The Use of Family of Trademark does not amount to be use of Registered House Mark.

What could be effect of in case a party is not using the registered trade mark and instead of this the same has been using family of trademarks with suffix or prefixes?

Let us first of all under stand , what is family of Trademark? A family of trademarks refers to a group of trademarks that have a similar or related Trademark , having common element that identifies and distinguishes a particular company, brand, or product from others in the market. The family may include multiple variations or styles of the same logo or name registered as separate marks. These trademarks are registered to protect the brand identity, create brand recognition and awareness, and prevent confusion among consumers.

In these family of Trademark, the essential common element is referred to as House Mark. Like in the present case CONTIN was referred to as the House Mark.

The Present Case involves CONTIN family of trademarks. Though Plaintiff was having registration for trademark CONTIN since the year 1989. However it was actually not used in relation to its pharmaceutical products. The Plaintiff was using various other family of trademark with other prefixes or suffixes. The question is this , whether use of family of trademarks can be held to be use of registered House Mark?

Plaintiff's Subject Matter Trademark: CONTIN family of Trademarks , especially FECONTIN-F

Plaintiff's Claimed User: March 1993

Plaintiff's Registered Trademark: CONTIN registered under No. 518594 in class 05 since 19.10.1989 while trademark FECONTIN-F: 518596 in class 05.

Defendant's Trademark: FEMICONTIN

Defendant's User: Between November 2005 till October 2007.

The Main Defense of Defendant in the Suit:

Delay/Latches/Acquiescence

The Defendant alleged that in spite being aware of Defendant in the year 1999, the Suit was filed after inordinate delay , only in the year 2004.

The another defenses were non use of registered House Trademark by the Plaintiff.

That the Plaintiff's Trademark was descriptive.

The Judgement:

The Plaintiff's Suit was dismissed on the ground of inter alia

The Reasons of the Hon'ble Court:

1.The Issue of delay and latches was decided in favour of the Plaintiff. Merely because the Plaintiff issued legal notice in the year 1999 and then Suit was filed in the year 2004, this does not mean the Suit of Plaintiff can be be dismissed on the ground of Delay.

2. Though the Defendant pleased user for a limited period, however no document has been placed on record by the Defendant showing user of impugned Trademark between 1999 to 2005.

3.In view of above, the Suit was held not liable to be dismissed on the ground of delay.

4.Though the Plaintiff has claimed proprietary right in the family of Trademark CONTIN, however it has been admitted by the Plaintiff during the cross examination that the same has not used it for its pharmaceutical product.

5.User of similar Trademark by the Registered Proprietor can not be held to be use of that trademark within the meaning of Section 2 (2) (c) of the Trademarks Act 1999. Even though CONTIN may be used as a prefix or suffix in a family of marks by the plaintiff, the same would not amount to use of the registered mark.

6.During the cross examination, the Plaintiff admitted FE-CONTIN to be descriptive. FE‟ relates to iron, which is an ingredient of the plaintiff's product, while CONTIN is being used in relation to the products with Continuous Drug Delivery system, that is where the drug will have a continuous effect in the body for a longer duration.

7.The Court observed that while evaluating the deceptive similarity, the descriptive parts have to be given less weightage.

8.In view of afore mentioned observation, the Hon'ble High Court of Delhi has held the trademark FE-CONTIN to be descriptive to the product as the Plaintiff itself has admitted that "FECONTIN-F is an iron supplement and is used by female patients normally during pregnancy".

9.The Hon'ble Court also observed that Plaintiff's Trademark FECONTIN and Defendant's Trademark FEMICONTIN not to be deceptively similar.

10. The Plaintiff also did not lead any evidence to the effect that there has been any confusion on account of user of Defendant.

11.In view of afore mentioned observation, the subject matter Suit was dismissed.

The outcome of the afore mentioned case law is that the effect of not using the registered HOUSE trademark and instead using a family of trademarks with suffixes or prefixes does not amount to be user of that registered House Trademark. In order to reap the benefit of its registered House Mark, the Plaintiff can not rely upon use of other family of trademark.

Non use of registered House Mark could result in the loss of the exclusive right to use the original trademark, as it may be deemed abandoned due to lack of use. Hence companies are encouraged to use their registered trademark consistently and prominently to maintain its distinctiveness and prevent dilution.

The Case Law Discussed:
Judgment date: 23.03.2023
Case No: CS Comm 353 of 2018
Neutral Citation No. 2023/DHC/2049
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Navin Chawla
Case Title: Modi Mundi Pharma Pvt. Ltd. Vs Preet International Private Limited

DISCLAIMER:

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

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

Patanjali Ayurveda Limited Vs Yog Guru Ayurveda

Amendment of Plaint seeking addition, deletion, and correction in the description of the trademarks

The subject matter Suit:
The Plaintiff filed the subject matter Suit seeking the relief of inter alia  infringement of their registered trademarks, passing off in which ex parte injunction was initially granted.

The Subject matter Application:
The Plaintiff filed application under Order 6 Rule 17 CPC seeking amendment of the Plaint , seeking addition, deletion, and correction in the description of the trademarks.

Facts leading to filing of the subject matter Application under Order 6 Rule 17 CPC:
Few of the Defendants sought vacation of the injunction order on the grounds of misdescription of the Trademarks in the Plaint. According to the Defendants , as plaintiff did not present the true facts before the Court, ex parte injunction ought to have been vacated.

As Plaintiff noticed the afore mentioned descrepancies in the Plaint, the same has filed the subject matter Application under Order 6 Rule 17 CPC.

The Subject Matter Order:
The Hon'ble Single Judge, High Court of Delhi was pleased to allow the Application of the Plaintiff under Order 6 Rule 17 CPC.

The Relevant facts leading to grant of the amendments:

1. The Plaintiff sought the amendment of Plaint by amending the Plaintiff's Trade Mark as PATANJALI ALOE VERA JUICE instead of ALOE VERA JUICE as originally mentioned in the Plaint.

2.The same was held to be clerical mistake as  Plaintiff has already filed registration Certificate pertaining to Registered Trade Mark PATANJALI ALOE VERA JUICE.

3.The Court has already passed injunction order restraining the Defendants from using the Trademark PATANJALI ALOE VERA JUICE.

4.Other amendments were sought to be incorporated in view of report of Local Commissioner.

5.The amendments sought do not in way amount to be withdrawal of admission. It is submitted that In the Plaint , the Trade mark was mentioned as ALOE VERA JUICE. However the same was not the same as mentioned in the registration certificate filed along with the Plaint.

6. The amendments were merely explanatory in nature and in any way do not alter the nature of Suit. It is submitted that the Plaihtitf by way to amendment sought to amend the description of said trade mark as PATANJALI ALOE VERA JUICE. It could not have been construed as admission as supporting documents have already been filed. In fact the same was merely explanatory in nature.

7.The proposed amendments were merely procedural in nature. The nature of amendment sought , did not alter the scope of the relief sought in the Plaint.

8.The Court allowed the amendment as the same was not prejudicial to the Defendants. The Court , while allowing the subject matter Application, also observed that while entertaining the amendment application, liberal approach is required to be taken.

Case Law Discussed:
Judgment date: 02.03.2023
Case No: CS Comm 314 of 2020
Neutral Citation No. NA
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Sanjeev Narula, H.J.
Case Title: Patanjali Ayurveda Limited Vs Yog Guru Ayurveda

DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

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

#IP_Adjutor #Trademark #Copyright #Design #Patent #IPR #Intellectualpropertyright #Ipupdate #Ipnews 

Biomoneta Research Pvt. Ltd. Vs Controller General of Patents and Design and another

Judgment date: 13.03.2023
Case No: C.A.(COMM.IPD-PAT) 297/2022
Neutral Citation No. 2023/DHC/001816
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Prathiba M Singh, H.J.
Case Title: Biomoneta Research Pvt. Ltd. Vs Controller General of Patents and Design and another

The Subject Matter Patent of the Appellant:

Air Decontamination Assembly’ bearing Application No. 201741016833, dated 12th May, 2017

The Subject Matter impugned Order:

The Ld. Controller of Patent , vide impugned Order dated 09.02.2021, was pleased to refuse afore mentioned Patent Application of the Appellant.

The Reason for Refusal of the Patent Application was based on prior arts D1, D2 and D3.

The Prior Arts:

D-1: US20120000782A1– dated 5th January 2012: relates to a reactor, which consists of a uniform di-electrical field.

