Google LLC Vs. DRS Logistics (P) Ltd.

Trademark infringement and Google Ad keywords 

Introduction: The case revolves around whether the use of a trademark as a keyword in Google Ads constitutes "use" under the Trade Marks Act, 1999 and if Google can claim protection as an intermediary under Section 79 of the Information Technology Act, 2000. DRS Logistics, the plaintiff, alleged that Google allowed third parties to use its trademark "Agarwal Packers and Movers" as a keyword, leading to traffic diversion to competitors' websites. Google contended that using trademarks as keywords did not amount to infringement under the Trade Marks Act and that it was protected under intermediary safe harbor provisions of the IT Act.

Factual Background: Google LLC, a US-based company, operates the Google Search Engine and Google Ads Programme. Its Indian subsidiary, Google India Private Limited, acts as a reseller of the Ads Programme in India. DRS Logistics is engaged in packaging, moving, and logistics services and owns the trademark "Agarwal Packers and Movers", which it claims has gained reputation and goodwill.

DRS alleged that competitors were using its registered trademark as keywords to appear in Google Ads, misleading customers and diverting traffic. The Google Ads Programme allows advertisers to bid for keywords, and Google ranks ads based on Quality Score and Maximum Cost Per Click (CPC). DRS claimed that Google's auction model encouraged trademark misuse for monetary gain.

Procedural Background:DRS filed a suit under Order 39, Rules 1 and 2 of the CPC for an injunction against Google from permitting third parties to use its trademark as keywords. The Single Judge ruled in favor of DRS, holding that using trademarks as keywords constitutes "use" under the Trade Marks Act, 1999 and that Google could not claim safe harbor protection under Section 79 of the IT Act. Google appealed against this decision before the Division Bench of the Delhi High Court.

Issues Involved: Whether the use of a registered trademark as a keyword in Google Ads constitutes "use" under the Trade Marks Act, 1999? 

Submissions of the Parties: DRS contended that the use of its trademark in Google Ads led to consumer confusion and amounted to passing off. It argued that Google actively promoted the use of trademarks as keywords, allowing competitors to benefit unfairly from DRS’s reputation. DRS also claimed that Google’s Keyword Planner tool encouraged advertisers to select well-known trademarks to maximize ad visibility.

Google argued that the use of a trademark as a keyword did not qualify as use in commerce under the Trade Marks Act, 1999, as it was not visible to consumers. It relied on international decisions, including Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd. (2016 FCA 255) and Intercity Group (NZ) Ltd. v. Nakedbus NZ Ltd. (2014 NZHC 124), where courts ruled that using trademarks as keywords does not constitute "use" for infringement claims. Google also asserted that it was a neutral intermediary and could not be held liable for advertisers’ actions under Section 79 of the IT Act.

Discussion on Judgments and Citations:The court examined multiple judgments on keyword advertising. It referred to the European Court of Justice's ruling in Google France SARL v. Louis Vuitton Malletier SA (C-236/08 to C-238/08), which held that using trademarks as keywords could amount to infringement if it caused confusion. The court also cited Rescuecom Corp. v. Google Inc. (562 F.3d 123 (2d Cir. 2009)), where a US court ruled that selling trademarks as keywords constituted use under the Lanham Act.

In contrast, the Australian case of Veda Advantage Ltd. v. Malouf Group Enterprises Pty Ltd. (2016 FCA 255) held that using a trademark as a keyword did not amount to trademark use, as keywords were not visible to consumers. Similarly, in NZ Fintech Ltd. v. Credit Corp Financial Solutions Pty Ltd. (2019 NZHC 654), the New Zealand High Court ruled that Google’s keyword advertising model did not amount to trademark use.

The court distinguished these foreign judgments by emphasizing that Indian trademark law does not require "visual representation" for use. It relied on Hamdard National Foundation v. Hussain Dalal (2013 SCC OnLine Del 2289), where the Delhi High Court recognized "invisible use" of trademarks as a form of infringement. The court also cited Amway India Enterprises Pvt. Ltd. v. 1MG Technologies Pvt. Ltd. (2019 SCC OnLine Del 9061), which held that meta-tags and keywords can infringe a trademark if they divert traffic from the trademark owner.

Reasoning and Analysis of the Judge: The court held that using trademarks as keywords in Google Ads qualifies as "use" under the Trade Marks Act, 1999, as it influences consumer behavior and affects market competition. It rejected Google's argument that keywords were invisible to consumers, stating that the economic function of a trademark is to attract customers, and any unauthorized use that diverts traffic undermines its purpose.

Regarding Section 79 of the IT Act, the court ruled that Google does not qualify as a passive intermediary because it actively participates in ad placement and profits from keyword sales. The court noted that Google curates ads using its algorithms and Keyword Planner tool, making it an active player rather than a neutral intermediary.

The court also emphasized that Google's policies differed across jurisdictions, restricting trademark use in Europe but allowing it in India, thereby failing to exercise a higher duty of care in protecting trademarks.

Final Decision: The court upheld the Single Judge’s ruling and directed Google to:

Investigate complaints regarding unauthorized use of trademarks as keywords. Review whether Google Ads result in trademark infringement or passing off. Remove ads that violate trademark rights. Google was denied safe harbor protection under Section 79 of the IT Act.

Law Settled in This Case: Using trademarks as keywords in Google Ads constitutes "use" under the Trade Marks Act, 1999. Such use can amount to trademark infringement if it misleads consumers or diverts traffic unfairly. Google is not entitled to intermediary protection under Section 79 of the IT Act if it actively participates in ad placement. Invisible use of a trademark (such as in keywords) can amount to infringement if it affects the economic function of the mark.

Case Title: Google LLC Vs. DRS Logistics (P) Ltd. 

Date of Order: August 10, 2023

Case No.: FAO(OS)(COMM) 2/2022 

Neutral Citation: Not specified

Court: Delhi High Court

Judges: Hon'ble Justice Vibhu Bakhru and Justice Amit Mahajan

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Glaxo Smithkline Consumer Healthcare Vs. Amigo Brushes Private Limited

A slight modification of an existing design does not confer exclusive rights.

Introduction:The case of Glaxo Smithkline Consumer Healthcare vs. Amigo Brushes Private Limited & Anr. revolves around an alleged infringement of a registered toothbrush design. The plaintiff, a global healthcare company, sought an interlocutory injunction restraining the defendant from manufacturing, selling, or offering for sale toothbrushes that were claimed to be an obvious and fraudulent imitation of the plaintiff’s registered design. The primary issues in the case were whether the defendant had infringed the plaintiff’s registered design and whether the plaintiff was entitled to an interlocutory injunction.

Factual Background:Glaxo Smithkline Consumer Healthcare, a German company, was engaged in the healthcare sector, including the design and sale of toothbrushes. The company obtained a design registration (No. 183197) dated February 15, 2000, in Class 3 for toothbrushes. The design was claimed to be novel and unique. Under the Designs Act, 2000, this registration granted the plaintiff copyright protection for five years, extendable by two successive periods of five years each. The plaintiff also secured corresponding design registrations in multiple countries.

In 2003, the plaintiff discovered that defendant No. 2, Hindustan Lever Limited (HLL), was selling toothbrushes under the brand name "Pepsodent Cushion," which was alleged to be a fraudulent imitation of the plaintiff's design. The packaging of the toothbrush disclosed that it was manufactured by Amigo Brushes Private Limited, which was initially named as defendant No. 1 in the suit. The plaintiff had previously initiated legal proceedings against HLL in another suit (CS No. 2515/96), where the interim relief was denied. The plaintiff had also filed copyright infringement suits against HLL in the Bombay High Court.

HLL, in its defense, contended that it was merely a marketer of the toothbrushes, not the manufacturer. The toothbrush handles were imported from China by Seema Impex, which supplied them to Amigo Brushes Pvt. Ltd. for bristling and finishing. The final product was then marketed by HLL under its brand. The defendant argued that the plaintiff’s design lacked novelty and was already in the public domain due to prior publication in the British Dental Journal. It also claimed that the plaintiff’s design was primarily functional and thus ineligible for protection under the Designs Act.

