Sri Amaresh Banerjee vs The State Of West Bengal

Criminal Proceeding Dropped as Dispute Relating to Trademark is Civil Dispute

Introduction:

The present legal article delves into the intricacies of a Criminal Revision filed against an order dated 16.01.2019 in Shyampukur P.S. E.B. case No. 28 of 2009 by the Learned Additional Chief Metropolitan Magistrate, Calcutta. The case involves allegations under Sections 120B/420 of the Indian Penal Code and Sections 103, 104 of the Trade Mark Act, 1999.

Factual Background:

The complainant, a manufacturer of coaltar using the trade name "Anchor" with specific color and artwork, conducts business in Kolkata. The trade mark was initially registered in the name of Aruna Banerjee, subsequently assigned to the complainant. On 3rd May 2008, the petitioner discovered that the opposite party began copying the identical trade mark with the intention of capturing the market.

Legal Proceedings:

The complainant initiated proceedings by filing an application under Section 156(3) Cr.P.C., alleging inadequacies in the investigation. Subsequently, on 11th April 2016, a petition for reinvestigation was filed, leading to its rejection and the subsequent filing of the Criminal Revision.

High Court Decision:

The Hon'ble High Court of Calcutta rejected the Criminal Revision, asserting that the dispute primarily relates to trademark/copyright and falls within the definition of a "commercial dispute" under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015. The court noted that a title suit had already been instituted by the petitioner against the opposite party, which is sub judice.

Legal Analysis:

The key legal question revolves around the characterization of the dispute. The High Court correctly identified it as a commercial dispute, emphasizing that it pertains to trademark and copyright issues. By invoking the Commercial Courts Act, the court clarified that such matters are inherently civil in nature.

Further, the court highlighted the existence of a pending title suit, indicating that the petitioner had sought legal recourse through the appropriate civil channels. The rejection of the Criminal Revision implies that the attempt to initiate criminal proceedings was viewed as an attempt to harass the opposite party, possibly for strategic reasons.

The Concluding Note:

The legal analysis underscores the importance of correctly categorizing disputes, particularly those involving intellectual property rights. In this case, the High Court's decision to classify the matter as a civil dispute aligns with the nature of the allegations. The rejection of the Criminal Revision reaffirms the significance of pursuing appropriate legal remedies and channels for dispute resolution in line with the nature of the dispute.

The Case Law Discussed:

Case Title: Sri Amaresh Banerjee vs The State Of West Bengal

Date of Judgement/Order:15.01.2024

Case No. CRR No.1005 of 2019

Neutral Citation: NA

Name of Hon'ble Court: Calcutta  High Court

Name of Hon'ble Judge: Shampa Dutt Paul, 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,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Sai Chemicals Vs Jai Chemical Works

Part of registered Trademark, being common to trade

Introduction:

The recent legal dispute between the appellant and respondent delves into the complexities surrounding the use of common terms in trademarks and the consequent grant of exclusive rights. Central to the case is the appellant's argument that the term 'PATTA' is commonly used in trade, challenging the exclusive rights granted to the plaintiff's trademark 'HARA PATTA.' This article critically analyzes the court's rejection of this argument, highlighting the statutory considerations under Sections 9, 11, and 31(1) of the Trademarks Act 1999.

Background:

The subject matter at hand involves an appeal filed against the interim injunction granted to the plaintiff, who claims exclusive rights to the trademark 'HARA PATTA.' The plaintiff alleges that the defendant's use of the trademark 'TAZZA PATTA' infringes upon their registered trademark and raises issues related to common usage and the presumption of validity.

Trademark Background:

The plaintiff, engaged in the detergent powder business since 1996 under the 'HARA PATTA' trademark, holds registrations under the Trademarks Act 1999 since 2002 and the Copyright Act 1957. The defendant, involved in a similar business under the 'TAZZA PATTA' trademark registered since 2019, faces allegations of engaging in identical business activities.

Presumption of Validity:

The court acknowledges the statutory presumption of validity under Section 31(1) of the Act for registered marks. However, the court emphasizes that this presumption can be challenged if evidence suggests that the mark was not registrable ex-facie. The plaintiff's trademark, 'HARA PATTA,' was deemed valid under Section 31(1) despite the appellant's argument challenging the common usage of the term 'PATTA.'

Rejection of Common Usage Argument:

The appellant contends that the term 'PATTA' is commonly used in trade, and exclusive rights should not be granted. The court rejects this argument, emphasizing that the plaintiff's trademark, 'HARA PATTA,' does not suffer from any statutory handicaps outlined in Section 9 or Section 11. Consequently, the court rejects the characterization of 'HARA PATTA' as 'publici juris,' asserting that its validity is presumed at the prima facie stage under Section 31(1).

Deceptive Similarity:

The court further dismisses the appellant's claim that the entire 'HARA PATTA' mark is 'publici juris,' limiting this characterization to the term 'PATTA' alone. Consequently, the court finds the defendant's 'TAZZA PATTA' mark deceptively similar to the plaintiff's 'HARA PATTA' mark, leading to the dismissal of the appeal.

