Ramya S. Moorthy Vs Registrar of Trademarks

Importance of Proper Service of Notice in Trademark Opposition Proceedings

Abstract

This article delves into the legal intricacies surrounding the service of notice in trademark opposition proceedings, focusing on the case where the mere dispatch receipt of an email was deemed insufficient to initiate the time period for filing a counter statement. The case examined involves the petitioner challenging two orders dated 28.04.2023, which deemed their trademark registration applications as abandoned due to an opposition. The central question revolves around whether the mere transmission of a notice of opposition via email constitutes proper service under the Trade Marks Act, 1999 and Trademarks Rules, 2017. This article critically analyses the arguments presented by both parties and dissects the court's decision to set aside the impugned orders.

Introduction:

Trademark opposition proceedings serve as a crucial mechanism for safeguarding the rights of trademark applicants against potential conflicting marks. The service of notice of opposition marks the commencement of a time-bound process for the applicant to file a counter statement defending their mark. The focal point of this analysis is the recent legal case where the validity of an email as a means of serving notice was debated.

Background:

The petitioner, who had filed two trademark registration applications, found themselves in a predicament when its 2 trademark applications were deemed abandoned due to the alleged non-filing of counter statements within the stipulated two-month period under Section 21(2) of the Trade Marks Act, 1999. The central issue revolved around the service of notice of opposition, with the petitioner contesting the receipt of such notice via email.

Contentions:

The Trade Marks Registry asserted that email service of the notice of opposition was proper and deemed to be complete upon dispatch of the email as per Rule 17 and 18 of the Trademarks Rules, 2017. On the other hand, the petitioner contended that Section 21(2) of the Trade Marks Act, 1999 necessitates that the time period for filing a counter statement only commences from the date of actual receipt of the notice by the applicant. The petitioner argued that their substantive right to seek trademark registration was at stake, making the date of receipt pivotal.

Court's Analysis:

In the legal precedent examined, the court critically analysed the compatibility of Rule 18(2) with Section 21(2). The court held that the time limit prescribed for filing a counter statement would only begin from the date of receipt of the email containing the notice of opposition. The court emphasized the importance of ensuring a fair process for the applicant and noted that the document relied upon by the Registrar of Trade Marks did not suffice as evidence of receipt. It was highlighted that the petitioner acknowledged receiving the notices of opposition only after the impugned orders were passed, further emphasizing the significance of proving the service of the notice of opposition on the applicant.

mplications and Conclusion:

The court's decision in this case serves as a significant reminder of the fundamental principle that the service of notice in trademark opposition proceedings should not merely be construed as dispatching an email. The importance of proving the actual receipt of the notice by the applicant was emphasized to protect the applicant's substantive rights. The case underscores the need for accuracy and diligence in ensuring proper service of notices, especially in cases where the outcome significantly impacts an applicant's rights.

The Concluding Note:

This highlights the nuanced interplay between email communication, legal requirements, and the protection of substantive rights within the realm of trademark opposition proceedings. The court's decision serves as a precedent that emphasizes the necessity of tangible evidence of service of notice, rather than relying solely on the dispatch receipt of an email, in order to initiate the time period for filing a counter statement in a Trademark Opposition proceeding.

Case Law Discussed:

Date of Judgement:10.08.2023

Case No. WP C IPD 3 and 4 of 2023

Neutral Citation No: NA

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, H.J.

Name of Court:Madras High Court

Case Title: Ramya S. Moorthy Vs Registrar of Trademarks

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Iftikhar Alam Vs M.M.I. Tobacco Pvt. Ltd.

The Impugned Order:

The impugned order dated 10 10.2022 in question appears to have been solely based on the registered trademark favoring the plaintiff-respondents.

Lack of Discussion on Prior User Doctrine:

The most conspicuous absence in the impugned order is the lack of consideration for the prior user doctrine. Trademark law, in many jurisdictions, grants significant importance to the concept of prior user  the first entity to use a mark in commerce. The failure of the trial court to address this aspect is a critical omission, as prior user could potentially override the rights granted through a registered trademark.

Trademark Allotment Dispute:

The order also highlights a dispute concerning the number of registered trademarks allotted to each party and the applications seeking registration or cancellation of such trademarks. The absence of a thorough examination of these matters leaves room for ambiguity and raises questions about the adequacy of the court's decision.

Inadequate Material Analysis:

The analysis provided by the trial court regarding the material placed before it is described as "cryptic." A lack of detailed examination of the presented evidence hinders a clear understanding of the basis upon which the decision was made. Adequate analysis of the material is imperative, especially in trademark disputes where evidentiary details can substantially impact the outcome.

Trademark Allotment Dispute:

The order also highlights a dispute concerning the number of registered trademarks allotted to each party and the applications seeking registration or cancellation of such trademarks. The absence of a thorough examination of these matters leaves room for ambiguity and raises questions about the adequacy of the court's decision.

Inadequate Material Analysis:

The analysis provided by the trial court regarding the material placed before it is described as "cryptic." A lack of detailed examination of the presented evidence hinders a clear understanding of the basis upon which the decision was made. Adequate analysis of the material is imperative, especially in trademark disputes where evidentiary details can substantially impact the outcome.

Insufficient Discussion of Injunction Prerequisites:

The court's order is criticized for its failure to elaborate on the three key prerequisites for the grant of a temporary injunction  prima facie case, balance of convenience, and irreparable loss. These factors form the foundation for granting injunctive relief and are central to preserving the rights of parties involved.

Consideration of Remand:

While the court expresses its general reluctance to remand cases to the trial court, it acknowledges the complexities and ambiguities in the current case. The multitude of disputes  trademark registration, withdrawal, prior user, and family history  presents a convoluted scenario that requires a thorough examination. Considering the lack of comprehensive analysis in the impugned order, a remand might be the only viable solution to ensure a just and well-informed decision.

Case Law Discussed:

Case Title: Iftikhar Alam Vs M.M.I. Tobacco Pvt. Ltd.

