Sun Pharma Laboratories Ltd. Vs Dabur India Ltd.

Mandatory Timelines for filing evidence in support of opposition under Rule 50 of Trademarks Rule 2002

Abstract:

This article examines a recent legal case concerning the adherence to mandatory timelines in trademark opposition proceedings. The case involves the failure of the Appellant to serve evidence in support of opposition within the prescribed timeframe, leading to a delay of three days. Despite filing the evidence with the Trade Marks Registry within the stipulated period, the Appellant's failure to serve the evidence on the Respondent No. 1 in a timely manner resulted in the rejection of their opposition. The article analyzes the court's ruling, which affirmed the mandatory nature of the timelines prescribed in Rule 50 of the Trademarks Rules, 2002, and underscores the importance of strict compliance with procedural requirements in trademark disputes.

Introduction:

Trademark opposition proceedings are governed by strict procedural rules to ensure fairness and efficiency in resolving disputes. Central to these proceedings are the timelines prescribed for filing evidence and serving documents on opposing parties. This article explores a recent legal case highlighting the significance of adhering to mandatory timelines in trademark opposition proceedings and the consequences of non-compliance.

Legal Framework:

Trademark opposition proceedings in India are regulated by the Trademarks Act, 1999, and the Trademarks Rules, 2002. Rule 50 of the Trademarks Rules, 2002 outlines the procedure for filing evidence in support of opposition and sets forth the timelines within which such evidence must be submitted. The language of Rule 50 indicates the mandatory nature of these timelines, with no discretion afforded to extend the deadlines unless directed by the Registrar.

Case Analysis:

The case at hand involves an appeal wherein the Appellant failed to serve evidence in support of opposition on the Respondent No. 1 within the prescribed timeframe. While the evidence was filed with the Trade Marks Registry before the expiration of the deadline, the delay in serving the evidence on the opposing party resulted in a breach of procedural requirements. The Hon'ble High Court upheld the rejection of the opposition, emphasizing the mandatory nature of the timelines prescribed in Rule 50 of the Trademarks Rules, 2002.

Court Ruling:

The court's ruling reaffirmed the mandatory nature of the timelines stipulated in Rule 50 of the Trademarks Rules, 2002. Despite the absence of a specific provision in the 2017 Rules regarding extensions of time, the court held that the deletion of discretionary powers from the Rules further underscores the strict adherence to prescribed timelines. The court reasoned that the language of Rule 50 leaves no room for interpretation, as the use of terms such as "one month aggregate" and the removal of discretion clearly indicate the mandatory nature of the timelines.

Implications:

The court's decision in this case has significant implications for trademark opposition proceedings. It underscores the importance of strict compliance with procedural requirements, particularly regarding timelines for filing evidence and serving documents on opposing parties. Failure to adhere to these mandatory timelines may result in adverse consequences, including the rejection of oppositions and potential loss of substantive rights.

Conclusion:

The case discussed herein serves as a poignant reminder of the importance of adhering to mandatory timelines in trademark opposition proceedings. By affirming the strict nature of the timelines prescribed in Rule 50 of the Trademarks Rules, 2002, the court has reinforced the integrity and efficiency of the trademark registration process. This analysis underscores the necessity for practitioners and parties involved in trademark disputes to exercise diligence and ensure strict compliance with procedural requirements to avoid adverse outcomes.

Case Title: Sun Pharma Laboratories Ltd. Vs Dabur India Ltd.

Order Date: 09.02.2024

Case No. C.A.(COMM.IPD-TM) 146/2022

Name of Court: Delhi High Court

Neutral Citation:2024:DHC:946

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

Ovid Therapeutics Vs Assistant Controller Of Patents

Amendment Restrictions in Patent Specifications

Abstract:

This article focuses on the limitations imposed on amendments to patent specifications beyond the scope of the original claim. It examines a recent legal case involving a patent application titled 'Methods of Increasing Tonic Inhibition and Treating Secondary Insomnia' and the refusal of said application under Section 15 of the Patents Act, 1970.

