ITW GSE APS Vs Dabico Airport Solutions Pvt.Ltd.

The Role of Local Commissioners in Patent Infringement Cases Introduction: The role of Local Commissioners in legal proceedings has been a subject of debate and contention in various cases, and their scope and purpose have been closely examined. In the context of a suit for Patent Infringement, the question arises: can a local Commissioner be appointed at the instance of the Plaintiff to search the premises of the Defendant and inspect the Defendant's products for mapping against the claims of the Plaintiff's patent? This article delves into a case where the Hon'ble High Court of Delhi rejected such a prayer, emphasizing the primary function of Local Commissioners to assist the Court rather than the parties involved. The Case at Hand: In the case under consideration, the Plaintiff filed an application under Order 26 Rule 4, 9, and 10A seeking the appointment of a local Commissioner to visit the Defendant's premises and inspect their PCA units. The purpose was to prepare a technical report mapping the Plaintiff's patent claims with the features of the Defendant's products, thereby demonstrating infringement of the Plaintiff's patent (referred to as IN '145). The Plaintiff's application asserted that, through an analysis of the Defendant's product details, they had confirmed that their patent IN '145 was being infringed by the PCA units manufactured and sold by the Defendant. The applicant argued that an inspection by a local Commissioner would provide the best evidence of infringement to the Court. The Defendant countered this request, contending that the Plaintiff had already claimed to possess sufficient evidence to establish infringement and that the mapping had been done using documents and materials that were not denied by the Defendant. They argued that there was no justification for the Plaintiff's application. The Court's Decision: The Hon'ble High Court of Delhi, in its judgment, supported the Defendant's contention. It emphasized that Order XXVI Rule 10A should not be employed by a party who asserts that they possess ample evidence to support their case and only seeks to gather better evidence. The Court clarified that the provision is intended to assist the Court itself, not to assist any particular party. Analysis: The case discussed highlights an important principle in legal proceedings, particularly in matters of intellectual property and patent infringement. "It reinforces the notion that local Commissioners are primarily appointed to assist the Court in the pursuit of justice rather than to aid one party over the other." In patent infringement cases, where the key question often revolves around the similarity or disparity between the claims of the patent and the defendant's product, it is crucial to appreciate the Court's role in the appointment of local Commissioners.

The Court's function is to ensure that justice is served and that evidence is obtained in a fair and unbiased manner. If a party claims to have enough evidence to support their case, the Court may be hesitant to appoint a local Commissioner, as this could be seen as an attempt to supplement their case rather than to serve the Court's purpose. The Concluding Note: The case under discussion underscores the importance of understanding the fundamental purpose of local Commissioners in legal proceedings, particularly in patent infringement cases. The primary objective is to aid the Court in its quest for impartial justice. Parties must be diligent in their presentation of evidence and should not attempt to misuse the provision of local Commissioners for their own benefit.

The Case Law Discussed:

Date of Judgement/Order:31/10/2023

Case No.CS(COMM) 628/2023

Neutral Citation No: 2023:DHC:7900

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title: ITW GSE APS Vs Dabico Airport Solutions Pvt.Ltd.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Pernod Ricard India Private Limited Vs A B Sugars Limited

Trademark Infringement in Export from India

Introduction:

The case of ROYAL STAG with Device of Stag (hereafter referred to as "Plaintiff") Vs. INDIAN STAG with Device of Stag (hereafter referred to as "Defendant") is a significant legal battle that delves into the complexities of trademark infringement, export, and the use of trademarks in India. 

Both parties are involved in the alcoholic beverages industry, and the Plaintiff had been using its trademark since 1995, with the earliest trademark registration dating back to 1996. 

In contrast, the Defendant was exclusively selling its products for export purposes with bills produced since 2015. The Hon'ble High Court of Delhi granted an interim injunction in favor of the Plaintiff after thoroughly examining the Defendant's defenses.

Trademark Infringement:

The heart of this case lies in the trademark infringement issue. The court invoked Section 29(2)(b) of the Trade Marks Act to analyze the situation. According to this section, if the essential features of the Plaintiff's mark are replicated in the Defendant's mark, infringement is deemed to have occurred. 

In this case, all criteria set forth in the provision were met. The marks were similar, used for the same product, and consequently, there was a likelihood of confusion or association in the minds of consumers with average intelligence and imperfect recollection. Thus, the Defendant was found to have infringed the Plaintiff's mark.

