Hasmukhbhai Bhagwanbhai Patel Vs Husenali Anwarali

Territorial Jurisdiction in Trademark Suits on the basis of sale at a particular place

Introduction:

The recent case in question involves a plaintiff seeking to stop the use of the trademark "KRANTI KAKA" in connection with betel nuts, filed under the Trademarks Act of 1999 and the Copyright Act of 1957. The territorial jurisdiction of court was invoked on the basis of sale. The defendant, on the other hand, contested the jurisdiction of the court based on the location of their businesses and the alleged infringement within the district. This article provides an analytical overview of the case and discusses the principles surrounding territorial jurisdiction in trademark suits.

Background of the Case:

In this case, the appellant is the plaintiff, and the respondent is the defendant. The crux of the matter revolves around the rejection of the plaintiff's complaint by the Ld. Additional District Judge (A DJ) in Dahod, citing a lack of jurisdiction under Order 7 Rule 11 of the Code of Civil Procedure (CPC). The lawsuit primarily sought a permanent injunction, profit accounts, and damages against the unauthorized use of the trademark "KRANTI KAKA" in connection with betel nuts.

Key Jurisdictional Disputes:

The central dispute in this case arises from the geographical locations of both the plaintiff and the defendant. Neither party was a resident of Dahod, where the case was filed. The plaintiff conducted their business operations for profit in Surat, while the defendant claimed that submitting invoices from either party did not establish the cause of action.

The Legal Principle:

The court adhered to a well-established legal principle when analyzing the jurisdictional aspect of the case. It stated that the defendant's plea, whether in their written statement or an application under Order 7 Rule 11 of the CPC, is irrelevant in determining jurisdiction. 

The Court's Decision:

Despite the plaintiff residing in Surat and owning a factory in the Surat district, and the defendant conducting business in Moraiya and Ahmedabad while residing in Wadhwan, the suit was filed in Dahod. The plaintiff argued that part of the cause of action arose within the territorial jurisdiction of the Dahod District Court on the basis of sale of product at Dahod. 

However, the court found that the defendant did not produce, market, or process betel nuts within the boundaries of the Dahod District Court. The plaintiff relied on invoices allegedly extracted from the Trademark Registry website to establish territorial jurisdiction, but the court dismissed this interpretation, deeming it an abuse of the law.

The Concluding Note:

The case at hand underscores that the mere sale of goods at a particular place, without a substantial connection to the cause of action, cannot be the sole basis for invoking territorial jurisdiction. The court's decision in this matter upholds established legal principles and ensures that trademark suits are filed in relevant and appropriate jurisdictions, preventing potential abuse of the law.

Case Law Discussed:

Date of Judgement:25/09/2023

Case No. R/FIRST APPEAL NO. 2172 of 2023

Neutral Citation No: N. A. 

Name of Hon'ble Court: Gujarat High Court

Name of Hon'ble Judge: J C DoshiH.J.

Case Title:Hasmukhbhai Bhagwanbhai Patel Vs Husenali Anwarali

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

VBM Medizintechnik GMBH Vs Geetan Luthra

Bonafide adopter of trademark and Defense of Acquiescence under Section 33 of the Trademarks Act 1999

Introduction:

In the case at hand, a German-based medical equipment company, "the Plaintiff," initiated legal action against an Indian entity, "the Defendant," for passing off under the Trademarks Act 1999. The Defendant attempted to invoke the defense of acquiescence under Section 33 of the Trademarks Act, arguing that the Plaintiff had acquiesced to their use of the trademark "VBM." This article critically analyzes the court's decision to deny the defense of acquiescence to the Defendant on the grounds that it was not a bona fide adopter of the trademark.

Factual Background:

The Plaintiff, an established German company, had been using the trademark "VBM" for its medical equipment since 1981. Despite not having an Indian registration, the Plaintiff had a distributor in India who happened to be the father of the Defendant. The Defendant claimed to have been using the domain name www.vdmmedial.com since 2008 and subsequently secured the trademark registration for "VBM" in India in 2015.

In 2020, the Plaintiff terminated its distributor agreement with the Defendant and filed a complaint for passing off, asserting that the Defendant's use of the trademark "VBM" was infringing upon its rights. In response, the Defendant invoked the defense of acquiescence under Section 33 of the Trademarks Act 1999.

Analysis of the Court's Decision:

The central issue in this case revolves around the applicability of the defense of acquiescence under Section 33 of the Trademarks Act 1999. Section 33 of the Act provides protection to a person who has been using a trademark continuously for a certain period, despite knowing of another person's prior use of a similar or identical trademark. To successfully invoke this defense, it is essential that the Defendant has to establish themselves as a bona fide adopter of the trademark.

The court, in its analysis, rightly considered several factors before determining whether the Defendant was a bona fide adopter of the trademark "VBM." These factors include the visual similarity between the Plaintiff's and Defendant's marks, the timing of the Defendant's trademark registration, and the circumstances surrounding the Defendant's adoption and use of the mark.

Visual Similarity:

The court observed that the Defendant's adoption of a mark with such a striking visual similarity to the Plaintiff's mark could not be dismissed as mere coincidence. The visual similarity between the marks "VBM" and "VDM" could potentially lead to consumer confusion, which is precisely what trademark law aims to prevent.

Not a Bona Fide Adoption:

The court concluded that the Defendant had not secured the registration of the mark in a bona fide manner. In other words, the Defendant's actions, particularly the timing of the trademark application, indicated that they may not have adopted the mark "VBM" with honest and legitimate intentions.

The Concluding Note:

The court's decision to deny the Defendant the protection of the defense of acquiescence under Section 33 of the Trademarks Act 1999 is a well-reasoned one. The court rightly recognized that this defense should only be available to genuine adopters of a trademark who have used it continuously with good faith.

In this case, the Defendant's adoption of a visually similar mark, the timing of the trademark registration, and the circumstances surrounding the adoption of the mark all cast doubt on the Defendant's bona fides. Therefore, the court's refusal to protect the Defendant's use of the trademark "VBM" under the defense of acquiescence is a correct application of the law, preserving the integrity of trademark rights and preventing potential consumer confusion.

Case Law Discussed:

Date of Judgement:25/09/2023

Case No. CS Comm 820 of 2022

Neutral Citation No: 2023:DHC:7014

Name of Hon'ble Court: Delhi High Court

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

Case Title:VBM Medizintechnik GMBH Vs Geetan Luthra

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

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