Marie Stopes International Vs Parivar Seva Santha

Weightage of Testimony of a Deceased Witness

Introduction

In the realm of legal proceedings, a crucial question often arises when a witness who has been examined-in-chief passes away before the completion of their cross-examination. This scenario poses a challenging dilemma for courts in assessing the value and weightage to be given to the testimony of such a deceased witness. This article delves into the legal framework surrounding this issue, particularly in the context of a recent case involving Dr. Tim Black, whose testimony was relied upon even though he expired before his cross-examination was completed.

Legal Precedents and Principles

In the case of Krishan Dayal v. Chandu Ram, 1969 SCC OnLine Del 134, the High Court of Delhi established a significant legal precedent. It ruled that a witness's statement in examination-in-chief does not become inadmissible merely due to the witness's subsequent death before cross-examination. The court can consider whether the testimony in question has been corroborated by surrounding circumstances.

A similar viewpoint was upheld by the High Court of Calcutta in Somagutta Sivasankara Reddy v. Palapandia Chinna Gangappa, MANU/AP/1284/2001.

In the case at hand, Dr. Tim Black was examined through video conferencing due to his illness. His cross-examination took place over a span of three days, from 19th to 21st August, 2014, at the High Commission of India in London. However, Dr. Black sadly passed away on 11th December, 2014, before the cross-examination could be completed. The central question that arises is the weight to be given to his testimony under the circumstances.

The Hon'ble High Court of Delhi, taking guidance from the aforementioned legal precedents, aptly recognized that Dr. Tim Black's testimony should not be summarily dismissed due to his demise before cross-examination. Instead, the court was tasked with assessing the testimony's credibility and reliability based on the evidence presented. Notably, the court found that Dr. Black's testimony had been sufficiently corroborated by the evidence of Mr. V.K. Govil. In this case testimoany of Dr. Tim Black was relied by the Hon'ble High Court of Delhi as the same was duly corroborated by other witness.

The concluding Note:

The legal framework surrounding the testimony of a deceased witness, particularly when cross-examination remains incomplete, is well-established through judicial precedents. In such cases, the courts have consistently held that the testimony should not be deemed inadmissible solely due to the witness's death. Instead, the court must determine the weight to be attached to the testimony by considering the facts and circumstances of the case and assessing whether it is corroborated by other evidence.

Case Law Discussed:

Date of Judgement:20/09/2023

Case No. C.S.Comm 298 of 2018

Neutral Citation No: 2023:DHC:6806

Name of Hon'ble Court: Delhi High Court

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

Case Title: Marie Stopes International Vs Parivar Seva Santha

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

Kia Wang Vs Registrar of Trademark

Bad Faith and Trademark Cancellation:

Introduction:

Trademark law places a significant onus on trademark registrants to act in good faith when seeking registration and using their marks. In this article, we delve into the case of ROCKPAPA, a brand specializing in children's products, and explore the concept of "bad faith" in trademark registration, particularly in the context of trademark cancellation.

Background'

ROCKPAPA, founded in 2014 in the UK, swiftly gained international recognition for its children's products, including headphones, pencil boxes, and school bags. The brand's trademark, 'ROCKPAPA,' became widely associated with quality and innovation, extending its reach to the USA, Canada, Australia, and India in subsequent years.

In contrast, Respondent No.2 applied for the registration of the mark 'ROCKPAPA' on January 7, 2020. The mark was officially registered under Certificate No. 2500462 on September 13, 2020, as per Trade Mark Journal No. 1966. This registration stands as the focal point of the ongoing dispute.

Understanding Bad Faith:

In trademark law, "bad faith" refers to an unfair practice characterized by a lack of honest intention, a deliberate wrongdoing, and actions that deviate from accepted standards of commercial behavior. 

It entails an intention to capitalize on the goodwill associated with another party's trademark. In the case of ROCKPAPA, it is crucial to scrutinize whether Respondent No.2's adoption of the trademark 'ROCKPAPA' was conducted in bad faith.

