Evidence is required to be filed before the Registrar of Trademarks at several instances during the prosecution of a trademark application. If an applicant claims use of a trademark at the time of filing of an application, the trademark rules require that the applicant submits a declaration which affirms the first date of use of the mark in DD/MM/YY format. To support this declaration, the applicant is required to file evidence, showing the exact goods/services for which the mark is being used and the claimed date of use. During prosecution, when a mark is under examination, evidence of use is

Recently, Parle Products Pvt. Ltd. (Parle) represented by R K Dewan & Co., successfully restrained the infringers for infringing its trademark “GLUCO” which is one of the most popular and reputed brand in India and has been openly, continuously, and extensively used by Parle for over 80 years, in a suit filed before Hon’ble Bombay High Court.

Recently, Aztec Secret Health & Beauty Ltd. (Aztec Secret) represented by R K Dewan & Co., was successful in obtaining an ex parte ad interim injunction in a suit filed before Delhi High Court, against the infringers namely, Mohammad Akbar U Maniyar & others (Defendants) for infringing its copyright in original artistic work and passing-off of its trademarks.

Registration of Trademarks can be refused either under absolute grounds (under section 9 of the Trademarks Act, 1999) or relative grounds (under section 11 of the Trademarks Act, 1999). Section 9 of the Act lays down the circumstances under which a mark can be recognized as non-distinctive and therefore not fit for registration. In other words, a mark needs to be distinctive in nature. This is to say that a person must be able to distinguish the proprietor’s mark from any other mark in the market. If the proprietor’s mark seems to be similar to any other mark then a likelihood of confusion

Brands are more than just a name or a logo; they embody a story and a legacy that have been built over time. Behind every brand, there is a rich history and a unique set of circumstances that have shaped its identity and contributed to its success. These background stories have become an integral part of the brand, and they serve as an essential tool for building brand loyalty and connecting with customers. There are various brands that you think you know about, but do you really know them? In this series of articles we will be telling you unknown stories behind the known brands.

Eduspark International Private Limited has emerged victorious in a suit filed before the Hon'ble Delhi High Court against Laxmi Publications Private Limited, a known publication house in Daryaganj, Delhi, for infringement of its trademark ‘VIBGYOR’.

After a long time, I became privy to a well-reasoned decision in a trademark suit issued by the Commercial Division of the Bombay High Court while deciding an interim injunction issue.

It is trite maths that 91 cannot be equal to 99. However, in the recent trademark case before the Delhi High Court, the use of the numeral “99” as a trademark on bicycles was considered deceptively similar to the numeral “91” already being used in respect of bicycles

A short judgement (5 pages long) passed by Justice Sanjeev Narula of the Delhi High Court on the 10th of January ’23 came to my notice.

In India, it is possible to file a multi-class application as well as individual applications for the registration of a trademark in different classes. However, it is recommended that one must file separate applications in each class. Unlike in other jurisdictions, such as Europe, there is no advantage in terms of official fees. Irrespective of the type of application, the government fee is calculated on a per mark per class basis.

A Shape, forms a part of the visual identity of a product and helps differentiating it from other similar products in the market place. However, in order for a shape to qualify for registration as a Trademark, it is essential that, the shape is distinctive and should not be a functional element of the product. For example, the shape of the Coca-Cola bottle is a trademark and protects its uniqueness and identity.

Can the name of a magazine be used by an institute teaching Fashion Technology? This question was answered in affirmative by the Karnataka High Court.

