Rxprism Health System Vs Canva PTY Ltd

Date of Judgement:18.07.2023

Case No.CS Comm 573 of 2021

Neutral Citation:2023:DHC:4940

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, H.J.

Case Title:Rxprism Health System Vs Canva PTY Ltd

Patent Infringement Dispute: Unraveling the Contention Surrounding Essential Features

Introduction:

The case at hand centers around a patent infringement dispute where the Plaintiff accuses the Defendant of utilizing their patented technology without authorization. The Plaintiff's patent comprises seven distinct features (A1, A2, A3, A4, B5, C6, and C7), while the Defendant admits to three (A2, A3, and B5) and denies the presence of four (A1, A4, C6, and C7) in their product. The Court granted injunction against the Defendant on the ground that impugned product of the defendant contains essential features which were covered under the plaintiff's patent. 

Contention Surrounding Features A1 and A4:  Layered Presentation (A1): 

The Plaintiff's patent explicitly describes a layered presentation as feature A1. The Defendant's product is alleged to incorporate a similar presentation style, which the Plaintiff argues falls within the scope of their protected invention. Determining whether the Defendant's product includes this feature becomes pivotal in assessing potential infringement.

Picture-in-Picture (PIP) Second Media (A4):

Feature A4 in the Plaintiff's patent involves the incorporation of a Picture-in-Picture (PIP) second media. The Plaintiff contends that the Defendant's product mirrors this feature, presenting a compelling case for infringement. Establishing the presence or absence of this feature in the Defendant's product is crucial in resolving the dispute.

The Significance of Syncing of Audio, Video, and Image:

The Plaintiff emphasizes the importance of the syncing of audio, video, and image in both their product and the Defendant's product. They argue that this feature constitutes an essential element of their patented technology and is also present in the Defendant's product. The presence of this feature strengthens the Plaintiff's case against the Defendant.

The Relevance of the Call-to-Action (CTA) Button's Location:

The Defendant alleged the features described as A2, A3 and B5 are present, whereas the features A1, A4, C6 and C7 are stated to be absent. The Defendant further claims that the location of the Call-to-Action (CTA) button in their product sets it apart from the Plaintiff's patented technology. However, the Plaintiff counters this argument, asserting that the overall effect of the Defendant's product remains similar to the patented technology. This raises questions about the relevance of the CTA button's location in determining infringement.

Comparison of the 'Present and Record' Feature:

The Plaintiff contends that comparing the Defendant's 'Present and Record' feature with the Claims establishes a prima facie case of infringement. The similarities between the steps in both products bolster the Plaintiff's claim against the Defendant.

Court's Decision and Injunction:

The court emphasized that the mere relocation or addition of a non-essential element, such as the CTA [Call to Action]] button, does not absolve the Accused from patent infringement. The Accused's product remained within the scope of the Patentee's patent claims as the core functionality of synchronizing audiovisual content was present in both products.

The essential elements of the Patentee's patent claim were the integration of the first and second media layers to achieve seamless audiovisual synchronization. Despite the Accused's attempts to differentiate their product through the placement of the CTA element, the court concluded that this addition did not alter the core functionality shared with the Patentee's invention.

The Court granted an injunction against the Defendant, ruling that their product contains essential features covered under the Plaintiff's patent. The Court's decision underscores the significance of the essential elements of a patent claim in a patent infringement case.In assessing infringement, courts look beyond superficial differences and focus on the core functionality of the patented invention. The defendant's attempt to distinguish their product by adding a non-essential element did not shield them from liability, as the integral features of the plaintiff's patent were present in the accused product.

The Concluding Note:

The court's ruling in this case highlights the critical role of essential elements in patent claims when evaluating potential infringement. An essential element in a patent claim refers to a feature or combination of features that, when absent, would fundamentally alter the nature of the claimed invention. In other words, these elements are vital to achieving the patented functionality. Ultimately, the Court's decision highlights the importance of essential elements in patent claims in determining infringement.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

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Allied Blender Vs Ashok Kumar

Date of Judgement:13.07.2023

Case No.CS Comm 103 of 2022

Neutral Citation:2023:DHC:4877

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh, H.J.

Case Title:Allied Blender Vs Ashok Kumar

THE RELEVANT OBSEVATION OF THE HON'BLE COURT WHILE DECREEING THE SUIT EX PARTE IN A SUIT OF JOHN DOE IN NATURE.

