Neetu Singh and Another Vs Telegram FZ LLC

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Judgement Date:30.08.2022
Case No. CS (COMM) 282 of 2020
Hon'ble High Court of Delhi
Prathiba M Singh, H.J.
Neetu Singh and Another Vs Telegram FZ LLC

The Plaintiff filed application being I.A. 8461/2020 (u/O XI CPC seeking discovery and directions to Defendant No. 1 to disclose identity of infringing channels).

The Question was that whether Telegram can be directed to disclose the identity of the creators of the infringing channels which unauthorized and illegally disseminate the Plaintiffs’ copyrighted works?

The Defendant No.1 alleged that the data centres and servers of Telegram are located outside India and the direction for disclosure would violate the laws of the jurisdiction where the servers are located. Para 20 (ii)

However Court rejected this argument by observing merely due to the fact that the persons disseminating the copyrighted works, are using the Telegram app and the said app retains its data outside India, on Telegram servers, the jurisdiction of this Court cannot be ousted. Having considered the jurisdictional requirements, the substantive provisions of the Copyright Act. Para 27

The Hon'ble High Court of Delhi, while allowing the application of the Plaintiff , also observed that Singapore is a signatory to the Berne convention and a WTO country as well. Thus, the Plaintiffs’ works would enjoy protection even under the laws of Singapore. Para 45 (iii)

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Entertainment Network India Limited Vs HT Media Limited

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Judgement Date:29.08.2022
Case No. CS (COMM) 179 of 2016
Hon'ble High Court of Delhi
Jyoti Singh, H.J.
Entertainment Network India Limited Vs HT Media Limited

The Defendant under Order XI Rule 7(c) CPC as amended by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter referred to as the ‘Act’) read with Section 151 CPC, seeking permission to bring additional documents on record and lead evidence with respect to these documents.

Issues were framed in the present suit on 12.11.2018.

Plaintiff’s evidence concluded on 12.12.2019.

On 25.01.2020 along with additional documents, which are now sought to be brought on record by way of the present application. The suit is currently at the stage of Defendant’s evidence.

The Plaintiff was having no objection for taking on record copy of Power of Attorney dated 24.01.2020, copy of Board Resolution dated 15.07.2015 and i.e., charts detailing the filing status of Plaintiff’s and Defendant’s trademark applications.

However other documents were objected.

Other documents were in power possession of defendants prior to filing of written statement. Hence the same were refused to be taken on record. Para 28-30

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

BOLT Technology Vs Ujoy Tech Pvt. Ltd.

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Judgement Date:29.08.2022
Case No. CS (COMM) 582 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh, H.J.
BOLT Technology Vs Ujoy Tech Pvt. Ltd.

The Defendant sought rejection of Suit under Section 12A of the Commercial Courts Act, 2015.

The Defendant argued that in view of Judgement of Hon'ble Supreme Court of India in Patil Automation Private Limited & Ors. v. Rakheja Engineers Private Limited [Civil Appeal Nos.5333-34/2022 decided on 17th August, 2022], to argue that pre-litigation mediation under Section 12A of CCA is mandatory.

As in the present case pre institution suit mediation has not been invoked by the Plaintiff, the suit is liable to be rejected under Section 12A of the Commercial Courts Act, 2015.

However the Hon'ble High Court of Delhi has rejected this argument of Defendant that bar of Section 12A of the Commercial Courts Act, 2015 is applicable only in those cases where urgent relief are not sought.

The subject matter Suit was pertaining to Intellectual property right. The Court observed that as per the experience seen in intellectual property cases, the relief of interim injunction, including at the ex-parte stage and ad-interim stage, is extremely important.