Evidence of Bad Faith:

Several aspects of Respondent No.2's actions suggest bad faith:

1. Similarity in Mark: 

Respondent No.2 adopted a mark, 'ROCKPAPA,' strikingly similar to the Petitioner's established trademark. This similarity extended to the use of identical wording, color, font, and style. Such a blatant replication raises suspicions of an intention to confuse consumers and capitalize on the goodwill associated with the original mark.

2. Identical Goods: 

Both parties were involved in the production and sale of children's products, creating direct competition. Respondent No.2's use of 'ROCKPAPA' for identical goods further reinforces the notion of an intention to ride on the coattails of the Petitioner's brand.

3. Lack of Contest: 

Perhaps the most telling sign of bad faith is Respondent No.2's non-contestation. In the face of the Petitioner's challenge, Respondent No.2 failed to appear in the matter, did not file a counter statement, and provided no evidence to rebut the claims of prior usage. This lack of response implies a consciousness of wrongdoing and an unwillingness to defend the legitimacy of the mark.

Trademark Cancellation:

Given the evidence of bad faith, the impugned trademark 'ROCKPAPA' is vulnerable to cancellation. Trademark cancellation is a legal process that rectifies the register by removing marks that were improperly registered. In this case, it seeks to protect the integrity of the trademark system by eliminating marks that were registered in violation of the principles of good faith and fair competition.

The Concluding Note:

Trademark law is fundamentally rooted in the principles of honesty, fair competition, and protection of intellectual property rights. The case of ROCKPAPA underscores the importance of maintaining these principles in trademark registration. Respondent No.2's adoption of the mark 'ROCKPAPA' for identical goods, coupled with the absence of contestation, strongly suggests bad faith. As such, the impugned trademark should rightfully be canceled to uphold the integrity of the trademark system and protect the interests of honest trademark holders like the Petitioner.

Case Law Discussed:

Date of Judgement:15/09/2023

Case No. C.O.(COMM.IPD-TM)02/2021

Neutral Citation No: 2023:DHC:6684

Name of Hon'ble Court: Delhi High Court

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

Case Title: Kia Wang Vs Registrar of Trademark

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

Raytheon Company Vs Controller General of Patent

Patent Eligibility for Computer-Related Inventions

Abstract:

This article discusses the evolving standards for patent eligibility in the context of computer-related inventions, with a focus on the requirement of "novel hardware." It examines a recent case where the Indian patent office erroneously applied the 2016 Computer-Related Inventions (CRI) Guidelines, which included the novel hardware requirement, instead of the 2017 guidelines that omitted it. The article argues that the novel hardware standard lacks a legal basis and should not be used as a criterion for patent eligibility in the field of computer-related inventions.

Introduction:

Patent law plays a crucial role in incentivizing innovation by granting inventors exclusive rights to their inventions for a limited period. In the realm of computer-related inventions (CRIs), determining patent eligibility has been a contentious issue. This article delves into the evolving standards for patent eligibility in CRIs, with a particular focus on the controversial "novel hardware" requirement.

The Novel Hardware Requirement:

The excerpt provided in the introduction refers to the contention surrounding the novel hardware requirement as part of the 2016 CRI Guidelines. These guidelines stipulated that, in order to be patent-eligible, a CRI must involve novel hardware. This requirement significantly raised the bar for obtaining patents in the field of CRIs. However, it is essential to highlight that this standard was replaced by the 2017 CRI Guidelines, which did not include the novel hardware requirement. The central issue in the case discussed in the excerpt is whether the patent office erroneously applied the outdated 2016 guidelines, leading to the rejection of the patent application.

Analysis of the Novel Hardware Requirement:

The novel hardware requirement has been a subject of debate in various jurisdictions. Critics argue that it imposes an unduly high standard on CRI inventors and is not rooted in the principles of patent law. The fundamental question is whether the presence of novel hardware should be a prerequisite for patent eligibility in CRIs.

Lack of Legal Basis:

One of the primary criticisms of the novel hardware requirement is its apparent lack of a legal basis. Patent law, at its core, focuses on protecting novel and non-obvious inventions, regardless of whether they involve hardware or software components. The requirement of novel hardware deviates from this fundamental principle and creates an arbitrary distinction within the realm of patent eligibility.

