1. Moods Hospitilaty v. nestle india

Facts

Moods hygiene is the plaintiff and it is a private limited company registered under the

Companies Act, 1956. It operates under the brand name/house mark "Yo! China". The

plaintiff started using "Yo! China" for carrying on its restaurant business of Chinese food

since the very first day when its restaurants came into existence in India. It was stated that the

plaintiff coined expression "Yo! China" in the year 2002 in order to distinguish its business,

trade identity and products/services from others. It is stated that the word "Yo" (without the

exclamation mark) is primarily an American slang used for calling attention, expressing

encouragement or excitement, or a greeting and hence is not descriptive of the goods and

services.It has no direct or remote reference to the nature or quality of the goods or services

being provided by the plaintiff, thus making it inherently distinctive. The plaintiff submitted

that it has built, developed and nurtured the trademark "Yo!" and "Yo! China" since the year

2002 and has made extensive use of the said expression "Yo!" since its inception for almost

everything that had anything to do with their business and products/services.The expression

"Yo!", because of its inherent distinguishability and extensive use has become distinctive of

the plaintiff in the eyes of the consumers as also in the trade, industry and restaurants of fast

food across the country.

In the year 2005-06, the plaintiff company launched an innovative product called "Yo! on the

Go" which was essentially noodles (chowmein) served in a box with different variants, which

the consumer can pick and move . e.g. "Yo! Box", "Yo! On the Go", "Yo! Dimsum", "Yo!

Carts" etc. As a result of its extensive and continuous use, coupled with widespread publicity,

it is claimed that the Trade Marks "Yo!" and "Yo! China" become well known marks within

the meaning of Section 2(1) (zg) of the trademarks Act, 1999 The mark has acquired a

secondary meaning. Thus the plaintiff has acquired the exclusive right to use the said marks

"Yo!" and "Yo! China". It is stated that the marks "Yo!" and "Yo! China" when applied to

goods and services and businesses are automatically taken to be originating from the plaintiff,

and that the user of the expression "Yo!" in some form or the other is associated with them.

The defendant company is manufacturing and marketing, noodles (chowmein) under the

name and style of "Maggi Cuppa Mania instant noodles" in two flavours "Masala Yo!" and

"Chilly Chow Yo!".The said products are a direct take on the product of the plaintiff "Yo! On

the Go!". It is alleged that the defendant has deliberately, and with intention to gain from the

goodwill and reputation of the plaintiff and also to mislead the customers used the trademark

"Yo!" while mentioning the flavours of the noodles contained in the said packs as "Masala

Yo!" and "Chilly Chow Yo!". The case of the plaintiff is that the expression "Yo!" used by

the defendant on its packaging is neither descriptive of the product contained in the

defendant‟s packaging, nor it relates to the quality of the product at all. The use of the mark

"Yo!" on the packaging by the defendant is solely with the intention of misleading the

consumers and making gains over the goodwill and reputation of the plaintiff‟s registered

trademark "Yo!". It is stated that the impugned use by the defendant of the plaintiff‟s

registered trademark is a case of infringement and passing off by the defendant under the

Trademarks Act. The mark "Yo!" adopted by the defendant on their "Maggi Cuppa Mania" is

stated to be visually, phonetically and structurally similar to the mark of the plaintiff.

Judgment

The judge was of the view that the plaintiff has made out a case for grant of ad interim

injunction as prayed for. First and foremost there is no explanation as to why the defendant

has used the exclamation mark i.e. „!‟ along with the word "Yo".

The mark of the plaintiff "Yo!" and "Yo! China" are not descriptive of the goods of the

plaintiff. They do not describe any quality or attribute of the plaintiff‟s goods.

The dictionary meaning of "Yo" in no way gives any indication of the flavour or quality, or

ingredients, or the characteristics of either the plaintiffs or the defendant‟s product.

Judge was of the view that the registered marks of the plaintiff "Yo!" and "Yo! China" are

arbitrary marks in relation to the goods and services offered by the plaintiff and the said

marks are entitled to protection under the Act. The marks „Yo!‟ and „Yo! China‟ have

acquired distinctiveness in relation to the services and goods originating from the plaintiff by

their extensive user since 2002.

it appears that these marks have acquired a secondary meaning in so far as the goods viz.

