Flipkart Internet Pvt. Ltd. Vs State of NCT of Delhi

Order Date:17.08.2022
Case No. WP(CRL) 1376 of 2020
Delhi High Court
Asha Menon, H.J.
Flipkart Internet Pvt. Ltd. Vs State of NCT of Delhi

Amazon , Flikarts, Indiamart etc are the new age e-marketing platforms which provide lots of easy options for the sellers to sell their products.

These e-marketing platforms are also getting popular because it is not necessary for the seller to invest money on renting or purchasing a shop. If their products are good, they are bound in succeed.

But what happens in case on these e marketing platforms , duplicate products are being offered and sold by the sellers. Whether these e-marketing platforms can claim benefit of being an Intermediary?

Whether these e-marketing web sites , the intermediaries, are criminally liable for such illegal transactions being carried out by different sellers using these e-marketing platforms?

In Judgement dated 17.08.2022 passed by Hon'ble High Court of Delhi WP(CRL) 1376 of 2020 titled as Flipkart Internet Pvt. Ltd. Vs State of NCT of Delhi, this issue was addressed by the Hon'ble High Court of Delhi.

The Respondent No.2 was the complainant. The subject matter Complaint was filed by the Respondent No.2 on the basis of proprietary rights in the Trademark DC DERMACOL in respect of skin makeup.

The grievance of the Respondent No.2 was that fake products under the trademarks DC DERMACOL was being sold by sellers on the emarketing sites Flipkart and Amazon.

Accordingly complaint was filed by the Respondent No.2 and accordingly FIR No.103/2020 dated 17th August, 2020 was registered at the Economic Offences Wing, New Delhi, under Section 63 of the Copyright Act, 1957 and Sections 103/104 of the Trade Marks Act, 1999.

It is against registration of FIR No.103 of 2020, the present criminal writ petition was filed by the Petitioner seeking quashing of the afire mentioned FIR.

The main contention of the Petitioner was that the same was merely an Intermediary and hence was entitled to protection in view of judgment of the Supreme Court in Shreya Singhal Vs Union of India, 2015 (5) SCC 1.

The Petitioner submitted that the same being merely intermediary, its obligation is only to observe due diligence and follow the guidelines that may be prescribed by the Government in this behalf.

Section 79 if the Information Technology Act provides for certain exemption to the Intermediaries. Section 79(2) (c) of the Intermediary Act provides the following condition to be observed by a Intermediary.

"(c) the intermediary observes due diligence while discharging his duties under this Act and also observes such other guidelines as the Central Government may prescribe in this behalf. "

Intermediary guidelines further cast obligation on the Intermediary to intimate its user that their usages may be terminated in case of non compliance of Intermediary Guidelines. Relevant portion of Intermediary Guidelines are given as under:

"5) The Intermediary shall inform its users that in case of non-compliance with rules and regulations, user agreement and privacy policy for access or usage of intermediary computer resource, the Intermediary has the right to immediately terminate the access or usage lights of the users to the computer resource of Intermediary and remove noncompliant information. "

It was case of the Petitioner that the same has complied with relevant provisions of Information Technology Act as well as the Intermediary Guidelines Rules.

The Hon'ble High Court of Delhi has observed that penal consequences of non compliances of Intermediary Guidelines have not been provided. More over if the Intermediary establishes that the same has exercised the due diligence as warranted, the same can not be held liable.

The Hon'ble Court observed that for fixing criminal liability is far higher than that under civil law, one requiring proof „beyond reasonable doubt‟ and not just a „balance of probabilities‟.

For instance, to establish criminal liability for negligence, the standard of proof is set much higher than for „civil liability‟ under the law of Torts for negligence. There is no reason why that higher standard should not be available to courts to determine whether an intermediary would be liable under the criminal law for action or inaction.

It would also stand to reason that when the intermediaries have been granted the ―safe harbour qua civil liability, and when a higher standard of culpability is required for a criminal prosecution, such “safe harbour” should be available even in respect of criminal prosecution.