Technological Contribution vs. Novel Hardware:

In the field of CRIs, it is essential to determine whether an invention makes a "technical contribution" or achieves a "technical effect." This assessment focuses on the practical utility and innovation of the invention rather than its hardware components. The excerpt highlights the need for examining whether the invention reduces the time period in scheduling job execution in a High-Performance Computing (HPC) system. This emphasizes the importance of the invention's technical contribution, not the novelty of its hardware.

Evolving Guidelines:

The evolving nature of CRI guidelines further underscores the controversy surrounding the novel hardware requirement. The shift from the 2016 to the 2017 CRI Guidelines indicates a reconsideration of the patent office's stance on this issue. This shift reflects a recognition that the novel hardware standard may not align with the evolving nature of technology and innovation in the CRI field.

The concluding Note: 

In conclusion, the case discussed in the excerpt illustrates the ongoing debate surrounding the patent eligibility of CRIs and the controversial novel hardware requirement. The excerpt argues that the novel hardware requirement lacks a legal basis and should not be used as a criterion for patent eligibility in CRIs. The evolution of CRI guidelines, as demonstrated by the shift from the 2016 to the 2017 guidelines, suggests a growing recognition that patent eligibility should be based on an invention's technical contribution rather than the presence of novel hardware. It is imperative for patent offices and courts worldwide to continue refining their approach to CRIs to strike a balance between incentivizing innovation and upholding the principles of patent law.

Case Law Discussed:

Date of Judgement:15/09/2023

Case No. C.A.(COMM.IPD-PAT) 121/2022

Neutral Citation No: 2023:DHC:6673

Name of Hon'ble Court: Delhi High Court

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

Case Title: Raytheon Company 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

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Marie Stopes International Vs Parivar Seva Santha-Rectification

No prior leave under Section 124 of the Trade Marks Act, 1999 is must  in Rectification Proceedings

Factual Background

The case under consideration involves a dispute between a Plaintiff and a Defendant over trademark issues. The Defendant raised an objection to the maintainability of the present rectification petitions on the grounds that no application under Section 124 of the Trade Marks Act, 1999 was filed, and no issues were framed in respect thereof in the connected suit. On the other hand, the Plaintiff argued that since the suits were filed based solely on passing off, Section 124 of the Act was not applicable.

The Plaintiff's contention rested on the premise that the Defendant's suit was solely grounded in passing off, with no claims of trademark infringement or any relief sought in that regard. Therefore, according to the Plaintiff, Section 124 of the Act had no relevance to a passing-off suit.

The Role of Section 124 of the Trade Marks Act, 1999

Section 124 of the Trade Marks Act, 1999 deals with the rectification of the register of trademarks. It empowers the Registrar of Trade Marks to make decisions on rectification applications, and it lays out the procedure for such rectifications. Importantly, Section 124 primarily applies to situations where there are issues concerning the registration of a trademark or its cancellation.

Infringement vs. Passing Off

To understand the crux of this legal dispute, it is vital to distinguish between trademark infringement and passing off. Trademark infringement occurs when someone uses a registered trademark in a way that is likely to deceive or confuse the public. In contrast, passing off is a common law remedy that protects unregistered trademarks or trade dress from misrepresentation and unfair competition.

Analysis of the Legal Arguments

The Plaintiff's argument hinged on the nature of the Defendant's suit, which was premised solely on passing off. The Defendant did not plead trademark infringement or seek any relief related to trademark registration. Given this context, the Plaintiff contended that Section 124 of the Trade Marks Act, 1999 would not be applicable.

The Defendant, on the other hand, asserted that the absence of a Section 124 application and issues framed in the connected suit should render the rectification petitions non-maintainable. This position was based on a strict interpretation of the Act's requirements.

Court's Decision

After considering the arguments presented by both parties, the court found in favor of the Plaintiff. The court determined that since the Defendant's suit was solely founded on passing off and did not involve any claims of trademark infringement or relief related to trademark registration, Section 124 of the Act was not applicable in this case.

Moreover, the court referred to Rule 26 of the Delhi High Court Intellectual Properties Rights Division Rules, 2021, which stipulates that rectification proceedings are to be consolidated with civil suits and decided together. This rule emphasizes the importance of considering the specific nature of the suit in question, which in this instance was passing off.

