Emerald Enterprises Vs Emerald Valves Private Limited

Ex Parte Injunctions in Passing Off Cases:

Introduction:

In a recent legal development, the Hon'ble High Court of Delhi addressed the pivotal question of granting an ex parte injunction in an action for passing off, specifically focusing on the common law rights associated with the trademark EMERALD. The case involved both the Plaintiff and the Defendant being registered proprietors of the trademark EMERALD, leading the Hon'ble Single Judge to assess the relief of passing off against the Defendant.

Facts of the Case:

The Plaintiff, a prominent manufacturer of various products, claimed extensive use of the EMERALD trademark since 1990, particularly in the manufacturing of valves, hot water generators, expansion tanks, humidifiers, vacuum degassers, and cooling tower filtration systems. On the other hand, the Defendant, incorporated on June 24, 2022, specialized in manufacturing and selling valves such as butterfly valves, globe valves, and check valves. The Defendant applied for the mark 'EMERALD' on July 7, 2022 as proposed to be used basis, for which with registration was granted.

Legal Analysis:

Despite both parties being registered proprietors of the EMERALD trademark, the Court emphasized the settled legal position that the prior user of the mark is entitled to protection, irrespective of recent registrations held by competitors. The recent registration of the Defendant did not diminish the likelihood of an injunction being granted. The Hon'ble Single Judge established a prima facie case in favor of the Plaintiff based on the following grounds:

i. Identity of Trademark and Trade Name:

The Court noted that the impugned trademark and trade name of the Defendant were identical to those of the Plaintiff.

ii.Identity of Goods and Customers:

The goods offered by both parties were identical, and the customer class served was the same.

iii.Long Prior Use:

The Plaintiff's extensive prior use of the EMERALD mark for valves, dating back to 1990, weighed significantly in their favor.

iv.Arbitrary Nature of the Mark:

The Court highlighted that the EMERALD mark was entirely arbitrary, and the Defendant's recent adoption was not bona fide.

Precedent from Supreme Court:

The decision drew upon the dictum laid down by the Hon'ble Supreme Court of India in Laxmikant V. Patel v. Chetanbhai Shah (MANU/SC/0763/2001). The Supreme Court emphasized that in cases where passing off is established, an immediate ex-parte injunction should be granted. Additionally, the Supreme Court recommended the appointment of Local Commissioners to ensure that infringing products are not permitted to be sold.

The Concluding Note:

This decision by the Hon'ble High Court of Delhi sets a noteworthy precedent, affirming that even in passing off actions, the Court should grant an ex parte injunction when a prima facie case exists in favor of the Plaintiff. This underscores the importance of protecting the rights of the prior user and ensuring that potential action of passing off action is promptly addressed, aligning with the principles laid down by the Supreme Court.

The Case Law Discussed:

Date of Judgement/Order:21/11/2023

Case No. CS(COMM)817/2023

Neutral Citation No:NA

Name of Hon'ble Court: Delhi High Court

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

Case Title: Emerald Enterprises Vs Emerald Valves 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.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Scrum Alliance Inc Vs Mr. Prem Kumar and Ors

Significance of Registered Certification Trademarks

Introduction:

Certification trademarks (CTMs) hold a special place in intellectual property law as they signify that the goods or services meet specific standards set by the certifying authority. This article analyzes a legal case involving a prominent Scrum certification organization ("the Plaintiff") and a defendant accused of infringing on the Plaintiff's registered certification trademark.

Background:

The Plaintiff claimed to be the leading Scrum certification organization, having certified a significant number of practitioners globally, with a substantial presence in India. The core of the dispute revolved around the Plaintiff's registered certification trademark, which included the CSM (Certified ScrumMaster) and CSM Logo in a Sun Motif. The Defendant, while holding a registration for the trademark CSM since 2012, had not obtained certification status for the mark.

Legal Framework:

The case hinged on Section 75 of the law, which defines infringement of CTMs. According to this section, infringement occurs when an unauthorized party uses an identical or deceptively similar mark in the course of trade, in connection with goods or services covered by the registered CTM. In this context, the court examined whether the Defendant's adoption of the CSM Logo in a Sun Motif constituted an infringement of the Plaintiff's registered certification trademark.

