MEMORANDUM ON BEHALF OF PETITIONERS

GROUP - 1

BEFORE THE HONOURABLE DISTRICT COURT OF ERNAKULAM

ORIGINAL SUIT NO.2 14 OF 202 3

(FILED UNDER SECTION 134 OF THE TRADEMARKS ACT, 1999)

IN THE MATTER OF

KERALA SPICES LTD. ……………………………………. PETITIONER

V.

SOUTHERN RICE MILLS.…………………..RESPONDENT

WITH
O.S. No. 214 of 2023

MEMORANDUM ON BEHALF OF PETITIONERS

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TABLE OF CONTENTS

1. LIST OF ABBREVIATIONS
2. INDEX OF AUTHORITIES
3. STATEMENT OF JURISDICTION
4. STATEMENT OF FACTS
5. ISSUES RAISED
6. SUMMARY OF ARGUMENTS
7. ARGUMENTS SUPPORTED BY AUTHORITIES
8. PRAYER

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LIST OF ABBREVIATIONS

AIR: All India Reporter

Anr.: Another

Art: Article

COI: Constitution of India

Etc.: Etcetera

FIR: First Information Report

HC: High Court

Hon’ble: Honourable

Ors: Others

POCSO: Prevention of Children from Sexual Offences

SC: Supreme Court

SCC: Supreme Court Cases

SCR: Supreme Court Reports

Sec: Section

SLP: Special Leave Petition

U/A: Under Article

U/S: Under
UOI: Union of India
v.: Versus Viz:
Videlicet WP:
Writ Petition

KSL: Kerala Spices Ltd.

SRM: Southern Rice Mills

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INDEX OF AUTHORITIES

CASES

Zara Fashion Vs. Zara Food, 19 may 2015

M/S Atlas Cycle Industries Ltd. V. Hind Cycles Limited, ILR1973 Delhi 393

Yahoo!, Inc. v. Akash Arora, 1999 IIAD Delhi 229

Retail Royalty Company v. Pantaloons Fashion & Retail Limited, 23 September, 2015
Cadila Health Care v. Cadila Pharmaceutical Ltd26 March, 2001
Parle Products Pvt Ltd. And Anr vs Future Consumer Ltd. And 4 Ors12 January, 2021
Laxmikant Patel v. Chetanbhai Shah, 4 December, 2001

Midas Hygiene Industries v. Sudhir Bhatia, 2004 (73) DRJ 647

ITC Limited v. Maurya Hotel (Madras) Pvt Ltd, 22 July, 2021

Hearst company Vs Dalal avenue verbal exchange Ltd. (1995) 2 CALLT 346 HC

Amritdhara Pharmacy Vs Satya Deo Gupta, 1963 AIR 449

MakeMyTrip (India) Private Limited v. Orbit Corporate Leisure Travels, CS(COMM)
643/2017The Coca-Cola Company Vs. Bisleri International Pvt. Ltd (2009) 164 DLT
59
Himalaya Wellness Company & Ors. V. Abony Healthcare Limited through its
Directors & Anr. CS(COMM) 476/2021
N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714

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STATUTES

TRADEMARKS ACT,1999

ONLINE SITES
Manupatra
Live Law
Bar and Bench
SCC Online

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STATEMENT OF JURISDICTION

This Honourable Court has jurisdiction over this matter under Section 134 of
the Trade Marks Act, 1999.
Section 134 states that suits for infringement of a registered trade mark or
relating to any right in a registered trade mark must be instituted before a
District Court.
For the purpose of Section 134, a District Court having jurisdiction includes a
District Court within the local limits of whose jurisdiction, at the time of the
institution of the suit, the plaintiff actually and voluntarily resides or carries on
business or personally works for gain.
In the present case, the plaintiff Kerala Spices Ltd actually and voluntarily
resides within the local limits of the jurisdiction of this Honourable Court.
Therefore, this Honourable Court has jurisdiction to hear and determine this suit
STATEMENT OF FACTS

1. The petitioner, a company known as “Kerala Spices Ltd”, was dealing in

various products including spices, curry powders and different varieties
of rice powder and wheat powder from 2020. In 2021 they stopped
production of rice powder and wheat powder. They sold their spices and
curry powders under the brand name “Kitchen Magic”. They had applied
for registering the mark “Kitchen Magic” for their spices and curry
powders in 2020.