Thus, unless an active role is disclosed in the commission of the offences complained of, the intermediary, such as the present petitioner, would be entitled to claim protection under Section 79 of the I.T. Act. "

In the present case the Hon'ble High Court of Delhi was pleased to quash the FIR on the ground that in the instant case, the case for fixing criminal liability against the Petitioner was not made out as the Petitioner has done the compliances of Information Technology as well as the Intermediary Guidelines.

The basic idea behind passing this Judgement was that in order to affix criminal liability, the standard of proof required ,is vary high.

This standard of proof has not been made out by the Respondent No.2 in the present case. Accordingly the subject matter FIR was held not to be maintainable in the eyes of law.

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

Vee Excel Drugs and Pharmaceuticals Pvt.Ltd. Vs Union of India and others

Order Date:18.08.2022
Case No. WP (C) IPD 101 of 2021
Delhi High Court
Navin Chawla, H.J.
Vee Excel Drugs and Pharmaceuticals Pvt. Ltd. Vs Union of India and others

When ever any Trademark application is filed by a party, it has to furnish the user detail of the subject matter Trade mark applied for? Question is this whether a Party be allowed to claim different Trademark user from what has been claimed in Trademark Application?

This question has been answered by Hon'ble High Court of Delhi in its Judgement dated 18.08.2022 passed in Writ Petition bearing .WP (C) IPD 101 of 2021 titled as Vee Excel Drugs and Pharmaceuticals Pvt.Ltd. Vs Union of India and others.

This Writ Petition was filed by the Petitioner against order dated 31.07.2013 passed by Ld. Intellectual Property Board whereby the registered Trademark of the Petitioner was cancelled.

The Petitioner filed the subject matter Trademark application VEGA ASIA’ on 08.02.2002, on a ‘proposed to be used’ basis. While the Respondent No.2 filed trademark application for VEGAH TABLETS’ on 24.04.2002 vide the registration no. 1098288 in Class 05, claiming use thereof since 01.04.2002.

Vide the order dated 31.07.2013, the Ld. IPAB was pleased to cancel both of the registered Trade Mark of the Petitioner as well as the Respondent No.2. In the subject matter Writ Petition, the Petitioner has challenged the impugned order dated 31.07.2013 only to the Limited extent where by its registered Trademark VEGA ASIA was cancelled.

Though the Petitioner has filed its Trademark application VEGA ASIA as proposed to be used in the year 08.02.2002, however the same same claimed prior user on the basis of assignment of the subject matter Trademark from one MA GAYATRI.

The Hon'ble High Court of Delhi rejected this argument of the Petitioner by observing that The petitioner in its application seeking registration of the mark ‘VEGA ASIA’ had claimed the same to as ‘proposed to be used’. Any
claim of prior user thereof by the petitioner itself, cannot therefore be
accepted.

More over the Hon'ble Court also observed that the Petitioner was unable to prove use of MA GAYATRI in relation to the subject matter Trademark. Though one NOC from DCGI in favour of MA GAYATRI was put on record by the Petitioner, but according to the Hon'ble Court, the same was not sufficient enough to show user.

On the Contrary, the Hon'ble High Court of Delhi found the documents of user of Respondent No.2 prior in point to time to that of the Petitioner. The Hon'ble High Court of Delhi was sitting in Writ Jurisdiction. The Court observed that in Writ Jurisdiction, the Court can not re appreciate the evidence. The Hon'ble High Court of Delhi, for this purpose , relied upon the following Judgement: U.V. Enterprises v. New Bharat Rice Mills, 2012 SCC OnLine Del 3645:

"12... One may only remind oneself that the court, while exercising jurisdiction under Article 226 of the Constitution of India, is not acting as an appellate court and, therefore, findings of fact reached by tribunals, as a result of appreciation of evidence cannot be re-opened or questioned in writ proceedings unless it is a case of no evidence or a case where a tribunal has erroneously refused to admit admissible and material evidence or, has erroneously admitted inadmissible evidence which, propelled it to come to the impugned finding. Apart from these errors, findings of fact arrived at by an inferior court or tribunal cannot be reopened. The other exceptions where the superior courts exercising writ jurisdiction can interfere are cases where principles of natural justice are breached or a subordinate Court or tribunal acts without jurisdiction or exercises jurisdiction with material irregularity. Therefore, it is often said that a writ court is concerned with the decision making process and not the decision itself."

