Balancing Brand Rights: The Art of Trademark Defense by Indian Brands
In the domain of trademark law, modest Indian businesses frequently face competition from global conglomerates. On the other hand, precedent-setting decisions show that the playing field can be levelled with strategic legal reasoning and strong defences. The article analyses the relevant legal principles and demonstrates through four key disputes in which Indian corporations successfully contested international claims. These cases provide insight into the broader ramifications for trademark protection as well as the processes that allowed these small enterprises to protect their brand identities.
Case 1: Toyoto Jidosha Kabushiki Kaisha. v. M/S Prius Auto Industries Ltd. & Ors. (2018 (73) PTC 1)
Japanese car manufacturer, Toyota, filed a claim suing Prius Auto Industries over the use of the mark “PRIUS.” The Single Judge of the Delhi High Court issued a decree to Prius Auto preventing it from using TOYOTA, INNOVA and PRIUS marks. The court stated that Toyota’s “PRIUS” had become well-known in India as the international advertisements had created a trans-border reputation for Toyota in India, even though Prius Auto had previously registered its mark in India.
Prius Auto brought an appeal before the Division Bench which set aside the injunction arguing that Toyota’s “PRIUS” had not gained enough trans-border reputation in India. In addition to this, it noted limited internet usage in India at that time and insignificant media coverage of the launch of Prius cars. The Supreme Court upheld this decision, emphasizing the “Territoriality Principle” which requires substantial evidence to prove that a trademark has gained significant reputation within a specific jurisdiction, regardless of its international standing.
Case 2: Burger King Corporation v. Anahita Irani (REG. CS No.-02/2011)
Having been founded in 1954, Burger King Corporation registered its trademarks in India in 1979. However, it did not become part of the Indian market until four decades later. The corporation brought an action alleging that the use of “Burger King” as a trademark by the defendants since 2008 irreparably damaged their brand’s reputation. They wanted a permanent injunction to bar them from using the name “Burger King.”
The court ruled favouring the defendants, stating that although the US-based conglomerate had registered the trademark, it had not been operational under the name “Burger King” in India for nearly three decades. Conversely, the defendant’s eatery based in Pune had used it continuously since 2008 rendering such use lawful and prior. The court held plaintiff’s suit to be improperly filed because of insufficient authorizations. The evidence provided was deemed inadmissible because of improper verification and lack of personal knowledge. As such, there was neither infringement of trade marks nor any damage proved by Plaintiff hence both suits and counter-claim by the plaintiff were set aside.
Case 3: Shisham Hinduja vs Cloudtail India Private Limited (30 August, 2022 OS.No.610/2018)
Shisham Hinduja, the plaintiff began her own business in 2008 under the registered name “Regalar” and then changed it to “HAPPY BELLY BAKES” in 2010, getting a trademark for Happy Belly Bakes in 2016. She was involved in manufacturing cookies, cakes, and other bakery products but faced a major problem the following year when Amazon’s private label, Cloudtail India, was found to be selling under the trade mark “Happy Belly” on Amazon India. Furthermore, Tootsie LLC of USA had unsuccessfully sought to register “Happy Belly” in 2016.
The defendants argued that “Happy Belly Bakes” lacked goodwill and their worldwide use of ‘Happy Belly’ was different from plaintiff’s operations which were only limited to Bengaluru. However, the court sided with the plaintiff and held it to be both the registered owner and prior user of HAPPY BELLY BAKES arguing that defendants’ use of mark HAPPY BELLY is deceptively similar constituting infringement and passing off. The court issued a permanent injunction preventing any further use of HAPPY BELLY by the defendants together with restraining Amazon Seller Services from listing any products related to the mark from its website.