2. In 2021 they received a lawyer notice claiming that the mark “Kitchen
Magic” was used by a company named “Southern Rice Mills” from 2015
for marketing rice and rice products. The petitioner sent a reply stating
that they had applied for registration of the mark. They also gave their
temporary registration number.

3. Respondent thereafter filed an opposition before the Trade Marks

Registry. The opposition proceedings went on till the year 2022 when the
Registry granted registration to “Kerala Spices Ltd”. The respondent
challenged the registration before the Intellectual Property Appellate
Board (IPAB), Chennai which was also rejected.

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4. The respondent continued selling his rice and rice products under the
name “Kitchen Magic”. In 2023 petitioner is filing an original suit for
infringement for restraining the respondent from using their mark.

5. Later the petitioner brings an injunction petition in the suit for the same.
Respondent files a counter claim for restraining the petitioner from using
the mark for rice and rice products.

ISSUES RAISED

ISSUE 1

Whether the petitioner, Kerala Spices Ltd., has a valid trademark registration for
the mark "Kitchen Magic" for spices and curry powders?

ISSUE 2

Whether the respondent, Southern Rice Mills, is infringing on the petitioner's

trademark by using the mark "Kitchen Magic" for rice and rice products?

__________________________________________________________________________________

ISSUE 3

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Whether the petitioner is entitled to an injunction to prevent the respondent

from using the mark "Kitchen Magic?

_________________________________________________________________
SUMMARY OF ARGUMENTS

ISSUE 1

Whether the petitioner, Kerala Spices Ltd., has a valid trademark registration for the
mark "Kitchen Magic" for spices and curry powders?

Kerala Spices Ltd. holds valid trademark registration for "Kitchen Magic" under
Section 2(1) (zb) of the Trademarks Act. This grants them exclusive rights for spices
and curry powders. . Section 83 affirms the Intellectual Property Appellate Board's
authority, validating the petitioner's registration

ISSUE 2

Whether the respondent, Southern Rice Mills, is infringing on the petitioner's

trademark by using the mark "Kitchen Magic" for rice and rice products?
_____________________________________________________________________
According to the section 29 of Trade Mark Act, 1999.The respondent, southern Rice
Mills is infringing the trade mark of petitioner's, Kerala spices limited Trade Mark
“kitchen Magic”. The Infringement of a registered trade mark has been exclusively
defined under section 29(1) Trademarks Act,1999 provides an exhaustive definition of
infringement of a registered trade mark and states that “A registered trade mark is
infringed by a person who, not being a registered proprietor or a person using by way
of permitted use, uses in the course of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner as to render the use of the mark
likely to be taken as being used as a trade mark. “So, in this case it amounts to
infringement of Trade Mark.

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ISSUE 3

Whether the petitioner is entitled to an injunction to prevent the respondent from using
the mark "Kitchen Magic?

The trademark Kerala magic used by Southern rice Mills is the exact replica of the
registered trademark used by Kerala spices Ltd. The petitioner is entitled to a
permanent injunction as there is clear trademark infringement by Southern rice Mills.

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ARGUMENTS ADVANCED

ISSUE 1

Whether the petitioner, Kerala Spices Ltd., has a valid trademark registration for the
mark "Kitchen Magic" for spices and curry powders?

The petitioner, Kerala Spices Ltd., has a valid trademark registration for the mark
"Kitchen Magic" for spices and curry powders

Sec 2(1) (zb) defines trade mark as a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one person from those
of others and may include shape of goods, their packaging and combination of colours

The company Kerala spices Ltd, is a business entity who were concerned with selling
of spices, curry powder along with that they sell variety of rice powder and wheat
powder. In 2021 manufacturing, selling of rice powder and wheat powder had been
stopped. The leftover spice business is started on the name “kitchen magic “and
applied for the trademark for the same in the year 2020. They are issued with a
temporary registration number at that time. At the year 2022 they had been granted
with the trademark registration of kitchen magic for the petitioner i.e., Kerala spices
ltd

There are some e essential requirements for registration of a trademark for goods
which are;

• It must be a mark that is a device, brand, heading, label, ticket, name or an

abbreviation of a name, signature, word, letter or numeral shape of goods,
packing or combination of colours or any combination thereof.
• It must be capable of being represented graphically.
• It must be capable of distinguishing the goods or services of one person from
those of others.

