Dinesh Kumar Mittal Vs Pragya Trading Company

Rectification of a Registered Trademark due to Non-Renewal 

Introduction:

The case at hand revolves around the rectification of a registered trademark based on the non-renewal of the said trademark within the specified time frame. 

The petitioner asserted that the subject trademark's registration was initially granted until 21st February 2022, with the one-year renewal deadline expiring on 20th February 2023.

However, no application for the renewal of the mark's registration had been filed, and online records confirmed this fact. Consequently, the registration of the impugned mark had lapsed, but a one-year restoration period was available under Section 25(4) of the Trade Marks Act, 1999.

Ultimately, the Hon'ble High Court of Delhi directed the Registrar of Trademarks to remove the entry of the impugned mark from the Register of Trademarks. This article delves into the legal aspects of trademark rectification due to non-renewal.

I. Background:

Trademark registration is crucial for protecting intellectual property and ensuring that the owner has exclusive rights to use the mark in connection with specific goods or services. However, this protection comes with the responsibility of timely renewing the trademark to maintain its validity.

II. Non-Renewal and Lapse of Trademark Registration:

The crux of this case lies in the failure to renew the trademark registration within the stipulated timeframe. Under trademark law, registrations are typically granted for a specific period, after which they must be renewed to remain in force. In this instance, the petitioner's mark was registered until 21st February 2022. Failure to renew by 20th February 2023 led to the automatic lapse of the registration.

III. Restoration of Lapsed Trademarks:

Section 25(4) of the Trade Marks Act, 1999, plays a pivotal role in this matter. It provides a lifeline for trademark owners whose registrations have lapsed due to non-renewal. This section allows for the restoration of a lapsed mark within one year from the date of expiry. However, restoration is subject to certain conditions and payment of prescribed fees.

IV. The Role of the Court:

In this case, the Hon'ble High Court of Delhi played a decisive role by directing the Registrar of Trademarks to remove the entry of the impugned mark from the Register of Trademarks. This action was likely taken to uphold the principle that a trademark registration should not endure indefinitely without active renewal by its owner. By removing the mark from the register, it signals that the mark is no longer valid unless successfully restored within the one-year grace period.

The Concluding Note:

The case under discussion highlights the importance of diligently renewing trademark registrations within the specified time frame to maintain their legal status and exclusivity. While trademark owners are granted a one-year restoration window after the expiry date, failure to take advantage of this opportunity can result in the removal of the mark from the Register of Trademarks. 

Case Law Discussed:

Date of Judgement:27/03/2023

Case No. C.O. (COMM.IPD-TM) 487/2022

Neutral Citation No: N. A. 

Name of Court: Delhi High Court

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

Case Title: Dinesh Kumar Mittal Vs Pragya Trading Company

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

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

DGT Global Inc Vs DLT Labs Technology

Service Through the Learned Local Commissioner and Its Implications on Order VIII Rule 1 of the CPC

Introduction:

The matter at hand revolves around the interpretation and application of Order VIII Rule 10 of the Code of Civil Procedure (CPC), specifically in relation to the service of summons through a learned Local Commissioner. 

The plaintiff in this case sought a judgment in their favor against the defendants under Order VIII Rule 10 of CPC, as amended by the Commercial Courts Act, 2015. The central question is whether service through the learned Local Commissioner can be equated with the service of summons for the purposes of Order VIII Rule 1 of the CPC.

Order VIII Rule 10 of CPC: 

Order VIII Rule 10 of the CPC, as amended by the Commercial Courts Act, 2015, provides a legal mechanism for a party to obtain a judgment in their favor when the opposing party fails to present a written statement within the prescribed time or as fixed by the court. It is essential to understand that this rule applies specifically in cases where a written statement is required under Order VIII Rule 12 or Order VIII Rule 93.

The Plaintiff's Assertion:

The plaintiff argued that the Local Commissioner, appointed by the court to visit the premises of the defendants and execute the commission, had served copies of the relevant papers on the defendants by hand. Therefore, according to the plaintiff, the time for the defendants to file their written statement commenced from the day of this service by the Local Commissioner.

The Court's Observation:

The Court, in its evaluation, scrutinized the order dated 14 March 2023, which had appointed local commissioners to visit the defendants' premises and execute commissions therein. The court noted that this order did not explicitly direct the service of either the summons or the case papers by the learned local commissioners on the defendants. This omission was a pivotal point in the court's decision.

Service through a Local Commissioner: Not Envisaged in CPC:

The court emphasized that the CPC and the Original Side Rules of the court do not contemplate service through a learned Local Commissioner as a valid method of serving summons in a lawsuit. This lack of specific provision in the CPC or the court's rules leads to the conclusion that service through a Local Commissioner cannot be equated with the service of summons for the purpose of Order VIII Rule 1 of the CPC.