The case highlights the importance of maintaining consistency between the original claims and any subsequent amendments, as well as the necessity of ensuring that amended claims are adequately supported by the description in the patent specification. The article analyzes the court's decision to dismiss the appeal, emphasizing the significance of adhering to statutory provisions and maintaining the integrity of patent claims.

Introduction:

Patents serve as crucial tools for protecting intellectual property and incentivizing innovation. Central to the patent application process is the specification, which outlines the invention's technical details and defines the scope of protection sought. However, amendments to patent specifications must adhere to strict legal standards to ensure fairness and integrity within the patent system. This article explores the complexities of amending patent claims beyond the original scope and the legal ramifications thereof, using a recent case as a focal point for analysis.

Legal Framework:

The Patents Act, 1970 provides the legal framework governing patent applications and specifications in India. Section 15 of the Act delineates the grounds for refusing a patent application, including inadequacy of disclosure or support in the specification. Additionally, Section 59(1) sets forth the parameters for amending patent claims, stipulating that such amendments must fall within the scope of the unamended claims and be supported by the complete specification.

Case Analysis:

The case under examination involves an appeal filed under Section 117A of the Patents Act, 1970, challenging the refusal of a patent application titled 'Methods of Increasing Tonic Inhibition and Treating Secondary Insomnia.' The Controller of Patent rejected the application on the grounds that the amended claims, which transitioned from method claims to composition claims, were not supported by the description in the specification. Specifically, the amended claims expanded the scope of the patent beyond the original claims, rendering them impermissible under the Act.

Court Ruling:

The Hon'ble High Court of Delhi dismissed the appeal, citing Section 59(1) of the Patents Act, 1970. The court emphasized that amended claims must remain within the scope of the unamended claims and be supported by the complete specification. In this instance, the omission of the disease name in the amended claim broadened the scope of the composition, thereby exceeding the boundaries set forth in the original claims and specification. Consequently, the court upheld the Controller's decision to refuse the patent application.

Implications:

The court's ruling in this case underscores the importance of maintaining consistency and coherence within patent specifications and claims. It highlights the legal constraints imposed on amendments to patent applications, particularly regarding the expansion of claim scope beyond the original disclosure. This decision serves as a precedent for future patent applicants, emphasizing the necessity of adhering to statutory provisions and ensuring that amendments remain within the confines of the original disclosure.

Conclusion:

The case discussed herein exemplifies the legal complexities inherent in patent law, particularly concerning the amendment of patent claims beyond the original scope. By reaffirming the statutory requirements outlined in the Patents Act, 1970, the court has reinforced the integrity of the patent system and underscored the importance of preserving the boundaries established by the original patent disclosure.

Case Title: Ovid Therapeutics Vs Assistant Controller Of Patents

Order Date: 09.02.2024

Case No. C.A.(COMM.IPD-TM) 28/2023

Name of Court: Delhi High Court

Neutral Citation:2024:DHC:974

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

Bawa Masal Co. Ltd. Vs Bawa Masal Co and another

The Rebuttal of Presumption in Email Service in Trademark Opposition Proceeding

Abstract:

This article delves into the intricacies of a recent legal case involving trademark opposition proceedings and the rebuttal of the presumption of proof of service via email. The subject matter order dated October 12, 2023 passed by the the registrar of Trademark, revolves around an appeal filed against the Registrar of Trademarks' decision not to consider an opposition abandoned.

The Registrar's decision, grounded in the Trademarks Rules of 2017, was challenged and ultimately upheld by the court due to the successful rebuttal of the presumption of proof of service. This article examines the legal principles at play, the procedural aspects of the case, and the implications of the court's ruling on email service in trademark opposition proceedings.

Introduction:

Trademark opposition proceedings play a crucial role in safeguarding intellectual property rights and maintaining the integrity of trademark registration. Central to these proceedings is the service of notices and documents, often conducted via email for expediency. However, the presumption of proof of service via email can be challenged, as demonstrated in the case under analysis. This article explores the legal nuances of the case, highlighting the significance of effectively rebutting such presumptions in the realm of trademark law.