The Concluding Note:

This case underscores the futility of argument that only part of registered Trademark being common to Trade. The appellant's contention rests on the assertion that the term 'PATTA' is a common element in trade and, therefore, exclusive rights should not be conferred. The court finds that the plaintiff's mark 'HARA PATTA' does not suffer from any statutory handicaps mentioned in these sections.

The Case Law Discussed:

Case Title: Sai Chemicals Vs Jai Chemical Works

Date of Judgement/Order:17.01.2024

Case No. First Appeal from Order No.1623 of 2023

Neutral Citation: 2024:AHC:7630

Name of Hon'ble Court: Allahabad  High Court

Name of Hon'ble Judge: Rohit Ranjan Agarwal, 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,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Allied Blenders Distillers Pvt. Ltd. Vs Hermes Distillery Private Limited

Trademark Infringement and the Perils of "Smart Copying"

Introduction:

The recent case before the Hon'ble High Court of Delhi sheds light on the nuances of trademark infringement and the concept of "smart copying." In this matter, the court restrained the defendants, emphasizing that even when adopting a strategy of intelligent imitation, it does not serve as a defense in cases of trademark infringement. This article delves into the legal intricacies of the case, drawing parallels with earlier judicial observations and analyzing the implications of "smart copying."

Judicial Precedent: The Balancing Act:

The judgment at hand resonates with the wisdom shared by Hon'ble Justice Shri Manmohan in the case of Marico Limited Vs. Mr. Mukesh Kumar (Judgement dated 27.08.2018 passed in CS(COMM) 1569/2016, reported as AIR Online 2018 Del 1322). Justice Shri Manmohan, in his 2018 judgment, aptly noted, "The most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts." This observation, borrowed from Baker v. Master Printers Union of New Jersey,[47 USPQ 69 (D.N.J.1940)] sets the tone for understanding the delicate balance between imitation and differentiation.

Factual Matrix: OFFICER'S CHOICE vs. PEACE MAKER

In the recent case, the plaintiff's trademark was OFFICER'S CHOICE, characterized by a red and white color trade dress. On the other hand, the defendant's trademark was PEACE MAKER, also featuring a red and white color trade dress. The defendant argued that red and white color trade dress was commonly used by various parties and contended that the competing trademarks, OFFICER'S CHOICE and PEACE MAKER, were distinct.

Court's Analysis: Unraveling the Threads of "Smart Copying"

Despite the defendant's assertions, the Hon'ble High Court of Delhi exercised restraint, discerning a clear attempt at "smart copying." The court acknowledged that while the defendant highlighted the use of red and white color trade dress by various parties, the prima facie analysis revealed a conspicuous effort to engage in intelligent imitation. The court observed that the differences, as illustrated in the chart, were overshadowed by the broad similarities at first glance, pushing the distinctions into obscurity.

Conclusion: The Limits of Intelligent Imitation:

In trademark infringement cases, the judgment highlights the court's skepticism towards strategies of "smart copying." The decision underscores that merely pointing out differences in a meticulous chart may not absolve a defendant if the overarching similarities are glaring. This raises important questions about the boundaries of intelligent imitation and the extent to which courts will scrutinize attempts to confuse the public while simultaneously attempting to navigate legal defenses.

The Case Law Discussed:

Case Title: Allied Blenders Distillers Pvt. Ltd. Vs Hermes Distillery Private Limited

Date of Judgement/Order:15.01.2024

Case No. CS Comm 274 of 2021

Neutral Citation: 2024:DHC:288

Name of Hon'ble Court: Delhi High Court

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

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Rectification of a Registered Trademark Based on Non-Use

Introduction:

The cancellation of a registered trademark on the grounds of non-use is a significant aspect of trademark law, as outlined in Section 47 of the Trademarks Act 1999. This article delves into a specific case heard by the Hon'ble High Court of Delhi, involving the registered trademark 'BAOJI,' registered under No. 1530274 in Class 25.

Scope of Section 47 and Necessary Conditions:

Section 47 of the Trademarks Act 1999 allows for the cancellation of a registered trademark based on non-use. However, the Hon'ble High Court emphasized that a successful challenge under this section necessitates demonstrating a continuous non-use for a minimum of five years from the date of entry into the register up to three months before the application for removal.

Case Analysis:

In the case under consideration, the registration certificate for the 'BAOJI' mark was issued on December 26, 2013, officially entering the register. The rectification application was filed on August 10, 2020. Accordingly, the critical date for assessing the use of the mark was set as May 10, 2020, three months before the rectification application.

The Court's Observations:

The Hon'ble High Court scrutinized the evidence and observed that sale invoices submitted into the record indicated consistent transactions by Respondent No. 1 using the 'BAOJI' mark from 2012 through 2022. This unbroken chain of evidence unequivocally established a continuous and uninterrupted use of the trademark over a significant period.

The concluding Note:

In light of the court's analysis and interpretation of Section 47, the cancellation petition was dismissed. This case underscores the importance of providing concrete evidence of continuous non-use within the specified timeframe to succeed in challenging a registered trademark on grounds of non-use.

The Case Law Discussed:

Case Title: Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Date of Judgement/Order:05.01.2024

Case No. C.O. (COMM.IPD-TM) 100/2021  

Neutral Citation: 2024:DHC:112

Name of Hon'ble 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,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539