The Concluding Note:

In light of the court's observation and interpretation of the law, the application filed by the plaintiff under Order VIII Rule 10 of CPC was dismissed. The central argument hinged on whether service through the learned Local Commissioner could be considered valid service of summons, and the court ruled against it, citing the absence of statutory provision for such service.

This case underscores the importance of adhering to the prescribed methods of service as outlined in the CPC and local court rules. It serves as a reminder to litigants and legal practitioners that the rules and procedures laid down by law must be strictly followed to ensure that justice is served and due process is upheld.

Case Law Discussed:

Date of Judgement:29/08/2023

Case No. C.S Comm 143 of 2023

Neutral Citation No: 2023:DHC:6260

Name of Court: Delhi High Court

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

Case Title: DGT Global Inc Vs DLT Labs Technology

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

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Central Park Estates Pvt. Ltd. Vs Provident Housing Limited

Requirement of Plea of invalidity for applicability of Section of the Trade Marks Act 1999: 

Introduction:

Section 124(1)(ii), allows a defendant to seek an adjournment of proceedings to file a rectification petition for the cancellation of a registered trademark. This article delves into a specific legal case where the defendant invoked Section 124(1)(ii) in an attempt to adjourn the proceedings and highlights the importance of specific pleading in such cases.

Section 124(1)(ii) of the Trade Marks Act 1999:

Section 124(1)(ii) of the Trade Marks Act 1999 grants the defendant the right to request an adjournment of a trademark infringement suit in order to file a rectification petition to challenge the validity of the plaintiff's registered trademark. However, it is crucial to understand the conditions that must be met for this provision to apply.

1. Condition of Invalidity Plea:

The fundamental condition for Section 124(1)(ii) to come into play is the defendant's plea that the registration of the plaintiff's trademark is invalid. This means that the defendant must assert, in clear terms, that the trademark in question lacks the legal standing for protection. In the case at hand, the defendant's application under Section 124(1)(ii) was based on this specific condition.

The Court's Observations:

In the case under consideration, the Court closely examined whether the defendant had satisfied the conditions mandated by Section 124(1)(ii). The Court's assessment focused on the defendant's pleadings leading up to the application.

The defendant's assertion in paragraph 11 of the application, stating that it had consistently argued the invalidity of the plaintiff's trademark, was noted. However, the Court found a significant deficiency – there was no prior pleading in the defendant's submissions asserting the invalidity of the plaintiff's trademark.

The Court's Decision:

The critical point of contention in this case was the absence of a clear and prior plea by the defendant regarding the invalidity of the plaintiff's trademark. Section 124(1)(a) merely requires the defendant to plead that the plaintiff's trademark is invalid. However, the Court determined that this essential plea was conspicuously missing from the defendant's pleadings I. e. written statement, prior to the application under Section 124(1)(ii).

Such pleading was obviously missing in prior pleading as no written statement was filed by the Defemdant. As a result, the Court ruled that the conditions for invoking Section 124(1)(ii) had not been met. The defendant's application was dismissed, and the proceedings continued without adjournment.

The Concluding Note:

The case involving the defendant's application under Section 124(1)(ii) of the Trade Marks Act 1999 serves as a reminder of the importance of specific and clear pleadings in legal proceedings. To utilize the provisions of Section 124(1)(ii), a defendant must not only assert the invalidity of the plaintiff's trademark but also ensure that this plea is reflected in written statement. 

Case Law Discussed:

Date of Judgement:29/08/2023

Case No. C.S Comm 194 of 2019

Neutral Citation No: 2023:DHC:6262

Name of Court: Delhi High Court

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

Case Title: Central Park Estates Pvt. Ltd. Vs Provident Housing 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

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

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The Trustees of Princeton Society Vs The Vagdevi Educational Society

Introduction:

Trademark disputes can be intricate legal battles, often hinging on various factors such as the history of trademark usage, the likelihood of confusion, and the balance of convenience. In the case at hand, the Plaintiff, claiming to be the registered proprietor of the trademark "PRINCETON" for educational institutions, alleged infringement by Defendant. 

1. However, the Hon'ble High Court of Delhi refused to grant an injunction, citing several key reasons for its decision.

1. Lack of Evidence for Prior Usage in India:

The first critical factor considered by the court was the plaintiff's inability to provide any material indicating their use of the "PRINCETON" trademark in India before 1991, the undisputed date of the defendant's usage. Under Section 34, this omission becomes significant, as it acts as an exception to Section 28(1). Section 28(1) protects registered trademarks, but Section 34 disentitles relief against infringement if the defendant's use predates the plaintiff's. In this case, the defendant's usage clearly preceded the plaintiff's, leading to the application of Section 34.

