Gensol Electric Vehicles Pvt. Ltd. Vs. Mahindra Last Mile Mobility Limited

IP ADJUTOR:EPISODE 21

Least Possibility of confusion in relation to high-value products

Case Title: Gensol Electric Vehicles Pvt. Ltd. Vs. Mahindra Last Mile Mobility Limited

Date of Judgment: 13.01.2025

Case Number: CS(COMM) 849/2024

Neutral Citation: 2025:DHC:116

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Introduction:

This case revolves around a trademark dispute in the burgeoning electric vehicle (EV) sector. The plaintiff, Gensol Electric Vehicles Pvt. Ltd., alleged trademark infringement and passing off against Mahindra Last Mile Mobility Limited, stemming from the use of similar marks for electric vehicles. The dispute centers on the marks "EZIO" (plaintiff) and "eZEO" (defendant), with the plaintiff seeking an interim injunction to restrain the defendant from using the contested mark.

Background:

Plaintiff: 

Gensol Electric Vehicles Pvt. Ltd., a subsidiary of Gensol Engineering Limited, established in 2022, focuses on manufacturing EVs for diverse urban mobility needs.The plaintiff developed the mark "EZIO" in December 2022 and registered it in Class 12 on a "proposed to be used" basis. Registration was granted on 19.05.2024.The plaintiff is yet to launch its vehicle but has conducted testing and secured necessary certifications.

Defendant:

Mahindra Last Mile Mobility Limited, a subsidiary of Mahindra and Mahindra Limited, is a dominant player in the EV market with a 50% market share. The defendant conceptualized its mark "eZEO" in April 2024, coined as an acronym for "Zero Emission Option," and announced the launch of its EV under this mark on 9.09.2024.

Conflict:

The plaintiff alleged that the defendant’s mark "eZEO" was deceptively similar to "EZIO," likely to cause confusion.The defendant argued its adoption was bona fide and proposed modifying its mark to "MAHINDRA ZEO."

Brief Facts of the Case:

The plaintiff applied for and secured trademark registration for "EZIO" in May 2024. The defendant announced its EV launch under "eZEO" in September 2024, claiming prior use and bona fide adoption.

The plaintiff filed the suit, alleging infringement and passing off, and sought an interim injunction. The defendant proposed modifications to its mark, dropping the prefix "e" and adding its house mark "MAHINDRA."

Issues Raised:

Does the defendant’s use of "eZEO" infringe upon the plaintiff’s registered trademark "EZIO"? Would the defendant’s modified mark "MAHINDRA ZEO" mitigate potential confusion or infringement claims? Does the plaintiff have sufficient goodwill or reputation to claim passing off? Is the plaintiff entitled to an interim injunction?

Reasoning of the Judge:

Visual and Phonetic Dissimilarity:

The court compared the marks "EZIO" and "MAHINDRA ZEO" and found them visually and phonetically distinct. Reliance was placed on precedents, including F Hoffmann-La Roche v. Geoffrey Manners, where differences in the uncommon portions of marks were deemed sufficient to avoid confusion. 

Nature of Goods and Consumer Behavior:

EVs are high-value products purchased after careful deliberation. The court noted that discerning consumers would consider the manufacturer’s name alongside the model name, reducing the likelihood of confusion. The defendant’s addition of "MAHINDRA" was deemed a significant distinguishing factor.

Goodwill and Reputation:

The plaintiff had not launched its vehicle, thus lacking market presence or goodwill. The defendant, as a well-established player, was unlikely to ride on the plaintiff’s goodwill. Bona Fide Adoption: The defendant conducted trademark searches and justified its adoption of "eZEO" as an acronym for "Zero Emission Option." The court found no evidence of intentional copying or bad faith. 

Likelihood of Confusion:

Given the distinct consumer segments and the addition of "MAHINDRA," the court ruled that confusion was unlikely. 

Decision: 

The court dismissed the plaintiff’s application for interim injunction under Order XXXIX Rules 1 and 2 of the CPC. The balance of convenience favored the defendant, as its vehicle was already launched, while the plaintiff’s product was yet to enter the market. Observations made in the judgment were limited to the interim stage and would not affect the final outcome of the suit.

Conclusion:

This judgment underscores the importance of distinctiveness in trademarks, especially in high-value industries like EVs. The court emphasized the role of consumer behavior, market presence, and bona fide adoption in determining trademark disputes. The decision serves as a reminder that interim relief in IP cases requires a strong prima facie case and demonstrable goodwill.

Advocate Ajay Amitabh Suman

IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Macleods Pharmaceuticals Ltd. Vs. The Controller of Patents & Anr.

IP ADJUTOR: EPISODE 20

Is a revocation petition maintainable after the expiry of the patent?

Case Title: Macleods Pharmaceuticals Ltd. vs. The Controller of Patents & Anr.

Date of Judgment: 15.01.2025

Case Number: C.O. (COMM.IPD-PAT) 38/2022

Neutral Citation: 2025:DHC:158

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Introduction

This case addresses the legal intricacies of revocation petitions under Section 64 of the Patents Act, 1970, and the interplay between such petitions and defenses raised under Section 107 in patent infringement suits. The petitioner sought the revocation of a patent related to the pharmaceutical product LINAGLIPTIN, owned by the respondent.

Parties Involved:

Petitioner: Macleods Pharmaceuticals Ltd., engaged in the manufacture and marketing of pharmaceutical products, including anti-diabetic drugs.  Respondent No. 2: Boehringer Ingelheim Pharma GmbH & Co. KG, a German pharmaceutical company holding the patent for LINAGLIPTIN. Subject Patent:  Indian Patent No. IN 243301 for LINAGLIPTIN, granted on 5th October 2022 with a priority date of 21st August 2002.  The patent expired on 18th August 2023.

Proceedings Timeline:

17.02.2022: Petitioner filed a revocation petition under Section 64 of the Patents Act.19.02.2022: Respondent filed a patent infringement suit in the High Court of Himachal Pradesh. 2024: Various interim applications and objections were raised concerning the maintainability of the revocation petition post-patent expiry.

Brief Facts of the Case:

The petitioner filed a revocation petition alleging invalidity of the respondent's patent, claiming it was filed in anticipation of launching a generic version of LINAGLIPTIN. Respondent No. 2 contested the maintainability of the revocation petition on grounds including: Expiry of the patent. Filing of a defense under Section 107 in the infringement suit. Potential for conflicting judgments from two High Courts.