Disclaimer on Trademark Registration:

The Defendant's defense based on the disclaimer attached to the word "ROYAL" was dismissed by the court. The Plaintiff emphasized that the "DEVICE OF STAG" was the essential feature, which had been copied by the Defendant. Consequently, the disclaimer concerning the "ROYAL" part of the Plaintiff's mark, which was granted during the registration of the "ROYAL STAG" mark, was considered irrelevant.

Section 17 of Trademark Act 1999 and Trademark Infringement:

Section 17 of the Trademark Act 1999 was also invoked by the Defendant, but the court found it not relevant to the case. The court concluded that the Plaintiff's "ROYAL STAG with Device of Stag" and the Defendant's "INDIAN STAG with Device of Stag" were similar as a whole, and there was a possibility of confusion. Therefore, Section 17 did not provide a valid defense.

Export from India as Use in India:

One of the critical aspects of this case is the Defendant's claim that their product was exclusively exported from India and that the "Device of Stag" was common to trade. The court, however, found in favor of the Plaintiff, stating that, within the meaning of Section 56 of the Trademarks Act 1999, export from India also constitutes use in India. This interpretation is significant because it reinforces the protection of trademarks even when products are primarily intended for export.

Publici Juris and Third Party Use:

The Defendants argued that the "ROYAL STAG" mark was not publici juris, and the publici juris character was attributed only to the "STAG" part of the Plaintiff's mark. However, the court ruled that this distinction became irrelevant as the Defendant's "INDIAN STAG" mark, as used for Indian Made Foreign Liquor (IMFL), was deceptively similar to the Plaintiff's "ROYAL STAG" mark.

Third Party use:

The Defendant also relied on third-party use as a defense. They claimed that the Plaintiff was aware of the use of the "SCOTTISH STAG" mark but remained silent. However, the court found this argument lacking evidential support, as mere coexistence of the "SCOTTISH STAG" and "ROYAL STAG" in the same outlets in Dubai did not constitute evidence of the Plaintiff's knowledge of the "SCOTTISH STAG" mark.

The Concluding Note:

The case of ROYAL STAG Vs. INDIAN STAG exemplifies the intricacies involved in trademark infringement cases, particularly when export from India is a significant element. 

The court's rulings on trademark similarity, the significance of disclaimers, and the interpretation of export as use in India underscore the importance of protecting intellectual property rights in a globalized world. 

Additionally, the court's dismissal of the publici juris and third-party use defenses highlights the need for substantial evidence in legal proceedings involving trademark disputes. This case sets a precedent for the safeguarding of trademarks in export-oriented industries in India and provides valuable insights into the nuanced world of intellectual property law. 

The Case Law Discussed:

Date of Judgement/Order:31/10/2023

Case No.CS(COMM) 371/2019 

Neutral Citation No: 2023:DHC:7842

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title:  Pernod Ricard India Private Limited Vs A B Sugars Limited

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Pankaj Rajiv Bhai Patel trading as Rakesh Pharmaceuticals Vs SSS Pharmachem Pvt. Ltd.

The Twin Requirement of Commercial Dispute

Introduction:

The Hon'ble Division Bench, High Court of Delhi recently grappled with an important issue related to the valuation and classification of commercial disputes. In the case of Vishal Pipes Limited Vs. Bhavya Pipe Industry, the Hon'ble Single Judge had the opportunity to review the directives issued by a Hon'ble Single Judge of the High Court in 2022 SCC OnLine Del 1730. This article examines the critical issues discussed in this judgment, focusing on the twin requirements of commercial disputes and specified value as laid down by the Commercial Court Act 2015 and the Court Fees and Suits Valuation Acts.

Background:

The Hon'ble Single Judge's directive in Vishal Pipes Limited Vs. Bhavya Pipe Industry emphasized that intellectual property rights (IPR) cases should typically be valued at Rs. 3 lakhs or more, with court fees paid accordingly. The directive further indicated that even if the commercial court were valued below Rs. 3 lakhs, it would be tried before Coomercial Court even if provision of Commercial Court Act 2015 would not apply. The Hon'ble Division Bench, however, did not concur with the directions contained in Paragraph 66 (iv) and (v) of the Vishal Pipes case.