2. Application of Section 34:

Once Section 34 applied, the court reasoned that examining the infringement under Section 29 (which deals with infringement of registered trademarks) would be futile. This provision essentially renders the plaintiff unable to interfere with the defendant's use of their marks, regardless of whether they infringe upon the plaintiff's mark under Section 29.

3. Examination of Confusion from a Student's Perspective:

The court adopted a unique perspective in assessing the likelihood of confusion or deception. It noted that in the context of educational institutions, the confusion must be viewed from a student's standpoint, not that of the ordinary person on the street. The court argued that no student or person interested in the services provided by either party would be likely to confuse the two institutions merely because of the shared use of "PRINCETON" in their names. Therefore, the court found that a case of passing off was not established.

4. The Troika of Prima Facie Case, Balance of Convenience, and Irreparable Loss:

Lastly, the court emphasized that in intellectual property matters, including cases of alleged passing off, interlocutory injunctions can only be granted when a prima facie case, balance of convenience, and irreparable loss are cumulatively established. Given the defendant's use of the mark for 32 years and the delayed initiation of the lawsuit in 2022, the balance of convenience clearly favored not injuncting the defendants. 

The Concluding Note:

The refusal to grant an injunction in this case illustrates the complex interplay between trademark law provisions, the necessity of establishing a prima facie case, and the importance of considering the specific context of the dispute. Ultimately, the court's decision was influenced by the defendant's long-standing use of the mark, the absence of prior usage evidence by the plaintiff, and the unique perspective from which confusion was assessed, all of which contributed to the denial of interim relief.

Case Law Discussed:

Date of Judgement:06/09/2023

Case No. C.S Comm 270 of 2022

Neutral Citation No: 2023:DHC:6420

Name of Court: Delhi High Court

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

Case Title: The Trustees of Princeton Society Vs The Vagdevi Educational Society

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

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Policy Bazar Insurance Vs Civer fox Insurance

Introduction:

In recent years, the intersection of intellectual property rights and the digital landscape has given rise to complex legal issues. One such issue is the use of trademarks as keywords in online advertising, particularly in programs like Google AdWords. This article delves into a legal analysis of a case where plaintiffs sought to restrain defendants from using trademarks as keywords in their advertising, specifically focusing on the case's outcome and its implications.

Background:

The plaintiffs in this case, holders of trademarks "Policy Bazaar," "PolicyBazaar," and "Policy Bazar," filed a lawsuit against the defendants, alleging that the defendants were using identical or deceptively similar trademarks as keywords in the Google AdWords Program. The primary contention of the plaintiffs was that such use constituted trademark infringement and passing off.

The Court's Decision:

The court's decision centered on whether the use of these trademarks as keywords could be considered a "use of a trademark" under Section 29(1) of the relevant trademark act. The court held that keywords in online advertising do not serve the primary function of identifying the source of goods or services. Consequently, Section 29(1) of the act, which pertains to trademark infringement, was deemed inapplicable in this context.

Understanding User Perspective:

The court also considered the perspective of an internet user. It emphasized that individuals using search engines are generally aware of how these engines function and the nature of the results they display. From this perspective, the court reasoned that using a trademark as a keyword alone does not necessarily result in confusion among users who understand the workings of search engines. In other words, the mere use of a trademark as a keyword does not automatically lead to consumer confusion.

Assessment of Damages:

While the plaintiffs argued that the use of their trademarks as keywords increased the cost of their advertisements and potentially led to additional hits on the defendant's website, the court did not find these factors sufficient to establish trademark infringement or passing off. In essence, the court held that these consequences, while potentially detrimental to the plaintiffs, did not amount to legal wrongdoing on the part of the defendants.

The Concluding Note:

The case discussed in this article sheds light on the intricate legal issues surrounding the use of trademarks as keywords in online advertising. It emphasizes the need to carefully consider the functionality and user perspective in such cases. While trademark holders may have legitimate concerns about their brand's online presence, the mere use of trademarks as keywords may not always constitute trademark infringement or passing off, as demonstrated by the court's decision.

Case Law Discussed:

Date of Judgement:06/09/2023

Case No. C.S Comm 259 of 2023

Neutral Citation No: 2023:DHC:6407

Name of Court: Delhi High Court

Name of Hon'ble Judge: Navin Chawla, H.J.

