Excitel Private Limited Vs The Registrar of Trademark

DATE OF JUDGEMENT: 18.07.2022

CASE: CA Comm IPD TM 5 of 2021

NAME OF HON'BLE COURT: High Court of Delhi

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

CASE TITLE: Excitel Private Limited Vs The Registrar of Trademark

Every moment many gigabytes of information are feeded on the internet. Products are being shared , marketed through internet. It has become strong source of marketing the products too. That's why the world has seen emergence of Amzon, Indiamart , ebays etc.

By passage of time every thing changes, ways of communication and knowledge sharing mode too. Present days are days of Technology, days of internet. Advent of internet has introduced many things in life, way of marketing also.

The Judiciary has been posed with task of ease out the tension which emerges from the society. When the world has changes, then judiciary should also change its approach and so has been done in a recent case by the Hon'ble High Court of Delhi.

When on the basis of information available on the internet, if products can be marketed , then why information available on the internet , should not be considered as evidence by the court or Tribunal?

This question was addressed by the Hon'ble High Court of Delhi in Appeal bearing C.A. (COMM.IPD-TM) 5/2021, titled as Excitel Pvt. Ltd. Vs Registrar of Trademark. The Hon'ble High Court of Delhi has disposed off this Appeal vide Judgement dated 18.07.2022, where by it has recognized the value of internet extracts in a judicial proceedings.

The present Appeal was filed against order dated 28.10.2020 where application of the Petitioner namely REELTIME in relation to scientific and technological services was rejected by the Registrar of Trademark.

The Registrar of Trademark, while doing so, observed that Internet extracts do not constitute primary evidence and can only be considered as secondary evidence. Hence, the mark does not have any user. Question is this, whether the quasi judicial authorities , like Registrar of Trademarks can reject the documents downloaded from the internet in such a manner?

The Hon'ble High Court of Delhi , while setting aside the Order of Registrar of Trademarks, observed that rejecting the evidence extracted hereinabove, on the ground that it does not constitute primary evidence would be an incorrect approach inasmuch as the genuineness of the printout can be easily checked by the examiner by accessing the internet at the time of hearing.

The court further indicated that if there is any doubt in respect of printouts that have been filed by the Appellant, at best, the examiner can call for an affidavit under Section 65B of the Information Technology Act, 2000, (hereinafter “IT Act”).

Thus it is clear that internet extracts filed by a party can not be rejected only on the ground that the same do not constitute primary evidence and can only be considered as secondary evidence. Be it a judicial proceeding before a court or a quasi judicial authority, like registrar of Trademark.

There is always an option to direct a party to file requisite affidavit in support of internet extracts under Section 65 B of the Evidence Act. Thus the Hon'ble Court taken cognizance of internet extracts also. That can be considered in a judicial or quasi judicial proceeding both , provided requisite affidavit under Section 65 B of the evidence Act.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539

#IP_Adjutor #Law #Legal #Trademarkinfringement #Copyrightinfringement #Designinfringement #Patentinfringement #IPR #Intellectualpropertyright #Iplaw #Ipupdate #Legalupdate

Am. Dairy Queen Corp. v. W.B. Mason Co.[US DISTRICT COURT]

Am. Dairy Queen Corp. v. W.B. Mason Co.[US DISTRICT COURT]

18/CV/693 [SRN/ECW]

DISTRICT OF MINNESOTA

US DISTRICT COURT

DATE OF DECISION:14.07.2022

The Plaintiff namely Dairy Queen Corporation filed the subject matter suit on the basis of its registered trademarks for its BLIZZARD® frozen treat. The Plaintiff sought the relief of inter alia infringement and passing off.

While the Defendant namely W.B. Mason Co., Inc., was also registered trademark for its Blizzard® copy paper. The field of activity of Defendant and the Plaintiff was off course not identical. Both of the parties were holding registration for same trademark in relation to different kind of services.

The Hon'ble US Court was pleased to decline to grant any relief to the Plaintiff on the ground that thought the Trademark of the Plaintiff enjoys distinctiveness , how ever the same was unable to prove that People associate Defendants Product with that of the Plaintiff.

As Defendant's Trademark was also distinctive to the product of the Defendant itself, there was least possibility of any confusion and deception.

The Court also observed after going through the evidence lead by the parties, that the Plaintiff has failed to prove any any loss or injury which was essential to succeed in an case of infringement and dilution of trademark. This was the reason, Plaintiff was not granted the relief of injunction as prayed for.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539

Snapdeal Pvt.Ltd. Vs GoDaddy and Ors.