Chowmein (Noodles) are concerned. The judge was convinced that the registration of the

trademarks "Yo!" and "Yo! China" are liable to be cancelled for any of the reasons cited by

the defendant.

It cannot be said that "Yo!" is not a distinct mark. Its adoption by the plaintiff is arbitrary and

it is not descriptive of the plaintiff‟s goods and services. It cannot be said that the mark is

generic in nature. "Yo!" is not another name of noodles (chowmein).

The use of the mark "Yo!" in relation to other goods or businesses cannot be an excuse for

the defendant to use the said mark in relation to, admittedly, the same class of products and

services for which the plaintiff has obtained registration of the said mark.

A registered trademark is infringed by a person if he uses such registered trademark as his

trade name or part of his trade name or name of his business concern, dealing in goods and

services in respect of which the trademark is registered. It cannot be disputed that the goods

and services being offered by the plaintiff and the goods of the defendant, namely, noodles

(chowmein) are overlapping. The defendant is using the trademark "Yo!" of the plaintiff in

course of trade in a similar manner to the manner for which the trademark is registered. It is

being used on the packaging of its products by the defendant. "Mark" includes a heading, a

label, a name, a word, a letter or combination of thereof. Consequently, the use of the mark

"Yo!" by the defendant appears to fall within Section 29(4)(b) of the Act.

It is a well-recognised principle of law that a trader or a businessman can acquire exclusive

rights to use a particular word with dictionary meaning as a trade mark if it is shown to the

satisfaction of the Court that it has acquired a secondary meaning or a distinctive character

with the constant user for a considerable period of time. The user of the impugned word must

be to such an extent that it has lost its primary meaning and has acquired a distinctive

character. The moment the same is used it must remind the consumer of the goods of the

plaintiffs. It has become so popular with the public by way of goodwill or a reputation that

the moment it is used and referred to a picture emerges in the mind of the consumer of the

article in question which is being sold under the said trade name. Thus the only qualification

attached to the use of a descriptive word as a trade mark is that it must have been associated

and used in connection with the goods of the plaintiffs for such a considerable period that it

has come to acquire an altogether different meaning other than the one which it conveys in

the language. find no merit in the defendant‟s submission that the use of the mark "Yo!" by

the defendant is not likely to lead to confusion or deception as the defendant is using the

same in conjunction "Masala" and "Chilly Chow" on its Maggi branded noodles (chowmein).

"Yo!" it appears have become distinctive of the services and goods offered by the plaintiff

and the use of the said mark by the defendant on its products is likely to lead to confusion and

deception in the minds of the consumers that the product of the defendant has some

connection with the plaintiff, its products and services. The plaintiff has disclosed the extent

of the use of the marks "Yo!" and "Yo! China" adopted by it since the year 2002 and the

efforts made by it in popularizing the said marks and it cannot be said that these marks do not

identify the plaintiff and its products.

It is pertinent to note that the defendant has been in business of producing and selling

noodles (chowmein) for the last about three decades. There is no explanation why and how it

is suddenly thought of using the mark "Yo!" in relation to its products for which the plaintiff

has a registration in its favour. The submission of the defendant that the expression "Yo!" is

not being used as a trademark has no ground because Section 29(4) does not require that the

defendant should be using the trademark of the plaintiff, as a trademark. It is sufficient if the

trademark of the plaintiff is used as a mark by the defendant in relation to goods or services,

which are identical or similar to those for which the trademark is registered. The defenadants

were restrained from using the plaintiff‟s trademark "Yo!" as it is likely to cause confusion

amongst the consumers of noodles (chowmein), who according to both the parties are

youngsters/teenagers.

2. Bata India Ltd v. pyarelal

The plaintiff “Bata” company filed a suit for permanent injunction against the

defendants who were using the word “Bata’ as “Batafoam”.the name “bata” was

registerd under the trademarks Act,1940,in respect of canvas,rubberand leather

shoes,rubber footwear,etc.it was held that the plaintiff had a cause of action for

instituting the proceedings for paasing off. The plaintiff made out a case of issuance

of an interim order of injunction in respect of the user of the name ‘Bata” on any of

the products by the defendants.