Case Title: Policy Bazar Insurance Vs Civer fox Insurance

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

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

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Manju Singal, Proprietor Singla Food Product Vs Deepak Kumar, Proprietor Sara Sales

Introduction:

In the realm of intellectual property law, copyright plays a pivotal role in protecting the creative works of individuals and entities. This article delves into a legal analysis of a copyright dispute between the Petitioner and Respondent No. 1, centering around two artistic works, 'GULCHHARE' and 'GOORCHARREY LABEL,' and the implications under the Copyright Act.

Background:

The Petitioner filed a copyright registration application in April 2014 for the artistic work titled 'GULCHHARE,' associated with the product 'mast sevian.' The application was granted later that year, with a claim of first publication in 2009. Conversely, the Respondent No. 1 obtained copyright registration for 'GOORCHARREY LABEL' in April 2019. The central dispute arises from the alleged substantial similarity and imitation in the artistic work and packaging between the two parties.

Analysis:

1. Substantial Similarity:

The cornerstone of a copyright infringement claim is establishing substantial similarity between the copyrighted work and the allegedly infringing work. In this case, the Petitioner contends that Respondent No. 1's work is a slavish imitation of 'GULCHHARE,' raising questions about the level of similarity. Courts typically examine visual, auditory, and conceptual aspects of the works to determine substantial similarity.

2. Imitation:

The Petitioner further asserts that Respondent No. 1's work is a clear imitation of their own. Imitation implies a direct copying or replication of substantial elements from the original work. To assess this, courts consider whether the alleged infringing work reproduces the distinctive elements of the original without adding significant originality.

3. Distinguishing Elements:

It's crucial to identify any distinguishing elements between the two works. If these distinguishing features significantly impact the overall similarity, they may affect the assessment of copyright infringement. However, it's argued that in this case, the distinguishing elements do not mitigate the substantial similarity between the works.

4. Misuse of Known Cartoon Characters:

The Petitioner's use of cartoon characters raises questions about potential misuse. If these characters belong to another entity, it could constitute copyright infringement on a separate basis. Still, the current dispute focuses solely on the artistic work and packaging similarities between the parties, rather than the misuse of cartoon characters.

5. Legal Remedy:

Under Section 50 of the Copyright Act, the Petitioner seeks rectification and expungement of Respondent No. 1's registration from the Copyright Register, alleging that it was wrongly applied for as an original work. This section empowers the court to correct errors in the copyright registration process and protect the rights of legitimate copyright holders.

The Concluding Note:

The case of 'GULCHHARE' and 'GOORCHARREY LABEL' exemplifies the intricate nature of copyright disputes. To prevail, the Petitioner must demonstrate substantial similarity, imitation, and a lack of distinguishing elements between the two works. The court's decision will have far-reaching implications for copyright protection, potentially setting a precedent for future cases involving artistic works and packaging.

Case Law Discussed:

Date of Judgement:06.09.2023

Case No. C.O.(COMM.IPD-CR) 715/2022

Neutral Citation No: 2023:DHC:6445

Name of Court: Delhi High Court

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

Case Title: Manju Singal, Proprietor Singla Food Product Vs Deepak Kumar, Proprietor Sara Sales

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

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Dr.Reddy Laboratories Vs Fast Cure Pharma

Introduction:

The jurisdictional boundaries of legal proceedings under the Trade Marks Act, 1999 in India have been a subject of legal debate. In a recent judgment, the court held that applications under Section 47 or Section 57 of the Trade Marks Act, 1999, as well as under Section 124(1)(ii), are maintainable not only before the High Courts within whose jurisdiction the offices of the Trade Mark Registry granting the impugned registrations are situated but also before the High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt by the petitioner/applicant. This article aims to analyze this significant decision and its implications on the Trade Marks Act, 1999.

I. Background:

The Trade Marks Act, 1999 governs the registration and protection of trademarks in India. It provides for various provisions to safeguard the rights of trademark owners and regulate the use of trademarks. Sections 47 and 57 of the Act pertain to the cancellation and rectification of trademarks, while Section 124(1)(ii) deals with infringement cases.

II. The Jurisdictional Issue:

The key issue at hand is the determination of the appropriate High Court before which an application under the Trade Marks Act can be filed. Traditionally, the jurisdiction was linked to the location of the Trade Mark Registry that granted the impugned trademark registration. However, this recent judgment has expanded the scope of jurisdiction to include High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt.

III. Analysis of the Judgment:

Expanding Jurisdiction: The judgment's most significant aspect is the expansion of jurisdiction beyond the physical location of the Trade Mark Registry. By considering the dynamic effect of the registration, the court has acknowledged the evolving nature of commerce and the impact of trademarks that extend beyond geographical boundaries.

