Peps Industries Pvt. Ltd. Vs Kurl On Limited-MUKTA GUPTA-HJ

DATE OF JUDGEMENT: 16.03.2020
CASE NO:(CS) (COMM) 174/2019
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justice Mukta Gupta
CASE TITLE: Peps Industries Pvt. Ltd. Vs Kurl On Limited-MUKTA GUPTA-HJ

The Plaintiff has filed the subject matter Suit on the basis of proprietary rights in the trademark NOTURN in relation to mattress.

The Plaintiff alleged to be registered proprietor of the mark NOTURN since the year 2008.Though the trademark was filed as proposed to be used.

The subject matter Suit was filed against the Defendant as the Defendant was alleged to be using identical Trade mark NOTURN in relation to identical products.

The asserted that the same is the prior user of the Trademark NOTURN since the year 2007. The Defendant also took the Defense that it's user is also protected under the provision of Section 34 of the Trademarks Act 1999.

Let us see, what Section 34 of the Trademarks Act 1999 provides for. For ease in reference afore mentioned provision of Trademarks Act 1999 is reproduced as under:

34. Saving for vested rights. Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior:

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark.

The afore mentioned provision provides a safeguard to a prior user of the Trademark. If a party can prove user prior in point in time to that of the registration, or date of user of registered proprietor, which ever is earlier , then he may be protected under the provision of Trademarks Act 1999.

In fact this provision is meant for providing additional protection to a prior user of trade mark. The Hon'ble High Court of Delhi has reiterated this well settled proposition of law that the remedy of passing off is available against the Registered Proprietor.

The Trademark Registration is inconsequential in relation to relief pertaining to passing off, which is a common law remedy. Common law remedy is independent of Statutory remedy of Infringement.

The Hon'ble High Court of Delhi has observed that the Defendant has established its user since the year 2007. However in order to take advantage of Section 34 of the Trademarks Act 1999,the user has to be prior and continuous.

Though in the present case, the Hon'ble High Court of Delhi has discussed various bills and invoices put on record and after that observed that Defendant has established that it has been using the trademark NO TURN since the year 2007. However user of the Defendant was intermittent, hence the same was not given any benefit of Section 34 of Trademarks Act 1999.

However the Plaintiff was not granted injunction as the court observed that the Trademark NOTURN was descriptive in relation to mattress and that the Plaintiff has failed to prove any distinctiveness attached thereto.

As a summary it can be said that right of। prior user is better than any one including a registered proprietor. However in order to succeed in building up the case of prior use, as warranted under Section 34 of the Trademarks Act 1999, the party taking that defense must prove prior and continuous use. Intermittent and sporadic use of a trademark would not entitle a party to take advantage of Section 34 of Trademarks Act 1999.

Another important finding of the Hon'ble High Court of Delhi in the present case was that a descriptive Trade Mark can also be allowed be protected provided it proves the acquired distinctiveness. In the present case Plaintiff was non suited on the ground of failing in proving acquired distinctiveness in relation to its। descriptive Trade Mark NOTURN.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539

Peps Industries Pvt. Ltd. Vs Kurl On Limited-Navin Chawla-HJ

DATE OF JUDGEMENT: 13.07.2022
CASE NO:(CS) (COMM) 174/2019
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justice Navin Chawla
CASE TITLE: Peps Industries Pvt. Ltd. Vs Kurl On Limited

The Defendant has filed application under Section 124 of the Trademarks Act 1999,seeking stay of the suit proceeding pending cancellation petition filed by them against registered Trademarks of the Plaintiff.

The Defendant alleged that since they have filed cancellation Petition against the registered Trademarks of the Plaintiff prior to filing of the suit, the Suit proceeding is liable to be stayed.

However the Plaintiff alleged that the subject matter Suit is a composite Suit, comprising of Trademarks Infringement and passing off both. Hence the suit can not be stayed in so far as relief pertaining to passing off is concerned.

Let us see whether Section 124 of Trademarks Act 1999 is applicable to relief to infringement and passing off or not? For ease in reference, Section 124 of Trademarks Act 1999 is reproduced as under:

Section 124 in The Trade Marks Act, 1999
124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

(1) Where in any suit for infringement of a trade mark

(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defense under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,—

(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

From bare reading of Section 124 of Trademarks Act 1999,It is apparent that this provision is applicable only in relation to remedy pertaining to an action of Infringement of Trademarks.