3. Ralf sieckman case-Non conventional trademarks

Ralf Sieckmann v. Deutsches Patent and Markenamt is a landmark case by the European

Court of Justice (ECJ). In this case, Mr. Sieckmann sought trademark protection in

respect of his conglomeration of business. He represented the mark by denoting its

chemical composition, giving the chemical formulae and specifying that samples could be

found in local laboratories listed in the Dutch Yellow Pages. He also submitted a sample

stating that the scent was usually described as “Balsamically fruity with slight hint of

cinnamon”.

The application was rejected at various levels on the ground that it did not fulfil the

requirement of Article 2. The preliminary ruling was essentially on whether smells were

registrable and whether the stated methods of graphical representation are adequate.

Noting that the signs mentioned in Article 2 do not constitute an exhaustive list, the Court

ruled that a scent could receive trademark protection provided it is graphically represented.

Such representation “must enable the sign to be represented visually, particularly by means of

images, lines or characters….”; it should be clear, intelligible and self-contained. The purpose

of the graphical representation was to enable the competent authorities, tradesmen/

competitors and the general public to ascertain the precise sign for which protection was

sought for, by checking the public registry.

With regard to the method of graphical representation, the Court observed that few people

could ascertain the scent by reading the chemical formulae; further the formula actually

denoted the substance and not the scent. A mere written description, though graphical, was

not precise or clear. An odour sample was not graphical, nor stable or durable. Therefore, the

Court ruled that none of these methods, individually, or in combination, constituted valid

representation. Thus, the application for registration of trademark of the scent of

“Balsamically fruity with slight hint of cinnamon” was rejected.

It is interesting to note that the Court did not lay down what constituted a valid graphical

representation for the purposes of Article 2. In not doing so, and in striking down the

aforementioned methods, the European Court of Justice has severely restricted the scope of

registration of scents.

4. Dabur india ltd v. M/s clortek Meghalaya pvt.ltd- Comparative advertisement

The case of Dabur India Ltd. v. M/S Colortek Meghalaya Pvt. Ltd. laid down certain

principles to help ascertain the import of implied disparagement in comparative advertising.

Herein, the appellant was a manufacturer of mosquito repellent creams, namely ‘Odomos’

and ‘Odomos Naturals.’ The respondent also manufactured a mosquito repellent cream under

the brand name ‘Good Knight Naturals.’ The respondent telecast the advertisement of ‘Good

Knight Naturals’, with the appellant contending that the same disparaged its product. The

question that arose before the Court was whether the whether the appellant was entitled to an

injunction against the telecast.

The Court observed that a seller always has the scope to represent his product

in a manner that gains him additional purchasers than what he would have normally had. This

latitude, however, in no way implies any permission for misrepresentation, but only a

description of permissible assertion. To substantiate this argument, the Court also placed

reliance on the principle of civil law, “simplex commendatio non obligat”, which means that

simple commendation can only be regarded as a mere invitation to a customer, without any

obligation as regards the quality of goods. Thus, each seller has the right to naturally try and

affirm that his wares are good enough to be purchased, or of superlative quality.

Although the Court held that commendatory expressions should not to be

treated as serious representations of fact, it further stated that such principle was by no means

conclusive as the limits of permissible assertion are not always discernible. The Court thus

laid down certain guiding principles wherein it observed that an advertisement is constitutive

of commercial speech and is protected by Art. 19(1)(a) of the Constitution. While there

would be some grey areas in the process of representation, any commendatory statements

need not necessarily be taken as serious representations of fact, but only as glorifying the

product, provided that the advertisement is not false, misleading, unfair or deceptive. Also

while glorifying the product, an advertiser may not denigrate or disparage a rival product. A

cause of action would arise when the subject of the advertisement goes beyond mere

commendatory statements to constitute untrue statements of fact about a rival’s product.

The Court formulated certain tests to determine any cause of action for disparagement:

1. What is the intention behind the advertisement, as deciphered from the storyline and the

message ostensibly sought to be conveyed?

2. Is the manner of advertisement or comparison by and larg truthful or does it falsely

denigrates or disparage the rival’s product?

3. Finally, does the ad have the overall effect of promoting the seller’s product or showing the

rival in poor light?