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• It must be used or proposed to be used in relation to goods or services.

• The use must be of a printed or other visual representation of the mark.
So it is necessary to that to fulfil the trademark requirements in order for the
registration. Kerala spices limited obtain the trademark through the process of
law by fulfil all the requirements

Next issue is related to the likelihood of confusion Likelihood of confusion is a part of

proving trademark infringement. It occurs when two trademarks are extremely similar
and the goods or services, they are used for are so closely related that customer can
mistakenly believe they come from the same source.

Likelihood of confusion can apply to:

· Goods versus goods (e.g., salsa versus chips)

· Services versus services (e.g., restaurants versus hotels)

So here is a high chance to create a likelihood of confusion so the southern rice Mills
should be banned from using the name for their product. In the case, the petitioner has
applied for and obtained registration of the mark "Kitchen Magic" for spices and curry
powders. The respondent, on the other hand, is using the same mark for rice and rice
products. The two products are not identical, but they are related goods.

In the case N.R. Dongre v. Whirlpool Corporation1

The Supreme Court held that the use of a similar trademark for related goods is likely
to cause confusion among consumers and amounts to trademark infringement.

By taking this precedent it will be sufficient to establish that the similar name will
create confusions so that southern rice mill should be banned from using this name.

Section 31 states as Registration to be prima facie evidence of validity.

(1) In all legal proceedings relating to a trade mark registered under this Act
(including applications under section 57), the original registration of the trade mark
and of all subsequent assignments and transmissions of the trade mark shall be prima
facie evidence of the validity thereof.

1 (1996) 5 SCC 714

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(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to
be invalid on the ground that it was not a registrable trade mark under section 9 except
upon evidence of distinctiveness and that such evidence was not submitted to the
Registrar before registration, if it is proved that the trade mark had been so used by the
registered proprietor or his predecessor in title as to have become distinctive at the
date of registration.

So, the registered trademark which the company have can be taken as the answer for
the validity question raised by the respondent

The matter is also challenged earlier by the respondent before the intellectual property
appellate board Chennai, which was also rejected by the board itself

In the light of Section 83 of the trademark act 1999 In case of any dispute
regarding the registration of a trademark, this section establishes the jurisdiction of the
Intellectual Property Appellate Board (IPAB) to hear and adjudicate the matter.

So there is no question validity in the order of intellectual property appellate board,

the respondent doesn’t question the validity further, it’s also known to them that
petitioner has valid trademark.

it can be argued that Kerala Spices Ltd. has a valid trademark registration for the mark
"Kitchen Magic" for spices and curry powders, and that the respondent's use of the
mark for rice and rice products constitutes trademark infringement. The petitioner's
registration was granted after due process, and they have the exclusive right to use the
mark for their specified goods. So in the light of all these contentions it is established
that Kerala Spices Ltd has valid trademark registration under the name kitchen magic
for the purpose of selling curry powder and spices in the name kitchen magic

1.1 Grounds for ineligibility of trademark of respondent against the registration

of Kerala Spices Ltd.

The trademark of Southern Rice Mills is ineligible for registration with Indian case
laws and provisions, the petitioner, Kerala Spices Ltd., can rely on the following:

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Absolute Grounds for Refusal of Registration: -

Section 9 of the Trade Marks Act, 1999, provides for the absolute grounds for refusal
of registration of a trademark. These grounds include marks that are:

1. Devoid of any distinctive character (Section 9(1)(a))

2. Deceptive or misleading (Section 9(1)(b))
3. Contrary to public order or morality (Section 9(1)(c))
4. Prohibited under any emblem or name Act (Section 9(1)(d))
5. Identical or deceptively similar to an existing registered trademark (Section
9(1)(e))
6. Geographical indications (Section 9(1)(g))
7. Generic terms (Section 9(1)(j))

In the present case, the petitioner can argue that the respondent's trademark "Kitchen
Magic" is ineligible for registration on the following grounds:

Devoid of any distinctive character: The term "Kitchen Magic" is a generic term that
is commonly used in the kitchen to describe a variety of products and services related
to cooking and food preparation. It does not have any distinctive character or capacity
to distinguish the respondent's goods from those of other traders.