Procedural Background:The plaintiff sought a permanent injunction against the defendants, along with interim relief under Order 39, Rules 1 and 2 of the CPC. After service of notice, defendant No. 2, HLL, contested the application, while the plaintiff withdrew its claims against defendant No. 1, Amigo Brushes Pvt. Ltd. The case proceeded against HLL alone. The defendant argued that the suit was bad for non-joinder of necessary parties, including the Chinese manufacturer and the importer, Seema Impex.

The plaintiff contended that it was entitled to interim relief based on the novelty of its design and the defendant’s deliberate imitation. It submitted that the defendant had previously attempted to imitate its designs and was aware of the plaintiff’s rights. The defendant, however, claimed that the plaintiff’s design lacked originality, had been previously published, and was primarily functional. The defendant also argued that the plaintiff had delayed in filing the suit and had misrepresented facts.

Issues Involved: Whether the defendant’s toothbrush was a fraudulent or obvious imitation of the plaintiff’s registered design, amounting to design infringement? 

Submissions of the Parties:The plaintiff argued that its registered design was novel and had not been previously published. It contended that the defendant had knowingly copied its design to deceive consumers. The plaintiff relied on Castrol India Ltd. v. Tide Water Oil Co. Ltd. (1996 PTC 202) to assert that fraudulent imitation was evident from the similarities in shape, configuration, and ornamentation. It also cited Walker & Co. v. A.G. Scott & Co. (1892 RPC 482) to argue that even an arrangement of well-known parts could constitute a new design.

The defendant countered that the plaintiff’s design lacked novelty and was published in the British Dental Journal before registration, making it unenforceable under Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure (2000 PTC 177). The defendant relied on AMP Incorporated v. Utilux Proprietary Ltd. (1972 RPC 103) and Stenor Ltd. v. Whitesides (1946 RPC 81) to argue that functional designs were not protectable. It also cited Dover Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910 RPC 498) to contend that mere trade variants did not constitute a new design.

Discussion on Judgments and Citations:The court analyzed precedents cited by both parties. AMP Incorporated v. Utilux Proprietary Ltd. (1972 RPC 103) held that functional features dictated solely by necessity cannot be protected as designs. This was applied to reject the plaintiff’s claim that the thickness of the handle was novel. Stenor Ltd. v. Whitesides (1946 RPC 81) emphasized that small mechanical variations do not create a new design and was used to counter the plaintiff’s argument that its toothbrush had a unique aesthetic appeal. Dover Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910 RPC 498) established that a design must be truly original, not just a variation of existing products, leading the court to find that the plaintiff’s handle was merely a trade variant. Smithkline Beecham Consumer Healthcare GmbH v. G.D. Rathore (2002 PTC 243 (Del)) had previously denied an injunction for a similar toothbrush due to lack of distinctiveness, which the court followed. Castrol India Ltd. v. Tide Water Oil Co. Ltd. (1996 PTC 202) was cited by the plaintiff to argue fraudulent imitation, but the court found the comparison unpersuasive.

Reasoning and Analysis of the Judge:The court ruled that the plaintiff’s design was primarily functional and lacked originality. The court held that the plaintiff’s claim was limited to the handle grip, which was a necessary functional component and not a standalone article under Section 2(a) of the Designs Act, 2000. The thickness of the handle was dictated by ergonomics, making it unprotectable under AMP Incorporated v. Utilux Proprietary Ltd. Prior publication in the British Dental Journal invalidated the claim of novelty. The plaintiff had suppressed material facts regarding previous cases where similar claims were rejected. The defendant’s product had minor differences, making it distinguishable.

Final Decision: The court refused to grant an interlocutory injunction, stating that the plaintiff had not established a prima facie case. The balance of convenience was in favor of the defendant, and the plaintiff would not suffer irreparable harm since it was not selling the toothbrush in India. The suit was not dismissed but was set for trial on merits.

Law Settled in This Case: Functional designs are not protectable under the Designs Act, 2000. A design must have an aesthetic appeal beyond mere utility. Prior publication can invalidate a design registration. If a design has been publicly disclosed before registration, it loses novelty. Trade variants do not qualify as new designs. A slight modification of an existing design does not confer exclusive rights. Suppression of material facts can disqualify a party from obtaining an interim injunction. Courts expect full disclosure of relevant proceedings.

Case Title: Glaxo Smithkline Vs. Amigo Brushes Private Limited 

Date of Order: December 11, 2003 

Citation: 2004 (28) PTC 1 (DEL) 

Court: Delhi High Court 

Judge: Hon'ble Justice Mahmood Ali Khan

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Diageo Brands Vs Alcobrew Distilleries India Pvt Ltd

The standards for evaluating novelty and originality differ from the standards for determining infringement

Introduction:The case of Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt. Ltd. before the Delhi High Court concerns the enforcement of rights under the Designs Act, 2000. The plaintiffs alleged piracy of their registered bottle design used for alcoholic beverages. The court examined the fundamental principles governing the assessment of novelty and originality in registered designs vis-à-vis prior art and the criteria for determining infringement under Section 22 of the Designs Act.

Factual Background:The plaintiffs, Diageo Brands B.V. and its Indian licensee United Spirits Ltd., are part of the globally renowned Diageo Group, which manufactures and sells several popular liquor brands. The plaintiffs are the proprietors of a registered design, Design No. 306577, covering the shape and configuration of a 180 ml bottle, referred to as the “Hipster.” The plaintiffs claim that the Hipster bottle, inspired by smartphone aesthetics, has distinctive features including a rectangular shape, symmetrical edges, rounded shoulders, a ‘V’ shaped neck, plateau-like raised front and rear walls, a rimmed rounded cap, and a dimpled bottom.

The defendant, Alcobrew Distilleries India Pvt. Ltd., sells its whisky product “Golfer’s Shot” in a bottle that the plaintiffs allege infringes their registered design. The plaintiffs pointed out that Alcobrew previously sold its 180 ml products in a differently shaped bottle but switched to the alleged infringing design after the success of the Hipster bottle.

Procedural Background:The plaintiffs filed a suit for injunction before the Delhi High Court under Section 22 of the Designs Act, 2000, and also sought to restrain the defendant from using the tagline “Pocket Shot,” allegedly similar to the plaintiffs’ “Pocket Scotch.” The plaintiffs relied on a prior favorable decision in Diageo Brands B.V. & Anr. vs. Great Galleon Ventures Pvt. Ltd., where the same design was protected against a near-identical infringing product. The defendant contested the interim relief application under Order XXXIX Rules 1 and 2 CPC, arguing that the design lacked novelty due to prior publication and that there were clear differences between its product and the plaintiffs’ Hipster bottle.

Issues Involved: Whether the plaintiffs' registered design is novel and original as against prior art?Whether the standards for evaluating novelty and originality differ from the standards for determining infringement?

Submissions of Parties: The plaintiffs argued that the design's novelty had been upheld in Diageo v. Great Galleon and that the defendant’s product imitated all the essential features of the registered design. They further submitted that the comparison between the registered design and prior art is distinct from the assessment of infringement between the registered design and the defendant's product, which is judged from the perspective of the ordinary consumer.  The defendant argued that the Hipster design lacked novelty and was similar to earlier designs such as US Design No. D562138. The defendant also submitted that the differences in the defendant’s product — including dimensions, roundness of edges, and neck shape — were sufficient to avoid infringement.

Discussion on Judgments Cited:  The court referred to multiple judgments to clarify the distinction between novelty analysis and infringement analysis and to identify the legal standards applicable in design law cases.

B. Chawla & Sons vs. Bright Auto Industries, AIR 1981 Delhi 95:Context: Cited by the defendant to establish that novelty must be judged by an “instructed eye,” i.e., an individual aware of prior art and common trade practices. Law laid down: The Delhi High Court held that novelty and originality are to be judged by an instructed person familiar with common trade knowledge. The mere introduction of ordinary trade variants into an old design does not render it new or original.

Negretti & Zambra v. WF Stanley & Co., (1925) 42 RPC 358: Context: Cited by the defendant to argue that for a humble or basic design, infringement requires virtual identity between the registered design and the allegedly infringing product.  Law laid down: The Chancery Division of the UK High Court held that in cases of simple designs, even small differences could be sufficient to defeat an infringement claim. The court emphasized that infringement must be judged “by the eye,” and minor but noticeable variations in appearance could be enough to distinguish two designs.