Court's Analysis:

The Hon'ble High Court of Delhi carefully scrutinized the facts of the case and applied the legal provisions governing CTMs. The Plaintiff's claims were based not only on their certification activities but also on the registered certification trademark. "The court observed that the Defendant could not provide a satisfactory explanation for adopting the "sun" motif, leading to the inference that the idea was borrowed from the Plaintiff's registered trademark."

Infringement and Borrowed Sun Motif:

The court's decision to grant an interim injunction pertaining to relief of infringement against the Defendant was grounded in the finding that the Defendant's use of a similar "sun" motif in connection with the CSM Logo amounted to infringement. The absence of a credible explanation from the Defendant strengthened the court's position that the motif had been borrowed from the Plaintiff's registered certification trademark. This highlights the importance of protecting not only the literal elements of a trademark but also its conceptual aspects, such as motifs and designs.

Relief of Passing Off:

While the court granted an interim injunction on the infringement claim, it declined to provide relief on the passing off aspect. This decision underscores the court's specific focus on the registered certification trademark and its role in preventing unauthorized use by adopting a similar or identical mark.

The Concluding Note:

"The case underscores the significance attached to registered certification trademarks in protecting the rights of certifying organizations." The court's analysis of infringement, coupled with the consideration of borrowed motifs, sets a precedent for upholding the distinctiveness and integrity of certification trademarks.

The Case Law Discussed:

Date of Judgement/Order:21/11/2023

Case No. CS Comm 700 of 2021

Neutral Citation No: 2023:DHC:8346

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge C Harishankar, HJ

Case Title: Scrum Alliance Inc Vs Mr. Prem Kumar and Ors

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Bennett, Coleman and Company Vs E Entertainment Television LLC

Additional Documents and Conflict between IPD Rules 2022 and Commercial Court Act 2015

Abstract:

This legal article delves into the recent decision by the Hon'ble High Court of Delhi regarding the taking on record the additional documents in trademark cancellation petitions before the Commercial Court sitting in IP Division. The conflict arises between the provisions of the Commercial Court Act 2015 and the IPD Rules 2022, as the court determines the entitlement to file additional documents in such cases.

Introduction:

The focal point of the dispute revolves around the invocation of Order XI Rule 1(10)2 of the CPC by the Registered Proprietor in a trademark cancellation petition. The petitioner contests this move, asserting that the application is improperly framed under Section 57 of the Trade Marks Act and should adhere to Rule 7 of the IPD Rules 2022.

The Petitioner's Stand:

The petitioner's resistance is multi-faceted. Firstly, they argue that Rule 7(ii) mandates the filing of all documents with pleadings, which was asking to Rule 2(i)4 in Chapter VII of the Delhi High Court (Original Side) Rules, 2018. Secondly, they assert the absence of a provision in IPD Rules akin to Order XI Rule 1(10) of the CPC, which enables the filing of additional documents post-Written Statement. Thirdly, they contend that Rule 7(xiii) of the IPD Rules does not permit the incorporation of provisions from the CPC or the Commercial Courts Act that are inconsistent with the IPD Rules.

The High Court's Rationale:

The Hon'ble High Court, in rejecting the petitioner's arguments, relies on the pivotal Rule 7(xiii) of the IPD Rules. The court emphasizes that this rule explicitly extends the applicability of the Commercial Courts Act, 2015, to original petitions, including rectification petitions under Section 57 of the Trade Marks Act. Consequently, the court asserts that allowing additional documents aligns seamlessly with the IPD Rules, and such inclusion does not contradict any provisions therein.

Analysis and Implications:

This decision underscores the dynamic interplay between procedural rules and legislative enactments. The court's reliance on Rule 7(xiii) to bridge the gap between the IPD Rules and the Commercial Courts Act sets a precedent for harmonizing procedural frameworks in complex legal scenarios. 

