Mohd Ershad Sole Proprietor Ek Agencies Vs Registrar of Copyright and Ors

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Judgement date:07.09.2022
Copyright Cancellation No.
Name of Court: Delhi High Court
Name of Hon'ble Justice: Prathiba M Singh, H.J.
Case Title: Mohd Ershad Sole Proprietor Ek Agencies Vs Registrar of Copyright and Ors

Petitioner's Registered Copyright: HIGHGRON LABEL
Respondent's Registered Copyright: ASLI KESRI CHAI

Petitioner is the prior registered Proprietor of the HIGHGRON LABEL Copyright with yellow back ground colour combination. The Respondent obtained ASLI KESRI CHAI with yellow back ground colour combination. In both the artistic labels, the colouring of both the packaging is identical, the device of woman plucking tea leaves is identical, the manner

of presentation of the words, logo and devices are also identical. Accordingly the impugned copyright registration granted in favour of the Respondent was allowed. However the Respondent No.1 was granted liberty to use ASLI KESRI CHAI Trademark with any other Label which is not similar to that of the Petitioner.

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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Siddhant Icecreams LLP and Ors Vs Amit Pahlani and Ors

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CASE LAW DISCUSSED:
Judgement date:19.10.2022
Suit No. CS Comm No. 735 of 2022
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Jyoti Singh, H.J.
Case Title: Siddhant Icecreams LLP and Ors Vs Amit Pahlani and Ors

Plaintiff's Family Trademark: NATURAL
Plaintiff's Product: Ice Cream, Ice Cream Shakes
Defendant's Trademark: NATURAL
Defendant's Acronymn: NIC [Natural Ice Cream]
Defendant's domain Name:
www.niceicecreams.com and www.nicnaturalicecreams.com
Meta Tag: NATURAL
Defendant's product: Ice Cream
Defendant: Ex distributor of Plaintiff
Ex Parte Injunction granted

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

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Kewal Ashokbhai Vasoya and Another Vs Suarabhkati Goods Pvt. Ltd.

Judgement date:07.10.2022
Commercial Appeal No. INTERIM APPLICATION (L) NO. 28715 OF 2022
IN COMMERCIAL IP SUIT (L) NO. 28710 OF 2022
Name of Court: High Court of Judicature at Mumbai
Name of Hon'ble Justice: GS Patel & Gauri Godse, JJ
Case Title: Kewal Ashokbhai Vasoya and Another Vs Suarabhkati Goods Pvt. Ltd.

The adversarial system used by the Indian judiciary is the same one that is used in practically all nations with common law. This adversarial system's need that natural justice principles be upheld while passing any injunctions is one of its most crucial features. This means that the party who would be affected by any orders must be heard by the court before any orders are made.

However, in cases involving intellectual property rights, exceptions have been made. A system for granting ex parte injunctions in cases involving intellectual property rights has been developed by the court. In cases involving trademark infringement, an Order of ex parte injunction is crucial.

This does not imply that the party adversely affected by the ex parte injunction order does not have any protection in place, though. According to Order 39 Rule 4 CPC, such a party has the opportunity to request the cancellation of the ex parte injunctive order on many grounds, including suppression.

What transpires, then, when a party directly approaches the Appellate Court in opposition to such an ex parte injunction order, rather than filing an application pursuant to Order 39 Rule 4 CPC, based on fresh evidence that was not presented to the Trial Court at the time the ex parte injunction order was issued?

Would it be appropriate for the Appellate Court to consider and grant the defendant such relief based on fresh information and documents  that was not presented to the Trial Court when it issued the ex parte injunction? Or would it be more appropriate to instruct the Single judge to make decision based on the basis of fresh materials and information  that the defendant has entered into the record?

Vide Judgement dated 07.10.2022 passed in the  Commercial Appeal No. INTERIM APPLICATION (L) NO. 28715 OF 2022
IN COMMERCIAL IP SUIT (L) NO. 28710 OF 2022 , the  High Court of Judicature at Mumbai, Comprising of  Hon'ble Justices Shri GS Patel and Shri  Gauri Godse, in the case titled as  Kewal Ashokbhai Vasoya and Another Vs Suarabhkati Goods Pvt. Ltd. have dealt with such issue.