The Subject matter Suit was filed against unknown persons who were indulged in the infringement of Plaintiff's Trademark OFFICER'S CHOICE.

Since defendants were unknown, Suit was I। the nature of JOHN DOE.

After grant of ex parte order of Injunction, since the Defendant did not appear, they were proceeded against exparte .

The Hon'ble Court, Following the rationale of the judgment of a ld. Single of this Court in Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS) 3466/2022] observed that since the Defendants were proceeded ex parte, Plaintiff was not required to lead ex parte evidence.

According Suit was decreed ex parte.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

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Zenith Dance Institute Vs Zenith Dancing and Music

Date of Judgement:18.07.2023

Case No.CS Comm 161 of 2022

Neutral Citation:2023:DHC:4901

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: C Harishankar , H.J.

Case Title:Zenith Dance Institute Vs Zenith Dancing and Music

THE RELEVANT OBSERVATION OF THE COURT WHILE GRANTING THE INTERIM INJUNCTION IN FAVOUR OF THE PLAINTIFF:

The prominent and defining feature of both the plaintiff's and defendant's marks is the Zenith, which distinctly impresses itself upon the average customer's mind, even with imperfect recollection and intelligence. Despite potential differences in overall design and layout between the two marks, confusion cannot be ruled out.

It is essential for the Court to be aware that in today's commercial landscape, changing logos and pictorial representations of marks is a common practice, often used as a market strategy to introduce novelty. Marks that have been in use for extended periods and may have resulted in viewer fatigue are frequently modified or enhanced to generate interest through novelty.

Consequently, the pictorial characteristics of a logo or device mark in this case may hold limited significance. If the defining feature of both marks, such as their names, is the same or confusingly similar, visual distinctness between the marks may not carry much weight when determining infringement.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

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Vasundhara Jewellers Vs Vasundhara Fashion

Date of Judgement:19.07.2023

Case No.CS Comm 161 of 2022

Neutral Citation:2023:DHC:4960

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge:Amit Bansal, H.J.

Case Title:Vasundhara Jewellers Pvt.Ltd. Vs Vasundhara Fashion Jewellery LLP and Another 

Introduction 

A critical element in a passing off claim is the establishment of goodwill and reputation in the relevant market. This article examines a notable case in which the Hon'ble Court refused to grant an injunction due to the plaintiff's failure to demonstrate goodwill at the time the defendant entered the market.

Background:

The essential feature of Plaintiff's as well as Defendant's Trademark VASUNDHARA. The Plaintiff claimed user since 1999 while Defendant claimed since 2001. Both of the parties were registered proprietors=

The plaintiff filed a trademark application with the Trade Mark Registry in 1999 for jewelry in precious metals and gems. In June 2019, while reviewing the defendant no.1's 'VASUNDHARA' marks, cited in the Examination Report for the plaintiff's application, the plaintiff became aware of the defendant.

The crux of the dispute lies in the alleged deceptive similarity between the plaintiff's 'VASUNDHRA' and the defendant's 'VASUNDHARA.' The plaintiff, in their response to the Examination Report, asserted that their mark differed significantly from the defendant's, specifically highlighting the stylized form of the letter "V" used by the defendant, which they believed created enough distinction to avoid consumer confusion.

The Plaintiff's Contradictory Stance:

In the ongoing lawsuit, the plaintiff's position became questionable due to their contradicting statements. While they initially claimed that the defendant's mark was not deceptively similar to theirs, they later filed the subject matter suit asserting the opposite. This inconsistency weakened the plaintiff's right to seek injunction against the Defendants as a party can not be allowed to Aprobate and reprobate.

Defendant's User Claims and Factors Affecting Injunction:

The defendant no.1 claimed to have used the mark 'VASUNDHARA' since the year 2001, which, they contended, was subsequent to the plaintiff's use of 'VASUNDHRA.' This claim further complicated the matter and added complexity to the question of trademark infringement. The court considered various factors while deliberating on the grant of an injunction in favor of the plaintiff.

Registered Proprietorship and Passing Off Remedy:

Both the plaintiff and the defendant  held registered trademarks, which led the court to conclude that the relief of infringement could not be granted in favor of the plaintiff. Consequently, the case was analyzed with respect to the passing off remedy, wherein the plaintiff sought to establish their goodwill and reputation in the market.