The Concluding Note:

In resolving the conflict between the IPD Rules 2022 and the Commercial Court Act 2015, the Hon'ble High Court of Delhi provides clarity on the admissibility of additional documents in trademark cancellation petitions. 

The Case Law Discussed:

Date of Judgement/Order:16/11/2023

Case No. C.O. (COMM.IPD-TM) 86/2022

Neutral Citation No: 2023:DHC:8274

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge C Harishankar, HJ

Case Title: Bennett, Coleman and Company Vs E Entertainment Television LLC

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Dr Reddys Laboratories Vs Smart Laboratories Pvt Ltd

Initial Interest Confusion in Pharmaceutical Trademarks

Introduction:

The Hon'ble High Court of Delhi recently addressed the nuanced concept of initial interest confusion in a trademark dispute involving medicinal products. The case involved the Plaintiff, the registered proprietor of the trademark AZIWOK since 1994, and the Defendant, who sought registration for the trademark AZIWAKE in 2022 as proposed to be used basis.

Phonetic Similarity and Defendant's Argument:

The Defendant contended that their mark AZIWAKE was distinct from the Plaintiff's AZIWOK. However, the court dismissed this argument, emphasizing the phonetic similarity between the two marks.

Prescription by Doctors and Consumer Confusion:

A crucial aspect of the case was the contention that since the products were sold under a doctor's prescription, confusion was unlikely. The court, however, reasoned that doctors might not be aware of the subtle distinctions between AZIWOK and AZIWAKE, especially when both are associated with azithromycin. The potential for confusion was deemed to exist not only at the doctor's level but also during the dispensing and purchasing stages.

Application of Initial Interest Confusion Test:

The Delhi High Court applied the test of initial interest confusion, focusing on the moment when a consumer first encounters the defendant's mark. The court highlighted that if, at this stage, the consumer is likely to wonder whether the mark is the same as the one previously seen or associated with the plaintiff's mark, the likelihood of confusion exists under Section 29(2)(b).

Impression at the Initial Interest Stage:

The court emphasized that the impression formed in the consumer's psyche during the initial encounter is crucial. Even if further information might dispel confusion, the initial doubt is sufficient for establishing infringement. The consumer, upon encountering both AZIWOK and AZIWAKE, was deemed likely to experience wonderment or confusion, leading to a finding of "likelihood of confusion" under the relevant legal provision.

The Concluding Note:

In granting an interim injunction against the Defendant, the Delhi High Court demonstrated a strict application of the initial interest confusion test. The decision underscores the significance of the consumer's initial impression, emphasizing that any doubt or confusion at this stage is legally relevant. 

The Case Law Discussed:

Date of Judgement/Order:16/11/2023

Case No. CS(COMM) 744/2023

Neutral Citation No: 2023:DHC:8214

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge C Harishankar, HJ

Case Title: Dr Reddys Laboratories  Vs  Smart Laboratories 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.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

ITC Ltd. Vs Britania Industries Ltd-DB

The Crucial Role of Trade Dress in Trademark Disputes:

Introduction:

The recent legal precedent concerning the dispute over the trade dress of "Good Day Butter Cookies" and "Sunfeast" underscores the significance of trade dress in trademark litigation. This case serves as a stark reminder that, even when brand names and trademarks appear dissimilar, the overall trade dress can be a decisive factor in determining the likelihood of confusion and infringement. This article provides a detailed analysis of the legal implications of the decision, emphasizing the importance of prior use and the judiciary's commitment to upholding the rights of businesses in the competitive marketplace.

Background:

The recent legal case in question revolves around the issue of trade dress in the context of trademark violation. The Plaintiff, claiming prior use of the trade dress associated with "Good Day Butter Cookies," since 1997 filed a suit against the Defendant, alleging that their product, marketed under the trademark "Sunfeast," employed a strikingly similar trade dress since 2020. The crux of the matter lies in the meticulous design and combination of elements on the packaging, creating a deceptive similarity between the two products.

Interim Injunction and Challenge:

The Hon'ble Single Judge, after due consideration, granted an interim injunction in favor of the Plaintiff, restraining the Defendant from using the allegedly violating trade dress. The Defendant, dissatisfied with this decision, appealed the injunction before the Hon'ble Division Bench.