Phillips v. Harbro Rubber Co., (1920) 37 RPC 233: Context: Referred to reinforce the principle that novelty or originality requires more than mere trade variants and that the instructed eye is the proper standard.Law laid down: Lord Moulton held that a registered design must differ in a substantial manner from prior designs to be considered novel. The instructed eye standard was reaffirmed for novelty analysis.

Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd., 2017 SCC OnLine Del 8125: Context: Relied upon by the defendant to support the argument that infringement of a registered design must be assessed on the basis of an overall visual impression and not by isolating common trade features. Law laid down: The Delhi High Court held that design infringement requires an assessment of the overall appearance of the registered design compared to the alleged infringing design. Features common to the trade or minor variations that do not affect the overall visual impression are not actionable.

Castrol Ltd. v. Tide Water Oil Co. (India) Ltd., 1994 SCC OnLine Cal 303: Context: Referred to by the defendant to argue that not every resemblance amounts to infringement.  Law laid down: The Calcutta High Court held that imitation does not mean duplication, and the comparison must be of the design as a whole. A mere resemblance in certain parts or features is insufficient for infringement.

Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff, (1910) 27 RPC 498: Context: Cited by the defendant to argue that trivial or infinitesimal variations do not make a design registrable, and that newness must be confined to a substantial and significant part of the design. Law laid down: The court held that for a design to be registrable or to avoid infringement, there must be a substantial and non-trivial difference that creates a distinct identity in the eyes of an instructed person.

Reasoning and Analysis of Judge: The court recognized that the plaintiffs’ registered design had already been upheld as valid in Diageo v. Great Galleon. However, the court clarified that the standards for determining novelty and infringement differ. For novelty, the court emphasized that the standard is the “instructed eye,” aware of prior art and trade practices. Infringement, however, is determined from the perspective of the ordinary consumer or purchaser, i.e., whether the general public perceives the two designs as visually similar.

Applying this distinction, the court noted that while the Hipster design may be novel vis-à-vis the prior art, such as D562138, the question of infringement depended on whether the defendant’s Golfer’s Shot bottle was substantially similar to the Hipster design in the eyes of an ordinary buyer.The court carefully compared the two designs and found visible differences in the neck shape, shoulder configuration, dimensions, and finish of the bottles. It held that such differences would be perceptible to an ordinary consumer and would likely dispel confusion.

Once the Court finds that the distinguishing features in the suit design vis-à-vis prior art, on the basis of which the suit design claims originality and novelty, are also applicable to the impugned design vis-a-vis the suit design, the impugned design has necessarily to be treated as novel and original vis-à-vis the suit design. That conclusion, if arrived at, would rule out, altogether, the allegation of piracy.

The court rejected the plaintiffs’ argument that similarities in broad elements such as the “hip flask shape” or the rimmed cap were sufficient to establish piracy. The court held that these were common to the trade and not exclusive to the plaintiffs' registered design.

Final Decision: The court dismissed the plaintiffs’ interim injunction application, holding that the plaintiffs failed to establish a prima facie case of piracy under Section 22(1) of the Designs Act. However, the court allowed the suit to proceed to trial for full adjudication based on evidence.

Law Settled in this Case: The court clarified that the novelty of a registered design is to be assessed from the perspective of an instructed eye aware of prior art and industry practices. In contrast, design infringement or piracy under Section 22(1) must be evaluated from the viewpoint of the ordinary consumer, based on the overall visual impression of the two designs. For humble or basic designs, infringement will only be found where the defendant’s design is nearly identical to the registered design, with minor differences being sufficient to avoid liability.Common trade features such as basic shapes or standard configurations cannot be monopolized through a registered design and cannot by themselves form the basis of an infringement claim.

Case Title: Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt. Ltd.

Date of Order: 19 December 2022

Case No.: CS(COMM) 30/2022 

Neutral Citation: 2022/DHC/005661

Name of Court: High Court of Delhi at New Delhi

Name of Judge: Hon’ble Mr. Justice C. Hari Shankar

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Devi Pesticides Private Ltd. Vs Shiv Agro Chemicals Industries

A registered trademark enjoys statutory protection and cannot be diluted merely by adding a prefix

Introduction: The case of Devi Pesticides Private Ltd. vs. Shiv Agro Chemicals Industries is a notable decision concerning trademark infringement and passing-off within the agrochemical industry. The dispute arose when Devi Pesticides Private Ltd. (the plaintiff), a company engaged in the manufacture and sale of fertilizers and flowering stimulants under the trademark "BOOM PLUS," alleged that Shiv Agro Chemicals Industries (the defendant) was selling similar products under the trademark "SUPER BOOM," resulting in confusion among consumers, particularly illiterate farmers.

Factual Background:The plaintiff, Devi Pesticides Private Ltd., has been in the business of manufacturing fertilizers and flowering stimulants since 1985 and has been using the trademark "BOOM PLUS" since 1987. The trademark "BOOM PLUS" was registered under Trademark No. 473179 in Class 1 on June 5, 1987, and the registration has been periodically renewed. Additionally, the plaintiff has four other registered trademarks associated with "BOOM PLUS." The plaintiff's products are well-established in the market, with significant annual sales of approximately one crore rupees, supported by regular advertising expenditure.

In July 2004, the plaintiff discovered that the defendant, Shiv Agro Chemicals Industries, was marketing fertilizers and flowering stimulants under the trademark "SUPER BOOM." The plaintiff claimed that "SUPER BOOM" was deceptively similar to "BOOM PLUS" and could cause confusion among the target consumers, who were mostly farmers with limited literacy.

Procedural Background:The plaintiff filed a suit for perm anent injunction against the defendant before the Madras High Court, seeking to restrain the defendant from infringing its registered trademark "BOOM PLUS" and from passing off its goods as those of the plaintiff. Along with the suit, the plaintiff filed two applications for interim injunction in O.A. Nos. 904 and 905 of 2004 in C.S. No. 862 of 2004.

The defendant filed a counter affidavit contesting the plaintiff's claims, asserting that the word "BOOM" was generic and commonly used in the agrochemical industry and that there was no similarity or likelihood of confusion between "BOOM PLUS" and "SUPER BOOM."

The learned Single Judge dismissed both applications for interim injunction on April 26, 2005, concluding that there was no visual or phonetic similarity between the two marks. Aggrieved by the order, the plaintiff preferred appeals before the Division Bench of the Madras High Court.

Issues Involved:Whether the use of "SUPER BOOM" by the defendant was deceptively similar to "BOOM PLUS" and amounted to passing off?

Submissions of Parties: The plaintiff contended that it had established substantial goodwill and reputation associated with its registered trademark "BOOM PLUS" since 1987. It argued that the defendant's use of "SUPER BOOM" was phonetically similar to "BOOM PLUS" and could cause confusion, particularly among the targeted consumers who were mostly illiterate farmers. The plaintiff also relied on its status as a prior user and owner of a registered trademark to assert exclusive rights under Section 28 of the Trademarks Act, 1999. It was further submitted that the addition of the word "SUPER" did not distinguish the defendant's mark from the plaintiff’s.

The defendant countered that "BOOM" was a common and descriptive term used widely in the industry and lacked distinctiveness. It argued that the defendant's mark "SUPER BOOM" was visually and structurally different from "BOOM PLUS," and the two marks would not cause any confusion. The defendant further submitted that it had been using "SUPER BOOM" in the market for several months and had its independent goodwill.

Discussion on Judgments Cited:The plaintiff relied heavily on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, where the Supreme Court emphasized that phonetic similarity is a significant factor in determining trademark infringement, particularly when the goods are intended for consumption by illiterate or semi-literate people. The Court held that in cases of medicinal products or products used by ordinary people, the test of likelihood of confusion must be applied stringently.The court also referred to Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980, where it was held that if there is clear imitation or deceptive similarity, further evidence of actual confusion is not required. Another precedent considered was Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, where the Supreme Court held that if prima facie facts support the claim of infringement or passing off, an injunction should ordinarily be granted to protect the plaintiff’s goodwill and proprietary rights.