Suspect Nature of Plaintiff's Invoices:

One critical aspect that came to light during the proceedings was the suspect nature of the plaintiff's invoices. The court noted that the plaintiff's invoice dated 17th August 2016 included Goods and Services Tax (GST), even though the GST was enacted only on 1st July 2017. This discrepancy raised doubts about the authenticity of the plaintiff's claims and further weakened their position.

Burden of Proof in Passing Off Action:

In an action of passing off, the burden of proof lies with the plaintiff to demonstrate the existence of goodwill and reputation at the time the defendant entered the market. Since there was no evidence to show that the plaintiff had established goodwill in the year 2001 when the defendant began trading in jewelry under their name, the court had reservations about granting relief in favor of the plaintiff.

The Concluding Note:

In passing off action, the Relevant date for establishing good will , is the date when defendant enters into the market:The Court observed that the plaintiff failed to provide sufficient evidence demonstrating the existence of goodwill in the relevant market at the time the defendant started trading. The absence of credible documentation,  or any other substantial proof to support the plaintiff's claim of goodwill in the year 2001 when defendant entered into the market, weighed against the plaintiff's case.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

#IP_Adjutor #Trademark #Copyright #Design_infringement #Patent_infringement #IPR #Intellectualpropertyright #Iprupdate #Iprnews #Iprblog #Legalblog #law #legal

=====

Allied Blenders and Distillers Pvt. Ltd. Vs Ashok Kumar Conducting Activities through Webpage

Date of Judgment: 13.07.2023

Case No: CS Comm 103 of 2022

Neutral Citation No: 2023:DHC:4877

Name of Hon'ble Court: Hon'ble High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh.

Case Title: Allied Blenders and Distillers Pvt. Ltd. Vs Ashok Kumar Conducting Activities through Webpage

THE INTRODUCTION:

In the fast-paced digital age, the internet has provided countless opportunities for individuals and businesses to connect and share information globally. Unfortunately, this unrestricted access has also led to the rise of numerous illegal activities, including the infringement of Intellectual Property Rights (IPR).

These violations often occur through anonymous and rogue websites, making it challenging for right holders to identify and take legal action against the perpetrators. However, a recent landmark judgment delivered by the court brought hope to countless right holders whose IPR had been infringed by unknown persons using various websites.

The court's decision not only protected their rights but also set a precedent for future cases involving John Doe defendants.

THE FACT:

The case at hand involved several unknown individuals who were engaged in activities that violated the Intellectual Property Rights of the Plaintiffs.

The identities of these wrongdoers remained hidden, making it difficult for the Plaintiffs to serve proper legal notice and initiate legal proceedings against them.

To overcome this obstacle, the Plaintiffs identified the unknown defendants collectively as "John Doe" and approached the court seeking redress for the infringement of their IPR through various websites.

THE EX PARTE ORDER OF INJUNCTION:

Recognizing the urgency and potential harm caused by the infringing activities, the court granted an ex parte injunction at the initial stages of the case. Ex parte means that the court issued the injunction without hearing the arguments of the defendants, as their identities were still unknown or they failed to appear in court. The court's decision to grant an ex parte injunction was based on the principle that swift action was necessary to prevent further damage to the Plaintiffs' IPR. This step was crucial in restraining the defendants from continuing their unlawful activities.

THE DEFENDANTS WERE PROCEEDED EX PARTE:

Since the Defendants did not appear, they were proceeded ex parte. Accordingly a decree of Permanent Injunction was granted against Defendants which were arrayed as John Doe as they were running impugned websites under hidden identity.

NO EVIDENCE IS REQUIRED TO BE LEAD IN EX PARTE MATTERS:

In its judgment, the court explicitly clarified that in ex parte matters, nol evidence from the Plaintiff was required to be presented to support their claims. The rationale behind this decision was to prevent further delays and to deter future wrongdoers from taking advantage of the ex parte process. The court held that when the identities of the defendants were concealed or they failed to participate in the proceedings, it would be unfair to burden the right holders with evidence requirements.

THE CONCLUDING NOTE:

By allowing ex parte proceedings and eschewing the need for  evidence in such cases, the court acknowledges the urgency and gravity of the situation. This approach empowers right holders to seek immediate relief and protects their interests without being hindered by the anonymity of the perpetrators. Swift action is crucial in preventing further damage and preserving the integrity of the intellectual property.

