Black Diamond Track Parts Vs Black Diamond Motor

Maintainability of Petition under Article 227 of the Constitution of India before Commercial Bench

Introduction:

The question of whether a petition under Article 227 of the Indian Constitution can be heard by a Commercial Court of a High Court was  addressed by the Division Bench of the Delhi High Court. This issue arose in response to a judgment made by the Learned Additional District Judge (ADJ) on September 25, 2021, wherein an application under Order 7 Rule 11 of the Code of Civil Procedure, 1908 (CPC) was dismissed, and no appeal was available under Order 43 Rule 1 CPC. Consequently, the aggrieved party sought recourse under Article 227.

Section 8 of the Commercial Courts Act posed a challenge to this situation, as it explicitly prohibits revision applications or petitions against interlocutory orders. Thus, the central question was whether a petition under Article 227 could be maintained concerning proceedings in a commercial suit before the District Judge (Commercial), given the prohibition under the Commercial Courts Act.

Analysis:

1. Alternative Remedy and Discretionary Nature of Article 227:

The Division Bench noted that a petition under Article 227 of the Constitution of India is a discretionary remedy and is typically not exercised when an alternative remedy is available under the CPC. In this context, it's essential to highlight that the remedy of revision under Section 115 of the CPC, which would have been available against the dismissal of an application under Order 7 Rule 11 CPC, had been eliminated by the Commercial Courts Act.

2. Scope and Ambit of Article 227:

One of the critical aspects considered by the Division Bench was the scope and ambit of a petition under Article 227 compared to a revision application under Section 115 of the CPC. It was observed that the powers conferred by Article 227 are broader in scope than those of Section 115 of the CPC. Essentially, anything that could be done under Section 115 could also be done under Article 227. This led to the conclusion that petitions under Article 227 could be preferred even against orders for which a revision application under Section 115 CPC would have been maintainable.

3. Commercial Courts Act and Article 227:

 

The main contention was whether the Commercial Courts Act completely barred the jurisdiction under Article 227 in cases where a revision application under CPC had been rendered unavailable due to the Act. The Division Bench, while acknowledging that the Commercial Courts Act limited certain remedies, held that Article 227's jurisdiction should not be entirely precluded. Therefore, the Division Bench ruled that a petition under Article 227 was maintainable in the context of a dismissal of an Order 7 Rule 11 application, even if the Commercial Courts Act had eliminated the revision remedy.

The Concluding Note:

In the case before the Delhi High Court's Division Bench, it was established that the Commercial Courts Act's restrictions on certain remedies did not entirely bar the exercise of jurisdiction under Article 227 of the Constitution of India. The decision highlighted the discretionary nature of Article 227, its broader scope compared to Section 115 of the CPC, and the importance of maintaining access to justice even in the context of commercial suits. Ultimately, the petition under Article 227 was deemed maintainable in this case, allowing the aggrieved party to seek redress against the dismissal of their application under Order 7 Rule 11 CPC. 

Case Law Discussed:

Date of Judgement:25/05/2021

Case No. FAO (COMM) 41/2021

Neutral Citation No: N.A.

Name of Hon'ble Court:Delhi High Court

Name of Hon'ble Judge: Rajiv Sahai Endlaw and Amit Bansal. H.J.

Case Title:Black Diamond Track Parts Vs Black Diamond Motor

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 

Ornate Jewels Vs Wow Overseas Private Limited

The Binding Effect of Statements Made Before the Registrar of Trademarks

Introduction:

The case in question revolves around the binding effect of statements made by the plaintiff before the Registrar of Trademarks in response to an examination report. The plaintiff, who sought to protect the trademark "ORNATE JEWELS" in the jewelry industry, faced a legal hurdle when the defendant claimed a similar trademark. The crux of the matter lies in the plaintiff's response to the Registrar of Trademarks' objection regarding the similarity of trademarks and its subsequent impact on the plaintiff's legal position.