As interim relief which was sought by the Plaintiff was urgent in nature, the bar Section 12A of the Commercial Courts Act, 2015 was held not to be applicable.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

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Dominos IP Holder LLC Vs Dominick Pizza

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Judgement Date:29.08.2022
Case No. CS (COMM) 587 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh, H.J.
Dominos IP Holder LLC Vs Dominick Pizza

Plaintiff's Trademark: Dominos Pizza’
Cheese Burst’
Pasta Italiano’

Defendants Trademark: Dominick Pizza’
Cheese Burst’
Pasta Italiano’

Ex-Parte Injunction Granted

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update
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PT DJARUM Vs Bajrang Traders

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Judgement Date:29.08.2022
Case No. CS (COMM) 593 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh, H.J.
PT DJARUM Vs Bajrang Traders

Plaintiff's Trademark: DJARUM BLACK
Plaintiff's Goods: Cigarette
Defendants Trademark: PAVAN BLACK
Defendant's Goods: Match box
Ex Parte Injunction Granted

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update
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Institute of Chartered Tax Adviser Vs The Chartered Institute of Taxation

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Judgement Date:29.08.2022
Case No. CM (M) IPD 2 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh, H.J.
Institute of Chartered Tax Adviser Vs The Chartered Institute of Taxation

The Jurisdiction of Court can be created not only on the basis of actual sales but also on the basis of making averments regarding advertisement within Territorial Jurisdiction. As in the present case, the Respondent No.1 made categorical averment regarding the Defendants are promoting, publishing and advertising its services and business all over India, including Delhi, the Ld. Trial Court rightly rejected application of the Petitioner/Defendant seeking rejection of plaint.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Akhil Chandra Vs Registrar of Trademark

Judgement Date:26.08.2022
Case No. CA (Comm.IPD-TM) 115 of 2021
Hon'ble High Court of Delhi
Navin Chawla, H.J.
Akhil Chandra Vs Registrar of Trademark

What could be fate of those trademarks which are comprised of ordinary words? Order in other words , can a Trademark, which are result of combining ordinary dictionary words, be appropriated exclusively by the proprietor?

The Hon'ble High Court of Delhi was having an occasion to deal with such situation vide passing Judgement dated 26.08.2022 in Intellectual Property Division Trademark Appeal bearing No. CA (Comm.IPD-TM) 115 of 2021 titled as Akhil Chandra Vs Registrar of Trademark.

The Appellant was the applicant , who has approached the Hon'ble High Court of Delhi against order of Registrar of Trademark, where by Trademark application filed by the Applicant was refused under the Provisions of Section 9 and Section 11 of the Trademarks Act 1999.

In order to appreciate the order passed by Ld. Registrar of Trademarks after raising an objection under Section 9 and Section 11 of the Trademarks Act 1999, these provisions are reproduced as under:

9. Absolute grounds for refusal of registration.

(1) The trade marks.

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

From bare perusal of Section 9 of the Trademarks Act 1999, it is apparent that this provision deals with the situation where a trademark may be refused on the grounds of inter alia lacking distinctiveness. This is absolute ground for refusal of the Trademark.

For the purpose of present case it is relevant to point out that the subject matter Trademark was refused on the ground of lacking distinctiveness under the provision of Section 9 of Trademarks Act 1999.

While Section 11 of the Trademarks Act 1999 provides as under:

11. Relative grounds for refusal of registration.

(1) Save as provided in section 12, a trade mark shall not be registered if, because of;

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

From bare perusal of Section 11 of Trademarks Act 1999, it is apparent that this provides relative grounds for refusal. A Trademark may be refused on the grounds of similarity of presence of earlier applied for or earliest registered Trademarks on register.

Now coming to the Facts of the case, the Appellant was the applicant of Trademark STUDIO MOSAIC. The Registrar of Trademarks refused the said Trademark application of the Appellant on the following grounds:

“9(1 )(a) - The trade mark is devoid of any distinctive character, that is to say, not capable of Distinguishing the goods or services of one person from those of another person:

11(1)(a) - Relative grounds for refusal of registration.- The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or services.

When the matter was listed before the Hon'ble High Court of Delhi, the Appellant assailed the impugned order by submitting that the mark in question was a combination of two common dictionary words. The mark having combination of two ordinary dictionary word, having no connection with the goods in question, is capable of being registered under the provisions of Trademarks Act 1999.

The Hon'ble High Court of Delhi was pleased to reject the objection under Section 9 of Trademarks Act 1999 raised by Registrar of Trademarks by observing that the words ‘STUDIO’ and ‘MOSAIC’, though common dictionary words, when joined together become arbitrary for the goods in question and do not have any connection with the goods in question. Thus the subject matter Trademark STUDIO MOSAIC was held to qualify to proceed for advertisement in Trade Mark Journal.