Issues Raised:

Can a revocation petition under Section 64 be maintained if the petitioner has already raised a defense of invalidity under Section 107 in an infringement suit? Is a revocation petition maintainable after the expiry of the patent?

Reasoning of the Judge: Scope of Section 64 vs. Section 107:

A revocation petition under Section 64 operates in rem and, if successful, removes the patent from the register entirely. A defense under Section 107, raised in an infringement suit, operates in personam and affects only the parties to the suit.

Maintainability Post-Patent Expiry:

The term of the patent does not restrict the filing or continuation of a revocation petition. Expiry does not render the petition infructuous, as the petitioner can still seek to prevent enforcement actions, including claims for damages.

Concurrent Jurisdiction and Conflicting Judgments:

The petitioner retains the choice to file a standalone revocation petition or a counterclaim in an infringement suit. The possibility of conflicting judgments is mitigated by the pending transfer petition before the Supreme Court.

Decision

The Court dismissed the respondent’s objections to the maintainability of the revocation petition. The revocation petition was deemed maintainable and listed for further proceedings on 24th February 2025.

Advocate Ajay Amitabh Suman
IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Syngenta Limited Vs GSP Crop Science Private Limited

Confidentiality Club and Confidential Information

Introduction:

This case concerns the alleged infringement of two process patents granted to the plaintiffs, Syngenta Limited and another, relating to the manufacture of a fungicide, Azoxystrobin. The primary issue revolves around the defendant, GSP Crop Science Pvt. Ltd., allegedly infringing the said patents through their processes for manufacturing similar products. The plaintiffs sought interim relief and compliance with terms agreed upon during proceedings.

Background:

Patents in Question:Indian Patent No. 278868: Relates to processes for preparing Azoxystrobin using DABCO as a catalyst. Indian Patent No. 271751: Relates to methods for preparing Azoxystrobin. These patents pertain to Syngenta’s proprietary fungicide sold under the brand name "AMISTAR®."

Interim Application: The plaintiffs initially sought an interim injunction to prevent the defendant from manufacturing or selling products infringing their patents.

Scientific Advisor Appointment: To decide the interim relief, the court appointed a Scientific Advisor to inspect and analyze the defendant’s processes.

Brief Facts of the Case:

The plaintiffs alleged that the defendant’s manufacturing process infringed their patents for Azoxystrobin.

A two-tier confidentiality club was constituted to ensure the secure handling of confidential information.

Dispute arose regarding the defendant’s refusal to share certain records with a Tier-II Confidentiality Club member nominated by the plaintiffs.

Case Title:

Issues Involved:

Whether the defendant should share confidential documents with the plaintiffs’ Tier-II Confidentiality Club representative.

Whether the plaintiffs’ application under Section 151 of the CPC was maintainable.

Interpretation of Terms of Reference (ToR) and its implications on the parties.

Submission of the Parties:

Plaintiffs:

Argued for access to records based on mutually agreed ToR.

Highlighted the need for access to assist in preparing for the interim injunction.

Submitted that their Tier-II member, Dr. Alan Whitton, complies with confidentiality rules.

Defendant:

Opposed sharing confidential information, citing risks of misuse.

Argued that the ToR limited access to Tier-I members unless otherwise agreed.

Stated that the application was an attempt to conduct a "roving and fishing" inquiry.

Reasoning and Analysis by the Judge:

Maintainability of the Application: The application was not for production of documents but to ensure compliance with the ToR. Hence, the application under Section 151 of CPC was deemed maintainable.

Interpretation of ToR: The ToR allowed access to records by Tier-II members except for certain confidential details like supplier records. The court noted the explicit inclusion of Tier-II members for accessing certain information, demonstrating that any restrictions would have been explicitly mentioned in the ToR if intended.

Confidentiality Club Rules: Dr. Whitton, the plaintiffs' Tier-II representative, was found to comply with the confidentiality requirements. His independent contractor status and lack of day-to-day involvement in Syngenta’s operations ensured compliance with confidentiality norms.

Section 104A of the Patents Act: The court clarified that sharing documents with Dr. Whitton would not violate Section 104A, as the defendant was still obligated to show non-infringement of the plaintiffs’ patent.

Decision: The court directed the defendant to supply the required records (except supplier details) to the plaintiffs’ Tier-II representative, Dr. Whitton, within two weeks. Dr. Whitton’s access would be strictly for analysis and in compliance with his confidentiality affidavit.

Conclusion:

This judgment underscores the delicate balance courts must maintain in patent disputes between protecting confidential information and ensuring fair proceedings. The decision reinforced the importance of adhering to mutually agreed procedural safeguards while upholding transparency necessary for adjudication.

Case Title:Syngenta Limited Vs GSP Crop Science Private Limited

Date of Order:8th January 2025

Case Number:CS(COMM) 87/2020

Neutral Citation:2025:DHC:104

Name of Court:High Court of Delhi

Name of Judge:Hon’ble Mr. Justice Amit Bansal

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Wipro Enterprises Private Limited vs Himalaya Wellness Company & Ors.

Hush Product and possibility of Trademark Confusion 

Introduction:

This case addresses a trademark dispute between Wipro Enterprises and Himalaya Wellness Company concerning the use of the mark "EVECARE." The dispute centers around allegations of passing off and trademark infringement, with both parties claiming rights to the mark in different product categories. The case explores the interplay between common law rights, prior use, and the classification of goods under the Trade Marks Act, 1999.

Background:

Respondents (Himalaya Wellness):

Himalaya Wellness adopted the mark "EVECARE" in 1997 and has used it continuously since 1998 for their proprietary ayurvedic medicines (e.g., uterine tonics) in Class 5. The products have gained significant goodwill and are sold under the umbrella brand "HIMALAYA."

Appellants (Wipro Enterprises):

Wipro Enterprises adopted the mark "EVECARE" in Class 3 in 2020 for female hygiene products, specifically intimate washes. The mark was registered in 2021 after conducting a trademark search in their class. They began selling the product in 2021.

The Dispute:

Himalaya Wellness claimed that Wipro’s use of "EVECARE" for allied products created confusion, given their prior use and goodwill. They sought an injunction to restrain Wipro from using the mark.

Brief Facts of the Case:

Himalaya Wellness used the mark "EVECARE" for over 25 years, gaining recognition in the ayurvedic medicine market.

Wipro registered the same mark in a different class (Class 3) for female hygiene products in 2021, citing no prior registration in that class.

Himalaya issued a cease-and-desist notice in 2022, which Wipro contested, leading to the suit.

