Dispute was over a registered
trademark "AUM" in respect of jewellery items for which
Goldgem Overseas sued Flawless Diamonds claiming infringement and
passing off, came before the Bombay High Court in Goldgem Overseas
vs. Flawless Diamonds 2009 (39) PTC 420 (Bom.). Flawless Diamonds
had been in the said business for 17 years. Goldgem Overseas though
relatively new, had applied for registration of their trademark in
May 2000 and obtained the same in 2003. A meeting of the two
parties had taken place in April 2006, the particulars and agenda
of which seemed to be unclear. But soon after, in June 2006,
Flawless Diamonds applied for registration of their trademark and
commenced its use in the same year. According to the Annual report
of the company, they had never used the mark prior to that.
Goldgem Overseas contended that
their use and registration of the disputed trademark pre-dated the
use and registration by Flawless Diamonds by 6 and 3 years
respectively, which was not permitted by law. Also, since Flawless
Diamonds were aware of Goldgem Overseas' trademark being
registered, they could not be granted with the trademark sought.
Additionally, the use of such trademark amounted to dishonesty.
Flawless diamonds stated that AUM
was a generic expression that was equivalent to God, and hence
could not be registered. They opined that the target market of
their products was the upper stratum of the society who invested
great amounts of money in purchasing these goods. Thus, they
carefully perused the trademarks before making the purchase and
were unlikely to be swayed by the mark or label of another seller.
Further, they submitted their sale records, which were extensive
both internationally and domestically and had a huge retail market
in the form of showrooms and outlets. They also claimed passing off
by the plaintiffs since they had established their superior market
The Court dismissed the argument of
the mark being generic, by opining that after making an application
for registration themselves Flawless Diamonds, were too late to be
making such an argument. The Court further reasoned that in case of
gems (diamond jewellery), it was nearly impossible to understand
the quality and genuineness of the product. Thus the brand name and
trademark acquired greater significance. The Court used Flawless
Diamonds' popularity and long-standing repute as a proof of
their flourishing business without using the trademark AUM.
In this view, the Court held that
Goldgem Overseas' case of infringement of trademark against the
Flawless Diamond was valid under the Trademarks Act and was thus
upheld prohibiting defendant from using the said mark or any other
similar mark, name, word or style as a part of Flawless
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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