Text & Context Newsletter: Trademark Case Notes and BananaIP's Patent Associate Opportunity

In this newsletter, we are sharing concise briefs on key cases involving trademark infringement and passing off. We cover the suit against ‘Barclays Premier League’, a brand associated with football events, the recognition of ‘Apollo’ as a well-known trademark in healthcare, and the dispute between ‘Roobini’ and ‘Rubam’ trademarks in the palm oil sector. These cases provide insights into the evaluation of composite marks, criteria for determining well-known trademarks, and the potential for confusion among consumers of average intellect and imperfect recollection.

Case Notes

PREMIER VS. BARCLAYS PREMIER LEAGUE: PREMIER FAILS TO SCORE IN THE DELHI HIGH COURT

Dismissing an appeal filed by 'Premier' against the rejection of its opposition of the mark, Barclays Premier League, the Delhi High Court stated that the device mark 'Premier’ and the device mark 'Barclays Premier League' were not deceptively similar. The Court came to this conclusion on a comparison of the composite marks, which it stated were visually disimilar because 'Premier' is just one part of the Respondent’s mark, and unlike the device of 'Premier', which had a flower on the top, the Barclays Premier League mark had a lion wearing a crown standing over a football. While arriving at the decision, the Court reiterated the principle that the mere fact that a particular word forms the dominant part of a mark does not necessarily give rise to a conclusion of deceptive similarity, which has to be tested on an overall comparison in case of composite marks. The trademark in question was filed in class 25, which deals with clothing, footware, headgear, and so on.

Citation: PREMIER SPG AND WVG MILLS PVT. LTD. vs FOOTBALL ASSOCIATION PREMIER LEAGUE LTD. & ANR., High Court of Delhi, 22nd January, 2024, C.A.(COMM.IPD-TM) 15/2023 & I.A. 12418/2023.

APOLLO DECLARED AS A WELL-KNOWN MARK

In a case filed by Apollo Hospitals against Dr. Dheeraj Saurabh, the Madras High Court declared that 'Apollo' is a well-known mark, and that use of the trademark, NEW APOLLO HOSPITAL, by Dr. Dheeraj amounts to trademark infringement. Based on the evidence on record, the Court was convinced that the mark Apollo is exclusively associated by a large segment of the public with Apollo Hospitals, which runs hospitals, pharmacies, clinics, and other medical facilities in India and other countries. The case was decided exparte, and the Court ordered the defendant to pay legal costs.

Citation: Apollo Hospitals Enterprises Ltd. vs Dr. Dheeraj Saurabh, 20th November, 2023, Madras High Court, C.S.(Comm.Div.) No.55 of 2023.

ROOBINI VS. ROOBAM FOR PALM OIL: A PERSON WITH AVERAGE INTELLECT AND IMPERFECT RECOLLECTION WOULD NOT BE CONFUSED BETWEEN THE TRADEMARKS, SAYS THE MADRAS HIGH COURT.

In a case for infringement and passing off, the Madras High Court held that Roobini and Roobam trademarks are not similar as there is no visual, phonetic, or structural similarity. After comparing the marks and products, the Court stated that the marks were different, and so where the pouches on which marks were placed. Owing to the dissimilarities, the Court concluded that a person with average intellect and imperfect recollection would not be confused or deceived, making the defendant's products non-infringing.

Citation: K.T.V. Health Food Private Limited vs Kalasakthi Agro Private Limited, Madras High Court, 29th November, 2023, C.S.(Comm.Div) No.8 of 2021

Summing Up

These cases reiterate important principles applied in trademark disputes. The possibility of a person with average intellect and imperfect recollection being confused and/or deceived is emphasized in both ‘Barclays Premier League’ and ‘Roobini’ cases. While the Barclays case outlines the need to compare composite marks as a whole rather than looking at specific parts despite the dominant part principle, the Roobini case goes an extra mile to look at how the marks are being used on products, and whether there is likelihood of confusion or deception springing from the packaging and pouch design. Not surprisingly, in the ‘Apollo Hospitals’ case, the Court has concluded that Apollo is a well-known trademark and has rightfully injuncted the defendant from using Apollo.

For businesses looking to build strong trademarks as well as those seeking to stay clear of trademark liability, these cases provide some important insights. They emphasize the importance of trademark clearance searches, choosing the right marks, and strategic designing of trademarks to minimize risks and maximize value. 

Disclaimer

The case notes in this blog post have been written by IP attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases, or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes. 

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