Reasoning and Analysis of Judge: The Division Bench analyzed the phonetic similarity between "BOOM PLUS" and "SUPER BOOM" and found that the dominant part of both marks was "BOOM," which could lead to consumer confusion, especially among the rural population. The court emphasized that phonetic similarity alone could suffice to establish infringement and passing off when the target consumers were illiterate farmers.The court noted that the plaintiff’s mark "BOOM PLUS" was a registered trademark since 1987, whereas the defendant's use of "SUPER BOOM" was recent and unregistered. The court rejected the defendant’s argument that "BOOM" was a generic term, emphasizing that a registered trademark enjoys statutory protection and cannot be diluted merely by adding a prefix such as "SUPER."The court observed that the products of both parties were identical (fertilizers and flowering stimulants) and shared common marketing channels, increasing the likelihood of confusion. The court further invoked Section 29(5) of the Trademarks Act, 1999, which clarifies that using a registered trademark as part of a trade name or business name also constitutes infringement.The court held that the Single Judge erred in disregarding the phonetic and conceptual similarities between the marks and failed to appreciate the likelihood of deception.

Final Decision:The Division Bench allowed the appeals, set aside the order of the learned Single Judge, and granted interim injunctions in favor of the plaintiff. The defendant was restrained from using the trademark "SUPER BOOM" or any other deceptively similar mark until the disposal of the suit.

Law Settled in this Case:The judgment reaffirmed that phonetic similarity is a critical determinant in trademark infringement and passing off actions, particularly where the target consumers are from vulnerable sections of society such as farmers or the unlettered public.  The decision clarified that a registered trademark holder has statutory rights to prevent the use of deceptively similar marks, even if the defendant appends common adjectives like "SUPER" to the infringing mark.The judgment highlighted that Section 29(5) of the Trademarks Act, 1999, widens the scope of infringement to include situations where the registered trademark is used as part of the business name or trade name.The court emphasized that the balance of convenience and irreparable injury in trademark disputes must be weighed carefully, especially when prior user rights and consumer protection are involved.

Case Title: Devi Pesticides Private Ltd. Vs Shiv Agro Chemicals Industries

Date of Order: 18 April 2006

Case No.: C.S. No. 862 of 2004

Neutral Citation: (2006) 2 MLJ 834, 2006 (32) PTC 434 (MAD)

Name of Court: Madras High Court

Name of Judge: Justice P. Sathasivam, Justice J.A.K. Sampathkumar.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Cipla Ltd. Vs. F. Hoffmann-La Roche Ltd.

Rejection of a subsequent patent application does not create a carve-out or exception in an earlier granted patent

Introduction:The case of Cipla Ltd. vs. F. Hoffmann-La Roche Ltd. & Anr. is a significant judgment in Indian patent jurisprudence, especially concerning pharmaceutical patents. The dispute centers around the alleged infringement and validity of a patent related to Erlotinib Hydrochloride, a life-saving cancer drug marketed by Roche as "Tarceva" and by Cipla as "Erlocip." The case involved core issues such as inventive step, application of Section 3(d) of the Patents Act, and the balance between intellectual property rights and public access to affordable medicines.

Factual Background: Roche applied for a patent in the United States on March 31, 1991, for Erlotinib Hydrochloride, which was granted as US Patent '498 on August 5, 1998. Subsequently, Roche filed an application in India on March 13, 1996, which was eventually granted as Indian Patent IN '774 on February 23, 2007. The patent covered Erlotinib Hydrochloride, an EGFR inhibitor used to treat non-small cell lung cancer (NSCLC).

Following further research, Roche discovered that Polymorph B of Erlotinib Hydrochloride exhibited greater thermodynamic stability and enhanced properties. Roche filed a separate patent application for Polymorph B in the United States (granted as US '221) and in India (DEL '507), but the Indian patent application for Polymorph B was rejected by the Controller of Patents. In the meantime, Cipla announced its intention to launch a generic version of Erlotinib Hydrochloride under the name "Erlocip." Roche alleged that Cipla’s product infringed its IN '774 patent.

Procedural Background:Roche approached the Delhi High Court in January 2008 seeking an injunction to restrain Cipla from manufacturing and selling Erlocip. The Single Judge of the Delhi High Court dismissed the interim injunction application on March 19, 2008, primarily considering the public interest involved in making life-saving drugs accessible and affordable to patients. Roche’s appeal against this decision was dismissed by the Division Bench on April 24, 2009. The Supreme Court also refused to entertain Roche’s special leave petition, and the matter proceeded to trial. The Single Judge eventually ruled on the validity of IN '774 and whether Cipla’s activities amounted to infringement.

Issues Involved:The primary issues in the case were whether IN '774 was liable to revocation due to lack of inventive step or being hit by Section 3(d) of the Patents Act, 1970? whether Cipla’s manufacture and sale of Erlocip infringed IN '774; and whether Roche failed to disclose relevant information under Section 8 of the Act, warranting revocation?

Submissions of Parties: Roche contended that IN '774 covered the entire molecule Erlotinib Hydrochloride, inclusive of all its polymorphs. Roche argued that the patented molecule was non-obvious over prior art, demonstrated improved efficacy, and was distinct from previous compounds. The rejection of the Polymorph B application (DEL '507) did not diminish the enforceability or scope of IN '774. Cipla’s manufacture and sale of Erlotinib Hydrochloride, regardless of its form, infringed IN '774.

Cipla argued that IN '774 lacked an inventive step as it was obvious from prior art, particularly Example 51 of EP '226. Cipla maintained that its product was based on Polymorph B of Erlotinib Hydrochloride, which was not covered under IN '774 but rather under the rejected DEL '507 application. Cipla further contended that Roche suppressed information about corresponding foreign patent applications, violating Section 8 of the Act. Cipla also emphasized that Section 3(d) barred patent protection for Polymorph B as it was a mere new form of a known substance without proven enhancement of efficacy.

Discussion of the Court on Subject Matter of the Patent:The court undertook a detailed examination of what constituted the subject matter of IN '774. The court held that IN '774 covered the compound Erlotinib Hydrochloride itself, as described in Claim 1 of the patent, which was independent of the crystalline form (i.e., polymorphic forms A or B). The court interpreted that the subject matter of IN '774 was a chemical compound characterized by its molecular structure, specifically "[6,7-bis(2-methoxyethoxy)quinazolin-4-yl]-(3-ethynylphenyl)amine hydrochloride," and not its physical or crystalline forms.

The court further clarified that polymorphism, which refers to different crystalline arrangements of the same molecule, does not change the chemical identity of the compound. Polymorph A or B merely reflect different solid-state structures of the same chemical molecule, which is Erlotinib Hydrochloride in this case. Since the suit patent claimed the molecule itself, it necessarily covered all polymorphic forms unless the claims explicitly restricted the protection to a specific polymorph, which was not the case with IN '774.

The court noted that Cipla’s argument hinged on conflating the scope of the later DEL '507 application for Polymorph B (which was rejected) with the scope of IN '774. The rejection of DEL '507 under Section 3(d) did not retroactively narrow the coverage of IN '774. The court pointed out that the rejection of a subsequent patent application does not create a carve-out or exception in an earlier granted patent. The subject matter of IN '774 stood independently and remained valid.

The court held that Section 3(d) was intended to prevent the patenting of new forms of known substances that lacked enhanced efficacy, but it was not designed to retrospectively affect the enforceability of valid patents already granted on the parent molecule. Therefore, the invention covered by IN '774 was not barred by Section 3(d) since the patent was granted for the base molecule itself, and not for any specific polymorphic form.

Reasoning and Analysis of the Judge:The Division Bench held that IN '774 granted Roche rights over Erlotinib Hydrochloride, including all its polymorphic forms, as polymorphs are merely different crystalline forms of the same compound. The rejection of DEL '507 under Section 3(d) did not limit the scope of IN '774. Section 3(d) was a filter for patent eligibility but did not operate as a defense against infringement once a valid patent had been granted for the base molecule.

The court emphasized that patent claims should be construed in their plain and ordinary meaning, in accordance with the language of the specification. It rejected Cipla’s argument that Polymorph B should be excluded from the scope of IN '774 merely because a separate patent application for Polymorph B had been rejected under Section 3(d). The court further reasoned that even though polymorphs may exhibit different physical properties, they remain the same chemical entity.