The judgment delivered in Dabur India assumes significance in the regulation

of comparative advertising as it points out stark differences between tolerable amounts of

puffery and what might amount to denigration. The Court rejected the argument of the

appellant that it was the implied target of denigration since it had a dominant market share.

The underlying rationale behind this argument would be that the appellant sought to create a

monopoly in the market, or had wanted to entrench the monopoly it had already established.

If such a thing were to happen, then no company in the market could advertise its product as

doing so would necessarily mean that the appellant’s product was being targeted. The

commercial in dispute merely enlisted the virtues of the advertised product rather than

denigrating that of the competitor. The Court found no content in the commercial to suggest

overt or even implied denigration. It was held to be natural to assume that “while comparing

its product with any other product, any advertiser would naturally highlight its positive points

but this cannot be negatively construed to mean that there is a disparagement of a rival

product.”

A further submission by the appellant was that the use of expressions such as ‘an

apprehension of getting rashes and allergy with the use of mosquito repellent creams’, or an

allegation that other creams caused stickiness, amounted to disparagement of its product. The

same was also rejected by the Court as there was no suggestion that any specific product

caused rashes or allergies or was sticky. A general proposition had been advanced which

suggested that if a mosquito repellent cream was applied on the skin, there may be an

apprehension of rashes and allergy. Since the respondents were also promoting a mosquito

repellent cream, there was no reasonable apprehension that they would denigrate all mosquito

creams or of the fact that such creams caused rashes or allergies. The respondents were only

suggesting that since their product contained certain exclusive ingredients, there is a lesser

chance of the consumer suffering from any side effects. With regard to the point on

stickiness, the Court observed that it was entirely dependent on the subjective opinion of the

consumer, and thus ended all apprehension of denigration of the appellant’s product.

Furthermore, it referred to the appellant as being ‘hyper-sensitive’ and suggested that the

parties were settling a commercial rivalry by using the courts as a medium to ward off

challenges to their monopolistic position in the market. In conclusion, however, the Court

also mentioned that while puffed-up advertising may be permissible, it cannot transgress the

grey areas of permissible assertion. In case it does so, the advertiser must have some

reasonable factual basis for the assertion made. The medium of advertisement was also one of

the factors that became a determinant of denigration. The far-reaching consequences of the

electronic media were looked into. Since “a telecast reaches persons of all categories,

irrespective of age, literacy and their capacity to understand or withstand”, the impact of a

telecast on society was held to be phenomenal. The Court, however, seemed to recognize the

consumer as one who was capable of comprehending market realities, and choosing a product

accordingly. It did not consider the general public as being blindly influenced by a

commercial advertisement that indulged in puffing its products in order to promote sales and

it was held that there was no disparagement.

The guidelines laid down were:

1. Tradesman is Not entitled to declare his goods to be best in the world if the

declaration is untrue

2. Tradesman cannot say that his goods are better than competitor ,if declaration is

untrue

3. For the purpose of saying that his goods are best in the world or better than others he

can compare advantages of his goods with others goods.

5. Procter & Gamble Home Products v. Hindustan Unilever Limited (rin v. tide)-

Comparative advertisement

In this case the Calcutta High Court highlighted the difference between express denigration

and puffery. The petitioners were manufacturers of a detergent powder brand ‘Tide’, while

the respondents were the market rivals of ‘Tide’ and the manufacturers of the detergent

powder ‘Rin’. The respondents aired a commercial that compared both the products and

allegedly portrayed the petitioner’s product in a negative manner, claiming that ‘Rin’ was

more effective than ‘Tide’ in providing ‘whiteness’ to clothes. The petitioner thus prayed for

an injunction to restrain the respondent from telecasting the advertisement, contending that

the same had not stopped at merely puffing the advertised product, but had disparaged the

competing product. The respondents herein submitted that the assertions in the advertisement

were a comparison of the quality of the two products, in particular the ‘whiteness’ quotient,

that the respondent’s product was imparted due to the use of certain chemical fluoresces.

