Bolt Technology Vs Ujoy Technology-DB

Goodwill of a Trademark and the Principle of Territoriality

Introduction:

The recent decision by the Hon'ble Division Bench of the High Court of Delhi in a trademark dispute involving the mark "BOLT" underscores the significance of the principle of territoriality in establishing goodwill for trademarks in India. The case involved a multinational company's attempt to secure an interim injunction based on the alleged violation of its trademark in the Indian market.

Factual Background:

The Plaintiff, a multinational company, claimed to have used the trademark "BOLT" in connection with taxi aggregation services in Tallinn, Estonia, and Riga, Latvia since 2013. Over time, the services expanded to 45 countries, including India. In 2018, the Plaintiff adopted the "BOLT" brand for a wide range of services, including ride-hailing, food and grocery delivery, rental of cars, e-bikes, and scooters, as well as electric vehicles.

The Plaintiff relied on advertising campaigns launched in February 2020, reaching several Indian cities, including Ahmedabad, Pune, Surat, Chennai, and Kolkata. The campaigns were conducted through the Plaintiff's mobile app and purportedly reached over 30 lakh customers in India.

Legal Proceedings:

The trademark dispute arose when the Defendant announced the impending launch of its electric vehicle charging network under the brand "REVOS Bolt" through public posts on social media platforms in October 2020. The Plaintiff sought an interim injunction, which was initially denied by the Ld. Single Judge on the grounds of the Plaintiff's failure to establish goodwill in India.

The Plaintiff appealed this decision, leading to the recent decision by the Hon'ble Division Bench.

Analysis of the High Court's Decision:

The Hon'ble Division Bench upheld the decision of the Single Judge, emphasizing the principle of territoriality in determining goodwill for trademarks. The Court observed that the Plaintiff's singular advertising campaign in five cities within India was insufficient to establish substantial goodwill or reputation across the entire nation.

The court noted that the geographical expanse of India requires a more extensive and impactful presence to claim cross-border reputation. It held that the transnational reputation of a trademark must be substantiated with adequate evidence of substantial goodwill or reputation specifically within the Indian market.

Implications:

This decision reinforces the importance of establishing territorial goodwill for trademarks in India. Mere transnational reputation, without a concrete demonstration of substantial goodwill within the Indian market, is unlikely to succeed in trademark disputes. Multinational companies operating in India must strategically develop and present evidence of widespread and impactful use of their trademarks to successfully claim protection under the principle of territoriality.

The Concluding Note:

The recent decision by the High Court of Delhi reaffirms the principle that establishing goodwill for trademarks in India requires more than just transnational reputation. It serves as a reminder to litigants and trademark owners that a robust and territoriality specific case must be presented to secure protection against potential trademark violation in the Indian market.

The Case Law Discussed:

Date of Judgement/Order:30/11/2023

Case No. FAO(OS) (COMM) 45/2023

Neutral Citation No:2023:DHC:8509-DB

Name of Hon'ble Court: Delhi High Court

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

Case Title: Bolt Technology Vs Ujoy Technology

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Aditya Borkar Vs Sachin Ganesh

Maintainability of Infringement Suit Based on Trademark Application

Introduction:

The issue of the maintainability of an infringement suit based solely on the filing of a trademark application by the defendant is a nuanced legal question. This article delves into the matter, drawing insights from a case before the Bombay High Court involving the trademark 'BOROPLAST.'

Facts of the Case:

The plaintiff, having used the trademark 'BOROPLAST' since 2000 in various categories, filed a suit against the defendant upon discovering the latter's trademark application for 'BOROPLAST.' Notably, the defendant had not yet introduced any vendible articles into the market under this mark.

Legal Basis for the Suit:

The crux of the plaintiff's argument rested on the maintainability of an infringement suit when a defendant has merely applied for trademark registration, without any tangible products in the market. Citing the precedent of Analco (India) Pvt Ltd vs Navodya Exim Pvt Ltd, the plaintiff contended that such a suit is indeed maintainable.

Precedent and Legal Position:

The mentioned case, decided on January 23, 2014, established a precedent supporting the plaintiff's claim. The court in Analco held that the filing of a trademark application itself could be sufficient grounds for maintaining an infringement suit. This decision reflects a broad interpretation of trademark rights, extending protection even before the actual use of the mark in commerce.

Court's Observations and Decision:

In the BOROPLAST case, the Bombay High Court granted an ex parte injunction in favor of the plaintiff. The court found that the defendant had blatantly imitated the 'BOROPLAST' trademark by applying for an identical mark, thereby infringing on the plaintiff's registered trademark. This decision underscores the court's willingness to afford protection based on the mere filing of a trademark application.

The concluding Note:

The maintainability of an infringement suit based on a defendant's trademark application, even in the absence of actual market presence, is a legal terrain where precedent plays a pivotal role. The BOROPLAST case, aligning with Analco, highlights a proactiveness by the judiciary in safeguarding trademark rights. This legal stance serves to deter potential infringers and underscores the importance of early intervention to protect intellectual property.