On the issue of non-disclosure under Section 8, the court acknowledged that Roche had not disclosed certain information regarding corresponding foreign applications. However, it exercised discretion under Section 64(1)(m) and refused to revoke the patent solely on this procedural ground, considering that such non-disclosure did not prejudice Cipla’s defense on the merits.

Final Decision:The Division Bench reversed the Single Judge’s decision, holding that Cipla’s Erlocip, being Erlotinib Hydrochloride, infringed Roche’s IN '774 patent. The court upheld the validity of IN '774, ruling that the patent was not liable for revocation based on the grounds raised by Cipla, including lack of inventive step and the Section 3(d) challenge.

Law Settled in this Case:The judgment clarified that once a compound is patented, all polymorphic forms of that compound are covered by the patent unless explicitly excluded. Section 3(d) cannot be used as a defense to infringement; it is applicable at the patent grant stage to filter what constitutes an invention. Procedural lapses such as non-disclosure under Section 8 do not automatically result in patent revocation. The court reaffirmed that patent claims must be interpreted according to their plain meaning and within the context of the specification, without importing limitations from prosecution history or from related but rejected applications.

Case Title: Cipla Ltd. Vs. F. Hoffmann-La Roche Ltd. & Anr.

Date of Order: 27 November 2015

Case No.: RFA(OS) 92/2012 & RFA(OS) 103/2012

Name of Court: Delhi High Court

Name of Judge: Hon'ble Judges Shri Pradeep Nandrajog, Mukta Gupta

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Chanel Ltd. Vs Sunder Chemicals Agarbati

Phonetic similarity alone can be sufficient to establish trademark infringement and passing off, even if visual differences exist

Introduction:The case involves a trademark dispute where the plaintiff, Chanel Ltd., alleged infringement of its registered trademark "CHANEL" by the defendant, Sunder Chemicals Agarbati Works (P) Ltd., which was using the mark "SHANELLE" for perfumes. The plaintiff sought an interim injunction to restrain the defendant from using a mark that was allegedly deceptively similar to its well-known trademark. The Delhi High Court considered whether phonetic similarity and the possibility of consumer confusion justified granting interim relief.

Detailed Factual Background: Chanel Ltd., a globally recognized manufacturer of perfumes and cosmetics, has held the "CHANEL" trademark since 1925. The trademark, derived from the surname of its French founder, has been extensively used and promoted worldwide. The plaintiff reported sales exceeding Rs. 5000 million in the three years preceding the suit and an annual advertising expenditure of approximately Rs. 500 million.

The defendant, Sunder Chemicals Agarbati Works (P) Ltd., launched a perfume brand under the name "SHANELLE." Chanel Ltd. claimed that "SHANELLE" was deceptively similar to "CHANEL," especially in phonetic terms, and was likely to mislead consumers. The defendant contended that its trademark was visually distinct and that there was a significant delay in the plaintiff's legal action.

Detailed Procedural Background:Chanel Ltd. filed a suit before the Delhi High Court for trademark infringement and passing off, seeking a permanent injunction, damages, and other reliefs. The plaintiff also filed an interim application under Order 39 Rules 1 and 2 of the Code of Civil Procedure (CPC) for an immediate injunction restraining the defendant from using "SHANELLE."

The defendant opposed the interim relief, arguing that "SHANELLE" was not deceptively similar to "CHANEL" and that the plaintiff had delayed filing the suit, weakening its claim for injunction. The court analyzed the phonetic and visual similarities between the two marks and examined whether the plaintiff had established a strong prima facie case.

Issues Involved in the Case

Whether the trademark "SHANELLE" was deceptively similar to "CHANEL" and likely to cause confusion among consumers? Whether phonetic similarity alone was sufficient to establish trademark infringement and passing off?

Detailed Submission of Parties: The plaintiff argued that "CHANEL" was a globally reputed trademark with extensive recognition in India. It contended that the defendant’s mark "SHANELLE" was phonetically identical and created consumer confusion. The plaintiff relied on previous Supreme Court decisions affirming that phonetic similarity is a crucial factor in determining trademark infringement. The plaintiff also contended that even if there were minor visual differences in packaging, consumers primarily relied on brand names when purchasing perfumes.

The defendant asserted that "SHANELLE" had been in use for over 17 years and that there was no actual evidence of consumer confusion. It contended that Indian consumers would not confuse "CH" (as pronounced in "CHANEL") with "SH" (as in "SHANELLE") and that phonetic resemblance alone was insufficient to establish infringement. The defendant further argued that the plaintiff had delayed legal action, weakening its case for interim relief.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case:  Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618, was cited by the plaintiff to argue that trademark similarity can be visual, phonetic, or both. The Supreme Court held that when there is a strong likelihood of consumer confusion, minor differences in spelling or packaging do not negate infringement.Amritdhara Pharmacy v. Satya Deo Gupta, (1963) AIR SC 449, was referenced to emphasize that the test for deceptive similarity must consider the imperfect recollection of an average consumer. The Supreme Court held that a person with average intelligence and imperfect memory may confuse similar-sounding trademarks, making phonetic similarity a decisive factor.K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., (1970) AIR SC 146, was relied upon to highlight that phonetic resemblance alone can lead to deception, even if the marks are visually different. The Supreme Court refused registration of "Sri Andal" because of its phonetic similarity to "Sri Ambal," despite the absence of visual resemblance.Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, was cited in support of the passing off claim. The Supreme Court held that passing off protects traders from unfair competition, which includes misleading consumers into associating one brand with another. The judgment affirmed that a reputation built over decades must be safeguarded against dishonest adoption by competitors.

Detailed Reasoning and Analysis of the Judge: The Delhi High Court found that the plaintiff had established a strong prima facie case for trademark infringement and passing off. The court emphasized that phonetic similarity is a key determinant in cases of trademark confusion. It noted that "CH" in "CHANEL" is commonly pronounced as "SH," making "SHANELLE" nearly identical in sound. The court dismissed the defendant’s argument that Indian consumers distinguish between "CH" and "SH" sounds, citing judicial recognition of phonetic similarity in previous cases.The court rejected the defendant's delay argument, noting that the plaintiff had been engaged in opposition proceedings before the Trademark Registry and had promptly challenged the defendant’s trademark once administrative remedies were exhausted. The court reiterated that delay is not a valid defense in trademark infringement cases where deceptive similarity is apparent.

On the balance of convenience, the court found that allowing the defendant to continue using "SHANELLE" would cause irreparable harm to Chanel Ltd. by diluting its brand reputation. The court concluded that an interim injunction was necessary to prevent confusion and protect the plaintiff’s rights.

Final Decision: The Delhi High Court granted an interim injunction in favor of Chanel Ltd., restraining the defendant from manufacturing, selling, or advertising perfumes under the mark "SHANELLE" or any other mark deceptively similar to "CHANEL." The injunction was limited to the interim stage, with the final decision pending trial. The court directed the parties to proceed with evidence submission and scheduled further hearings for final adjudication.

Law Settled in This Case:Phonetic similarity alone can be sufficient to establish trademark infringement and passing off, even if visual differences exist. The test for deceptive similarity must consider the imperfect recollection of an average consumer, who may confuse similar-sounding marks. Delay in legal action does not bar injunctive relief when deceptive similarity is evident. Balance of convenience and irreparable harm favor the protection of well-established trademarks against potentially misleading variations.

Case Title: Chanel Ltd. Vs Sunder Chemicals Agarbati Works (P) Ltd.

Date of Order: 1 October 2002

Case No.: IA No. 11043/2001

Neutral Citation: 2003(26)PTC52(DEL)

Name of Court: Delhi High Court

Name of Judge: Hon'ble Justice Shri Justice S. Mukerjee

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Chandra Kishore Chaurasia Vs R A Perfumery Works Private Limited

Section 12A of the Commercial Courts Act is in applicable to suits involving urgent interim reliefs

Introduction:The case concerns a trademark and copyright dispute where the appellant, Chandra Kishore Chaurasia, filed a suit against R A Perfumery Works Private Limited for alleged infringement of his registered trademarks "1192" and "JAGMAG 1192" and copyright over their label and packaging. The dispute primarily involved the issue of territorial jurisdiction and compliance with the pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015. The learned Commercial Court had returned the plaint for lack of territorial jurisdiction, leading to this appeal before the Delhi High Court.