They argued that the fact that the whiteness provided by ‘Rin’ was better could be inferred

from laboratory tests conducted by both the respondent and independent agencies, thus

resulting in an absolute defense of truth. Since the comparison was strictly restricted to the

whiteness as provided by the respondent’s product due to the chemical fluoresces, it was

argued that the commercial fell within the ambit of permitted comparative advertising.The

Court, however, differed from the respondent’s view and held that there was an express

denigration of the petitioner’s produc According to the Court, on application of the principles

laid down in Dabur India, it was discernable from the format of the advertisement and the

manner of its depiction that it had the overall effect of portraying the competing product in a

poor light rather than promoting the seller’s own product. The mention of the tickler

mentioning independent laboratory tests had not been the focus of the advertisement, with

there being sufficient scope for ambiguity surrounding the degree of accuracy of such tests.

Further, a dull shirt and a clear white shirt were depicted with the respective products, and a

connection between the dull shirt and the petitioner’s product was plainly evident. It was also

clear from the audio component that the petitioner’s product was being expressly denigrated.

Considering the deep impact that the electronic media has on the psyche of the consumers,

the Court upheld the request for an interim injunction, restraining the petitioner from

broadcasting the denigrating advertisement.

6. National Hockey League v. Pepsi-Cola Ltd. –Ambush Marketing

Though the case involves an action for passing off, the facts surrounding the case highlights a

clear example of ambush marketing. The National Hockey League (NHL), an affiliated

company service company with 21 ice-hockey teams, had an agreement with Coca-Cola that

it would be the official drink of the tournament. However, the advertising rights were granted

to another company which had a tie-up with Pepsi-Cola, Coca-Cola’s main competitor, to

advertise during the broadcasts. Therefore, in between the broadcasts, Pepsi broadcasted a

show with a well-known celebrity thereby reflecting that Pepsi was the official drink of the

tournament. NHL instituted a suit against Pepsi contenting that such broadcasts portrayed

Pepsi as being the official drink approved by NHL and hence, Pepsi was liable for passing

off. Pepsi on the other hand argued that it was doing nothing more than aggressive

advertising and promotional campaign which was legitimate. The Court stated that for an

action for passing off, there must be a representation that the defendant’s goods are connected

with the plaintiff in such a way as would lead people to accept them on the faith of the

plaintiff’s reputation. The Court observed that in the instant case, though there was a clear

case of ambush marketing, there was nothing that could be done to protect NHL or Coca-

Cola. The Court held that not every kind of connection clamed can be called to be passing

off.

7. ICC Development (international) v. Arvee Enterprise and Anr.-Ambush Marketing

The plaintiff is the organiser of the ICC World Cup 2003, plaintiff created diifferent

distinct 'logo' and a 'mascot' for the event. Owing to wide publicity of the said logo and

mascot, members of the public associate the same exclusively with the plaintiff .The

plaintiff has filed applications for registration of its trade-mark in several countries. In

India, it has filed applications for registration of words "ICC Cricket World Cup South

Africa 2003" and logo and the mascot "Dazzler”. There were 9 official sponsors of the

world cup and defendant was not one of them. There were advertisments by the

defendants in which there were offers like "Philips: Diwali Manao World Cup Jao" and

"Buy a philips Audio System win a ticket to the World Cup" inserting a pictorial

representation of a ticket with an imaginative seat and gate number saying "Cricket

World Cup 2003", on the advertising campaign. The plaintiffs pleaded that the

defendants misrepresented their association with the plaintiff and the World Cup, by

advertisements in media, including newspapers, television, internet and magazines and

by using said offending slogans with the intention to unlawfully derive commercial

benefit of association with the plaintiff and the World Cup thereby, seeking to piggyback

on the reputation of the plaintiff. It was pleaded the defendants have resorted to "ambush

marketing" to take advantage of the World Cup without investing a single rupee towards

its success hence defendants are guilty of passing off indicia, mark and identity of the

plaintiff and the World Cup thereby causing irreparable harm and injury to them and are

also depriving the sponsors of the event from enjoying the exclusivity of rights granted to

them and preventing the plaintiff from performing its contractual obligation. On these

grounds the plaintiffs sought an interiom injunction against the defendants . The plea of

the defendants was that The "World Cup" being a generic word is not capable of

conferring any exclusive rights much less trade mark rights on anyone using the same.