Concurring Findings of the Division Bench:

The Hon'ble Division Bench, upon careful scrutiny, concurred with the Single Judge's findings. Despite apparent differences in brand name, trademark, and the visual elements of the biscuit, the Bench noted a meticulous design on the part of the Defendant. This design, when combined in the wrapper, resulted in a striking similarity to the Plaintiff's trade dress. The Bench acknowledged the Plaintiff's prior use of the color scheme, getup, and combination of biscuit and butter imagery, further strengthening the case for trade dress infringement.

Trade Dress as a Decisive Factor:

Traditionally, trademark disputes have often focused on the similarities or differences in brand names and logos. However, this case highlights a paradigm shift in the legal landscape, signaling that the overall trade dress of a product can be a decisive factor in determining infringement. The court's recognition of the meticulous design and combination of elements in the Defendant's product, despite differences in individual components, emphasizes the holistic approach taken by the judiciary in assessing the potential for consumer confusion.

Deceptive Similarity and Market Confusion:

The Division Bench, crucially, emphasized that a casual glance at the products revealed a high degree of similarity. The Bench expressed concerns about potential confusion in the market, particularly given the nature of the product—cookies. In a retail environment where products are often displayed on shelves in close proximity, the ordinary consumer could be easily deceived. The Bench concluded that the Defendant's product was deceptively similar to that of the Plaintiff, leading to a likelihood of confusion among consumers.

Prior Use and Logical Attribution:

The Division Bench unequivocally stated that the Plaintiff, being the prior user of the trade dress, had a legitimate claim to protection. Moreover, the Bench attributed the alleged similarity not to mere coincidence but to a logical act of copying and dishonest adoption on the part of the Defendant. This attribution played a pivotal role in dismissing the appeal, reinforcing the principle that a defendant cannot evade an injunction merely by asserting differences in trademarks when the trade dress is found to be substantially similar.

The Concluding Note:

The recent legal precedent in the "Good Day Butter Cookies" and "Sunfeast" case marks a significant development in trademark law, highlighting the growing importance of trade dress . The decision highlights that even when brand names and trademarks appear dissimilar, the overall trade dress can be a decisive factor. In cases where prior use is established, and a likelihood of confusion exists, courts are likely to grant injunctions to prevent the deceptive similarity of products in the market.

The Case Law Discussed:

Date of Judgement/Order:08/11/2023

Case No. O.S.A.(CAD).Nos.134 to 138 of 2023

Neutral Citation No: N.A.

Name of Hon'ble Court: Madras High Court

Name of Hon'ble Judge: Sanjay V.Gangapurwala and B.Bharatha Chakravarthy, HJ

Case Title: ITC Ltd. Vs Britania Industries Ltd-DB

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

L. Prakasam Reddy Vs Paras Medical Publishers

Interplay of Prima Facie Case and Irreparable Loss in Interim Injunctions

Abstract:

This legal article delves into the intricate dynamics surrounding the significance of irreparable loss and damages at the interim injunction stage, drawing insights from a recent case before the Hon'ble High Court of Telangana. 

The case involves a dispute over copyright infringement, where the plaintiff, despite successfully establishing a prima facie case, stumbled in demonstrating irreparable loss. 

The subsequent decision by the High Court of Delhi to set aside the interim injunction order adds a layer of complexity to the discourse on the delicate balance between intellectual property protection and the necessity of irreparable harm for injunctive relief.

Introduction:

The granting of interim injunctions occupies a crucial space in legal proceedings, particularly in cases involving intellectual property rights. A nuanced interplay exists between establishing a prima facie case and demonstrating irreparable loss and damages, as exemplified by the case before the Hon'ble High Court of Telangana.

The Prima Facie Case:

The plaintiff's success in presenting a prima facie case hinged on the production of a deed of assignment, effectively showcasing the transfer of copyright in the disputed textbook from the appellants to the plaintiff. The trial court, recognizing the strength of this evidence, allowed the application for a temporary injunction, restraining the defendants from further printing, publishing, or distributing the copyrighted material.