The judgment in this case represents a critical milestone in the legal battle against intellectual property infringement by unknown entities operating through rogue websites. By allowing Plaintiffs to proceed ex parte and granting a decree of Permanent Injunction against John Doe defendants, the court has demonstrated its commitment to protect the rights of IPR owners.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

T.Sudhakar Pai Vs Manipal Academy of Higher Education

Date of Judgment: 17.07.2023

Case No: Commercial Appeal No. 404 of 2022

Neutral Citation No: NA

Name of Hon'ble Court: Hon'ble High Court of Karnataka at Bengalore 

Name of Hon'ble Judge: Alok Aradhe and Anant Ramnath Hegde, H.J.

Case Title: T.Sudhakar Pai Vs Manipal Academy of Higher Education

The Contemnors were in controller of management of the company.

Inspite of full control of management of company and inspite of aware of the injunction order, they have allowed francheeses to use the Trademark MANIPAL, for which injunction order was operating.

The contemnors wilfully violated the injunction order.

The Contemnors were held to be in breach of the injunction orders passed by the Hon'ble Court.

In view of the above, the Hon'ble Court held them guilty for contempt of Court under the provisions of Order 39 Rule 2A CPC.

Accordingly the Contemnor No.1 was Sent for civil prison for 15 days.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

USCO S.P.A. Vs Twin Parts Pvt. Ltd.

Date of Judgment: 03.07.2023
Case No: IA No. GA 1 of 2023 in CS No.87 of 2023
Neutral Citation No: N.A.
Name of Hon'ble Court: Hon'ble High Court of Calcutta
Name of Hon'ble Judge: Arindam Mukherjee, H.J.
Case Title: USCO S.P.A. Vs Twin Parts Pvt. Ltd.

THE INTRODUCTION:

When relation ship of distributor or dealer is terminated with a trademark owner, question may arise regarding the use of that trademark or any other trademark deceptively similar thereto ,by the former dealer or distributor. This article deals with this issue  in view of recent Judgment of Hon'ble High Court of Calcutta.

This article delves into this critical issue in light of a recent landmark judgment delivered by the Hon'ble High Court of Calcutta. We will explore the implications of the judgment and its impact on trademark rights and infringement concerns for all parties involved.

THE SUIT:

The Plaintiff filed suit for Trademark Infringement and Passing off against the Defendants.

THE BASIC FACTS OF PLAINTIFF:

Plaintiff is manufacturer and distributor of spare parts for Earth Moving Machines etc. Plaintiff was incorporated since the year 1989. Plaintiff was registered Proprietor of Trademark ITR and USCO. Suit was filed by the Plaintiff as the Defendants have also been using the Trademark IITR and/or ITR.

THE DEFENDANT WAS EX DISTRIBUTOR OF PLAINTIFF:

Another important aspect of the matter is that the Defendants have also been ex dealer of the Plaintiff. This also one of the important factor, leading to filing of the subject matter Suit.

THE ORDER:

The Court granted injunction in favour of the Plaintiff and against the Defendants,

THE REASONS:

In the Court's observation, it was noted that the plaintiffs presented documents proving that plaintiff No.1 was incorporated in 1989 and had been selling its products in India since at least 2007.

Furthermore, the mark "ITR" of the Plaintiff has been a registered mark under class 7 (device) of the 1999 Act since 2009, following the application for registration made in 2007. The general public, when purchasing the plaintiffs' goods, associates them with the trademark "ITR" and intends to buy goods originating from Plaintiff Company.

On the contrary, the defendants used to be either dealers or distributors of the plaintiffs' goods until 2017. A simple comparison between the registered mark "ITR" and the defendant's "IITR" reveals a clear deceptive similarity. The Defendants , initially applied for Trademark IITR , which shows that intention of Defendants is not bonafide.

The combination of the logo, font, and color used in "IITR" is highly likely to cause confusion among customers seeking goods with the "ITR" mark, which is associated with products originating from Plaintiff Company. The defendants were fully aware that the plaintiffs' goods were sold with the "ITR" mark and identified as products of USCO Company.

Given that the defendants were ex-dealer or ex-distributor, it can be assumed that they had knowledge of the plaintiff's trademark. These factors led the Hon'ble High Court of Calcutta to grant an injunction order in favor of the plaintiff.

