively similar 17. Colgate Palmolive v. Lucas Bols-Using KLAERIN for toilet cleaner when TM exists in respect of CLAERYN for gin-attraction of the latter brand will be diminished 18. CA Sheimer v. TM Appn 19. Jardex TM Appln 20. Cadilla Heathcare v. Cadila Pharmaceuticals-Infringement is evaluated by looking at overall similarities causing confusion from point of view of average consumer and not dissimilarities-Phonetic similarity between medical products-amounted to infringement 21. Two Pesos Inc v. Taco Cabana-Trade dress such as restaurant logo is inherently distinctive and does not require secondary meaning to be trademarked 22. Qualitex Co. v. Jacobson Products Co- Color can be trademarked if it has acquired secondary meaning in relation to the product (i.e. people identify that color with that manufacturer), Functionality doctrine not applicable 23. Smith, Kline & French Labs Ltd. v. Sterling Winthrop-Color can be trademarked if it has acquired secondary meaning 24. Unilever’s TM Application-Color TM application for red and white in relation to toothpaste rejected-limited colors in market 25. John Wyeth’s Coloured Tablet TM-Application for TM on blue and yellow tablets rejected-standard use in pharma industry 26. Libertel Case-Color per se can be trademarked, but the specific pantone number should be provided, and it should have secondary meaning 27. Heilderberg Bauchelmie-Color combination which has not been spatially delimited is not a registrable trade mark, because it is not sufficiently precise that competitors can see

from the register exactly what is protected. Has to be systematic, predetermined and uniform. 28. Ralf Seickman v. German Patent Office-Scent cannot be registered because it is not capable of graphical representation 29. Philips v. Remington-If the shape of the product is necessary to the functioning of the product cannot be trademarked 30. Kemp &Company v. Prima Plastics Ltd-If the distinctive shape of the product requires reputation and goodwill in itself, can hold a person who copies it liable for trademark infringement 31. Shield Mark BV v. Joost Kist-TM over sound can be granted if it can be represented graphically through musical notes and not otherwise (written description of sound will not suffice) 32. Harley Davidson Application-Functionality test-sound was essential to functioning of engine-TM over sound would amount to patenting the engine, hence TM could not be granted 33. British Sugar Plc V James Robertson & Sons Ltd-British Sugar registered "Treat" as a trade mark for "Dessert sauces and syrups" called "Silver Spoon Treat" meant to be used as a dressing for desserts. James Robertson used the name "Robertson's Toffee Treat" for a spread it produced. It was held that there was no likelihood of confusion as the products had different purposes and different presentation. They were also of different specifications.