The other objection raised by the Registrar of Trademark under Section 11 , vis a vis similarity of subject matter Trademark applied for with respect to other prior cited trademark namely STUDIO DEPOT, MOSAIC (LABEL), STUDIO 127 (LABEL), STUDIO PROFILE, STUDIO (LABEL), MOSAICA EDUCATION (DEVICE) was also held to be not tenable on the ground cited marks cannot prima facie be said to be deceptively similar to that of the appellant, specifically keeping in view the goods and services for which the appellant was seeking registration of the mark and for which these marks are registered. The ground of deceptive similarity of the subject matter Trademark applied for was also rejected.

Thus from bare perusal of the afore mentioned Judgment it is apparent that Trademark, which is combination of two common dictionary word, having no connection with the goods in relation to which it is applied for, can not be rejected at the pre advertisement stage. The Trademark having combination of two ordinary words can qualify as strong arbitrary trademark in case the applicant shows that it has no connection with the goods , applied for.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Usha International Vs Haseen Admed Ahmed

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Judgement Date:08.08.2022
Case No. CS(COMM) 549/2022
Hon'ble High Court of Delhi
Navin Chawla, H.J.
Usha International Vs Haseen Admed Ahmed

Plaintiff's Trademark USHA and Defendant's Trademark TUSHA were held deceptively similar. In spite of Defendants registration, ex parte injunction was granted.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update
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Sun Pharma Laboratories Pvt. Ltd. Vs Hetero Healthcare Ltd.

 26.08.2022 FAO (Comm) 96/2022 Delhi High Court Vibhu Bakhru+Amit Mahajan, H.J. Sun Pharma Laboratories Pvt. Ltd. Vs Hetero Healthcare Ltd.

In Pharmaceutical Industry it is a normal tendency amongst the manufacturers to keep the name of a product based on the active compound of the medicine. One issue is there, whether a party can be allowed to claim exclusive right over such a pharmaceutical brand , which is based on one of the active ingredient of the medicine? Another important issue was that in those cases, where medicinal products are sold under the prescription of doctors, can it be said that there could be possibility of confusion and deception because of use of similar brand by other parties? And there was another important aspect regarding effect of price difference in the possibility of confusion and deception. What would be impact of price difference of competing medicine? Or in another words , if there is significant price different between the competing products of parties, can still be said that there could be possibility of confusion and deception? These were the issues, which were addressed by the Hon'ble High Court of Delhi in its recent Judgement dated 26.08.2022 passed in Appeal bearing FAO(Comm)No 96 of 2022 titled as H.J. Sun Pharma Laboratories Pvt. Ltd. Vs Hetero Healthcare Ltd. This appeal before the Hob'ble Division Bench was filed by the Appellant against the order of Hon'ble Single Judge in a Suit filed by the Appellant against the Respondent where in Appellant's Interim Injunction application under Order 39 Rule 1 and 2 CPC was dismissed. The Appellant filed the subject matter suit seeking the relief of inter alia infringement for its registered Trademark LETEROZ and also the passing off. The subject matter suit was filed by the Appellant against use of trademark LETERO by the Respondent , which according to the Appellant, was deceptively similar to Appellant's Trademark LETEROZ. When Respondent appeared in the subject matter Suit, the same took various defences. One of such defence of the Respondent was that the word LETROZ is derived from the word ‘LETROZOLE’. According to the Respondent, Word LETROZOL is an international non-proprietary name (INN) of a salt used in the medicine. Hence , the Respondent pleaded that , therefore, the Appellant cannot claim monopoly in use of the said word. Price difference of the subject matter products and the subject madicine being prescribed by the oncologist, were another important factors, which according to the Respondent reduces the possibility of any confusion. The Hon'ble Division Bench High Court of Delhi was pleased to dismiss the Appeal and decided all the afore mentioned issues in favour of Respondent. Accroding to the Hon'ble Division Bench, The appellant, in the present case, cannot be allowed to monopolize the word INN ‘LETROZOLE’ as the same was name of active salt used in the subject matter medicine. There by it can be said that the name of brands , which are based on one of the active compound , are considered as weak trade mark. Another observation of the Hon'ble Division Bench was that the mark, ‘LETROZ’, was not similar to the trademark ‘LETERO’. The Court said that merely because both the parties have adopted the initial letters of active salt ‘LETROZOLE’, it can not be said that competing Trademarks are similar. According the Hon'bke Division Bench, as It was apparent that both the Appellant and the Respondent were using their marks, which are derived from the INN ‘LETROZOLE’, the possibility of confusion was least. The Hon'ble High Court of Delhi also observed that there is also a marked difference in the price of both the products being sold by the Appellant and the Respondent. The price of the Appellant's subject matter medidine was rup 187.80/- while Respondent was selling its medicinal product at the rate of Rup 60/-. This significant price difference was also another important factor, which according to the Hon'ble Division Bench, was sufficient enough to nullify the possibility of confusion. Another reason for declining the Appeal was that the subject matter medicines were sold by Oncologist, the doctors treating disease like Cancer. The oncologist is an expert doctor who prescribes the medicines for the treatment of breast cancer. According to the Hon'ble Division Bench , an oncologist is not likely to get confused because the two drugs are being sold with a mark containing the same first three letters which are derived from the active salt of the medicine namely ‘LETROZOLE. These are the reasons, which made the Hon'ble Single Judge and later on the Hon'ble Division Bench, High Court of Delhi to decline relief to the Appellant , first in the suit and then in the Appeal. Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi. ajayamitabh7@gmail.com, 9990389539