Background:

The plaintiff asserted its use of the trademark "ORNATE JEWELS" for Gold Diamond, Precious and Semi-Precious Jewelry since 2012. The plaintiff also held a registered trademark with a logo in Class 35 before the Registrar of Trademarks in 2018. Conversely, the defendant argued that it had been using the same trademark, "ORNATE JEWELS," in the same industry but with a distinct logo. The defendant's trademark had been registered with the Registrar of Trademarks in Class 14 since 2016.

The Registrar's Objection:

The pivotal moment in this legal battle occurred when the Registrar of Trademarks raised an objection to the plaintiff's registration application. The objection was grounded in the fact that the defendant had already registered a trademark with a similar name in 2016. The plaintiff, however, countered this objection by asserting that the defendant's trademark was entirely different and dissimilar, bearing Registration No. 3256088.

The High Court's Ruling:

The Rajasthan High Court upheld the Trial Court's decision, denying the plaintiff's claim for a temporary injunction. The crux of their reasoning hinged upon the plaintiff's response to the Registrar of Trademarks' objection regarding the similarity of trademarks. The High Court concurred with the Trial Court's observation that the plaintiff's response before the Registrar of Trademarks estopped them from taking a contradictory position now. In essence, the plaintiff's previous statement, asserting dissimilarity, held them legally bound and precluded them from subsequently claiming similarity, which would be at odds with their earlier stance before the Registrar of Trademarks.

Analysis:

The case underscores the importance of consistency in legal proceedings, particularly in matters related to trademark registration and protection. When a party makes a statement before a competent authority, such as the Registrar of Trademarks, it carries a significant legal weight. In this instance, the plaintiff's initial assertion that the defendant's trademark was dissimilar, made during the registration process, formed the basis for their subsequent legal challenges.

Doctrine of Estoppel:

The doctrine of estoppel is central to this case. Estoppel prevents a party from adopting a position that contradicts their prior statements or conduct when it would be unjust or inequitable to do so. The plaintiff's assertion of dissimilarity before the Registrar of Trademarks created a legitimate expectation that they would maintain this position. To allow the plaintiff to subsequently claim similarity would not only undermine the integrity of the registration process but also lead to unjust results for the defendant.

The Concluding Note:

This case serves as a poignant reminder of the binding effect of statements made before the Registrar of Trademarks in response to examination reports. Parties must exercise caution and consistency in their statements during trademark registration, as these statements can significantly impact their legal positions in subsequent disputes. 

Case Law Discussed:

Date of Judgement:18/09/2023

Case No. S.B. Civil Miscellaneous Appeal No. 1570/2021

Neutral Citation No: N.A.

Name of Hon'ble Court:Rajasthan High Court

Name of Hon'ble Judge: Sudesh Bansal.H.J.

Case Title:Ornate Jewels  Vs Wow Overseas 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

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Giorgio Armani Vs Smart Collection

Beneficiary Test in Co-Branding Cases and Ban on Export or Import

Introduction:

In the legal case involving the plaintiff's ownership rights to the trademarks "ARMANI" and "GIORGIO ARMANI" against the defendants' use of these marks in connection with their brand "SMART COLLECTION," several critical legal issues were brought to the forefront. This article aims to provide a detailed analysis of the application of the "beneficiary test" in cases of co-branding through online promotion and advertising, as well as the implications of the court's directive to inform Customs Authorities for preventing the import or export of counterfeit goods.

Ownership Rights and Trademark Infringement:

The plaintiff's claim of ownership rights to the trademarks "ARMANI" and "GIORGIO ARMANI" in various product categories was uncontested by the defendants. The core issue at hand was the defendants' use of these trademarks alongside their brand "SMART COLLECTION," which raised concerns of trademark infringement. The court ruled in favor of the plaintiff, emphasizing that the use of these marks alongside "SMART COLLECTION" amounted to an abuse of the plaintiff's trademarks.

Co-Branding and the Unlawful Use of Trademarks:

One crucial aspect of this case was the defendants' attempt to co-brand their products using the plaintiff's trademarks along with their own "SMART COLLECTION" mark. Co-branding, in essence, involves combining two established brands to create a new product or line of products. However, the court made it clear that even with co-branding, the unauthorized use of another entity's trademarks is prohibited and unlawful.