Conclusion

The case highlights the importance of understanding the nuances of trademark law, particularly when it comes to the applicability of provisions like Section 124 of the Trade Marks Act, 1999. In this instance, the court's decision was grounded in a pragmatic approach that considered the nature of the dispute and the relief sought by the parties involved. Ultimately, the court's finding that Section 124 had no application in a suit for passing off underscores the need for a contextual and case-specific analysis in trademark litigation.

Case Law Discussed:

Date of Judgement:20/09/2023
Case No. C.O. (COMM.IPD-TM) 35/2022
Neutral Citation No: 2023:DHC:6805
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Amit Bansal, H.J.
Case Title: Brihan Karan Sugar Syndicate 

Marie Stopes International Vs Parivar Seva Santha

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

Brihan Karan Sugar Syndicate Private Limited Vs Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana Sahakari Karkhana

The Impact of Acquiescence in an action for Copyright Infringement

Introduction

The case at hand revolves around a copyright infringement dispute between the Plaintiff/Appellant [referred to as the Plaintiff] and the Defendant/Respondent [referred to as the Defendant], both of whom operate in the liquor sale industry. The Plaintiff claimed that the Defendant's trademark, "TWO PUNCH Premium Label," infringed upon their own trademark, "TANGO PUNCH Label." The Plaintiff not only sought remedies for passing off but also claimed copyright infringement. 

The lower court, in so far as relief of passing off was concern,  initially ruled in favor of the Plaintiff but was later stayed by the Hon'ble High Court of Mumbai, a decision upheld by the Hon'ble Supreme Court. One of the critical aspects leading to this outcome was the doctrine of acquiescence on the part of the Plaintiff.

Acquiescence and its Implications in an action for Copyright Infringement:

Acquiescence is a legal doctrine that arises when a party, through its actions or inactions, appears to accept or tolerate a situation or conduct that would otherwise constitute an infringement of their rights. In this case, the Defendant had applied for permission to use the "TWO PUNCH Premium" label in March 2016. Initially, the Plaintiff objected to this application but later withdrew the objection. This change in stance by the Plaintiff was deemed as acquiescence.

Acquiescence is based on the principle that a party cannot lead another party to believe that their conduct is acceptable and then later claim infringement. By withdrawing the objection, the Plaintiff essentially communicated to the Defendant that they did not consider the use of the label as a violation of their rights. This change in position weakened the Plaintiff's claim of copyright infringement, as they had, in effect, given their tacit approval to the Defendant's use of the similar label.

Proof of Goodwill and Expenditure:

Another pivotal issue in this case was the Plaintiff's failure to establish goodwill associated with their product. To prove goodwill, it is not sufficient to merely present sales figures; one must also demonstrate the expenditure incurred on the promotion and advertisement of the product. Goodwill, in the context of trademark and copyright cases, refers to the reputation and public perception built around a brand or product. In this case, the Plaintiff's inability to substantiate their claim of goodwill weakened their position.

The Plaintiff presented statements of accounts, signed by their Chartered Accountant, which indicated expenses related to advertising and promotion, as well as sales figures. While such documents may serve as prima facie evidence at the initial stages of a case, they must be rigorously proven during the final hearing. The Plaintiff failed to meet this burden of proof in a manner acceptable under the law. Without a solid demonstration of goodwill and related expenditures, their claim was further compromised.

Cooperation in Cross-Examination:

Lastly, the Hon'ble Supreme Court also noted the importance of cooperation between advocates during cross-examination. Objections raised during cross-examination can indeed be crucial in determining the truth, but excessive or frivolous objections can unduly prolong trials and impede the administration of justice. The Court emphasized the need for a cooperative approach from members of the Bar to ensure that trials proceed smoothly and efficiently.

The Concluding Note:

In the case of the Plaintiff/Appellant challenging the order of the Hon'ble High Court of Mumbai, the doctrine of acquiescence played a significant role in the ultimate decision of the Hon'ble Supreme Court. The Plaintiff's change in position regarding the Defendant's trademark application weakened their claim of copyright infringement. Additionally, their failure to establish goodwill and related expenditure further undermined their case.