THE CONCLUDING NOTE:

Post-termination trademark use, ex-distributors must be aware of their rights and limitations to avoid infringing upon the trademark owner's exclusive rights. If an ex-distributor continues to use the trademark without proper authorization, it could risk infringing upon the trademark owner's rights. The trademark owner will have legal remedies available, such as filing a lawsuit for trademark infringement, seeking injunctive relief, and claiming damages resulting from unauthorized use.

This recent judgment delivered by the Hon'ble High Court of Calcutta serves as a significant milestone in the realm of trademark law and its application in cases of distributor or dealer relationship termination. It reinforces the importance of trademark owners' rights and the need to protect their intellectual property from unauthorized use. The judgment also emphasizes the significance of consumer trust and confidence in upholding the distinctiveness of trademarks and preventing confusion in the marketplace.

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Advocate Ajay Amitabh Suman
IP ADJUTOR
Patent and Trademark Attorney
ajayamitabhsuman@gmail.com
9990389539

Yashoda Thakore Vs Kuchipudi Dance Centre

Date of Judgment: 12.07.2023
Case No: CM (M)-IPD 10 of 2023
Neutral Citation No: 2023:DHC:4787
Name of Hon'ble Court: Hon'ble High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, H.J.
Case Title:Yashoda Thakore Vs Kuchipudi Dance Centre

INTRODUCTION

At first glance, some may assume that the Explanation to Section 6 of the Commercial Court Act 2015 and Section 62 of the Copyright Act 1957 are in conflict.

However, upon closer examination of their respective language and legislative intent, it becomes apparent that they can coexist harmoniously. This article seeks to elucidate the interplay between Explanation to Section 6 of the Commercial Court Act 2015 and Section 62 of the Copyright Act 1957.

While there may be confusion regarding their applicability, this article argues that these provisions are not in negation of each other. Rather, Section 62 of the Copyright Act 1957 complements the Explanation to Section 6 of the Commercial Court Act 2015 and provides an additional forum for invoking territorial jurisdiction of a commercial court.

The article explores the legislative intent behind these provisions, analyzes relevant case law, and highlights the significance of having two parallel avenues to assert territorial jurisdiction in copyright-related commercial disputes, in view of recent decision of Hon'ble High Court of Delhi in the case discussed herein below:

THE REVISION PETITION:

The Petition was filed by the Petitioner/Defendant against the Order of Ld. Trial Court where by Application of the Petitioner under Order 7 Rule 10 CPC seeking return of Suit on the ground of lacking Territorial Jurisdiction was rejected. There by the Ld. Trial Court refused to return the Suit on the ground of lacking Territorial Jurisdiction.

THE REASONING OF LD.TRIAL COURT BELOW:

The Ld. Trial Court held the Territorial Jurisdiction under Section 62 of the Copyright Act 1957 on the premise of Plaintiff's averment made in Para No. 30 of the Plaint regarding Plaintiff's activity.

THE CONTENTION OF PETITIONER:

The Petitioner alleged that the Order of Ld. Trial Court was based on ULTRA HOME Judgment, which according to the Petitioner, per incuriam as it is contrary to Explanation to Section 6 of Commercial Court Act 2015.

THE JUDGEMENT:

Revision Petition was dismissed.

THE REASONING:

Ultra Home Construction clearly held that Section 62 of the Copyright Act 1957 provides additional forum for invoking Jurisdiction, in addition to Section 20 CPC.

In view of the above, explanation to Section 6 of Commercial Court Act 2015 does not limit the right of Plaintiff to invoke jurisdiction by virtue of Section 62 of Copyright Act 1957.

THE CONCLUDING NOTE:

Explanation to Section 6 of the Commercial Court Act 2015 and Section 62 of the Copyright Act 1957 are not in negation to each other. The Commercial Court Act 2015 does not override the special provisions of the Copyright Act 1957.

Instead, Section 62 of the Copyright Act 1957 serves as an additional forum for copyright owners to invoke territorial jurisdiction of a commercial court. This dual approach ensures that copyright-related commercial disputes have the option to be heard before specialized commercial courts while preserving copyright holders' right to choose alternative forums.

Advocate Ajay Amitabh Suman
IP ADJUTOR
Patent and Trademark Attorney
ajayamitabhsuman@gmail.com
9990389539

DISCLAIMER

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Himalaya Wellness Company Vs Wipro Enterprises Pvt.Ltd.