The Single Judge granted an interim injunction against Wipro, restraining them from using the mark "EVECARE" for female hygiene products.

Issues Involved:

Passing Off: Whether Wipro’s use of "EVECARE" amounts to passing off, given Himalaya’s prior use and goodwill.

Trademark Infringement: Whether the use of identical marks for unrelated goods in different classes constitutes infringement.

Consumer Confusion: Whether the products are similar enough to cause confusion among consumers.

Classification of Goods: Whether the difference in trademark classes (Class 3 vs. Class 5) affects the rights of the parties.

Submissions of the Parties:

Appellant (Wipro Enterprises):

Claimed their use of "EVECARE" was bona fide and unrelated to Himalaya’s products.

Argued that their product (intimate wash) is a cosmetic and falls under Class 3, distinct from Himalaya’s ayurvedic medicines (Class 5).

Highlighted differences in product nature, packaging, and target use.

Asserted that the mark "EVECARE" is generic, combining "EVE" (woman) and "CARE."

Respondents (Himalaya Wellness):

Asserted prior and continuous use of "EVECARE" since 1998, creating goodwill in the market.

Claimed Wipro’s use of the mark caused consumer confusion due to the allied nature of the products, both catering to female reproductive health.

Highlighted that consumers might associate Wipro’s products with Himalaya due to similar branding and distribution channels.

Contended that the mark "EVECARE" is coined and distinctive, deserving protection.

Reasoning and Analysis by the Court:

Passing Off:

The Court emphasized that passing off is based on prior use and goodwill, which Himalaya successfully established.

Relying on the "classical trinity" of passing off (goodwill, misrepresentation, damage), the Court found Wipro’s use of "EVECARE" likely to mislead consumers.

Hush Product and Classification of Goods:

The Court rejected Wipro’s argument that different trademark classes negate consumer confusion.

Goods are in the category of "hush products" and thus a prospective buyer would

be unlikely to ask too many questions about the product before purchasing the same. 

Both products, despite differing classes, target women’s reproductive health, making them allied goods.

Likelihood of Confusion:

The Court noted similarities in product purpose (female health), distribution channels (pharmacies, online platforms), and overlapping consumer bases.

Highlighted that both products appear under "women’s care" categories on e-commerce platforms, increasing the likelihood of confusion.

Hush Products:

Observed that both products fall under "hush products," where consumers are less likely to ask detailed questions, further amplifying confusion.

Distinctiveness of the Mark:

Found "EVECARE" to be a coined term, with Himalaya’s long use making it distinctive and associated with their brand.

Decision:

The Court upheld the Single Judge’s interim injunction, restraining Wipro from using the mark "EVECARE" for their products. It concluded that Wipro’s use of the mark constituted passing off, given Himalaya’s prior use and goodwill. 

Conclusion:

The judgment reaffirms the principle that prior use and goodwill take precedence over subsequent registration in trademark disputes. Even when products fall under different trademark classes, their allied nature and overlapping consumer base can lead to a finding of passing off. The case underscores the importance of due diligence and the risks of adopting identical marks, even in unrelated categories.

Case Title:Wipro Enterprises Private Limited vs Himalaya Wellness Company & Ors.

Date of Order:1 October 2024

Case Number:FAO (OS) (COMM) 145/2023

Neutral Citation:2024:DHC:7544-DB

Name of Court:High Court of Delhi

Name of Judges:Justice Vibhu Bakhru and Justice Tara Vitasta Ganju

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Heinz Italia Vs Dabur India Ltd.

Delay Versus Dishonest adotion  in passing Off Action

Introduction:

This case revolves around trademark infringement and passing off. The appellants, Heinz Italia, claimed that the respondents, Dabur India Ltd., infringed their trademark "Glucon-D" by introducing a deceptively similar product, "Glucose-D," with near-identical packaging. The matter highlights the critical legal principles governing intellectual property rights, particularly the protection of trademarks and the prevention of passing off.

Background:

The trademark "Glucon-D" was originally registered by Glaxo in 1975 and was later assigned to Heinz Italia in 1994, along with associated goodwill.

The appellants had been using the trademark and packaging consistently from 1994 onward.

In 2002, Heinz Italia discovered that Dabur India had introduced "Glucose-D," which they alleged had deceptively similar packaging to "Glucon-D."

Heinz Italia filed a suit for permanent injunction, alleging infringement under the Trade and Merchandise Marks Act, 1958, and the Copyright Act.

Brief Facts of the Case:

The trademark "Glucon-D" had been in use since 1940 by Glaxo and from 1994 by Heinz Italia.

Dabur introduced "Glucose-D" in 1989 and altered its packaging in 2000, making it allegedly similar to "Glucon-D."

The appellants claimed that Dabur's actions amounted to trademark infringement and passing off, as the packaging and phonetic similarity could confuse consumers.

The trial court and the Punjab and Haryana High Court rejected the interim injunction sought by Heinz Italia, leading to the present appeal in the Supreme Court.

Issues Involved:

Trademark Infringement: Did Dabur’s use of "Glucose-D" infringe Heinz Italia's registered trademark "Glucon-D"?

Passing Off: Did Dabur's packaging and product presentation mislead consumers and damage Heinz Italia's goodwill?

Generic Nature of Terms: Could Heinz Italia claim exclusivity over the term "Glucose"?

Prior Use: Was prior use of the trademark by Heinz Italia sufficient to grant an injunction?

Submissions of the Parties

Appellants (Heinz Italia):

Asserted their prior use of "Glucon-D" since 1940 (by Glaxo) and from 1994 (by Heinz Italia).

Claimed the packaging and mark had acquired significant goodwill.

Argued that "Glucose-D" was phonetically and visually similar, designed to mislead consumers.

Cited several precedents supporting injunctions in cases of passing off, including Cadila Healthcare Ltd. vs Cadila Pharmaceuticals Ltd. (2001).

Respondents (Dabur India Ltd.):

Contended that "Glucose" was a generic term and not exclusive to Heinz Italia.

Argued that their packaging was distinct and any similarities were coincidental.

Emphasized that two lower courts had denied the injunction, and there was no reason for the Supreme Court to intervene.

Relied on Wander Ltd. vs Antox India P. Ltd. (1990), emphasizing limited judicial interference in interim matters.

Reasoning and Analysis by the Court:

Delay Versus Dishonest adotion  in passing Off Action:

if it could be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in

bringing the matter to Court was not a ground to defeat the case of the plaintiff:

Prior User Doctrine:

The Court highlighted that prior use is a crucial factor in passing-off cases.