The respondent was the plaintiff, while the appellant was the defendant. The Plaintiff filed the subject matter lawsuit against the Defendant in an effort to get a permanent injunction for trademark infringement and passing off. Ex parte injunctions were granted in this case by the single  judge in favour of the plaintiff and against the defendant.

Being displeased, the subject appeal was filed against the Hon'ble Single Judge's decision in the case for trademark infringement and passing off filed by the respondent and against the appellant, which resulted in the grant of an ex-parte injunction in favour of the respondent and against the appellant.

The Respondent allegedly omitted crucial information from the Plaint in order to secure the ex-parte injunction, which was the principal accusation made by the Appellants. In order to support its argument for suppression, the appellant also presented additional evidence before the Hob'ble Division Bench for record.

The Single Judge did not have an occasion to deal with these documents. The ex parte injunction order may always be vacated by the Appellant by approaching the Single Judge and submitting an application in accordance with Order 39 Rule 4 CPC. The defendant instead made the decision to prefer an appeal against such an ex parte injunction.

The Hon'ble Court declined to grant any relief to the Appellant. The reasons assigned by the Hon'ble Division Bench are that when a defendant comes up on appeal against such a without notice order, accusing the plaintiff of suppression, falsehood or worse, what the defendant is essentially doing is making an application at a very early stage that is indistinguishable in its conceptualization from an application under Order 41 Rule 27 of the CPC for the appeal court to receive additional material directly.

The Hon'ble Division Bench further observed that what the defendant now says is that the without notice ad interim time-limited order must be vacated or set aside on material that was never placed before the Single Judge, and to which the single Judge had no opportunity to apply his or her mind.

The Hon'ble Division Bench insisted that it is not a practice that should be encouraged. It is indeed to be thoroughly deprecated. The reasons are self-evident. It is always, and we would say invariably, impermissible for an appeal court to reverse the order of a single Judge on material that was not before him or her, barring the most exceptional circumstances contemplated by the CPC.

Based on the foregoing, it is clear that when an Appellant files an Appeal against an ex-parte order of injunction, the Appellant court should not set aside the order on the basis of new material placed on record by the Appellants.

This is why the Hon'ble Division Bench refused to interfere with the ex-parte injunction order, and the Appellants were directed to argue their case before the Hon'ble Single Judge.

When an appeal is filed against an ex parte order of injunction, the defendant is only required to show the documents that were in front of the single Judge when the ex parte injunction was issued.

The Appellate Court would not encourage the practise of overturning an ex parte injunction order based on new evidence. Of course, the Defendant may seek vacation of the injunction order before the defendant in the suit proceeding.

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

Dharampal Satyapal Limited & Anr vs Mr. Youssef Anis Mehio & Ors

Judgement date:19.09.2022
Suit No. CS Comm 1225 of 2018
Name of Court: Delhi High Court
Name of Hon'ble Justice: Jyoti Singh, H.J.
Case Title: Dharampal Satyapal Limited & Anr vs Mr. Youssef Anis Mehio & Ors

In India, the Trademarks deputes were earlier governed under the provisions of Trade and Merchandise Marks Act 1958. At the relevant point of time, provisions of Trade and Merchandise Act 1958 was found to be sufficient enough to handle the disputes pertaining to Trademarks Rights.

By passage of time , the Indian economy were made open to all. The policy of economic liberalization has opened Indian Market to all. Very soon, we have witnessed many multinational companies entering into Indian Markets.

Naturally as the India has opened it's economy for international markets, need was felt to update the provisions of law pertaining to Trade Marks Laws. Accordingly Trademarks Act 1999 was introduced. Many new provisions were introduced in this Trademarks Act 1999, one of which was introduction of concept of recognition of Well Known Trademarks.

Though provisions of well known trademark has been included in the Trade Marks Act 1999, however there were very few Judgements explaining the significance attached to Well Known Trade Marks Act 1999.

In a recent Judgement dated 19.09.2022 passed by the Hon'ble Single Judge, Delhi High Court namly Jyoti Singh , H.J in Commercial Suit No. CS Comm 1225 of 2018 , titled as Dharampal Satyapal Limited & Anr vs Mr. Youssef Anis Mehio & Ors , the significance;/attached to well known Trademark has been explained.