The Beneficiary Test in Co-Branding Cases:

One significant development in this case was the court's recognition of the "beneficiary test" as a crucial factor in determining liability in cases of co-branding through online promotion and advertising. The beneficiary test, in essence, seeks to identify who ultimately benefits from the use of the contested trademarks. In this case, the court reasoned that the party directly responsible for creating or facilitating the online promotion and advertising would be the one benefiting.

The application of the beneficiary test is particularly relevant in the digital age, where online promotion and advertising can involve multiple parties and intermediaries. By identifying the primary beneficiary, the court aimed to hold those responsible for the infringement accountable. In this case, it was clear that only the defendants would benefit from the use and marketing of the plaintiff's trademarks in conjunction with "SMART COLLECTION."

Preventing Import or Export of Counterfeit Goods:

The court's directive for the plaintiff to inform Customs Authorities about the decision serves a vital purpose in the protection of trademark rights. Counterfeit goods bearing well-known trademarks like "ARMANI" and "GIORGIO ARMANI" can flood international markets, causing significant harm to the genuine trademark owner's reputation and revenues.

By alerting Customs Authorities, the court took a proactive approach to prevent the import or export of counterfeit goods. This directive not only upholds the rights of the trademark owner but also contributes to the broader goal of combating intellectual property infringement and protecting consumers from counterfeit products.

The Concluding Note:

The legal case involving the trademarks "ARMANI" and "GIORGIO ARMANI" and their unauthorized use in co-branding by the defendants sheds light on several crucial legal principles. The application of the beneficiary test in co-branding cases through online promotion and advertising highlights the need for accountability in the digital age.

Additionally, the court's directive to inform Customs Authorities demonstrates a commitment to safeguarding trademark rights and combating counterfeit goods. In sum, this case underscores the importance of upholding trademark protection in an evolving commercial landscape, where co-branding and online marketing play pivotal roles. 

Case Law Discussed:

Date of Judgement:25/07/2018

Case No. CS (COMM) 208/2018

Neutral Citation No: N.A.

Name of Hon'ble Court: Delhi High Court

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

Case Title:Giorgio Armani Vs Smart Collection

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

Satish Chand Gupta Vs Saroj Rani

Non-Impleadment of Legal Heirs of Deceased Partner in Partnership Firm

Introduction:

In a recent legal case, the question arose as to whether the legal heirs of a deceased partner of a partnership firm should be impleaded in a trademark cancellation proceeding. The trademark in question had been registered in the name of "Saroj Rani, Anil Garg, Sunil Garg, trading as M/s Kuria Mal and Sons." However, the impugned registration was initially issued to "Kuria Mal Gopi Chand," in which Saroj Rani was a partner. During the pendency of the cancellation proceeding, Saroj Rani passed away. The central issue before the court was whether the legal heirs of Saroj Rani should be made parties to the cancellation proceeding.

The Petitioner's Argument:

The petitioner in this case contended that the impugned trademark registration was initially issued to the partnership firm "Kuria Mal Gopi Chand," of which Saroj Rani was a partner. Importantly, the petitioner argued that this partnership continued to exist even after the demise of one of its partners, Saroj Rani. Therefore, the legal heirs of the deceased partner, Saroj Rani, need not be impleaded in the cancellation proceeding.

The Court's Ruling:

The Hon'ble High Court of Delhi approved the petitioner's submission and held that the legal heirs of a deceased partner of a partnership firm are not required to be impleaded in a cancellation proceeding under the circumstances described in this case.

Analysis:

This ruling by the Hon'ble High Court of Delhi raises several important legal and practical considerations, which can be analyzed as follows:

Continuation of Partnership:

The core argument in favor of not impleading the legal heirs of Saroj Rani was that the partnership firm "Kuria Mal Gopi Chand" continued to exist even after Saroj Rani's demise. In such cases, it can be argued that the partnership entity, as a separate legal entity, remains responsible for its obligations and liabilities, including any legal disputes involving trademarks or other assets.