Thus it is apparent that while exercising the Writ Jurisdiction, the scope of interference is very limited. The Writ Court can exercise the Writ Jurisdiction only in cases of violation of principle of natural justice or where there has been material irregularity in the order assailed. As such situation was not prevalent in the subject matter Writ , the same was dismissed.

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

S.N.R.Dhall Mill Vs Kaleesuwari Refinary Pvt.Ltd.

Order Date:26.07.2022
Case No. OSA 82 of 2021
High Court of Judicature at Madras
M Duraiswamy and Sunder Mohan , H.J.
S.N.R.Dhall Mill Vs Kaleesuwari Refinary Pvt.Ltd.

What could be effect of Section 17 of Trademark Act 1999 in relation to Suit pertaining to infringement of Trademark, if the registered Trademark is a composite Trademark, comprised of various elements including Word and Device?

The subject matter Suit was filed by the Appellant on the basis of proprietary rights in the Trademark GOLD WINNER since the year 1999 in relation to their business of dhall and flour.

They also claimed to be registered proprietor of Trademark GOLD WINNER Label in class 30. Accordingly the Appellant was claiming statutory as well as common law rights in relation to Trademark GOLD WINNER Label.

The subject matter Suit was filed by the Appellant against the Respondent on the ground that Respondent was the subsequent user of trademark GOLD WINNER in relation to Dhall only since the year 2005.

However the Appellant was not able to succeed in its effort and relief was declined in the suit by the Ld. Trial Judge. Being aggrieved of the same, the Appellant filed the subject matter Appeal.

The case of the Respondent was that the same has adopted the Trademark GOLD WINNER in relation to edible oil in the year 1993.Hence the Respondent was the prior adopter of Trademark GOLD WINNER.

The Respondent, in the year 2005 extended their business in relation to Dhall as well and the same being natural business expansion, the Respondent was very much entitled to do so.

Another defence of the Respondent was that Appellant's registered Trademark was a composite Trademark comprising of word GOLD WINNER', the device of a running man, the text ' Trade Mark'' and 'Toor dhall' and several other elements and there was no separate registration for the word mark 'GOLD WINNER.

Hence by virtue of Section 17 of the Trademarks Act 1999, the Appellant could not have asserted exclusive right over the word GOLD WINNER.

In order to appreciate this argument of the Respondent, Section 17 of the Trademarks Act 1999 is reproduced as under:

"17. Effect of registration of parts of a mark:

(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark:

(a) contains any part:

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered."

From perusal of afore mentioned provision, it is apparent that if a registered is a composite label, the registered Proprietor would get right over the composite Label as a whole and can not assert exclusive right over any part of or any element of the composite label.

The Appellant sought to repel this argument by relying upon anti dissection rule, which provides that while making comparison between the two composite label trademarks, the essential feature of the Trademark has to be seen and not any part of it.

However the Hon'ble Division Bench rejected this argument of the Appellant after observing that in the present case, the Appellant has failed to establish that the word GOLD WINNER is the most distinctive element of the Appellant's Trademark.

Relief of passing off was also declined on the ground that Respondent has already developed goodwill and reputation in the market. Because of user of Respondents there was least possibility of confusion and deception in the market. Accordingly the Hon'ble Division dismissed the Appeal.

Thus it is apparent that embargo of Section 17 of the Trademarks Act 1999 would be applicable to a composite Trademark only in case the Registered Proprietor fails in proving its any element of its composite label to be distinctive, as has been in the subject matter case.