Pidilite approached the Bombay High Court seeking ad-interim reliefs. Pidilite contended that, the impugned mark was nearly-identical to its own mark not only with respect to the placement of the words used in the mark but also the designing of the packet in which the adhesive is sold and the same was a colorable imitation or a substantial reproduction of the original packet of ‘FEVI KWIK’

In a major victory against counterfeit products in the United Arab Emirates, our Indian client, Kamal & Sons (KAMAL), a Star Export House recognized by the Govt. of India, from Sidhpur area of Gujarat, India, and the owner of the renowned “S.B. DEER BRAND” ® Sat Isabgol (Psyllium Husk & Powder), successfully managed to raid the counterfeiter and confiscate three truckloads of counterfeit products weighing about 7.41 tons (6722 Kilograms) under the infringing “STAG” trademark. R.K. Dewan & Co. assisted Kamal & Sons in taking criminal action against trademark infringement in the United

Tata approached the Delhi High Court and filed a suit against Anjani Bagaria and Mazing Retail Private Limited seeking permanent injunction restraining infringement of registered trademarks, passing off, dilution and tarnishment of its “TATA” trademarks.

CrossFit, LLC (CrossFit) is a company based in California, USA, and engaged in providing products and services pertaining to health, fitness and nutrition in addition to conducting fitness seminars and providing trainer certifications. CrossFit adopted and used the mark ‘CROSSFIT’ since 1995 and has obtained various registrations for the word and device mark in India as well as other jurisdictions and has been using the said mark in respect of its products and services.

Recently, M/s. Eduspark International Private Limited (Eduspark) represented by R K Dewan & Co., was successful in obtaining an interim injunction against an infringer for infringing their trademark “VIBGYOR”.

Me: Sir, I recently read about Trademark Caution Notices. I had certain questions about them. What they are and what do they mean? (Dr. Dewan in his usual manner) Sir: Go Ahead…. Me: Sir, first things first, what is a Trademark Caution Notice?

Concepts that divide us as a society are not few. We are conditioned into thinking that discrimination is a form of systemization. While some concepts and ideologies are a product of circumstance, such as geography, time, weather conditions, etc., others are products of human intervention, including differences in castes, religion, race, sexual inclination, and the like.

A Court can exercise its power within a territorial/ geographical limit. For example, a District Court can exercise its power within the territorial limits of a district, a High Court can exercise its power within a state that comprises a plurality of districts and the Supreme Court can exercise its power within the whole country. This territorial limitation is referred to as the territorial jurisdiction of a Court. There is also another hierarchy of Courts based on the value of the claim made in a case. This is called its pecuniary jurisdiction. Still further, recently, the Commercial Courts

The registration of a trademark in India bestows the registered proprietor with civil as well as criminal remedies to enforce her rights on the mark upon its infringement against the infringer. The trademark owner has the negative right to exclude others from using the trademark, and using the same without the consent of the trademark owner amounts to infringement or passing off accordingly. Section 29 of the Trademarks Act, 1999 (hereinafter referred to as “The Act”) lays down all the acts which amount to infringement in India, against which the action of infringement can be brought by th

Indian film industry runs on creativity and vision of the film makers, from dialogues to cinematography and from song compositions to film titles, Intellectual Property law goes hand in hand with Bollywood.

Amazon faced a severe backlash recently from India. The backlash was so severe that #BoycottAmazon was on the top of Twitter’s trending hashtag list. All this happened because some of us stood strong against the retail giant who was selling toilet seat covers and door mats bearing pictures of our revered gods and goddesses printed on them.

Hindustan Syringes and Medical Devices Ltd. (Hindustan) owns the DISPOCANN and DISPOVAN marks, while Disposafe Health & Life Ltd. & Ors. (Disposafe) owns the DISPOSAFE mark. Disposafe began using the DISPOCAN mark while Hindustan was applying for registration of the DISPOSAFE mark. Both parties are engaged in the business of producing disposable syringes.

Tata SIA Airlines Limited (Tata SIA), a joint venture of TATA Sons Private Limited and Singapore Airlines Limited, has operated airlines under the VISTARA mark since 2014, and is the registered proprietor of the mark in India (TM Nos. 2748039, multiclass application in Classes 12 and 39; and 2808332 in Class 39), Singapore (40201600325Q in Classes 12 and 39), and among other countries. Pilot18 Aviation Book Store (Pilot18) operates an aviation studies portal called pilot18.com.

