As we embark on the second quarter of 2023, we are delighted to present to you our next edition of the newsletter, focused entirely on the world of Intellectual Property Rights. India has been making conscious efforts in building and growing its innovation framework which is evident from the fact that the Indian Government recently acquired 127 patents for 6G technology. The Courts have also been vigilant in protecting the rights of creators and brand owners to usher the wave of innovation and drive business growth. This is rightly evident from the Court's coming of age ruling in the 'Subway v. Suberb' case, and the recent 'Swiggy domain name dispute'. Simultaneously, the High Court of Delhi declaring the stylized logo of the French luxury brand, Hermes as a well-known trade mark also indicates the Courts sheer eagerness in recognising and safeguarding the transborder reputation enjoyed by notable international marks. This edition also tracks an interesting litigation centred around design infringement where the Court passed injunction in order to protect the registered keyboard design of the Japanese company, Casio. The judgement is likely to have a positive impact on the existing framework concerning Industrial Design in India. A few snippets of this edition that are worth reading include the underlying tussle between Zee Music and Spotify, Joan Mitchell Foundation issuing Cease and Desist to Louis Vuitton over use of paintings in handbag advertisements, and NFT and Metaverse related trade mark filings of Yves Saint Laurent and Amazon. So, without further ado, let's dive into this edition!
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DELHI HIGH COURT RULES IN FAVOUR OF CASIO IN DESIGN INFRINGEMENT CASE
The High Court of Delhi ("Court"), recently, upheld an interim order passed by an Additional District Judge ("ADJ") restraining the firm, Riddhi Siddhi Retail Venture ("Defendant") from selling and manufacturing musical keyboards with a design deceptively similar to that of Japanese electronics company, Casio Keisanki Kabushiki Kaisha D/B/A Casio Computer Co. Ltd.'s keyboard ("Plaintiff").1
The Plaintiff is a well-known entity engaged in the manufacture of musical keyboards. The Plaintiff is the owner and proprietor of a registered design for an "Electronic Keyboard" vide design registration No. 224547, with effect from September 2009. The registration is valid and subsisting, till September 02, 2024. The Defendant, in the present matter, argued that the Plaintiff's design suffers from lack of novelty and is similar to the design of several other keyboards available in the market.
The Court stated that by conjoint operation of Sections 22(3) and 19(1) of the Designs Act, 2000, lack of novelty or originality can constitute a ground of defence against an allegation of design piracy where the lack of novelty or originality can constitute a ground for cancellation of the registration granted to the design. As such, the lack of novelty or originality has to be seen on the date of registration of design. If a design, when registered, does not suffer from lack of novelty or originality, the mere fact that, after it is registered, several persons chose to copy the said design shall not constitute a ground to cancel the registration of the said design.
The Court further stated that the Defendant had not produced any document to show that the design was published prior to September 2009 or that it lacks originality. Therefore, the Court upheld the ad interim injunction granted by the learned ADJ, vide its order dated June 15, 2021.
"SUBWAY" V. "SUBERB" - EXCLUSIVITY OVER WORD 'SUB'
Subway IP LLC ("Plaintiff") filed a suit against Infinity Foods & Ors. ("Defendants") before the High Court of Delhi ("Court"),2 alleging deceptive similarity between the marks, "SUBWAY" v. "SUBERB", "VEGGIE DELITE" v. "VEGGIE DELICIOUS" and "SUBWAY CLUB" v. "SUB ON A CLUB". The Plaintiff alleged that the Defendants also adopted an identical 'green and yellow' colour combination on impugned mark, similar signage, similar look and feel of the restaurants, and other merchandise / products available at outlets and used for publicity / marketing.
Initially, the Defendants sought adjournment and approached the Plaintiff for settlement and suggested slight modifications, which the Plaintiff vehemently rejected.
The Court relying upon the "anti-dissection" rule, held that "SUBWAY" and "SUBERB", in relation to 'submarine sandwiches' are not deceptively similar trade marks. The Court stated that the prefix "SUB" is publici juris and is a common word in the food industry. The Court further stated that the suffixes in question "WAY" and "ERB" were neither phonetically nor visually similar in any manner whatsoever. Further, the Plaintiff's claims with respect to infringement of registered trade marks, "VEGGIE DELITE" and "SUBWAY CLUB" basis the Defendants' use of trade marks "VEGGIE DELICIOUS" and "SUB ON A CLUB" respectively, were not a matter of concern anymore since the Defendants altered the same to "VEG LOADED REGULAR" and "TORTA CLUB". The Court held them not being deceptively similar with "VEGGIE DELITE" and "SUBWAY CLUB".
The Court further held that the "S" logos were not deceptively, visually, or structurally similar, since the Defendants altered their mark by changing the colour combination to 'red and white' colour combination. Lastly, the Court held that considering that the Defendants made various modifications in respect of its restaurants, no exclusivity could have been granted to the Plaintiff on the look and feel. Accordingly, the Court refused to grant an injunction against the Defendant vide its order dated January 12, 2023.
Aggrieved by the same, the Plaintiff filed an appeal in the said matter, wherein a Division Bench of the Court set aside the order of the Court. While setting aside the order of the Court, Division Bench of the Court directed the Defendants to make various alterations in its trade marks and branding styles. The Defendants were directed to change the name of the restaurant to "HUBERB" from "SUBERB", along with the following:
- The domain name www.suberb.in was directed to be pulled down and deleted.
- The new logo of "H" was to be designed and used.
- The 'red and white' colour combination was to be used for the "H" logo, the "HUBERB" trade mark and for any sign boards.
- Instagram account name to be changed to "HUBERB".
Accordingly, the aforesaid modifications and directions were taken on record by the Division Bench of the Court, and subsequently the said appeal was disposed of.
1. Casio Keisanki Kabushiki Kaisha D/B/A Casio Computer Co. Ltd. V. Riddhi Siddhi Retail Venture, 2023 SCC OnLine Del 677
2. Subway IP LLC v. Infinity Food, 2023 SCC OnLine Del 150
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