This case serves as a reminder of the legal principles surrounding copyright infringement, trademark disputes, and the importance of careful legal strategy. Parties involved in such disputes must be diligent in preserving their rights and be prepared to meet the burden of proof required by the law. Cooperation between advocates during legal proceedings is also crucial to ensure the efficient functioning of the justice system.

Case Law Discussed:

Date of Judgement:14/09/2023
Case No.Civil Appeal No. 2768 of 2023
Neutral Citation No: N. A.
Name of Hon'ble Court: Supreme Court
Name of Hon'ble Judge: Abhay S Oka Vs Rajesh Bindal, H.J.
Case Title: Brihan Karan Sugar Syndicate 
Private Limited Vs Yashwantrao Mohite Krushna 
Sahakari Sakhar Karkhana Sahakari Karkhana

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

Vajiram & Ravi IAS Study Vs Vajirao & Reddy Institute

Discerning Consumer and Probability of Confusion in Trademark Use

Abstract:

Trademark disputes often hinge on the crucial question of whether the marks in question are likely to cause confusion among consumers. This article delves into a recent case involving two educational institutions, VARIRAM & RAVI and VAJIRAO & REDDY, and analyzes the legal principles governing the assessment of deceptive similarity, the role of discerning consumers, and the impact of delay in seeking injunctive relief.

Introduction:

Trademark law aims to protect the distinctiveness of a brand in the marketplace and prevent consumer confusion. In the case of VARIRAM & RAVI versus VAJIRAO & REDDY, the dispute centers on whether the use of these two composite marks in the education sector is likely to cause confusion among well-informed civil services aspirants.

Deceptive Similarity and Composite Marks:

One of the key issues in this case is the concept of deceptive similarity. The Plaintiff, VARIRAM & RAVI, claimed that the presence of the common element "VAJI" in both marks created sufficient similarity to warrant injunctive relief. However, the Hon'ble High Court of Delhi rightly emphasized that when dealing with composite marks, it is imperative to consider the marks as a whole, rather than dissecting them into their constituent parts.

The court's decision to evaluate the marks holistically, taking into account both "VAJIRAM" and "RAVI" or "REDDY," is consistent with established trademark law principles. Trademarks are not merely a collection of letters; they represent a brand's identity in its entirety. By dissecting the marks and focusing solely on the shared syllables, one risks diluting the fundamental principles of trademark law. The distinguishing elements presented by "RAVI" and "REDDY" in VARIRAM & RAVI and "VAJIRAO" in VAJIRAO & REDDY must be given equal weight in the analysis.

Discerning Consumers and Market Awareness:

The court recognized that the target consumers in this case are well-informed civil services aspirants. These individuals are not only aware of the multiple coaching centers in the market but also knowledgeable about their respective reputations. This factor is crucial in assessing the probability of confusion.

Well-informed consumers are less likely to be confused by similar marks in a saturated market. They can distinguish between competing brands based on various factors, including the quality of services, teaching methodologies, and the institutions' histories. 

In this context, the court correctly concluded that the discerning nature of the consumers in question militated against the likelihood of confusion. These consumers are capable of making informed choices and are unlikely to mistake one institution for another based solely on the presence of the common prefix "VAJI."

The Impact of Delay:

Another significant aspect of this case is the delay on the part of the Plaintiff in seeking injunctive relief. While VARIRAM & RAVI claimed to have used its mark since 1976, it did not file the suit until 2019, more than two decades later. In contrast, VAJIRAO & REDDY asserted to have used its mark since 1995.

Delay in seeking legal remedies can have a substantial impact on trademark disputes. Courts often consider whether the delay has caused prejudice to the defendant or if it reflects a lack of urgency on the part of the plaintiff. In this case, the Plaintiff's prolonged delay in initiating legal action undermined its claim to immediate injunctive relief. The court was right to take into account the extended period during which the Plaintiff did not assert its rights.