Legal Framework:

Before delving into the specifics of the case, it is imperative to understand the legal framework governing trademark opposition proceedings and the principles underlying service of documents. Section 45(2) of the Trademarks Rules, 2017 provides the procedural mechanism for issuing hearing notices and allowing parties to respond to opposition proceedings. Furthermore, established legal principles recognize email as a valid means of service, with a presumption of proof attached to successful delivery to the correct address.

Case Analysis:

The case at hand involves an appeal against the Registrar of Trademarks' decision not to consider an opposition abandoned due to the failure to submit evidence within the stipulated time frame. The crux of the matter lies in the purported failure of the opponent to receive the counter statement from the Trademarks Registry, thus challenging the validity of the email service. Respondent No. 2, after conducting a hearing, determined that the email service was not adequately proven, thereby nullifying the timeline for evidence submission and precluding the abandonment of the opposition.

Court Ruling:

The court, upon review of the case, upheld Respondent No. 2's decision, emphasizing the successful rebuttal of the presumption of proof of service via email. Despite the general presumption that an email sent to the correct address constitutes valid service, the opponent effectively demonstrated, through affidavits and email screenshots, their non-receipt of the counter statement. Consequently, the court concluded that the counter statement was not served upon the opponent, thereby affirming the Registrar's decision.

Implications:

The court's ruling in this case has significant implications for trademark opposition proceedings and the use of email service therein. It underscores the importance of diligent documentation and evidence presentation in challenging presumptions of service. Moreover, it highlights the need for robust mechanisms to ensure effective communication and receipt of crucial documents in legal proceedings, especially in the digital age where reliance on electronic communication is prevalent.

Conclusion:

The case under analysis serves as a pertinent example of the intricacies involved in trademark opposition proceedings and the rebuttal of presumptions in legal matters. By effectively challenging the presumption of proof of service via email, the opponent successfully safeguarded their rights and prevented the abandonment of their opposition.

Case Title: Bawa Masal Co. Ltd. Vs Bawa Masal Co and another

Order Date: 22.01.2024

Case No. C.A.(COMM.IPD-TM) 6/2024

Name of Court: Delhi High Court

Neutral Citation:NA

Name of Hon'ble Judge: Sanjeev Narula 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

Arvind Kejriwal Vs State and another

The Legal Implications of Retweeting Defamatory Content:

Introduction:

The recent ruling by the Delhi High Court has brought to the forefront the complex legal issues surrounding the dissemination of defamatory content on social media platforms, particularly in the context of retweeting. This article aims to provide a detailed analytical examination of the implications of the Court's decision in the case of Chief Minister Arvind Kejriwal's appeal against defamation charges arising from his retweet of allegedly defamatory content.

Background:

In the case before the Delhi High Court, Vikas Sankritayan, the operator of the social media post 'I Support Narendra Modi', filed a defamation complaint against Chief Minister Arvind Kejriwal for retweeting a comment made by YouTuber Dhruv Rathee in 2018. Justice Swarana Kanta Sharma, presiding as a single bench, examined Kejriwal's appeal against the summons issued in response to Sankritayan's complaint.

The Ruling:

The Delhi High Court ruled that each retweet of defamatory content on social media constitutes "publication" and falls within the purview of Section 499 of the Indian Penal Code, 1860, which deals with defamation. The Court upheld the summon orders and rejected Kejriwal's plea to dismiss the defamation case. It emphasized that when an individual retweets defamatory content on their Twitter account, it presents such content as their own views, thereby triggering liability under Section 499 of the IPC.

Analysis:

The Court's ruling raises several important legal and societal considerations. Firstly, it underscores the evolving nature of defamation law in the digital age, particularly in relation to social media platforms. The decision to classify retweeting as "publication" expands the scope of liability for defamation, holding individuals accountable for the dissemination of defamatory content even if they did not create it themselves.

