It takes more than merely some money to create a brand. And one of the most fundamental backbones for any brand is its trademark. Businesses often opt for trademark registration in India to protect the brand in the domestic circuit. Although, there are other ways to avail international protection trough Madrid Protocol and International Trademark Association. Many brands run a great risk of infringement when they go out in the open market as minor negligence in being vigilant can cost millions and also the reputation.
The best way for brands to learn is from others in the market who are proactive and standing up from time to time to protect their brand. Here are some trademark infringement cases that businesses can learn much from.
1. Yahoo! Inc. v. Akash Arora & Anr
Perhaps the first of the landmark judgment on cyber-squatting in India. It was for the first time that the Delhi High Court held a registered domain name equivalent to the trademark giving it the entitled, equal protection. The defendant, in this case, was ‘Yahoo India!’ for protecting their domain name. Now, this was identical and even phonetically similar to the plaintiff’s trademark ‘Yahoo!’
The court believed that people will be deceived into thinking that both the domain will carry the same source. Here, the defendant was of an argument that it has put a notice, stating the same, on the website. Though, the court didn’t approve the disclaimer to be sufficient since the nature of the internet is such that it is difficult to rectify the domain name simply by putting up a disclaimer.
Also, Yahoo! was quite renowned even globally and the court observed that ‘Yahoo India’ of the defendants is almost similar except that it uses the suffix ‘India’. The concern of deception was large and since Yahoo! was the Plaintiff, the injunction was done in their favor.
2. Academy Awards v. GoDaddy
Another cyber-squatting issue where the Academy Awards was headed up against the domain retailer GoDaddy. It was a battle that lasted for five years. Initially, in 2010, it was filed by Academy alleging GoDaddy’s decision to let customers buy “confusingly” similar domain names like 2011Oscars.com, etc. It claimed on allowing individuals to pass on the profits who wanted to “park” on these domains and claimed a part of revenue.
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Initially, the Academy demonstrated to the court that there were 57 domains sold by GoDaddy that were termed as ‘potentially confusing’. But, in the end, the judge ruled that GoDaddy had no “requisite bad faith intent to profit” from their domain sales.
The legal battle between these two big brands lasted 5 years and was deemed as an expensive affair. While this legal battle was undoubtedly expensive, it went in favor of the cybersquatting space and GoDaddy came out clean. You can also avoid such lawsuits just like how in GoDaddy’s case you cannot expect a third-party to “police” your branded trademark.
3. The Coca Cola Company v. Bisleri International Pvt. Ltd.
In this case, Bisleri was the defendant by a master agreement having transfer and assign the trademark rights for MAAZA. It also gave away the formulation rights, IPR, and know-how along with the goodwill for India for bottling and selling a mango fruit drink – MAAZA to Coca Cola.
Now, the defendant company applied for trademark registration for the word MAAZA in Turkey and begin exporting the same fruit drink under the given name. The plaintiff, Coca Cola claimed a permanent injunction and infringement damages for passing off and trademark since it was given to them by a defender, Bisleri.
In the end, the interim injunction was held up against Bisleri for using the trademark MAAZA in India even putting it up for export which was a clear case of trademark infringement.
4. Louis Vuitton v. Louis Vuiton Dak
Trademark cases are not only fought for the same business domain. This case of Louis Vuitton v Louis Vuiton Dak is an example of one such infringement case. The Louis Vuiton Dak is a South Korean fried chicken restaurant that lost the battle against the clothing designer Louis Vuitton. The court ruled the case in designer’s favor, concluding that a restaurant’s name – Louis Vuiton Dak is too similar to the brand name Louis Vuitton. Also, the logo and packaging of the restaurant were resembling very much to the designer’s iconic imagery.
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The restaurant then changed its name to LOUISVUI TONDAK for which it was again fined with another $14.5 million fine for non-compliance. Therefore, if you are a business, ensure keeping a safe distance to the well-known brand’s identity and try not to mirror them.
5. Zara Food vs Zara Fashion
Another case of food industry vs fashion for the brand name – Zara. It is a renowned fashion brand having major operations across the world found a restaurant operating in Delhi under the same name. It is highly possible that any consumer would confuse one for the other and take into consideration that the restaurant was started by the fashion brand.
And this what Delhi High Court ruled out. Zara had a presence in India since 2010 when it opened its first store through a joint venture and has also applied for a few trademarks in India. The restaurant was forced to change its name and now it operates under the name of Tapas Bar.
Every business must understand the severity of such trademark laws and how it can hamper the company’s growth. It is best to hire business professional services operating in legal space to ensure protection against such futuristic compliance issues. Most of the trademark infringement cases take into consideration the proof of prior use even if the trademark is not registered. Therefore, it is important to keep your trademark use in pamphlets, newspapers ads, etc. handy in case you are required to fight a legal battle.