Trademark Violation Cases
Trademark infringement occurs when a person uses a mark identical or deceptively similar to a registered trademark in a way that causes likelihood of confusion among consumers. Under Indian law, this is governed primarily by the Trade Marks Act, 1999 (Sections 29, 30, 135).
Below are major Indian and international cases that shaped trademark jurisprudence.
1. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001)
Principle: Deceptive similarity & public health test
Facts
Both companies used the word “FALCIGO” (Cadila Healthcare) and “FALCITAB” (Cadila Pharma) for anti-malarial drugs.
Both medicines were used to treat the same disease malaria.
Reasoning
The Supreme Court emphasized that for medicinal products, even a potential possibility of confusion can cause serious harm.
Introduced the “degree of care” test:
– Consumers of medicines include illiterate or semi‐literate people.
– Confusion between drug names could be life-threatening.
Judgment
Court held that marks were deceptively similar.
Stressed that public health is the paramount consideration.
2. Parle Products Pvt. Ltd. v. J.P. & Co. (1972)
Principle: Overall impression test
Facts
Parle produced “GLUCO” biscuits with a distinctive packaging.
The defendant launched biscuits with similar packaging patterns.
Reasoning
The Supreme Court held that consumers look at the overall similarity and not minute differences.
Even if consumers do not recall exact details, visual resemblance creates confusion.
Judgment
Packaging was found deceptively similar.
Injunction granted in favor of Parle.
3. Amritdhara Pharmacy v. Satya Deo Gupta (1963)
Principle: Phonetic similarity & average consumer test
Facts
Plaintiff used the mark “AMRITDHARA” for medicinal products.
Defendant used “LAKSHMANDHARA” for similar medicinal drops.
Reasoning
Court emphasized phonetic similarity.
Rural and semi-literate consumers may not differentiate subtle differences.
Judgment
Marks were phonetically similar.
Defendant restrained from using "Lakshmandhara".
4. Yahoo! Inc. v. Akash Arora (1999)
Principle: Trademark protection extends to domain names
Facts
Yahoo! Inc. sued Akash Arora for operating “YahooIndia.com”, deceptively similar to “Yahoo.com”.
Reasoning
Domain names function as business identifiers, similar to trademarks.
Even disclaimers do not prevent initial consumer confusion.
Judgment
Court restrained the defendant from using the domain.
5. Daimler Benz AG v. Hybo Hindustan (1994)
Principle: Protection of famous marks (well-known trademarks)
Facts
The defendant used “Benz” and a three-pointed star symbol on underwear.
Plaintiff: Mercedes-Benz (world-famous automobile brand).
Reasoning
Trademark was globally recognized.
Use on underwear was detrimental to brand reputation.
Dilution of a well-known mark itself amounts to violation.
Judgment
Court held that the defendant’s use was illegal.
Strong observations on protecting prestigious international brands.
6. ITC Ltd. v. Philip Morris Products (2010)
Principle: Trademark dilution under Section 29(4)
Facts
ITC owned the “ESSE” trademark for cigarettes in India.
Philip Morris used a similar brand identity in its global campaign.
Reasoning
Even if consumers are not confused, use of similar branding can dilute a well-known mark’s uniqueness.
Dilution = blurring + tarnishment.
Judgment
Court protected ITC’s trademark from dilution.
7. Starbucks v. Sardarbuksh (2018)
Principle: Similar visual/phonetic marks = likelihood of confusion
Facts
An Indian café used the name “Sardarbuksh” with a green circular logo similar to Starbucks.
Reasoning
Phonetic and visual similarities were too close.
Even though culturally different, similarities could mislead customers.
Judgment
Café changed name and partially changed its logo.
8. Honda Motors Co. v. Charanjit Singh (2003)
Principle: Trademark dilution & unfair advantage
Facts
Defendant used “Honda” for pressure cookers.
Honda is globally known as an automobile brand.
Reasoning
Even if products differ, use of a famous mark exploits goodwill.
This constitutes dilution and unfair advantage.
Judgment
Defendant restrained from using “Honda” on cookers.
Conclusion: Key Principles from Case Laws
| Legal Principle | Landmark Case |
|---|---|
| Overall similarity test | Parle v. JP & Co. |
| Phonetic similarity | Amritdhara v. Satya Deo Gupta |
| Public safety in medicinal trademarks | Cadila Healthcare |
| Domain names as trademarks | Yahoo! v. Akash Arora |
| Protection of well-known marks | Daimler Benz v. Hybo |
| Dilution and unfair advantage | Honda Motors case |
These cases illustrate that trademark law focuses not only on exact copying but also on likelihood of confusion, consumer perception, and goodwill protection.
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