In so far remedy of passing off is concerned, this provision has no applicability at all. The natural effect of this interpretation would be that this provision can not stay the suit for passing off to be proceeded further.

The Hon'ble High Court of Delhi, after relying upon the Judgement passed by the Hon'ble High Court of Delhi in Judgement reported as M/s. J.K. Oil Industries v. M/s. Adani Wilmar Limited, 2018 SCC OnLine Del 9367, , which have reiterated that afore mentioned principle, was pleased to stay the suit proceeding pertaining to Infringement of Trademark. However the Suit proceeding, in so far as it relate to passing off remedy, was ordered to be continued.

Thus if a suit comprised the relief of infringement of Trademark as well as passing off both, by virtue of operation of Section 124 of Trademarks Act, the suit ,in so far as it pertain to the remedy of infringement of Trademark, may be stayed , however the suit ,in so far as it relate to the remedy of passing off, will continue to proceed further.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539

Franco-Indian Pharmaceuticals Pvt. Ltd. Vs Pharmaceutical Institute of India Pvt. Ltd. & Anr

DATE OF JUDGEMENT: 12.07.2022

CASE NO:INTERIM APPLICATION (L) NO. 20488 OF 2022

IN COMMERCIAL SUIT (IP) (L) NO. 20480 OF 2022

NAME OF HON'BLE COURT: High Court of Judicature at Bombay

NAME OF HON'BLE JUDGE: The Honourable Justice R.I. CHAGLA

CASE TITLE: Franco-Indian Pharmaceuticals Pvt. Ltd. Vs Pharmaceutical Institute of India Pvt. Ltd. & Anr

The Plaintiff filed the subject matter Suit on the basis of proprietary rights in the Trademark/Colour Combination/Trade Dress DEXORANGE in relation to medicinal and pharmaceuticals products falling in class 05.

The Suit was filed against user of similar Trademark/Colour Combination/Trade Dress HEMOORANGE by the Defendant in relation to medicinal and pharmaceuticals products falling in class 05.

The Court observed that there exists likelihood of confusion and/or association of the Defendants' product bearing the mark 'HEMORANGE' with the product of the Plaintiff bearing the mark/label 'DEXORANGE'. The mark, colour combination, placement of material etc. of the label as adopted and used by the Defendants is very deceptively similar to that of the Plaintiff's mark/label. The Defendants have no justification for such adoption and use of the mark & label and the act of the Defendants are bound to lead to confusion and deception amongst the purchasing public and the trade.

Resultantly the Defendants were restrained from using the Trademark/Colour Combination/Trade Dress HEMOORANGE in relation to medicinal and pharmaceuticals products falling in class 05.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539

Snapdeal Pvt.Ltd. Vs GoDaddy

DATE OF JUDGEMENT: 13.07.2022

CASE No:(CS) (COMM) 176/2021

NAME OF HON'BLE COURT: High Court of Delhi

NAME OF HON'BLE JUDGE: The Honourable Justice Prathiba M Singh

CASE TITLE: Snapdeal Pvt.Ltd. Vs GoDaddy

The Hon'ble Court has observed that the DNRs , like in the present case GODADDY.COM was, to create a mechanism by which any trademark owner who has an objection to the registration granted to any domain name, can approach the said DNR and seek cancellation/transfer of the said domain name. Its good order especially in favour of right holders , who have to keep on filing various suits against the rogue websites.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539

Intellectual Property Right in an Advertisement Campaign

DATE OF JUDGEMENT: 07.07.2022

CASE NO: CS (Comm) 144/2022

NAME OF HON'BLE COURT: High Court of Delhi

NAME OF HON'BLE JUDGE: The Honourable Justice Prathiba M Singh

CASE TITLE: Bright Life care Pvt. Ltd. Vs Vini Cosmetics Pvt. Ltd.

Several decades ago, there were many advertisements that were extremely popular among the public. I remember an advertisement that said, "JAB MAI CHHOTA BACHCHA THA, BADI SHARARAT KARTA THA, MERI CHORI PAKDI JATI, JAB ROSHNI KARTA BAJAJ." [When I was a youngster, I used to get into mischief, and my thefts were always discovered when Bajaj was lighting]. This advertisement was unmistakably BAJAJ Electric Bulb.