Furthermore, the Court's emphasis on the potential impact of defamatory content when shared by public figures highlights the need for heightened scrutiny of their online conduct. Public figures, especially those with political influence, wield significant power to shape public opinion, making their actions on social media platforms particularly influential. Therefore, the Court's ruling serves as a reminder of the ethical and legal responsibilities that accompany their online presence.

Moreover, the decision raises questions about the balance between freedom of expression and the protection of reputation in the digital sphere. While individuals have the right to express themselves freely on social media, the dissemination of false and harmful information can have serious consequences for the reputation and well-being of others. The Court's ruling seeks to strike a balance between these competing interests by holding individuals accountable for the content they choose to share online.

Conclusion:

The Delhi High Court's ruling on the classification of retweeting as "publication" of defamatory content on social media represents a significant development in defamation law in India. By expanding the scope of liability for defamation, the Court's decision reflects the growing recognition of the impact of online communication on individuals' reputations and society at large.

Case Title: Arvind Kejriwal Vs State and another

Order Date: 05.02.2024

Case No. CRL.M.C. 6347 of 2019

Name of Court: Delhi High Court

Neutral Citation:2024:DHC:820

Name of Hon'ble Judge: Suwarna Kanta 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

Burger Paints India Ltd. Vs JSW Paints Pvt. Ltd.

Legal Implications of Using a Word in a Non-Trademark Significance

Introduction:

Trademark disputes often hinge on the usage and interpretation of specific words or phrases. In a recent case, the plaintiff, who claimed trademark rights in the word "SILK" for paints and allied products, filed a suit against the defendant for using the term "HALO SILK" in relation to similar products. However, the court declined to grant an interim injunction to the plaintiff, citing the defendant's use of the word "SILK" in a non-trademark manner. This article delves into the legal intricacies surrounding the use of words in a non-trademark significance and its implications in trademark litigation.

Background:

The plaintiff asserted ownership over the trademark "SILK" for paints and allied products since 1980, with various trademark registrations obtained since 2006. Additionally, the plaintiff used variations of the mark, such as "BURGER SILK" and "LUXOL SILK." The defendant, on the other hand, used the term "HALO SILK" for similar products, albeit with the word "SILK" displayed in a smaller font to denote a specific finish of their product.

Legal Analysis:

The crux of the dispute lies in whether the defendant's use of the word "SILK" constitutes trademark infringement or if it is merely descriptive or indicative of a product feature. Trademark law protects distinctive marks that serve as source identifiers, distinguishing the goods or services of one party from those of others. However, descriptive or generic terms that merely describe the characteristics or qualities of a product are not afforded trademark protection.

In this case, the court considered the context and manner in which the word "SILK" was used by the defendant. While "HALO" was prominently displayed, "SILK" was presented in a smaller font and was associated with a specific product feature or finish. The court concluded that the word "SILK" was used descriptively to denote a particular attribute of the defendant's product rather than as a source identifier.

Furthermore, the court likely assessed the likelihood of confusion among consumers. Given the prominent display of the distinctive term "HALO" and the descriptive nature of "SILK," consumers are less likely to be misled into believing that the defendant's product originates from the same source as the plaintiff's.

Implications:

This case underscores the importance of context and usage when assessing trademark disputes. The mere presence of a word in a mark does not automatically confer trademark protection if it is used in a non-trademark manner. Courts examine the overall impression created by the mark, considering factors such as prominence, size, and context, to determine whether it functions as a source identifier or merely describes a product feature.

Trademark owners must exercise caution when asserting rights over common or descriptive terms, especially when they are used in conjunction with distinctive elements. Conversely, businesses should be mindful of the potential implications of using descriptive terms in their branding and marketing efforts to avoid infringement claims.

Conclusion:

The case highlights the nuanced approach taken by courts in trademark disputes involving words used in a non-trademark significance. By considering factors such as prominence, context, and consumer perception, courts strive to strike a balance between protecting legitimate trademarks and preventing undue restrictions on competition and innovation.

Case Title: Burger Paints India Ltd. Vs JSW Paints Pvt. Ltd.

Order Date: 12.12.2023

Case No. CS 64 of 2020

Name of Court: Calcutta High Court

Neutral Citation:N.A.

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 Hershey Company Vs Dilip Kumar Bacha

Jurisdictional Challenges in Trademark Law: Conundrum of Dynamic Effect of Registered Trademarks

Introduction:

The determination of jurisdiction is a fundamental aspect of legal proceedings, ensuring that cases are heard by the appropriate judicial authority. In the realm of trademark law, the issue of jurisdiction becomes particularly complex when considering the dynamic effect of registered trademarks. A recent decision by a Single Judge of the Hon'ble High Court of Delhi has sparked debate regarding the jurisdictional scope of the court in trademark rectification petitions. This article provides a detailed analysis of the legal nuances surrounding this issue and the implications of referring it to a larger bench for consideration.

Background:

The controversy arises from a judgment by a Single Judge of the Hon'ble High Court of Delhi in the case of Dr. Reddys Laboratories Ltd. Vs . Fast Cure Pharma. The judgment expanded the jurisdictional scope for trademark rectification petitions, suggesting that applications could be filed not only in the High Courts where the trademark registry office is located but also in courts where the dynamic effect of the impugned registration is felt by the petitioner. This interpretation deviates from established principles and raises questions about the legislative intent behind the Trademarks Act, 1999.

Legal Analysis:

The core issue revolves around the definition of "High Court" within the 1999 Act. Unlike the Patents Act, 1970, and the Designs Act, 2000, which explicitly define the term "High Court," the 1999 Act is silent on this matter. This omission creates ambiguity regarding the jurisdictional authority for trademark rectification petitions and introduces challenges in harmonizing the approach across different intellectual property statutes.

The decision to refer the question to a larger bench reflects the Hon'ble High Court's recognition of the need for clarity and uniformity in interpreting jurisdictional provisions under the 1999 Act. The court's observation regarding the inconsistency in defining "High Court" underscores the legislative lacuna that requires resolution.

Furthermore, the court's reference to the landmark judgment in Girdhari Lal Gupta Vs. K. Gian Chand Jain highlights the relevance of considering the dynamic effect of registered trademarks in determining jurisdiction. While this principle has been applied in the context of design cancellation petitions, its applicability to trademark rectification petitions under the 1999 Act remains subject to interpretation.

Implications:

The outcome of the reference to a larger bench will have far-reaching implications for trademark law and practice in India. Clarifying the jurisdictional framework for trademark rectification petitions is essential for promoting legal certainty, ensuring efficient dispute resolution, and safeguarding the rights of trademark owners.

A clear and consistent approach to jurisdiction will enhance the efficiency and effectiveness of the trademark registration process, enabling parties to assert their rights and challenge potentially infringing trademarks in a streamlined manner. Moreover, it will foster confidence in the legal system and contribute to the overall growth and development of intellectual property rights in India.

Conclusion:

The reference to a larger bench by the Hon'ble High Court of Delhi underscores the complexity of jurisdictional issues in trademark law and the need for comprehensive legal analysis. By addressing the ambiguity surrounding the dynamic effect of registered trademarks and harmonizing the jurisdictional approach across different IP statutes, the court has an opportunity to provide clarity and coherence to the trademark registration process.

Case Title: The Hershey Company Vs Dilip Kumar Bacha

Order Date: 09.02.2024

Case No. C.O. (COMM.IPD-TM) 179/2023 

Name of Court: Delhi High Court 

Neutral Citation:2024:DHC:945

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

Castrol Limited vs Rajasekhar Reddy Byreddy

Safeguarding Trademark Rights: Injunction against amended Label of Defendant

Introduction:

In a recent legal development, the Plaintiff initiated legal proceedings against the Defendant, seeking a permanent injunction to restrain them from using the trademarks "Castrol," "Crystal," and "Active." The Hon'ble High Court of Delhi, recognizing the urgency of the matter, granted an ex parte injunction on June 2, 2023.

