Jitendra Kumar Vs The Registrar of Trademarks

Rectification of trademark on the basis of prior use of Trade Name

Abstract:

This article examines the legal principles surrounding the rectification of a trademark registration based on prior use of a trade name. It focuses on a petition brought under Sections 47 and 57 of the Trademarks Act, 1999, aiming to cancel the registration of the trademark "WHITE BOY" granted to Respondent No. 2. The petitioner, who claims prior use of the trademark, challenges the registration on the grounds that their continuous use since 2010 establishes superior rights. This analysis explores the facts, findings, legal implications, ratio decidendi, and concludes with the case's significance in trademark law.

Facts:

The petitioner established a sole proprietorship, White Boy Apparels, in 2010, manufacturing and trading in shirts under the trademark "WHITE BOY." The petitioner claims continuous and uninterrupted use of the mark since its inception. On March 3, 2021, the petitioner applied for registration of the wordmark "WHITE BOY" in class 25, citing a user claim from January 10, 2013. However, Respondent No. 2 had already filed for the registration of the identical mark on March 2, 2021, one day before the petitioner's application.

Documentary evidence confirms the operation of 'White Boy Apparels' since 2010, though explicit use of the "WHITE BOY" trademark on products from 2010 to 2019 is not demonstrated. The petitioner supports their claim with tax invoices showing the sale of "WHITE BOY" shirts since 2020. In contrast, Respondent No. 2's application was on a proposed-to-be-used basis, with no evidence of actual use before or after registration.

Prior Use of Trade Name and Firm Name:

The petitioner has demonstrated a significant period of continuous use of the trade name "White Boy Apparels" since 2010, establishing goodwill and reputation associated with the name. The use of the trade name as a source identifier aligns with the definition of a trademark under Section 2(1)(m) and Section 2(1)(zb) of the Trademarks Act, 1999.

Lack of Evidence from Respondent No. 2:

Respondent No. 2's application was on a proposed-to-be-used basis, indicating no actual use of the mark "WHITE BOY" at the time of application.The absence of documentary proof of use by Respondent No. 2 weakens their claim to the trademark rights.

Commercial Use by Petitioner: Tax invoices submitted by the petitioner demonstrate active commercial use of the "WHITE BOY" mark since 2020, reinforcing their claim of continuous trademark usage.

Ratio Decidendi:

The decisive principle in this case is the doctrine of prior use. The petitioner’s established and continuous use of the "WHITE BOY" mark since 2010, combined with the lack of actual use by Respondent No. 2, establishes the petitioner’s superior rights. The court's reliance on documentary evidence, such as tax invoices and the longstanding operation of 'White Boy Apparels,' underscores the importance of proving continuous and substantive use in trademark disputes.

Concluding Note:

The cancellation of the trademark "WHITE BOY" under No. 4886714 in class 25 emphasizes the critical role of prior use in trademark law. This case reaffirms that mere filing of a trademark application on a proposed-to-be-used basis does not outweigh established prior use. The decision underscores the necessity for businesses to maintain thorough records of their trademark use to support their claims in potential disputes.

Case Title: Jitendra Kumar Vs The Registrar of Trademarks
Order Date: 28.05.2024
Case No. C.O. (COMM.IPD-TM) 92/2023
Neutral Citation:2024:DHC:4402
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula. H.J.

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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Macleods Pharmaceuticals Limited Vs Alkem Laboratories Ltd. and another

Even the slightest probability of confusion in medicinal products is unacceptable

Abstract:

This legal analysis examines a trademark dispute involving the plaintiff's mark ‘ALRISTA’ and the defendant's mark ‘ALSITA’. Both marks pertain to pharmaceutical formulations used in diabetes-related treatments. The plaintiff's mark, ‘ALRISTA’, is associated with the drug ‘EPALRESTAT’, used for diabetic neuropathy, while the defendant's mark, ‘ALSITA’, is associated with ‘SITAGLIPTIN’, used for treating Type 2 diabetes.

