Recently the Bombay High Court
decided a trademark dispute involving tobacco majors like ITC
and GTC, a flagship of Dalmia Group as parties. The ruling of
the Court in the specific case is that a trademark cannot be
claimed on common, descriptive English words. This order has
come as a triumph for ITC after a protracted legal battle. Also
worth mentioning is a recent decision by the Intellectual
Property Appellate Board, again a protracted fight in a
A division bench allowing a
petition by ITC quashed an order allowing rival GTC Industries
to register 'Magnum' as a trademark for a brand of
cigarettes and cigars. Briefly the history of the dispute is as
In 1987, GTC filed an
application for registering a trademark in the name of
'Magnum' for a proposed brand of
In 1992, ITC opposed the grant
of trademark, but its challenge was dismissed by the assistant
registrar of trademarks, who passed an order in favour of
ITC then approached the high
court, where the matter went on for over eight years and in
2002, the court agreed with the order to allow GTC to register
'Magnum' as a trademark, saying it was not a
common Indian word.
An appeal was then filed by ITC
before the division bench.
The division bench held that the
word 'magnum' is of common usage and purely
descriptive. It can serve as an indication of character or
quality or value of the goods since one of its laudatory and
descriptive meaning is 'great'. Such
words/marks should not be registered as a trademark. The judges
further pointed out that the purchasers of cigarettes also
include persons with knowledge of English Language and the word
'Magnum' could serve as an indication of the
characteristics of goods which ultimately comes under the
statutory bar provided under section 9(1)(b) of Trade Marks
Act, 1999. There is an absolute bar for registration of any
descriptive and laudatory term.
The second instance involves
Perfetti Van Melle SPA. It is one of largest candy
manufacturers and marketers. The Italian candy maker stood
victorious after a protracted legal battle. The Intellectual
Property Appellate Board dismissed Candico's demand for
cancellation of the Italian company's "Big Babol"
registration in India.
Both the companies are in the
business of manufacturing and selling candies. Perfetti's
Indian Subsidiary has been making and marketing Big Babol
chewing gum and Candico uses the words "The Big
Bubble" with its chewing gums Loco Poco and Freedom. The
legal battle was set off in 1998 with a legal notice from
Perfetti to Candico demanding that the company stop using the
words "The Big Bubble" as it is confusingly similar
to their Big Babol chewing gum. Candico, in turn, filed a case
against Perfetti with the district court seeking to restrain
the Italian company from using the trademark Big Babol. It even
received an interim injunction that was subsequently vacated.
Candico appealed in the Bombay High Court, which transferred
the plea to the IPAB
The issue of deceptive
similarity between the Perfetti's product name and
Candico's tag line viz. Big Babol and The Big Bubble was
considered by the Board. The application made by Candico was
found to be devoid of merits and therefore dismissed. The Board
was of the view that Candico failed to prove that the trademark
would cause confusion among consumers if it was allowed to
continue. Candico could not provide evidence to substantiate
its objection. Also relevant is the remark made by The Board
that –"In fact it is seen that after a cease
and desist notice was issued the applicants (Candico) have only
initiated a suit against the first respondents (Perfetti). It
is clear that the applicant was not facing any legal threat and
so cannot be said to be an aggrieved person."
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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