Date of Judgement:07.08.2023

Case No. First Appeal from Order No.77 of 2023

Neutral Citation No: N.A.

Name of Hon'ble Judge: Rajendra Chandra Naik, H.J.

Name of Court: Allahabad High Court

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539

Kent Cables Private Limited and Ors Vs Union of India

The case of RAZO vs. RAZOFAST involves allegations of trademark infringement and unfair competition arising from the defendant's use of the mark "RAZOFAST," which closely resembles the plaintiff's mark "RAZO." The plaintiff.

Trademark Infringement and the Triple Identity Test:

The triple identity test is a fundamental principle in trademark law used to determine the likelihood of confusion between two marks. The test involves three elements: deceptive similarity of marks, identity of goods or services, and availability through the same sources, catering to the same consumer base. In the case of RAZO vs. RAZOFAST, all three elements of the triple identity test appear to be satisfied.

Deceptive Similarity of Marks:

The plaintiff's mark "RAZO" and the defendant's mark "RAZOFAST" share a high degree of visual and phonetic similarity. The only difference between the marks is the addition of the suffix "FAST" in the defendant's mark. This similarity is likely to create confusion among consumers, especially given that both marks are used in connection with the same product, rabeprazole.

Identity of Goods:

Both parties offer the same product, namely, rabeprazole. The identical nature of the goods further strengthens the argument for potential confusion among consumers who may believe that the products are affiliated or originate from the same source.

Availability and Consumer Base:

The fact that the plaintiff's and defendant's products are available at the same retail outlets and cater to the same class of consumers underscores the potential for consumer confusion. Consumers seeking rabeprazole may encounter both marks and might mistake the defendant's product for that of the plaintiff due to the similarity in marks and the presence of both products in the same retail spaces.

Trade Dress and Unfair Competition:

Apart from the trademark infringement claim, the plaintiff also alleges that the trade dress of the defendant is similar to its own. Trade dress refers to the overall visual appearance and design of a product, which can include packaging, color schemes, and other elements. In this case, if the defendant's trade dress is indeed similar to that of the plaintiff, it may contribute to the likelihood of consumer confusion, reinforcing the plaintiff's claim of trademark infringement.

Intent to Ride on Goodwill and Reputation:

The defendant's choice of "RAZO" as a prefix in the mark "RAZOFAST" raises concerns about an intent to ride on the goodwill and reputation associated with the plaintiff's mark. Such an intent suggests an effort to benefit from the plaintiff's established market presence and reputation by creating a false association between the two products.

Case Law Discussed:

Case Title: Dr. Reddys Laboratories Limited Vs Fast Cure Pharma

Date of Judgement:16.08.2023

Case No. CS Comm 436 of 2021

Neutral Citation No: 2023: DHC: 5829

Name of Hon'ble Judge: C Hari Shankar

Name of Court: Delhi High Court

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney

Dr. Reddys Laboratories Limited Vs Fast Cure Pharma

The case of RAZO vs. RAZOFAST involves allegations of trademark infringement and unfair competition arising from the defendant's use of the mark "RAZOFAST," which closely resembles the plaintiff's mark "RAZO." The plaintiff.

Trademark Infringement and the Triple Identity Test:

The triple identity test is a fundamental principle in trademark law used to determine the likelihood of confusion between two marks. The test involves three elements: deceptive similarity of marks, identity of goods or services, and availability through the same sources, catering to the same consumer base. In the case of RAZO vs. RAZOFAST, all three elements of the triple identity test appear to be satisfied.

Deceptive Similarity of Marks:

The plaintiff's mark "RAZO" and the defendant's mark "RAZOFAST" share a high degree of visual and phonetic similarity. The only difference between the marks is the addition of the suffix "FAST" in the defendant's mark. This similarity is likely to create confusion among consumers, especially given that both marks are used in connection with the same product, rabeprazole.

Identity of Goods:

Both parties offer the same product, namely, rabeprazole. The identical nature of the goods further strengthens the argument for potential confusion among consumers who may believe that the products are affiliated or originate from the same source.

Availability and Consumer Base:

The fact that the plaintiff's and defendant's products are available at the same retail outlets and cater to the same class of consumers underscores the potential for consumer confusion. Consumers seeking rabeprazole may encounter both marks and might mistake the defendant's product for that of the plaintiff due to the similarity in marks and the presence of both products in the same retail spaces.

Trade Dress and Unfair Competition:

Apart from the trademark infringement claim, the plaintiff also alleges that the trade dress of the defendant is similar to its own. Trade dress refers to the overall visual appearance and design of a product, which can include packaging, color schemes, and other elements. In this case, if the defendant's trade dress is indeed similar to that of the plaintiff, it may contribute to the likelihood of consumer confusion, reinforcing the plaintiff's claim of trademark infringement.

Intent to Ride on Goodwill and Reputation:

The defendant's choice of "RAZO" as a prefix in the mark "RAZOFAST" raises concerns about an intent to ride on the goodwill and reputation associated with the plaintiff's mark. Such an intent suggests an effort to benefit from the plaintiff's established market presence and reputation by creating a false association between the two products.

Case Law Discussed:

Case Title: Dr. Reddys Laboratories Limited Vs Fast Cure Pharma

Date of Judgement:16.08.2023

Case No. CS Comm 436 of 2021

Neutral Citation No: 2023: DHC: 5829

Name of Hon'ble Judge: C Hari Shankar

Name of Court: Delhi High Court

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney

Dhariwal Wooltex Vs British India Corporation Limited and another

The present case revolves around a dispute over the registration of the DHARIWALWOOLTEX device mark. The appellant asserts that they have been using this mark since 1 January 1984 and have provided evidence of such usage starting from 15 May 1984. The pivotal issue is whether the appellant's delayed submission of evidence should be held against them, leading to the rejection of their application for registration. This article critically examines the appellant's claims, the legal principles governing such cases, and the fairness of the Joint Registrar's decision.