The Concluding Note:

The case of VARIRAM & RAVI versus VAJIRAO & REDDY provides valuable insights into the assessment of deceptive similarity, the role of discerning consumers, and the impact of delay in trademark disputes. By emphasizing the holistic evaluation of composite marks, recognizing the discernment of the target audience, and considering the effect of delay, the court made a well-reasoned decision that aligns with established trademark law principles. 

Case Law Discussed:

Date of Judgement:14/09/2023
Case No.CS Comm 43/2019
Neutral Citation No: 2023: DHC: 6654
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula, H.J.
Case Title: Vajiram & Ravi IAS Study Vs Vajirao & Reddy Institute

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

Matra Mobili Private Limited Vs Madanapalle Retail Pvt. Ltd.

Ex Parte Injunction: Requirement of detailed discussion of Prima Facie Case, Balance of Convenience, and Order 39 Rule 3 CPC

Abstract:

The matter at hand involves an appeal filed against the grant of an ex parte injunction in a trademark dispute. The key issues discussed in this article revolve around the necessity of detailed reasoning on prima facie case, the balance of convenience, and the application of Order 39 Rule 3 of the Code of Civil Procedure (CPC) in determining the validity of the ex parte injunction.

Introduction:

The legal landscape in India, like many other jurisdictions, provides remedies to parties who seek protection against potential harm to their rights during the pendency of a lawsuit. One such remedy is the ex parte injunction, which is granted without notice to the opposing party. However, the grant of such an injunction is not without stringent requirements and checks. This article aims to analyze the specific case mentioned and scrutinize the principles of a prima facie case, balance of convenience, and the relevance of Order 39 Rule 3 CPC.

Prima Facie Case:

In the context of ex parte injunctions, establishing a prima facie case is of paramount importance. The plaintiff must demonstrate that they have a valid claim that merits protection through an injunction. In the case discussed, the plaintiff asserted trademark registrations in their favor. To grant an ex parte injunction, the court must be convinced that the plaintiff's case is not only plausible but also substantial.

In the matter at hand, the plaintiff's assertion of trademark registrations in "Sunday" in various classes suggests the existence of a prima facie case. However, the court's role is not to definitively establish the rights of the parties at this stage but rather to determine if there is a serious question to be tried. The grant of the initial ex parte injunction seems justified based on the prima facie case.

Balance of Convenience:

The balance of convenience is a delicate aspect of ex parte injunctions. It entails an analysis of where the overall balance of justice lies, taking into account the interests of both parties. In this case, the defendant is engaged in the furniture business under the same brand name "Sunday" and offers products similar to those of the plaintiff.

To assess the balance of convenience, the court must consider factors such as the potential harm to the plaintiff if the injunction is not granted versus the harm to the defendant if it is. Additionally, the court should weigh the public interest and any financial consequences. Without a proper evaluation of the balance of convenience, an ex parte injunction may become arbitrary and unjust.

The appellate court's observation that the trial court failed to record any findings on the balance of convenience and irreparable injury is a significant one. In a trademark dispute where both parties claim rights to the same brand name, a thorough analysis of the balance of convenience is indispensable. It ensures that the injunction serves the interests of justice.

Order 39 Rule 3 CPC:

Order 39 Rule 3 of the CPC is a procedural rule that governs the grant of ex parte injunctions. It provides the framework within which the court must operate when considering such injunctions. One of the crucial requirements under this rule is the need for the court to record reasons for dispensing with the notice to the defendant.

In the case under discussion, the appellate court rightly pointed out that the trial court did not provide any reasons for dispensing with notice to the defendant. This omission is significant, as it goes to the heart of the ex parte injunction procedure. It is essential for the court to justify why notice was not served to the defendant, as this step has a substantial impact on the defendant's right to be heard.

The Concluding Note:

Ex parte injunctions are a powerful legal tool designed to protect the rights and interests of parties during litigation. However, they should be granted judiciously and in accordance with established legal principles. The case presented highlights the importance of establishing a prima facie case, evaluating the balance of convenience, and adhering to procedural requirements such as those outlined in Order 39 Rule 3 CPC. The appellate court's decision to remand the matter back to the trial court for fresh adjudication, with a specific focus on these aspects, is a commendable step toward ensuring that the principles of justice and fairness are upheld in the legal process.