This case was pertaining to Well Known Trademark RAJNIGANDHA in relation to flavoured Masala. The subject matter Suit was filed against use of trademark RAJNIPAN in relation to Chillum Flavours.

The Plaintiff also asserted that it's Trademark RAJNIGANDHA has been declared as a well known Trademark by High Court of Delhi in Suit titled as Dharampal Satyapal Limited Vs Suneel Kumar Rajput and other within the provision of Section 2(1)(zb) read with Section 2(1)(zg) of the Trademarks Act 1999.

The Plaintiff asserted that as the Plaintiff's Trademark has been declared as well Known Trademark within the meaning of Section 2(1)(zb) read with Section 2(1)(zg) of the Trademarks Act 1999, the same was entitled to better protection. The another fact which was alleged by the Plaintiff was that the Defendant has not only copied the similar Trademark RAJNIPAN but also used identical color combination.

The Hon'ble High Court of Delhi discussed the significance of a Trademark declared as a well known Trademark in the following words:

"19.Given that the trademark RAJNIGANDHA is a “well-known” mark as defined under Section 2(1)(zg) of the Act and entitled to a high degree of protection, even in cases of dissimilar goods the owner of the mark is

required to be shielded.

Present case stands on a better footing, as the impugned goods of the Defendants are Chillum flavours, registered in Class 34 and the product of the Plaintiffs is Pan Masala, also registered in Class 34.

The goods are allied and cognate and the triple identity test is satisfied as the trademark is nearly identical, goods are allied and cognate and the trade channels are identical with same consumer base."

Thus it is apparent that the Hon'ble Court has observed that when a Trademark is declared as well known Trade Mark within the meaning of Section 2 (1) (Zg) of the Trademarks Act 1999, it gets protection in relation to different kinds of goods also.

Though in the subject matter case , competing products of the parties were falling in class 34 and they were allied and cognate in nature, the court observed that in case of well known trademark, right extends to different kind of goods and services as well.

The same is clearly borne out from bare perusal of Section 2 (1) (Zg) of the Trade Marks Act 1999. The said provision is reproduced as under:

Section 2(1)(zg) in The Trade Marks Act, 1999

(zg) “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Section 2 (1) (Zg) of the Trademarks Act 1999 required that only those Trademarks can fall in this category that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

The natural consequence of the same would be that in case a Trademark is declared as Well Known, the court will presume possibility of confusion even in relation to different kinds of goods and Services.

This Judgement clearly laid down that once a Trademark is declared as well Known Trademark within the meaning of Section 2 (1) (Zg) of the Trade Marks Act 1999, the right holder enjoys a better protection in the eyes of law.

Right holder of a declared well known Trademark can also restrain the other parties from using same or similar Trademarks in relation to different Trademarks also. Accordingly in the present case also, the Plaintiff was granted protection against user of impugned Trademark RAJNIPAN of the Defendants in relation to Chilum flavour also.

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

Varun Gems Vs Precious Jewels & Anr

Judgement date:06.10.2022
Appeal No. FAO OS Comm 6 of 2019
Name of Court: Delhi High Court
Name of Hon'ble Justice: Vibhu Bakhru and Amit Mahajan, H.J.
Varun Gems vs M/S Precious Jewels & Anr

In matters pertaining to Intellectual Property Rights, the orders passed by the Court on interim injunction application under 39 Rule 1 and 2 CPC plays crucial role in declining the right of the parties. Even though the observation made by the Hon'ble Courts on such interim injunction applications are prima facie in nature.

The orders passed by the Court on interim injunction application under 39 Rule 1 and 2 CPC are in fact Interlocutory orders. While adjudicating interim injunction applications and while while passing such Interlocutory order , the Courts makes observations on the merits of case.

Now question arises that what could be binding effect of such Interlocutory orders at the final stage of the proceeding? Let us say that if the Court has prima facie returned the finding in favour of one party to be prior adopter and user of subject matter Trademark, can it be said this observation is also binding at the final stage of the Suit?

Can a party take advantages of the positive findings returned by a court in its favour at the Interlocutory stage, in other proceeding pertaining to the subject matter Intellectual Property Rights? What weight has to be given to such prima facie observation made by the Court?

