Facebook vs Facebake is just the latest in a series of trademark wars

It was not the first such case. And it’s unlikely to be the last.

Dozens of flea markets, including Delhi’s Chor Bazaar, sell clothes, shoes, watches and colognes named after world-famous brands. Popular coffee shop chains, mineral water brands, fast moving consumer goods (FMCG) companies and many others have had to contend with intellectual property rights (IPR) infringements.

So how do we stand when it comes to intellectual property rights?

According to Indian law, a trademark is a mark “capable of graphic representation which is capable of distinguishing the goods or services of one person from the goods or services of others and may include the shape of the goods, their packaging and combination of colours”.

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Anyone who tries to use a mark that is deceptively similar to another popular mark (eg in font, format, color scheme, etc.) is infringing copyright. “Apart from the similar-sounding name, ‘Facebake’ also used the same font and blue-and-white color scheme popularized by Facebook,” says Anupam Shukla, Mumbai-based partner at Pioneer Legal.

However, there were cases when similar-sounding names coexisted.

Which begs the question: When does a name become infringing?

Meghna Mishra, partner at Delhi-based Karanjawala & Co, says it depends on how well-known the brand is. “Other things, such as the international presence of the mark, its application and the reputation built up over time, also determine whether one is entitled to the protection of these marks,” he says.

In cases like these, the behavior of the alleged offender needs to be taken into account, he explains. “The look and feel of the patisserie was similar, so it comes under false advertising. The business was riding on Facebook’s reputation and weakening its brand,” he says.

How broad is the scope of such laws? Well, it comes with riders.

Cadbury, for example, lost its battle in the UK in 2019 to protect its right to use purple packaging for its chocolates. Even after losing the appeal, she gave up the trademark. Lawyers said the company could have decided the trademark application was unenforceable after a court ruled it was too broad.

Years before that, in 1994, when India’s trademark laws were still evolving, the Mercedes-Benz case defined a cross-border and spillover reputation. In this case, the underwear unit copied the automaker’s three-star logo onto its clothing. “Some brands become household names and everyone recognizes them. Such marks must be protected so that others do not profit from their reputation,” explains Mishra.

However, outlets like Burger King and Burger Singh co-exist peacefully. There are also many pizza shops with similar names in the same space. Mishra explains that this is because the term ‘burger’ is broad and cannot be associated with just one brand. “It’s about the principle of exclusivity. If the mark was also copied, the matter would be different. It’s the behavior or intent that matters,” he says. So while Burger Singh is fine, Mr Singh Burger King is not – as a Ludhiana-based vendor who ran a burger joint of that name found out.

In 2015, it had to change its name after a fast food giant filed a trademark lawsuit against it.

In a country like India, where fakes are sold at every corner, regulating trademark infringement is a big challenge.

“Such sellers are fly-by-night operators. Tracing the source of counterfeit items is extremely difficult,” says Mishra. “However, in such cases, an injunction can be obtained against unknown persons, which is called a John Doe order abroad and an Ashok Kumar order in India,” he adds.

In such cases, a local commissioner may be appointed to take action against such operators. But the problem, says Mishra, is that such cases are rampant and difficult to track.

While tracing the source of infringement can be difficult, it is important to protect the rights of individuals to support business, says Rajeshwari Hariharan, managing partner of Delhi-based Rajeshwari & Associates.

“In 2020, the Delhi High Court issued strict orders against 24 fraudsters posing as McDonald’s franchisees,” he says. “The court ordered the freezing of their accounts and the change of the entire brand, logo etc. It is necessary in the public interest.”

On the wrong side of rights

A bump in the road

DMW vs BMW

In 2020, the Delhi High Court issued an interim injunction barring an e-rickshaw maker from using the brand name “DMW” in a trademark infringement suit by luxury car maker BMW.

No tasty treats

Britannia Industries vs Future Group

Britannia Industries filed a lawsuit against Future Group in 2020, alleging that the Kishore Biyani-led company had copied the packaging of several of its popular biscuit brands. Britannia claimed that the packaging of some of the prospective consumer’s Tasty Treat biscuits was deceptively similar to the packaging of Britannia biscuits. Both parties agreed to an out-of-court settlement.

Fair trade

Lakme Vs Subhash Trading & Others

The plaintiff sold cosmetic products under the trademark Lakme and the defendant used the trademark LikeMe for the same class of products. It was decided that there is a similarity between the two words and that the words are also phonetically similar.

Path of spices

Mahashian Di Hatti vs Raj Niwas

The plaintiff was engaged in the production and sale of species and spices sold under the MDH logo on a red background of three hexagons. The defendant used the “MHS” logo on a red background of a hexagonal device. The two marks were found to be similar and likely to cause confusion and deception. MDH also sought an injunction restraining the defendant from using the MHS logo or any other trademark that is identical or deceptively similar to MDH’s trademark logo. MHS was prohibited from manufacturing, selling or marketing any spice or condiment using the impugned logo or any other trademark that was identical or deceptively similar to MDH’s registered trademark. The court also awarded punitive damages of Rs 1 million.

What’s in a name?

Mahendra and Mahendra Paper Mills Vs Mahindra and Mahindra

In 2001, the Supreme Court ruled that, based on phonetic similarity, the name “Mahendra & Mahendra” infringed the earlier trade name “Mahindra”, which had been in use for five decades, and had thus acquired a distinctive and secondary meaning. The paper mill was prohibited from using a deceptively similar name.

A brewery of its kind

Starbucks vs Sardarbuksh

On 1 August 2018, the Delhi High Court granted an interim injunction in favor of Starbucks and ordered the defendants to use the name “Sardarji-Bakhsh” (instead of Sardarbuksh) for their 20 new, upcoming outlets pending the final hearing of the suit in September. 27, 2018. After negotiations, it was agreed that the defendant would change the name of all its establishments to “Sardarji-Bakhsh Coffee & Co.”