Heinz Italia's use of "Glucon-D" since 1940 significantly preceded Dabur's "Glucose-D," which emerged in 1989.

Similarity and Confusion:

The Court examined the packaging and found remarkable similarities in color schemes, depictions (happy family images), and overall presentation.

These similarities were likely to confuse consumers, particularly in retail settings.

Generic Term Argument:

While "Glucose" may be generic, the Court emphasized that the combination "Glucon-D," along with distinctive packaging, warranted protection.

The phonetic similarity between "Glucon-D" and "Glucose-D" was deemed significant.

Balancing Interests:

The Court acknowledged the need for evidence in the broader suit but found sufficient grounds to grant an interim injunction, as Heinz Italia’s goodwill and consumer trust were at stake.

Decision:

The Supreme Court overturned the trial court and High Court decisions, granting an interim injunction against Dabur India Ltd. Dabur was restrained from using the "Glucose-D" mark and deceptively similar packaging. The Court clarified that its observations were limited to the interim injunction and would not influence the final decision in the main suit.

Conclusion:

The case underscores the judiciary's commitment to protecting trademarks and preventing consumer deception. The ruling highlights:

The significance of prior use in trademark disputes.

The interplay between generic terms and distinctive branding elements.

The need for courts to safeguard goodwill and reputation against unfair competition.

This judgment serves as a precedent for cases involving passing off, emphasizing that even interim relief can play a crucial role in maintaining the integrity of trademarks.

Case Title:Heinz Italia Vs Dabur India Ltd. 

Date of Order:18 May 2007

Case Number:Civil Appeal No. 2756 of 2007 (arising out of S.L.P. (C) No. 59/2006)

Citation:(2007) 6 SCC 1

Name of Court:Supreme Court of India

Name of Judges: Justice B.P. Singh and Justice Harjit Singh Bedi

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel

Statutory requirements under the Prevention of Food Adulteration Act and Standards of Weights and Measures Act and trademark rights

Introduction:

This case involves a dispute over trademark rights and business arrangements within a family-run entity, focusing on the interpretation of the Trade and Merchandise Marks Act, 1958. The case is significant as it addresses the conflict between statutory trademark rights and agreements stemming from family settlements.

Background:

The business began in 1965 when Rambhai Patel started grinding and selling spices under the trade name "Ramdev." Over time, partnerships and companies were formed within the family to expand the business. Disputes arose between three brothers, leading to a Memorandum of Understanding (MOU) in 1998 to distribute assets and manage rights.

Brief Facts of the Case:

Trademark Registration: The trademark "Ramdev" was registered in 1986.

Family Business Evolution: The family expanded into companies and partnerships, including "Ramdev Masala Stores" and "Ramdev Exports," for manufacturing and exporting spices.

Dispute: Following the dissolution of "Ramdev Masala Stores" and the establishment of "Ramdev Exports," disputes arose over the use of the "Ramdev" trademark.

Legal Proceedings: The appellant, Ramdev Food Products Pvt. Ltd., filed a suit claiming infringement and sought injunctions to prevent the respondents from using the trademark deceptively.

Issues Involved:

Trademark Infringement: Whether the respondents infringed the "Ramdev" trademark registered under the 1958 Act.

Permitted Use: Whether the respondents had rights under the MOU to use the trademark for manufacturing or retail.

Goodwill and Reputation: Whether the respondents’ actions diluted the goodwill associated with the trademark.

Conflicts with Statutory Law: Whether statutory requirements under the Prevention of Food Adulteration Act and Standards of Weights and Measures Act could override trademark rights.

Submissions of the Parties:

Appellant (Ramdev Food Products Pvt. Ltd.):

Exclusive rights to the "Ramdev" trademark under the 1958 Act.

Respondents’ use of the trademark diluted its distinctiveness.

MOU restricted the respondents to retail use in seven outlets, not manufacturing.

Statutory requirements do not permit infringing use.

Respondents:

The MOU allowed the respondents to continue retail and manufacturing activities.

Their actions complied with statutory requirements.

No exclusive rights existed over individual elements of the trademark, such as the name "Ramdev."

Waiver and estoppel prevented the appellants from enforcing trademark rights.

Reasoning and Analysis by the Court:

Trademark Rights: The Court reaffirmed that registration under the 1958 Act confers exclusive rights. The respondents’ use of similar marks created confusion and amounted to infringement.

MOU Interpretation: The MOU did not grant the respondents any rights to manufacture goods under the "Ramdev" trademark. Their rights were limited to selling products from seven retail outlets.

Goodwill Protection: The Court emphasized that goodwill and reputation tied to a trademark must be protected to avoid misleading consumers.

Statutory Obligations: Compliance with food and packaging laws does not permit infringement of trademark rights.

Limited Rights: The respondents were restrained from using "Ramdev" for manufacturing but allowed retail operations under the specified conditions.

Decision:

The Supreme Court ruled in favor of the appellant, granting an injunction to prevent the respondents from infringing the "Ramdev" trademark, except in the limited scope defined by the MOU. Respondents were prohibited from using deceptive labels or manufacturing goods under the disputed trademark.

Conclusion:

This case underscores the balance between family arrangements and statutory rights. It highlights the principle that agreements like MOUs cannot override legal protections afforded by trademark registration. The ruling reinforces the need to protect trademarks from dilution and misuse, ensuring that consumer trust in a brand remains intact.

Case Title:Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel & Ors

Date of Order:29 August 2006

Case Number:Civil Appeal Nos. 8815-8816 of 2003

Neutral Citation:AIR 2006 SUPREME COURT 3304:2006 (8) SCC 726:2006 AIR SCW 4988

Name of Court:Supreme Court of India

Name of Judges:Justice S.B. Sinha and Justice P.P. Naolekar

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Praveen Sharma (Since Deceased) & Others vs. Ravi Kumar & Another

Non Joinder of Partnership firm and its effect

Introduction:

The plaintiffs purchased a two-storied building in Meerut Cantt through a registered sale deed in 2006. The disputed shop was let out to the partnership firm M/s Janta Finance & Trading Corporation, in which the defendants and their father were partners.Upon the death of one partner, the firm allegedly dissolved. The plaintiffs claimed the defendants inherited the tenancy rights.The plaintiffs filed a suit alleging default in rent payment and subletting the shop to a registered society.