The primary legal issue revolves around the likelihood of confusion between the two marks and the potential public health implications. This analysis explores the facts, findings, legal implications, ratio decidendi, and concludes with a summary of the case’s significance.

Facts:

The plaintiff has been using the mark ‘ALRISTA’ since 2007 and applied for registration under application No.1585338, in Class 5, on July 30, 2007. This application is currently under opposition. The defendant adopted the mark ‘ALSITA’ in 2021, applied for registration via application No.4969725 on May 10, 2021, and obtained registration on October 31, 2021. The plaintiff claims that the defendant's use of ‘ALSITA’ for a formulation containing ‘SITAGLIPTIN’ is likely to cause confusion with their mark ‘ALRISTA’ used for a formulation containing ‘EPALRESTAT’.

Findings:

Upon analyzing the phonetic and structural similarities between ‘ALRISTA’ and ‘ALSITA’, it is evident that the two marks are remarkably similar. Both marks consist of similar letters arranged in a similar sequence, leading to a high probability of confusion among consumers and healthcare professionals. Considering that both drugs are prescribed to diabetic patients, albeit for different indications, the potential for disastrous consequences if the wrong medication is dispensed is significant. This risk is heightened in the pharmaceutical context, where even minor errors can have severe health implications.

Legal Implications:

The primary legal principle at stake is the doctrine of passing off, which protects the goodwill of a trader from misrepresentation leading to consumer confusion. Since the plaintiff's mark is not yet registered, the action is based on passing off rather than trademark infringement. The court must determine whether the defendant's use of ‘ALSITA’ constitutes a misrepresentation that could lead to consumer confusion, damaging the plaintiff's goodwill and causing potential harm to patients.

Ratio Decidendi:

The key legal precedent applicable here is the necessity to avoid confusion in the pharmaceutical sector due to the potential for serious health risks. The court in *Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.* emphasized that even a remote possibility of confusion in medicinal products warrants restraint. This principle is particularly relevant in this case, where the marks ‘ALRISTA’ and ‘ALSITA’ are used for drugs targeting diabetic patients, albeit for different conditions. Given the phonetic and structural similarities, the likelihood of confusion is substantial.

Concluding Note:

In conclusion, the court's primary concern in this case is the potential for confusion between ‘ALRISTA’ and ‘ALSITA’ and the consequent risk to patient safety. The similarities between the marks, coupled with their use in diabetes-related treatments, underscore the need for careful scrutiny to prevent misprescription or dispensing errors. The legal framework and judicial precedents support the plaintiff's contention that even the slightest probability of confusion in medicinal products is unacceptable. Therefore, it is imperative to restrain the use of the defendant's mark ‘ALSITA’ to safeguard public health and uphold the principles of fair competition and consumer protection.

Case Title: Macleods Pharmaceuticals Limited Vs Alkem Laboratories Ltd. and another
Order Date: 28.05.2024
Case No. CS Comm 86 of 2024
Neutral Citation:2024:DHC:4432
Name of Court: Delhi High Court
Name of Hon'ble Judge: Anish Dayal. H.J.

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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Laverana GMBH Vs MAC Personal Care Pvt. Ltd.

Admission of Evidence and Section 65B of the Evidence Act, 1872

Introduction:

This article delves into Chamber appeal against an order dated October 16, 2017, issued by the Joint Registrar. The appeal challenges objections raised by the defendants regarding the admissibility of certain documents presented by the plaintiff and the refusal to accept a Certificate under Section 65B of the Evidence Act, 1872.

The Delhi High Court, referencing the judgment in *Eli Lilly & Co. vs. Maiden Pharmaceuticals Ltd.* (2016) 235 DLT 381, has subsequently taken the Certificate on record. This case presents significant questions regarding the procedural and substantive aspects of digital evidence admissibility under Indian law.

Section 65B of the Evidence Act, 1872:

Section 65B addresses the admissibility of electronic records. According to this provision, any information contained in an electronic record, which is printed on paper, stored, recorded, or copied, shall be deemed to be a document admissible in any proceedings, provided certain conditions are met.