Delhi Tourism and Transportation Development Corporation Vs Swadeshi Civil Infrastructure Pvt. Ltd.

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27.01.2021
FAO (Comm) 232/2020
Delhi High Court
Sanjeev Sachdeva, H.J.
Delhi Tourism and Transportation Development Corporation Vs Swadeshi Civil Infrastructure Pvt. Ltd.

The Appeal was listed before the Hon'ble Division with the following issue.

"whether, in terms of Section 13 (1A) of the Commercial Courts Act, 2015 (hereinafter referred to as the Act), appeals arising out of orders or judgments passed by a Commercial Court at the level of District Judge exercising Original Civil jurisdiction are to be heard by a Single Judge of this Court or should be placed before the Division Bench of this Court."

The Division Bench answered this issue as under:

"In terms of Section 13(1A) of the Act, appeals arising out of orders or judgments passed by a Commercial Court at the level of District Judge (including Additional District Judge) exercising Original Civil jurisdiction are to be listed before the Commercial Appellate Division Bench of this Court, which are the designated Division Benches and not a single judge."

This it is apparent that Appeal against order of District Judge under Order 13-A of the Commercial Court Act 2015, has to be filed before the Division Bench , High Court of Delhi, and not before the Hon'ble Single Judge.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Hatsun Agro Products Ltd. Vs Arokya Foods

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01.08.2022
Civil Suit No. 34 of 2015
Hon'ble High Court of Judicature at Madras
Senthil Kumar Ramamoorthy H J
Hatsun Agro Products Ltd. Vs Arokiya Foods

The subject matter suit for infringement and Passing off was filed by the Plaintiff against the Defendant from using the offending trademark 'AROKYA' written in Tamil or any other trademark or marks which are in any way identical or deceptively similar or colourable imitation of the plaintiff's trademark.

The Plaintiff claimed to have been using the Trademark AROKYA in relation to Dairy product since the year 1995. Para 2

The Plaintiff was also having Trademark registration for the Trademark AROKYA in class 29 and 32.

The Defendant was using the Trademark AROKYA in relation to Idly and Dosa since the year 2001. Para 3

Defendant also claimed to be registered proprietor of Trademark AROKYA.

The Plaintiff was aware of Defendant since the year 2009 as notice was issued in the year 2009 itself. However suit was filed in the yea r 2015, after gap of 6 years.

There has been delay of more than 5 years in filing the suit by the Plaintiff after becoming aware of Defendants registration. Defendant was entitled to benefit of Section 33 of the Act. Para 20-24.