Brief Facts of the Case:The defendants contested the suit, asserting that the firm had been reconstituted and the plaintiffs lacked title over the property.They argued that rent was regularly deposited and denied subletting the shop. The trial court decreed in favor of the plaintiffs, leading the defendants to file a revision before the High Court.

Issues Involved: Whether the suit was defective due to the non-joinder of the partnership firm as a party.? Whether the defendants denied the plaintiffs' title, rendering them ineligible for protection under Section 20(4) of the U.P. Act No. 13 of 1972. Whether the defendants had sublet the disputed shop, violating tenancy terms.

Submissions of the Parties:

Plaintiffs: The shop tenancy was transferred to the defendants after the firm's dissolution.The defendants defaulted on rent payments and sublet the shop without permission. The defendants cannot deny the plaintiffs' title after recognizing them as landlords.

Defendants: The firm was reconstituted and remained the tenant; its non-joinder rendered the suit defective. Rent was deposited regularly, and no valid notice of termination under the Transfer of Property Act was served. The alleged subletting was a misunderstanding; the shop was used for correspondence purposes only.

Reasoning and Analysis by the Court: Non-joinder of the Partnership Firm: The court held that under Order 30, Rule 1 CPC, suing partners individually was valid. A firm is not a legal entity but a collective of partners; thus, the suit was not defective. Denial of Title: The court noted that defendants acknowledged the landlord-tenant relationship and made rent deposits.The plea challenging the sale deed was deemed not a denial of title but a procedural argument.The trial court erred in concluding that the defendants were ineligible for protection under Section 20(4).Subletting Allegation:Evidence demonstrated that the society operated from the disputed shop, including tax returns and registration documents.The court found the defendants failed to prove that the shop was not sublet.Under Section 25 of the U.P. Act, parting with possession to a separate legal entity (the society) constituted subletting.Default in Rent Payment:The court upheld the finding of default since defendants failed to prove unconditional rent payments.

Decision:

1. The High Court upheld the trial court's decree of eviction on the ground of subletting.

2. It modified the order to grant the defendants protection under Section 20(4) regarding rent arrears.

3. The revision was disposed of with the eviction decree maintained.

Conclusion:The case establishes critical principles about the distinction between procedural and substantive aspects of tenancy disputes. It emphasizes that subletting to a legal entity distinct from tenants constitutes a violation under rent control laws. The judgment also highlights the necessity of clear evidence to support claims of reconstitution and denial of title. The ruling reflects a balanced application of statutory provisions to protect landlords' rights while ensuring procedural fairness for tenants.

Case Title: Praveen Sharma (Since Deceased) & Others vs. Ravi Kumar & Another

Case Number: S.C.C. Revision No. 269 of 2014

Neutral Citation: LAWS All 2019 [3] 114

Date of Order: 6 March 2019

Court: High Court of Judicature at Allahabad

Judge: Hon'ble Manoj Kumar Gupta

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Ansul Industries Vs. Shiva Tobacco Company

Introduction: The case involves a trademark dispute over the marks “Udta Panchhi” and “Panchhi Chaap,” both used in connection with chewing tobacco. The central issues revolved around deceptive similarity, prior use, delay in filing for injunction, and the doctrine of honest concurrent use under the Trade and Merchandise Marks Act, 1958.

Background: The dispute arose between Ansul Industries (appellant) and Shiva Tobacco Company (respondent), both engaged in manufacturing and selling chewing tobacco. The respondent claimed to be the prior user and registered proprietor of the trademark “Panchhi Chaap” since 1973, while the appellant adopted the mark “Udta Panchhi” in 1982. The trial court granted an injunction in favor of the respondent, restraining the appellant from using the mark "Panchhi." This order was challenged by the appellant.

Brief Facts of the Case: Respondent's Claim: Shiva Tobacco Company began using “Panchhi Chaap” in 1973 and obtained trademark registration in 1974. Appellant's Claim: Ansul Industries adopted “Udta Panchhi” in 1982 through its predecessor, Bansal Tobacco Store, and applied for registration in 1990. Trial Court's Decision: The trial court restrained the appellant from using the mark, emphasizing the respondent's prior use and registration.Appeal: Ansul Industries appealed, arguing delay in filing the suit and claiming honest concurrent use.

Issues Involved: Are the marks “Udta Panchhi” and “Panchhi Chaap” deceptively similar?Can an injunction be denied on grounds of delay and latches?Does the appellant qualify as an honest concurrent user under Section 12(3) of the Trade and Merchandise Marks Act, 1958? Is the respondent still the valid owner of the registered trademark?Has the respondent concealed material facts or committed fraud?

Submissions of the Parties:

Appellant (Ansul Industries):Claimed that “Udta Panchhi” was adopted honestly and independently.Argued that the respondent's delay of 15 years in filing the suit indicated acquiescence.Asserted that their sales were higher, suggesting consumer preference for their product.Cited the principle of reverse confusion, where a stronger market presence of the junior user could lead to consumer association with their brand.

Respondent (Shiva Tobacco Company):Emphasized prior use and registration of “Panchhi Chaap” since 1973.Argued that delay was not a valid defense in cases of trademark infringement.Claimed that the appellant's adoption of “Udta Panchhi” was dishonest and aimed at exploiting their goodwill.

Reasoning and Analysis by the Court:

Deceptive Similarity:The Court applied the visual and phonetic similarity test, emphasizing that the word “Panchhi” was the dominant feature of both marks.It held that the use of the word “Panchhi” along with the image of a flying bird created a likelihood of confusion, especially among semi-literate and illiterate consumers of chewing tobacco.

Delay and Latches:The Court noted that delay alone does not defeat the right to injunction unless accompanied by acquiescence or prejudice to the defendant.It observed that the respondent had consistently objected to the appellant's use of the mark and engaged in legal proceedings, negating any inference of acquiescence.

Dishonesty in adoption:The Court highlighted that honest concurrent use requires proof of good faith and lack of knowledge of the prior mark at the time of adoption.It found the appellant’s adoption of “Udta Panchhi” in 1982 to be dishonest, as they were likely aware of the respondent’s established mark “Panchhi Chaap.”

Ownership of Trademark:The Court rejected the appellant's claim that the respondent was no longer the owner of the trademark due to changes in the partnership firm.It held that the reconstituted partnership retained ownership of the registered mark.

Fraud and Concealment:The Court found no evidence of fraud or concealment by the respondent.It concluded that any omission in the plaint did not materially affect the respondent’s case or mislead the Court.