The Quandary of Quantified Damages:

A pivotal moment arose when the plaintiff quantified the damages and loss at an ascertainable amount of Rupees one Crore. This self-assessment by the plaintiff raised a critical question regarding the existence of irreparable loss and injury. The court was now faced with a situation where the financial impact seemed quantifiable, potentially leading to a reevaluation of the necessity for injunctive relief.

The High Court's Decision:

In response to the plaintiff's own estimation of damages, the High Court of Delhi intervened by setting aside the interim injunction order. The court's rationale rested on the principle that, despite the establishment of a prima facie case, the plaintiff failed to fulfill the essential requirement of demonstrating irreparable injury. The court's decision reflects a cautious approach, underscoring that a mere prima facie case, no matter how robust, does not automatically warrant interim injunction if irreparable harm is not convincingly established.

The Concluding Note:

The case analysis highlights the intricate dance between establishing a prima facie case and demonstrating irreparable loss in the context of interim injunctions. It serves as a reminder that, even with a strong initial showing, the necessity of irreparable harm remains a pivotal factor in judicial considerations. This delicate equilibrium ensures that injunctive relief is reserved for situations where the potential harm transcends mere quantifiable damages, contributing to a judicious and balanced legal framework.

The Case Law Discussed:

Date of Judgement/Order:09/11/2023

Case No. Civil Misc Appeal No: 318 of 2023

Neutral Citation No: N.A. 

Name of Hon'ble Court: Telangana High Court

Name of Hon'ble Judge: ALOK ARADHE N.V.SHRAVAN KUMAR , HJ

Case Title: L. Prakasam Reddy Vs Paras Medical Publishers

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Globela Pharma Private Limited Vs Jigar Thakar

The Dynamics of Trademark User Amendment

Introduction:

The legal landscape surrounding trademark disputes often hinges on meticulous pleadings and the clarity of assertions made by parties involved. A recent case before the Hon'ble High Court of Gujarat has brought to light the intricate question of whether a party is entitled to modify the claimed trademark user through an amendment.

Background:

The Plaintiff in this case contended the use of the trademark "GLOBELA" since 2006 and asserted prior usage rights. The Defendant, without specific denial, also asserted the use of its trademark from the same year. However, a pivotal development occurred when the Defendant sought to amend its claimed user from 2006 to 2005 via a written statement.

Trial Court's Decision:

The Trial Court, in its order, allowed the Defendant's application for amendment, justifying it by stating that the amendment merely sought to specify the exact date of user. According to the Trial Court, this adjustment did not alter the substantive nature of the case.

High Court's Intervention:

Challenging the Trial Court's decision, the case was brought before the Hon'ble High Court of Gujarat. The High Court, in its wisdom, set aside the Trial Court's order, citing critical reasons for doing so.

High Court's Reasoning:

The High Court's foremost observation was rooted in the consistency of the Plaintiff's claim of using the trademark since 2006. The Defendant's initial response had aligned with this timeline. However, the sought amendment introduced a fundamental shift, alleging the user since 2005. The High Court deemed this as tantamount to presenting an entirely new case.

Significance of the Amendment:

Crucially, the High Court emphasized that the amendment wasn't a mere clarification or specification of details; rather, it sought to predate the Defendant's claimed user. This temporal adjustment, according to the High Court, altered the substance of the Defendant's case significantly.

Broader Context:

The High Court's decision was also influenced by the broader context of the dispute. The Court considered the Plaintiff's assertion that the Defendant had been in their employment, mirroring the Plaintiff's narrative. The proposed amendment, viewed in this context, was seen as a not just a change in stance but the introduction of a new case that went beyond the scope of a permissible amendment.

The Concluding Note:

This case underscores the nuanced nature of amendments in trademark disputes. While amendments are generally permitted to refine details, introducing a substantially different case, especially in light of the overall context, may face judicial scrutiny. The decision by the Hon'ble High Court of Gujarat serves as a noteworthy precedent, emphasizing the importance of consistency and the potential consequences of amendments that alter the core fabric of a party's case.