The Hon'ble Division Bench, High Court of Delhi, constituting the Hon'ble Justices namely Shri Vibhu Bakhru and Shri Amit Bansal , while passed the Judgement dated 06.10.2022 in commercial Appeal bearing FAO OS Comm No.06 of 2022 titled as Varun Gems Vs Precious Jewels and others dealt with one such issue.

The subject matter Appeal FAO OS Comm No.06 of 2022 titled as Varun Gems Vs Precious Jewels and others came from Judgement dated 06.04.2018 passed in Suit instituted by the Hon'ble Single Judge whereby the subject matter Suit, which pertain to the dispute for trade mark RAKYAN in relation to jewellery item, was dismissed.

The subject matter Suit was filed by the Appellant against the Respondents herein seeking the relief of permanent injunction from using the Trademark/Trade name RAKYAN.

Initially ex parte injunction was granted in favour of the Appellant , however subsequently the Respondents appeared and assailed the afore mentioned order of injunction not only before the Hon'ble Division Bench of India, but also to the Hon'ble Supreme Court of India.

There after , the Hon'ble Supreme Court of India vacated the injunction operating against the Respondents after observing "In our opinion, looking at the provisions of Section 35 of the Act, there is no prima facie case in favour of the plaintiff and therefore, the defendants could not have been restrained from doing their business. We, therefore, quash and set aside the impugned order granting interim relief in favour of the plaintiff and the appeal is allowed with no order as to costs."

After this the Respondents stopped Appearing in the matter and they were proceeded ex parte. Subsequently the Appellant lead the ex parte injunction, however the Hon'ble Single Judge after making reliance on the observation made by the Hon'ble Supreme Court of India and Hon'ble Division Bench, High Court of Delhi, was pleased to dismiss the Suit.

The Hon'ble Single Judge adopted the prima facie finding of the Hon'ble Supreme Court of India in favour of the Respondents , whereby the Respondents were given benifit of Section 35 of Trademarks Act 1999.

Section 35 of the Trademarks Act 1999 provides as under:

Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services."

From bare purusal of the afore mentioned Section, it is apparent that Section 35 of the Trademarks Act 1999 protects the use of bonafide use of name by a party. The Hon'ble High Court of Delhi, Single Judge based its reliance on the afore mentioned prima facie observation made in favour of the Respondents.

Now question was this, whether this order was rightly passed? Whether the Hon'ble Single Judge was right in dismissing the Suit of the Appellant only on the prima facie finding at the Interlocutory stage?

The Hon'ble Division while answering this question observed that It is settled that the findings given by the courts while deciding application under Order XXXIX Rule 1 & 2 are preliminary in nature and do not have any bearing on the final lis which is to be decided on the basis of evidence led by the parties as held in Colgate Palmolive v. Anchor Health: 2004 SCC ONLine Bom 909.

In the subject matter dispute , the Respondents were given benefit of Section 35 of Trademark Act 1999 after prima facie holding them to be bonafide user of the name. However at the final stage , the Respondents were supposed to lead the evidence to establish themselves to be bonafide use of name RAKYAN.

At the evidence stage, onus lies on the Respondents to prove that the same were the bonafide user of name RAKYAN. As the Respondents were proceeded ex parte , all the evidence lead by the Appellant remain unrebutted.

Hence the Hon'ble Division Bench observed that in the facts of the case, the Respondents were unable to discharge the onus of proving the same to be bonafide user of the subject matter Trademark RAKYAN.

After making the afore mentioned observation , the Hon'ble Division Bench of High Court of Delhi was pleased to set aside the order assailed, and was pleased to decree the Suit in favour of the Appellant and against the Respondents.

The afore mentioned Judgement clearly laid down that the observation made by a Court at the Interlocutory stage or observation made while adjudicating Interlocutory applications are merely prima facie nature and that the same has not binding effect in the said suit proceeding at the subsequent stage.

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

Vinita Gupta Vs Amit Arora

Judgement date:28.09.2022

Appeal No.(CS)(COMM) 395 of 2022

Name of Court: Delhi High Court

Name of Hon'ble Justice: Jyoti Singh, H.J.

Vinita Gupta Vs Amit Arora

Its is well known fact that right in a Trademark can be acquired either by way of registration or by way of user. For obtaining Trademark registration, detail procedure has been prescribed in Trademark Act 1999.