Detailed Factual Background: The appellant, Chandra Kishore Chaurasia, claimed ownership of the trademarks "1192" and "JAGMAG 1192," which were registered under Class 34 with the Trade Mark Registry since 2012. Additionally, he had obtained copyright registration for the artistic work, layout, and packaging design of "JAGMAG 1192" in 2014.  The appellant alleged that the respondent, R A Perfumery Works Private Limited, was manufacturing and selling chewing tobacco under the name "SIGNAL 1191," which was deceptively similar to his registered trademarks. The appellant contended that the respondent had deliberately adopted an identical label, color combination, and artistic elements, thereby infringing his copyright and passing off his products as those of the appellant.The appellant, a resident of Varanasi, claimed that the respondent, based in Kolkata, was clandestinely selling its infringing products in the markets of Delhi, particularly in Shahdara and Anand Vihar. He also alleged that the respondent was advertising and selling its goods online through platforms such as IndiaMart and the company's website, which were accessible in Delhi.

Detailed Procedural Background: The appellant filed a suit before the Commercial Court-II, Shahdara, Karkardooma, Delhi, seeking a permanent injunction against trademark infringement, copyright infringement, and passing off, along with rendition of accounts. The respondent filed an application under Order VII Rule 10 of the Code of Civil Procedure (CPC), seeking the return of the plaint for lack of territorial jurisdiction. The respondent also sought dismissal of the suit under Order VII Rule 11(d) CPC, arguing that the suit was not maintainable due to non-compliance with the mandatory pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015.

The learned Commercial Court ruled that the appellant had failed to establish territorial jurisdiction and directed the return of the plaint. However, it rejected the respondent’s argument regarding non-compliance with Section 12A, as the appellant had sought urgent interim relief.The appellant challenged the Commercial Court’s decision before the Delhi High Court, while the respondent filed a cross-objection regarding the rejection of its application under Order VII Rule 11(d) CPC.

Issues Involved in the Case: Whether the Delhi High Court had territorial jurisdiction to entertain the suit? Whether the plaint was liable to be rejected due to non-compliance with the pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015?

Detailed Submission of Parties: The appellant argued that territorial jurisdiction was established as the infringing products were being clandestinely sold in Delhi, and the respondent was advertising and offering its products for sale through interactive websites accessible in Delhi. The appellant contended that under Section 20(c) CPC, a part of the cause of action arose in Delhi, justifying the court's jurisdiction. The respondent contended that the appellant had not provided any concrete evidence of sales in Delhi and that mere apprehensions of future sales were insufficient to confer jurisdiction. The respondent further argued that the appellant had not complied with Section 12A of the Commercial Courts Act, which mandates pre-institution mediation for commercial suits not involving urgent interim reliefs.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case: D. Ramachandran v. R.V. Janakiraman, (1999) 3 SCC 267, was relied upon to emphasize that an objection regarding jurisdiction must be determined based on the averments in the plaint, accepting them as true. The Supreme Court had held that for preliminary objections, the court should consider whether any relief could be granted based on the plaintiff’s claims. Liverpool & London S.P. & I Association Ltd. v. M.V. Sea Success I & Anr., (2004) 9 SCC 512, reiterated that whether a plaint discloses a cause of action is a question of fact and must be determined by reading the plaint as a whole. Exphar Sa and Anr. v. Eupharma Laboratories Ltd. and Anr., (2004) 3 SCC 688, supported the principle that an objection to jurisdiction, when raised at a preliminary stage, must proceed on the assumption that the plaintiff's claims are true.RSPL Limited v. Mukesh Sharma & Anr., (2016) SCC OnLine Del 4285, held that objections to territorial jurisdiction under Order VII Rule 10 CPC must be construed after taking all averments in the plaint as correct.Patil Automation Private Limited and Ors. v. Rakheja Engineers Private Limited, 2022 SCC OnLine SC 1028, was cited by the respondent to argue that Section 12A of the Commercial Courts Act is mandatory. The Supreme Court had ruled that non-compliance with Section 12A would result in the rejection of the plaint unless the suit involved urgent interim reliefs.

Detailed Reasoning and Analysis of the Judge: The Delhi High Court observed that at the stage of deciding an application under Order VII Rule 10 CPC, the court must assume the plaintiff’s averments to be true. If the appellant had pleaded that the respondent was clandestinely selling its products in Delhi and advertising them online, these claims must be taken at face value for jurisdictional determination. The Commercial Court had erred by requiring the appellant to provide evidence of clandestine sales at the preliminary stage. The court noted that while actual proof might be required at a later stage, the allegations in the plaint were sufficient to establish a prima facie case for jurisdiction.Regarding Section 12A of the Commercial Courts Act, the court held that the requirement of pre-institution mediation does not apply to suits involving urgent interim reliefs. Since the appellant had sought such reliefs, there was no obligation to undergo mediation before filing the suit. The court rejected the respondent’s contention that the plaintiff should have sought exemption through a separate application.

Final Decision: The Delhi High Court set aside the Commercial Court’s order directing the return of the plaint and held that the suit was maintainable in Delhi. The cross-objection filed by the respondent regarding non-compliance with Section 12A was dismissed. The appeal and cross-objections were disposed of accordingly.

Law Settled in This Case:F or deciding an application under Order VII Rule 10 CPC, the court must assume the averments in the plaint to be true and not require evidence at the preliminary stage. Clandestine sales and online advertisements can be sufficient to establish territorial jurisdiction in intellectual property disputes. Section 12A of the Commercial Courts Act, 2015 does not apply to suits where urgent interim reliefs are sought. There is no requirement for a plaintiff to seek exemption from Section 12A through a separate application.

Case Title: Chandra Kishore Chaurasia vs R A Perfumery Works Private Limited

Date of Order: 27 October 2022

Case No.: FAO (COMM) 128/2021

Neutral Citation: 2022/DHC/004454

Name of Court: Delhi High Court

Name of Judges: Hon'ble Justice Shri Vibhu Bakhru, Hon'ble Justice Shri Amit Mahajan

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Carlsberg Breweries Vs Som Distilleries And Breweries Ltd.

A composite suit for design infringement and passing off in the form of trade dress is maintainable. Order II Rule 3 CPC allows joinder of multiple causes of action against the same defendant.

Introduction:The case revolves around a dispute regarding design infringement and passing off. Carlsberg Breweries A/S, the plaintiff, alleged that Som Distilleries and Breweries Ltd., the defendant, had infringed its registered design and engaged in passing off. The primary issue before the court was whether a composite suit combining claims of design infringement and passing off was maintainable. A learned single judge had earlier referred the matter for reconsideration of the precedent set in Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB), which held that such claims could not be combined in a single suit. A special five-judge bench was constituted to decide the legal question of whether a composite suit for design infringement and passing off was maintainable?

Detailed Factual Background:

Carlsberg Breweries is a global beer manufacturer that uses a distinctive bottle design and trade dress for its Carlsberg beer brand. The plaintiff had obtained a registered design for its bottle and claimed exclusivity over its overall appearance.Som Distilleries and Breweries Ltd. launched a competing beer brand with a bottle design and trade dress allegedly similar to Carlsberg’s. The plaintiff contended that the defendant’s bottle was deceptively similar and amounted to both design infringement and passing off. The plaintiff filed a composite suit seeking relief for infringement of its registered design and an injunction against passing off.The defendant contested the maintainability of the suit, citing the decision in Mohan Lal v. Sona Paint, which held that a suit for design infringement and passing off cannot be combined due to the different legal foundations of the two claims.

Detailed Procedural Background: Carlsberg Breweries filed a commercial suit before the Delhi High Court under the Commercial Courts Act, 2015, seeking an injunction, damages, and other reliefs against Som Distilleries and Breweries Ltd.  The defendant objected to the maintainability of the suit, arguing that as per the precedent in Mohan Lal v. Sona Paint, claims for design infringement and passing off had to be pursued separately. The single judge, considering the importance of the issue, referred the matter to a larger bench.  A five-judge special bench was constituted to decide whether the Mohan Lal precedent required reconsideration. During the pendency of the reference, the main dispute between the parties was settled amicably, but the court proceeded with the hearing due to the importance of the legal question.