On April 2, 2018, in Superon Schweisstechnik India v. Modi Hitech India Ltd./CS (COMM) No.750/2018, the High Court of Delhi ruled on the issue of abbreviations of words being used as trademarks for goods sold, techniques adopted, or materials used.

In Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., CS (COMM) 1007/2018, on August 1, 2018, the High Court of Delhi granted interim relief in favor of Starbucks, directing the defendants to use the name "Sardarji-Bakhsh" for their 20 new, upcoming outlets until the final hearing of the suit on September 27, 2018. Following the hearing, it was agreed that the defendant would change the name of all of its outlets to "Sardarji-Bakhsh Coffee & Co."

In H&M; Hennes & Mauritz Ab & Anr v. HM Megabrands Pvt. Ltd. & Ors/ IA-7259/2016 (May 31, 2018), the High Court of Delhi, issued a permanent injunction against the defendants HM Megabrands Pvt. Ltd & Ors., confirming that prior adoption of a mark overseas can be superior to prior use of the mark in India.

In Joy Creators Pvt Ltd vs Natures Essence Pvt Ltd, CS(COMM) 632/2018, the High Court of Delhi on September 20, 2018 recognized the protection of slogans and expressions which are ordinary linguistic spoken words.

According to the World Intellectual Property Organisation, “any confidential business information which provides an enterprise a competitive edge (emphasis added) may be considered a trade secret. This could include sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes.”

We are all aware that a document, falling within the description in Schedule I of the Maharashtra Stamp Act,(the “Act”) and which is executed within the State of Maharashtra, is liable to be stamped at the rates stipulated in the said Schedule.

The term logo is derived from Greek as an abbreviation of the term “logo type”, meaning a “word and an imprint”...

In the second week of September 2014, two different Appellate Benches of the Delhi High Court pronounced judgements in two pharmaceutical trademark cases.

Use is a fundamental concept in trademark jurisprudence. Registration of a trademark is a voluntary act on the part of a trademark owner in the sense...

In what appears to be a classic case of trademark trolling and is a surprising development......

Fluid- the work suggests movement. Fluid Trademarks stand true to their name.

Jinchun Ji sought trademark registration for “雪佛龙” (“Chevron” in Chinese version) before the Chinese Trademark Office (TMO) in respect of goods falling in Class 12 viz. automobiles and motor cycles. Chevron Intellectual Property LLC (a subsidiary of Chevron Corporation) opposed the application on the grounds that the impugned mark was similar to its mark and which was otherwise registered in respect of the goods petroleum oil (crude oil or refined oil), industrial oil.

Creating a successful brand in the marketplace requires a lot of work and is an extremely expensive exercise. But, once a brand is established the obvious question is ‘what next’? A common strategy adopted by large corporations is to introduce a ‘Flanker Brand’.

In Anchor Health and Beauty Care Private Ltd vs. Procter & Gamble Manufacturing (Tianjin) Co. Ltd & Ors. the Delhi High Court decided a case involving the expression “ ALLROUND” for toothpaste.

In Enterprise Holdings, Inc. v. Enterprise Auto Rentals, Justice Manmohan Singh of the High Court of Delhi delivered a judgment in favor of the plaintiff against an entity using the trade name Enterprise Auto Rentals and the trademarks ENTERPRISE and ENTERPRIZE.

Recently, the High Court of Delhi settled the issue of whether merely lodging an application for the registration of a trademark by the defendant gives the plaintiff jurisdiction to file and succeed in an action for trademark infringement. Analco (India) Pvt. Ltd. v. Navodya Exim Pvt. Ltd., CS (OS) No. 1764/2009 (Del. Jan. 23, 2014).

Last December, the divisional bench of the Delhi High Court rendered a decision...

