Hem Corporation Pvt. Ltd. Vs ITC Limited.

Date of Judgement/Order:11.04.2012

Case No. Notice of Motion No. 3940 in Suit No.2808 of 2009

Neutral Citation: NA

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: S.J. Vazifdar, H.J.

Case Title: Hem Corporation Pvt. Ltd. Vs ITC Limited.

Intention to Use an Expression as a Descriptor is Immaterial if it Actually Results in Confusion

Introduction: 

In this legal article, we delve into a case where the plaintiff claimed to be the registered proprietor of the marks "MADHUR" and "MADHUR MADHUR GULAB" written in devanagari script. The subject matter of the suit was filed against the defendant's use of the trademark "MANGALDEEP MADHUR."

The defendant argued that they use the expression "MANGALDEEP MADHUR" not as a trademark but merely to describe their product and its characteristics. 

However, the court rejected this contention and restrained the defendant, emphasizing that even if the intention to use the mark as a trademark was absent, infringement could still occur if confusion resulted.

The Court's Decision:

The Court observed that the intention to use a mark as a trademark is not the sole determinant of infringement. Under section 29(1) and section (2)(zb)(ii) of the Trade Marks Act, a registered trademark is infringed if it is used in a manner likely to be taken as a trademark, regardless of the user's intent.

Trademark Infringement and Connection in the Course of Trade:

The court pointed out that the use of a registered trademark would constitute infringement if it indicates a connection in the course of trade between the person and their goods or services, irrespective of their intention. The crucial factor here is whether the use of the mark creates a likelihood of confusion among consumers, leading them to believe there is a connection between the defendant's goods and the registered proprietor's goods.

Descriptive Sub-Brands and Confusion:

The defendant argued that their products were sold under the umbrella brand "MANGALDEEP" and that the descriptors such as "MADHUR" and "MADHUR 100" were used to signify the quality and characteristics of the product. 

However, the court rejected this argument, stating that even if the defendant genuinely intended to use the mark only as a description of the product's aroma, it would not make any difference if the use of the mark was likely to be taken as a trademark.

The Concluding Note:

This case sets a precedent that the intention to use an expression as a descriptor is immaterial if it actually results in confusion among consumers, leading them to believe that the expression is being used as a trademark. 

It reinforces the need for businesses to exercise caution while using marks, especially when they are similar to registered trademarks, to avoid potential infringement claims. As the court highlighted, the use of a registered trademark would still be considered an infringement if it indicates a connection in the course of trade, irrespective of the user's intention. 

Disclaimer:

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

=====

V Guard Industries Ltd Vs Crompton Greaves Consumer Electricals Ltd

Date of Judgement/Order:12.05.2022

Case No. CS Comm 92 of 2022

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

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

Case Title: V Guard Industries Ltd Vs Crompton Greaves Consumer Electricals Ltd

Use of Housemark as Prefix and Trademark Infringement:

Introduction: 

This article discusses a legal case involving the use of a house mark as a prefix with another trademark and its potential implications for trademark infringement. 

The case revolves around a plaintiff who claimed ownership of the trademark "PEBBLE" and filed a suit against a defendant using the trademark "CROMPTON PEBBLE" for dry irons. 

The defendant argued that the use of the house mark "CROMPTON" distinguished its products from the plaintiff's, but the court rejected this defense and restrained the defendant from using the trademark "PEBBLE."

Background:

The plaintiff was the registered proprietor of the trademark "PEBBLE" under no. 2503134 in Class 11 for water heaters, electric water heaters, heating coils, electric water geysers, etc. The defendant was using the trademark "CROMPTON PEBBLE" in relation to dry irons, which the plaintiff alleged to infringe upon their registered trademark.

Defendant's Defense:

The defendant argued that there would be no confusion among the public since they were using "CROMPTON PEBBLE" and not "PEBBLE" for dry irons, which were not sold by the plaintiff.

 They contended that their products were known for their quality and were sold in the market with various product identification marks associated with the house mark "CROMPTON." 

The defendant further asserted that the plaintiff could not claim exclusive rights to the word "PEBBLE" and, therefore, could not allege infringement against "CROMPTON PEBBLE."

Court's Ruling:

The court rejected the defendant's contentions by observing that the Trade Marks Act does not recognize the concept of subbranding.

In cases of infringement involving label or word marks, the test for infringement is based on the prominent word of the mark. 

Therefore, adopting a prominent word from the plaintiff's label/device mark, as the defendant did with "PEBBLE," constitutes infringement. 

In this case, "PEBBLE" was an essential part of the plaintiff's registered trademark, and the defendant could not argue for exclusive use of the word based on registration.

Additionally, the court noted that the defendant had consistently used the mark "PEBBLE" with its house mark "CROMPTON" as a source identifier for its products.

The plaintiff had been using the registered mark/label with the dominant part being the word "PEBBLE" since 2013. 

The defendant's lack of a plausible explanation for adopting the word "PEBBLE" in conjunction with "CROMPTON" further strengthened the court's decision.

The Concluding Note:

In light of the court's observations, the defendant was restrained from using the trademark "PEBBLE." 

The case highlights the importance of not using prominent words from other trademarks as part of a new trademark, even if a house mark is used as a prefix. 

Disclaimer:

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

Dr. Reddys Laboratories limited Vs Controller of Patent and Others

Date of Judgement/Order:10.11.2022

Case No. C.O.(COMM.IPD-PAT) 3/2021

Neutral Citation: 2023:DHC:004746

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, HJ

Case Title: Dr. Reddys Laboratories limited Vs Controller of Patent and Others

The Static and Dynamic Effect of Patent and Territorial Jurisdiction of High Courts with Respect to Patent Appeal and Patent Revocation

Abstract:

This analytical legal article explores the territorial jurisdiction of High Courts concerning patent revocation and patent appeals after the abolition of the IPAB (Intellectual Property Appellate Board). It examines two scenarios involving different High Courts and patent applications filed in different locations. 