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

Austin Nicholas and Co INC Vs Gwalior Distilleries Pvt. Ltd.

====================
Order Date:18.08.2022
Case No.CS (Comm) 250 of 2010
Delhi High Court
Navin Chawla, H.J.
Austin Nicholas and Co INC Vs Gwalior Distilleries Pvt. Ltd.

Plaintiff's Trademark: ROYAL STAG Label
Defendant's Trademark: ROYAL CHAMP Label
Suit Decreed

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

#IP_Adjutor #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update

===============

Kamdhenu Limited Vs Aashiana Rolling Mills Ltd.

Appellant has been engaged in the business of manufacturing and marketing steel bars and other allied goods under the name and trademark KAMDHENU. The Appellant claimed to have on obtained a surface Design Registration bearing no. 250968 in class 25-01 dated 14.01.2013 in respect of Rod for construction.

The subject matter Suit for infringement of Design was filed by the Appellant against the Respondent alleging that the Respondent has been applying similar surface design under the name FRIENDS 500 HD TMT Bars.
Class 25-01 (hereafter 'the said design'), in respect of 'Rod for Construction

Initially the subject matter Suit was filed before learned District Court, Saket, inter alia, seeking a permanent injunction to restrain Aashiana from using the said design. In the said Suit, the learned District Court, Saket granted an ex parte order of injunction in favour of the Appellant and against the Respondent vide order dated 15.06.2017.

This Suit was later on transferred to Hon'ble High Court of Delhi by virtue of operation of Section 22 (4) of the Design Act 2000. The Hon'ble High Court of Delhi, vide its order dated 15.06.2017, was pleased to allow application of Appellant under Order 39 Rule 1 and 2 CPC.

The Respondent assailed the said order in appeal [being FAO (OS) 309/2017] which was allowed by the Division Bench, Hon'ble High Court of Delhi. Though the Appellant filed Special Leave Petition [being SLP (Civil) no. 32594/2018] against the same, however could not succeed.

In the meanwhile, during the pendency of Appellant, the Respondent filed Application under Order XIII-A for commercial court Act 2015, which was allowed by the Ld. Single Judge vide Order dated 11.02.2019. This was the order, which was under challenge in this Appeal.

The reason for dismissal of the subject matter Suit under the provisions of Order XIII-A for commercial court Act 2015 was that the subject matter Design was prior published and that there was no any real prospect of the Appellant succeeding in the matter.

The Hon'ble Single Judge was guided by two facts, one that British Standard 2005 provided similar surface design and the another fact was that Appellant had categorically admitted in the Plaint that the said design was "equivalent to British Standard B500C". According to the Ld. Single Judge, both these facts were sufficient enough to defeat registered Design of the Appellant.

The Hon’ble Division Bench , High Court of Delhi was pleased to dismiss the Appeal by reiterating the finding of Single Judge that the subject matter design of the Appellant to be a prior published design.

The Court observed that even in the Design Registration, the Appellant claimed novelty in the surface pattern particularly in the portions marked 'A' and 'B' of the 'Rod for Construction' as illustrated".

Though novelty were claimed in the pattern comprising a set of two transverse ribs with different acute angles. However no specified angles were prescribed in the Certificate of Design Registration.

The Hon'ble Division Bench was guided by this fact that similar rib pattern has already been prescribed in prior published British Standard and the Appellant's Design was duly covered under the same.

As no specified angles were specified in the subject matter Design of Appellant, the Hon'ble Division Bench rejected the argument of the Appellant that minor differences may result into new design.

The Hon'ble Division Bench , High Court further reiterated the EYE TEST as enunciated in Gaskell & Chambers Ltd. Vs Measure Master Ltd.: 1993 RPC 76, the learned Judge observed that "the decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye.

However in order to reach the conclusion regarding similarity, it is not necessary that both the Designs should be completely identical. However the Court also observed that slight variation from the earlier pre existing design, does not result into new Design.