The Case Law Discussed:

Date of Judgement/Order:09/11/2023

Case No. R/SPECIAL CIVIL APPLICATION NO. 6595 of 2023

Neutral Citation No: N A 

Name of Hon'ble Court: Gujarat High Court

Name of Hon'ble Judge: N.V.Anjaria and.Nisha M Thokore , HJ

Case Title: Globela Pharma Private Limited Vs Jigar Thakar

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Mahle Gmbh Vs Parag Kirnkumar Tatariya

Non-Use and Rectification of Registered Trademark: 

Introduction:

This article delves into a recent legal case involving the cancellation of the registration of the trademark "MAHLE" under Registration No. 2897507 in Class-04, focusing on the grounds of non-use by the registered proprietor, the Respondent.

Background:

The Petitioner, claiming usage of the trademark "MAHLE" since 1938 abroad and having obtained trademark registration in Class 07 in India since 1961, filed a petition seeking cancellation of the Respondent's registration in Class-04. The Respondent had filed the trademark application on 01.02.2015, leading to the legal challenge.

Allegations of Non-Use:

The crux of the Petitioner's argument rested on the assertion that, despite obtaining registration for the mark, the Respondent was not actively using it. The Petitioner's inquiries purportedly revealed the non-use of the trademark by the Respondent.

Legal Proceedings:

The court, upon evaluating the case, observed that the Respondent became a registered proprietor of the trademark "MAHLE" on 20.8.2016. However, critical to the decision was the finding that the Respondent did not use the trademark between 2016 and 2021, a period of five years.

Analysis of Section 47(1)(b) of the Act:

The court's decision to order cancellation was grounded in Section 47(1)(b) of the Trademarks Act. This provision stipulates that a registered trademark may be taken off the register if it has not been used for a continuous period of five years. In this case, the court found that the Respondent's non-use of the mark during the specified period rendered it liable for cancellation.

The Concluding Note:

This case underscores the importance of actively using a registered trademark to maintain its validity. The court's decision to cancel the registration of "MAHLE" emphasizes the statutory requirement of continuous use within the prescribed timeframe. Trademark holders are thus reminded of the need to engage in genuine commercial use to safeguard their registered rights and prevent challenges based on non-use.

The Case Law Discussed:

Date of Judgement/Order:09/11/2023

Case No. R/SPECIAL CIVIL APPLICATION NO. 11855 of 2021

Neutral Citation No: N A 

Name of Hon'ble Court: Gujarat High Court

Name of Hon'ble Judge: Vaibhavi D Nanavati, HJ

Case Title: Mahle Gmbh Vs Parag Kirnkumar Tatariya

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

The Chocolate Spoon Company Pvt.Ltd Vs Oceanleaf Hospitality

Jurisdictional Challenges with Respect to Leave under Clause XII of Letters Patent

Introduction:

The intricacies of jurisdiction often come to the forefront in legal battles, and a recent case before the Hon'ble High Court of Mumbai has brought the interplay between jurisdiction, leave under Clause XII of the Letters Patent, and the prevention of multiplicity of litigation into sharp focus. 

The Defendant's challenge to the granted leave, hinging on the absence of services within Mumbai's jurisdiction, sets the stage for a nuanced exploration of legal principles.

Defendant's Challenge and Jurisdictional Landscape:

The crux of the Defendant's challenge lies in the absence of provided services within Mumbai, with exclusive outlets in Noida, Uttar Pradesh, and the assertion that no cause of action transpired within the Mumbai jurisdiction. This prompts a careful examination of the jurisdictional scope outlined under Clause XII of the Letters Patent.

Elucidating Clause XII:

The Hon'ble High Court of Mumbai, in response to the Defendant's challenge, offered a comprehensive elucidation of the jurisdictional scope prescribed by Clause XII of the Letters Patent. Emphasizing the pivotal consideration of preventing multiplicity of litigation, the Court underscored the need for a unified legal forum to address related issues efficiently.

