Freebit As Vs Exotic Mile Private Limited

Suppression of Fact and Its Ramifications in a Patent Infringement Suit

A patent, being a monopoly right granted by the state, is anchored on the principle that the patentee provides a full and truthful disclosure of the invention in return for exclusive rights. In the backdrop of this framework, the suppression of material facts, especially concerning the status of patent applications filed in foreign jurisdictions, emerges as a pivotal issue warranting rigorous scrutiny.

Relevance of Foreign Patent Application Status:

The status of patent applications in foreign jurisdictions is not merely an administrative detail but can be a decisive factor in assessing the validity and enforceability of a patent. The patent regime across countries operates independently, but the principles of comity and international treaties necessitate that courts consider the status of foreign patents, especially when the same invention is the subject of litigation. A patent application's status, whether it is granted, pending, refused, abandoned, or revoked in a foreign jurisdiction, can influence a court's decision on infringement and validity in the domestic context.

Misrepresenting or suppressing facts about the status of foreign patent applications can distort the judicial evaluation, leading to potential miscarriages of justice. This is particularly true when parties seek injunctive reliefs based on incomplete or misleading information, undermining the integrity of the patent system.

Delhi High Court's Observations and Precedents:

The Hon'ble High Court of Delhi's meticulous examination of the plaintiff's allegations in the case at hand underscores the judiciary's commitment to upholding the sanctity of patent rights. The court's observations in paragraph 19 of the plaint elucidate the criticality of full and accurate disclosure. By juxtaposing the status of the suit patent with the foreign counterparts, the court discerned discrepancies that impinged upon the plaintiff's credibility.

The court's reliance on precedents like Aura Synergy India Ltd Vs New Age False Ceiling Co Pvt Ltd [2016:DHC:1109] further approved by DB in [[2016:DHC:7530-DB] signifies a consistent judicial stance on the implications of suppression and misrepresentation in intellectual property disputes. The decisions affirm that any concealment or distortion of material facts can vitiate the plaintiff's claim, particularly when seeking injunctive reliefs.

Implications for the Instant Case:

The Hon'ble Court's decision to decline the interim injunction in the present case is emblematic of its adherence to jurisprudential principles that prioritize transparency, honesty, and fairness. The non-disclosure or misrepresentation concerning the revocation or invalidation of corresponding patents is not merely a procedural lapse but strikes at the core of patent validity.

Moreover, the court's reference to judgments that cast aspersions on the suit patent's validity underscores the multifaceted challenges confronting the plaintiff. In such a milieu, granting an interim injunction would not only prejudice the defendant's rights but also undermine the patent system's credibility.

The concluding Note:

Suppression or misrepresentation of material facts, especially concerning foreign patent applications, can have profound ramifications on the outcome of infringement suits. As custodians of justice, courts must adopt a holistic approach, ensuring that patent litigations are adjudicated upon principles of equity, transparency, and legal integrity.

The Case Law Discussed:

Case Title: Freebit As Vs Exotic Mile Private Limited

Date of Judgement/Order:14.12.2023

Case No. CS Comm 884 of 2023

Neutral Citation: 2023:DHC:9219

Name of Hon'ble Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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,

Ph No: 9990389539

Bikramjeet Singh Bhullar Vs Yash Raj Films Private Ltd.

There can not be Copyright Infringement if similar theme presented differently

Introduction:

The crux of the legal dispute revolves around the alleged infringement of the Plaintiff's copyrighted script titled ‘Kabu na chhadein Khet’ by the Defendant's movie, 'Shamshera'. The central issue is whether the latter amounts to a substantial reproduction of the former, thereby violating the Plaintiff's copyright.

Legal Principles Established:

The Hon'ble High Court of Delhi, in its evaluation, leaned on established legal principles laid down by the Supreme Court of India. The Supreme Court's stance underscores that mere ideas, principles, themes, or historical/legendary facts, being part of the public domain, cannot be monopolized by any individual for copyright protection.

The Court has recognized the inherent right of any creator to choose an idea and present it uniquely, ensuring that similarities arising from a common theme do not necessarily denote infringement.

The Supreme Court's test for copyright infringement emphasizes the perception of the audience. Specifically, if a viewer, reader, or spectator concludes that one work is a mere replica of another upon analyzing both, it suggests a violation. The critical question is whether the subsequent work imitates the original to such an extent that the essence or core of the original is palpably evident.

Application to the Present Case:

Upon contrasting the Plaintiff's script, ‘Kabu na chhadein Khet’, with the Defendant's movie, 'Shamshera', the Delhi High Court observed discernible differences that overshadowed the purported similarities. The court highlighted that while there might be overlapping themes or elements, these resemblances were not sufficiently pronounced to hint at copyright infringement.

The essence of the court's decision rested on the concept of 'substantial copying.' To establish copyright infringement, the Plaintiff must demonstrate that the heart or crux of their work has been replicated in the defendant's creation. In the present scenario, despite a meticulous comparison, the court did not discern a clear and prima facie case indicating that the Defendants had emulated the essential elements of the Plaintiff's script.

The Concluding Note:

In essence, while the realm of copyright law seeks to protect creators from unjust appropriation of their original works, it also recognizes the inherent freedom of creators to explore common themes and ideas uniquely.

In the matter of 'Kabu na chhadein Khet' vs. 'Shamshera', the court, drawing from established legal precedents, concluded that the alleged similarities did not equate to substantial copying. Consequently, the interim injunction sought by the Plaintiff was declined.

The Case Law Discussed:

Case Title: Bikramjeet Singh Bhullar Vs Yash Raj Films Private Ltd.
Date of Judgement/Order:20.12.2023
Case No. CS Comm 878 of 2023
Neutral Citation: 2023:DHC:9198
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: Jyoti Singh, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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,
Ph No: 9990389539

Khadi and Village Industries Vs Girdhar Industries

Introduction:

The case at hand revolves around a contentious trademark dispute concerning the mark "KHADI." While the plaintiff's trademark pertains to the implementation of programs for the development of Khadi and related industries, the defendant has utilized variations of the mark for products like soaps and detergents. This article delves deep into the legal intricacies of establishing goodwill in the context of passing off actions, drawing insights from the court's observations and the broader legal framework.

Legal Background:

The concept of passing off is rooted in the protection of intellectual property rights and consumer interests. It prevents one party from misrepresenting its goods or services as those of another, thereby causing confusion among consumers and potentially harming the goodwill and reputation of the latter.

To succeed in a passing off action, the plaintiff typically needs to establish three key elements:

1.Goodwill and Reputation: The plaintiff must demonstrate that they have built a substantial reputation or goodwill in the market concerning the asserted mark or trade name.

2.Misrepresentation: The plaintiff must show that the defendant has made a misrepresentation leading or likely to lead the public to believe that the goods or services offered by them are those of the plaintiff.

3.Damage:The plaintiff must prove that they have suffered or are likely to suffer damage due to the defendant's actions.

Analysis of the Court's Observations:

In the present case, the court's evaluation primarily centered on the establishment of goodwill and reputation by the plaintiff. The court meticulously examined whether the plaintiff had prima facie evidence to substantiate the claim of having acquired goodwill or reputation for the mark "KHADI," particularly concerning soaps, before the defendant's adoption of the mark.

Lack of Prima Facie Evidence:

The court's observation underscores a fundamental principle in passing off actions: the importance of establishing prior goodwill and reputation. In the absence of such evidence, the plaintiff's claim becomes untenable.

The court noted that there was no evidence to suggest that the plaintiff had acquired goodwill or reputation in the mark "KHADI" for soaps before 2001, the year the defendant began using the mark "GIRDHAR KHADI." Furthermore, even by 2005, when the defendant's mark was registered in the plaintiff's favor, the plaintiff failed to demonstrate prior goodwill or reputation for soaps.

Implications:

The court's decision highlights the stringent evidentiary requirements in passing off actions, especially concerning the establishment of goodwill and reputation. Mere registration of a trademark does not automatically confer the right to claim passing off against similar or related marks.

For plaintiffs, especially in cases involving established marks, it becomes imperative to maintain meticulous records demonstrating the acquisition and sustenance of goodwill and reputation over time, especially concerning specific goods or services.

The Concluding Note:

From a broader legal standpoint, this case serves as a reminder for businesses and trademark holders to proactively protect their intellectual property rights, not just through registration but also by building and preserving goodwill and reputation in the marketplace.

In conclusion, while the plaintiff's endeavors to protect the mark "KHADI" are commendable, the court's decision underscores the criticality of robust evidence, particularly concerning goodwill and reputation, in establishing a successful passing off action.

Case Title: Khadi and Village Industries Vs Girdhar Industries

Date of Judgement/Order:28.12.2023

Case No. CS Comm 878 of 2023

Neutral Citation: 2023:DHC:9435

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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,

Ph No: 9990389539

Van Tiboli Vs K Srinivas Rao

Defense on the Basis of Erroneously Granted Trademark Registration

Introduction:

The case concerning the trademarks 'GK hair' of the Plaintiff and 'GK wellness' of the Defendants delves into the intricacies of trademark registration and its implications on legal defenses.

Background:

The Plaintiff had been utilizing the trademark 'GK hair' since 2010 concerning hair care products and had obtained rightful registration for the same. Contrarily, the Defendant secured a trademark registration for 'GK wellness' in 2021. The contention arose from the Plaintiff's assertion that the Defendant's trademark registration was erroneously granted, sidestepping the established procedure of trademark registration.

The Doctrine of Prima Facie Invalidity:

The cornerstone of the dispute lies in the principle that no legal right can emanate from an illegal act. The Hon'ble High Court of Delhi's pronouncement emphasizes this doctrine. When a trademark registration is obtained in contravention of the statutory scheme, such a registration is deemed invalid from its inception, known as 'prima facie invalid ab initio'.

The term 'ab initio' signifies that the act or decision was flawed right from the beginning. In this context, the grant of trademark registration to the Defendant was flawed due to the failure to consider the timely opposition raised by the Plaintiff. Consequently, any rights purportedly derived from such an erroneously granted registration stand on shaky legal ground.

Implications for the Defendant:

The ramifications of holding a trademark that is prima facie invalid:

One of the primary benefits of trademark registration is the exclusive right to use the mark concerning the goods or services it represents. However, an erroneously granted registration deprives the registrant of this exclusive right.

The Concluding Note:

The defense predicated on an erroneously granted trademark registration, as illustrated by the case between the Plaintiff's 'GK hair' and the Defendant's 'GK wellness', is untenable in the eyes of the law.

The doctrine of prima facie invalidity reinforces the sanctity of the statutory scheme governing trademark registration, ensuring that rights emanate from legitimate and procedurally sound actions.

Consequently, a registrant cannot shield themselves from legal repercussions or claim exclusive rights based on a registration obtained through circumvention of established procedures.

Case Title: Van Tiboli Vs K Srinivas Rao

Date of Judgement/Order:26.12.2023

Case No. CS Comm 339 of 2023

Neutral Citation: 2023:DHC:9407

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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,

Ph No: 9990389539

Archian Foods Private Limited Vs Anchal Trading Company

Trademark Injunction in Relation to Eateries

Introduction:

The realm of intellectual property rights, particularly trademark law, is a crucial mechanism to protect businesses from unfair competition and safeguard consumers from confusion. The case concerning the trademark 'LAHORI ZEERA' offers a compelling study into the intricacies of trademark protection in the context of eateries industry.

Background of the Case:

The Plaintiff asserted rights over the trademark 'LAHORI ZEERA', having employed it since 2013 for a range of traditional Indian non-alcoholic beverages. The Plaintiff's rights extended beyond mere trademark registration, encompassing device registrations, copyright ownership, and design registrations for the distinctive bottle in which its products were marketed.

Contrastingly, the Defendant's usage of 'PNS LAHORI ZEERA' for identical products presented a clear instance of potential trademark infringement, compelling the Plaintiff to seek judicial intervention.

Judicial Analysis:

The Hon'ble High Court of Delhi's decision draws inspiration from pertinent case law, notably the landmark ruling in *Dominos Ip Holder LLC & Anr. vs Ms Dominick Pizza & Anr. (2023/DHC/7126)*. The court in the Dominos case underscored the criticality of preventing imitative attempts in sectors like eateries, where consumable items are at the forefront of business operations.

Drawing parallels, the Court in the LAHORI ZEERA case recognized the inherent risks associated with allowing similar trademarks in the eatories sector. The potential for consumer confusion, misattribution of quality, and dilution of the Plaintiff's established goodwill formed the crux of the Court's reasoning.

Legal Principles Invoked:

1. Likelihood of Confusion: One of the foundational tenets of trademark law is to prevent consumer confusion. The Court likely found that the similarity between 'LAHORI ZEERA' and 'PNS LAHORI ZEERA' was sufficient to confuse consumers, thereby infringing upon the Plaintiff's rights.

2. Dilution of Goodwill: Trademarks, especially those with a longstanding presence in the market, accrue significant goodwill. Any attempt to imitate such trademarks can dilute this goodwill, impacting the original trademark holder's market standing.

3.Protection of Distinctiveness: The distinctiveness of a trademark lies at the heart of its legal protection. The Court's decision underscores the importance of safeguarding this distinctiveness, especially in sectors like eateries, where branding plays a pivotal role.