Applying the Ocular Test , the Hon'ble Division Bench High Court of Delhi concurred the opinion of the Hon'ble Single Judge that the subject matter Design was prior published and that no any other evidence was required to be lead in this regard. Resultantly , the Appeal was dismissed.

We have seen that ocular comparison is the actual criterion for evaluating that Design Infringement. However this exercise has to be done with precaution as similarity may not be exact identity, but substantial similarity is the test.

Similarly minor variation in a Design may not result into new design. Thus there can not be a mathematical formula for evaluating the Design Infringement and the duty is upon the Court to maintain the balance while applying EYE TEST in matters pertaining to Design Infringement.

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

#IP_Adjutor #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update

Pepsico Inc Vs Ramdev Industries

Order Date:05.08.2022
Case No.CS (Comm) 540 of 2022
Delhi High Court
Navin Chawla, H.J.
Pepsico Inc Vs Ramdev Industries

Plaintiff's Trademark: LAYS Label
Defendant's Trademark: MHADEV Label
Though Competing Trademarks of parties are same, how ever, logo are same. Ex parte Injunction granted.

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

Patil Automation Pvt. Ltd. Vs Rakheja Engineers Pvt. Ltd.

====================
Order Date:17.08.2022
Case No. SLP (C)No. 14697 of 2021
Supreme Court of India
K.M.Joseph, H.J.
Patil Automation Pvt. Ltd. Vs Rakheja Engineers Pvt. Ltd.

In case a Commercial Suit is filed without seeking urgent relief then statutory pre-litigation mediation contemplated under Section 12A of the Commercial Courts Act, 2015 is mandatorily required to be followed. any suit instituted violating the mandate of Section 12A must be visited with rejection of the plaint under Order VII Rule 11. This power can be exercised even suo moto by the court. The Hon'ble Supreme Court of India, however made this Judgement effective from 20.08.2022. It means all Commercial Suits which are filed since 20.08.2022 , without seeking any urgent relief, then statutory pre-litigation mediation contemplated under Section 12A of the Commercial Courts Act, 2015 is mandatory.

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

Luxembourg Brands Vs G.M Pens

BOrder Date:26.11.2018
Case No. CS (Comm) 1120 of 2016
Delhi High Court
Vibhu Bakhru, H.J.
Luxembourg Brands Vs G.M Pens

Plaintiff’s Trademark REYNOLDS and TRIMAX
Defendant’s Trade MARK REYNOLDS
Defendant subsequently adopted trademark RORITO
Defendant subsequently changed its mark to T-MAX
Defendant again changed to TERAMAX because of injunction order passed against it.
The Court observed that It is well settled that a party which is restrained from using a particular trademark must follow the safe distance rule and ensure that the trademark adopted is not even remotely similar to the trademark, the use of which has been interdicted. In the present case , it Defendant was using similar label, inspite of injunction order, the same was held guilty of disobeying the court order.


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

Exxon Mobil Corporation Vs Mr. Madhu Paul Trading as Mahanam Mobil House

Order Date:05.08.2022
Case No. CS (Comm) 123 of 2022
Delhi High Court
Prathiba M Singh, H.J.
Exxon Mobil Corporation Vs Mr. Madhu Paul Trading as Mahanam Mobil House

Plaintiff’s Trademark MOBIL
Defendant’s Trade name MAHANAM MOBIL HOUSE

Suit decreed Ex-parte with cost of Rs. 3 Lakh

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

Retail Royalty Vs Md.Sohaib Ansari

Order Date:01.08.2022

Case No. CS (Comm) 523 of 2022

Delhi High Court

Navin Chawla, H.J.

Retail Royalty Vs Md.Sohaib Ansari

Plaintiff’s Trademark AMERICAN EAGLE with FLYING EAGLE DEVICE MARK

Defendant’s Trade name AMERICAN LEGAL with FLYING EAGLE DEVICE MARK

Ex-parte Injunction Granted

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539