The curious case of copycat brand names in India

Recently, the Delhi High Court permanently restrained a Bengaluru-based cake shop from using the name ‘Facebake’, ‘Facecake’ or any other Facebook trademarks for its products and services. The order was the result of a suit filed by Meta Platforms that owns Facebook.

‘Facebake’ was also using the same font and blue-on-white colour scheme popularised by the social media giant.  

Brands fiercely guard their unique identity as it is crucial for protecting market share.  

In a trademark infringement action by BMW, the Delhi High Court in 2020 granted an interim injunction restraining an e-rickshaw maker from using the mark ‘DMW’.

In the Starbucks Corporation versus Sardarbuksh Coffee case, the Delhi High Court in 2018 granted interim relief in favour of Starbucks and directed the defendant to use the name ‘Sardarji-Bakhsh’ for their 20 new outlets until the final hearing. The final result was that the defendant had to change the name of all its outlets to ‘Sardarji-Bakhsh Coffee & Co’.  

Speaking to Business Standard, Sandeep Goyal, Managing Director, Rediffusion says brand names using words that aren’t unique origin of problem. Unique design, logo and colour combination only way out, he says. Artificially created words lead to stronger IP.

A brand name and logo are legally called trademarks. A trademark denotes the distinctiveness and integrity of a business. For the consumer, it also acts as a source identifier for the brand’s offerings. 

If a trademark is well-known, no other entity can register or use an identical or confusingly similar mark for any kind of products or services without the original proprietor’s permission  

Registering a trademark or even using one, with or without registration, gives the owner of the trademark certain rights. Subsequently, no other entity can register or use an identical or confusingly similar trademark for identical or similar offerings, unless they are authorised by the original proprietor. 

The Trademarks Act, 1999, is the law that protects trademarks in India. It lays down the rules for registration, protection and infringement penalties regarding trademarks. The misuse of trademarks across several e-commerce portals have seen companies across all scales fiercely guarding their IP rights, especially trademarks.

One result of this has been that the total cases for trial during the given year under the Trade Marks Act, 1999, have been rising at a fast clip since 2016. However, as an indication of how challenging this area is for companies and courts alike, the pendency percentage has averaged above 95 between 2016 and 2020.

According to Nishad Nadkarni, Partner, Khaitan & Co, most trademark battles over at interlocutory stage. Courts fast in granting interlocutory injunctions, he says. Commercial Courts Act treats IP disputes as commercial disputes. Fast-track mechanism has been set up under the statute, he says.

However, Burger King and Burger Singh have been coexisting peacefully. Many pizza outlets with similar names also exist in the same space. Legal experts say that this is because terms like ‘burger’ are wide and can’t be associated with just one brand.  

The office of the US Trade Representative recently said in a report that India remains one of the most challenging major economies when it came to the protection and enforcement of intellectual property. This can prove to be a significant dampener. 

A business has to create brand recognition and value to thrive in a competitive market. This is achieved by way of trademarks. If India wants its businesses to invest in it, regulators must ensure that their hard-earned IP is protected.