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

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Vijay Pal Dalmia, Partner
In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.