Trademarks

1. The Eastman Photographic Materials Company Limited v. The Comptroller General of

Patents, Designs, and Trademarks (‘Solio’ case)-Two common English words combined
won’t be distinctive, but ‘sol’ meaning sun + io used for photographic paper won’t be
descriptive, have to look at the word as a whole
2. Armstrong Paint v. Nu Enamel Corp-Nu-enamel though descriptive of enamel paint had
acquired secondary meaning
3. British Sky Broadcasting Group v. Microsoft Corporation-Former’s TM had acquired
goodwill such that ‘Skydrive’ for latter’s technology could not be allowed
4. Gucci Am v. Guess Inc-Guess made shoe line using Gucci’s Red-Green stripe design-
held damaging to reputation
5. Yale University v. Yale Academy-Using university name and similar logo for coaching
classes not allowed
6. Daimler Benz v. Hybo Hindustan-Using Benz logo for underwear-not permissible
7. PepsiCo v. Hindustan Coca Cola-Disparaging advertisement-Showing ‘Pappi’ with
similar logo as a kid’s drink-amounts to TM infringement
8. Dabur India Ltd v. Colgate-Disparaging advertisement in respect of a generic class of
goods including the plaintiff’s without specific reference will also be TM infringement
9. Godrej Sara Lee v. Reckitt Benckiser-Showing positive/better characteristics of one’s
own product without denigrating the other will not amount to TM infringement
10. Eureka Forbes v. Pentair Water-Saying the other product is inferior and does not work
will be TM infringement
11. Glaxosmithkline Consumer Healthcare v. Heinz India (P) Ltd-Complan and Horlicks-
Calling Horlicks cheap is not permissible, but price comparison and saying Horlicks
makes you taller and stronger is permissible
12. Yahoo Inc v. Akash Arora-Passing off action can be brought in respect of services such
as similar domain name though not covered by the Act
13. Satyam Infoway v. Sify Net Solutions-same as above
14. Mattel Inc v. MCA Records-Use of ‘Barbie’ in I’m a Barbie Girl Song-protected by
parody exception under US patent law
15. Amrithdhara Pharmacy v. Satya Deo Gupta-Medicinal preparations-Amritdhara and
Lakshmandhara-Former claimed TM infringement-Court held have to look at it from the
perspective of average man of reasonable intelligence-have to look at overall similarity
and not individual components-the overall similarity between the two names in respect of
the same description of goods was likely to cause deception or confusion, however
‘doctrine of acquiescence’ would apply as appellant had not objected to the use of
trademark earlier in spite of being aware
16. De Cordova v. Vicks- Trademark over triangle shape - d/f copied VAPORUB - held
infringement - word essential to the trademark, would make deceptively similar
17. Colgate Palmolive v. Lucas Bols-Using KLAERIN for toilet cleaner when TM exists in
respect of CLAERYN for gin-attraction of the latter brand will be diminished
18. CA Sheimer v. TM Appn
19. Jardex TM Appln
20. Cadilla Heathcare v. Cadila Pharmaceuticals-Infringement is evaluated by looking at
overall similarities causing confusion from point of view of average consumer and not
dissimilarities-Phonetic similarity between medical products-amounted to infringement
21. Two Pesos Inc v. Taco Cabana-Trade dress such as restaurant logo is inherently
distinctive and does not require secondary meaning to be trademarked
22. Qualitex Co. v. Jacobson Products Co- Color can be trademarked if it has acquired
secondary meaning in relation to the product (i.e. people identify that color with that
manufacturer), Functionality doctrine not applicable
23. Smith, Kline & French Labs Ltd. v. Sterling Winthrop-Color can be trademarked if it has
acquired secondary meaning
24. Unilever’s TM Application-Color TM application for red and white in relation to
toothpaste rejected-limited colors in market
25. John Wyeth’s Coloured Tablet TM-Application for TM on blue and yellow tablets
rejected-standard use in pharma industry
26. Libertel Case-Color per se can be trademarked, but the specific pantone number should
be provided, and it should have secondary meaning
27. Heilderberg Bauchelmie-Color combination which has not been spatially delimited is not
a registrable trade mark, because it is not sufficiently precise that competitors can see
 from the register exactly what is protected. Has to be systematic, predetermined and
uniform.
28. Ralf Seickman v. German Patent Office-Scent cannot be registered because it is not
capable of graphical representation
29. Philips v. Remington-If the shape of the product is necessary to the functioning of the
product cannot be trademarked
30. Kemp &Company v. Prima Plastics Ltd-If the distinctive shape of the product requires
reputation and goodwill in itself, can hold a person who copies it liable for trademark
infringement
31. Shield Mark BV v. Joost Kist-TM over sound can be granted if it can be represented
graphically through musical notes and not otherwise (written description of sound will
not suffice)
32. Harley Davidson Application-Functionality test-sound was essential to functioning of
engine-TM over sound would amount to patenting the engine, hence TM could not be
granted
33. British Sugar Plc V James Robertson & Sons Ltd-British Sugar registered "Treat" as a
trade mark for "Dessert sauces and syrups" called "Silver Spoon Treat" meant to be used
as a dressing for desserts. James Robertson used the name "Robertson's Toffee Treat" for
a spread it produced. It was held that there was no likelihood of confusion as the products
had different purposes and different presentation. They were also of different
specifications.