R. K. Dewan & Co (RKD) represents ‘KamaSutra’, India’s second largest...

Criminal remedies are very effective and create the strongest deterrence in the market but are often less opted for as proposed remedies to combat piracy. A brief snapshot of the criminal remedies is as under...

Biotechnology may be defined as the combined use of science and technology to exploit biological processes. Biotechnology contributes to advancement in the life sciences and offers tremendous scope for improving human health and furthering a nation’s economic development.Many biotechnology inventions involve sequencing genes, systems to selectively express...

Recently, Facebook was accused of being a ‘brand bully’ by a Nashville-based pet-themed social network called Facepets.com.....

In continuing R K Dewan & Co.’s tirade against the usurpation of reputed Indian brands in China by local infringing companies, our client HEM Corporation (HEM), a reputed Indian incense stick manufacturing company, successfully challenged a Chinese trademark registration obtained by a local company, Chengdu Heaven Art Commerce & Trade Co. Ltd (Chengdu Heaven Art) at the China Trademark Review and Adjudication Board (TRAB).

In a recent case, Neo Foods Pvt. Ltd vs. Neo Milk Products Pvt. Ltd, the Delhi High Court had to decide on the issue of whether the products, milk and pickles, can be considered to be similar.....

In a recent case, Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd, the Delhi High Court decided a case of passing-off based on the principles of common law...

In the case of Dabur India Ltd vs. Real Drinks Pvt. Ltd, the High Court of Delhi was required to decide on the issues of passing-off, infringement, jurisdiction and maintainability of a suit where the Plaintiff and the Defendant were both registered proprietors of trademarks containing the word “REAL”...

Granting a major victory and relief at the same time to our client, the Indian tools manufacturing company, TAPARIA TOOLS LIMITED, the China Trademark Review and Adjudication Board (TRAB) in a recent decision reversed the China Trademark Office’s decision in an opposition case filed by TAPARIA against a local Chinese Company QINGDAO XINLIAN TOOLS CO. LTD....

In a recent case, R K Dewan & Co was successful in obtaining an order of permanent injunction for Lavasa Corporation...

The Registrar of Trademarks published on 29th November 2013 an exhaustive alphabetical list of goods and services..

In the event of infringement of a trademark, there are various strategies which are adopted by the trademark owner and by the infringer. The aim of the trademark...

Looking to the backlog of matters pending for post registration changes, the Indian Trademark Registry has taken an initiative to start a special drive during the months of December 2013 and January 2014, for the disposal of rerecord of post registration changes requests.

It is a common belief that IP litigation in India can be lengthy and expensive. However, with proper handling and selection of an appropriate forum, this belief can be rendered moot.

“Forum shopping” is the informal name given to the practice adopted by some litigants to have their legal case heard in the Court thought most likely to provide a favourable judgment.

Trademark licensing is an effective way of commercializing trademarks. A person licensing (the “Licensor”) the trademark allows another party (the “Licensee”) to use the trademark in a particular manner within a specified territory and for a stipulated period of time.

Consumers these days get lost in a sea of products to choose from in each category. It would be ideal if the consumer could purchase the best product without having to expend time and effort on research.

The IPAB by its order dated 26th August, 2013, stunned the IP fraternity at large by holding that the trademarks Mex and Kamax are deceptively similar.

A trade mark may be refused registration for a number of reasons including the fact that the trade mark is devoid of distinctive character or if it is of such nature as to deceive members of the public. On these grounds the owner of the trademark ‘Cizer’ recently succeeded in having the trademark ‘Lizer’ removed from the Register of Trademarks.

What if you manufactured toys and Santa Claus who was merely supposed to give your toys to kids stole your trademark and started to claim it as his own?

The IP arena saw a victory of right over wrong with the ones in the right getting asked for damages. India is not known as a jurisdiction where huge damages are awarded often.

INTA recently filed an ‘amicus curie’ brief in an appeal pending before the Supreme Court of India, expressing its view on the question of Parallel Imports and Exhaustion of rights. Though not a party to the suit, INTA has filed this brief as a ‘friend of the Court’ in order to influence the decision by providing a global perspective to the question of parallel imports.