Decision:The Delhi High Court dismissed the appeal, upholding the trial court’s order of injunction against Ansul Industries. The Court ruled that the respondent, as the prior user and registered proprietor of the mark “Panchhi Chaap,” was entitled to protection under trademark law.

Conclusion:This judgment reaffirms the importance of prior use and registration in trademark disputes. It underscores that:Delay does not bar injunction in cases of infringement unless accompanied by acquiescence.Honest concurrent use requires proof of good faith at the time of adoption.Courts prioritize consumer protection against confusion and deception, especially for goods marketed to vulnerable populations.The case serves as a significant precedent in Indian trademark law, particularly on the issues of deceptive similarity, delay, and honest concurrent use.

Case Title: Ansul Industries Vs. Shiva Tobacco Company

Date of Order:January 16, 2007

Case Number:FAO No. 228/2005

Citation:MANU/DE/9852/2007, (2007) ILR 1 Delhi 409, 2007 (34) PTC 392 (Del)

Name of the Court:High Court of Delhi

Bench:Hon'ble Mr. Justice Sanjiv Khanna

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Kapil Wadhwa Vs. Samsung Electronics

Introduction:This case revolves around the doctrine of trademark exhaustion under the Trade Marks Act, 1999. The primary issue was whether the Act embodies the principle of National Exhaustion or International Exhaustion. The decision had far-reaching implications for parallel imports and trademark enforcement in India.

Background:Samsung Electronics Co. Ltd. (Respondent No. 1) and its Indian subsidiary (Respondent No. 2) were the registered proprietors of the trademark SAMSUNG in India. The appellants, Kapil Wadhwa & Ors., were importing Samsung printers and selling them in India without the respondents' consent. This led to a dispute over the legality of such imports and sales under Indian trademark law.

Brief Facts of the Case: Samsung’s Trademark Rights: Samsung Electronics held registered trademarks for various electronic goods, including printers, in India. Parallel Imports: The appellants imported Samsung printers from international markets and sold them in India at prices significantly lower than those offered by Samsung’s Indian subsidiary. Respondents' Allegations: Samsung argued that the appellants' actions amounted to trademark infringement. They claimed that the imported products were not identical to those sold in India, leading to consumer confusion and potential harm to their brand reputation. Appellants' Defense: The appellants contended that their actions were lawful under the principle of international exhaustion, as the products were legitimately purchased abroad.

Issues Involved: Does the Trade Marks Act, 1999, adopt the principle of National Exhaustion or International Exhaustion? Are parallel imports of genuine goods without the trademark owner's consent permissible under Indian law? What constitutes trademark infringement in the context of parallel imports?

Submissions of the Parties:

Appellants (Kapil Wadhwa & Ors.): Asserted that the principle of international exhaustion allowed them to import and sell Samsung products lawfully acquired abroad.  Argued that their actions did not cause consumer harm or mislead buyers.  Highlighted that their pricing benefited Indian consumers, offering products at significantly lower prices.

Respondents (Samsung Electronics Co. Ltd. & Anr.): Claimed that the Trade Marks Act embodies the principle of national exhaustion, restricting the sale of imported goods without the trademark owner's consent. Emphasized that the imported products differed in features and specifications from those sold in India, potentially misleading consumers. Raised concerns about the lack of warranty and after-sales service for the imported products.

Reasoning and Analysis by the Court: Interpretation of the Trade Marks Act, 1999: The Court analyzed Sections 29 and 30 of the Act, focusing on the phrases "the market" and "any market." It concluded that the Act does not explicitly define "the market" as either domestic or international.

Doctrine of Exhaustion: The Single Judge had earlier held that the Act embodies the principle of national exhaustion. However, the appellate bench disagreed, emphasizing the absence of clear legislative intent to restrict exhaustion to the domestic market. The Court referred to the Statement of Objects and Reasons of the Act, which indicated an inclination towards international exhaustion.

Consumer Protection and Brand Reputation: The Court acknowledged Samsung's concerns about consumer confusion and brand dilution. However, it noted that such issues could be addressed through proper disclaimers and consumer education.

Global Context: The Court examined international practices, highlighting that many jurisdictions explicitly adopt either national or international exhaustion principles. It criticized the Indian legislature for not providing similar clarity.

Legitimate Reasons for Opposition (Section 30(4)): The Court held that while the respondents could oppose further dealings in imported goods if the products were altered or impaired, no such changes were alleged in this case.

Decision: The Court ruled in favor of the appellants, holding that the Trade Marks Act, 1999, adopts the principle of International Exhaustion. It allowed the appellants to continue importing and selling Samsung printers in India, provided they prominently displayed disclaimers clarifying the absence of Samsung's authorization, warranty, or after-sales service for these products.

Conclusion: This landmark judgment clarified the scope of trademark rights concerning parallel imports in India. By endorsing the principle of international exhaustion, the Court struck a balance between protecting trademark owners' rights and promoting consumer access to affordable goods. The decision underscored the need for legislative clarity on this critical issue to avoid future disputes.

Case Title:Kapil Wadhwa & Ors. vs. Samsung Electronics Co. Ltd. & Anr.

Date of Order:October 3, 2012

Case Number:FAO(OS) 93/2012

Neutral Citation:2013(53)PTC112(Del)

Name of the Court:High Court of Delhi, New Delhi

Bench:Hon'ble Mr. Justice Pradeep Nandrajog

Hon'ble Mr. Justice Siddharth Mridul

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Dr. Snehlata C. Gupte Vs. Union of India

The Date of Grant of Patent

Introduction: The case primarily revolved around the interpretation of provisions under the Patents Act, 1970, particularly the timing of the grant of a patent and its implications for pre-grant opposition. The dispute arose when Dr. Snehlata C. Gupte filed a pre-grant opposition after an order granting a patent was passed but before the issuance of the patent certificate. The central issue was determining when a patent is deemed granted.

Background: The dispute stemmed from two patent applications filed by J. Mitra & Co. Ltd. in 2001. These applications were published in the Official Gazette in 2004 for pre-grant oppositions under Section 25 of the Patents Act. One Span Diagnostics Ltd. (SDL) filed pre-grant opposition. It was considered by the Controller and vide detailed order dated 23.8.2006, the Controller rejected this opposition. Dr. Snehlata C. Gupte, challenged the grant of patents by filing pre-grant opposition on 24.08.2006. This was rejected being time barred on the Ground that Patent was already graned on 23.08.2006. The appellant, Dr. Snehlata C. Gupte, challenged the grant of patents, arguing that her pre-grant opposition was filed within the permissible time frame under the amended provisions of the Act.