The Twin Requirement: Commercial Dispute and Specified Value

"The Hon'ble Division Bench's decision in this matter underscores the importance of satisfying two essential conditions for a dispute to be tried by a commercial court: the presence of a commercial dispute and the specific valuation. It found that it would be erroneous to assume that all IPR-related cases would inherently warrant a valuation of Rs. 3 lakhs or more." This distinction is crucial in determining whether a case should be heard in a commercial court.

First, the requirement of a commercial dispute is paramount. A dispute qualifies as a commercial dispute when it involves matters that are inherently commercial in nature as defined in Commercial Court Act 2015. The Commercial Court Act 2015 was enacted to provide a specialized forum for the resolution of such disputes, promoting expeditious and efficient adjudication.

Second, the specified value is equally significant. The specified value refers to the monetary threshold above which a case falls under the jurisdiction of a commercial court. In the context of IPR cases, this valuation must not be presumed to be automatically above Rs. 3 lakhs. The valuation of Suit must be above 3 Lakhs in order to be tried by a Commercial Court.

Legal Framework:

The Commercial Court Act 2015 was enacted to streamline and expedite the adjudication of commercial disputes. Section 12 of the Act is particularly relevant in this context. It emphasizes the need to respect the principles enshrined in the Court Fees and Suits Valuation Acts. This provision ensures that the valuation of cases aligns with established legal norms, preventing the creation of commercial court jurisdiction contrary to the statutory criteria laid down by the Commercial Court Act 2015.

The Diversion of Matters: A Distorted Scenario

The Hon'ble Division Bench in its judgment contended that the directives formulated in Vishal Pipes and embodied in Paragraph 66 (iv) and (v) of the case have the potential to distort the distribution of cases between commercial and non-commercial courts. If these directions were upheld, they could lead to the conferment of jurisdiction on commercial courts contrary to the qualifying criteria mandated by the Commercial Court Act 2015.

The Concluding Note:

This Hon'ble Division Bench's judgment serves as a significant reminder of the importance of adhering to the twin requirements of commercial disputes and specified value for cases to be tried by commercial courts. It underscores the necessity of assessing each case individually, rather than imposing a uniform valuation threshold for IPR cases. Moreover, it reinforces the need to respect the legal framework provided by the Commercial Court Act 2015, preventing any distortion of jurisdictional boundaries between commercial and non-commercial courts.

The Case Law Discussed:

Date of Judgement/Order:02/11/2023

Case No.FAO (COMM) 98/2023

Neutral Citation No: 2023:DHC:7925-DB

Name of Hon'ble Court: Hon'ble High Court of Delhi

Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma

Case Title: Pankaj Rajiv Bhai Patel trading as Rakesh Pharmaceuticals Vs SSS Pharmachem Pvt. Ltd.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Sporta Technologies Pvt. Ltd. Vs John Doe

Service of Summons of Suits through Email and Mobile

Introduction:

The advent of the digital age has revolutionized various aspects of human life, including the way legal procedures are conducted. One such significant development is the service of summons through email and mobile numbers, as exemplified by the case of the Plaintiff seeking to enforce their rights in the mark 'DREAM 11.' In this analytical legal article, we delve into the intricacies of this case and discuss the legal implications of serving summons and notices through email and mobile numbers.

The 'DREAM 11' Case:

The Plaintiff in this case sought to protect their rights in the mark 'DREAM 11,' claiming that it was a well-known fantasy sports platform launched in 2012. To safeguard their rights, the Plaintiff approached the Hon'ble High Court of Delhi, which issued an ex-parte ad-interim injunction on 26th May 2023.

However, the Defendants in this case were operating in a clandestine manner, making it difficult to effect the service of summons. Traditional methods of serving summons, such as personal delivery or through postal services, were rendered ineffective due to the elusive nature of the Defendants' identities.

The Role of Email and Mobile Numbers:

In a remarkable development, the Hon'ble High Court of Delhi permitted the Plaintiff to serve the summons and notices on the email address and mobile number associated with the impugned domain names of the Defendants. This decision highlights the court's recognition of the need to adapt to the digital age and utilize modern communication channels for effective legal procedures.

The court's decision to allow service through email and mobile numbers is not only a pragmatic approach but also a step towards ensuring that justice is not hampered by technological challenges. This decision is of paramount importance, as it enables access to justice, especially in cases where Defendants choose to operate in anonymity, often exploiting the veils of domain names for infringing activities.

Legal Implications:

Accessibility and Convenience:

The court's decision recognizes the practicality of serving summons through email and mobile numbers. This approach facilitates access to justice for Plaintiffs and ensures that legal proceedings are not impeded by the evasive tactics of Defendants.