D-2:US20130071298A1 dated 21st March 2013.The document discloses that similar apparatus, for removing microbes and viruses suspended in a space, exist in the prior art.

D-3:US20100282083A1 dated 2nd January, 2008:It discloses air cleaning devices for removal of organic pathogens.

The Order of Hon'ble Single Judge:

The Order of Controller was set aside and Patent was granted.

The Reasons for the Grant.

1. In order to evaluate the Inventive Step, following exercise is required to be taken:

To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications;

Step No.5 To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hind side approach.”

2.There can be no doubt that some of the features in D1, D2 and D3 are present in the subject invention.

3.However, the subject invention is not a mere addition to a well-known combination.

4. It has some new features and is an improvement in the method which has brought in greater efficiency.

5.When a claim consists of a ‘combination of features’, it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that ‘therefore’ the whole subject-matter claimed is obvious, the interactions of the individual features must produce a synergistic effect.

6. If there is a synergistic combination or a working interrelation which produces a new and improved result, the subject matter is patentable.

7.When a set of old results are combined in a new and profitable manner, a patent can be granted.

8.the subject invention addresses various disadvantages in the prior art such as frequent changing of filters, high power consumption, easier utility owing to the size of the device, lesser maintenance costs, more effectiveness for decontamination.

DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

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

Descriptive Trademark , not entitled for protection A Case Study

Descriptive and Generic Trademark are considered to be poor Trademark. Though descriptive Trademark can be granted protection provided the party concern establishes the secondary significance. However generic Trademark can not be entitled to protection. Hence it is always advisable that a business man should avoid using those trade marks which are descriptive and generic in nature. Here are few case study where Descriptive and Generic Trademark were declined the relief of injunction.

 i.1977 SCC OnLine Mad 72 : AIR 1978 Mad 336: Nestle's Products (India) Ltd. Vs P. Thankaraja and another. 

 Applicant’s Trademark applied for was INSTEA in relation to Tea. 

The Court observed that first impression of the word INSTEA was that the word had something to do with tea and had something to do with instant. 

The Court equated the word INSTEA in relation to Tea with telescoped expression like “artsilk” for artificial silk, “Comintern” for communist international. 

ii. 1942 (54) RPC 127 Coca Cola of Canada Limited Vs Pepsi Cola of Canada Ltd. 

Trademark PEPSI COLA of the Defendant was registered in CANADA since 1906. 

Expression COLA was name of beverage itself. 

More than 31 others Parties were having Trademarks registrations containing the word COLA as suffix. 

iii. 1996 RPC 281 British Sugar PLC Vs James Robertsons & Sons Limited. 

Trademark of Plaintiff was SILVER SPOON TREAT. While Defendant was using the Trademark ROBERTSON’S TOFEE TREAT. 

Word Treat was written in very small font by the Defendant. 

iv. 2007 (35) PTC 697 (Bomb) Asian Paints Limited Vs Home Solutions 

Injunction was declined in Asian Paints Judgement on the ground that Trade mark HOME SOLUTIONS was descriptive and common to trade. 

v. 2010 (44) PTC 515 (Del) (DB) Rich Products Corporation & Anr Vs Indo-Nippon Foods Limited. 

The court held the Plaintiff’s Trade Mark WHIP TOPPING to be generic in relation to non dairy Topping. 

Trademark of the Plaintiff was RICH’S WHIP TOPPING while trademark of Defendant was BELLS WHIP TOPPING. 

Word BELLS was very prominently displayed on the Defendants packaging . 

The Plaintiff has failed to show any distinctiveness to the word WHIP TOPPING separately. 

vi. 2009 (39) PTC 627 (Del) Lowrenbrau AG and another Vs Jagpin Breweries Ltd. 

Plaintiff’s whole of the Trademark LOWENBRAU was disclaimed in registered Label in which device of Lion was also there. 

Plaintiff has not given Sales figure in India. 

Plaintiff’s Sales was intermittent and at miniscule label in India. 

Plaintiff and Defendant were both using the trademark LOWENBRAU for 100 years. 

The Defendant was protected being honest and concurrent user. 

vii. 2010 (MIPR) (3) 273: 2010 (44) PTC 381 (Del) Stokley Van Camp Inc. Vs Heinz India Pvt. Ltd. 