Deceptive or misleading: The term "Kitchen Magic" is likely to deceive or mislead

consumers into believing that the respondent's rice and rice products have some
magical or extraordinary properties, when in fact they do not. This is especially true in
light of the fact that the petitioner had been using the same trademark for its spices
and curry powders since 2020.

Indian Case Laws

The following Indian case laws support the petitioner's contention that the
respondent's trademark "Kitchen Magic" is ineligible for registration:

Procter & Gamble Co. v. V.P.S. Malik & Sons2,: The Supreme Court of India held
that a trademark must be distinctive and capable of distinguishing the goods of one

2 AIR 1963 SC 1709

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trader from those of another. A trademark cannot be registered if it is a generic term or

a term that is commonly used in the trade.

N.R. Dongre v. Whirlpool Corporation3,: The Delhi High Court held that a
trademark cannot be registered if it is likely to deceive or mislead the public. The
court further held that a trademark should not be such that it gives the trader
concerned a monopoly over the use of a common word or phrase.

Emami Ltd. v. Dabur India Ltd4., The Supreme Court of India held that a trademark
cannot be registered if it is deceptively similar to an existing registered trademark. The
court further held that the similarity of trademarks should be judged from the point of
view of an average consumer.

Conclusion

Based on the above, the petitioner can legally contend that the respondent's
trademark "Kitchen Magic" is ineligible for registration with Indian case laws
and provisions. The petitioner can file a cancellation petition before the Trade
Marks Registry seeking cancellation of the respondent's trademark registration.
The petitioner can also file a suit for infringement against the respondent for
restraining it from using the trademark "Kitchen Magic" for rice and rice
products.

3
2001 PTC 500 4
2006 PTC 203

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ISSUE 2

Whether the respondent, Southern Rice Mills, is infringing on the petitioner's

trademark by using the mark "Kitchen Magic" for rice and rice products?

1.RESPONDENT INFRINGING THE TRADE MARK OF PETITIONER AS

PER THE SECTION 29 OF TRADE MARK ACT 1999

The Trademark Act, 1999, aims to provide an exclusive right for the use of the brand
name by the brand owner and also stops the unauthorized use of the brand name by
any other users or competitors. Therefore, for the protection of the brand name and the
value created, the brand logo and name are registered under the Trademark Act,
1999.In case there is deceptive usage of the brand name or logo, the Act also provides
for remedies to the brand owner to sue the person using the brand name. The
unauthorized usage of a brand mark is termed as Trademark Infringement.
The Infringement occurs when other person uses a trademark that is same or similar to
registered trademark for the same or similar goods/services. Section 29 of the Indian
Trade Marks Act, 1999, talks about various aspect of infringement of registered
trademarks. As per Section 29(1), "a registered trademark is infringed by a person
who, not being a registered proprietor or a person using by way of permitted use, uses
in the course of trade, a mark which is identical with, or deceptively similar to, the
trademark in relation to the goods or services in respect of which the trademark is
registered and, in such manner, as to render the use of the mark likely to be taken as
being used as a trademark".
In simple words, it is defined as the violation of exclusive rights that are attached to a
registered trademark without the permission of the registered owner or licensees. The
courts have time and again assumed that similarity of two marks and the kind of goods
and services results in causing confusion in the minds of general public. They may
take an undue advantage of enjoying the hard-earned reputation of the registered
trademark. In order to have a successful claim against a person infringement of
trademark, what needs to be proved is that the infringing trademark is deceptively
similar or identical to the registered trademark.
In this case the said two marks have an overall structural and phonetic similarity, and
consequently their use in respect of the same kind of goods is likely to cause
deception or confusion.

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In “Zara Fashion Vs. Zara Food"5: In this case, renowned fashion brand ZARA filed
a suit for infringement and passing of their well- known brand ZARA against a
restaurant "ZARA TAPAS BAR”. The Delhi High Court ruled out in favor of the
renowned fashion brand ZARA, ordered the restaurant to change its name. The court
held that ZARA had been used by the fashion brand since 1975 and has had a presence
in India since 1986 and also had opened its first retail outlet in India since 2010. It is
undoubtedly that ZARA has a strong presence in India and the tapas restaurant wanted
to benefit from the reputation and goodwill of ZARA by adopting a tradename so
similar to the ZARA brand.