More than in any other jurisdiction, in India, colour and colour schemes play a crucial role in distinguishing a product or a service. This is primarily because although a large segment of the Indian population is not conversant with the English alphabet; many brands are usually in the Roman Script.

The recent decisions of the Intellectual Property Appellate Board (“IPAB”) have, to a certain extent, clarified the status of descriptive/laudatory trademarks in the Indian context.

The Intellectual Property Appellate Board on 31st July, 2013 passed an order which is the first of its kind. Both the parties succeeded and failed at the same time. Surprised? In cross petitions between HAB Pharmaceuticals & Research Limited (HAB) and VEE EXCEL DRUGS & Pharmaceuticals Pvt. Ltd (Vee Excel), the IPAB passed orders for removal of both the impugned registered marks VEGAH & VEGA ASIA from the Register of Trademarks, albeit for different reasons.

The Intellectual Property Appellate Board yet again chastised the Indian Trademark Registry in its Order dated 12th July, 2013 for irregular procedure. The IPAB by way of two orders of the same date has laid down the general principles governing the registrability of a mark, which is identical to an existing registered trademark.

RKD laid the trail for suits against disparagement of trademarks in films, when we successfully represented Godrej Sara Lee Ltd, getting a permanent injunction and damages worth INR 500,000 against Super Good Films, who had shown Godrej Sara Lee’s insect repellent “Hit” in a bad light in one of their films.

The Delhi High Court recently decided an interesting case relating to comparative advertising. The case was instituted by Reckitt Benkciser (India) Ltd. (the owners of the brand “DETTOL”) against Hindustan Unilever Ltd. (the owners of the brand “VIM”). Reckitt Benkciser (India) Ltd. (‘RBL’) sued Hindustan Unilever Ltd. (‘HUL’) for commercial disparagement and sought interim injunction against HUL restraining HUL from publishing advertisements disparaging the ‘DETTOL HEALTHY KITCHEN’ trademark. The Delhi High Court found in favour of RBL and granted an order against HUL.

The Trade Marks (Amendment) Bill was passed by the Parliament and assented to by the President on 21stSeptember 2010. The Trade Marks (Amendment) Rules, 2013 have been made to give effect to the Trade Mark (Amendment) Act 2010.By notification dated 8th July 2013, the Trade Marks (Amendment) Act 2010 and the Trade Marks (Amendment) Rules, 2013 came in to force to enable India to accede to the Madrid Protocol.

On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol.

In the last decade, there has been a shift in the perception and coverage of the term trademarks. Having always been seen as words or pictorial symbols, trademarks have now evolved beyond this purview to include specific shapes and packaging techniques (3D trademark), sounds (aural trademark), specific color combinations, holograms and even smell (olfactory trademark).

The advent of rapid technological growth and a manifold increase in the number of suppliers who make products and services available to consumers coupled with rising costs of such products and services has led to the birth of an alternate industry involved in bringing fake, illegal and counterfeit goods to the market.

Absolute ground for refusal of Trade Mark...

On the 8th of April 2013, the Indian Minister of Industry deposited the accession instrument of India to the Madrid Protocol. This accession will take effect from the 8th of July 2013. On or after that date, trademark owners outside India can designate India as part of an international application under the Protocol.

Classification goods and services into different classes for the purpose registration of trademarks enables systematic storage and retrieval of information.

This article provides an overview of the 'Madrid System for International Registration of Marks' which allows individuals and corporate houses to register and protect their marks in a number of countries.

This article discusses the issues involved in the role and status of a technical member in the overall constitution of the Intellectual Property Appellate Board (IPAB).

Having complied with the TRIPS regime in satisfying the minimum standards of Intellectual Property protection, India is now looking at ways and means to ensure a foolproof enforcement mechanism.