Trademark tussle intensifies
India ranks fourth globally in trademark filings with a 6.1% increase in 2023, but data from IP India shows there’s been a more than 60% rise in notices of oppositions between 2018-19 and 2022-23. The Mahindra versus IndiGo Airlines tussle over the moniker ‘6E’ has put the issue in the spotlight. Viveat Susan Pinto chronicles some recent IPR disputes.
Emami versus HUL over ‘Glow & Handsome’
In April this year, the Calcutta High Court restrained Hindustan Unilever (HUL) from using the ‘Glow & Handsome’ trademark for its men’s fairness range following an application by Emami.
The latter had argued that ‘Glow & Handsome’ was deceptively similar to its ‘Fair & Handsome’ trademark, constituting infringement.
While Emami had first moved the court in the year 2020 when HUL had rebranded its men’s fairness cream from ‘Fair & Lovely’ to ‘Glow & Handsome’, it was in April of 2024 that Emami received a favourable verdict.
HUL had countered that the term ‘ Handsome’ was purely descriptive and lacked distinctiveness, thus not constituting trademark infringement.
It argued that ‘ Handsome’ was a generic term, which was also used by others in the industry.
Britannia versus Desi Bites Snack over ‘Good Day’
In November 2024, the Delhi High Court restricted Bikaner-based Desi Bites Snack from using the ‘Good Day’ name for its range of confectioneries and food products. Britannia has a popular range of cookies under the Good Day brand and submitted in court that it held several trademark registrations for the label. The oldest registration, Britannia said, went back to April 3, 1986 for biscuits, bread and non-medicated confectionery.
Amul versus trademark registry offices
In 2017, Gujarat Co-operative Milk Marketing Federation (GCMMF), which owns and operates the Amul brand of dairy products, went to war against the country’s five trademark registry offices for allowing makers of underwear (Amul Macho), tractors (Amul Tractors) and other products to use the ‘Amul’ name. The case was filed in the Gujarat High Court against the registries in Delhi, Mumbai, Kolkata, Chennai and Ahmedabad, for allowing similar sounding names as trademarks, potentially diluting its brand name, which was associated with the Gujarat milk cooperative movement and the father of India’s White Revolution Verghese Kurien. GCMMF also argued that the registries permitted this despite Amul being included in the Well-Known Trademark list in May of 2015 by the Intellectual Property Appellate Board, which ensured that no other entity launched products with similar sounding names.
Tata Indigo versus IndiGo Airlines
This was arguably one of the longest trademark infringement cases in India. In 2015, IndiGo Airlines and Tata Motors were locked in a court battle over the ‘IndiGo’ name. The latter argued that this was a case of copyright infringement since it had an ‘Indigo’ range of sedans in the marketplace. Tata Motors had been disputing the issue since 2005 before the Indian Trademark Office, when it got to know that Interglobe Aviation, the parent company of IndiGo Airlines would be launching its aviation operations under the ‘Indigo’ brand name. The airline was launched in 2006 after Interglobe managed to register the trademark. 2015 was significant because that was when IndiGo Airlines decided to go public, bringing the matter to the fore once again.
Tatas versus Tataas
This was a matter from April 2021 which was pursued in the World Intellectual Property Organisation (WIPO) by Tata Sons, the holding company of the Tata group, over a domain name called taatas.com, an English and Tamil website, which was owned and operated by a Sri Lankan Thobiyas Segaram Bernard Vasanthkumar through his companies in Sri Lanka.
Tata Sons had argued that the domain name was deceptively similar to its own website tata.com, which bore the Tata brand name. Ironically, this was a rare instance, where WIPO held that while phonetically similar, the use of taatas.com did not constitute domain name squatting, a kind of copyright infringement practiced online where a name is registered to profit from the goodwill of a trademark belonging to someone else. WIPO held that the respondent was not using the Tata trademark and that products of the respondent were dissimilar from the Tata group and that it was promoting its products under the Taatas name prior to the complaint.