Issues Involved in the Case:Whether a composite suit combining claims for design infringement and passing off is maintainable? Whether the decision in Mohan Lal v. Sona Paint correctly interpreted the provisions of the Code of Civil Procedure (CPC) regarding joinder of causes of action? Whether Order II Rule 3 CPC, which allows joinder of multiple causes of action against the same defendant, applies to cases involving design infringement and passing off?

Detailed Submissions of Parties:The plaintiff argued that Order II Rule 3 CPC explicitly permits joinder of multiple causes of action against the same defendant. The cause of action for both design infringement and passing off arose from the same transaction, and forcing the plaintiff to file separate suits would lead to multiplicity of litigation and an unnecessary burden on the judiciary. The plaintiff further contended that Mohan Lal had incorrectly interpreted the law by creating an artificial distinction between design infringement and passing off that was not supported by the CPC.

The defendant maintained that design infringement and passing off are fundamentally different legal claims. A design infringement claim is based on a statutory right arising from the Designs Act, 2000, while passing off is a common law remedy based on goodwill and deception. The defendant emphasized that Mohan Lal correctly held that different causes of action require separate suits, as the evidence and legal tests for proving design infringement and passing off are distinct.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case: Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB) was the key precedent under scrutiny. The full bench in Mohan Lal had ruled that a composite suit for design infringement and passing off was not maintainable because the causes of action were distinct. The court in Mohan Lal had relied on Order II Rule 2 CPC, which mandates that a suit must include the whole claim based on the same cause of action, and concluded that design infringement and passing off claims do not arise from the same cause of action.Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595 was cited by the plaintiff to argue that multiple causes of action can be joined in one suit if they arise from the same transaction and involve the same defendant. The Supreme Court in Dabur had recognized that different legal claims can be combined in one suit if they are connected and the court has jurisdiction over both claims.Paragon Rubber Industries v. Pragathi Rubber Mills, 2014 (57) PTC 1 was relied upon by the plaintiff to support the argument that commercial realities require a flexible approach to joinder of causes of action to prevent multiplicity of suits.Joginder Metal Works v. Alert India, 1997 PTC 17 was cited to highlight that a design registration does not automatically exclude the possibility of a passing off claim. The decision emphasized that design rights and passing off rights can co-exist and should not be treated as mutually exclusive.

Detailed Reasoning and Analysis of the Judge: The special bench of the Delhi High Court analyzed the reasoning in Mohan Lal and found it to be legally flawed. The court observed that Order II Rule 3 CPC clearly allows joinder of multiple causes of action against the same defendant. The argument that design infringement and passing off are legally distinct was found to be insufficient to deny the maintainability of a composite suit. The court held that forcing plaintiffs to file separate suits for design infringement and passing off would lead to unnecessary duplication of proceedings and wastage of judicial resources. It was noted that separate trials could be ordered under Order II Rule 6 CPC if necessary, but rejecting a composite suit outright was not justified. The court also pointed out that intellectual property rights often overlap, and legal remedies should be interpreted flexibly to provide effective relief. The court rejected the rigid interpretation in Mohan Lal and held that a composite suit for design infringement and passing off is maintainable.

Final Decision:The five-judge bench overruled Mohan Lal v. Sona Paint and held that a composite suit for design infringement and passing off is maintainable. The decision clarified that Order II Rule 3 CPC permits joinder of causes of action as long as they involve the same parties and arise from the same transaction.

Law Settled in This Case: A composite suit for design infringement and passing off is maintainable. Order II Rule 3 CPC allows joinder of multiple causes of action against the same defendant. Intellectual property disputes often involve overlapping rights, and courts should adopt a pragmatic approach to litigation. The decision in Mohan Lal v. Sona Paint, which mandated separate suits for design infringement and passing off, was overruled.

Case Title: Carlsberg Breweries Vs Som Distilleries And Breweries Ltd.

Date of Order: 14 December 2018

Case No.: C.S.(COMM) 690/2018

Neutral Citation: AIR 2019 DELHI 23, (2019) 2 CURCC 238, AIRONLINE 2018 DEL 2599

Name of Court: Delhi High Court

Name of Judges: Hon'ble Justice S. Ravindra Bhat, Hon'ble Justice Hima Kohli, Hon'ble Justice Vipin Sanghi, Hon'ble Justice Valmiki J. Mehta, Hon'ble Justice Vibhu Bakhru

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Cunniah & Co. Vs Balraj & Co

A copy need not be an exact reproduction; substantial similarity is sufficient for copyright infringement

Introduction:

The case revolves around an alleged infringement of copyright in an artistic work. The plaintiffs, C. Cunniah & Co., claimed that the defendants, Balraj & Co., had produced and sold a picture that was a colorable imitation of their copyrighted work. The plaintiffs sought an injunction, damages, and an account of profits. The trial court dismissed the suit, finding no infringement. On appeal, the court analyzed the similarities and differences between the two works and the principles governing copyright protection.

Detailed Factual Background:

C. Cunniah & Co. were merchants in Madras, engaged in selling pictures and picture frames. In 1932, an artist named T. M. Subramaniam created a picture of Lord Balasubramanya titled "Mayura Priya." On July 13, 1938, Subramaniam assigned the copyright of this picture to the plaintiffs, who began commercially producing and selling printed copies from 1940 onwards. Due to war-related scarcity of printing materials, sales were temporarily halted between 1946 and 1950 but resumed thereafter. In 1952, the plaintiffs registered the picture under the Trade Marks Act.

The plaintiffs later discovered that the defendants were selling a picture titled "Bala Murugan," which they claimed was a close imitation of "Mayura Priya." Despite being warned, the defendants refused to stop selling the allegedly infringing picture, leading to the lawsuit.

Detailed Procedural Background:

The plaintiffs filed a suit seeking an injunction restraining the defendants from printing and selling the "Bala Murugan" picture, damages of Rs. 2000 for copyright infringement, and an account of the profits earned by the defendants from the sale of the infringing picture. They also sought the seizure of unsold copies.

The defendants contended that their picture was an independent artistic work created by their artist, D.W. 1, without reference to "Mayura Priya." They also argued that no copyright could exist in a depiction of Lord Balasubramanya, as it was a common religious theme.

During trial, the plaintiffs abandoned their claim for trademark infringement since "Mayura Priya" was not used as a trademark. The trial judge, Justice Ramaswami, ruled that "Mayura Priya" was an original work entitled to copyright protection but found that "Bala Murugan" was an independent creation and dismissed the suit. The plaintiffs appealed.

Issues Involved in the Case:

Whether "Mayura Priya" was entitled to copyright protection?Whether "Bala Murugan" was a copy or colorable imitation of "Mayura Priya?" Whether the similarities between the two pictures indicated an infringement of copyright? 

Detailed Submission of Parties:

The plaintiffs argued that "Mayura Priya" was an original work and had acquired copyright protection. They contended that "Bala Murugan" was a direct imitation, with striking similarities in posture, expression, ornamentation, and other artistic elements. The plaintiffs relied on expert testimony and photographic comparisons to show that "Bala Murugan" was derived from "Mayura Priya" using a reversed-copying technique.

The defendants maintained that their artist created "Bala Murugan" independently based on conventional representations of Lord Balasubramanya. They pointed out various differences in color scheme, hand positioning, background details, and other elements. They argued that no one could claim copyright over a depiction of a widely recognized religious figure, and any similarities were either coincidental or derived from common artistic traditions.

Detailed Discussion on Judgments: 

Hanfsataengl v. W. H. Smith and Sons, 1905-1 Ch. 519, was cited to define what constitutes a "copy." The test laid down was that a copy is one that comes so close to the original that it suggests the original to anyone who sees it. Applying this test, the court examined whether "Bala Murugan" evoked "Mayura Priya" in the minds of viewers.

Corelli v. Gray, 1913-29 T.L.R. 570, was referred to for the principle that similarities between two works could arise from chance, a common source, or copying. The key legal issue was whether the defendants’ work was derived from the plaintiffs’ work.