Case 4: Retail Royalty Company v. Pantaloons Fashion & Retail Limited (2015 SCC OnLine Del 13988)
The plaintiff alleged infringement of its trademarks “AMERICAN EAGLE OUTFITTERS” and “AMERICAN EAGLE” by the defendants’ use of the trademark “URBAN EAGLE AUTHENTIC OUTFITTERS.” The plaintiff contended that it was the sole authorized user of the mark “EAGLE” for casual clothes and that this deceptive mark by the defendants was an attempt to exploit their established goodwill.
The defendants agreed to discontinue the disputed mark and substitute it with another mark, “URBAN EAGLE”. They proposed a modification in which the eagle device would be changed in addition to removal of the line reading “AUTHENTIC OUTFITTERS.” Defendants argued that, “EAGLE” is generic, thus not subject to be monopolized by the plaintiff. The Delhi High Court held that “EAGLE” was a common term which could not exclusively belong to Plaintiff as there was no deceptive resemblance between signs. Nonetheless, on appeal, the High Court found out that eagle devices used by the defendants were deceptively similar to plaintiffs registered ones. The appeal was partly allowed.
Analysis of Key Arguments and Legal Principles
| Case | Key Argument | Legal Principle | Court’s Reasoning |
| Toyoto Jidosha Kabushiki Kaisha. v. M/S Prius Auto Industries Ltd. & Ors. | Prius Auto had legally registered the “PRIUS” mark in India before Toyota.Toyota’s “PRIUS” mark had not gained significant recognition in India at the time of their adoption.There is no compelling evidence of public confusion. | Territoriality Principle | Toyota’s “PRIUS” mark had not gained substantial trans-border reputation in India. In a passing-off action, the claimant must prove reputation and goodwill within the specific jurisdiction. |
| Burger King Corporation v. Anahita Irani | The “Burger King” trademark had been used in India since 1992, predating the plaintiff.The trademarks had no significant similarity, reducing the likelihood of confusion.The plaintiff lacked market presence in India at the relevant time.The plaintiff failed to show evidence of actual harm from the alleged infringement.The affidavit from the plaintiff’s witness was improperly verified and inadmissible. | Prior Use | The plaintiff’s suit was improperly instituted. The Pune eatery had been operating long before the US burger chain established its presence in India, and the latter failed to demonstrate that the local restaurant had infringed on its trademark or caused actual damages. |
| Shisham Hinduja vs Cloudtail India Private Limited | Plaintiff claimed ownership of “HAPPY BELLY BAKES” trademark, registered in 2016 and used since 2010, hence a prior user.Defendants’ mark “HAPPY BELLY” is visually, phonetically, structurally, and conceptually similar to her mark and causes confusion with her registered mark. | Territorial Jurisdiction Prior Use Device Mark Protection | Prior rights to the “HAPPY BELLY BAKES” trademark were protected in both the device and word marks within India’s territorial jurisdiction, regardless of the defendants’ global use. |
| Retail Royalty Company v. Pantaloons Fashion & Retail Limited and Ors. | “EAGLE” is a generic term and cannot be exclusively claimed by the plaintiff.Agreed to discontinue the contested mark and proposed a revised version “URBAN EAGLE.”The appellant’s Eagle Device ‘swooping Eagle’ and that of the respondent’s a ‘taking off or a flying eagle’ are not deceptively similar. | Generic Marks Deceptive Similarity | “EAGLE” is a common term and cannot be exclusively claimed. The difference between a swooping eagle and a taking off or flying eagle is too minute and can lead to confusion. |
Conclusion
The article’s analysis reveals how local and international branding rights coexist within the context of territorial jurisdiction and prior use rights. These cases illustrate the significance of MNCs to have genuine cross border reputations in countries such as India while presenting various ways through which smaller Indian firms can protect their trademarks using astute legal approaches. Ultimately therefore, the precedents affirm that large corporations along with small ones can achieve fair results by adhering to trademark doctrines as well as strengthening their efforts for legal protection.
Vedant Pujari, Partner
Ahana Roy Chowdhury, Senior Associate
Suchika Goel, Intern
Manvi Jain, Intern