Apart from statutory rights , Trademarks Act 1999 also recognizes common law right in a Trademark. In fact common law rights prevails upon the rights granted by the Trademark Registration. However common law remedy is rather inconvenient remedy and for proving common law right, right holder has to establish prior and continuous user of a Trademark.

Now this question becomes crucial as to how a party can prove prior user of a Trademark? This off course can be proved wither by invoices, advertisement material etc. Thus it is clear that invoices play an important role in establishing prior adoption and continuous user of Trademark.

What could be relevance of those invoices in proving the user of a trademark , wherein Trademark is not mentioned? Or put in a different way, can a party claim prior user on the basis of such invoices where Trademarks are not appearing?

This issue cropped up in a Commercial Suit bearing (CS)(COMM) 395 of 2022 titled as Vinita Gupta Vs Amit Arora before the Hon'ble High Court of Delhi where in vide Judgement dated 28.09.2022 passed therein , some light was put on this aspect.

The Plaintiff filed the subject matter Suit for infringement of Copyright and Passing off on the basis of proprietary rights in the Trademark, packaging, get-up and trade dress APPLES TREE in relation to manufacturing and marketing of Abrasive Strips, Abrasive Rolls, Abrasive Paste etc. as well as Silicon Carbide Waterproof Abrasive Paper, Velcro Disc, Sandpaper and other allied and cognate goods.

Suit was filed against use of similar Trademark Trademark, packaging, get-up and trade dress against use of trademark APPLEPLANT and NUAPPLEPLANT by the Defendant in relation to manufacturing and marketing of Abrasive Papers etc. The relief of Infringement of Trademark was not sought for as the Defendant was also the registered Proprietor.

In view of law laid down by the Hon'ble Supreme Court of India in Judgement reported as S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 and of the Hon'ble Court of Delhi in Rana Steels Vs Ran India Steels Pvt. Ltd., 2008 SCC OnLine Del 399, the remedy of infringement of Trademark is not maintainable against the Defendant in case the Defendant is also registered Proprietor of Trademark. 

Now whole question revolved around this factum as to whos is the prior user of Trademark, Label or Trade Dress as the Hon'ble Court reached the conclusion that competing Trademark, packaging, get-up and trade dress of the parties namely APPLES TREE of the Plaintiff and Trademark, packaging, get-up and trade dress of the parties namely APPLEPLANT and NUAPPLEPLANT were deceptively similar.

In the subject matter Suit , the Plaintiff claimed prior user of the subject matter Trademark since the year 2008 , though this claim was disputed by the Defendant on the ground that Plaintiff has claimed contradictory user in its different Trademark applications , i.e. since 2017. While was claiming user since 2019.

As the Plaintiff claimed different user , i.e. since the year 2017 in its various Trademark applications, the issue was to be adjudication as to since when the Plaintiff actually used the Trademark APPLES TREE since the year 2008 as the same has claimed in the subject matter Suit.

The court observed that though the Plaintiff produced on record various invoices since 2008 , however in all of those invoices only product detail namely Palm Tree was mentioned and not the trademark. These were the invoices since the year 2018 onwards where the Trademark were mentioned.

Hence in spite of Plaintiff putting on record various invoices since the year 2008, the court considered only those invoices from since 2018, wherein the Trademark was mentioned in the invoices. However still the Plaintiff was able to establish establish prior user as Defendant's claimed user was since 2019.

Thus the Hon'ble High Court of Delhi was pleased to grant injunction against the Defendants from selling, offering for sale any goods, advertising or promoting any product under the trademark APPLEPLANT or any trademark deceptively similar or identical to Plaintiff’s trademark APPLES TREE.

We have seen that no trademark significance can be attached to those invoices where only description of products are mentioned in the Invoice and not the Trade Mark. It is advisable for a Tradesman to always mention Trademark in all of its invoices if he is desirous of protecting its Intellectual Property Rights. 