WHEN CAN A PERSON BE CONSIDERED AS INFRINGING A TRADE

MARK?

A registered trademark is said to be infringed in case of the following situation: →If

the mark in dispute is identical with or deceptively similar to the registered trademark
and is in relation to the same or similar goods or services;
→If the identical or similar mark can cause confusion in the minds of general public
to have an association with the registered trademark
If the registered trademark is used as a part of trade name or business concern for
goods and services in respect of which the trademark is registered
→If the trademark is advertised and as a result it takes unfair advantage or is contrary
to the honest practices or is detrimental to the distinctive character and reputation of
the registered trademark.
→If the registered trademark is used in the material meant for packaging or labelling
of other goods or as a business paper without due authorization of the registered user.

In M/S Atlas Cycle Industries Ltd. V. Hind Cycles Limited, ILR 6, while dealing
with two rival trademark, ‘Royal Star’ and ‘Eastern Star’ of the parties, the Division
Bench of this Court held that the trademark ‘Royal Star’ adopted and used by the
Defendant was similar to the plaintiff’s trademark ‘Eastern Star’.In the said case also,
the trademark of the plaintiff fall in the same class though the products of the
defendants are different they render services in the same field. The defendant is
deceptively similar to that of the trademark used by the plaintiff which is creating
confusion or deception to the general public which is causing annoyance to the
plaintiff. The use of a deceptively similar monogram by Respondent constitutes an
infringement of the registered trade mark No.12052 of the plaintiff.

In “Yahoo!, Inc. v. Akash Arora"7, wherein the defendant had a domain name ‘Yahoo

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India!’ which was identical and phonetically similar to the plaintiff’s trademark
‘Yahoo!’. The court held that internet users would be confused and deceived into

5
19 may 2015 6 1973 Delhi 393 7 1999 IIAD Delhi 229
believing that both the domain names have the same source.
Another interesting decision in this arena was delivered by the Delhi High Court in
the case of “Retail Royalty Company v. Pantaloons Fashion & Retail Limited 8. In
this case, the plaintiffs, owners of the clothing brand American Eagle Outfitters,
alleged that the mark being used by the defendants, i.e., Urban Eagle Authentic
Outfitters, was deceptively similar to their own and amounted to trademark
infringement under section 29(1).
Hence, there is not formula set in stone for determining whether two marks are
deceptively similar or not. It is important to note that the courts do not proceed to
review the respective trade marks in isolation, but take into consideration the actual
brand value and goodwill that a mark carries along with the implications that a
potential infringement may have on its reputation.
“Cadila Health Care v. Cadila Pharmaceutical Ltd9
The Supreme Court laid down certain criteria to be taken into account when
determining trademark infringement: first, the nature of the marks/labels used; second,
the degree of resemblance between the marks/labels; third, the nature of goods for
which the marks are used; and fourth, the method of purchasing the goods.
In order to ascertain the role of intention in trade mark infringements, courts must
apply a two-fold test of reasonableness: first, to check whether a prudent person would
have been capable of presuming that the defendant’s mark was similar to the
plaintiff’s; and second, to determine whether the defendant reasonably understood that
by using a mark similar to the plaintiff they would obtain undue benefit by taking in
the latter’s goodwill. For the second, the court will also have to look into several
factors such as the nature of business, degree of similarity and others.

Parle Products Pvt Ltd. And Anr vs Future Consumer Ltd. And 4 Ors10
Similar to the present case facts the Biscuit manufacturers Parle and Future Consumer
Ltd are having a litigation in the Bombay High Court over a dispute related to the
infringement of trademarks in packaging. Plaintiff (parle products) alleged that the
packaging of the defendant’s products had been substantially reproduced from theirs
and therefore, it appeared deceptively similar. The bench of Justice A K observed that
the Future Consumer Ltd has violated the trademarks of Parle products in packaging,
and passed an ad-interim injunction against it.

