Trademarks and design rights, both play a prominent role in helping a brand establish its presence in its market. While marks help consumers develop association with products, designs registered may themselves differentiate one product form the other. The case of S.K Industries Pvt. Ltd. vs. Dipak Ghosh @ Mana Da Trading {2010 (42) PTC 96(Del.)} is one such case herein issues of trademarks as well as designs were deliberated upon.
S.K Industries had made a move to restrain Dipak Ghosh from using the mark "OK Super Star", on the ground that the mark was of a similar style to that of S.K Industries' mark, "Mahak" and "Mahak star". The court in view of the marks found the alleged mark to be deceptively similar to that of the S.K Industries' mark and therefore granted an injunction preventing Dipak Ghosh from infringing S.K Industry's mark. A Local Commissioner was also appointed, as regard to this however no infringing material was found at the premises occupied by Dipak Ghosh.
Dipak Ghosh in this furtherance contended that as soon as the existence of a similar mark "Star" came to their knowledge, they had discontinued its use and has since been marketing its product under the name of "Okay Jurassic Fruit Flavoured Cup Jelly". Various materials had also been placed on record to reflect the discontinued use of the similar mark and to show that the distinct mark named, "Okay Jurassic" had been put to use. The Court opined that the injunction, which was imposed by the Court regarding the use of the similar trademark, would not affect the use of the present trademark, "Okay Jurassic".
An appending contention made by S.K industries dealt in the registered design of a cup in which jelly was being packed and marketed. However the Court was not convinced with respect to the argument about the novelty of the design of the cup considering the fact that even before S.K Industries came into existence, different manufacturers were using that design, it being a common design.
The Court however concluded that in cases of Design registration, the Court while granting an interim injunction must keep in mind that the design must be validly registered and there must be some novelty or originality. As no specific novelty has been mentioned in the registration certificate and given the fact that all the manufacturers manufacture similar containers having almost the same height and circumference, there existed no novelty in the same. As similar designs were being used by many leading companies from the time much before the registration of this design by S.K Industries, they were not entitled to be ordered an interim injunction and the application praying for an injunction was thus dismissed. The Court in this view held that Dipak Ghosh was well entitled to use the cup, since the shape of the same was a well-known geometrical figure and hence did not involve the issue of novelty in the design.
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