Background

The appellant's contention is that, while the opportunity to present evidence of usage of the DHARIWALWOOLTEX device mark emerged 13 years after filing the application, they cannot be faulted for not having the material to evidence the usage at the time of filing. The appellant argues that this delay in submitting evidence should not serve as grounds for dismissing their claim of user, especially given the circumstances.

Legal Framework

In matters of trademark registration, the burden of proof lies with the applicant to demonstrate the usage of the mark in commerce. Trademark law recognizes the importance of actual usage to establish rights over a mark and prevent trademark squatting. The delay in providing evidence of use, however, may lead to skepticism about the veracity of the claim.

Analyzing the Appellant's Argument

The appellant's argument rests on the premise that they were unable to provide evidence of usage from 1 January 1984 due to the lack of material at that time. This assertion raises questions about the plausibility of their claim and the credibility of the evidence presented. It is essential to assess whether the appellant's explanation for the delay is reasonable and whether it affects the veracity of their claim.

Joint Registrar's Decision

The Joint Registrar's rejection of the appellant's claim of user is primarily based on the assertion that the appellant filed a false claim of user. This decision appears to hinge on the assumption that the appellant's delay in presenting evidence implies a lack of genuine user of the mark. However, this interpretation might overlook legitimate reasons for the delay, such as the unavailability of records or the practical challenges of gathering historical evidence.

The Decision:

Claiming incorrect claim of user does not necessarily results into cancellation of registered Trademark. In this case, though the registered proprietor claimed a user, which is not supported by actual claim of use. The Hon'ble Court allowed the Trademark to remain on the register with amended claim of user, for which actual document of user was filed by the registered proprietor.

Case Law Discussed:

Case Title: Dhariwal Wooltex Vs British India Corporation Limited and another

Date of Judgement:16.08.2023

Case No. CA (Comm IPD-TM) 17/2022

Neutral Citation No: 2023: DHC: 5817

Name of Hon'ble Judge: C Hari Shankar

Name of Court: Delhi High Court

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Hero Motocorp Limited Vs Shree Amba Industries

Non-Usage of a Patent in India  as a Ground for Declining Injunction

Introduction:

This legal article examines the intricate legal nuances surrounding the refusal of an injunction in a patent infringement case due to non-use of the patent in India. It delves into the case of an alleged patent infringement involving a folded honeycomb invention, highlighting the pivotal role of the plaintiff's non-use of the patent and its implications on the court's decision to grant or decline an injunction.

Background of the Case:

In the case under scrutiny, the plaintiff filed a suit against the defendant for infringing their registered Indian Patent titled "Folded Honeycomb and Process for Producing the Same." The plaintiff's arguments were based on instances of encountering the infringing product during specific events and commercial transactions. It is noteworthy that the defendant's alleged infringement pertained to the Indian Patent, and the plaintiff did not manufacture or sell their patented product within India.

Non-Use of Patent as a Ground for Declining Injunction:

The focal point of the analysis lies in the court's assessment of whether the patentee's non-use of the patent in India can be a valid ground for refusing an injunction against the infringing party. The court, in this case, relied on precedent and jurisprudence, particularly the decision in the case of Franz Xaver Huemer v. New Yash Engineers (AIR 1997 Delhi 77). In the aforementioned case, the Delhi High Court established that a patentee's failure to utilize their patent rights within the jurisdiction can impact their equitable right to seek an injunction against infringers.

Court's Reasoning and Precedent:

The Hon'ble Delhi High Court referenced the earlier judgment and held that the non-user of the patented invention within India by the plaintiff was indeed a substantial factor in deciding the injunction's fate. The court opined that equity requires a patentee to actively use their patent rights within the jurisdiction to justify seeking an injunction against alleged infringers. The court's reliance on precedent highlights the significance of consistent legal principles and the weight they carry in shaping decisions.

Balancing Interests: Licensing and Ministry of Defence:

In the case at hand, the court's approach to balance the interests of both parties is noteworthy. Considering that the plaintiff was open to licensing its patented invention and the defendant was a supplier to the Ministry of Defence, the court's interim arrangement demonstrates the pragmatic approach taken to address competing interests and ensure fairness in the proceedings.

The Concluding Note:

The case serves as a prime example of the complex interplay between patent rights, non-use of patents, and the issuance of injunctions in the realm of intellectual property law. The court's reliance on precedent and its emphasis on equitable considerations underscore the importance of active patent use within the jurisdiction to validate a patentee's claim to injunctive relief.

Case Law Discussed:

Date of Judgement:04.08.2023

Case No. CS Comm 382 of 2019

Neutral Citation No: 2023: DHC: 5528

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

Name of Court: Delhi High Court

Case Title: Enconcore NV Vs Anjani Technoplast Limited 

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Sun Pharma Laboratories Limited Vs Fine cure Pharmaceuticals Ltd.

Non-Usage of a Patent in India  as a Ground for Declining Injunction

Introduction:

This legal article examines the intricate legal nuances surrounding the refusal of an injunction in a patent infringement case due to non-use of the patent in India. It delves into the case of an alleged patent infringement involving a folded honeycomb invention, highlighting the pivotal role of the plaintiff's non-use of the patent and its implications on the court's decision to grant or decline an injunction.

Background of the Case:

In the case under scrutiny, the plaintiff filed a suit against the defendant for infringing their registered Indian Patent titled "Folded Honeycomb and Process for Producing the Same." The plaintiff's arguments were based on instances of encountering the infringing product during specific events and commercial transactions. It is noteworthy that the defendant's alleged infringement pertained to the Indian Patent, and the plaintiff did not manufacture or sell their patented product within India.

Non-Use of Patent as a Ground for Declining Injunction:

The focal point of the analysis lies in the court's assessment of whether the patentee's non-use of the patent in India can be a valid ground for refusing an injunction against the infringing party. The court, in this case, relied on precedent and jurisprudence, particularly the decision in the case of Franz Xaver Huemer v. New Yash Engineers (AIR 1997 Delhi 77). In the aforementioned case, the Delhi High Court established that a patentee's failure to utilize their patent rights within the jurisdiction can impact their equitable right to seek an injunction against infringers.