Legal Personality of a Partnership Firm:

Partnership firms in many legal systems are considered separate legal entities distinct from their individual partners. This legal personality allows them to own property, enter into contracts, and be parties to legal proceedings. In this context, the court's decision aligns with the recognition of the partnership firm as an independent legal entity capable of defending its interests and liabilities.

Efficiency and Streamlining of Legal Proceedings:

Impleading the legal heirs of a deceased partner can often complicate legal proceedings. It may require identifying and serving notice to multiple individuals, potentially residing in different locations, which can lead to delays and increased administrative burdens. The court's decision reflects an inclination towards streamlining legal proceedings by focusing on the partnership entity itself.

Exceptions to the Rule:

While this case establishes a general principle that legal heirs need not be impleaded when the partnership firm continues to exist, exceptions may arise in certain situations. For instance, if the partnership agreement explicitly specifies the procedure to follow in the event of a partner's death, or if local laws require the legal heirs to be notified, these factors may override the general principle.

Protection of the Interests of Legal Heirs:

It is important to note that the court's decision does not negate the rights and interests of the legal heirs of a deceased partner. They may still have a claim to the deceased partner's share in the partnership, and their rights and interests should be safeguarded through appropriate legal channels, which may include proceedings separate from the cancellation of a trademark registration.

The Concluding Note:

The ruling by the Hon'ble High Court of Delhi in this case provides valuable insights into the treatment of legal heirs in partnership firm-related cancellation proceedings. It underscores the legal recognition of a partnership firm as a distinct legal entity, capable of maintaining its rights and obligations even after the death of one of its partners, under certain circumstances. However, this decision should not be seen as a one-size-fits-all rule, as exceptions may apply based on specific partnership agreements and legal requirements. Overall, it emphasizes the need for a nuanced approach when dealing with the complexities of partnership law and trademark cancellations involving partnership entities.

Case Law Discussed:

Date of Judgement:24/01/2023

Case No. Co Comm IPD TM 46 of 2021

Neutral Citation No: N.A.

Name of Hon'ble Court: Delhi High Court

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

Case Title: Satish Chand Gupta Vs Saroj Rani

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

Anil Kapoor Vs Simply Life India & Ors.

Dark Patterns and Personality Rights: An Analytical Legal Perspective

Introduction

In a rapidly evolving digital landscape, the intersection of technology and law has given rise to complex legal issues surrounding the protection of an individual's personality rights. The case of Anil Kapoor, a renowned Indian actor, brings to the forefront the need to safeguard an individual's name, likeness, and persona from misuse in the digital realm. Kapoor's lawsuit highlights the impact of dark patterns on personality rights and the evolving legal landscape in India.

Personality Rights and Their Scope

Anil Kapoor's lawsuit primarily revolves around the concept of personality rights, which encompasses a person's right to control and protect their name, appearance, likeness, persona, voice, and other personal characteristics. These rights are essential for safeguarding an individual's identity in an age where technology facilitates the easy replication and distribution of personal attributes.

In Kapoor's case, he seeks protection not only for his name and likeness but also for aspects such as his unique delivery style, gestures, and signatures. This broad scope underscores the comprehensive nature of personality rights in today's digital world.

Exploitative Misuse of Personality Rights

The crux of Kapoor's claim lies in the alleged misuse of his personality rights by various online entities and websites. These entities are purportedly profiting from Kapoor's image, likeness, and other aspects of his identity by selling products bearing his name and image. This raises important legal questions regarding the commercial exploitation of an individual's persona without their consent.

The concept of misappropriation of personality rights is not new in the legal domain. Kapoor's case highlights the need for legal remedies to protect individuals from the unauthorized and malicious use of their personal attributes for financial gain.