Goods of the Plaintiff , i.e. Dairy product is different from Goods of the Defendant , i.e. Idly and Dosa. Para 32

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Janssen Pharma Vs MSN Laboratory

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24.08.2022
COMS No. 18 of 2022
Hon'ble High Court of Himachal Pradesh
Vivek Singh Thakur
Janssen Pharma Vs MSN Laboratory

The subject matter suit for infringement of Patent was filed by the Plaintiff against the Defendant No.1 for infringement of Indian Patent under No.232231 dated 30.07.2024.

It was claimed that Plaintiff No.1 and 3 were exclusive licensee of proforma Defendant No.2. The suit was filed against the Defendant No.1,  as according to the expert report filed by the Plaintiff, the products of the Defendant No.1 were infringing the registered Indian Patent of the Plaintiffs.

The Defendant No.1 made reference to Section 107 of the Patent Act 1970 and relied upon all the grounds which were available seeking revocation of the Patent.

The Defendant No.1 also alleged that the present suit is misconceived as the Plaintiffs are not the owner of the subject matter Patent and that the same are merely licensee.

However the ex parte injunction was granted as the subject matter Patent has remained unchallenged for almost 18 years after its grant and that the same was sufficiently old.

More over neither any objection was raised under Section 13(4) of the Patent Act 1970 at the examination stage nor any objection under Section 25 of the Indian Patent Act 1970.

As the patented product remained commercially successful for sufficiently long time, the Hon'ble High Court of Himachal Pradesh was pleased to grant ex parte injunction in favour of the Plaintiffs.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Novartis AG Vs Controller of Patents and Designs

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Order Date:23.08.2022
Case No. CA (Comm.IPD-PAT) 12 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh
Novartis AG Vs Controller of Patents and Designs

What is significance of efficacy test in devisional Patent Application? Can Test of enhanced therapeutic efficacy may be applied to evaluate patentability of Divisional Patent Application?

This issue has been addressed by Hon'ble High Court of Delhi in its Judgement dated  23.08.2022 passed in Appeal bearing No. CA (Comm.IPD-PAT) 12 of 2022 titled as Novartis AG Vs Controller of Patents and Designs.

Let us first of all understand as to what is the devisional application? When specification of Single Patent Application contains multiple inventions, then devisional Patent Application can be filed in relation to each single invention out of those multiple inventions disclosed in the Patent Patent Application. This is but natural that Divisional Patent Application can only be filed after filing of Parent Patent Application.

Section 16 of the Patent Act 1970 provides for filing of Divisional Patent Application. The same is reproduced as under:

16 (1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

(2). The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

From bare perusal of the afore mentioned provision, i.e. Section 16 of the Patent Act 1970 ,it is clear that for a Divisional Patent Application to succeed, following criterion has to be satisfied.

The First one is that it has to be in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

Another requirement for divisional Patent Application is that there should not be duplication of claims in the two specifications i.e., the parent specification and the divisional specification.

It means all the claims of the divisional application must be present in the original patent application.

Another requirement is that there should not be any repetition of claim in the provisional application, which were already present in the Parent Application.

Now coming on the facts of the case, this Appeal was filed against the order dated 28.09.2020 passed by  Controller of Patent where by  divisional application for Patent Application filed by the Appellant under No. 7863/DELNP/2014 was refused.

The finding of Controller for rejecting the divisional application was that subject matter of the said divisional application under No. 7863/DELNP/2014 was that it belongs to the same broad class and group as the subject matter of granted claims 1 to 3 of the parent application under No. 8114/DELNP/2007.

The objection of controller of Patent was that replacement of benzofuran of the parent compound by indazole moiety in claim 1 of the divisional application did not bring about any increase in therapeutic efficacy and showed same therapeutic behaviour.

The Hon'ble High Court of Delhi , however observed that the question of therapeutic efficacy under Section 3(d) of the Act would arise only if the application in question was a completely independent application and did not originate from a parent application.

The Hon'ble High Court of Delhi was pleased to set aside the finding of the controller of Patent and observed that since the divisional application traces its origin to the parent application, the test of therapeutic efficacy would not apply while judging as to whether the compound claimed in the divisional application is a valid claim in a divisional application or not.

Thus it is apparent that test of therapeutic efficacy can not be a criteria for evaluating a divisional Patent Application.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539