Court's Reasoning and Precedent:

The Hon'ble Delhi High Court referenced the earlier judgment and held that the non-user of the patented invention within India by the plaintiff was indeed a substantial factor in deciding the injunction's fate. The court opined that equity requires a patentee to actively use their patent rights within the jurisdiction to justify seeking an injunction against alleged infringers. The court's reliance on precedent highlights the significance of consistent legal principles and the weight they carry in shaping decisions.

Balancing Interests: Licensing and Ministry of Defence:

In the case at hand, the court's approach to balance the interests of both parties is noteworthy. Considering that the plaintiff was open to licensing its patented invention and the defendant was a supplier to the Ministry of Defence, the court's interim arrangement demonstrates the pragmatic approach taken to address competing interests and ensure fairness in the proceedings.

The Concluding Note:

The case serves as a prime example of the complex interplay between patent rights, non-use of patents, and the issuance of injunctions in the realm of intellectual property law. The court's reliance on precedent and its emphasis on equitable considerations underscore the importance of active patent use within the jurisdiction to validate a patentee's claim to injunctive relief.

Case Law Discussed:
Date of Judgement:04.08.2023
Case No. CS Comm 382 of 2019
Neutral Citation No: 2023: DHC: 5528
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Name of Court: Delhi High Court
Case Title: Enconcore NV Vs Anjani Technoplast Limited

Disclaimer:

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

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

Enconcore NV Vs Anjani Technoplast Limited

Non-Usage of a Patent in India  as a Ground for Declining Injunction

Introduction:

This legal article examines the intricate legal nuances surrounding the refusal of an injunction in a patent infringement case due to non-use of the patent in India. It delves into the case of an alleged patent infringement involving a folded honeycomb invention, highlighting the pivotal role of the plaintiff's non-use of the patent and its implications on the court's decision to grant or decline an injunction.

Background of the Case:

In the case under scrutiny, the plaintiff filed a suit against the defendant for infringing their registered Indian Patent titled "Folded Honeycomb and Process for Producing the Same." The plaintiff's arguments were based on instances of encountering the infringing product during specific events and commercial transactions. It is noteworthy that the defendant's alleged infringement pertained to the Indian Patent, and the plaintiff did not manufacture or sell their patented product within India.

Non-Use of Patent as a Ground for Declining Injunction:

The focal point of the analysis lies in the court's assessment of whether the patentee's non-use of the patent in India can be a valid ground for refusing an injunction against the infringing party. The court, in this case, relied on precedent and jurisprudence, particularly the decision in the case of Franz Xaver Huemer v. New Yash Engineers (AIR 1997 Delhi 77). In the aforementioned case, the Delhi High Court established that a patentee's failure to utilize their patent rights within the jurisdiction can impact their equitable right to seek an injunction against infringers.

Court's Reasoning and Precedent:

The Hon'ble Delhi High Court referenced the earlier judgment and held that the non-user of the patented invention within India by the plaintiff was indeed a substantial factor in deciding the injunction's fate. The court opined that equity requires a patentee to actively use their patent rights within the jurisdiction to justify seeking an injunction against alleged infringers. The court's reliance on precedent highlights the significance of consistent legal principles and the weight they carry in shaping decisions.

Balancing Interests: Licensing and Ministry of Defence:

In the case at hand, the court's approach to balance the interests of both parties is noteworthy. Considering that the plaintiff was open to licensing its patented invention and the defendant was a supplier to the Ministry of Defence, the court's interim arrangement demonstrates the pragmatic approach taken to address competing interests and ensure fairness in the proceedings.

The Concluding Note:

The case serves as a prime example of the complex interplay between patent rights, non-use of patents, and the issuance of injunctions in the realm of intellectual property law. The court's reliance on precedent and its emphasis on equitable considerations underscore the importance of active patent use within the jurisdiction to validate a patentee's claim to injunctive relief.

Case Law Discussed:

Date of Judgement:04.08.2023

Case No. CS Comm 382 of 2019

Neutral Citation No: 2023: DHC: 5528

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

Name of Court: Delhi High Court

Case Title: Enconcore NV Vs Anjani Technoplast Limited 

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

9990389539

Mankind Pharma Limited vs Novakind Bio Sciences Private Limited

Use of a Mark as Part of a Trade Name

Introduction:

Trademark infringement cases often involve intricate legal arguments that revolve around the nature and use of marks. One such argument arises when a defendant contends that their use of a mark is not infringing because it is part of their corporate name and not used as a trademark. This article examines the legal implications of using a mark as part of a trade name and analyses a specific case where such a defence was rejected by the Hon'ble High Court of Delhi.

Defendant's Argument and Plaintiff's Claim:

In the case at hand, the plaintiff filed a suit for trademark infringement based on their proprietary rights in the trademark "MANKIND." The plaintiff sought a permanent injunction against the defendant's use of the mark "NOVAKIND" as part of its corporate name, "NOVAKIND BIO SCIENCES PRIVATE LIMITED." The defendant attempted to escape liability by asserting that their use of the mark was not as a trademark but as a component of their trade name.

The Definition of "Mark":

A fundamental aspect of this analysis is the definition of a "mark." In the context of trademark law, a mark includes a name, signature, word, letter, or any combination thereof. This definition encompasses a broad range of elements that can be used to identify the source of goods or services in commerce.

Use of the Mark in Trade:

The court assessed whether the defendant's use of the mark "NOVAKIND" could be considered as a trademark within the meaning of Section 2(zb) of the Trade Marks Act. 

The court found that the mark was prominently used on the strip of the pharmaceutical preparation, indicating its association with the defendant's products. This prominent use in the course of trade demonstrated that the defendant's contention that the mark was not used in the course of trade was untenable.

Trade Mark Vs Corporate Name/Trade Name:

The court rejected the defendant's argument that their use of the mark was merely part of their corporate name. It held that the mark's conspicuous presence on the pharmaceutical product indicated its role in distinguishing the defendant's products. Thus, the court concluded that the defendant was using the mark as a trademark within the purview of the Trade Marks Act.