Dark Patterns and Deceptive Internet Techniques

A significant development in Kapoor's case is the introduction of the 'Prevention and Regulation of Dark Patterns 2023,' proposed by the Ministry of Consumer Affairs, Government of India. Dark patterns refer to deceptive internet techniques designed to mislead and manipulate consumers, often leading to undesirable outcomes. Such practices not only infringe upon consumer rights but can also have far-reaching consequences on an individual's personality rights.

In Kapoor's case, the misuse of his persona by online entities can be seen as a form of dark pattern, as it misleads consumers into believing that Kapoor endorses or supports these products. The proposed guidelines seek to address these deceptive practices, aligning with the broader goal of protecting consumers' interests and rights in the digital space.

Legal Precedents and Judicial Response

The Hon'ble High Court of Delhi's decision to grant an interim injunction in favor of Kapoor reflects a legal stance that disapproves of any form of misuse or commercial use of a celebrity's name, voice, persona, or likeness. This stance is consistent with the landmark case of R. Rajagopal v. State of T.N. (1994), which established the principle that an individual's personality rights deserve protection.

Furthermore, the court recognized that Kapoor's persona was at risk of dilution, tarnishment, and blurring due to unauthorized use. It emphasized that such protection was not only necessary for Kapoor's benefit but also to shield his family and friends from the negative repercussions of misuse.

Conclusion

Anil Kapoor's legal battle to protect his personality rights highlights the evolving challenges in the digital age, where dark patterns and deceptive practices can threaten an individual's identity and reputation. The judiciary's response, as demonstrated by the Hon'ble High Court of Delhi, reinforces the importance of safeguarding personality rights in the face of technological advancements and deceptive online tactics.

The intersection of personality rights, dark patterns, and consumer protection guidelines underscores the need for a robust legal framework that adapts to the changing digital landscape. Kapoor's case serves as a reminder of the imperative to balance technological innovation with the preservation of individual rights and dignity in the digital realm.

Case Law Discussed:

Date of Judgement:20/09/2023

Case No. CS(COMM) 652/2023

Neutral Citation No: N.A.

Name of Hon'ble Court: Delhi High Court

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

Case Title: Anil Kapoor Vs Simply Life India & 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

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Vifor International Ltd. & Anr. vs Biological E Limited

Refusal of Injunction in a Patent Infringement Case Based on the Balance of Convenience

Introduction:

The case at hand revolves around the refusal of an injunction in a patent infringement lawsuit, with the court favoring the defendant based on the principle of the "balance of convenience." The lawsuit pertains to a patent (No. 221536) titled "WATER SOLUBLE IRON CARBOHYDRATE COMPLEX AND A PROCESS FOR PRODUCING WATER SOLUBLE IRON CARBOHYDRATE COMPLEX," which covers an intravenous iron deficiency therapy product. This article delves into the key aspects of the case, including the patent's history, the alleged infringement, and the court's reasoning in declining the injunction.

Background:

The patent in question was filed in October 2003 and granted in June 2008. The product received marketing approval in India in 2011. and expiring in October 2023. The World Health Organization (WHO) has also assigned the International Nonproprietary Name FERRIC CARBOXYMALTOSE to the plaintiff's invention.

Alleged Infringement and Notice:

On June 7, 2023, the defendants sent a notice to the plaintiff seeking an acknowledgment that they are not infringing the patent. The defendant claimed that they are using a process different from the one disclosed and claimed in the patent.

Product or Product-by-Process Patent

A significant point of contention in this case is whether the patent is a 'product' and 'process' patent or a 'product-by-process' patent. A prior decision by a Co-ordinate Bench of the same court, in a related case filed by the plaintiffs concerning the same patent, held that 'product-by-process' patents are recognized in Indian jurisprudence.

Such patents are limited by the process through which the product is obtained, and third parties manufacturing the same product using a different process do not infringe the patent. However, it is worth noting that this decision is under challenge before the Division Bench in FAO(OS) (COMM) 159/2023. Therefore, the controversy surrounding the nature of the patent remains unresolved.

The Balance of Convenience:

The central issue leading to the refusal of an injunction in this case is the balance of convenience. The court weighed the interests of both parties involved, i.e., the plaintiffs and the defendants, in determining whether to grant an interim injunction.