Brief Facts of the Case:  Patent Applications: J. Mitra & Co. Ltd. filed two patent applications on June 14, 2001. These were published on November 20, 2004, under Section 11A of the Patents Act, inviting pre-grant oppositions.  Initial Opposition: Span Diagnostics Ltd. filed a pre-grant opposition, which was rejected by the Controller on August 23, 2006. The Controller simultaneously passed an order granting the patent.  Appellant’s Opposition: Dr. Gupte sent her pre-grant opposition on August 22, 2006, which was received by the Patent Office on August 24, 2006, after the order granting the patent.  Controller’s Rejection: The Controller rejected Dr. Gupte’s opposition, stating it was time-barred as the patent was already granted.  Legal Challenge: Dr. Gupte challenged the rejection before the Delhi High Court, raising the question of when a patent is deemed granted.

Issues Involved: When is a patent deemed granted under the Patents Act, 1970? Whether the appellant's pre-grant opposition was filed within the permissible time frame? The legal implications of issuing a patent certificate versus the Controller’s order of grant.

Submissions of the Parties:

Appellant (Dr. Snehlata C. Gupte): Argued that the patent is not granted until it is sealed and entered into the Register under Section 43(1) of the Patents Act.Asserted that her opposition was valid as it was filed before the sealing and entry of the patent.Contended that the Controller’s order dated August 23, 2006, was conditional, requiring compliance with formalities before the patent could be deemed granted.

Respondent No. 5 (J. Mitra & Co. Ltd.): Claimed that the patent was granted on August 23, 2006, when the Controller rejected the opposition and passed the order of grant. Argued that the issuance of the patent certificate is a ministerial act and does not affect the date of grant. Highlighted the misuse of the opposition mechanism by the appellant, allegedly acting at the behest of a business rival, Span Diagnostics Ltd.

Reasoning and Analysis by the Court:

Nature of the Controller’s Order: The Court held that the Controller’s order dated August 23, 2006, granting the patent, was not conditional. The requirement to amend certain formalities was a routine procedure that did not delay the grant.

Timing of Grant: The Court clarified that the grant of a patent occurs when the Controller passes an order of grant, not when the patent certificate is issued.  Issuance of the certificate and entry into the Register are administrative acts that confirm the grant but do not determine its date.

Pre-Grant Opposition: The Court emphasized that pre-grant opposition must be filed before the date of grant. Since the patent was granted on August 23, 2006, the appellant’s opposition filed on August 24, 2006, was time-barred.

Misuse of Opposition Mechanism: The Court noted that allowing multiple oppositions after the grant order could lead to endless delays, defeating the purpose of the Patents Act. It observed a potential nexus between the appellant and Span Diagnostics Ltd., indicating an ulterior motive.

Decision: The Court dismissed the appeals, upholding the Controller’s order and the Single Judge’s decision. It ruled that the patent was granted on August 23, 2006, and the appellant’s opposition was not maintainable. Costs of ₹25,000 were imposed on each appellant.

Conclusion: This case clarified the legal position on the timing of patent grants under the Patents Act, 1970. It established that the date of the Controller’s order is the date of grant, not the issuance of the certificate. The judgment also highlighted the need to prevent misuse of opposition mechanisms to delay patent grants.

Case Title:Dr. Snehlata C. Gupte Vs. Union of India & Ors.

Date of Order:April 20, 2012

Case Number:LPA Nos. 561/2010, 562/2010, 563/2010 & 564/2010

Neutral Citation:AIR 2012 DELHI 182, (2012) 189 DLT 342

Name of the Court:High Court of Delhi, New Delhi

Bench:Hon'ble Acting Chief Justice A.K. Sikri,Hon'ble Mr. Justice Rajiv Sahai Endlaw

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Neon Laboratories Ltd. vs. Medical Technologies Ltd.

Prior User of Trade Mark prevails over prior Registration but subsequent User of Trademark

Introduction:This case revolves around a dispute concerning the use and registration of trademarks in the pharmaceutical industry. Neon Laboratories Ltd. (Appellant) and Medical Technologies Ltd. (Respondents) contested the rights over trademarks "ROFOL" and "PROFOL," both referring to a generic drug "Propofol." The Supreme Court examined issues of prior use, trademark registration, and equitable principles in granting injunctions.

Background:The pharmaceutical sector often faces trademark disputes due to the descriptive or generic nature of drug names. This case highlights the legal complexities of trademark ownership, prior use rights, and market goodwill in a highly competitive industry.

Brief Facts of the Case:

Parties Involved:The Respondents (Medical Technologies Ltd. and others) are manufacturers and marketers of pharmaceutical products, specifically "PROFOL."The Appellant (Neon Laboratories Ltd.) is another pharmaceutical company marketing "ROFOL." Trademark Registration and Use:The Respondents' predecessor applied for the trademark "PROFOL" in 1998 and began using it in the market the same year.The Appellant applied for the trademark "ROFOL" in 1992 but began using it only in 2004, after a significant delay. Legal Proceedings:The Respondents filed a suit in 2005, alleging that "ROFOL" was deceptively similar to "PROFOL" and sought an injunction, damages, and an account of profits.The trial court granted an interim injunction in favor of the Respondents, which was upheld by the Gujarat High Court.

Issues Involved: Whether the Respondents had established prior use of the trademark "PROFOL."  Whether the Appellant's trademark registration of "ROFOL" in 1992 could override the Respondents' goodwill and prior use.  Whether the balance of convenience and irreparable harm favored granting an interim injunction.

Submissions of the Parties:

Appellant's Arguments:Claimed priority based on trademark registration dating back to 1992.Argued that the Respondents' use of "PROFOL" began only after their trademark application.Contended that the Respondents' goodwill did not override their statutory rights.

Respondents' Arguments:Asserted that they had been using "PROFOL" since 1998, long before the Appellant began using "ROFOL" in 2004.Highlighted that the Appellant had been dormant for over 12 years after filing for registration.Argued that their established market presence and goodwill entitled them to protection against passing off.