Reliance on the Drugs and Cosmetics Act:

The defendant also relied on the Drugs and Cosmetics Act, which mandated the affixation of the company name on pharmaceutical products. The court dismissed this argument, stating that the legal requirement to display the company name did not absolve the defendant from infringing a registered trademark. The court emphasized that the defendant could have adopted a non-infringing company name to comply with both the Drugs and Cosmetics Act and the Trade Marks Act.

The Concluding Note:

The court's decision underscores that the mere inclusion of a mark in a corporate name does not shield a defendant from liability if the mark is used to indicate the source of goods in commerce. This analysis emphasizes the importance of carefully navigating trademark law to protect proprietary rights and prevent infringement, even in scenarios involving corporate names and statutory requirements.

The Case Law Discussed:

Date of Judgement/Order:07/08/2023

Case No. CS(COMM) 188/2021

Neutral Citation: 2023:DHC:5653

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar , HJ

Case Title: Mankind Pharma Limited vs Novakind Bio Sciences Private Limited 

Disclaimer:

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

Akebia Therapeuticals Inc Vs Controller General of Patent

Admissibility of Documents in Post Grant Opposition Proceedings under Patent Law

Introduction:

One key aspect of Post grant Patent  opposition proceedings is the submission of relevant documents and evidence by both the opponent and the patentee. This article delves into the intricacies of the case at hand, where the admissibility of documents filed without supporting affidavits is questioned, leading to a significant legal interpretation regarding the manner of filing documents in post grant opposition proceedings.

Factual Background:

In the case under scrutiny, the opponent failed to file any evidence along with their post grant opposition, while the patentee submitted a reply statement under Rule 58 of the Patent Rules. The opponent subsequently filed a rejoinder to the patentee's reply statement along with an affidavit in support of previously filed documents. This move by the opponent prompted the patentee to challenge the admissibility of the affidavit and its accompanying documents.

Controversy:

The central point of contention revolved around whether the affidavit filed by the opponent could be accepted as evidence under Rule 59 of the Patents Rules. The patentee's argument was grounded in the assertion that any evidence submitted under Rule 59 should not exceed the scope of evidence presented by the patentee with their reply statement under Rule 58. 

The patentee further emphasized that since no evidence had been submitted by the opponent with their post grant opposition under Rule 57, the subsequent filing of an affidavit was unwarranted.

Court's Interpretation:

The court's deliberation focused on the interpretation of the rules governing post grant opposition proceedings, specifically Rules 57, 58, and 59 of the Patents Rules.

The court underscored that Rule 57 allows for the filing of a written statement and evidence, emphasizing the requirement of an accompanying affidavit to establish the authenticity and veracity of the documents submitted. Without such an affidavit, the court ruled that documents cannot be considered "evidence."

The court's decision hinged on the notion that the opponent had exceeded their rights conferred by Rule 57 by submitting documents without proper supporting affidavits. By doing so, the opponent had essentially denied the patentee the opportunity to respond with corresponding evidence under Rule 58, which allows the patentee to submit a reply statement and evidence.

Implications and Conclusion:

The court's decision in this case holds significant implications for post grant opposition proceedings in the realm of patent law. It reinforces the importance of adhering to procedural requirements, specifically the submission of documents accompanied by supporting affidavits. 

The ruling emphasizes that documents submitted without proper affidavits cannot be considered as evidence under Rule 57, thereby limiting the opponent's ability to introduce new materials at a later stage without affording the patentee a fair opportunity to respond.

The Case Law Discussed:

Date of Judgement/Order:09/08/2023

Case No. WP C IPD 32 of 2023

Neutral Citation: 2023:DHC:5672

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar , HJ

Case Title: Akebia Therapeuticals Inc Vs Controller General of Patent

Disclaimer:

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

Advocate Ajay Amitabh Suman

IP ADJUTOR

Patent and Trademark Attorney

ajayamitabhsuman@gmail.com

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Russell Corp Australia Pty Ltd. Vs Shri Ashok Mahajan

Removal of a Registered Trademark on Grounds of Non-Use

Introduction:

The removal of a registered trademark on the grounds of non-use is a crucial aspect of trademark law that ensures trademarks are actively used in commerce to maintain their exclusivity. 

This article analyzes a specific case involving the removal of the trademark "SHERRIN" under the provisions of Section 47(1)(a) and Section 57 of the Trademarks Act, as well as considerations of bad faith registration and habitual squatting.

Background and Facts of the Case:

The subject matter revolves around the brand name "SHERRIN," originally adopted in 1879 by Mr. Thomas William Sherrin, who established T.W. Sherrin Pty Ltd., a company manufacturing specially shaped footballs for Australian Football. Over time, the company changed ownership and was eventually acquired by Russell Brands, LLC in 2003.

The petitioner filed a cancellation petition based on the following grounds:

Non-Use: The petitioner claimed that the trademark "SHERRIN" had not been used in commerce for a considerable period.

Bad Faith Registration: Allegations of the trademark's registration in bad faith under Section 57 of the Act.

Habitual Squatting: Accusations that the Respondent No. 1 was a habitual squatter of well-known marks.

The petitioner also introduced evidence in the form of an investigator's affidavit, asserting that the trademark had ceased to be used. The investigator's findings revealed that the mark had been discontinued since 2010.

Legal Analysis:

The legal analysis primarily centers around the provisions of Section 47 of the Trademarks Act, which outlines the conditions under which a trademark can be removed from the register due to non-use. Specifically, Section 47(1)(b) stipulates that a registered trademark can be removed if it remains unused for a period of five years and three months preceding the date of filing the rectification petition.

In the case of "SHERRIN," the court considered the timeline of events:

The impugned mark was filed on February 27, 2007, and registered on March 18, 2010.

The investigator's affidavit confirmed that the trademark had been discontinued since 2010.