Subsection (4) mandates that a certificate, identifying the electronic record containing the statement and describing the manner in which it was produced, must accompany the document. This certificate should be signed by a responsible official, providing assurance of the document's authenticity and the reliability of the electronic process.

Judicial Precedents:

Eli Lilly & Co. Vs. Maiden Pharmaceuticals Ltd. established that the Certificate under Section 65B could be filed along with the affidavit by way of examination-in-chief. This ruling underscores a flexible approach, allowing for the certificate to be submitted at a later stage in the proceedings, ensuring that substantive justice is not hindered by procedural technicalities.

Facts and Procedural History:

The plaintiff, in the present case, attempted to introduce certain documents into evidence, purportedly meeting the requirements of Section 65B. However, the Joint Registrar rejected these documents, citing non-compliance with the statutory prerequisites. Specifically, the Joint Registrar refused to accept the Certificate under Section 65B, which was presented at a later stage. The plaintiff's appeal to the High Court questioned the rigidity of this refusal and sought a more lenient interpretation in line with the Eli Lilly precedent.

Implication:

The Chamber appeal highlights a critical aspect of modern legal proceedings: the admissibility of electronic evidence and the procedural requirements governing it. The Delhi High Court's decision to accept the Certificate under Section 65B of the Evidence Act, 1872, in light of the *Eli Lilly* judgment, signifies a progressive step towards a more flexible and just legal process.

Conclusion:

While statutory compliance is indispensable, courts must also ensure that such compliance does not become a barrier to the administration of justice. The acceptance of Section 65B certificates at a later stage, as upheld in this appeal, exemplifies a balanced and fair approach, promoting the integrity and efficacy of the judicial process.

Case Title: Laverana GMBH Vs MAC Personal Care Pvt. Ltd.
Order Date: 28.02.2018
Case No. CS Comm 122 of 2018
Neutral Citation:NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Rajiv Sahai Endlaw. H.J.

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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Lotus Organic Care Vs Aadhar Products

Court is required to See only the pleading and not the document under Section 124 of Trademarks Act 1999

Introduction:

This article examines the legal implications and judicial reasoning in a recent appellate decision under Section 124 of the Trademarks Act, 1999. The case revolves around the petitioner’s challenge to the order of the Trial Court, which had rejected the petitioner’s application on the grounds of failing to establish prima facie invalidity of the impugned trademark registration. The High Court overturned this decision, providing significant clarity on the application of Section 124.

Section 124 of the Trademarks Act, 1999:

Section 124 of the Trademarks Act, 1999, addresses the issue of stay of proceedings in a suit for infringement of a trademark when the validity of the registration of the trademark is questioned. Specifically, it provides a mechanism for a defendant in an infringement suit to challenge the validity of the plaintiff's trademark registration and seek a stay of the proceedings until the validity issue is resolved by the Court. 

Key Provisions of Section 124:

Application for Rectification:

 A party can file an application for rectification of the register, questioning the validity of the trademark.

Stay of Suit:

If such an application is made, the court handling the infringement suit may stay the proceedings, pending the decision on the validity of the trademark.

Prima Facie Case: 

The court must be satisfied that there is a prima facie case regarding the invalidity of the trademark registration.

The Trial Court's Decision:

In the case at hand, the petitioner had filed an application under Section 124, seeking to challenge the validity of the respondent's trademark registration. The Trial Court rejected this application, stating that the petitioner had "miserably failed" to establish a prima facie case of invalidity. The court emphasized the insufficiency of evidence presented by the petitioner, which it deemed necessary to establish a prima facie case.

Critique of the Trial Court's Approach:

The Trial Court’s decision appears to hinge on the evidentiary requirements to establish prima facie invalidity. This interpretation necessitated a thorough examination of plesding at a preliminary stage, which could be argued as beyond the intended scope of Section 124.