Impact on Rights Holders: This decision offers greater protection to trademark holders. It allows them to file applications in High Courts where the effects of trademark infringement or cancellation are felt. This ensures that rights holders can seek redress in a more convenient and effective manner.

Complexities and Challenges: While this decision broadens access to justice, it also raises complexities. Determining the jurisdiction where the dynamic effect is felt can be challenging, especially in cases involving online commerce or nationwide brands. This may lead to disputes over the appropriate forum for legal action.

Uniform Application: The judgment calls for a more uniform application of the Trade Marks Act across different High Courts. This can contribute to consistency in trademark litigation outcomes and reduce forum shopping by litigants.

Need for Clarity: To avoid ambiguity and potential jurisdictional disputes, there is a need for further clarification on what constitutes the "dynamic effect" of a trademark registration. Clear guidelines and precedents should be established to guide future cases.

IV. The Concluding Note:

The recent judgment expanding the jurisdiction of High Courts in trademark matters is a significant development in Indian trademark law. It reflects a recognition of the changing landscape of commerce and the need to adapt legal procedures accordingly. While it provides trademark holders with more options for seeking redress, it also introduces challenges in determining the dynamic effect of registrations. Clarity and guidance from the courts will be essential to ensure the consistent application of this ruling and to strike a balance between protecting trademark rights and preventing jurisdictional disputes.

Case Law Discussed:

Case Title: Dr.Reddy Laboratories Vs Fast Cure Pharma

Date of Judgement:04.09.2023

Case No. C.O. (COMM.IPD-TM) 8/2023

Neutral Citation No: 2023:DHC:6324

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

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

Email: ajayamitabhsuman@gmail.com,

Ph no: 9990389539

Promoshirt SM SA Vs Armassuisse and another

Introduction:

In the realm of trademark law in India, the Registrar of Trade Marks plays a pivotal role in administering and regulating trademark registration. Disputes often arise in the course of trademark proceedings, leading to appeals before higher judicial authorities. A significant legal issue in this context revolves around the applicability of Section 100A of the Code of Civil Procedure (CPC) in appeals from decisions of the Registrar of Trade Marks.

This article delves into the legal intricacies surrounding the application of Section 100A of the CPC in appeals from the Registrar of Trade Marks. It examines the distinction between the Registrar and a civil court, the historical context of appellate remedies, and the scope of Section 100A.

Registrar of Trade Marks Vs. Civil Court:

The first point of contention revolves around the nature of the Registrar of Trade Marks. It is crucial to recognize that the Registrar, while endowed with certain powers akin to those of a civil court, does not qualify as a civil court. This distinction is reinforced by judicial precedent, notably the decisions in Anglo-French Drug Co. and Khoday Distilleries. The "trappings of a court" test, as established in these cases, is not met by the Registrar, as it fundamentally lacks the essential attributes of a civil court.

Appellate Remedies under the 1999 Trade Marks Act:

Section 91 of the Trade Marks Act, 1999 (TM Act) governs the appellate remedy from decisions of the Registrar of Trade Marks. Importantly, this section does not prescribe that the appellate remedy must be governed by the provisions of the CPC. This is a departure from previous trademark legislation, such as Section 76 of the 1940 TM Act and Section 109 of the 1958 TM Act, which explicitly provided for CPC's applicability. Additionally, the Indian Succession Act, 1925, on which the Full Bench relied in Avtar Narain Behal, further underscores this departure.

The Role of Section 100A of the CPC:

Section 100A of the CPC is at the heart of the debate surrounding the applicability of CPC to appeals from the Registrar of Trade Marks. This section empowers High Courts to frame substantial questions of law in appeals to be decided. However, it is vital to interpret Section 100A within the context of its intended application.

While the CPC undeniably could bar the remedy available under a Letters Patent Appeal (LPA), such provisions should be read in relation to causes and appeals governed by the CPC. It is doubtful that Section 100A of the CPC should be stretched to cover all appeals, especially those arising from special enactments. The intent of Section 100A appears to be focused on eclipsing the remedy of an intra-court appeal under the Letters Patent when it comes to matters governed explicitly by the CPC.

The Concluding Note:

In conclusion, the applicability of Section 100A of the CPC in appeals from the Registrar of Trade Marks raises complex questions of law. While the Registrar possesses certain powers similar to a civil court, it is not deemed a civil court in its entirety. Section 91 of the 1999 TM Act does not explicitly mandate CPC's application, marking a departure from earlier legislation. Section 100A of the CPC, while potent, should be interpreted with caution to avoid its overextension into matters not governed by the CPC.

