The Curious Case of Copycat Brand Names in India

Recently, the Delhi High Court permanently banned 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 lawsuit filed by Meta Platforms, owner of Facebook.

“Facebake” also used the same blue-on-white font and color scheme popularized by the social media giant.

Brands fiercely guard their unique identity as it is crucial to protect their market share.

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

In the Starbucks Corporation v Sardarbuksh Coffee case, the Delhi High Court in 2018 granted interim relief in favor of Starbucks and ordered the defendant to use the name “Sardarji-Bakhsh” for their 20 new outlets until at the final hearing. The end result was that the defendant had to change the name of all its outlets to “Sardarji-Bakhsh Coffee & Co”.

Talk to Trade standard, Sandeep Goyal, Managing Director, Rediffusion says brand names use words that are not the sole source of the problem. A unique design, logo and color combination is the only way out, he says. Artificially created words lead to stronger intellectual property.

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 brand offerings.

If a mark is well known, no other entity may register or use an identical or confusingly similar mark for any type of goods or services without the permission of the original owner.

The registration of a mark or even its use, with or without registration, gives the owner of the mark certain rights. Thereafter, no other entity may register or use an identical or confusingly similar mark for identical or similar offerings, unless authorized by the original owner.

The Trademarks Act 1999 is the law that protects trademarks in India. It lays down the rules for registering, protecting and sanctioning counterfeit trademarks. The misuse of trademarks on several e-commerce portals has seen companies at all levels fiercely protect their intellectual property rights, especially trademarks.

One result has been that the total number of cases to be tried in any given year under the Trade Marks Act 1999 has increased at a rapid rate since 2016. However, as an indication of the difficulty of this area for companies and courts, the waiting percentage has averaged over 95 between 2016 and 2020.

According to Nishad Nadkarni, Partner, Khaitan & Co, most trademark battles end at the interlocutory stage. Courts are quick to grant interlocutory injunctions, he says. The Commercial Courts Act treats intellectual property disputes as commercial disputes. A fast-track mechanism has been put in place under the statute, he said.

However, Burger King and Burger Singh coexist peacefully. Many pizzerias with similar names also exist in the same space. Legal experts say that’s because terms like “hamburger” are broad and can’t be associated with a single brand.

The Office of the US Trade Representative recently stated in a report that India remains one of the toughest major economies when it comes to intellectual property protection and enforcement. This can prove to be a major obstacle.

A business must create brand recognition and value to thrive in a competitive market. This is achieved by means of trademarks. If India wants its companies to invest there, regulators need to ensure that their hard-earned intellectual property is protected.

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