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The injunction granted in favor of Parle Products case was in line with the precedents

8
23 September, 2015 9 26 March, 2001 10 12 January, 2021
set in the cases of “Laxmikant Patel v. Chetan Bhai Shah11 “and “Midas Hygiene
Industries v. Sudhir Bhatia"12, where it was reiterated that once it is established that
there is deceptive similarity and trademark infringement, the court must proceed to
grant injunctions and appoint appropriate persons for the effective implementation of
the injunction.
ITC Limited v. Maurya Hotel (Madras) Pvt Ltd13
In this case, ITC Limited was the owner of the registered trademark "MAURYA" for
various goods and services, including hotels and restaurants. The Maurya Hotel
(Madras) Pvt Ltd was using the trademark "MAURYA" for its hotel and restaurant
business without the permission of ITC Limited. ITC Limited filed a suit for
trademark infringement and passing off against Maurya Hotel (Madras) Pvt Ltd. The
Madras High Court held that the trademark "MAURYA" was a well-known trademark
and that Maurya Hotel (Madras) Pvt Ltd was using the trademark without any
authorization from ITC Limited. The Court also held that the use of the trademark
"MAURYA" by Maurya Hotel (Madras) Pvt Ltd was likely to cause confusion among
consumers and lead to passing off. The Court granted a permanent injunction
restraining Maurya Hotel (Madras) Pvt Ltd from using the trademark "MAURYA" for
its hotel and restaurant business.
The case of ITC Limited v. Maurya Hotel (Madras) Pvt Ltd is similar to the case of
Kerala Spices Ltd v. Southern Rice Mills in that it involves a dispute over the use of
the same trademark for different goods and services. In both cases, the plaintiff is the
owner of a registered trademark and the defendant is using the trademark without the
permission of the plaintiff. In both cases, the plaintiff has filed a suit for trademark
infringement and passing off.

Hence the respondent infringing the plaintiff Trade Mark “kitchen magic" to sell
their rice and rice products. So, it amounts to trade mark infringement according
to the section 29 of trade mark act 1999.

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11
4 December, 2001 12 2004 (73) DRJ 647 13 22 July, 2021
ISSUE 3

Whether the petitioner is entitled to an injunction to prevent the respondent from using
the mark "Kitchen Magic”?

A trademark includes a name, word, or sign that differentiates goods from the goods
of other enterprises. Marketing of goods or services by the procedure becomes much
easier with a trademark because recognition of product with the trademark is assured
and easier. The owner can prevent the use of his mark or sign by another competitor. A
trademark can be a logo, picture mark or a slogan.
The Trademark Act, 1999 gives the right to the police to arrest in cases of
infringement of the trademark. The Act gives a complete definition for the term
infringement which is frequently used. In Trademark Act, it provides punishments and
penalties for the offenders. It also increases the time duration of registration and also
registration of a non-traditional trademark.
A service mark is any symbol name, sign, device or word which is intentionally used
in trade to recognize and differentiate the services of one provider from others.
A service mark is expected to play a critical role in promoting and selling a product or
services. A product is indicated by its service mark, and that product’s service mark is
also known as a trademark.
The usage of the trademark by unauthorized means or illegal means by producing it in
trading is known as trademark piracy. If there is an infringement of trademark, the
owner of the registered trademark can take legal action and for an unregistered
trademark.
A common concept of a trademark is that the owner of a registered trademark has a
more legal right for protection than the owner of unregistered trademark.
Infringement of trademark
A registered trademark is infringed by a person who not being a registered proprietor
or a person using by way of permitted use in the course of trade, a mark which is
identical with or deceptively similar to the trademark in relation to goods or services
in respect of which the trademark is registered. After infringement, the owner of the
trademark can go for civil legal proceedings against a party who infringes the
registered trademark. Basically, Trademark infringement means the unapproved use of

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a trademark on regarding products and benefits in a way that is going to cause