The Case Law Discussed:

Date of Judgement/Order:28/11/2023

Case No. COM IPR SUIT (L) NO.31504 OF 2023

Neutral Citation No:2023:Mad:5222

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: R.I.Chagla, HJ

Case Title: Aditya Borkar Vs Sachin Ganesh

Disclaimer:

Ideas, thoughts, views, informations, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Kuraray Co Limited Vs Assistant Controller of Patent

The Interplay Between Priority Dates and Publication Dates in Patent Law

Abstract:

This article delves into the intricate relationship between priority dates and publication dates in patent law, drawing insights from a notable case before the Hon'ble High Court of Madras concerning the Patent Application "FILM FOR PLANT CULTIVATION." The case, involving the rejection of Patent Application No.2394/CHENP/2013, explores the pivotal question of whether a cited prior art, D2, with a publication date subsequent to the claimed priority date, should be considered as prior art.

Introduction:

The determination of the validity and novelty of a patent application is significantly influenced by the interplay between its priority date and the publication dates of relevant prior art. This dynamic was brought to the forefront in the case under consideration, where the Appellant's patent application faced rejection based on the cited prior art D2.

Background:

The Appellant filed Patent Application No.2394/CHENP/2013, derived from PCT Application No.PCT/JP2011/070596, titled "FILM FOR PLANT CULTIVATION." The controller of patents issued an order on 30.12.2019 rejecting the application, prompting the Appellant to challenge this decision before the Hon'ble High Court of Madras.

Priority Date Significance:

The crux of the matter lay in the priority date of the subject matter patent application, set at 28.09.2010. The cited prior art, D2, presented a publication date of 28.10.2010, placing it chronologically after the priority date. This temporal misalignment raised a fundamental question: could D2 be deemed as prior art?

Legal Analysis:

The Hon'ble High Court of Madras engaged in a nuanced legal analysis, recognizing the fundamental principle that for a document to qualify as prior art, its publication date must precede the priority date of the claimed invention. 

In this instance, the court astutely observed that the publication date of D2, being 28.10.2010, was subsequent to the priority date of 28.09.2010. Consequently, the court held that D2 did not qualify as prior art and should be disregarded in the evaluation of the patent application.

Implications and Precedent:

This decision establishes a precedent emphasizing the critical role of the priority date in determining the relevance of prior art to a patent application. The court's ruling underscores the chronological hierarchy between priority dates and publication dates, reaffirming that only documents predating the priority date can be considered as prior art.

The Concluding Note:

The case of "FILM FOR PLANT CULTIVATION" serves as a compelling illustration of the meticulous consideration required when assessing the interrelationship between priority dates and publication dates in patent law. The court's discerning analysis reaffirms the importance of temporal alignment in evaluation of patent applications.

The Case Law Discussed:

Date of Judgement/Order:29/11/2023

Case No. MA (PT) No.47 of 2023 

Neutral Citation No:2023:Mad:5222

Name of Hon'ble Court: Madras High Court

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, HJ

Case Title: Kuraray Co Limited Vs Assistant Controller of Patent

Disclaimer:

Ideas, thoughts, views, informations, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Vicky Aggarwal versus Sumeet Agarwal

Trademark Rights Post-License Termination

Introduction:

The recent judgment by the Hon'ble High Court of Delhi in the trademark dispute concerning the mark BACHPAN sheds light on the critical legal aspects surrounding the fate of a trademark user after the termination of a license user agreement. This article explores the implications of such terminations and the court's stance in safeguarding the rights of the licensor.

Background:

Since 2004, the plaintiff has been offering play school services across India under the trademark BACHPAN. With registered trademarks dating back to 2003 and holding copyrights, the plaintiff established a significant presence in the market. A Franchisee Agreement was executed with the defendant, granting them the right to operate play schools under the BACHPAN mark, contingent on payment of license fees. The agreement naturally expired on January 31, 2021, and due to default in fees, it was not renewed, leading to the defendants losing their right to use the registered trademarks.

Legal Analysis:

The central issue revolves around the defendants' alleged continued use of the plaintiff's trademarks post the agreement's expiry. The Hon'ble High Court of Delhi, in granting the interim injunction, reaffirmed the settled legal position that an ex-licensee is not entitled to use the licensor's trademark after the termination of the license user agreement.

The court's observations:

1. Prima Facie Infringement: The court acknowledged a prima facie case of trademark infringement by the defendants. The continued use of the registered trademarks by the ex-licensee, post-agreement termination, was seen as a violation of the exclusive rights held by the plaintiff.

2. Passing Off: The court also noted an attempt by the defendants to pass off their services as those of the plaintiff. Despite losing the right to use the trademarks, the defendants were allegedly misleading the public by presenting themselves as affiliated with the plaintiff.

The Case Law:

The interim injunction granted by the Hon'ble High Court of Delhi serves as a powerful reminder of the legal remedies available to licensors when faced with trademark infringement and passing off by ex-licensees. This judgment further solidifies the principle that the expiration or termination of a license user agreement extinguishes the rights of the licensee to use the licensor's trademarks, reinforcing the sanctity of contractual obligations in the realm of intellectual property law.

The Concluding Note:

This case underscores the importance of adhering to the terms of license agreements and the legal consequences that follow termination. It emphasizes the court's commitment to protecting the rights of trademark owners against unauthorized use by former licensees.

The Case Law Discussed:

Date of Judgement/Order:17/11/2023

Case No. CS(COMM) 715/2023

Neutral Citation No:N.A.

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, HJ

Case Title: Vicky Aggarwal versus Sumeet Agarwal

Disclaimer:

Ideas, thoughts, views, informations, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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