India: Indian IPR Decisions

Last Updated: 18 October 2010
Article by Vijay Pal Dalmia, Partner

[2010 (42) PTC 514 (Del.) (DB)]

"YO! China" vs. " 'Masala Yo!' &'Chilly Chow Yo!'".

'YO!' a plain and informal expression used world over to convey excitement has been subject of a trade mark war in India. Moods Hospitality (MH) that runs a chain of Chinese restaurants in India under the name 'Yo! China' filed a suit for trade mark infringement and passing off at the Delhi High Court seeking an interim injunction against the use of the expression 'Yo' by Nestle India for their recently-launched Maggi Cuppa Mania Instant Noodles in two flavours – 'Masala Yo!' and 'Chilly Chow Yo!'. MH claimed prior rights over the use of 'YO!' in relation to noodles. MH argued that the trade mark 'Yo!' has become distinctive of its popular Chinese restaurant chain 'Yo! China' and its products. On the other hand, Nestle India argued that mark 'Yo!' lacks trade mark character and is publici juris.

Setting aside the order of the single judge bench, wherein Nestle was restrained from using the expression "YO!", the Appellate Court observed that there is nothing to suggest that the word "Yo" in "Masala YO!" and "Chilly Chow Yo!" would create a connection in the minds of the customers with respondent as being the source of the product. On the contrary, the use of mark "Yo" retains its primary meaning of inviting attention or as an exclamation. This is all the more so because the appellant's distinctive trade mark "MAGGI" is prominently displayed on the appellant's "Cuppa Mania" products. It must also be remembered that the dispute here is with the use of the mark "Yo" (with or without the exclamation mark) and, therefore, the comparison has to be made with MH's registered trade mark "Yo!" and not "Yo! China" which, taken as a whole, cannot be confused with "YO!".

Case on Dilution of Trade Mark

2010 (42) PTC 572 (Del.)

In the dispute between ITC and Philip Morris & Others for the alleged trade mark dilution of ITC owned Welcome Group 'Namaste' logo by Philip Morris' stylized logo of the Marlboro trademark, the Delhi High Court has ordered that ITC is not entitled to a temporary injunction against Philip Morris.

The Delhi High Court refused to grant an injunction against the use of a device mark by Philip Morris in relation to its Marlboro brand of cigarettes in India. The trademark action filed by ITC was based on the registration and use of its W-namaste logo. The Delhi High Court held that the 1999 Act has enjoined protection against dilution, if the following essential elements are established –

  • the impugned mark is identical or similar to the senior mark;
  • the senior or injured mark has a reputation in India;
  • the use of the impugned mark is without due cause;
  • the use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered trade mark.

It was further held that as the law does not provide for a presumption of infringement in the case of dilution of trade mark, each of the aforesaid elements has to be established before an injunction can be granted on this ground.

The court also said that the test of similarity of marks, namely dilution, was a notch higher than required in the said Act. It also held that in deciding the question of the similarity of the two marks in a dilution action, the Court must focus on the 'global' look rather than on the common elements of the two marks.

The court further held that though the 'aura' of the ITC mark could go beyond the niche hospitality services and extend to other luxury goods, there was nothing to show that such association could extend to cigarettes.

The court considered this aspect to be crucial as ITC itself sold cigarettes without the said mark. There was also nothing on record to show that the use of Phillip Morris's mark would be detrimental to the distinctive character of the ITC mark. The Court further held "In the case of logos and other marks, the application of the "identity" or "similarity" test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective.

Case on Disparagement

2010 (42) PTC Del 77

The Hon'ble Delhi High Court understanding of the evolving law on comparative advertisement restrained the Defendants CIF from disparaging the products of the Plaintiff by advertisement.

Mr Muscle (Plaintiff) alleged that CIF's (Defendant) advertisement was derogatory of its product. The CIF advertisement displayed, among other things, an orange-coloured container with a unique "indentation and nozzle/trigger" (similar to Mr Muscle's container), representing that an advanced product like CIF can remove tough kitchen stains better than any others.

The court, while granting the temporary injunction, said that every comparison does not necessarily amount to disparagement. Consequently, what is required to be answered is, whether there is denigration of plaintiffs' products. The answer to this question would be "what is the fundamental purpose for which the product is manufactured". The Court went on to say that in the instant case, the impugned advertisement prima facie does seem to denigrate the plaintiff's product. It was held that it comes within the test of the defendants alluding to a "specific defect" or "demerit" in the plaintiffs' product. On the basis of the above principles, an injunction was granted against CIF.

Case on Patent Infringement


Asian Electronics Ltd., who holds the Patent bearing No. 193488 (for converting fluorescent lighting units, such as tube-lights, from working on an inductive operation mechanism to an electronic operation mechanism without the need for any re-wiring) filed a suit for infringement of patent against Havells Indian Ltd.

The Delhi High Court dismissing the application for interim injunction observed that the Plaintiffs were not claiming an invention in any of the individual components of the conversion kit. Instead the invention was claimed for a conversion kit which comprised of several individual components such as the adaptors, the ballast etc. The Hon'ble Court also made reference to the bar of Section 3(d) of the (Indian) Patents Act, 1970, which states that a mere use of a known process, machine or apparatus unless such known process results in a new product will not be considered to be a patentable invention. The Court also found the suit patent to be anticipated by the prior U.S. Patent cited by the Defendant. In the above mentioned case, no interim relief was granted by the Court.


1. "Namastey" is the traditional way of wishing in India. Physically, it is wished with folded hands.


© 2010. All rights reserved with Vaish Associates Advocates, Flat No. 5 to 7, Dakshineshwar, 10, Hailey Road, New Delhi-110001, India

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Vijay Pal Dalmia, Partner
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