The High Court's Reversal:

Upon appeal, the High Court set aside the Trial Court's order. The High Court observed that the Trial Court had misinterpreted the requirements under Section 124. The High Court clarified that under Section 124, the court's role at this stage is limited to assessing the pleadings rather than evaluating detailed evidence or documents. 

High Court's Interpretation

Pleadings Vs. Evidence**: 

The High Court emphasized that at the stage of applying Section 124, the court should primarily consider the pleadings of the parties. The requirement is to ascertain whether the pleadings raise a prima facie case of invalidity, not to delve into a full-fledged examination of evidence.

 Implications of the High Court's Decision:

Streamlined Proceedings:

 The decision promotes a more streamlined approach to handling trademark infringement suits where the validity of the trademark is contested. It prevents protracted preliminary hearings, thus facilitating a quicker resolution of the primary issues.

Clarity in Legal Standards: 

The ruling provides clarity on the legal standards applicable under Section 124, particularly distinguishing between prima facie assessments based on pleadings and detailed evaluations based on evidence.

Access to Justice: 

By lowering the threshold for establishing prima facie invalidity based on pleadings alone, the decision potentially broadens access to judicial review for parties challenging trademark registrations.

Conclusion:

The High Court’s decision in this case underscores the importance of adhering to procedural fairness and clarity in interpreting statutory provisions. Section 124 of the Trademarks Act, 1999, serves as a crucial procedural safeguard in trademark litigation, ensuring that challenges to trademark validity are appropriately considered without unnecessary procedural burdens. This ruling reinforces the principle that preliminary assessments should be based on pleadings, ensuring that substantive issues are addressed at the appropriate stage of judicial proceedings.

Case Title: Lotus Organic Care Vs Aadhar Products

Order Date: 16.05.2024

Case No. SB Civil Writ Petition 18461 of 2021

Neutral Citation:2024:RJ:JD:22234

Name of Court: Rajasthan High Court at Jodhpur

Name of Hon'ble Judge: Vineet Kumar Mathur. H.J.

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

KRBL Vs John Doe and another

Trademark Infringement and Fraudulent Scheme in relation to Trademark INDIA GATE

Background and Trademark Ownership:

The Plaintiff in this case is a globally recognized manufacturer and seller of rice and allied products, including quinoa, chia seeds, and flax seeds, marketed under the trademark "INDIA GATE." The wordmark "INDIA GATE," registered under No. 599833 in class 30, was initially utilized in 1979 by Mr. Ram Pratap. On August 6, 2019, the mark was officially assigned to the Plaintiff through a Deed of Assignment. 

The Plaintiff has duly updated the proprietorship details with the Trademarks Registry, ensuring compliance with the legal formalities necessary for such a transfer. Furthermore, the Trademarks Registry has acknowledged "INDIA GATE" as a well-known mark in accordance with the Trademarks Act, 1999, and the Trademarks Rules, 2017, reflecting its widespread recognition and established goodwill.

The Alleged Fraudulent Scheme:

In January 2024, the Plaintiff began receiving multiple consumer complaints regarding a fraudulent investment scheme orchestrated by Defendant No. 1. This scheme involved the misuse of the Plaintiff’s trademark "INDIA GATE" to deceive consumers into participating in a fake investment opportunity. Specifically, Defendant No. 1 distributed a link (https://www.ergdf03-kows2.com/index/user/register/invite_code/95lfx.html) via WhatsApp, luring individuals to register by depositing a small amount of money with the promise of beneficial returns. The WhoIs portal revealed that this link was created on January 4, 2024, and is set to expire on January 4, 2025. However, the registrant's details were masked, preventing public identification.

 Trademark Infringement:

Under the Trademarks Act, 1999, the unauthorized use of a trademark in a manner that is likely to cause confusion or deception among consumers constitutes trademark infringement. The Plaintiff's trademark "INDIA GATE," being a well-known mark, enjoys heightened protection under Section 29 of the Trademarks Act. The use of the "INDIA GATE" mark by Defendant No. 1 in the fraudulent scheme clearly falls within the ambit of infringement, as it creates a false association with the Plaintiff’s brand and misleads consumers regarding the source and legitimacy of the investment scheme.