The rectification petition was filed in the year 2020, well beyond the stipulated five years and three months of non-use.

The Court's Ruling:

Based on the evidence presented, the court found that the requirements of Section 47(1)(b) were satisfied. Since the trademark "SHERRIN" had not been in use for more than five years and three months preceding the rectification petition, the court allowed the petition for removal.

Conclusion:

The case highlights the importance of active and continuous use of trademarks to maintain their registration and exclusivity. It emphasizes the legal mechanism for removing trademarks on the grounds of non-use and underscores the need for evidentiary support, such as investigator affidavits, to establish the absence of use. The ruling reinforces the principle that trademarks must be used in commerce to retain their protection, serving as a cautionary tale for trademark holders to ensure proper utilization of their marks.

The Case Law Discussed:

Date of Judgement/Order:08/08/2023

Case No. CO Comm IPD TM 164 of 2023

Neutral Citation: 2023:DHC:5556

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh, HJ

Case Title: Russell Corp Australia Pty Ltd. Vs Shri Ashok Mahajan

Disclaimer:

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

Roxtec Ab and anr Versus Sukant Chakravarty and Ors

Maintainability of Suit for Infringement of Design by Unregistered Licensee 

Introduction:

The subject matter under scrutiny pertains to a legal dispute involving the maintainability of a suit for infringement of design filed by Plaintiff No.1 and Plaintiff No.2 jointly. 

Plaintiff No.1 is the registered proprietor of the design, while Plaintiff No.2 is a wholly owned Indian subsidiary of Plaintiff No.1. 

The crux of the matter revolves around the Defendants' application seeking the removal of Plaintiff No.2 from the suit on the grounds that the suit cannot be maintained by Plaintiff as the same is not a registered license of the design.

Contention of the Defendants:

The Defendants assert that a suit for infringement of design cannot be maintained by Plaintiff No.2, who is unregistered Licensee and the wholly owned subsidiary of Plaintiff No.1 in India under Sections 22 and 30 of the Designs Act, 2000 unless the assignment or license is registered with the Design office. They contend that the suit initiated by Plaintiff No.2 is not maintainable, arguing that Plaintiff No.2 should be deleted from the proceedings. The Defendants base their argument on the requirement for registration under the aforementioned sections.

Plaintiffs' Counterarguments:

The Plaintiffs present a counterargument, citing Section 30 of the Designs Act, 2000, which they interpret as conferring discretion upon the party to register the license or assignment. Additionally, they emphasize that Section 30(5) allows the Court to admit a license even if not registered. The Plaintiffs highlight the language used in Section 30(1) and Section 30(2), contending that the use of the term 'may make an application' suggests that registration is not mandatory but optional.

Court's Observations and Analysis:

Upon analyzing the arguments presented by both parties, the Court delves into the nature of Plaintiff No.2's involvement in the suit. The Court observes that Plaintiff No.2 has been included in the proceedings not as the registered owner of the design but as a wholly owned subsidiary of Plaintiff No.1. Plaintiff No.2's role is to establish critical factors such as sales, promotional expenses, and the extent of business conducted in India concerning the products in question. The Court deems Plaintiff No.2's participation as relevant and integral to the adjudication of issues pertaining to damages and the rendering of accounts.

Rationale for Maintainability:

The Court concludes that the suit for infringement of design by an unregistered licensee, specifically Plaintiff No.2, is indeed maintainable. The Court takes into account the discretionary nature of registration under Section 30, which affords parties the choice to register or not. Furthermore, the Court relies on Section 30(5) to emphasize that unregistered licenses can still be presented in the proceedings. 

The Concluding Note:

In light of the aforementioned arguments and analysis, the Hon'ble Court concludes that the suit for infringement of design by an unregistered licensee, specifically Plaintiff No.2, is maintainable. 

The Court's decision hinges on the discretionary nature of registration, the ability to introduce unregistered licenses, and the interpretation of relevant sections of the Designs Act, 2000. 

This legal determination underscores the significance of Plaintiff No.2's role in establishing crucial evidence related to damages and financial matters in the proceedings.

The Case Law Discussed:

Date of Judgement/Order:07/08/2023

Case No. CS Comm 1045 of 2016

Neutral Citation: 2023:DHC:5572

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh, HJ

Case Title: Roxtec Ab and anr Versus Sukant Chakravarty and Ors

Disclaimer:

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

Paul Components Pvt. Ltd. Vs Hi Tech Arai Pvt. Ltd.

Date of Judgement/Order:09/08/2023

Case No. CS Comm 374

Neutral Citation: 2023:DHC:5612

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, HJ

Case Title: Paul Components Pvt. Ltd. Vs Hi Tech Arai Pvt. Ltd.

Defendant's Burden of Proof under Section 34 of the Trademarks Act 1999

Introduction:

The case at hand involves a dispute between the Plaintiff and the Defendant over the alleged infringement of the Plaintiff's registered trademark "HTA" for oil seals and automobile rubber parts. 

The Plaintiff claims to have extensively and openly used the mark since 1977, while the Defendant, lacking a trademark registration, is accused of using similar marks "HTA" and "ARS-HTA" for oil seals. 

The Plaintiff seeks an injunction against the Defendant's alleged infringing use. This article will delve into the requirements for the Defendant to successfully avail the protection provided by Section 34 of the Trademarks Act 1999 in light of the presented facts and relevant legal principles.

Section 34 of the Trademarks Act 1999:

Section 34 of the Trademarks Act 1999 provides a limited defense to an unregistered user of a mark that is registered in favor of another party. It allows the infringer to escape an injunction if their use of the impugned mark predates the use or the registration, whichever is earlier,  of the mark owned by the plaintiff This provision seeks to balance the rights of a registered trademark owner with those of an unregistered user who has established prior use.

Analysis of Defendant's Case:

To take advantage of the protection offered under Section 34, the Defendant must establish the following elements:

Prior Use: The Defendant needs to demonstrate that they have been using the impugned mark (in this case, "HTA" and "ARS-HTA") before the Plaintiff's date of  registered mark "HTA or user , whichever is earlier. In this case, the Defendant claims to have used the mark since 1985.

