Our Associate, Amay Jain discusses “Counterfeit Face Masks : The Pandemic’s Present to trademark and Copyright Litigation Regimes”
In wake of the COVID-19 pandemic, the demand for face masks has risen exponentially. Consequently, the business of face masks has assumed great commercial significance as more and more traders look to capitalize on this opportunity to venture into the face mask business and earn profits. However, this booming business of face masks is not bereft of instances of unauthorized use of trademarks and/or copyrightable logos on face masks.
In the last few weeks, the Delhi High Court has witnessed suits involving such facts and circumstances. For instance, on June 9, 2020, in Tommy Hilfiger Europe B.V. v. M/s Taqua Textiles & Ors., the well-known apparel brand, Tommy Hilfiger, obtained an ex-parte ad-interim injunction against a local party selling face masks bearing its marks including the TOMMY HILFIGER & Flag Design (shown below).
Here, we also note that such instances of unauthorized use of trademarks and/or logos/brand names are not limited to the clothing and apparel industry. Rather, it seems that trademarks, brands and logos from other industries are also being subject to unauthorized use on face masks by third-party manufacturers of face masks.
In one such case, namely Delhi Public School Society v. Manish Tripathi, on June 30, 2020, the Delhi High Court, in a suit filed by Delhi Public School Society (a private school society that has schools worldwide), awarded an interim injunction. The suit was filed against a local party who was using the plaintiff’s DELHI PUBLIC SCHOOL crest logo (shown below) on face masks.
The plaintiff contended that it owns a copyright registration for its crest logo. It also owned trademark registrations for the crest logo and the DELHI PUBLIC SCHOOL word mark covering educational services in Class 41.
Given the plaintiff’s copyright and trademark rights, the Delhi High Court held that a prima facie case had been made out and that the plaintiff would suffer irreparable harm if the defendant was not restrained from using the crest logo on/ in relation to face masks. The court, in its decision, took into account the copyright registration owned by the plaintiff for its crest logo and passed an interim order in the plaintiff’s favour.
In view of the above, we note that unauthorized use of a well-known brand name even if the said brand has not been, in the past, engaged in the business of face masks, may amount to infringement of trademark and/or copyright. The fate of these cases, however, will depend upon peculiar facts and circumstances in each case, including, inter alia, (a) the reputation of the plaintiff’s mark; (b) whether the mark featured defendant’s goods is deceptively similar to the plaintiff’s mark; (c) whether use of such mark on defendant’s goods is likely to cause confusion among consumers. While there may be uncertainty about the outcomes of such cases depending on facts of each case, it will, certainly, be interesting to see how the Indian judiciary tackles such cases in near future.
 CS (COMM) 160/2020, Delhi High Court
 CS (COMM) 207/2020, Delhi High Court