Passing Off:

The tort of passing off protects the goodwill and reputation of a business from being misappropriated by another. The classic trinity test for passing off involves proving (i) goodwill or reputation in the mark, (ii) misrepresentation by the defendant leading to consumer confusion, and (iii) damage to the plaintiff’s goodwill. In this case, the Plaintiff has established a strong reputation and goodwill associated with the "INDIA GATE" mark. The fraudulent use of this mark by Defendant No. 1 constitutes a clear misrepresentation, leading to consumer confusion and potential damage to the Plaintiff’s reputation.

Consumer Protection:

The Consumer Protection Act, 2019, also comes into play, as the fraudulent scheme adversely affects consumers who are misled into investing their money based on false pretenses. The use of a well-known trademark to perpetrate such fraud exacerbates the severity of the offense, warranting stringent legal action to protect consumer interests and prevent further harm.

Prima Facie Case and Irreparable Harm:

The Court has rightly identified that the Plaintiff has established a prima facie case. The Plaintiff's trademark is not only registered but also recognized as well-known, providing a strong basis for protection. The fraudulent use of the trademark by Defendant No. 1 poses a significant threat of irreparable harm to the Plaintiff's brand reputation and consumer trust. The balance of convenience favors the Plaintiff, as allowing the fraudulent scheme to continue would result in ongoing damage, while an injunction would prevent further harm without unduly affecting the Defendant.

Conclusion:

In light of the above analysis, it is evident that the Plaintiff has a strong case for trademark infringement and passing off against Defendant No. 1. The fraudulent scheme using the "INDIA GATE" mark not only infringes on the Plaintiff's trademark rights but also deceives consumers, causing potential financial harm. The Court's decision to issue an ad-interim ex-parte injunction against Defendant No. 1 is justified, ensuring immediate cessation of the infringing activities and preventing further damage to the Plaintiff’s brand and consumer interests. 

Case Title: KRBL Vs John Doe and another

Order Date: 20.05.2024

Case No. CS(COMM) 416/2024

Neutral Citation:NA

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Sanjeev Narula. H.J.

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Fab India Vs Fab India Emporium

Fact:

Fabindia, incorporated in 1960, is a leading Indian retail company specializing in handcrafted goods. It operates numerous retail outlets across major Indian cities and has a significant online presence. Fabindia has secured over 100 trademark registrations for its name 'FABINDIA'. 

Recently, Fab India Emporium, a new retail store in Delhi, began selling similar products under a name that closely resembles Fabindia's trademark. Fabindia alleges that this causes consumer confusion and dilutes its brand.

Finding:

The Court's findings supporting the ex-parte ad interim injunction in favor of Fabindia include:

Trademark Strength:

Fabindia's trademark 'FABINDIA' is widely recognized, with over 100 registrations and a longstanding presence in the market.

Likelihood of Confusion:

The defendant's use of "Fab India Emporium" is similar enough to Fabindia's trademark to likely cause consumer confusion.

Balance of Convenience:

 The potential harm to Fabindia’s established reputation and business outweighs any inconvenience the defendant might face due to the injunction.

Irreparable Harm:

 Without the injunction, Fabindia risks significant harm, including brand dilution and loss of consumer trust, which cannot be adequately compensated through monetary means.

Ratio:

The Court’s rationale for granting the injunction is based on the following points:

Prima Facie Case:

Fabindia has demonstrated a substantial likelihood of success in proving trademark infringement, showing that the defendant’s similar name is likely to deceive consumers.

Balance of Convenience:

The balance of convenience favors Fabindia, as the harm to its reputation and business is greater than any inconvenience to the defendant.

Irreparable Harm:

Fabindia faces irreparable harm if the injunction is not granted, including potential loss of brand distinctiveness and consumer trust, which monetary compensation cannot rectify.