Precedence over Plaintiff's Use: The Defendant must establish that their use of the impugned mark began before the Plaintiff's use of their registered mark in 1977. This chronology is crucial for the Defendant's case under Section 34.

Good Faith: The Defendant's prior use should be established in good faith, without attempting to capitalize on the Plaintiff's established reputation or goodwill associated with their mark.

In the present case, while the Plaintiff's registered trademark dates back to 2007, while its use of the mark "HTA" since 1977 becomes relevant. The Defendant asserts use since 1985, which would place their use subsequent to the Plaintiff's use. This timeline potentially jeopardizes the Defendant's ability to invoke Section 34 as a defense. Result was that the Defendant failed in taking advantage of Section 34 of Trademark Act 1999.

Conclusion:

Section 34 of the Trademarks Act 1999 provides an exception to the general principle of protecting registered trademarks by allowing an unregistered user to continue using a mark under certain circumstances. To successfully avail this defense, the Defendant must prove their prior and non-infringing use of the impugned mark, with the use predating the Plaintiff's use or  registration, whichever is earlier.

Disclaimer:

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

The Role of Judges in Shaping Public Policy in India

Introduction

The Constitution of India stands as the bedrock of the nation's legal and political framework, enshrining the principles of justice, equality, and democratic governance. Central to this framework is the concept of an independent judiciary, tasked with interpreting the law and safeguarding the rights of citizens. This article delves into the nuanced debate surrounding the extent to which judges should actively shape public policy, examining the delicate balance between judicial activism and judicial restraint within the Indian context.

The Judiciary's Constitutional Mandate

India's judiciary, as envisioned by the framers of the Constitution, holds a pivotal role in upholding the rule of law and ensuring the proper functioning of a democratic society. Its independence is enshrined to safeguard against undue influence from the executive and legislative branches. The judiciary's power to strike down unconstitutional laws or actions, thus serving as a check on potential government overreach, underscores the significance of its role in maintaining a just and equitable society.

The Dilemma of Judicial Activism

The concept of judicial activism refers to instances where judges go beyond mere interpretation of the law and actively engage in shaping public policy. While this can be a powerful tool to safeguard citizens' rights in the face of legislative or executive inaction, it also raises concerns about a potential encroachment on the domain of the other branches of government. The question of whether judges should limit themselves to interpreting the law or actively participate in shaping public policy is at the heart of a vigorous debate.

The Necessity of Judicial Activism

Proponents of judicial activism argue that the judiciary's active involvement in shaping public policy is a necessity, particularly when the executive and legislative branches fail to adequately protect citizens' rights. Instances of social injustice, environmental degradation, or human rights violations might call for judicial intervention to ensure that justice is served. In a diverse and dynamic society like India, where marginalized communities may not have a strong voice in the political process, judicial activism can play a vital role in addressing systemic issues.

The Limits of Judicial Activism

On the other hand, those in favor of judicial restraint contend that judges should refrain from overstepping their role as interpreters of the law. They posit that the executive and legislative branches are accountable to the electorate and are better equipped to formulate and implement policy decisions. Excessive judicial activism, they argue, could lead to an imbalance of power, where unelected judges wield disproportionate influence over matters of public policy, potentially undermining the principles of democracy.

Preserving Judicial Independence

The independence of the judiciary is a cornerstone of India's democratic fabric. It serves as a critical check on the other branches of government, ensuring that no one branch becomes unchecked in its power. This independence is not just a legal principle but a fundamental safeguard for citizens' rights and freedoms. Any discussion on the role of judges in shaping public policy must carefully consider the delicate balance required to preserve this independence while fulfilling the judiciary's broader responsibilities.

Striking the Balance

Ultimately, the dichotomy between judicial activism and judicial restraint is not a binary choice but a nuanced balancing act. Judges must exercise discretion, considering the specific circumstances of each case, the gravity of the issues at hand, and the potential consequences of their decisions. While judges should generally limit themselves to interpreting the law, there will be instances where judicial activism is essential to safeguard the principles of justice, equality, and human rights.

Conclusion

The role of judges in shaping public policy in India presents a complex and multifaceted challenge. The Constitution envisages an independent judiciary as a guardian of citizens' rights, with the authority to strike down unconstitutional laws and actions. Striking the right balance between judicial activism and judicial restraint is crucial to maintaining the integrity of India's democratic system. While judges must exercise caution to avoid overreach, they should also be prepared to step in when necessary to protect the rights and interests of the citizens they serve. The ongoing debate underscores the vitality of a robust, independent judiciary in upholding the ideals of the Indian Constitution and ensuring justice for all.

Disclaimer:

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

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

A Comprehensive Analysis of Proposed Amendments to IPC, CRPC, and Evidence Act

A Comprehensive Analysis of Proposed Amendments to IPC, CRPC, and Evidence Act: A Legal Perspective

Introduction:

The Bills proposing amendments to the Indian Penal Code (IPC), Code of Criminal Procedure (CRPC), and the Evidence Act encompass a myriad of salient features that aim to address various shortcomings within the criminal justice system. This article undertakes a detailed analytical examination of these proposed amendments, shedding light on their potential implications and the broader legal landscape they seek to reshape.

Digitization of Criminal Justice Process:

The proposed digitization of the entire criminal justice process, from FIR registration to judgment delivery, is a transformative step towards efficiency and transparency. This modernization can streamline proceedings, reduce paperwork, and expedite justice delivery.

Video Conferencing for Trial:

Facilitating complete trials, including cross-examinations, through video conferencing can revolutionize courtroom procedures. This move addresses logistical challenges, enhances witness protection, and accelerates the trial process.

Videography of Statements and Search & Seizure:

Mandatory videography of victims' statements in sexual crimes and during search & seizure operations bolsters the authenticity of evidence. This could potentially deter manipulation and ensure a fair and accurate portrayal of events.