Other advertisements included BARATIYON KA SWAGAT PAN PARAG SE KIJIYE [welcome the processions with PAN PARAG]. Likewise, PEPSI's YE DIL MANGE MORE campaign was another famous advertising campaign.

DAD KHAJ KHUJLI KAA DUSHMAN, B-TEX LOTION, B-TEX MALHAM [The Enemy of Ringworm and Itching, B-TEX Lotion, B-Tex Ointment] are also examples. The advertisement was exclusive to B-Tex Ointment and Lotion. Some of these ads strike the memory of common people and associate particular products with particular brands.

Advertisement campaigns have repeatedly demonstrated their importance in the growth of businesses. It takes a lot of time and effort to create a one-of-a-kind advertisement campaign. Naturally, monetary investments are made in the creation and dissemination of advertising campaigns. When a right holder's campaign becomes popular, any other party may attempt to capitalize on its advertising campaign. The question is how to protect intellectual property rights in an advertisement campaign.

There might be different ways to run advertising campaigns. An advertising campaign can be spread using audio, video, or print media. This article discusses the scenario in which an advertising campaign is displayed and distributed via video.

The issue at hand is how such advertisement campaigns, which are spread via video mode, can be protected by the owner? What types of intellectual property rights are present in a marketing campaign? When an advertisement campaign is distributed via video, it may contain a variety of elements. In such a case, how can a right holder assert intellectual property rights?

One such case was heard before Justice Prathiba M Singh of the High Court of Delhi in Suit bearing CS (Comm) 144/2022 titled Bright Life Care Pvt. Ltd. Vs Vini Cosmetics Pvt. Ltd., in which the Plaintiff filed the suit based on its intellectual property rights in its advertisement campaign JIDDI HUN MAIN, which was projected in video form. The Plaintiff sought injunctive relief against the Defendants, alleging that the Defendants were also using similar advertising campaigns, causing market and trade confusion and deception.

JIDDI HUN MAI was the title of the Plaintiff's video campaign, which was launched in March 2018. The Plaintiff launched this advertisement campaign in relation to one of its products, protein supplements. The Plaintiff filed this suit on the grounds that the Defendant launched a similar advertisement campaign for their deodorant product in 2022.

The plaintiff claimed that the defendant was infringing upon its copyright in the aforementioned cinematographic work, i.e., the ZIDDI HUN MAIN marketing campaign, by employing the tagline "ZIDDI PERFUME," as well. The plaintiff's lawsuit was founded on the fundamental components of the aforementioned advertising campaign. The entire appearance, philosophy, and tone of the Plaintiff, including the word "ZIDDI," was one of the fundamental components that the Defendants plagiarized. A handful of the frames in both the Plaintiff's and the Defendants' advertisements resembled one another.

The plaintiff alleged that the imitation by the Defendants of the Plaintiff's essential component were like for example a muscular individual exercising in a dark-colored, Zym-like setting, Lettering with a black background and a white and yellow colour scheme etc. In order to refute the claim of the plaintiff, the Defendants argued that no one may claim ownership of the term "ZIDDI" exclusively. The song ZIDDI DIL has already been used in the film Mary Com. The phrase "ZIDDI CHORIYA" was also utilized by Parle G in one of its advertising.

Along with bringing up these defenses, the defendants also made an effort to highlight the differences between the two marketing campaigns. However, the Hon'ble High Court of Delhi was pleased to grant relief in favour of the Plaintiff against the defendant vide its judgement of July 7, 2022, after analyzing the relevant facts and legal framework. 

The Hon'ble High Court of Delhi underlined the long-standing legal principle that only the tangible expression of an idea can be the subject of copyright in this process. The Hon'ble Court made the observation that a verbatim copy of the original work is not necessary for a party to be found guilty of copyright infringement when assessing the question of infringement.