Case Title: Fab India Vs Fab India Emporium

Order Date: 15.05.2024

Case No. CS(COMM) 394/2024, 

Neutral Citation:NA

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Anish Dayal. H.J.

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Elli Lilly and Company Vs Maiden Pharmaceutical Limited

Filing of Affidavits in Support of Electronic Documents under Order XI Rule 6(3) of the Commercial Courts Act, 2015 at later stage

Introduction:

The procedural complexities in commercial litigation often bring about interpretative challenges, particularly when it involves the integration of electronic evidence. One such instance arose in a suit instituted by the plaintiffs in 2007 for injunction restraining trademark infringement and passing off, where the controversy centered around the timing of filing an affidavit under Sections 65-A and 65-B of the Evidence Act, 1872.

Background of the Case:

The suit, initiated by the plaintiffs in 2007, had its issues framed by January 2009. Despite early filing of affidavits by way of examination-in-chief from two witnesses, these witnesses were never examined. By 2016, with the original witnesses no longer available, the plaintiffs filed a new affidavit by Mr. Aditya Singhal, a constituted attorney of the plaintiffs, on October 17, 2016. This affidavit was intended to tender into evidence several documents, including those containing electronic records supported by an affidavit under Sections 65-A and 65-B of the Evidence Act.

The defendant objected to these documents, arguing that the affidavit under Sections 65-A and 65-B should have been filed contemporaneously with the electronic records. This objection brought into focus the applicability and interpretation of Order XI Rule 6 of the Commercial Courts Act, 2015, particularly in the context of the procedural stages of filing such affidavits.

Legal Provisions and Interpretative Analysis:

 Sections 65-A and 65-B of the Evidence Act, 1872:

Sections 65-A and 65-B of the Evidence Act deal with the admissibility of electronic records. Section 65-B, in particular, requires a certificate accompanying electronic records to ensure their authenticity. This certificate must be signed by a responsible persob and must attest to the particulars of the device and the process by which the electronic record was produced.

Order XI Rule 6(3) of the Commercial Courts Act, 2015:

Order XI Rule 6(3) addresses the filing of documents in commercial suits. It permits parties to file documents at a later stage, provided they can demonstrate a sufficient cause for not having produced them earlier.

 Judicial Interpretation by the Delhi High Court:

The Delhi High Court, in addressing the objection, highlighted the flexibility provided by Order XI Rule 6(3). The Court observed that this provision does not preclude the filing of a certificate under Section 65-B at a later stage. The interpretation hinges on the understanding that the rule permits subsequent filings if justified by sufficient cause. The Court acknowledged that the procedural rules governing commercial suits should facilitate justice and not serve as rigid barriers to the presentation of evidence.

Analytical Implications

Flexibility in Procedural Compliance

The Court's interpretation reinforces a flexible approach to procedural compliance in commercial litigation. It underscores that procedural rules should not unduly hinder the adjudication of substantive rights, especially in complex commercial disputes where the nature of evidence might evolve over time.

Ensuring Fairness and Efficiency:

By allowing affidavits under Sections 65-A and 65-B to be filed later, the Court aims to balance fairness and efficiency. This approach ensures that technical objections do not obstruct the adjudication process, provided the filing party can justify the delay.

Future Impact on Commercial Litigation:

The ruling sets a precedent for future commercial litigation, emphasizing that procedural rules should adapt to the practicalities of modern evidence presentation. It encourages litigants to ensure thorough documentation of electronic records while also providing leeway for rectification if procedural lapses occur.

Conclusion:

The Delhi High Court's decision affirms the plaintiffs' right to file an affidavit under Sections 65-A and 65-B of the Evidence Act at a later stage, aligning with the provisions of Order XI Rule 6(3) of the Commercial Courts Act, 2015. This ruling not only clarifies the procedural aspects of filing electronic evidence in commercial suits but also promotes a judicial approach that balances strict adherence to procedural rules with the overarching goal of substantive justice.