From bare perusal of present Judgement of Hon'ble High Court of Delhi, it is clear that invoices containing only the description of goods only , without not mentioning the Trademark , are irrelevant for the purpose of proving the Trademark user. In fact unbranded invoices has got no trademark significance.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

Allied Blenders Vs Rajasthan Liquors Limited

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CASE LAW DISCUSSED:
Judgement date:07.10.2022
Shit No. CS Comm 689 of 2022
Name of Court: Delhi High Court
Name of Hon'ble Justice: Jyoti Singh, H.J.
Allied Blenders  Vs Rajasthan Liquors Limited

Plaintiff's Trademark:CHOICE” “OFFICER”, “OFFICER’S SPECIAL”, “OFFICER’S NO. 1”, “OFFICER’S & GENTLEMAN”, “CLUB CLASS” and “OFFICER'S CLUB.

Plaintiff's Product:alcoholic beverages, including Indian Made Foreign Liquor (‘IMFL’),

Defendant's Trademark: OFFICE CHOICE

Defendant's Product:alcoholic beverages, especially Country Spirits and IMFL.

Ex Parte Injunction Granted

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

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Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

Judgement date:06.10.2022
Suit No.CS(COMM) 308 of 2021
Name of Court: Delhi High Court
Name of Hon'ble Justice: Sanjeev Narula, H.J.
Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

In a case for infringement of registered Trademark, the Trademark registration is prima facie evidence of validity. It has also been laid down by various courts that in a case for infringement of Trademark, mere production of Trademark Registration Certificate is sufficient.

If Plaintiff is able to show that the trademark of the Defendant is similar to registered Trademark of the Plaintiff , then Plaintiff is not required to show any thing more. Thus in a Suit for infringement, mere production of Trademark registration is sufficient and Plaintiff is not required to show any other evidence.

Section 31 of Trademarks Act 1999 also stipulates so. It creates prima facie presumption in favour of validity of a Registered Trademark. Section 31 of Trademarks Act 1999 is reproduced as under:

31. Registration to be prima facie evidence of validity:

(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registerable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

From bare perusal of Section 31 of Trademarks Act 1999 , it is apparent that in a Suit for infringement of Registered Trademark, the Court will always presume the Registered Trademark of Plaintiff to be invalid.

But what will happen if the registration of the Plaintiff prima facie appear to have been obtained by fraud. In case the dishonesty on the Part of the Plaintiff is apparent in obtaining the registration, can a defendant be estopped from challenging the validity of registered Trademark?

Filing of cancellation Petition against the registered Trademark may be another remedy available to the Defendant. But what if cancellation petition is pending for long time. Is defendant not entitled to request the Hon'ble Court to look into the validity of a fraudulent registration obtained by the Plaintiff.

This issue has been dealt with by the Hon'ble Division Bench, High Court of Delhi, while passing the Judgement dated 06.10.2022 passed in Suit bearing No. CS(COMM) 308 of 2021 titled as Shamrock Geoscience Ltd & Anr. Vs Kaba Infratech Private Limited and another.

Fact of the case was that the Plaintiff filed Suit for infringement against the infringement of registered trade mark SHAMROCK. On the other hand, the Defendant was alleging prior use of Trademark SHAMROCK in India.

Two Suits were pending before the Hon'ble High Court of Delhi. The Hon'ble High Court Delhi was dealing with Suit for infringement as well as counter suit for passing off. The Plaintiff was heavily relying upon the Trademark Registration. While the Defendant was asserting right by virtue of passing off.

The Defendant also assailed Trademark registration of the Plaintiff being dishonest registration. The Hon'ble High Court of Delhi observed that in a suit for infringement of Registered Trademark, the court can look into validity of a registered trademark, if the registration prima facie appears to be fraudulent or dishonest.

In the facts of the case, while dealing and assessing the rights and contention of parties, the Hon'ble High Court of Delhi reached the conclusion that plaintiff has filed the subject matter Trademark registration as proposed to used and actually have not put on record any document showing user of the subject matter registered Trademark.

This was the reason why the Hon'ble High Court refused to grant injunction in favour of the Plaintiff as , according to the Hon'ble Court, the subject matter Trademark registration of the Plaintiff was pima facie suspect.

After discussing the provisions of Section 27, 28 and Section 34 of the Trademarks Act 1999, the court observed that that rights of a registered proprietor are not absolute or indefeasible. Registration under the Act only gives a presumption as to the validity of a mark, which may be rebutted by claims of prior use.