Technological Challenges:

While the use of email and mobile numbers for serving summons is progressive, it raises questions about technological accessibility and validity. Courts must ensure that the chosen means of communication are reliable, and they should provide clear guidelines on how to serve summons via these digital channels.

Privacy and Data Protection:

Serving summons through email and mobile numbers necessitates attention to privacy and data protection concerns. Courts must establish mechanisms to protect the personal information of both parties involved in the legal proceedings, ensuring that sensitive data is handled securely.

Evidentiary Considerations:

The admissibility of evidence related to service through email and mobile numbers may require legal scrutiny. The court should establish a framework to authenticate the delivery and receipt of summons and notices, ensuring that the process is transparent and verifiable.

Compliance with International Standards:

The use of email and mobile numbers for serving summons may involve cross-border implications, particularly when Defendants are located in different jurisdictions. Courts should consider international standards and agreements for service of legal documents to ensure that the procedure is legally sound.

The Concluding Note:

The 'DREAM 11' case and the Hon'ble High Court of Delhi's decision to permit the service of summons and notices through email and mobile numbers exemplify the legal system's ability to adapt to the challenges posed by the digital age. This decision highlights the importance of accessibility, practicality, and efficiency in legal proceedings while raising questions about technological challenges, privacy, and evidentiary considerations.

As the legal landscape continues to evolve in the digital era, courts and legal practitioners must establish clear guidelines and procedures for serving summons and notices through email and mobile numbers, ensuring that justice remains accessible and that due process is upheld. The 'DREAM 11' case serves as a compelling example of how the law can adapt to modern technological advancements, ultimately enhancing the administration of justice.

The Case Law Discussed:

Date of Judgement/Order:30/10/2023

Case No.CS(COMM) 351/2023

Neutral Citation No: N.A.

Name of Hon'ble Court: Hon'ble High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh

Case Title: Sporta Technologies Pvt. Ltd. Vs John Doe

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Assets Care Reconstruction Vs The State of Maharashtra

The Dichotomy of Alternate Remedies and Interim Relief in High Court Admissions

Introduction:

The interplay between the admission of a matter before a High Court and the subsequent grant or refusal of interim relief is a complex and often contentious issue in the legal world. In many cases, the High Court may admit a matter based on its perceived merit, only to subsequently deny interim relief on the grounds of the availability of an alternate remedy. This situation raises questions about the consistency and logic of such decisions. This article delves into the legal intricacies surrounding this dichotomy, examining the principles underlying the admission of a matter, the considerations for interim relief, and the implications of non-granting interim relief when alternate remedies exist.

Admission of a Matter and its Significance:

When a High Court admits a matter, it signifies that the court has found merit in the case and believes it warrants further consideration. The admission stage involves a preliminary examination of the facts and legal arguments presented, and the court's determination to admit the matter reflects its acknowledgment that the issues raised are substantial and deserve a full hearing. The admission of a matter, in essence, is a judicial recognition of the prima facie merit in the case.

Interim Relief and its Necessity:

Interim relief, in the form of injunctions, stay orders, or other remedies, plays a crucial role in ensuring that parties to a legal dispute are not unduly prejudiced while their matter is pending before the court. It is a discretionary power of the court, exercised with great care and caution, to prevent irreparable harm or injustice. The primary consideration for granting interim relief is whether the applicant has a strong prima facie case and whether the balance of convenience tilts in their favor. The court also takes into account the question of irreparable injury that the applicant might suffer if interim relief is not granted.

The Conundrum of Alternate Remedies:

One of the contentious issues arises when the High Court, having admitted a matter based on its perceived merit, subsequently denies interim relief on the grounds of the availability of an alternate remedy. The principle of alternate remedies implies that if there is an existing legal avenue through which the petitioner can obtain relief, the court may refrain from granting interim relief. This principle is rooted in the idea that the court should not unnecessarily interfere with established legal processes.

Inconsistency and Contradiction:

The crux of the issue lies in the apparent inconsistency between admitting a matter and then denying interim relief due to the existence of an alternate remedy. This contradiction raises several questions:

1. Merit-Based Admission:

"If the High Court admits a matter based on its merit, it implies that the court believes the petitioner has a strong case. In such cases, denying interim relief due to the existence of an alternate remedy appears to be at odds with the court's initial assessment of the case's strength."