Irreparable Loss to Defendants:

The court considered the fact that the defendants had already entered the market with their product, which they claimed did not infringe the patent. Granting an interim injunction at this stage would potentially cause irreparable loss to the defendants, as they would be prevented from selling their product.

Plaintiffs' Interests:

To protect the interests of the plaintiffs, the court opted for an alternative approach. Rather than granting an injunction, it directed the defendants to provide an account of their manufacturing and sales of FERRIC CARBOXYMALTOSE (FCM) for the relevant period. This would allow the plaintiffs to assess the extent of any potential infringement and seek appropriate remedies if necessary.

The Concluding Note:

In the case of patent infringement, the decision to grant or deny an injunction is a delicate balancing act. The court's decision in this instance to refuse an injunction in favor of the defendant was influenced by the considerations of the balance of convenience. It took into account the potential harm to the defendants if an injunction was granted and sought to protect the interests of the plaintiffs through alternative means. Moreover, the ongoing dispute regarding the nature of the patent adds another layer of complexity to the case, as it awaits resolution by the Division Bench. The refusal of the injunction in this case underscores the significance of carefully evaluating the equities involved in patent infringement cases.

Case Law Discussed:

Date of Judgement:19/09/2023

Case No. CS(COMM) 434/2023

Neutral Citation No: 2023:DHC:6864

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Vikas Mahajan, H.J.

Case Title: Vifor International Ltd. & Anr. vs Biological E 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

The Trustee of Princeton University Vs The Vagdevi Educational Society

Trademark user claimed by a party prior to what has been claimed in trademark application

Introduction:

The issue of whether a party can claim use of a trademark prior to what has been declared in a trademark application is a matter of significance in trademark law. This article delves into a notable case involving the trademark "PRINCETON" in the context of educational institutions and services in India.

The case presents a dispute between the plaintiff and the defendant regarding the claimed user dates of the trademark. The plaintiff asserts use since 1911, while the defendant's claimed use in India dates back to 1991. The core question is whether a party can assert use prior to what has been declared in their trademark application.

Background of the Case:

In this case, the defendant raised an argument that the plaintiff must restrict its earliest claim of using the "PRINCETON" mark to 1996. This contention was based on the fact that, in the plaintiff's affidavit of user filed with its trademark application in 2012, the plaintiff stated use of the mark starting from 1996. The defendant asserted that this declaration should be binding on the plaintiff.

The plaintiff, on the other hand, contended that even if they declared use of the mark from 1996 during the trademark registration process, they should still be entitled to claim use from an earlier date if they could provide irrefutable evidence of such prior use. Essentially, the plaintiff argued that the declaration made during the registration process should not override actual use.

Legal Analysis:

The case was brought before the Hon'ble High Court of Delhi, which issued a noteworthy judgment providing valuable insights into this legal conundrum. The court's ruling emphasizes several key principles:

Declaration of User:

The court recognized that the declaration of user made at the time of applying for trademark registration is significant. In most cases, it would ordinarily bind the applicant. This declaration is vital for establishing the timeline of use and securing exclusive rights.

Approbate and Reprobate:

The court cited the principles of approbate and reprobate, indicating that a party cannot simultaneously assert use from a particular date during the registration process and claim earlier use if it suits their interests. Ordinarily, the declaration should be consistent with the asserted use date.

Actual Use Prevails:

However, the court emphasized that if the party can indisputably demonstrate actual use of the asserted mark from a point in time earlier than what was declared during registration, this evidence would prevail. In such cases, the court cannot ignore the material presented by the party regarding prior use.

Practical Example:

To illustrate this principle, the court provided a practical example. If the trademark relates to an educational institution's name and the plaintiff declared use from 2010 during registration but could prove that the institution prominently displayed the mark on its premises since 2000, then the use of the mark would be reckoned from 2000, not 2010.

