G M Modular Vs Syska Led

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Order Date:22.08.2022
Case No.CS (Comm) 329 of 2021
Delhi High Court
Navin Chawla, H.J.
G.M.Modular Vs Syska Led 

The Subject matter Suit for Design Infringement was filed by the Plaintiff on the basis of its registered design of the ‘LED Surface Light’, duly registered with the Controller of Design, under Design No. 282812, dated 22.04.2016, in Class 26-03. 

The Suit was filed before the Ld.District Court Delhi where in initially ex parte injunction was granted. However the matter got transferred to Hon'ble High Court of Delhi as plea of invalidity was taken by the Defendant.

The Defendant alleged that the Plaintiff has also obtained Trade Mark registration in relation to same design. Hence by virtue of Section 2 (d )of the Design Act 2000, the Plaintiff is estopped from claiming design right in the same.

Thought plaintiff sought to clarify that the afore mentioned Design and Tradeamrk Registrations were obtained as per law laid down by the Hon'bke High Court of Delhi in Mohan Lal Case, during the relevant time. As of now the Plaintiff has already sought withdrawal of the afore mentioned Design, in view of Carlsberg Judgement.

However the Hon'ble High Court of Delhi rejected this argument of the Plaintiff by observing that filing of the application seeking registration in the shape of the product as a trade mark simultaneously with the application for registration of the same as a design under the Act, would render the registration of the design suspect and disentitle the plaintiff to an ad interim relief. 

The Court further observed that filing of an application seeking cancellation of the registration as a trade mark subsequently will be insufficient to wipe out the disability of such shape being registered as a design. 

Another reason for vacating the ex parte injunction was that the Plaintiff was getting subject matter Design product manufactured from China. Though the Plaintiff argued that the same was getting the subject matter Design product manufactured from China on Job Work basis, however no document substantiating this claim was filed by the Plaintiff. In view of above the Hon'ble High Court of Delhi was pleased to vacate the ex parte injunction granted in its favour.

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

Devarpan Foods Pvt.Ltd. Vs Sukhwant Singh and others

Order Date:17.08.2022
Case No. FAO (Comm) 116 of 2022
Delhi High Court
Vibhu Bakhru and Amit Mahajan, H.J.
Devarpan Foods Pvt. Ltd. Vs Sukhwant Singh and others

The issue of territorial jurisdiction was there in the subject matter Appeal. The Appellant filed subject matter Suit seeking infringement of copyright and passing off.

The Ld. Trial Court allowed the Application of Respondent under Order 7 Rule 10 CPC in part.

The Ld. Trial Court held that the same has jurisdiction to entertain the subject matter suit, in so far infringement of copyright.

However , with respect to passing off, the Ld. Trial Court held that the Plaintiff has failed to substantiate the claim of accrual of cause of action in part within the jurisdiction.

Accordingly, the Plaint was directed to be amended in order to giving up the relief pertaining to passing off.

This was the order, which was under challenge by the Appellant before the Hon'ble Division Bench, High Court of Delhi.

The Hon'ble Division Bench allowed the Appeal on the ground that while deciding the issue of territorial jurisdiction, only averment made in the plaint has to be seen.

As the Plaintiff has made categorical averment in the plaint regarding availability of Respondents product within the territorial jurisdiction, it was held that the Ld. Trial Court does have territorial Jurisdiction to entertain the matter even in relation to passing off action also.

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

Mr. L.V.Degao Vs HTC Corporation

Order Date:04.08.2022
Case No. FAO OS (Comm) 169 of 2022
Delhi High Court
Vibhu Bakhru and Amit Mahajan, H.J.
Mr. L.V.Degao Vs HTC Corporation

Respondent's Trademark: The subject matter Trademark of the Appellant involved was HTC.

Respondent's Goods: Smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head mounted displays, etc.

Appellant's Trade mark: The subject matter impugned Trademark of the Appellant was HTC

Goods of Appellant: Electric hair trimmers, hair clippers and hair dryers

Appellant was the Defendant and Respondent was the Plaintiff in the subject matter suit.

The present Appeal was filed against grant of injunction by the Hon'ble Single Judge against the Appellant.

The Appellant applied for trademark HTC in different font. But using in the identical lettering style as that of the Respondent.

Appellant has no explanation for this.

The Appellant changed the lettering style of Trademark HTC and started to use the Trademark, as applied for by them.

However , no relief was granted by the Hon'ble Division Bench as the explanation given by the Appellant for adoption of impugned Trademark was held not to be plausible.

The Appellant was held to be dishonest adopter of the Trademark HTC.

More over the Hon'ble Division Bench was also of the view that because of impugned Trademark HTC by the Appellant in relation to Electric hair trimmers, hair clippers and hair dryers would also create confusion and deception in the minds of customer and product of Appellant and product of Respondent namely Smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head mounted displays, etc. are sold under the same shop.

The Hon'ble Division Bench observed that the Hon'ble Single Judge rightly restrained the Respondent from using the impugned Trademark HTC in relation to  Electric hair trimmers, hair clippers and hair dryers. 

Accordingly Appeal was Dismissed.

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

ajayamitabh7@gmail.com, 9990389539

Metis Learning Solutions Pvt.Ltd. Vs Flipkart India Pvt.Ltd.

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Order Date:08.08.2022
Case No.CS (Comm) 393 of 2022
Delhi High Court
Jyoti Singh, H.J.
Metis Learning Solutions Pvt. Ltd. Vs Flipkart India Pvt. Ltd.