The article analyzes the concept of territorial jurisdiction under the 1970 Act, focusing on the static and dynamic effects of patent grants and their impact on commercial interests. The discussion revolves around the relevant considerations for determining the High Court's territorial jurisdiction in patent-related matters.

Introduction:

The territorial jurisdiction of High Courts plays a crucial role in patent revocation and appeal cases. This article delves into the complexities arising after the IPAB's abolition and how the jurisdiction is determined in two distinct scenarios: Patent Revocation and Patent Appeal.

Territorial Jurisdiction in Patent Revocation:

In cases of patent revocation, the High Court's territorial jurisdiction is determined based on both the static and dynamic effects of the patent grant. The High Court in the jurisdiction where the patent was granted would naturally be one of the fora with jurisdiction. However, considering the dynamic effect, the commercial interests of the petitioner, who may be affected in various jurisdictions, can influence other High Courts' jurisdiction. Such High Courts may entertain revocation petitions under section 64 of the Act. The cause of action consists of a series of events starting with the grant of the patent, and thus, the territorial jurisdiction for revocation petitions should be decided based on the impact on the applicant's commercial interests.

Territorial Jurisdiction in Patent Appeal:

In the case of patent appeals, the jurisdiction is determined by the High Court having territorial jurisdiction over the appropriate office from where the patent application originates and which is the situs of the said application. Appeals challenging the order or direction of the Patent Office under Section 117A of the 1970 Act lie before the High Court with territorial jurisdiction over the relevant patent office. The concept of cause of action cannot be pleaded to vest jurisdiction in other High Courts, i.e., other than the one where the appropriate office is located.

Concluding Note:

The determination of territorial jurisdiction of High Courts in patent revocation cases post abolition of the IPAB involves considering both the static and dynamic effects of the patent grant. While the High Court where the patent was granted holds primary jurisdiction, other High Courts may also have jurisdiction based on the petitioner's commercial interests and the impact of the patent in different locations. On the other hand, patent appeals are limited to the High Court within the territorial jurisdiction of the appropriate patent office. 

Disclaimer:

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

Eris Life Sciences Limited Vs Controller of Patent

Date of Judgement/Order:20.07.2023

Case No. C.O.(COMM.IPD-PAT) 3/2022

Neutral Citation: 2023:DHC:5201

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, HJ

Case Title: Eris Life Sciences Limited Vs Controller of Patent

Transfer of Patent Cancellation Petition by one High Court to another High Court

Abstract:

This article examines the issue of transferring patent cancellation petitions between different High Courts in India. It analyses a specific case where the respondent no.2 sought the transfer of revocation petitions from the High Court of Delhi to the High Court of Himachal Pradesh, in light of the Tribunal Reforms Act, 2021. The article also explores the powers of consolidation and transfer between High Courts and the limitations imposed by the relevant legal provisions.

Introduction:

The Patents Act, 1970 governs the law of patents in India, and it allows for the revocation of patents under Section 64. The Intellectual Property Appellate Board (IPAB) was responsible for hearing revocation petitions; however, with the enactment of the Tribunal Reforms Act, 2021, the IPAB was abolished, and revocation petitions are now to be filed exclusively before High Courts. This article delves into the jurisdictional aspect of transferring such revocation petitions between High Courts.

Background:

In the case under consideration, the respondent no.2, in response to the revocation petitions filed before the High Court of Delhi, sought the consolidation of these petitions with infringement suits pending before the High Court of Himachal Pradesh. The respondent argued that the grounds for revocation and the defenses raised in the infringement suits were similar, justifying the consolidation of the cases.

The Court's Observations:

The Court acknowledged the changes brought about by the Tribunal Reforms Act, 2021, requiring all revocation petitions under Section 64 of the Patents Act to be filed before High Courts. The court, however, declined the request for transfer, stating that powers of consolidation under Rule 26(3) could only be exercised by the Intellectual Property (IP) Division of the Delhi High Court for Delhi matters only. The power of consolidation does not extend beyond the territorial jurisdiction of the Delhi High Court.

Transfer between High Courts:

The Court emphasized that the transfer of proceedings between two separate High Courts is governed by Section 25 of the Code of Civil Procedure (CPC), and such powers can be exercised only by the Supreme Court of India. Section 25 CPC provides that the Supreme Court, if it deems fit, can transfer any suit, appeal, or other proceedings from one High Court to another.

Limitations on Inter-High Court Transfers:

While the Tribunal Reforms Act, 2021, mandated the filing of revocation petitions in High Courts, it did not expressly address the issue of transferring such petitions between High Courts. Consequently, the High Court of Delhi could not entertain the request to transfer the revocation petitions to the High Court of Himachal Pradesh, as this power is vested exclusively in the Supreme Court under Section 25 CPC.

The Concluding Note:

In light of the Tribunal Reforms Act, 2021, and the abolition of IPAB, all revocation petitions under Section 64 of the Patents Act are now to be filed before High Courts. However, the Act does not provide a mechanism for transferring such petitions between different High Courts. The power of transfer between High Courts lies solely with the Supreme Court under Section 25 CPC. Therefore, in the absence of a specific provision allowing for inter-High Court transfers, the request to transfer the revocation petitions from the High Court of Delhi to the High Court of Himachal Pradesh was rightfully dismissed.

Disclaimer:

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal