Directorate General of Health Services Vs Som Pan Product Pvt.Ltd.

The Interplay of COPTA Act 2003 and Trademarks Act 1999: A Comprehensive Analysis through the Lens of Pan Masala Advertisements

Abstract:

This legal article examines the intricate interplay between the provisions of the Cigarettes and Other Tobacco Products (Prohibition of Advertising and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003 (COPTA Act 2003) and the Trademarks Act, 1999. The focal point of the analysis revolves around two appeals brought before the Hon'ble High Court of Delhi concerning the trademarks DILBAGH PAN MASALA and VIMAL PAN MASALA. The central question addressed is whether the advertisement of pan masala products, bearing these trademarks, falls within the purview of the COPTA Act 2003 and its associated rules.

Introduction:

The COPTA Act 2003 was enacted to regulate the advertising, production, supply, and distribution of tobacco products in order to curb the adverse health effects associated with tobacco consumption. The Trademarks Act, 1999, on the other hand, governs the registration and protection of trademarks in India. The collision between these two legislative frameworks arises in the context of pan masala advertisements, specifically those associated with DILBAGH PAN MASALA and VIMAL PAN MASALA.

Background of the Appeals:

The appellants, in both cases, issued notices to the respondents, contending that the advertisement of DILBAGH PAN MASALA and VIMAL PAN MASALA amounted to surrogate advertising, violating Section 5 of the COPTA Act 2003. In response, the respondents filed suits seeking interim injunctions against the appellants, which were granted by the Ld. ADJ. The appeals before the Hon'ble High Court of Delhi challenged these orders.

Court's Analysis and Findings:

The Hon'ble High Court of Delhi, in its analysis, rejected the appeals, asserting that Section 5(1) of the COPTA Act 2003 only applies to pan masala products containing tobacco as one of their ingredients. The court highlighted that the pan masala in question did not have tobacco as an ingredient, thereby falling outside the ambit of the COPTA Act 2003.

Trademark Classification and Applicability of COTP Rules:

The court also addressed the appellants' plea that Rule 2(a) of the Cigarettes and Other Tobacco Products (Prohibition of Advertisement or Regulation of Trade and Commerce, Production, Supply and Distribution) Rules, 2004 (COTP Rules) applied. This argument was dismissed, emphasizing that the respondents were not engaged in the manufacturing, marketing, or sale of tobacco, gutka, bidi, or zarda in any manner in the country.

Trademark Registration under Multiple Classes:

The court took note of the fact that although the brand names were registered under Class 34 (covering tobacco and tobacco products), they were also registered for various other products under Classes 29, 30, and 31 of the Trademarks Act, 1999. This diversity in trademark registrations further fortified the court's conclusion that the COPTA Act 2003 did not apply to the pan masala in question.

The concluding Note:

This case provides valuable insights into the nuanced interplay between the COPTA Act 2003 and the Trademarks Act 1999, specifically in the context of pan masala advertisements. The court's careful consideration of the ingredients, trademark classifications, and the absence of tobacco-related activities by the respondents sets a precedent for future disputes in this evolving legal landscape.

The Case Law Discussed:

Case Title: Directorate General of Health Services Vs Som Pan Product Pvt.Ltd.

Date of Judgement/Order:24.01.2024

Case No. FAO 84/2022

Neutral Citation: 2024:DHC:509

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Dharmesh Sharma, 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

Dilip Kumar Jain Vs Vikas D. Jain

Comparative Analysis of Composite Trademarks

Introduction:

This article delves into the legal intricacies surrounding the comparison of composite trademarks, focusing on a recent case where the plaintiff, having proprietary rights in the composite trademark MI SUMEET, filed a suit against the defendants for their use of the composite trademark NAKODA SUMEET in the context of mixer, juicer, grinder, and related products. The court's determination of the similarity between the two composite trademarks and the application of the essential features principle are crucial aspects discussed in this analysis.

Background of the Case:

The plaintiff in this case claimed proprietary rights in the composite trademark MI SUMEET, associated with a range of products, including mixer, grinder, juicer, hand blender, electrical accessories, and kitchen home appliances since 1993. The plaintiff had also obtained trademark registrations to bolster their claims. The suit was initiated against the defendants, who were allegedly using the composite trademark NAKODA SUMEET for similar products.

Principle of Comparing Composite Trademarks:

The court, in its findings, emphasized the necessity to consider the essential features of the marks under consideration. The essential features principle is a fundamental aspect of trademark law, requiring a detailed examination of the core elements that define a mark.

Phonetic Similarity:

The court noted that the phonetic similarity between "MI SumEEt" and "NAKODA Summit" was strikingly similar. Phonetic similarity is a critical factor in determining deceptive or misleading similarities between marks. The phonetic structure, which assesses how rival marks sound, played a pivotal role in establishing the overall impact of phonetic use, indicating a high degree of similarity.

Visual and Structural Similarity:

In addition to phonetic analysis, the court considered visual and structural similarities between the two composite trademarks. It was observed that the two marks were not only phonetically similar but also shared visual and structural commonalities. The overall get-up of the two words was deemed so structurally similar that it raised concerns about the likelihood of deception.

Lack of Bona Fide Explanation:

The court highlighted the absence of a bona fide and logical explanation from the defendants for adopting a mark so similar to the plaintiff's. This lack of a reasonable explanation further strengthened the plaintiff's case, contributing to the court's decision in favor of the plaintiff.

The concluding Note:

The comparative analysis of composite trademarks, as demonstrated in the MI SUMEET vs. NAKODA SUMEET case, underscores the importance of considering essential features, particularly phonetic, visual, and structural elements. Courts must weigh these factors comprehensively to ascertain the likelihood of deception or confusion. Additionally, the absence of a bona fide explanation for adopting a similar mark may tip the scales in favor of the party alleging infringement.

The Case Law Discussed:

Case Title: Dilip Kumar Jain Vs Vikas D. Jain

Date of Judgement/Order:18.01.2024

Case No. CS 40 of 2020

Neutral Citation: N.A.

Name of Hon'ble Court: Calcutta High Court

Name of Hon'ble Judge: Krishna Rao, 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

Premier SPG and WVG Mills Pvt. Ltd. Vs Football Association Premier League Ltd.

"Anti-Dissection Rule" and "Dominant or Essential Feature" Principle in Trademark Disputes:

Abstract:

This article delves into a recent trademark dispute between the Appellant/Opponent, utilizing the marks PREMIER APPARELS, PREMIER CLUB, PREMIER GARMENTS, and the Respondent/Applicant, featuring a composite trademark incorporating word BARCLAYS PREMIER LEAGUE a lion device. The case raises questions surrounding the application of the "anti-dissection rule" and the "dominant or essential feature" principle in trademark law, with the Hon'ble High Court of Delhi ultimately rejecting the appeal. This article provides a detailed analysis of the legal arguments, principles applied, and the court's rationale.

Introduction:

The legal landscape of trademark disputes often involves intricate considerations of similarity, deceptive resemblance, and the protection of distinctive elements. The case under discussion centers on the conflicting trademarks of the Appellant/Opponent PREMIER APPARELS, PREMIER CLUB, PREMIER GARMENTS, and Respondent's/Applicant's composite mark featuring word BARCLAYS PREMIER LEAGUE and a lion device.

Background and Claims:

The Appellant/Opponent asserted a history of using the house mark 'PREMIER' and related formative marks since 1991. On the other hand, the Respondent/Applicant claimed to be the organizing body of the 'Barclays Premier League,' with trademark rights dating back to 2006. The rejection of the notice of opposition prompted the Appellant/Opponent to file an appeal, arguing for the similarity of marks.

Legal Framework:

The Hon'ble Single Judge grappled with the application of the "anti-dissection rule" and the "dominant or essential feature" principle, referencing the precedent set by South India Beverages Vs General Mills Marketing (2014 SCC OnLine Del 1953). The court clarified that while South India Beverages does not impose an absolute prohibition on considering constituent elements, it mandates viewing them as a preliminary step towards resolving conflicting composites.

Application of the "Anti-Dissection Rule":

The anti-dissection rule prohibits the separation of individual elements within a composite mark for comparison. The court observed that the elements, such as the lion device and the word 'LEAGUE' in the Respondent's mark, collectively distinguish it from the Appellant's marks. The rule did not preclude consideration of elements but emphasized their combined impact.

"Dominant or Essential Feature" Principle:

The court applied the "dominant or essential feature" principle, focusing on the overall impression created by each mark. It found that the dominant feature in the Respondent's mark was the word 'PREMIER' suffixed by 'LEAGUE,' coupled with the lion device, emphasizing the distinctiveness of their services in football-related industries.

Court's Rationale for Rejection:

The Hon'ble High Court of Delhi, in dismissing the appeal, emphasized the absence of deceptive similarity between the marks. The court highlighted the dissimilarities in font, style, and additional elements like a small flower device in the Appellant's mark. Furthermore, the court interpreted the lion device in the Respondent's mark as indicative of their involvement in football-related services.

The Concluding Note:

This case underscores the importance of a holistic approach in trademark disputes, considering the collective impact of elements within composite marks. The rejection of the appeal rested on a nuanced application of the "anti-dissection rule" and the "dominant or essential feature" principle, emphasizing the distinctive nature of each mark in the context of the relevant industry.

The Case Law Discussed:

Case Title: Premier SPG and WVG Mills Pvt. Ltd. Vs Football Association Premier League Ltd.

Date of Judgement/Order:22.01.2024

Case No. C.A.(COMM.IPD-TM) 15/2023

Neutral Citation: 2024:DHC:427

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, 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

Amir Biri Factory & Ors Vs Mohd. Aslam

Impact of Suppressing Disclaimer Conditions on Trademark Registration

Introduction:

The recent judgment by the Calcutta High Court in the MAZDOOR BIDI case sheds light on the consequences of suppressing a disclaimer condition on a registered trademark. In this case, the plaintiff, who initially secured an ex-parte injunction against the defendant for alleged trademark infringement, faced challenges as the defendant brought forth compelling arguments. This analysis delves into the legal implications and considerations made by the court in vacating the interim injunction.

Suppression of Disclaimer Condition:

The pivotal issue revolved around the plaintiff's alleged suppression of a disclaimer condition related to their registered trademark "MAZDOOR BIDI." The court noted that the plaintiff failed to disclose a crucial fact – the existence of a restriction on the exclusive rights over the descriptive matter appearing on the label. Specifically, the plaintiff was granted the right to sell its product exclusively within the State of West Bengal.

Court's Observations:

The Calcutta High Court, in its observations, highlighted that the plaintiff obtained the injunction order by suppressing material facts. The court emphasized that the disclaimer condition, which limited the plaintiff's exclusive rights, was vital information that should have been disclosed during the legal proceedings. This failure to provide complete and accurate information influenced the court's decision to vacate the interim injunction.

Defendant's Counter Arguments:

The defendant strategically presented three key arguments challenging the plaintiff's case. Firstly, they contended that the plaintiff's activity was limited to West Bengal, while the defendant operated in the states of Uttar Pradesh and Uttarakhand. Secondly, the defendant claimed to be the prior user of the trademark. Lastly, the defendant submitted an affidavit asserting that their products were not sold, directly or indirectly, in the State of West Bengal.

Court's Decision:

The court, after careful consideration of the defendant's arguments, sided with the defendant and vacated the interim injunction by observing that Plaintiff has obtained the ex parte Injunction after suppressing the disclaimer condition on its registered Trademark. The judgment further highlighted the defendant's establishment as the prior user and their documented evidence showing that their products were not being sold in West Bengal. The failure of the plaintiff to provide any evidence to the contrary further weakened their case.

The concluding Note:

This case underscores the importance of transparency in legal proceedings, particularly in matters related to trademark registrations. Suppressing essential information, such as disclaimer conditions, can have severe consequences for the party seeking legal remedies. The MAZDOOR BIDI case serves as a cautionary tale, emphasizing the need for full and accurate disclosure to ensure a fair and just legal process in trademark disputes.

The Case Law Discussed:

Case Title: Amir Biri Factory & Ors Vs Mohd. Aslam

Date of Judgement/Order:16.01.2024

Case No. CS No 211 of 2012

Neutral Citation: NA

Name of Hon'ble Court: Calcutta High Court

Name of Hon'ble Judge: Krishna Rao, 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

The Bombay Metal Works Vs R S Industries

Repeated violation of Intellectual Property Rights

Introduction:

The present legal discourse delves into a contentious lawsuit initiated by the plaintiff against the defendant, centered on allegations of persistent trade dress violation related to bicycle parts. The crux of the plaintiff's argument revolves around the purported replication of their trade dress by the defendant, backed by a history of litigation between the parties. This article seeks to analyze the legal nuances of the case, with a focus on the defendant's alleged persistent violations despite previous legal interventions.

Background:

The plaintiff contends that the defendant's actions amount to an violation of their trade dress, pointing to a protracted history of legal battles between the parties. A pivotal reference is made to CS No.127/2002, renumbered as CS(OS) 1256/2007, where the court issued a detailed order on 12th February, 2002, restraining the defendant from copying the plaintiff's trade dress for the same product.

The culmination of this suit resulted in a decree in favor of the plaintiff, including damages of Rs.3 lakhs, as ordered on 6th February, 2017. Despite this legal intervention and the subsequent payment of damages by the defendant, the plaintiff asserts that the violating activities persist and Defendant kept on adopting the similar violating Trade Dress. In such a situation, the Plaintiff was again required to file the subject matter Suit

Legal Precedents:

The historical context of CS No.127/2002 provides a legal backdrop, indicating the court's prior recognition of the defendant's actions as violation of Plaintiff's Trade Dress. The issuance of an injunction and subsequent decree suggest a precedent that underscores the importance of protecting the plaintiff's intellectual property rights. The court's past orders and the damages awarded demonstrate a judicial stance against the defendant's alleged trade dress infringement.

Current Proceedings:

The Hon'ble Court's decision to issue notice on the current suit signals the court's acknowledgment of the plaintiff's assertion that the defendant continues to engage in habitual trade dress violations. This raises questions about the efficacy of past legal remedies and the need for more robust measures to curb persistent infringement activities.

The concluding Note:

In conclusion, the ongoing legal saga between the plaintiff and defendant revolves around the repeated allegations of trade dress violation in the realm of bicycle parts. The historical context of prior litigation and court orders highlights the gravity of the plaintiff's claims. The issuance of notice by the court in the present suit indicates a recognition of the need to address the defendant's alleged habitual violations, raising important questions about the effectiveness of past legal remedies and the potential for heightened judicial intervention in protecting intellectual property rights.

The Case Law Discussed:

Case Title: The Bombay Metal Works Vs R S Industries

Date of Judgement/Order:19.01.2024

Case No. CS(COMM) 54/2024

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, 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

Bulgari SPA Vs Notandas Gems Pvt.Ltd.

Accepting Additional Documents which were left out due to inadvertent error

Introduction:

The legal scenario under consideration involves a significant procedural development in a civil case, where the defendant filed an application under Order XI Rule 1 of the Code of Civil Procedure (CPC) to introduce additional documents supporting the amended written statement. This article aims to scrutinize the circumstances surrounding the defendant's plea, the plaintiff's objections, and the subsequent decision by the Hon'ble High Court of Delhi.

Background:

The defendant, in a proactive move, sought the court's permission to include additional documents that were intended to be filed along with the amended written statement. The defendant argued that an inadvertent error led to the omission of these documents during the filing process. To fortify this claim, the defendant invoked the precedent set by the Hon'ble Supreme Court of India in Sugandhi Vs. P. Raj Kumar, (2020) 10 SCC 706, emphasizing the court's approach to similar situations.

Defendant's Justification:

The defendant's submission highlighted the unintentional nature of the error, clarifying that the additional documents were meant to accompany the amended written statement. Relying on the legal principles laid down by the Supreme Court, the defendant contended that the oversight should not prejudice their case, especially when the documents were crucial for supporting their defense.

Plaintiff's Opposition:

In response, the plaintiff raised objections, asserting that the defendant failed to provide sufficient reasons for not including the documents with the amended written statement. The plaintiff contended that the defendant did not establish that the documents were not within their power and possession at the time of filing the amended written statement, thus questioning the timing of the request to introduce these documents.

Court's Rationale:

The Hon'ble High Court of Delhi, in a judicious analysis, decided in favor of admitting the additional documents overlooked by the defendant. The court justified its decision by pointing out the nature of the documents – articles from various jewelry/fashion magazines illustrating images of the defendant's jewelry designs. The court emphasized that these documents were integral to supporting the pleas already articulated in the written statement, thereby contributing substantively to the defendant's defense.

The concluding Note:

This case exemplifies the delicate balance courts strike between upholding procedural rigidity and ensuring substantive justice. The court's decision to allow the defendant's plea for introducing additional documents underscores a pragmatic approach, recognizing the inadvertent error and prioritizing the relevance of the documents to the case. The principles laid down by the Hon'ble Supreme Court in Sugandhi v. P. Raj Kumar appear to have influenced the court's decision, emphasizing the need for a fair and just resolution in civil proceedings.

The Case Law Discussed:

Case Title: Bulgari SPA Vs Notandas Gems Pvt.Ltd.

Date of Judgement/Order:19.01.2024

Case No. CS(COMM) 658/2021

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, H.J

The habitual Trade Dress violation by the Defendant

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

Sri Amaresh Banerjee vs The State Of West Bengal

Criminal Proceeding Dropped as Dispute Relating to Trademark is Civil Dispute

Introduction:

The present legal article delves into the intricacies of a Criminal Revision filed against an order dated 16.01.2019 in Shyampukur P.S. E.B. case No. 28 of 2009 by the Learned Additional Chief Metropolitan Magistrate, Calcutta. The case involves allegations under Sections 120B/420 of the Indian Penal Code and Sections 103, 104 of the Trade Mark Act, 1999.

Factual Background:

The complainant, a manufacturer of coaltar using the trade name "Anchor" with specific color and artwork, conducts business in Kolkata. The trade mark was initially registered in the name of Aruna Banerjee, subsequently assigned to the complainant. On 3rd May 2008, the petitioner discovered that the opposite party began copying the identical trade mark with the intention of capturing the market.

Legal Proceedings:

The complainant initiated proceedings by filing an application under Section 156(3) Cr.P.C., alleging inadequacies in the investigation. Subsequently, on 11th April 2016, a petition for reinvestigation was filed, leading to its rejection and the subsequent filing of the Criminal Revision.

High Court Decision:

The Hon'ble High Court of Calcutta rejected the Criminal Revision, asserting that the dispute primarily relates to trademark/copyright and falls within the definition of a "commercial dispute" under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015. The court noted that a title suit had already been instituted by the petitioner against the opposite party, which is sub judice.

Legal Analysis:

The key legal question revolves around the characterization of the dispute. The High Court correctly identified it as a commercial dispute, emphasizing that it pertains to trademark and copyright issues. By invoking the Commercial Courts Act, the court clarified that such matters are inherently civil in nature.

Further, the court highlighted the existence of a pending title suit, indicating that the petitioner had sought legal recourse through the appropriate civil channels. The rejection of the Criminal Revision implies that the attempt to initiate criminal proceedings was viewed as an attempt to harass the opposite party, possibly for strategic reasons.

The Concluding Note:

The legal analysis underscores the importance of correctly categorizing disputes, particularly those involving intellectual property rights. In this case, the High Court's decision to classify the matter as a civil dispute aligns with the nature of the allegations. The rejection of the Criminal Revision reaffirms the significance of pursuing appropriate legal remedies and channels for dispute resolution in line with the nature of the dispute.

The Case Law Discussed:

Case Title: Sri Amaresh Banerjee vs The State Of West Bengal

Date of Judgement/Order:15.01.2024

Case No. CRR No.1005 of 2019

Neutral Citation: NA

Name of Hon'ble Court: Calcutta  High Court

Name of Hon'ble Judge: Shampa Dutt Paul, 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