Mehboob Ahmad Vs Muneer Ahmad and another

Advertisement before Acceptance Trademark Journal

Abstract:

This article delves into the legal intricacies surrounding pre-advertisement approval in trademark registration, as exemplified by a recent appellate case challenging the grant of a trademark registration certificate before publication in the Trademark Journal. The case underscores the importance of procedural compliance and the interpretation of relevant statutory provisions under the Trade Marks Act, 1999. This article analyzes the controversy raised in the appeal and the implications of the appellate court's decision to remit the matter back to the examiner for reconsideration.

Introduction:

Trademark registration is a critical aspect of protecting intellectual property rights in commercial ventures. The process typically involves examination by trademark authorities to ensure compliance with legal requirements before publication in the Trademark Journal. However, disputes may arise when trademark applications receive pre-advertisement approval, bypassing the customary publication stage. This article explores the legal nuances and implications of such pre-advertisement approvals in trademark registration, focusing on a recent appellate case before the High Court.

Background of the Case:

The case under discussion involves an appeal challenging an order granting a trademark registration certificate before publication in the Trademark Journal. The appellant contested the validity of this pre-advertisement approval, arguing that it contravened procedural norms under the Trade Marks Act, 1999. The appellate court scrutinized the operative part of the impugned order, directing the Registrar of Trademarks to issue the registration certificate within a specified timeframe.

Legal Analysis:

The crux of the controversy lies in the interpretation of statutory provisions governing trademark registration procedures, particularly Section 20(1) of the Trade Marks Act, 1999. This provision mandates publication of trademark applications in the Trademark Journal before registration, subject to certain exceptions. Pre-advertisement acceptance as granted in the impugned order, raises questions regarding compliance with these procedural requirements.

The appellate court's decision to remit the matter back to the examiner underscores the significance of procedural regularity in trademark registration. The examiner is tasked with re-evaluating the application and determining whether pre-advertisement acceptance aligns with the statutory framework. Additionally, the court's clarification that the examiner should consider whether advertisement is warranted pursuant to the proviso to Section 20(1) emphasizes the importance of adherence to legal mandates in the registration process.

Implications and Precedent:

This case sets an important precedent regarding pre-advertisement acceptance in trademark registration. It highlights the need for strict adherence to procedural requirements outlined in the Trade Marks Act, 1999, to maintain the integrity and efficacy of the registration process. Furthermore, the appellate court's decision underscores the significance of statutory interpretation and the role of examiners in ensuring procedural compliance.

Conclusion:

The case discussed exemplifies the legal complexities surrounding pre-advertisement approval in trademark registration. It underscores the importance of procedural regularity and statutory compliance in safeguarding the integrity of the registration process. Moving forward, stakeholders must remain vigilant in adhering to legal mandates to uphold the legitimacy and effectiveness of trademark registration procedures.

Case Title: Mehboob Ahmad Vs Muneer Ahmad and another
Order Date: 21.02.2024
Case No. LPA 88 of 2024
Neutral Citation:2024:DHC:1434:DB
Name of Court: Delhi High Court
Name of Hon'ble Judge: Mr. Vibhu Bakhru and Tara Vitasta Ganju

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,
Ph No: 9990389539

Boehringer Ingelheim Pharma GMBH and Co KG Vs Vee Excel Drugs And Pharmaceuticals Pvt. Ltd.

The Legal Implications of Patent Expiry on Relief for Patent Infringement

Abstract:

This article explores the legal ramifications of patent expiry on relief for patent infringement, as exemplified by a recent case adjudicated by the Hon'ble Division Bench of the High Court of Delhi. The case involved an appeal against the rejection of interim orders seeking to restrain patent infringement. However, during the pendency of the appeal, the subject patents expired, prompting the court to consider the fate of relief for patent infringement post-expiry. The court's decision to vacate the injunction order sheds light on the principle that relief for patent infringement does not survive beyond the expiration of the patent term.

Introduction:

Patent protection serves as a cornerstone of innovation by granting inventors exclusive rights to their inventions for a limited period. However, disputes often arise when third parties allegedly infringe upon patented inventions. Legal recourse typically involves seeking injunctions and damages for patent infringement. This article examines a significant legal issue arising from patent expiry and its impact on relief for patent infringement, as elucidated by a recent case before the High Court of Delhi.

Background of the Case:

The case in question involves an appeal challenging the rejection of interim orders seeking to restrain patent infringement. The appellant sought relief under Order XXXIX Rule 1 & 2 of the Civil Procedure Code, 1908, but the applications were denied by the learned Single Judge. However, during the pendency of the appeal, the subject patents reached the end of their term, prompting a crucial question regarding the fate of relief for patent infringement post-expiry.

Legal Analysis:

The central legal issue in this case revolves around the effect of patent expiry on relief for patent infringement. Once a patent expires, the exclusive rights conferred by the patent no longer exist, rendering claims for patent infringement moot. In other words, the expiration of a patent extinguishes the basis for seeking injunctive relief against infringement.

The court's decision to vacate the injunction order underscores this fundamental principle. Despite the merits of the appellant's claims of patent infringement, the expiration of the patents in question rendered the relief sought irrelevant. All parties acknowledged the expiration of the patents, precluding any further claim for relief against infringement.

Implications and Precedent:

This case sets a significant precedent regarding the impact of patent expiry on relief for patent infringement. It highlights the principle that relief for patent infringement does not survive beyond the expiration of the patent term. Patent holders must be cognizant of the limited duration of their exclusive rights and take appropriate legal action before patent expiry to enforce their rights effectively.

Furthermore, this ruling underscores the importance of timely enforcement of patent rights and the need for parties to diligently monitor patent expiration dates. Failure to do so may result in the loss of valuable legal remedies against infringers once the patents expire.

Conclusion:

The case discussed exemplifies the legal intricacies surrounding relief for patent infringement in the context of patent expiry. The court's decision to vacate the injunction order serves as a reminder of the finite duration of patent rights and the implications thereof on legal remedies for infringement. Moving forward, stakeholders must be proactive in safeguarding their patent rights and navigating the complex legal landscape governing patent protection and enforcement.

Case Title: Boehringer Ingelheim Pharma GMBH and Co KG Vs Vee Excel Drugs And Pharmaceuticals Pvt. Ltd.
Order Date: 21.02.2024
Case No. FAO(OS) (COMM) 77/2023
Neutral Citation:N.A.
Name of Court: Delhi High Court
Name of Hon'ble Judge: Mr. Vibhu Bakhru and Tara Vitasta Ganju

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,
Ph No: 9990389539

Maruti Ispat & Energy Pvt. Ltd. Vs Chetna Steel Tubes Pvt. Ltd.

Implications of Inaction in Third-Party Trademark Usage

Abstract:

This article examines a recent case where the defendant argued that a trademark had become generic due to the plaintiff's failure to take action against similar users. The court's dismissal of this argument underscores the necessity for defendants to substantiate claims of genericness through evidence, rather than mere inaction by the plaintiff.

Introduction:

Trademark protection is fundamental to safeguarding the distinctiveness and reputation of brands in commerce. However, disputes often arise when trademarks are allegedly diluted through widespread use or inaction by the trademark owner. This article analyzes a recent legal case where the defendant asserted that the plaintiff's trademark had become generic due to the plaintiff's failure to object to third-party usage.

Background of the Case:

The case at hand involves an appeal filed by the defendant against an order granting interim injunctions to the plaintiff in a trademark infringement dispute. The plaintiff, holding the trademark "SHAKTI," sought to restrain the defendant's use of a similar mark, "MS SHAKTI." The defendant argued that the plaintiff's inaction against other parties using similar marks implied that the mark had become generic and common to trade.

Legal Analysis:

The central legal issue in this case revolves around the concept of trademark dilution and the standard for proving genericness. Trademark dilution occurs when a mark loses its distinctiveness due to extensive use by third parties or failure to enforce trademark rights. However, establishing genericness requires more than mere inaction by the trademark owner.

The court's dismissal of the defendant's argument underscores the principle that non-action by the plaintiff against other parties does not automatically render the mark generic. Rather, the defendant must provide evidence to substantiate the claim of genericness. In this case, the court rightly held that the defendant failed to present prima facie material demonstrating that the mark "SHAKTI" had become generic in the trade.

Implications and Precedent:

This ruling reaffirms the importance of evidentiary standards in trademark disputes. Defendants cannot rely solely on the plaintiff's inaction as proof of genericness; instead, they must provide concrete evidence supporting their claims. Additionally, this case sets a precedent for future disputes involving trademark dilution, emphasizing the need for thorough legal analysis and evidence-based arguments.

Conclusion:

Trademark disputes involving allegations of dilution require careful consideration of legal principles and evidence. The recent case discussed highlights the significance of substantiating claims of genericness through proper evidence, rather than relying on the plaintiff's inaction alone. Moving forward, practitioners and litigants must be mindful of the nuanced legal standards governing trademark protection to effectively navigate disputes in this complex area of law.