Plaintiff's Trademark/Label: EINSTEIN BOX

Plaintiff's Product: Science Kit Tools for kids and boys

Defendant's Trademark/Label: NEWTON BOX

Defendant's Product: Science Kit Tools for kids and boys

Defendant has changed the trademark/name of the 4 products from ‘Newton Box’ to ‘Newton’s Learning Kit.

The Plaintiff sought to raise the argument that EINSTEIN BOX is based on the name of the world renowned and widely known Physicist Albert Einstein while Newton Box is based on the globally known Scientist Sir Isaac Newton and therefore, there is a semantic similarity between the two trademarks.

The Plaintiff also submitted that applying the Mill’s Theory of Associative Memory, in the human mind, when both marks ‘Einstein’ and ‘Newton’ would be regularly presented in relation to a ‘world renowned genius/scientist’, a habit would form where thinking of Einstein shall bring to the mind the word Newton.

However the Hon'ble High Court of Delhi rejected this argument of Plaintiff by observing that Examining the competing marks in the present case, in my prima facie opinion, it cannot be argued by the Plaintiff that the name ‘Newton Box’ has a semantic similarity with ‘Einstein Box’. It needs no reiteration that Sir Isaac Newton was an English Mathematician, Physicist, Astronomer, Alchemist, Theologian and an Author and is well-known for his discoveries in optics (white light composition) and mathematics (calculus) as also for his formulation of the three laws of motion. Elbert Einstein was a German born, Theoretical Physicist, best known for developing the theory of Relativity. Both the geniuses had their own respective contributions and it can hardly be even suggested that anyone would confuse one with the other.

According to the Hon'ble High Court of Delhi , there was no any possibility of confusion and Trade Mark and Trade Dress of the competing parties were apparently different. Accordingly Injunction was vacated subject to few condition.

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

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Victoria Foods Pvt. Ltd. Vs Rajdhani Masala Company

Order Date:02.08.2022 Suit No. CS(Comm) 108 of 2021 Delhi High Court Prathiba M Singh, H.J. Victoria Foods Pvt. Ltd. Vs Rajdhani Masala Company

Many times, a party gives a statement in court. What is the sanctity of such a statement given by a party in a court proceeding? Can a party be allowed to act in contravention of a statement given in a judicial proceeding? If the answer is no, then what the court is required to do in the case of such a contravention?

The Hon'ble High Court of Delhi was having an occasion to deal with such a situation in a commercial suit bearing CS (Comm) No.108 of 2021 titled as H.J.
Victoria Foods Pvt. Ltd. vs. Rajdhani Masala Company.

This suit was filed by the plaintiff claiming proprietary rights in trademark RAJDHANI in relation to products such as cereals, grains, basmati rice, atta, spices etc. since the year 1966.

In addition to holding various international trademark registrations, the Plaintiff was the registered proprietor of the trademark RAJDHANI in relation to spices and other products in classes 29, 31, and 32 in India.

The subject matter suit was filed by the Plaintiff against the Defendants seeking relief of infringement and passing off against the use of RAJDHANI Coriander Powder, RAJDHANI Chilli Powder, RAJDHANI Turmeric Powder, etc.

Despite the fact that the Defendants claimed to have used the trade mark RAJDHANI since 1965, no documents were filed to support their claim.

Accordingly, the Plaintiff was held to be a prior adopter and prior user of the subject matter trademark RAJDHANI and an order was passed restraining the Defendants from using RAJDHANI Coriander Powder, RAJDHANI Chilli Powder, RAJDHANI Turmeric Powder, etc.

The defendants filed an appeal against this order, which was pending adjudication. The Plaintiff filed an application under Order 39 2A CPC as, in spite of the injunction order, the defendants' products were available on the market. Accordingly, a Local Commissioner was appointed to investigate the matter.

The Local Commissioner visited the premise of the defendant and submitted a report according to which the defendants were still found to be indulged in the infringing activities in spite of the passing of the restraint order.

When the matter was listed before the Hon'ble High Court of Delhi, they made a statement that they were willing to resolve the matter finally and were also willing to change their trademark from RAJDHANI to RMC.

However, on the next day, they resiled from the statement made to the court and insisted on pursuing the appeal already filed before the Hon'ble Division Bench ,High Court of Delhi. Para 15, 16

On June 2, 2021, when the matter was listed before the Hon’ble High Court of Delhi, the same observed as under:

"8. After having heard detailed submissions for the last three hearings, in view of the conduct of the defendant as recorded previously and in view of the manner in which the Defendants have sought to resile from the submissions made yesterday, i.e., on June 1, 2022, by Ld. Sr. counsel appearing for the Defendants, this Court is, prima facie, of the opinion that the Defendants have brazenly violated the orders passed by this Court by manufacturing, selling, and offering for sale products branded as' Rajdhani’ spices and masalas, post the injunction order dated September 1, 2021."

Thus, we have seen that the Hon'ble High Court of Delhi sought to initiate contempt of court proceedings against the Defendants and gave opportunities to file a reply.

Another important aspect of this case was that the defendants were also found to be in possession of expired products of various other famous trademarks, e.g., Tata, Catch, etc.

When the contempt proceeding was scheduled for hearing, the Defendants tendered unconditional apology by filing an affidavit.

Given the fact that they had earlier resiled from the statement given in court and, in spite of the injunction order, they kept on selling the impugned products, the cost of Rs. 30 lakhs was imposed on the defendant for committing contempt of court. Para 18 (8).

Thus, it is apparent that the Hon’ble Courts do not take withdrawal of a statement given by a party before the court lightly.

The Hon’ble Courts do have a mechanism to punish such parties for contempt of court. Though in the present case, only monetary costs are imposed, the courts can equally send such parties for civil imprisonment as well.

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

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