Plaintiff’s Trademark was REHYDRATE REPLENISH REFUEL in relation to ready to Drink. 

Defendant’s Trademark was REHYDRATES REPLENISHES RECHARGES. 

 Plaintiff asserted that the expression used by the Defendant to describe its product, is similar to Plaintiff’s expression. 

Defendant’s use of expression was held to be honest. 

viii. 2010 (44) PTC 736 (Del) (DB) Marico Limited Vs Agro Tech Foods Limited. 

Plaintiff’s Trademark was LOSORB in relation to Oil while Defendant’s Trademark was LOW ABSORB. 

Defendant were using expression LOW ABSORB TECHNOLOGY with their Trademark SUN DROP in much bigger font. 

Defendant was using the expression LOW ABOSRB as a part of Sentence as “WITH LOW ABSORB TECHNOLOGY”. 

Term LOW ABSORB TECHNOLOGY was defined under Rule 26A of the Prevention of Food Adulteration Rules 1955 . 

Plaintiff had filed a trade mark application bearing no. 1012561 dated 28.05.2001 for registration of its mark LOW ABSORB. 

ix. 2020(84) PTC 395 (Mad) (DB) ITC Limited Vs Nestle India Limited. 

Plaintiff’s Trade mark was SUNFEAST YIPPEE MAGIC MASALA. 

Defendant’s Trademark was MAGGI XTRA-DELICIOUS MAGICAL MASALA. Plaintiff’s Trade mark was not a registered Trademark. 

The Defendants have proved user by various third parties use of packaging containing the word MAGIC MASALA. 

The Court declined the injunction by observing that Plaintiff was using the term MAGIC MASALA only in order to indicate the kind of product. 

x. 2021 (86) PTC 437 (Del).Phone Pe Private Limited Vs. Ezy Services 

The Hon’ble Court held that the Plaintiff could not claim exclusivity on the word “PE” suffix as it was merely part of registered trade mark. 

Meaning of “PE” itself pay. 

Plaintiff and Defendant both were indulged in the activities of online payment. 

Disclaimer: This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein. 

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

Email: ajayamitabh7@gmail.com, Ph No: 9990389539

Confronting Photocopies of documents during cross examination

These questions often arises, whether during the course of cross examination, the witness can be confronted with the photocopies of the documents or not? What happens, in case the witness denies the same? What options may be available to such parties. Here are few case law study throwing some light on this aspect.

RVE Venkatachala Gounder Vs Arulmigu Viswesaraswami & VP Temple and Anr.

Civil Appeal No. 10585 of 1996

Date of decision- 08-10-2023

Hon'ble Supreme Court of India

(2003) 8 SCC 752

R.C.Lahoti and Ashok Bhashin, H.J.

The photocopies of the original documents, upon confrontation, were admitted as evidence Exts A-30, A-34 without any objection from the other side.

T  High Court reversed the judgment and decree of the courts below and held that no reliance could be placed on them. Documents being Photostat copies could not be admitted in evidence without producing the originals.

In the second appeal the Ld. counsel for the defendant, relying on judgment of Roman Catholic Mission Vs State of Madras submits that: 

The objection should be taken when the evidence is tendered and once the document has been admitted in evidence and marked as an exhibit, the objection that it should not have been admitted in evidence or that the mode adopted for proving the document is irregular cannot be allowed to be raised at any stage subsequent to the marking of the document as an exhibit. The latter proposition is a rule of fair play. 

Failure to raise prompt and timely objection amounts to waiver of the necessity for insisting on formal proof of a document, the document which is itself sought to be proved being admissible in evidence. Acquiescence would be no bar for raising the objection in a superior court. 

Judgment and decree of the High Court is set aside and that of the trial court as confirmed by the first appellate court is restored. 

Relevant Paras- 6, 7, 15, 20, 23, 24, 34.

Thus in this case the Hon’ble Supreme Court of India has endorsed the decision of Ld. Trial Court where by photocopies of the document was allowed to be exhibited.

Dhuwalia Plastics Vs H. Venkatesh

Civil Revision Petition/595/2022

Date: 26.10.2022

High Court of Telangana at Hyderbad

Sambasiva Rao Naidu, H.J. 

DW1 was confronted with the photocopy of a document without any signature or authentication. Marked document Ex. A20 (On the basis of RVE VenkatachalaGounder Vs ArulmiguViswesaraswami& VP Temple and Anr.)  