However, the owner of the copyright must demonstrate that the infringing work is a substantial copy of the original. The right holder must establish distinctiveness and goodwill in order to protect an element of an advertising campaign. The test of substantial copying in a case of copyright infringement was already established as a criterion by the Hon'ble Supreme Court of India in the case known as R.G. Anand v. Deleux Films (AIR 1978 SC 1613). The Hon'ble High Court of Delhi relied on the Supreme Court of India's observation in the R.G.Anand case, the relevant portion thereof is as under:

"51. Thus, the position appears to be that an idea, principle, theme, or subject matter or historical or legendary facts being common property cannot be the subject matter of copyright of a particular person. It is always open to any person to choose an idea as a subject matter and develop it in his own manner and give expression to the idea by treating it differently from others. Where two writers write on the same subject similarities are bound to occur because the central idea of both are the same but the similarities or coincidences by themselves cannot lead to an irresistible inference of plagiarism or piracy. Take for instance the great poet and dramatist Shakespeare most of whose plays are based on Greek-Roman and British mythology or legendary stories like Merchant of Venice, Hamlet, Romeo Juliet, Jullius Caesar etc. But the treatment of the subject by Shakespeare in each of his dramas is so fresh, so different, so full of poetic exuberance, elegance and erudition and so novel in character as a result of which the end product becomes an original in itself. In fact, the power and passion of his expression, the uniqueness, eloquence and excellence of his style and pathos and bathos of the dramas become peculiar to Shakespeare and leaves precious little of the original theme adopted by him. It will thus be preposterous to level a charge of plagiarism against the great play-wright. In fact, throughout his original thinking, ability and incessant labour Shakespeare has converted an old idea into a new one, so that each of the dramas constitutes a master-piece of English literature. It has been rightly said that "every drama of Shakespeare is an extended metaphor". Thus, the fundamental fact which has to be determined where a charge of violation of the copyright is made by the plaintiff against the defendant is to determine whether or not the defendant not only adopted the idea of the copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to scene with minor changes or super additions or embellishment here and there. Indeed, if on a perusal of the copyrighted work the defendant's work appears to be a transparent rephrasing or a copy of a substantial and material part of the original, the charge of plagiarism must stand proved."

As a result, the Court assessed the facts of the case in light of the law laid down by the Hon'ble Supreme Court of India in the aforesaid R.G. Delux Case. In the subject matter case, the plaintiff established copyright in frames of its cinematographic work, as well as used the words "ZIDDI" and "ZID," which have a positive connotation. 

The court observed that the use of the expression "ZIDDI per se," the use of a muscular man in a Zym doing workouts, or the use of a punch bag, etc., does not necessarily belong to an individual. However in the present case , Defendants have substantially copied the Plaintiff's expression of these basic elements in two of their advertisement campaigns. 

Plaintiff's advertising campaign used yellow and white lettering on a dark background, which the Defendants copied. To protect one's advertising campaign, special elements must be incorporated into the video frame and the goodwill vested therein must be continuously guarded by taking action against the violators, as the right holder has done in this case.

Ajay Amitabh Suman, IPR Advocate, 

Hon’ble Delhi High Court, 

ajayamitabh7@gmail.com, 

9990389539

Disruptive Health Solution Pvt. Ltd. Vs Registrar of Trademarks

DATE OF JUDGEMENT: 08.07.2022
CASE NO: C.A. (COMM.IPD-TM) 133/2022
NAME OF HON'BLE COURT: Hon'ble High Court of Delhi
NAME OF HON'BLE JUDGE: Hon'ble Judge Prathiba M Singh
CASE TITLE: Disruptive Health Solution Pvt. Ltd. Vs Registrar of Trademarks

Brief Note on the case: 1.The present Writ Petition was filed section 91 of the Trade Marks Act, 1999 against the impugned order dated 8th
December, 2021 where by mark ‘HEALTHSKOOL’ has been rejected on the ground being descriptive. Para 1

2.The Appellant alleged that the Trademark HEALTHKOOL in relation to bandages, condoms, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles suture materials etc is not descriptive. Para 1

3. The court set aside the impugned Order of the Registrar after noticing that the mark ‘HEALTHSKOOL’ has been in use by the Appellant since 2015. The Trademark was allowed to be advertised with disclaimer " No exclusive right in the word HEALTH". Para 12,13

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Novo Nordisk AS Vs Union of India and Ors

DATE OF JUDGEMENT: 07.07.2022
CASE NO: W.P.(C)-IPD 19/2022
NAME OF HON'BLE COURT: Hon'ble High Court of Delhi
NAME OF HON'BLE JUDGE: Hon'ble Judge Prathiba M Singh
CASE TITLE: Novo Nordisk AS Vs Union of India and Ors

Brief Note on the case: 1.The writ petition has been filed against order dated 29th June 2022 passed by the ld. Deputy Controller of Patents & Designs on the presentation of the petitioner dated 13.05.2022, which presentation was made by the Petitioner in view of liberty granted by the Hon'ble High Court of Delhi in W.P.(C)-IPD 14/2022. Para 1 and 2.