Case Title: Maruti Ispat & Energy Pvt. Ltd. Vs Chetna Steel Tubes Pvt. Ltd.
Order Date: 23.02.2024
Case No. O.S.A (CAD).Nos.122 and 123 of 2023
Neutral Citation:2024:MHC:6521
Name of Court: Madras High Court
Name of Hon'ble Judge: Mr. Sanjay Gangapurwala and Bharatha Chakravarthy, HJ

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,
Ph No: 9990389539

Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Section 12 of Company Act 2013 and Entitlement of Company to Use Its Old Name

Background:

In the corporate landscape, the decision to change a company's name can stem from various strategic, branding, or legal considerations. However, the question of whether a company is entitled to use its old name for a certain period after changing its name is one that requires careful legal scrutiny. This issue was recently settled by the Hon'ble High Court of Delhi in a case that sheds light on the interplay between company law and the rights of corporate entities.

Fact:

In a recent case before the Hon'ble High Court of Delhi, the defendant, formerly known as 'Zanofi Pharmaceutical Private Limited,' sought to change its corporate name to 'Naltisam Pharmaceutical Private Limited.' The Registrar of Companies, Ministry of Corporate Affairs, duly issued a certificate approving the name change. However, a note appended to the certificate required the defendant to display its earlier name for a period of two years in accordance with Section 12 of the Companies Act, 2013.

Issue:

The crux of the issue before the court was whether the defendant was entitled to display its old name for two years, as mandated by the Companies Act. The court, in its wisdom, answered this question in the negative, providing crucial insights into the legal framework governing corporate name changes.

Reasoning:

The court's reasoning hinged on the distinction between the court's power to direct a party to change its corporate name and the voluntary act of changing the name. It noted that the court's authority to mandate a change of corporate name operates in a different realm than that of a voluntary name change initiated by the company itself. As such, the court implied that it would not be bound by the provisions of the Companies Act, which pertain to situations triggered by voluntary name changes.

Analysis:

By disentangling the court's power from the statutory provisions governing voluntary name changes, the court affirmed its authority to make independent determinations regarding corporate name changes in the context of legal proceedings. It underscored the principle that the court's directives in such matters are guided by legal principles and equitable considerations rather than statutory mandates.

Consequently, the court ruled that the defendant was not entitled to display its old name for the prescribed period of two years. Instead, it directed the defendant to exclusively use its new name, 'Naltisam Pharmaceutical Private Limited,' in all its dealings, promotional materials, and online and physical media.

Conclusion:

This ruling by the Hon'ble High Court of Delhi serves as a significant precedent in clarifying the rights and obligations of companies undergoing name changes. It highlights the court's discretion in adjudicating corporate name change matters and reinforces the principle that legal directives in such cases are rooted in judicial discretion and equitable considerations rather than statutory mandates alone.

Case Title: Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Order Date: 23.02.2024

Case No. CS(COMM) 881/2023

Neutral Citation:N.A

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Sanjeev Narula,HJ

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,

Ph No: 9990389539

Incyte Holdings Corporation Vs Tiba Pharmaceutical Pvt. Ltd.

Ex Parte Injunction in Quia Timet Action: Protecting Patent Rights in Pharmaceutical Innovation

Abstract:

This article examines a recent case wherein the plaintiff sought an ex parte injunction in a quia timet action for patent infringement concerning the pharmaceutical compound 'Ruxolitinib.' The suit, filed before the Hon'ble High Court of Delhi, highlights the complexities of protecting patent rights in the pharmaceutical sector, particularly when dealing with pre-emptive actions to prevent potential infringement. The article provides a detailed analysis of the legal principles involved, including the criteria for granting ex parte injunctions, the concept of quia timet actions, and the significance of protecting intellectual property rights in innovation-driven industries.

Introduction:

The case under scrutiny involves a patent infringement suit brought by the plaintiff concerning the compound 'Ruxolitinib,' which is utilized in the treatment of myelofibrosis and polycythemia vera. The plaintiff alleges that the defendant, despite not yet launching its product in the market, has obtained manufacturing licenses and intends to infringe upon the plaintiff's patent rights. The plaintiff seeks an ex parte injunction to prevent the defendant from launching its product, asserting that irreparable harm would ensue if infringement were to occur.

Legal Analysis:

Quia Timet Action:

A quia timet action allows a plaintiff to seek injunctive relief to prevent an anticipated or threatened infringement of their rights, even before the infringement occurs. In the present case, the plaintiff's proactive approach underscores the importance of preemptive measures to safeguard patent rights in the pharmaceutical domain.

Prima Facie Case:

To obtain an ex parte injunction, the plaintiff must demonstrate a prima facie case of infringement. This requires establishing that the defendant's actions, if allowed to proceed, would likely infringe upon the plaintiff's patent rights. The plaintiff's assertion regarding the defendant's intent to manufacture and launch a product containing 'Ruxolitinib' forms the basis for establishing a prima facie case.