Implications and Conclusion:

The Delhi High Court's injunction against the use of 'PNS LAHORI ZEERA' serves as a robust precedent in the domain of trademark law, particularly concerning the hospitality industry. By prioritizing consumer protection, preventing dilution of goodwill, and upholding the distinctiveness of trademarks, the Court reaffirms the judiciary's commitment to fostering fair competition.

Furthermore, this case underscores the need for businesses, especially in the hospitality sector, to exercise due diligence when adopting trademarks. A comprehensive trademark search, legal consultation, and adherence to established legal principles can preempt costly litigations and reputational damages.

The Concluding Note:

In sum, the LAHORI ZEERA case elucidates the delicate balance between fostering innovation and ensuring market integrity. As businesses navigate the intricate maze of intellectual property rights, judicial precedents like this serve as guiding beacons, illuminating the path towards equitable and just outcomes.

Case Title: Archian Foods Private Limited Vs Anchal Trading Company

Date of Judgement/Order:12.12.2023

Case No. CS Comm 878 of 2023

Neutral Citation: N.A.

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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,

Ph No: 9990389539

Inventprise, Inc Vs The Controller Of Patents

Interpretation and Implications of the Biological Diversity Act in Patent Applications

Introduction:

The interplay between intellectual property rights and biological resources has long been a subject of contention, especially in jurisdictions where biodiversity is rich and bioprospecting is prevalent. The case at hand presents a nuanced examination of the rights and obligations of parties involved when seeking patent protection over inventions that may, directly or indirectly, relate to biological resources sourced from a particular jurisdiction.

Background:

In this case . the Petitioner filed application for patent protection for its ‘Heat Stable Liquid Rotavirus Vaccine’. The National Biodiversity Authority (NBA) of India asserted that under Section 6 of the Biological Diversity Act, prior permission was mandatory if the invention was based on any research or information derived from a biological resource originating from India.

Relevance of the Biological Diversity Act

The Biological Diversity Act of India, enacted to regulate access to biological resources and associated knowledge, seeks to ensure equitable sharing of benefits arising out of their utilization. Section 6 of the Act mandates that any person seeking intellectual property rights over an invention based on biological resources from India must obtain prior approval from the NBA.

Key Legal Issues:

1. Definition of 'Biological Resource': Central to the dispute is the determination of whether the 'Heat Stable Liquid Rotavirus Vaccine' qualifies as a 'biological resource' under the Act. The Act does not provide an exhaustive definition, making it imperative to interpret the term contextually and purposively.

2. Violation of Section 6: The NBA's contention that the Petitioner violated Section 6 hinges on the interpretation of the Act vis-à-vis the nature of the invention. The Act's intent is clear: to regulate and ensure fair and equitable sharing of benefits arising from the commercial use of biological resources.

3. Benefit Sharing Component: The NBA's decision to approve the application with a higher benefit-sharing component underscores the Act's emphasis on equitable sharing of benefits derived from the commercialization of biological resources. This serves as a deterrent against potential biopiracy and ensures that local communities benefit from the commercial exploitation of their resources and knowledge.

Court's Directive:

The Court's directive to the NBA to determine whether the invention pertains to a biological resource necessitates a comprehensive and reasoned order. The involvement of an Expert Committee, potentially assisted by senior officials from the CGPDTM (Controller General of Patents, Designs and Trade Marks), underscores the complexity and significance of the matter.

Implications and Way Forward:

1. Clarity on Definitions: There is an inherent need for clarity in defining what constitutes a 'biological resource' under the Act to avoid ambiguities and legal disputes in the future.

2. Balancing Interests: While protecting national interests and ensuring equitable benefit-sharing is paramount, it is equally essential to strike a balance that encourages innovation and foreign investment.

3. Collaborative Approach: Encouraging a collaborative approach between the NBA, inventors, and foreign entities can foster transparency, mutual respect, and understanding, thereby mitigating potential disputes and promoting responsible bio prospecting.

The concluding Note:

The case exemplifies the challenges and complexities associated with reconciling intellectual property rights with biodiversity conservation and equitable benefit-sharing. As jurisdictions grapple with similar issues globally, the need for a harmonized approach that respects national sovereignty, promotes innovation, and ensures equitable sharing of benefits remains paramount.

The Case Law Discussed:

Case Title: Inventprise, Inc Vs The Controller Of Patents

Date of Judgement/Order:20.12.2023

Case No. W.P.(C)-IPD 26/2023

Neutral Citation: N.A.

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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,

Ph No: 9990389539