2.The subject matter Patent was granted on 4th October, 2013 being
IN 257402 titled “PROPYLENE GLYCOL-CONTAINING PEPTIDE
FORMULATIONS against which 4 post grant notice of oppositions have been filed. Para 4-6.

3. After completion of pleadings, the Opposition of Board given first recommendation on 21.08.2019 in the notice of opposition filed by USV Pvt. Ltd. and the Patentee filed application to seek cross examination of Opponent witness. However the Opponent withdrew affidavit of its witness. Para 5, 7.

4.Seond Opinion dated 16.02.2022 of the Board was issued in another opposition filed by SUN PHARMACEUITICALS INDUSTRIES of which the patentee was not satisfied. Accordingly the subject matter representation dated 13.05.2019 was filed , seeking revision of the Opposition Board. Para 8, 10

5. The controller of Board passed the order dated 03.06.2022 where by in one of the Opposition, it was ordered that the representation dated 13.05.2022 would be decided while the another opposition was ordered to proceed further for hearing. Being aggrieved of the same the same the instant petition was filed. Para 11-12.

6.The court observed that recommendation of Board are not binding in nature. Para 20.

7.In post grant opposition proceeding, the parties can not be allowed to filed affidavits and documents repeated times. Past grant Opposition is extremely time sensitive. Para 21,23.

8.The Court observed that names of all the members of the Board should appear in the recommendation along with their respective signatures. Para 27

9.The controller of Patent was directed to deal with all the objections of the Patentee at the time of final hearing. Para 34,35

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Choice Hotel International Vs Oravel Stays Pvt. Ltd.

DATE OF JUDGEMENT: 07.07.2022
CASE NO: CS(Comm) 663 of 2021
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justice Prathiba M Singh
CASE TITLE: Choice Hotel International Vs Oravel Stays Pvt. Ltd.

1. The present case deals with the issue of condonation of delay of 96 days in filing the written statement in a commercial Suit. Para 1

2.On 16.12.2021,the Defendant appeared in the court and accepted the summons of the Suit. Para 2.i

3.The Court observed that time limit for filing written statement in a commercial dispute is mandatory in nature. Para 4

4.However in view of waiver of extension of limitation granted by the Hon'ble Supreme Court of India in Suo Moto Writ (Civil) No.3 of 2020 titled In Re:
Cognizance for Extension of Limitation, the extension of time of 96 days in filing the written statement was condoned subject to payment of Rs.10,000.

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539

Havells India Limited Vs Ashok Kumar

DATE OF JUDGEMENT: 06.07.2022
CASE NO: CS(Comm) 447 of 2022
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justice Navin Chawla
CASE TITLE: Havells India Limited Vs Ashok Kumar

1. The present case involves the order in the nature of JOHN DOE order, which are normally passed when the exact address of the Defendants are unidentifiable.

2.The Plaintiff has filed the present suit on the basis of proprietary rights in the Trademark HAVELLS and LLYOD. Para 2

3.Suit was filed against many rogue Websites which were registered and were containing the Plaintiff's Trade mark. Para 6

4.The Hon'ble Court was pleased to restrain the defendants from using the impugned domain names consisting the Plaintiff's Trade Mark. Para 8.1

5.Impugned Websites were directed to be blocked. Para 8.2.

6.The relevant authorities were also directed to disclose the name and contact details of the persons behind such rogue Websites. Para 8.4

7.Then the Plaintiff was granted Liberty to seek extension of injunction orders against such persons. Para 8.7

8.The important part of this order is that the Plaintiff was also granted protection from getting the trademark HAVELLS and LLYOD listed in the Google ad word programme. Para 8.8

Ajay Amitabh Suman, IPR Advocate,
Hon’ble Delhi High Court,
ajayamitabh7@gmail.com,
9990389539