Hanfstaengl v. Baines and Co., 1895 A.C. 20, was cited to highlight that determining infringement often depends on the overall impression the allegedly infringing work creates rather than merely counting similarities and differences.

Detailed Reasoning and Analysis of the Judge:

The appellate court disagreed with the trial judge's approach in assessing similarity. The correct test was whether a substantial part of the plaintiffs’ work was reproduced in the defendants’ work.

The court found striking similarities between the two pictures, particularly in the facial features of the deity, the positioning of ornaments, and the artistic details of the peacock and background. Expert evidence demonstrated that the defendants’ picture was likely created by reversing and slightly modifying "Mayura Priya," rather than being an independent artistic effort. The number of peacock feathers and their arrangement, the deity’s facial features, and the identical nature of ornaments further supported copying.

The appellate court noted that intelligent copying often introduces slight modifications to avoid direct duplication, but such changes do not negate infringement if substantial copying is evident. The judgment emphasized that copyright protects artistic skill and labor, even if the subject matter (a deity) is common. The defining feature is the artist’s unique expression, which was found to be copied in this case.

Final Decision:

The appellate court set aside the trial court’s judgment and ruled in favor of the plaintiffs. An injunction was granted restraining the defendants from selling or reproducing "Bala Murugan." The court awarded Rs. 500 in damages, as agreed upon by both parties. The claim for an account of profits was denied, as copyright law does not permit both damages and an account of profits for the same infringement.

Law Settled in This Case:

An artistic work is entitled to copyright protection even if it depicts a common religious theme, provided it involves original skill and labor. A copy need not be an exact reproduction; substantial similarity, especially in prominent features, is sufficient to establish infringement. Intelligent copying, which introduces minor modifications, does not escape liability if the core artistic elements are replicated. The proper test for infringement is whether the alleged copy evokes the original work in the minds of ordinary viewers, not whether consumers would mistake one work for another. Expert testimony and forensic analysis, such as reversed copying techniques, can be used to establish infringement.

Case Title: C. Cunniah & Co. Vs Balraj & Co.

Date of Order: 4 February 1959

Case No.: C.S. No. 127 of 1953

Neutral Citation: AIR 1961 Mad 111

Name of Court: Madras High Court

Name of Judge: Hon'ble Justice Ganapatia Pillai

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation. 

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Brooke Bond India Limited Vs Balaji Tea (India) Pvt. Ltd.

A publisher of an artistic work is presumed to own its copyright unless rebutted

Introduction:

The case revolves around allegations of trademark infringement, passing off, and copyright infringement by Brooke Bond India Limited against Balaji Tea (India) Pvt. Ltd. The dispute arises over the use of similar trade dress and artistic elements in packaging, leading to claims of deceptive similarity. The plaintiff sought an interim injunction to restrain the defendant from using the impugned label.

Detailed Factual Background:

Brooke Bond India Limited, a reputed tea manufacturer since 1912, marketed tea under the "Super Dust Tea" brand. The trade dress included a green background, white text for "Super Dust Tea," and a floral design in shades of red and pink. The plaintiff had registered multiple trademarks, and since 1987, introduced a yellow circle with "Super Dust Tea" in red and green.

In early 1989, the plaintiff noticed similar tea packaging in Nagpur and Visakhapatnam, allegedly introduced by Balaji Tea (India) Pvt. Ltd. The defendant's tea packets, labeled "Super Star Tea," had a strikingly similar color scheme, a yellow star replacing the plaintiff’s yellow circle, and floral designs mimicking the plaintiff’s label. The plaintiff argued that the defendant’s packaging was designed to mislead consumers and capitalize on its goodwill.

Detailed Procedural Background:

Brooke Bond India Limited filed a suit seeking an injunction against copyright infringement, an injunction against infringement of its registered trademarks under Nos. 301187 and 250152, an injunction restraining the defendant from passing off its goods as those of the plaintiff, and leave under Clause 14 of the Letters Patent to combine trademark and passing-off claims with the copyright infringement claim.

A learned single judge of the Madras High Court dismissed all interim injunction applications. The judge found no prima facie case for copyright infringement and held that the court lacked jurisdiction over the trademark and passing-off claims. The plaintiff appealed under Clause 15 of the Letters Patent.

Issues Involved in the Case:

Whether the defendant’s label infringed the plaintiff’s copyright in the artistic work? Whether the defendant’s label infringed the plaintiff’s registered trademarks? 

Detailed Submissions of Parties:

The plaintiff argued that the defendant’s tea packaging was deceptively similar and violated its registered trademarks and copyright. The trade dress and artistic elements had acquired distinctiveness and secondary meaning in the tea trade. The defendant's intent was to ride on the plaintiff’s goodwill and deceive consumers. The Madras High Court had jurisdiction under Section 62(2) of the Copyright Act since the plaintiff carried on business in Madras. Clause 14 of the Letters Patent should permit combining the claims to avoid multiplicity of litigation.

The defendant contended that it operated in Raipur, and its sales were confined to Madhya Pradesh and Orissa, negating jurisdiction in Madras. The trade dress elements used were common in the tea trade. It had independently conceived and used the "Super Star Tea" brand since 1988. No actual confusion had been reported. The plaintiff had no exclusive rights over the words “Super Dust” or "Tea." Clause 14 of the Letters Patent should not be invoked as the plaintiff had branches in cities where the alleged infringement occurred.

Detailed Discussion on Judgments and Citations Cited by Parties:

The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern was relied upon by the plaintiff to assert jurisdiction under Section 62(2) of the Copyright Act. The court reaffirmed that a plaintiff could sue where they carried on business.

Burroughs Wellcome (India) Limited v. G.K. Sharma, etc. (1989) 1 PLR 60 was relied upon by the plaintiff to justify combining copyright and trademark claims under Clause 14 of the Letters Patent. The Bombay High Court had permitted joinder in a similar factual matrix.

Tuticorin Alkali Chemicals and Fertilizers Limited v. Cochin Silicate and Glass Industries discussed the balance of convenience principle in granting relief.

Seshatri Row v. Nawab Askur Jung Aftaldowlah Mushral Mulk, ILR 30 Mad 438 was used by the defendant to argue against granting leave under Clause 14 based on inconvenience to a small trader.

Detailed Reasoning and Analysis of the Judge:

The division bench of the Madras High Court examined the correctness of the single judge’s findings. The court upheld the plaintiff’s right to sue in Madras for copyright infringement under Section 62(2) of the Copyright Act. However, it disagreed with the single judge’s reasoning that joinder of causes of action was inappropriate.

The court clarified that under Section 54 of the Copyright Act, a publisher of an anonymous or pseudonymous artistic work is presumed to be the copyright owner until proven otherwise. The single judge had wrongly required the plaintiff to disclose the author's identity.

The court emphasized avoiding multiplicity of litigation and found that since all claims arose from the same set of facts, joinder was appropriate. The defendant, despite being a small trader, would not suffer more inconvenience by defending all claims in one court rather than multiple courts.

The court found that the defendant's label had substantial similarities to the plaintiff’s label and upheld the prima facie case for copyright and trademark infringement, as well as passing off.

Final Decision:

The appeals were allowed. The suit was permitted to proceed for all claims in the Madras High Court. The court upheld jurisdiction under the Copyright Act and allowed joinder of causes of action under Clause 14 of the Letters Patent. The defendant undertook not to use the impugned label during the proceedings.

Law Settled in This Case:

Section 62(2) of the Copyright Act grants jurisdiction to a court where the plaintiff carries on business, even if the defendant operates elsewhere. Clause 14 of the Letters Patent should be liberally interpreted to avoid multiple suits where claims arise from the same transaction. A publisher of an artistic work is presumed to own its copyright unless rebutted. A strong prima facie case of deceptive similarity suffices for interim relief, even in the absence of direct consumer confusion evidence.

Case Title: Brooke Bond India Limited Vs Balaji Tea (India) Pvt. Ltd.

Date of Order: 25 November 1992

Case No.: O.S.A. No. 279 of 1989 

Neutral Citation: (1993) 2 MLJ 132

Name of Court: Madras High Court

Name of Judge: Hon'ble Justice Shri Mishra

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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi