What's in a name? The changing paradigms of IP litigation before the Delhi High Court

Whether it is fashion, footwear or food, the common thread binding all these commodities is intellectual property (IP), a right that companies of late have more actively pursued and fought for in courts.

As the rise in the institution of IP cases before the Delhi High Court over the last year or so would suggest, it is certainly a good time to be an IP lawyer in the capital.

Bar & Bench spoke to legal practitioners who have represented major brands that recently went to court on what goes into litigating and defending one's intellectual property.

Companies are now "aggressively" pursuing IP rights

Karim’s, a popular name among food lovers in Delhi, found itself in the middle of a legal battle against a Mumbai-based outlet that used the same name, but with different vowels.

The Delhi High Court in May this year granted temporary relief to the old Delhi restaurant against the use of any possible association to its name by the defendant. 

Founding Partner at Diwan Advocates, Advocate Dr Farrukh Khan, who argued for the Delhi restaurant, highlighted that the “inter-blending” of trademark infringement with passing off, was one of the more challenging propositions in IPR cases.

“In the Karim v. Kareem Dhanani case, the facts were very unique. Kareem Dhanani had also got the registration of the trademark by way of the name ‘Kareem’ 12 or 14 years ago. And we filed a case earlier too, probably in 2015, or 2016, under the Trade Marks Act for infringement. At that time, it surfaced that Kareem Dhanani also held a trademark registration,” he said.

Khan and his team had filed rectification proceedings before the soon-to-be abolished Intellectual Property Appellate Board (IPAB).

A second round of litigation before the Delhi High Court ended with interim relief being granted to his client in May this year. 

According to Khan, the interim relief did not come easy, for the preliminary objection on maintainability was not only raised by the defendant, but also the Court. 

“We argued on the strength of passing off that we are not here under the provisions of the Trade Marks Act, but for passing off and my over-a-century-year-old, continuous, well-know trademark. So the validity of the registration of trademark should not come within the four corners of the passing off action which we have initiated,” he said.

Khan notices an increase in the number of IPR cases in the last few years.  

“Companies have started to realise the importance of intangible assets. And earlier, when we did not have the social media regime, infringement and similar actions were not very well reported. Suppose someone was selling Disney counterfeited bags in Chandni Chowk, Disney of course, would not have come to know because the targeted audience is a class apart. Having said that, with social media, companies are aggressively trying to protect their intellectual property rights,” he highlighted.

He also noticed companies actively filing cases against insignificant players in an "aggressive pursuit" to protect IP rights.

Unintended consequences and rise in IP cases

Anuradha Salhotra of Rahul Chaudhary & Partners shared an interesting upshot in an IPR case where they recently represented Coca-Cola’s Coke Studio against a culinary video blog called Cook Studio.

The lawyers saw the platform’s popularity actually going up as a consequence of the suit against their client, and wondered if that was the “true intention” of filing the suit. 

The matter was ultimately settled by both parties after the change from Cook Studio to Cook Pro 6 was mutually agreed upon.

Advocates Adarsh Ramanujan and Lzafeer Ahmad, who represented the proprietor of the Cook Studio mark, maintained that the biggest challenge for them was the anxiety of their individual client, as he used the mark in a bona fide manner for almost six months and had close to a million subscribers.

Ramanujan specialises in IPR and has observed a large number of infringement cases coming to courts in the last few years. 

“One of the reasons could be the creation of the IP Division and the streamlining of the process. The creation of specialised IPD benches will inspire confidence amongst the stakeholders looking to enforce their IP rights,” he said. 

In fact, data from the Delhi High Court shows that 635 cases were instituted after the IPD was created in July that year. In 2022 alone, a whopping 1,654 cases have been instituted so far.

Ignorance and disobedience of IP laws

Shobhit Agrawal experienced the execution of court directions to be a major hurdle, especially when the defendants consciously avoid litigation. 