confusion, difficult, about the trader or potentially benefits.
Infringement is the violation of exclusive right granted to a registered proprietor of a
trademark, in India it is governed under Section 29 of the Trademarks Act, 1999.
As per Section 29(1), “a registered trademark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively similar to, the trademark in
relation to the goods or services in respect of which the trademark is registered and, in
such manner, as to render the use of the mark likely to be taken as being used as a
trademark”.
Section 29(9) clarifies that where the distinctive elements of a registered trademark
consist of words, the trademark may be infringed by use of these words orally or in
writing.
Case laws on Infringement
Hearst company Vs Dalal avenue verbal exchange Ltd.14
The courtroom held that a trademark is infringed when a character in the course of
trade makes use of a mark which is same with or deceptively similar to the trademark
in terms of the goods in respect of which the trademark is registered. Use of the mark
by using such man or woman needs to be in a manner which is more likely to be taken
as getting used as a trademark.
Amritdhara Pharmacy Vs Satya Deo Gupta,15
In this case for determining the connection in two words related to an infringement
action was stated by the Supreme Court that there must be taken two words which
are deceptively similar. And judge them by their appearance and by their sound.
There must be considered that the goods to which they are to be utilised. There must
be a consideration of the nature and kind of customer who would be likely to buy
those goods. In fact, it must be considered the surrounding circumstances and also
must consider what is likely to occur if each of those trademarks is used in common
ways as a trademark for the goods of the particular owners of the marks. Section
28(1) in The Trade Marks Act, 1999
(1) Subject to the other provisions of this Act, the registration of a trade mark shall,
if valid, give to the registered proprietor of the trade mark the exclusive right to
the use of the trade mark in relation to the goods or services in respect of which
the trade mark is registered and to obtain relief in respect of infringement of the
trade mark in the manner provided by this Act.
CIVIL REMEDIES-

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When instances of infringement occur, the court of competent jurisdiction, not lower
than District Court can be approached for grant of interlocutory injunction, Anton

14
(1995) 2 CALLT 346 HC
15
1963 AIR 449
Piler Orders, damages, account of profits, confiscation and destruction of goods using
the infringing trademark and cost of legal proceedings.
The Trade Marks Act, 1999 lays down certain civil remedies to be given to the ones
whose trademark has been infringed. They are
Temporary, permanent and interim injunction, restraining further use of trade mark.
Damages Account of profits
Order for delivery-up of the infringing goods, labels and marks for destruction or
erasure
Cost of legal proceedings
Appointment of a local commissioner which is akin to an “Anton Piller Order” for
search, seizure and preservation of infringing goods, account books and preparation of
inventory, etc.
Restraining the infringer from disposing of or dealing with the assets in a manner
which may adversely affect plaintiff ability to recover damages, costs or other
pecuniary remedies which may be finally awarded to the plaintiff.
(Anton Pillar Order- A court order which requires the defendant to permit the plaintiff
or their legal representative to enter into the defendant’s premises to obtain the legal
evidences for that particular case)
A civil remedy that is often claimed is handling of the profit accounts along with a
command for delivery or removal of the products that have been infringed.
Injunctive relief
Injunction is one of the civil remedies recognised under the TM Act, along with
damages or account of profits. It is the most essential remedy sought in every suit for
infringement. Injunctive relief can be interim or permanent. Interim injunctions are
granted for a specific time or during the pendency of the legal proceedings. A
permanent injunction is granted when the plaintiff succeeds in their claim of
infringement and a final decree is awarded.
Other reliefs
An interim injunction can be combined with other reliefs, such as:

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An injunction to restrain the defendant from disposing of their assets until the trial
ends or the judgment is delivered;
Orders to enter the premises of the defendant and take inspection of relevant
documents and articles, and take copies or remove them to safe custody; or Orders
to search and seize against unnamed or unknown defendants.

Delhi High Court in a famous case called MakeMyTrip (India) Private Limited v.
Orbit Corporate Leisure Travels3, declared a judgment based on the law of
acquiescence, thereby not restraining the defendant to carry on with its trademark. The
facts of the case go as the plaintiff company filed a suit claiming that the defendant
cannot carry on using a mark named GETMYTRIP, for the plaintiff claimed that the
mark was deceptively similar to theirs. But knowing the same, the plaintiff carried on
their activity till one fine day they filed the suit. On this ground the court quashed the
suit thereby allowing the defendant to carry on. This case was indeed remarkable for it
made it clear that awareness and knowledge is important before proceeding with a
suit. Hence, ignorance is not welcoming when it comes to infringement of trademarks.
In the famous case of The Coca-Cola Company Vs. Bisleri International Pvt. Ltd17,
the Delhi High Court was firm with the fact that if there exists any amount of
infringement, then the court’s jurisdiction is likely to be present in order to entertain
the concerned suit. With the confusion of a brand-name MAAZA being passed off
from the plaintiffs’ company to that of the defendant’s, brought in the solution to the
case. The defendant used the trademark both in domestic as well as foreign countries.
Further, it was the plaintiff who filed a permanent injunction, thereby claiming losses
suffered by the company. The court inferred that the defendant is liable for
infringement due to usage of trademark beyond the permissible extent and as a result
it issued an interim injunction against the defendant.
Case Title: Himalaya Wellness Company & Ors. V. Abony Healthcare Limited4
through its Directors & Anr., CS(COMM) 476/2021
The plaintiffs had approached the court against defendants’ use of trade names
“LIV.55 DS”, “LIVA 55” and “LIV. 999” for liver tonic similar to theirs, which was
being marketed using a trade dress also deceptively similar to the plaintiffs. The
plaintiffs (who sell their products under umbrella brand “Himalaya”) claimed usage
of their trademark “LIV .52” since 1957, when it was registered. It was averred that
due to continuous usage, the plaintiffs’ “LIV .52” marks had acquired goodwill and
reputation, as well as become source identifiers.