Case Title: Elli Lilly and Company Vs Maiden Pharmaceutical Limited

Order Date: 09.11.2016

Case No. CS(COMM) 1472 of 2016

Neutral Citation:2016:DHC:7411

Name of Court: Delhi High Court 

Name of Hon'ble Judge: R. S. Endlaw. H.J.

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Sanjay Gupta Vs Anil Udyog

Trade Mark Rectification and the Triple Identity Test

Introduction:

This article examines a recent case involving the rectification of the trademark "SHIV GANGA" registered under No. 3274256 in Class 01 for camphor, highlighting the application of the Triple Identity Test. The Hon'ble High Court of Delhi cancelled this impugned trademark, emphasizing the absence of use by the respondent and the likelihood of confusion due to the Triple Identity Test.

Case Background:

In this case, the petitioner sought the removal of the trademark "SHIV GANGA" registered by respondent no. 1 for camphor in Class 01, dated December 15, 2011. The petitioner's trademark was applied for in Class 03 for camphor, isobornyl, and other related products, with usage dating back to 1974. Despite the differing classes (Class 01 vs. Class 03), both trademarks covered the same product—camphor. The court's decision hinged on two pivotal aspects: the non-use of the trademark by the respondent and the application of the Triple Identity Test.

Trademark Non-Use of Trademark:

Under Section 47 of the Trade Marks Act, 1999, a trademark may be subject to rectification if it has not been used for a continuous period of five years and three months from the date of registration. The burden of proof lies on the registered proprietor to show the use of the trademark. In this case, respondent no. 1 failed to provide any evidence of the use of the "SHIV GANGA" trademark. The court noted this absence of use as a primary reason for cancellation, reflecting the statutory mandate that trademarks should be actively used in commerce to maintain their registration.

The Triple Identity Test:

The doctrine of the Triple Identity Test was a cornerstone in the court's decision. Originating from the case of "Jain Electronics Vs Cobra Cables P. Ltd. and Ors., 2010 SCC OnLine Del 4199", the Triple Identity Test assesses three critical aspects to determine the likelihood of confusion:

Identity of the Marks: 

Whether the trademarks in question are identical or deceptively similar.

Identity of the Goods or Services:

 Whether the goods or services for which the trademarks are used are identical or similar.

Identity of the Trade Channels: 

Whether the goods or services are marketed through the same or similar trade channels.

In the present case, the court found that The trademarks "SHIV GANGA" and the petitioner’s mark (although not explicitly mentioned, implied to be similar) were considered identical or at least confusingly similar.Both parties were dealing with camphor, thus fulfilling the second criterion of identical goods.The court observed that camphor, regardless of its classification under different classes (Class 01 for respondent and Class 03 for petitioner), would typically be sold through similar trade channels, such as general stores, religious shops, and other retail outlets.

Given these findings, the court concluded that the simultaneous use of these trademarks was likely to cause confusion among consumers. The deceptive similarity and identical nature of the goods and trade channels satisfied the Triple Identity Test, warranting the cancellation of the impugned trademark.

 Implication:

The application of the Triple Identity Test in this case underscores its significance in trademark litigation. It provides a robust framework for evaluating the likelihood of confusion, crucial for protecting both consumer interests and the proprietary rights of trademark owners. The Delhi High Court's decision to cancel the "SHIV GANGA" trademark reiterates the importance of actual use of a trademark and the potential for consumer confusion as decisive factors in trademark rectification cases.

Conclusion:

This case highlights the necessity for trademark proprietors to actively use their marks in commerce and maintain vigilance over similar registrations. For practitioners and businesses, understanding the nuances of the Triple Identity Test can offer valuable insights into effectively managing trademark portfolios and navigating disputes. The rectification of the "SHIV GANGA" trademark demonstrates the judicial application of established legal principles to ensure fair competition and prevent consumer deception, reinforcing the essential role of trademark law in modern commerce.