Generic words denote the product or service in question and therefore are meant to be

available for use by everyone. Generic words can never be the trade-marks even upon

evidence of earlier user or reputation.

The defendants have not sought to derive any association, relationship or affiliation with

the plaintiff; and that the defendants have not used the World Cup in the course of trade

or in a trade mark significance nor it is used to indicate a trade origin or that they are the

sponsors of the Event. The user constitutes protectible descriptive fair use, which is

permissible under Section 34 of the Trade and Merchandise Marks Act, 1958 which

enables the use of even the registered trade-mark for bona fide description of any

product.

It is pleaded that the defendant has used the words "World Cup" in its advertisement in a

generic manner and it has neither used the logo nor the entire phrase "ICC Cricket World

Cup South Africa, 2003". The defendant had booked tickets and travel packages for 125

persons for the Event; these were duly confirmed by Edusport Gullinjet Travel {for

short, "EGT"}, the sole international tour operator, and authorized agent or sub-agent of

the plaintiff. The defendant had already paid Rs. 25,00,000/- to them, which is duly

confirmed by EGT. There can be no passing off as the passing off action depends upon

the simple principle that nobody has any right to represent his goods, as the goods of

somebody else. The passing off involves mis-representations by a trader to his

prospective customers, calculated to injure {as a reasonably foreseeable consequence} to

the business or goodwill of another. It is treated as a form of unfair competition or

wrongful appropriation of the plaintiff's personality. In order to create a valid cause of

action for passing off, five characteristics that must be present are : (i) a

misrepresentation, (ii) made by a trader in the course of trade, (iii) to prospective

customers of his or ultimate consumers of goods or services supplied by him, (iv) which

is calculated to injure the business or goodwill of another trader {in the sense that this is

a reasonably foreseeable consequence} and (v) which causes actual damage to a business

or goodwill of the trader by whom the action is brought or {in a quia timet action} will

probably do so.

Judgment

The question which requires consideration is whether sufficient number of purchasers of

defendants' goods unmistakably are likely to be confused about the source of defendants'

goods or assume that defendants have some connection with the official sponsors of the

event? In this case, admittedly, defendants have not used plaintiff's "logo" or mascot

"Dazzler" on any of their advertisements or promotional campaigns. True, the defendants

have inserted a pictorial representation of a ticket with an imaginative seat and gate number

saying "Cricket World Cup 2003". From this the attention of purchasing public may be drawn

towards the Event. But this does not show likelihood of any confusion in public mind that

defendants are sponsors or licensees of the Event. The slogans merely show that the

purchasers of the defendants' goods may win a ticket and travel package to see the world cup

and nothing more. There is noting in advertisements to show that public is likely to be

confused that defendants' goods are sponsored by the plaintiff. Therefore, basic ingredients of

passing off action or unfair competition are not made out.

As far as plea of "ambush marketing" is concerned, the phrase "ambush marketing" is used by marketing executives only. It is different from passing off The ambush marketeer does not seek to suggest any connection with the event but gives his own brand or other insignia, a larger exposure to the people, attacted to the event, without any authorization of the event organizer. the Court noted that ambush marketing was not a legal term and that it cannot be equated with passing off, as ambush marketing is only the opportunistic commercial exploitation of an event devoid of the element of deceit.

Primae facie these advertisements, in no way, suggest that the defendants' business is

approved, authorised or endorsed by the plaintiff. Therefore, prima facie, basic ingredients of

passing off, unfair trade practice or misappropriation of plaintiff's personality are not made

out. The defendants have paid substantial sum of Rs. 25.0 lacs towards purchase of tickets

and travel arrangements to the plaintiff's agent for the Event. The scheme offered to the

public by the defendants has already concluded. Assuming the plaintiff ultimately succeeds, it

may, at best, be entitled to damages. Therefore, even balance of convenience is not in favor

of the plaintiff, the plaintiff has failed to make out a prima facie case, for grant of ad-interim

injunction. The application is, accordingly, dismissed.. The Court also based its decision on

the logic that the terms ‘World Cup’ and ‘Cricket World Cup’ were generic and thus not

protectable as trademarks and that Philips had refrained from using any of the plaintiff’s

protectable marks.