Case Law Discussed:

Case Title: Promoshirt SM SA Vs Armassuisse and another

Date of Judgement:06.09.2023

Case No. LPA 136 of 2023 

Neutral Citation No: 2023:DHC:6352-DB

Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma H.J.

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

Email: ajayamitabhsuman@gmail.com,

Ph no: 9990389539

Rmc Project Management Vs Whizlabs Software

The Significance of Copyright Registration and Assignment in Literary Works: A Legal Analysis

Abstract:

This legal article delves into the intricate legal nuances surrounding the registration and assignment of copyright in literary works. Focusing on a specific case where copyright ownership was disputed, the article examines the interplay between registration, ownership, and assignment, highlighting how these elements collectively impact the entitlement to copyright protection and legal remedies.

Introduction:

Copyright is a crucial legal concept that safeguards the rights of creators and authors over their literary, artistic, and intellectual creations. The Registration Act, which governs copyright registration, has often sparked debates regarding its mandatory nature in asserting copyright claims. This article evaluates a scenario where the lack of proper copyright assignment documentation combined with the absence of copyright registration led to a denial of relief to the plaintiff.

Ownership of Literary Works and Copyright:

Copyright vests with the creator of a literary work by default, granting exclusive rights to reproduce, distribute, and adapt the work. The case under scrutiny involves Ms. Rita Mulcahy as the purported owner of a literary work encompassing a PMP Book and PM Software. Copyright ownership entitles Ms. Mulcahy to exercise exclusive rights over these works, including their commercial exploitation.

Role of Registration in Copyright Claims:

Under copyright law, registration is not mandatory to claim copyright ownership. However, registration provides several advantages, including prima facie evidence of ownership, making legal proceedings smoother for the copyright holder. This is crucial in situations where copyright infringement claims are raised.

Assignment of Copyright:

Copyright ownership can be transferred through an assignment deed, where the creator relinquishes their rights to another party. In this case, the plaintiff's assertion was dependent on demonstrating that Ms. Mulcahy assigned her copyright to them. The assignment deed serves as pivotal evidence in determining the validity of such transfers.

The Burden of Proof:

In litigation, the onus of proving a claim rests on the plaintiff. In the absence of proper assignment documentation, the plaintiff's case hinges on proving the transfer of copyright ownership. While registration is not mandatory for copyright claims, it becomes crucial in the absence of a concrete assignment deed.

Analysis of the Case:

In the case at hand, the plaintiff failed to provide substantive evidence of the assignment of copyright from Ms. Mulcahy. The absence of an assignment deed and the lack of registration certificates in the plaintiff's favor weakened their position. Even if Ms. Mulcahy is acknowledged as the original creator, the legal transfer of copyright is pivotal to the plaintiff's entitlement to relief.

Legal Implications:

The case highlights the interdependence of registration and assignment in copyright claims. While registration is not mandatory, it acts as a shield, providing a streamlined path for copyright holders to assert their rights. On the other hand, assignment deeds are indispensable in cases of transferred ownership, ensuring that legal entitlement is unambiguously established.

Conclusion:

The intricate relationship between registration, ownership, and assignment of copyright becomes evident in cases where litigation arises. This scenario emphasizes that while registration is not obligatory, it significantly strengthens the plaintiff's position, particularly when supported by an assignment deed. This legal analysis underscores the necessity of adhering to proper copyright documentation procedures, elucidating that without such due diligence, the entitlement to legal relief can be jeopardized.

Case Law Discussed:

Date of Judgement/Order:21.08.2023

Case No.CS(COMM) 124/2018

Neutral Cintation: 2023: DHC:5929:

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Navin Chawla

Case title :Rmc Project Management Vs Whizlabs Software

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

Dolphin Mart Pvt. Ltd. Vs Avenue Supermarts Limited.

Non-Enforceability of Individual Elements in Composite registered Trademarks

Introduction:

The issue of whether individual elements of a composite registered trademark can be enforced individually has been a topic of legal debate and significance. This article delves into a recent case where this question arose, examining the judgment and legal principles surrounding the matter.

Case Background:

In the case at hand, the plaintiff filed a subject matter suit based on its composite registered trademark "DMART" across various classes, including 14, 21, and 25. The plaintiff was engaged in the business under the trademark "d’mart Exclusif," offering home décor and gifting solutions. The suit was against the defendant's use of the "DMART" composite label in relation to their mart business.

Defendant's Claim:

The defendant claimed to be a registered proprietor of the "DMART" composite label as well. The court observed that both parties held registered trademarks in the same classes. Consequently, an action for infringement was deemed not maintainable under Section 28(3) read with Section 30(2)(e) of the 1999 Act.