On the contrary, the Defendant put on record various documents showing user of subject matter registered Trademark SHAMROCK. It is well settled proposition of law that registration of trademark does not have any effect on the prior user. Having observed so, the Hon'ble High Court of Delhi was pleased to grant injunction in favour of the Defendant in the counter suit of passing off action.

Thus it is apparent that the Hon'ble High Court of Delhi , while dealing with the Suit for infringement of Trademark, has not only looked into validity of Plaintiff's registered Trademark, but was also pleased to return the finding that the subject matter Trademark registration to be dishonest registration.

The outcome of this Judgement is that though in a suit for infringement of Trademark , the Trademark registration is prima facie evidence of validity, however in case of fraudulent or dishonest registration, the Hon'ble Court may always look into validity of registered Trademark.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539
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Reliance Entertainment Studios Vs Bharat Sanchar Nigam Ltd.

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Judgement/Order Date:23.09.2022
CNR No.HCMA01-155519-2022
Registration Date: 28-09-2022
Case No. O.A. No.640 of 2022 in C.S.(Comm.Div) No.210 of 2022
Name of the Court: Madras High Court
Name of Hon'ble Judge: M.Sundar, H.J.
Cause Title of Case: Reliance Entertainment Studios Vs Bharat Sanchar Nigam Ltd.

This matter Pertains to infringing activities done through more than 1300 rogue websites pertaining to movie VIKRAM VEDHA.

The Plaintiff roped in 40 internet service provider as Defendants in this matters. The details of the same are as hereunder:

1) BHARAT SANCHAR NIGAM LIMITED,
2) MAHANAGAR TELEPHONE NIGAM LTD.,
3) BHARTI AIRTEL LIMITED,
4) AIRCEL CELLULAR LIMITED,
5) HATHWAY CABLE AND DATACOM LIMITED,
6) TATA COMMUNICATION LIMITED,
7) VODAFONE INDIA LIMITED,
8) IDEA CELLULAR LIMITED,
9) RELIANCE COMMUNICATIONS INFRASTRUCTURE LIMITED,
10) TATA TELESERVICES LTD,
11) GTPL HATHWAY LTD,
12) TIKONA DIGITAL NETWORKS PRIVATE LIMITED,
13) BG BROADBAND INDIA PRIVATE LIMITED,
14) SIFY TECHNOLOGIES LIMITED,
15) SITI BROADBAND SERVICES PVT.LTD.,
16) YOU BROADBANK AND CABLE INDIA LTD.,
17) ASIANET SATELLITE COMMUNICATIONS,
18) DATA INFOSYS LIMITED,
19) READYLINK INTERNET SERVICES LIMITED,
20) OPTO NETWORK PRIVATE LIMITED,
21) NETTLINX LIMITED,
22) CITY ONLINE SERVICES LIMITED,
23) PIONEER eLABS LIMITED,
24) AT AND T GLOBAL NETWORK SERVICE INDIA PVT.LTD.,
25) NEXTGEN COMMUNICATIONS LIMITED,
26) SOUTHERN ONLINE BIO TECHNOLOGIES LIMITED,
27) MYNET SERVICES INDIA PRIVATE LIMITED,
28) RELIANCE JIO INFOCOMM LTD.,
29) LIMRASERONET BROADBAND SERVICES PRIVATE LIMITED,
30) RS BROADBANK SERVICE INDIA PRIVATE LIMITED,
31) SPECTRA ISP NETWORKS PVT.LTD.,
32) PULSE TELESYSTEMS PRIVATE LIMITED,
33) ESSEISHYAM COMMUNICATIONS LTD.,
34) FIVE NETWORK SOLUTION (I) LTD.,
35) ATRIA CONVERGENCE TECHNOLOGIES LIMITED,
36) ACTION LANE,
37) JAK COMMUNICATIONS PVT LTD.,
38) C32 CABLE NET PVT.LTD.,
39) THAMIZHAGA CABLE TV COMMUNICATION PVT LTD.,
40) THIRU NEGAR SATELLITE VISION PVT LTD.,

This is the case, where Hon'ble High Court of Madras was pleased pass injunction order against more than 1300 web sites which were indulged in illegally displaying the movie namely VIKRAM VEDHA, Starring Hritik Roshan and Saif Ali Khan.

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