Date of Judgment: 12.07.2023

Case No: CS Comm 118 of 2023

Neutral Citation No: 2023:DHC:4685

Name of Hon'ble Court: Hon'ble High Court of Delhi

Name of Hon'ble Judge: Amit Bansal, H.J.

Case Title: Himalaya Wellness Company Vs. Wipro Enterprises Pvt. Ltd.

INTRODUCTION:

In the realm of trademark law, disputes often arise when two parties claim ownership or exclusive rights over similar trademarks for different classes of products. This article analyses a recent case where the Plaintiff, who held a class 05 trademark for the brand EVECARE, filed a suit against the Defendant, who possessed a class 03 trademark for the same name. The pivotal question in this case was whether the Plaintiff could be granted an injunction against the Defendant's products, even though they fell under different classes.

THE BACK GROUND:

The Plaintiff had registered the EVECARE trademark in class 05 in 1997. The mark was used for an Ayurvedic proprietary medicine, specifically a uterine tonic for women. On the other hand, the Defendant also held a registration for the EVECARE trademark, but in class 03, which covered an intimate wash as a cosmetic item.

THE JUDGEMENT:

Relief of Infringement was declined as the Defendant was also having Trademark Registration. However Relief of passing off was granted as the Plaintiff was held to be prior adopter and user of the subject matter Trademark EVECARE.

RELEIF OF INFRINGEMENT NOT MAINTAINABLE AGAINST ANOTHER REGISTERED PROPRIETOR:

Plaintiff adopted the Trademark EVECARE in the year 1997 and also hold registration in class 05. While defendant hold registration of Trademark EVECARE in class 03 which was granted in class 03. The Defendant was also registered Proprietor of Trademark EVECARE in class 03. Hence by virtue of operation of Section 28 (3) of Trademarks Act 1999, the Suit for Infringement was not held to be maintainable. 

THOUGH PLAINTIFF FAILED IN ACTION OF INFRINGEMENT, HOWEVER PASSING OFF ACTION SUCCEEDED:

However Plaintiff succeeded in passing off action on the ground of prior use and tremendous goodwill and reputation. Plaintiff was prior user of Trademark EVECARE in relation to Ayurvedic proprietary medicine used as uterine tonic for woman since the year 1997. While defendant launched identical trademark EVECARE in the year 2021 in relation to intimate wash as cosmetic item.

TRADEMARK CLASSIFICATION IS NOT THE RELEVANT CRITERION FOR DECIDING CONFUSION:

The Court did not grant any relief to the Defendant on the ground that competing products of parties were falling in different class. Instead, the Court looked into the nature and use of competing products of the parties. Goods of parties were held to be of similar in nature as both products were held to be targeted towards similar function. The function of both of the products were in relation to menstrual and reproductive health of women. Merely because of goods of parties falls in different class i.e. in class 03 and 05, this does not make the competing goods different in nature. Trademark Classification is not determinative of confusion.

Defendant's Products was held to be similar in nature even though it falls in the category of cosmetics while plaintiff's product falls into the category of ayurvedic medicine. Products of both parties are directed towards improving woman's health. Both of the Products are sold through same trade channel. Hence the same were held to be allied and cognate in nature resulting in possibility of confusion and deception in market.

PRIOR TRADEMARK SEARCH TAKEN IN DIFFERENT CLASS IRRELEVANT:

Prior to adoption of the subject matter trademark, the Defendant took search report only in class 03 only. This will not absolve the defendant. Though the product of the Plaintiff was in relation to Ayurvedic medicinal preparation, still on simple search on Google , the Defendant could have found the presence of plaintiff's Trademark. Even the Defendant's explanation does not appear to be convincing.

User of Defendant was recent in nature. On the contrary , the Plaintiff was having user of subject matter trademark since more than 2 decades. The Plaintiff was also having tremendous goodwill and reputation. In view of the above , injunction was granted to the Plaintiff in relation to passing off action.

THE CONCLUDING NOTE:

This case presents an important legal precedent highlighting the fact that classification alone cannot shield a defendant from claims of trademark infringement or passing off. Although classification plays a significant role in determining the scope and applicability of a trademark in trade and commerce, it does not limit the rights of the trademark owner to seek relief against infringing products in different classes. The court's decision underscores the fundamental principle of trademark law, which is to protect consumers from confusion or deception in the market. Consequently, trademarks should be evaluated based on their impact on consumer perception rather than the classification of goods or services.

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

DISCLAIMER:

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.