Our regular audience will be aware of our enthusiasm for exploring new jurisdictions. However, it is not often that we have the chance to delve into trade mark or other intellectual property issues arising in India. On this occasion, though, we are able to examine two noteworthy trade mark judgments from the Indian courts.
Case one: Sakarni
An individual, Ashok Kumar Gupta, has a company called Jai Dirga Plaster Industries (plaintiff), and this company manufactures a type of plaster of paris that is sold under the brand name SAKARNI. The trade mark is registered in class 19 (the building products class), and it has been in use and extensively promoted for over 20 years.
Sikarni
In 2023, Gupta received some disturbing news when he learned that:
- A certain Arif Khan (defendant) was selling an identical product featuring the trade mark SIKARNI - you're quite right, it's not exactly subtle!
- There was an application for the registration of the trade mark SIKARNI based on an intention to use.
Legal proceedings
Legal proceedings were launched on the basis of trade mark infringement, copyright infringement, passing off, dilution and unfair competition. No stone left unturned! Despite being served, the defendant failed to appear or contest the proceedings. The court, therefore, proceeded ex-parte and relied on the plaintiffs' evidence.
Court findings
To the surprise of very few, the court found for Gupta. Here's a summary of the court's findings:
- Similarity: The trade marks are similar, both phonetically and visually, with only minor alterations in spelling.
- Goodwill: The trade mark SAKARNI is well established and it enjoys a significant goodwill, as a result of use going back to 2004.
- Minor replacement: The replacement of the letter 'A' with the letter 'I' does not sufficiently distinguish the trade marks.
- Confusion: There is a clear likelihood of confusion between the trade marks.
- No contest: Evidence is not required where a party does not even contest the proceedings.
- Injunction: The court granted an injunction against the use of the trade mark SIKARNI, or anything confusingly similar to SAKARNI, in respect of wall putty and allied products.
- Damages: The court awarded financial damages and costs in the sum of
INR1,000.000 (Approx ZAR207 000)
Recent Indian trade mark cases really emphasise the judiciary's commitment to protecting established brands from infringement and passing off, particularly where there is clear evidence of reputation, long-standing use, and consumer association.
The courts take a holistic view, considering not just the name but the overall presentation and market impact, and are prepared to grant strong remedies (as we can see) to prevent confusion and protect brand integrity.
Case two: fi'zi:k
The parties
The parties in this case were Ahmad Saleem Khan, Selle Royal Group v Ace k.
According to the website About us: passion, mission, products | fi'zi:k, the fi'zi:k trade mark is the phonetic spelling of the word physique, referring to the form or state of the human body. The company designs and manufactures gear such as helmets, saddles and shoes for cyclists.
The issue
The issue here was whether the trade mark FIZIFREAK was confusingly similar to - and therefore likely to exploit the goodwill of an earlier trade mark fi'zi:k.
The case was heard by the Delhi High Court, which ruled as follows:
- The trade mark fi'zi:k is a coined word and it has been used since 2004. An interesting fact of this case was that, even though the petitioner did not have an Indian trade mark registration for fi'zi:k at the time when FIZIKFREAK was registered, the petitioner was able to establish proof of adoption globally going way back to 1996, as well as a market presence in India since 2004.
- The later trade mark FIZIKFREAK is confusingly similar to fi'zi:k - the court spoke of visual, phonetic and conceptual similarity, as well as the exploitation of goodwill
- The registration for FIZIKFREAK should therefore be cancelled from the Trade Marks Register.
This judgment once again underscores that coined and invented terms are highly distinctive. Owners of such trade marks may, depending on the circumstances of each case, strengthen the protection provided by their trade mark registrations and prevent others from copying their marks or taking unfair advantage of their reputation.
Final words
India has emerged as a global leader in trade mark filings, with annual applications now regularly exceeding 500,000. The country's Trade Marks Office has experienced robust growth in filings over the past decade, reflecting increased brand awareness, business confidence, and the expanding Indian economy. This surge has positioned India as a top trade mark filing jurisdiction worldwide, underscoring the growing importance of intellectual property protection for businesses operating in the Indian market.
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