3 CS(COMM)
643/2017 17 (2009)
164 DLT 59
4 CS(COMM) 476/2021

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In support of their case, the plaintiffs relied on the decision rendered by Division
Bench of the Delhi High Court in Himalaya Drug Company v. SBL Ltd., wherein it
was held that the expression “LIV” even in isolation was an infringement of the most
prominent feature of plaintiffs’ registered trademark.
After a careful analysis, Justice C. Hari Shankar observed that the defendants (who
had been marketing their products since 2019) had consciously adopted a trademark
and trade dress deceptively similar to the plaintiffs’.

The Court opined: “…A bare glance at the trade dress of the plaintiffs and the
defendants makes it ex facie apparent that the defendant has consciously copied the
trade dress of the plaintiff”.
It was further noted that the products under consideration being Ayurvedic
preparations sold over-the-counter, there was every likelihood of an unwary consumer
purchasing the defendants’ product believing it to be the plaintiffs.
Adverting to the likelihood of confusion between the parties’ trademarks, Justice
Shankar said: “To the eyes of a consumer of average intelligence and imperfect
recollection, there is every chance of confusion between the marks LIV.55 and LIV.52
especially when both marks are used for liver tonic on bottles and packs which are
identical in appearance.”
Pertinently, the Court remarked that it was not uncommon in the pharma industry for
trade names to be suffixed with different strengths (such as “Azithral 250” and
“Azithral 500”). “The appearances of the packs are, in such cases, deliberately made
dissimilar, so as to avoid any confusion between products of different strengths”, the
Court said.
As such, the defendants’ use of “LIV” in their trade name and adoption of a
deceptively similar trade dress were held to give rise to confusion. The fact that their
products reflected the name of the company “Abolab Herbals” was held to make no
substantial difference to the likelihood of confusion between the trade dresses of the
parties.
On rival contentions regarding sale of infringing products, the Court opined that actual
sale was not a pre-requisite for infringement.
In effect, the defendants were injuncted against using marks/trade dress deceptively
similar to the plaintiffs in respect of their “LIV .52” product, either for liver tonics or
for any other pharma preparations or allied goods.

Here the registered trademark ‘kitchen magic’ used by Kerala spices Ltd is
exactly the same as the one used by Southern rice Mills.

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There is a clear trademark infringement as it is the replica of the exact words

used by Kerala spices Ltd. This would eventually lead to confusion among the
mass and deprive Kerala spices Ltd of their benefits from business which would
lead to losses.
The petitioner is entitled to injunction as there is an unauthorised use of original
name.

PRAYER

In the light of the arguments Wherefore raised, it is most humbly and respectfully
prayed that this Hon’ble High Court of Kerala may please to:

Declare and adjudge

1. A decree of permanent injunction restraining the Respondent from using the

trademark "Kitchen Magic" or any other trademark deceptively similar thereto, in
relation to the sale of rice and rice products;

2. An order directing the Respondent to pay to the Petitioner damages for the
infringement of its trademark;

3. Costs of the suit;

AND/OR
And pass any other order, direction, or that it may deem fit in the best interest of
justice, fairness, equity, and good conscience.
For this act of kindness, the petitioner shall duty bound forever pray.

Place: S/d

Date: (Council on behalf of the Petitioner)

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