The Concluding Note:

In conclusion, the case involving the trademark "PRINCETON" in the context of educational services highlights the nuanced approach taken by the Hon'ble High Court of Delhi regarding claims of use prior to what has been declared in a trademark application. While the declaration of user is important and should ordinarily be consistent with actual use, the court recognized that evidence of prior use can override the declared date if presented convincingly.

Case Law Discussed:

Date of Judgement:06/09/2023

Case No. CS(COMM) 270/2022

Neutral Citation No: 2023:DHC:6420

Name of Hon'ble Court: Delhi High Court

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

Case Title: The Trustee of Princeton University 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

Atlantech Online Services Pvt. Ltd. Vs Google India Pvt. Ltd.

The Maximum Time Limit for Filing Replication in Delhi High Court

Introduction:

In civil litigation, the replication plays a significant role in responding to the defendant's written statement. In the Delhi High Court, the time limit for filing a replication is governed by Rule 5 of Chapter VII of the Delhi High Court (Original Side) Rules, 2018 ("the Original Side Rules"). This article examines the provisions of Rule 5, recent judicial decisions, and their implications on the maximum time limit for filing a replication.

Rule 5 of Chapter VII of the Delhi High Court (Original Side) Rules, 2018

Rule 5 of the Original Side Rules provides the framework for filing a replication in the Delhi High Court. It is essential to note that this rule applies specifically to suits filed on the original side of the court. The rule establishes the initial time limit for filing a replication at 30 days from the date of service of the written statement. However, Rule 5 contains a critical limitation: "but not thereafter."

The phrase "but not thereafter" is significant, as it unequivocally restricts any extension of time beyond 15 days beyond the initial 30-day period. This means that, even in exceptional and unavoidable circumstances, the maximum allowable time for filing a replication in the Delhi High Court is 45 days from the date of service of the written statement. This strict limitation is intended to promote the expeditious resolution of cases and prevent unnecessary delays in the litigation process.

Judicial Precedent: Ram Sarup Lugani vs. Nirmal Lugani 2020 SCC OnLine Del 1353:

The decision of the Hon'ble Division Bench of the Delhi High Court in the case of Ram Sarup Lugani Vs. Nirmal Lugani, reported as 2020 SCC OnLine Del 1353, is of particular significance in understanding the maximum time limit for filing a replication in the Delhi High Court. In this case, the Division Bench held that the provisions of the Delhi High Court (Original Side) Rules, 2018, prevail over the provisions of the Civil Procedure Code (CPC) regarding the time limit for filing a replication.

The Division Bench's ruling affirmed the supremacy of the Original Side Rules in this regard, establishing that the maximum time for filing a replication cannot exceed 45 days from the date of service of the written statement. In light of this decision, any application seeking condonation of delay in filing a replication that exceeds the 45-day limit would be dismissed.

Implications and Analysis:

The Delhi High Court's strict adherence to the 45-day time limit for filing a replication is rooted in the principles of efficiency and expedition.The decision in Ram Sarup Lugani vs. Nirmal Lugani reinforces the importance of adhering to the Original Side Rules and emphasizes the need for litigants and legal practitioners to be diligent in complying with procedural timelines. It also highlights the limited scope for seeking condonation of delay in filing a replication beyond the prescribed 45-day limit.

The concluding Note:

In conclusion, the Delhi High Court's Rule 5, Chapter VII of the Original Side Rules, 2018, establishes a strict maximum time limit of 45 days for filing a replication in suits filed on the original side of the court. The decision of Hon'ble Division Bench, High Court of Delhi in Ram Sarup Lugani vs. Nirmal Lugani reaffirms the supremacy of these rules over the CPC and underscores the importance of adhering to procedural timelines. Legal practitioners and litigants should be mindful of this limitation and exercise due diligence to ensure timely compliance with the prescribed time limits for filing a replication in the Delhi High Court.

Case Law Discussed:

Date of Judgement:29/08/2023

Case No. CS(COMM) 647/2021

Neutral Citation No: 2023:DHC:6373

Name of Hon'ble Court: Delhi High Court

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

Case Title: Atlantech Online Services Pvt. Ltd. Vs Google India 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