Case Law Discussed:

Date of Judgement:11/09/2023

Case No.Commercial Appeal No. , 321of 2023

Neutral Citation No: 2023: KHC: 32601

Name of Court: Karnataka High Court

Name of Hon'ble Judge: G.Narender and Vijay Kumar S Patil, H.J.

Case Title: Matra Mobili Private Limited Vs Madanapalle Retail Pvt. Ltd.

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

F Hoffmann La Roche Limited Vs Drug Controller General of India.

Extended Passing Off in Relation to Expired Patent: 

Introduction:

The intersection of intellectual property rights, pharmaceuticals, and competition in the Indian legal landscape has been a subject of significant litigation and jurisprudential development. One such intricate legal issue recently addressed by the Hon'ble High Court of Delhi in the case of F Hoffmann La Roche Limited vs. Cadila is whether a suit filed on the basis of passing off in relation to an expired patent can be maintained. This article analyzes the key aspects of this case, focusing on the doctrine of extended passing off in the context of an expired patent.

Background of the Case:

In the case at hand, F Hoffmann La Roche Limited ("Plaintiff") filed a suit seeking a declaration that the approval granted to Cadila Healthcare Limited ("Cadila") by the Drugs Controller General of India ("DCGI") for manufacturing authorization under the Drugs and Cosmetics Act, 1940, was invalid. The suit was specifically filed invoking the action for extended passing off, pertaining to the characteristic, composition, and quality of a product named 'Trastuzumab'.

Cadila, in response, filed an application under Order 7 Rule 11 of the Civil Procedure Code (CPC) seeking the rejection of the plaint. Cadila's main contention was that the drug 'Trastuzumab' had lost patent protection since May 3, 2013, when the plaintiff's patent had expired, and therefore, no monopoly could be claimed by the plaintiff over it. Cadila also argued that the suit was barred by law due to the availability of an alternative remedy under Rule 122DC of the Drugs Rules, which allows an appeal to the Central Government against the DCGI's approval.

Key Legal Analysis:

Expired Patent and Passing Off:

The central issue before the court was whether the doctrine of passing off could be extended to cover a situation where the underlying patent had expired. The plaintiff, in this case, did not assert rights under the expired patent and expressed no objection to the manufacture and sale of the drug by Cadila as long as it was not claimed to be biosimilar. The court examined whether the cause of action disclosed in the plaintiff's plaint was sufficient to proceed with the case.

Doctrine of Extended Passing Off:

The court recognized the doctrine of extended passing off in relation to an expired patent. Passing off, in intellectual property law, typically deals with the misrepresentation of goods or services as those of another. Extended passing off is a legal concept that extends protection beyond trademarked goods to protect other aspects such as the composition, characteristics, and quality of a product. In this case, the plaintiff sought to protect the reputation and goodwill associated with 'Trastuzumab' beyond the scope of the expired patent.

Alternative Remedy:

Cadila argued that the suit was barred due to the availability of an alternative remedy under Rule 122DC of the Drugs Rules, which provided for an appeal to the Central Government against DCGI's approval. However, the court observed that the mere availability of an alternative remedy does not automatically lead to the rejection of a suit. The court's role at the stage of Order 7 Rule 11 CPC is to determine whether a cause of action is disclosed in the plaintiff's pleadings, and the availability of an alternative remedy is not a conclusive factor for rejection.

The Concluding Note:

In the F Hoffmann La Roche Limited vs. Cadila case, the Hon'ble High Court of Delhi recognized the doctrine of extended passing off in relation to an expired patent. The court held that the cause of action disclosed in the plaintiff's pleadings was sufficient to proceed with the case, even in the absence of patent protection. This decision highlights the evolving nature of intellectual property jurisprudence in India, where courts are willing to protect the reputation and goodwill associated with a product even after the expiration of its patent. 

Case Law Discussed:

Date of Judgement:11/09/2023
Case No.CS Comm 540 of 2016
Neutral Citation No: 2023: DHC: 6522
Name of Court: Delhi High Court
Name of Hon'ble Judge: Jyoti Singh, H.J.
Case Title: F Hoffmann La Roche Limited Vs Drug Controller General of India.

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