Timelines for Filing Charge Sheet and Judgment:

The stipulation of timeframes for filing charge sheets and delivering judgments reinforces the principle of speedy justice. However, provisions for extensions acknowledge the complexity of certain cases and ensure thorough examination.

Online Availability of Judgments:

Mandating the online publication of judgments within 7 days enhances transparency, accessibility, and public accountability. This move aligns with the global trend of open justice and promotes a better-informed society.

Forensic Teams and Mobile FSLs:

Requiring forensic teams to visit crime scenes for serious offenses and deploying mobile Forensic Science Laboratories (FSLs) at the district level enhances evidence collection and analysis, potentially strengthening the prosecution's case.

Mob Lynching Provision:

The introduction of a distinct provision to address mob lynching, with penalties ranging from 7 years' imprisonment to the death penalty, is a significant step towards curbing this menace. This provision emphasizes the severity of such crimes and aims to deter potential offenders, thereby safeguarding the fundamental right to life and personal security.

Zero FIR' and Jurisdiction:

The formalization of the 'Zero FIR' concept is a progressive move, empowering citizens to report crimes at any police station, irrespective of jurisdiction. This ensures prompt action and prevents delays in initiating investigations, ultimately enhancing access to justice.

Deemed Sanction' for Prosecution:

The concept of 'deemed sanction' adds an element of accountability to the prosecution of civil servants and police officers accused of criminal offenses. By mandating prosecution in case of authority's inaction within 120 days, this provision promotes transparency and combats potential misuse of power.

Separate Provisions for Specific Offenses:

The inclusion of separate provisions for organized crimes, rape under false pretexts, chain snatching, and similar offenses underscores the intent to address specific societal challenges with tailored legal responses.

Commutation of Sentences:

The provision limiting the commutation of death penalties, life terms, and shorter sentences underscores the gravity of certain offenses. This calibrated approach aims to balance punishment and rehabilitation, while accounting for the severity of the crime.

The Concluding Note:

The proposed amendments to the IPC, CRPC, and Evidence Act signify a comprehensive overhaul of India's criminal justice system. By addressing specific shortcomings and introducing innovative measures, these amendments strive to expedite justice delivery, enhance accountability, and ensure the protection of individual rights. While the efficacy of these changes will depend on their implementation and interpretation, they reflect a significant stride towards a more just and efficient legal framework.

Disclaimer:

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

Google LLC Vs DRS Logistics Pvt. Ltd

Date of Judgement/Order:10.08 2023

Case No. FAO OS Comm 02 of 2022 

Neutral Citation: 2023:DHC:5615-DB 

Name of Hon'ble Court: Dlehi High Court

Name of Hon'ble Judge: Vibhu Bakhru and Amit Mahajan, HJ

Case Title: Google LLC Vs DRS Logistics Pvt. Ltd

Google Ad Programme and Trademark Infringement 

Introduction:

The case at hand involves a legal dispute between AGARWAL PACKERS AND MOVERS  and Google with regard to the use of trademarks as keywords in the Google Ads Programme.

The Plaintiff alleges that Google's practice of allowing the use of its trademark as keywords in the Ads Programme infringes upon its trademarks and diverts internet traffic to competitors, leading to confusion among potential customers. This article aims to analyze the legal aspects of this case, focusing on whether such use constitutes trademark infringement under the Trade Marks Act, 1999.

Background and Allegations:

The Plaintiff claims that its trademark/trade name 'AGARWAL PACKERS AND MOVERS' has acquired goodwill and reputation due to continuous use, advertising campaigns, marketing efforts, and quality control. 

The Plaintiff alleges that Google encourages third parties to use its registered trademarks as keywords, leading to the display of sponsored links for websites that infringe its trademarks.

The Plaintiff contended that such use of its trademarks diverts potential customers and causes confusion, ultimately infringing upon its trademarks.

Legal Analysis:

The central issue before the court is whether the use of trademarks as keywords in the Google Ads Programme constitutes trademark infringement under Section 29 of the Trade Marks Act, 1999.

The court's analysis revolves around the following key points:

Use of Trademarks as Keywords: 

The court acknowledges that Google's Ads Programme allows advertisers to display sponsored links based on users' search queries. The use of trademarks as keywords is a way to identify relevant internet users. However, the court emphasizes that not all use of marks, even similar ones, constitutes infringement.

Deceptiveness and Confusion: 

The Plaintiff's contention is that the use of its trademark as keywords leads to confusion among internet users, causing them to believe that they are accessing the Plaintiff's services. The court acknowledges this concern but notes that the use of trademarks as keywords is not inherently deceitful.

Detriment to Character or Repute: 

The court establishes that the use of a trademark as a keyword, without blurring or tarnishing the trademark's distinctiveness, is not necessarily detrimental. However, if the displayed ads harm the character or reputation of the trademark, an action for infringement may be warranted.

Goods and Services: 

The court distinguishes between goods and services covered under the registered trademark and those offered by the advertiser. If the goods or services are similar, Section 29(4) of the Trade Marks Act might not apply. However, if dissimilar goods are involved and the trademark has a reputation, the court considers whether the use provides unfair advantage and damages the trademark's distinctive character.

Use of Trademarks and Infringement: 

The court rejects the notion that the mere use of trademarks to display advertisements automatically constitutes trademark infringement. It emphasizes that context, such as the impact on the trademark's reputation and character, must be considered.

Conclusion:

In this case, the Hon'ble Division Bench of the High Court of Delhi upheld that the use of trademarks as keywords in the Google Ads Programme does not per se amount to infringement. 

The court's decision hinges on the absence of blurring or tarnishing of the trademark's distinctiveness, and it clarifies that the use of trademarks as keywords is in relation to the goods and services offered by the advertiser. 

The court emphasizes that each case must be examined on its own merits to determine if trademark infringement has occurred. Therefore, while the Plaintiff's concerns regarding confusion and diversion of traffic are acknowledged, the court's analysis underscores the need for a nuanced understanding of trademark infringement in the digital advertising realm.

Disclaimer:

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