Exclusivity of Individual Elements:

The court reasoned that a critical factor for not granting an injunction was that both marks were composite. Their registration did not confer exclusive rights to the individual element "d mart." Notably, the plaintiff's mark incorporated the word "Dolphin's" with a distinct image of a dolphin above "d mart." The word "d" was prominently displayed in a larger font than "mart," creating a visual distinction. Conversely, the defendant's mark featured a bright green background, with the alphabet "D" separated from "Mart" by a star and horizontal lines in a triangular format.

Holistic Comparison:

The court emphasized that a composite trademark should not be dissected for determining deceptive similarity with the impugned mark. Instead, a holistic comparison should be made by considering the rival marks as a whole. The plaintiff could not claim exclusivity over the word "d’mart" due to the absence of separate registration. Hence, the competing composite marks had to be compared comprehensively.

Deceptive Similarity Analysis:

The court conducted a detailed analysis of the competing trademarks. It observed that the plaintiff's mark had a dolphin image with the word "d mart," where "d" was distinct and emphasized. The defendant's mark, on the other hand, displayed "D" separated from "Mart" by a star and lines. Despite these differences, the court concluded that there was no deceptive similarity between the marks when considered in their entirety. In view of the above, the Plaintiff was refused the relief of interim injunction.

The Concluding Note:

The case exemplifies the legal principle that a composite trademark should be treated as a unified whole, and individual elements cannot be enforced separately. In cases where rival marks are composite, their distinctiveness and overall impression are vital considerations. This judgment reinforces the importance of comprehensive trademark registration and protection strategies, ensuring that the entirety of a composite mark is safeguarded rather than individual components.

Case Law Discussed:

Date of Judgement:21.08 2023

Case No. CS Comm 177 of 2017

Neutral Citation No: 2023:DHC:5944

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

Name of Court: Delhi High Court

Case Title: Dolphin Mart Pvt. Ltd. Vs Avenue Supermarts 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

GS 1 India Vs Global Barcodes SL

Intellectual Property Rights in Bar Codes

Abstract:

This analytical legal article delves into the landmark judgment of the Hon'ble High Court of Delhi, recognizing and upholding the intellectual property rights associated with bar codes. The case, GS1 India v. India Barcodes Store, underscores the significance of intellectual property protection in the digital age, particularly with respect to standardized systems like bar codes. The article discusses the plaintiff's claims, the defendant's alleged infringing activities, the court's legal reasoning, and the implications of this decision on intellectual property rights pertaining to bar codes.

Introduction:

The intersection of technology, business, and law has led to the emergence of various issues concerning intellectual property rights. This case revolves around the recognition and enforcement of intellectual property rights in bar codes, a ubiquitous tool in modern commerce. The plaintiff, GS1 India, filed a suit asserting its exclusive rights over the allocation and use of bar codes with specific numerical combinations, in accordance with the standards set by the global body GS1.

Factual Background:

GS1 India, the only licensed entity in India for allocating bar codes, claimed to hold a license from GS1, the global organization responsible for maintaining bar code standards and related databases. GS1 India was authorized to allocate bar codes with the prefix '890,' which signified the country of origin and other essential information about the product. Once allocated, these bar codes were entered into GS1's global database, ensuring uniformity and uniqueness.

The defendant, operating websites like www.indiabarcodesship.com and https://india-barcodesstore.com/, was accused of allocating bar codes starting with '890' without proper authorization. These allegedly infringing bar codes were not compliant with GS1's standards, lacked uniqueness, and could not be verified against the global database. GS1 India argued that the defendant's actions constituted trademark infringement and violated common law rights, leading to customer deception.

Legal Analysis:

The central legal issue in this case was whether intellectual property rights, specifically trademark rights, extended to bar codes and their allocation. The court recognized that bar codes, particularly those allocated in adherence to GS1's standards, hold a significant value in the market due to their role in indicating product origin and information. The court assessed the plaintiff's trademark registration and its association with the allocated bar codes.

The court found merit in the plaintiff's argument that allocating bar codes in a manner inconsistent with GS1's standards diluted the uniqueness and reliability associated with the system. The defendant's allocation of bar codes starting with '890' was akin to misleading consumers about the product's origin and related attributes.

Legal Reasoning:

The court opined that bar codes, as a system of product identification and representation, have transcended their utilitarian function and have acquired distinctiveness, thus qualifying for trademark protection. The court underscored that GS1 India's exclusive allocation of '890' bar codes and its registered trademark further solidified its claim to intellectual property rights in this context. The defendant's activities, by contrast, were deemed to infringe upon these rights.