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 and Ors.

This is a case where the Hon'ble High Court of Delhi has directed the DNRs to devise a mechanism in order to enable the rights holder of a trademark to fight with rogue websites.

Now question is this, what are these DNRs. DNRs are domain name registrar's which are responsible for granting domain names to a party.

Till date there is no any mechanism which can safe guard the interest of right holders.

Any body who is interested in getting a domain name registered, can get it registered after paying the necessary fee.

Its been long days, it has been felt that some effective mechanism has to be developed so that the right holder can participate in such grant of domain name process.

To some extent, the Hon'ble High Court of Delhi has tried to fill up this lacuna vide order dated 13.07.2022 passed in Suit bearing CS (COMM) 176/202 titled as Snapdeal Pvt.Ltd. Vs GoDaddy.

The Hon'ble Court has observed that the DNRs 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.

This order will provide a way out to the right holders to participate in the process of grant of domain names by the Domain Name Registrars.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539.

Franco Indian Pharmaceuticals Vs Vatican Lifesciences Pvt. Ltd.

DATE OF JUDGEMENT: 12.07.2022
CASE: INTERIM APPLICATION NO. 3098 OF 2022 IN COMMERCIAL SUIT (IP) NO. 295 OF 2022
NAME OF HON'BLE COURT: High Court of Bombay
NAME OF HON'BLE JUDGE: The Honourable Justice R.I. CHAGLA
CASE TITLE: Franco Indian Pharmaceuticals Vs Vatican Lifesciences Pvt. Ltd.

Its a case where the Hon'ble High Court of Mumbai was pleased to grant an ex parte order of injunction in favour of the plaintiff after observing that adoption of the defendant was dishonest.

The Plaintiff filed the subject matter Suit on the basis of proprietary rights in the Trademark GLEAM","GLEAM-1" and "GLEAM-2 in relation to medicinal and pharmaceuticals products falling in class 05.

As the Plaintiff was registered proprietor of its trademark GLEAM","GLEAM-1" and "GLEAM-2, the contained the relief of infringement and passing off both.

The Suit was filed against user of similar Trademark V-GLIM M1, V- GLIM M2 & V-GLYME-M80 by the Defendant in relation to medicinal and pharmaceuticals products falling in class 05.

The Plaintiff became aware of Defendant's impugned product under the impugned Trademark when the same came across the listing of impugned Trademark on web site INDIAMART.

Subsequently the plaintiff's representative contacted the defendants and there after few samples of impugned product of the Defendants were delivered at WhatsApp of Plaintiff's representative.

The Court observed that adoption of impugned Trademark V-GLIM M1, V- GLIM M2 & V-GLYME-M80 by the Defendants prima facie appears to be dishonest.

The Court held that the rival marks are used in respect of pharmaceutical products and therefore stricter approach will have to be taken.

The court also observed that the ingredients of products of the Plaintiff and that of the Defendants are different and therefore disastrous consequences cannot be ruled out.

Hence there was every possibility of likelihood of confusion and association vis-a-vis use of the impugned Trademark V-GLIM M1, V- GLIM M2 & V-GLYME-M80 by the defendant.

Moreover the mark "GLEAM" of the Plaintiff is registered in Part A of the Trade Mark Register as a distinctive mark. By mere adding V prior to the Trademark V does not reduce the chance of confusion.

Another important factor for granting ex parte injunction in favour of the Plaintiff was that the Hon'ble Court observed that adoption of impugned Trade Mark by the Defendant was dishonest.

There was earlier history of litigation between the parties. At the earlier occasion, when the plaintiff filed notice of opposition against trademark of defendant, the defendant got its trademark abandoned by not filing the counter statement.

Hence the defendant was already aware of plaintiff's activity. In spite of that the impugned Trademark was dishonestly adopted by the defendant.

This was also another reason for getting the matter titled in favour of the plaintiff, besides the another reason like plaintiff being the prior adopter, prior user and prior registered proprietor of the subject matter trademark. Off course confusion and deception was another obvious reason for grating ex parte injunction in favour of the Plaintiff.

Accordingly the Hon'ble High Court of Mumbai was pleased to grant an ex parte order of injunction, there by restraining the Defendants from using the Trademark V-GLIM M1, V- GLIM M2 & V-GLYME-M80 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

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