Balance of Convenience and Irreparable Harm: In granting ex parte relief, the court must weigh the balance of convenience and consider whether irreparable harm would result if the injunction were not granted. The plaintiff's argument regarding the potential harm to its market position and the irreparable loss stemming from infringement supports the grant of injunctive relief.

Independent Investigation:

The reliance on an independent investigating agency's report strengthens the plaintiff's case by providing corroborative evidence of the defendant's intentions to infringe upon the patent. Such investigative reports play a crucial role in substantiating claims of anticipated infringement in quia timet actions.

Conclusion:

The decision of the Hon'ble High Court of Delhi to grant an ex parte injunction in the present case reflects the judiciary's commitment to protecting intellectual property rights, particularly in innovation-driven industries like pharmaceuticals. By recognizing the potential harm posed by anticipated infringement and prioritizing the balance of convenience, the court upholds the integrity of the patent system and promotes a conducive environment for innovation and investment.

Case Title: Incyte Holdings Corporation Vs Tiba Pharmaceutical Pvt. Ltd.
Order Date: 29.01.2024
Case No. CS(COMM) 81 of 2024
Neutral Citation:N.A
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula,HJ

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,
Ph No: 9990389539

Sheila Bhagwan Bulchandani Vs State of Maharashra

Abuse of Criminal Law Machinery in civil business dispute

Abstract:

This article delves into the intricate legal nuances surrounding the stay of investigation sought by the petitioners in a criminal case involving allegations of civil business dispute. The case under scrutiny involves the invocation of Section 156(3) of the Code of Criminal Procedure, wherein the petitioners allege the misuse of criminal proceedings to give a criminal color to a civil dispute. The article analyzes the factual matrix, legal principles, and judicial precedents to evaluate the validity of the petitioners' claim and the court's decision to grant a stay of investigation.

Introduction:

The intersection of civil and criminal law often presents complex challenges, particularly when disputes arising out of commercial transactions find their way into the realm of criminal litigation. This article examines the case of [Case Name], wherein the petitioners sought a stay of investigation in a criminal case alleging the misuse of criminal machinery for vindictive purposes. The article critically evaluates the legal principles involved and analyzes the court's decision to grant interim relief to the petitioners.

Background:

The instant case revolves around an FIR filed under various sections of the Indian Penal Code at Matunga Police Station. The petitioners contend that the application under Section 156(3) was filed with malicious intent to transform a civil dispute into a criminal matter, despite the existence of ongoing arbitral proceedings between the parties in Italy and New York. The FIR alleges offenses stemming from a longstanding business transaction between the petitioners and the complainant, including copyright infringement and financial impropriety.

Legal Analysis:

Misuse of Criminal Proceedings:

The crux of the petitioners' argument lies in the contention that the complainant misused the criminal justice system to settle a commercial dispute that had already been adjudicated through arbitration. They argue that the invocation of criminal law in such circumstances constitutes an abuse of process and warrants judicial intervention.

Arbitral Adjudication and Prima Facie Case:

The petitioners highlight the existence of arbitral proceedings wherein the allegations raised in the FIR were adjudicated. They argue that the complainant's failure to disclose the outcome of these proceedings to the investigating authorities amounts to suppression of material facts and reflects an ulterior motive.

Extraordinary Jurisdiction:

The court, in considering the petitioners' plea for a stay of investigation, assessed whether the case warranted the exercise of extraordinary jurisdiction under Article 226 of the Constitution or inherent powers under Section 482 of the Cr.P.C. The court's determination hinged on whether the facts presented constituted one of the rarest of rare cases necessitating intervention.

Judicial Precedents:

The court's decision to grant interim relief aligns with established precedents emphasizing the need to prevent the misuse of criminal proceedings for ulterior motives. Several judicial pronouncements have underscored the importance of maintaining the sanctity of criminal law and preventing its instrumentalization in civil disputes.

Conclusion:

The case underscores the complexities inherent in navigating the interface between civil and criminal law, particularly in the context of business disputes. The court's decision to stay the investigation reflects a judicious exercise of discretion aimed at preventing the abuse of criminal law machinery. This case serves as a reminder of the judiciary's role in safeguarding the integrity of legal processes and upholding the principles of fairness and justice.

Case Title: Sheila Bhagwan Bulchandani Vs State of Maharashra

Order Date: 14.02.2024

Case No. Writ Petition No. 2760 OF 2023

Neutral Citation:2024:BHC-AS:7759-DB

Name of Court: Bombay High Court

Name of Hon'ble Judge: Anuja Prabhu Dessai & N. R.Borkar,HJ

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,

Ph No: 9990389539