Case Title: Sanjay Gupta Vs Anil Udyog

Order Date: 20.05.2024

Case No. C.O. (COMM.IPD-TM) 106/2024

Neutral Citation:NA

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Anish Dayal. H.J.

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Radico Khaitan Vs Dhampur Bio Agencies

Trademark Infringement and Passing Off in "MASTIH" Vs. "FULL MASTI" Case

Introduction:

This legal analysis delves into a recent trademark dispute between the Plaintiff, who has held a trademark registration for "MASTIH" since 1992, and the Defendant, who applied for the registration of "FULL MASTI" in 2024. The primary issues concern the likelihood of confusion, deceptive similarity, and the legal principles guiding the grant of injunctions in such cases.

Background:

The Plaintiff’s trademark "MASTIH" has been in use for over three decades, establishing significant market recognition and consumer association. In contrast, the Defendant’s application for the trademark "FULL MASTI" is recent and pending consideration. The Plaintiff argues that the Defendant’s mark is deceptively similar to its own and could mislead consumers, potentially leading to market confusion and a dilution of the Plaintiff's brand identity.

Analysis of Deceptive Similarity:

To determine trademark infringement, courts primarily assess the likelihood of confusion among consumers. This involves comparing the visual, phonetic, and conceptual similarities between the two marks. In this case, the Defendant’s mark "FULL MASTI" includes the entirety of the Plaintiff’s mark "MASTIH" with the addition of the prefix "FULL." 

Visual Similarity:

The core element "MASTI" in "FULL MASTI" is phonetically identical to "MASTIH," notwithstanding the slight variation in spelling. The prefix "FULL" does not sufficiently distinguish the marks, as the dominant portion remains identical.

Phonetic Similarity:

Both marks are pronounced similarly, enhancing the likelihood of auditory confusion. Consumers are likely to recall the shared element "MASTI/MASTIH" and may overlook the prefix, leading to misidentification.

Conceptual Similarity:

 Both marks evoke similar ideas associated with pleasure or enjoyment, further contributing to the potential for confusion.

Under trademark law, particularly in jurisdictions like the United States and India, it is a settled principle that when two marks are nearly identical or deceptively similar, and they cover similar goods or services, an injunction should follow to prevent consumer confusion. The key case law supporting this principle includes:

Consumer Confusion and Market Impact:

The court must consider the practical implications of allowing the Defendant to use "FULL MASTI." Given the Plaintiff’s long-standing use of "MASTIH," consumers have developed a recognition and trust in the brand. The introduction of a similar mark by the Defendant could lead consumers to mistakenly associate the Defendant's products with the Plaintiff, assuming they are a brand extension or a new product line from the Plaintiff.

This mistaken belief could cause significant damage to the Plaintiff’s brand equity and goodwill. The principle of "initial interest confusion" also plays a role, where consumers may initially be attracted to the Defendant’s product due to the similarity, even if they realize the difference later.

Court’s Decision and Injunction:

Given the analysis, the court is likely to find merit in the Plaintiff’s contention. The visual and phonetic similarities, coupled with the established legal principles, strongly support the issuance of an injunction. The Defendant and anyone acting on their behalf should be restrained from using "FULL MASTI" or any deceptively similar mark in connection with alcoholic beverages or related goods. This injunction aims to prevent consumer confusion, protect the Plaintiff’s brand equity, and uphold fair competition standards.

Conclusion:

Trademark law seeks to balance the interests of businesses and consumers by preventing confusion and protecting brand identity. In the case of "MASTIH" vs. "FULL MASTI," the Plaintiff's prior use and the deceptive similarity of the marks justify legal intervention. An injunction against the Defendant is appropriate to prevent consumer confusion and protect the Plaintiff's longstanding trademark rights. 

Case Title: Radico Khaitan Vs Dhampur Bio Agencies Order Date: 15.05.2024 Case No. CS(COMM) 393/2024 Neutral Citation:NA Name of Court: Delhi High Court Name of Hon'ble Judge: Sanjeev Narula. H.J.

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539