Reasoning and Analysis by the Court

Prior Use Doctrine:The Court emphasized the importance of prior use in trademark disputes. It noted that the Respondents had been using "PROFOL" since 1998, while the Appellant began using "ROFOL" only in 2004.Delay in Use by the Appellant:The Appellant's 12-year delay in using "ROFOL" was deemed significant. The Court held that such dormancy could indicate abandonment of the trademark.Balance of Convenience:The Court found that denying the injunction would harm the Respondents' goodwill and market reputation, whereas the Appellant had only recently started using "ROFOL." Irreparable Harm:The Court concluded that the Respondents would suffer irreparable harm if the injunction was denied, given the potential loss of market share and consumer trust.Statutory Provisions:The Court referred to Section 34 of the Trade Marks Act, 1999, which protects the rights of prior users over registered trademarks. Judicial Precedents:The Court cited N.R. Dongre v. Whirlpool Corporation and Milmet Oftho Industries v. Allergan Inc. to reinforce the principle that prior user rights supersede subsequent registration.

Decision:The Supreme Court upheld the decisions of the trial court and the High Court, granting an interim injunction in favor of the Respondents. The Appellant was restrained from using the trademark "ROFOL."

Conclusion:This case underscores the significance of prior use and market goodwill in trademark disputes. The Supreme Court's decision reinforces the principle that statutory rights conferred by registration cannot override the equitable rights of a prior user. It also highlights the necessity for timely action in asserting trademark rights to avoid allegations of abandonment.The judgment serves as a critical precedent in balancing statutory and common law rights in the realm of intellectual property.

Case Title: Neon Laboratories Ltd. vs. Medical Technologies Ltd.

Date of Order: October 5, 2015

Case No.: Civil Appeal No. 1018 of 2006

Neutral Citation: 2015 AIR SCW 6470, 2016 (2) SCC 672

Court: Supreme Court of India

Judges: Justice Vikramajit Sen and Justice Shiva Kirti Singh

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

T.V. Venogopal vs. Ushodaya Enterprises Ltd. & Anr.

Use of Common Word as a Trademark and Acquired Distinctiveness

Introduction:This case addresses a trademark and passing-off dispute between T.V. Venogopal, the appellant, and Ushodaya Enterprises Ltd., the respondent. The appellant claimed to have used the word "Eenadu" for incense sticks (agarbattis), while the respondent, a well-known publisher of the Telugu newspaper "Eenadu," alleged infringement and passing off of its trademark. The Supreme Court’s judgment explores issues of trademark distinctiveness, secondary meaning, and passing off.

Background:Ushodaya Enterprises Ltd. is a renowned media company that publishes the "Eenadu" newspaper, a widely circulated Telugu daily, since 1974. The word "Eenadu" in Telugu means "today." The appellant, T.V. Venogopal, a manufacturer of incense sticks, adopted the term "Eenadu" in 1988 for his products.  The respondent alleged that the appellant's use of "Eenadu" for incense sticks caused confusion among consumers and diluted the goodwill associated with its trademark. The appellant argued that "Eenadu" is a generic word commonly used in South Indian languages, and no single entity could claim exclusive rights over it.

Brief Facts of the Case: The appellant, T.V. Venogopal, used the mark "Ashika’s Eenadu" for incense sticks since 1988.The respondent claimed exclusive rights over "Eenadu," asserting it had acquired secondary meaning associated with its newspaper.The respondent initiated legal proceedings for trademark infringement and passing off in the City Civil Court, Hyderabad.The trial court granted an injunction, which was modified by the High Court of Andhra Pradesh, limiting the restriction to the state of Andhra Pradesh.The appellant challenged the High Court’s decision, arguing that "Eenadu" is a generic term and its use for incense sticks was bona fide.

Issues Involved in the Case

1. Whether "Eenadu" is a generic term or has acquired secondary meaning as a trademark?

2. Whether the appellant’s use of "Eenadu" for incense sticks constitutes passing off?

3. Whether the respondent’s goodwill and reputation associated with "Eenadu" extend to unrelated goods like incense sticks?

4. Whether the appellant acted dishonestly in adopting the term "Eenadu"?

Submissions of the Parties

Appellant (T.V. Venogopal):Argued that "Eenadu" is a generic term meaning "today" in Telugu and cannot be monopolized. Claimed that the term is commonly used by various businesses and entities, including banks and films. Asserted that there was no likelihood of confusion, as the respondent operates in the media industry while the appellant manufactures incense sticks.Stated that the adoption of "Eenadu" was honest and bona fide, with no intention to deceive consumers.

Respondent (Ushodaya Enterprises Ltd.): Contended that "Eenadu" had acquired secondary meaning, signifying the respondent’s newspaper and its associated goodwill. Argued that the appellant’s use of the term diluted the distinctiveness of its trademark and caused consumer confusion. Highlighted that the appellant used a similar script and font, indicating an intention to deceive. Claimed that the reputation of "Eenadu" extended beyond newspapers to other goods and services.

Reasoning and Analysis by the Court

Generic vs. Secondary Meaning: The court acknowledged that "Eenadu" is a common term in Telugu but held that it had acquired secondary meaning due to its extensive use and association with the respondent’s newspaper. It emphasized that a descriptive term could attain trademark protection if it became synonymous with a specific source of goods or services.

Passing Off: The court applied the classic trinity test for passing off: goodwill, misrepresentation, and damage.  It found that the respondent had established significant goodwill associated with "Eenadu."  The appellant’s use of a similar mark and font was deemed likely to mislead consumers into believing a connection between the products.

Honesty of Adoption:The court examined the appellant’s conduct and concluded that the adoption of "Eenadu" was not bona fide. The appellant’s registration of "Eenadu" for multiple classes of goods suggested an intent to capitalize on the respondent’s reputation.

Scope of Protection:  The court noted that while the respondent primarily operated in the media industry, its trademark protection could extend to unrelated goods if goodwill and reputation were established.  It cited precedents where well-known trademarks were protected across diverse product categories.

Decision:The Supreme Court upheld the respondent’s claim, affirming that "Eenadu" had acquired secondary meaning and was entitled to protection. It restrained the appellant from using the mark "Eenadu" for incense sticks and other goods.

Conclusion:This case underscores the principle that a descriptive term can gain trademark protection if it acquires secondary meaning through extensive use and reputation. The judgment highlights the importance of goodwill and consumer perception in passing-off actions and reinforces the need for honest adoption of trademarks. The decision serves as a landmark in balancing trademark rights and the fair use of common terms.

Case Title: T.V. Venogopal vs. Ushodaya Enterprises Ltd. & Anr.

Date of Order: March 3, 2011

Case No.: Civil Appeal Nos. 6314-15 of 2001

Neutral Citation: 2011(45)PTC433(SC)

Court: Supreme Court of India

Bench: Hon'ble Justice Dalveer Bhandari and Hon'ble Justice K.S. Panicker Radhakrishnan

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.