·    It was marked subject to objection, which can be decided at the time of filing disposal of the suit thereby no illegality being in marking the document.  

·  The court observed; The ld counsel for defendant has raised objection with regard to marking of the Ex. A20, as the objection with regard to mode of proof of Ex. A20, thereby, by following judgment of Gounder case and Bipin Shantilal Panchal, wherein under the Hon’ble Supreme Court has formulated whenever, objection with regard to mode of proof of document ‘other than stamp duty and registration is raised, the document ‘can’ be marked subject to objection, accordingly marked to subject to objection.  

·  The trial court can make a note of objection raised during the evidence taking stage regarding the admissibility of any material or item of oral evidence, and mark the objected document tentatively as an exhibit in the case subject to such objections to be decided at the last stage in the final judgment.  

·   Observations made by the Hon’ble Apex Court in Bipin Shantilal Panchal Vs Gujarat and Anr, trial court is directed to decide the objection about the admissibility of Ex. A20 while disposing the main suit. 

Relevant paras-  2, 5, 8 

The photocopy of the document was allowed to be exhibited, subject to be its admissibility to be decided at the final stage of the suit. 

Mr. Anil Madan Vs Mr. RK Madan &Ors

CS(OS)/1184/2005

Date:21.08.2009

Court: High Court of Delhi

Anil Kumar, H.J. 

·   Photocopy of an unattested affidavit dated 31^st March 2005 was exhibited asPW1/D III during cross examination of the plaintiff. 

The plaintiff was confronted by the defendant no.1 with documents including Exhibit PW1/D1. Exhibit PW1/D1 is the photocopy of the computation of the income of the accounting year ending on 31^st March 2003 and the balance sheet as on 31^st March 2003.  

·    Copy of the current account of M/S Satguru Enterprises exhibited as PW1/DW1 for the period from 1^st March 1997 to 31^st March 1998. 

Relevant paras- 16, 17, 21 

Thus in this case, the Hon’ble High Court of Delhi has even relied upon the photocopies of the documents which were also allowed to be exhibited during the course of cross examination. 

A Sreedharan Vs Dr.Bijoydas

RCR No. 232 of 2019

03.03.2021

Hon’ble High Court of Kerala at Ernakulam

 Online Ker 1091: 2021 AIR CC 1162

A. Hariprasad and Ziyad Rahman AA, JJ.

During cross-examination of PW1, he was confronted with the photocopy of the document based on which the relationship of the parties commenced. As PW1 admitted the execution, it was marked as Ext B1

According to respondents counsel, Ext B1 document, based on which the said arrangement had commenced is not a lease agreement but on the other hand it is a deed of license .

Relevant paras- 6 

Where a party admits the photocopy a documents, then it can off course be exhibited and relied upon as has been done in the present case. 

Telecommunications Consultants India Ltd and Anr Vs Anil Bhasin and Anr

CM(M)/1162/2021

15.12.2021

Hon’ble High Court of Delhi

Amit Bansal, H.J.

2021 SCC Online Del 5359

The witnesses of the petitioners were confronted with photocopies of the document upon which they did not comment anything as the counsel for the petitioners, subsequently, filed for summoning of documents from the respondent

The Commercial Court has rightly noted that the need to summon the aforesaid documents by way of an application arose because the witness of the petitioners took objection to the documents during evidence, as the copies produced by the respondent no. 1 during evidence were photocopies

Relevant paras- 8, 9, 11, 13 

In this case, as the witness refused to comment upon the photocopies of the documents , the Plaintiff filed the application for taking the same on record and this was rightly been allowed to be taken on record. 

From the afore mentioned case laws, following case laws emerges: 

i. The Photocopies of the documents can be confronted to a witness during the course of cross examination. 

ii. In case the photocopies are admitted then it can be exhibited. 

iii.In case of objection, it can be exhibited subject to objection. 

iv. However admissibility of such objected document has to be decided at the final stage of the suit. 

v.The Party would also been having an opportunity to file the afore mentioned documents as additional documents.

Disclaimer:

This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein. 

Written By: Ajay Amitabh Suman,

IPR Advocate, Hon'ble High Court of Delhi.

Email: ajayamitabh7@gmail.com, Ph No: 9990389539