Post-Leave Jurisdictional Challenges:

An intriguing aspect of the Court's response is the clarification that Defendants are not barred from raising jurisdictional issues even after the grant of leave under Clause XIV of the Letters Patent. This underscores the flexible nature of jurisdictional considerations and ensures that parties retain the right to contest jurisdiction at various stages of the legal proceedings.

Discretionary Nature of Leave under Clause XIV:

The Court, in emphasizing the discretionary nature of granting leave under Clause XIV, pointed to its prior affirmation of jurisdiction in the trademark infringement suit. This discretionary power was wielded judiciously, as the Court granted Leave to the Plaintiff under Clause XII of the Letters Patent, thereby preserving all rights and contentions, including the Defendants' jurisdictional concerns.

The Concluding Note:

This case before the Hon'ble High Court of Mumbai offers a compelling study of the interplay between jurisdiction, leave under Clause XII of the Letters Patent, and the prevention of multiplicity of litigation. The Hon'ble High Court's nuanced approach in granting leave seeks to strike a delicate balance between preventing the redundancy of litigation and affording the Defendants a fair opportunity to contest jurisdiction.

The Case Law Discussed:

Date of Judgement/Order:08/11/2023

Case No. LEAVE PETITION (L) NO. 25563 OF 2023 IN COMMERCIAL IPR SUIT (L) NO. 24959 OF 2023

Neutral Citation No: N A 

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: R.I.Chagla, HJ

Case Title: The Chocolate Spoon Company Pvt.Ltd Vs Oceanleaf Hospitality

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Polo Lauren Vs Home Needs

The Significance attached to a Well-Known Trademark

Introduction:

In the recent case before the Hon'ble Division Bench of the High Court of Delhi, the issue at hand was whether a court could decline an injunction to a party, despite its trademark being declared well-known, on the grounds of failure to prove local use and reputation. The case involved a dispute between the Plaintiff, holder of the well-known trademark "POLO," and the Defendant using "POLOLIFETIME."

Background:

The Plaintiff had initially secured an ex-parte injunction on 26.11.2020, which was later vacated on 14.07.2023 by the Trial Court. The basis for the vacation was the Plaintiff's purported failure to demonstrate use and reputation in India. Notably, the Plaintiff's trademark had already been declared a well-known trademark by the High Court of Delhi.

Legal Framework:

The Appellant relied on the earlier judgment of the Single Judge of the Delhi High Court in The Polo/Lauren Company L.P. vs. Rohit S. Bajaj & Ors. In that case, the court had already recognized the trademark "POLO" as a 'well-known' mark under Section 2(1)(zg) of the Trade Marks Act, 1999. The Appellant argued that this acknowledgment settled the issue of cross-border reputation in their favor, making subsequent local use irrelevant.

Analysis:

The critical question before the Division Bench was the weight given to the well-known status of a trademark when considering an injunction. The Appellant contended that once a trademark is declared well-known, the presumption of cross-border reputation arises, rendering subsequent local use immaterial.

Significance of Well-Known Trademarks:

The Division Bench, in staying the operation of the Trial Court's order, indicated its inclination towards the Appellant's argument. The implication is that the declaration of a trademark as well-known carries significant weight. In such cases, the burden on the Plaintiff to prove local use may be relaxed, given that the mark has achieved well-known status.

Presumed Cross-Border Reputation:

The key takeaway from this case is the presumption of cross-border reputation attached to well-known trademarks. The Appellant successfully argued that the mere fact that the sale of merchandise commenced later should be irrelevant in the face of a well-established and well-known mark.

The Concluding Note:

The decision of the Hon'ble Division Bench underscores the significance of a well-known trademark in legal proceedings. While local use are traditionally vital elements in obtaining an injunction, the declaration of a trademark as well-known can alter the dynamics. "This case sets a precedent suggesting that once a mark achieves well-known status, the burden on the Plaintiff to prove subsequent local use may be alleviated, emphasizing the global recognition and reputation inherent in well-known trademarks."

The Case Law Discussed:

Date of Judgement/Order:07/11/2023

Case No. FAO (COMM) 213/2023

Neutral Citation No: N A

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, HJ

Case Title: Polo Lauren Vs Home Needs

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539