Agrawal, who was appeared in cases involving a major footwear brand and an international fitness company recently, said that run-of-the-mill companies often choose to ignore judicial orders and court proceedings.

Several such cases, therefore, result in ex-parte injunction orders.

“The court may pass orders, but the defendants continue to do what they are doing in complete disobedience, as they know that all the efforts will have to be taken by the rights holder to come after them,” he said. 

There also seems to be increased awareness among manufacturers to get designs registered, but Agrawal underscored a lack of jurisprudence on design laws due to negligible litigation historically. 

“For example, in trademark, there is jurisprudence of 20-30 years. Similarly in copyright and patents. Probably in design, in the last 10 years perhaps there are not more than 15 good cases that add jurisprudential value. In that sense, there is not enough material how two designs should be compared. What is prior art; what is novelty in a particular design. If you see a lot of English and American cases, right from in 1930 onwards in fact, you can find some great jurisprudence on how designs are to be looked at,” he pointed out.

Advocate Rajeshwari H offered an unpopular opinion about how in cities like Delhi, she noticed complete ignorance of IP laws and how small business get into trouble by adopting names that inadvertently infringe other registered marks.

She recently represented Times Coaching Centre in a trademark battle against Triumphant Institute of Management Education, popularly known as T.I.M.E. 

For her client, a teacher, the sudden injunction came as a “bolt from the blue”.

“For many lawyers and big clients, an injunction order is just to stop other people from infringing their marks. But here when I saw the way and manner in which the teacher was shocked and took it so deeply - that she kept crying for days, it moved me - and made me feel that there is something wrong about ex-parte orders,” said Rajeshwari.

Luv Virmani, who represented T.I.M.E, said that the discovery of the infringement was made during a search on the internet, where it saw the “deceptively similar” trademark "TIMES Coaching”.

“The plea of the defendant was rejected by the Court on merits, as it was finally held that the dominant part of the plaintiff’s trade mark, T.I.M.E., had acquired distinctiveness and has come to be associated exclusively with the plaintiff,” said Virmani.

The primary challenge, he underlined, was the defendant’s subsequent act of adopting the mark "Future TIMES Coaching” after being restrained from using the mark "Times Coaching". 

“Our argument was that mere addition of a prefix does not amount to compliance with the injunction order since the defendant was still using the word TIMES, which is deceptively similar to our client’s trademarks. Ultimately, the Court held that the defendant’s intention behind using ‘Future TIMES Coaching’ was to encash upon the plaintiff’s reputation, as it had no plausible explanation for adoption of the word TIMES,” he added.

Big brands get their payday

Advocate Prithvi Singh termed the trademark tussle between his client - the manufacturer of the popular footwear brand Woodland - with a couple of old Delhi traders as a “classic counterfeit case”.   

The suit ended in the Delhi High Court ordering seizure of the counterfeit items by the court-appointed local commissioner and the defendant being saddled with ₹5 lakh costs owing to the charges incurred by the plaintiff. 

“There was significant seizure from one of the defendants, who decided to settle the matter with the plaintiff without any contest. The seized products were also handed over to the plaintiff for destruction,” shared Singh.

There are also brands such as Delhi’s well-known co-working cafe chain Social, which moved court against its doppelgänger from another city. 

For SOCIAL’s legal team comprising Advocates Shikha Sachdeva, Mugdha Palsule and Shreya Das from ASM Law Offices, the case did not pose any hurdles as their client had almost 125 registrations for its trademark and variants. 

“The Delhi High Court recognised the rights of our client in its trademark ‘SOCIAL’. In fact we have 24 orders from the Delhi High Court inter-alia restraining third parties from infringing the registered trademark ‘SOCIAL’,” said Sachdeva, Managing Partner at the firm.

With the brand being "close to her heart" Sachdeva felt satisfied with the case's outcome.

“SOCIAL is very close to my heart since I have been involved in creating their IP portfolio from the very beginning,” she said.