2. The Purpose of Interim Relief:

The purpose of interim relief is to prevent irreparable harm and to maintain the status quo pending a final decision. Denying interim relief based on the availability of alternate remedies may defeat this purpose if the alternate remedy is not as effective or expeditious.

3. Dual Judicial Assessment:

The contradiction implies a dual assessment of the matter—one at the admission stage and another at the interim relief stage. This duplication of effort raises questions about the efficiency and consistency of the judicial process.

The Concluding Note:

The dichotomy between admitting a matter and subsequently denying interim relief due to the existence of alternate remedies presents a complex legal issue. It challenges the consistency and logic of the judicial process, as it may appear inconsistent to admit a matter on its merit but then deny interim relief. The principle of alternate remedies should be applied judiciously, taking into account the specific circumstances of each case.

The Case Law Discussed:

Date of Judgement/Order:16/10/2023

Case No.SLP(C) No.9913/2022

Neutral Citation No: N.A.

Name of Hon'ble Court: Hon'ble Supreme Court of India

Name of Hon'ble Judge: B.R.Gavai Vs Prashant Kumar Mishra

Case Title: Assets Care Reconstruction Vs The State of Maharashtra

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Chirec Public School vs Shri Shakti Schools Pvt. Ltd.

The Interplay Between Section 124 of the Trademarks Act 1999 and Stay of Suit Proceedings: 

Introduction:

The filing of a rectification petition before the Intellectual Property Appellate Board (IPAB) in response to a trademark infringement suit is not an uncommon occurrence in the realm of intellectual property disputes. The Trademarks Act 1999 of India provides a legal framework for such proceedings, including the provision of Section 124, which allows defendants to seek a stay of the suit proceedings pending the outcome of the rectification petition. However, the recent decision by the Hon'ble Division Bench of Telangana High Court, which rejected the defendant's request for a stay, has brought to light the complexities and nuances of this provision and its application.

Section 124 of the Trademarks Act 1999:

Section 124 of the Trademarks Act 1999 is a pivotal provision that grants the defendant the right to apply for a stay of the suit proceeding when a rectification petition is filed before the IPAB. This provision recognizes the potential for disputes over the validity of registered trademarks and seeks to strike a balance between the interests of the plaintiff and defendant. It allows the defendant to halt the Suiy proceedings temporarily, awaiting a decision by the IPAB on the rectification petition, which may question the validity of the plaintiff's registered trademark.

The Recent Challenge:

In this recent case under discussion, the defendant exercised their right under Section 124 to apply for a stay of the suit proceedings. However, their application was rejected, and the matter was brought before the Hon'ble Division Bench of Telangana High Court for review. The crux of the challenge lay in the Division Bench's analysis of whether the defendant had prima facie satisfied that the registered trademark of the plaintiff was invalid.

The Division Bench's Decision:

The Hon'ble Division Bench's decision was predicated on a meticulous examination of the contents of the defendant's written statement. Their primary conclusion was that the defendant had failed to prima facie establish that the plaintiff's registered trademark was invalid. This assessment was pivotal in their rejection of the stay application.

Analysis and Implications:

The decision of the Hon'ble Division Bench raises important questions and offers valuable insights into the interpretation and application of Section 124 of the Trademarks Act 1999. "Firstly, it underscores the significance of the defendant's burden of establishing a prima facie case for the invalidity of the plaintiff's trademark."

Moreover, the decision reaffirms the principle that a stay of suit proceedings is not to be granted automatically merely because a rectification petition has been filed. The courts are tasked with ensuring that the defendant's claim of trademark invalidity is credible and compelling enough to warrant a stay.

The Concluding Note:

The recent decision by the Hon'ble Division Bench of the Telangana High Court  provides a nuanced understanding of the interplay between Section 124 of the Trademarks Act 1999 and the stay of suit proceedings. It emphasizes the importance of a defendant's burden to establish a prima facie case for trademark invalidity and reinforces the principle that such stays are not to be granted as a matter of routine. 

The Case Law Discussed:

Date of Judgement/Order:30/10/2023

Case No.Civil Revision Petition

Neutral Citation No: N.A.

Name of Hon'ble Court: High Court of Telangana

Name of Hon'ble JudgeChief Justice Alok Aradhe and Shravan Kumar.

Case Title:  Chirec Public School vs Shri Shakti Schools Pvt. Ltd.

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539