The court also noted that the defendant's allocation of '890' bar codes without adhering to GS1's standards could lead to confusion among consumers, who might mistakenly associate these bar codes with GS1 India's authorized system.

Implications:

The judgment of the Hon'ble High Court of Delhi in GS1 India v. India Barcodes Store has far-reaching implications for the recognition of intellectual property rights in emerging technological contexts. It establishes that standardized systems like bar codes can acquire trademark protection when they become distinctive identifiers associated with a particular entity. Furthermore, the case emphasizes the importance of upholding global standards, such as those set by GS1, to maintain the reliability and authenticity of these systems.

The Concluding Note:

The case of GS1 India v. India Barcodes Store underscores the evolving nature of intellectual property rights in the digital age. By recognizing and upholding intellectual property rights in bar codes, the Hon'ble High Court of Delhi has reinforced the significance of maintaining standardized and reliable systems in commerce. This judgment not only protects GS1 India's rights but also sets a precedent for future cases involving intellectual property rights in emerging technological fields.

Case Law Discussed:

Date of Judgement:12.01.2021

Case No. CS Comm 147 of 2020

Neutral Citation No: N A.

Name of Hon'ble Judge: Jayant Nath, H.J.

Name of Court: Delhi High Court

Case Title: GS 1 India Vs Global Barcodes SL

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

Goldmedal Electrical Pvt. Ltd. Vs Registrar of Trademarks

Legal Issues Arising from Relying on the Contents of a Notice of Opposition in Trademark Proceedings

Introduction:

The case at hand delves into a significant legal issue that emerged during a trademark opposition proceeding. In response to the counter statement of the applicant, the opponent opted not to file evidence in support of their notice of opposition. Instead, they chose to rely solely on the contents of the notice of opposition itself. This decision prompted the court to examine the implications of such a course of action under the Trade Marks Act and the Trade Marks Rules.

Background:

The central contention in this case revolves around the opponent's decision to rely solely on the contents of their notice of opposition without submitting additional evidence. This choice was based on a communication dated 05.10.2017, where the appellant informed the Trade Marks Registry that they did not intend to present evidence in support of the notice of opposition but would instead rely on the submissions made within the notice.

The High Court's Observation:

Upon reviewing the case, the Hon'ble High Court observed that the crucial statutes governing the situation are Section 21 of the Trade Marks Act and Rule 45 of the Trade Marks Rules. While Section 21(2) establishes the repercussions of not submitting a counter statement in response to a notice of opposition, it does not explicitly outline the consequences of not producing evidence.

Furthermore, the Court noted that Rule 45(1) explicitly provides the opponent with a choice: they can either furnish evidence or communicate in writing to the Registrar and the applicant that they do not wish to submit evidence but intend to rely on the facts stated in the notice of opposition.

Communication and Jurisdiction:

A significant aspect of the case relates to the communication sent by the appellant on 05.10.2017. This communication was directed to the Registrar of Trade Marks, Chennai, but it was transmitted to the e-mail address of the Trade Marks Registry in Mumbai (mumopp.tmr@nic.in). The primary ground on which the opposition was deemed abandoned was the transmission of this communication to the Mumbai Office. However, Rule 8 specifies that notices and documents should be delivered or sent to the appropriate office, which is the Chennai Office in this instance.

In this context, the Court acknowledged that, despite the communication being addressed to the Chennai office, the appellant's decision to transmit it via e-mail to the Mumbai office was in substantial compliance with the mandate of Rule 45(1). This decision hinges on the fact that while Rule 8 stipulates the method of delivery, the practical situation of the appellant addressing the communication to the Trade Marks Office, Chennai, demonstrated sufficient adherence to the rule.

The aconcluding Note:

The case under scrutiny underscores the intricacies of trademark opposition proceedings and the careful navigation required when choosing to rely solely on the contents of a notice of opposition. The Court's interpretation of the relevant statutes and rules emphasizes the importance of adhering to procedural requirements while also acknowledging the practical considerations that may influence communication methods.

This case sets a precedent that informs trademark opponents that they have the option to forego submitting evidence in support of their opposition and instead rely on the facts presented in their notice of opposition. Furthermore, the case clarifies the acceptable methods of communication within the context of Rule 8, highlighting the significance of substantial compliance with procedural mandates.

Case Law Discussed:

Date of Judgement:11.08.2023

Case No. T/CMA/TM 103 of 2023 [OA/43/2020/TM/CH]

Neutral Citation No: NA

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

Name of Court:Madras High Court

Case Title: Goldmedal Electrical Pvt. Ltd. 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