Background:

The Plaintiff alleged that despite the Defendant's attempt to modify their trademarks to "Cyrbstal" and "Ativa," these alterations still infringed upon the Plaintiff's registered trademarks. The Plaintiff argued that the new trademarks maintained a significant similarity to their own, potentially causing confusion among consumers and diluting the distinctiveness of their brand.

Legal Analysis:

The granting of an ex parte injunction indicates that the court found sufficient evidence to support the Plaintiff's claim of trademark infringement. The court's decision was based on a strong prima facie case in favor of the Plaintiff, indicating the likelihood of success on the merits of the case.

The court considered the earlier injunction order issued against the Defendant, which underscores the seriousness of the Plaintiff's allegations and the need for immediate legal intervention. By restraining the Defendant from using the modified trademarks "Cyrbstal" and "Ativa," the court sought to prevent further harm to the Plaintiff's trademark rights pending the resolution of the legal proceedings.

Implications:

This case highlights the importance of protecting trademark rights and preventing unauthorized use or imitation by third parties. The court's decision to grant injunctive relief reflects its commitment to upholding the integrity of the trademark system and safeguarding the interests of trademark owners.

Furthermore, the case underscores the evolving nature of trademark disputes in the digital age, where slight modifications to trademarks may still infringe upon existing rights. This emphasizes the need for vigilant enforcement of trademark laws and the proactive defense of trademark assets by brand owners.

Conclusion:

The Castrol vs. Defendant case serves as a pertinent example of the legal complexities surrounding trademark infringement and the role of injunctive relief in preserving brand integrity. The court's decision to grant an ex parte injunction underscores the urgency of the matter and the court's willingness to intervene swiftly to protect the rights of trademark owners. 

Case Title: Castrol Limited vs Rajasekhar Reddy Byreddy

Order Date: 08.02.2024

Case No. CS Comm 412 of 2023

Name of Court: Delhi High Court 

Neutral Citation:NA 

Name of Hon'ble Judge: Sanjeev Narula 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

Vifor International Ltd. Vs MSN Laboratories Pvt. Ltd.

Trademark Infringement and product-by-process Patent

Subject Matter Product: Ferric Carboxymaltose (FCM):

FCM is a patented product formulated to meet the requirements of an intravenous iron therapy. It is designed to be non-toxic, easily administrable in various clinical conditions, and capable of quick sterilization.

The patent for FCM was filed to protect its unique formulation and properties, making it suitable for medical use.

Nature of the Patent Claim:

The appellant/plaintiff claimed that their patent, identified as IN‘536, was principally a product claim or a product-by-process claim.

A product-by-process claim refers to a type of patent claim where the product is defined by the process used to create it. In this case, the patented product is defined by the specific manufacturing process outlined in the patent.

Legal Proceedings:

The appellant/plaintiff filed a suit (CS Comm No. 261 of 2022) against MSN Laboratories Limited concerning their patented product.

The appellant/plaintiff sought an interim injunction to prevent MSN Laboratories Limited from using a different process to manufacture a product similar to FCM.

However, the Hon'ble Single Judge dismissed the interim injunction application, stating that the patent protection secured by the plaintiff was limited to the process by which the product is obtained, not the product itself.

Appeal to the Division Bench:

The appellant/plaintiff appealed the decision to the Division Bench, arguing that the patent was a product-by-process claim and should not be limited by the specific manufacturing process outlined in the patent.

The Division Bench, after reviewing the arguments and evidence, allowed the appeal. They observed that if the product manufactured by MSN Laboratories Limited was indeed FCM, the adoption of a slightly different manufacturing process would not be relevant.

Essentially, the Division Bench ruled that if the product itself is the same, variations in the manufacturing process should not affect the scope of patent protection granted to the product.

Implications:

The decision by the Division Bench clarifies the scope of patent protection for product-by-process claims. It affirms that the protection extends to the product itself, regardless of the specific method used to manufacture it.

This ruling provides greater certainty and protection for patent holders, ensuring that their patented products are safeguarded against infringement even if competitors use slightly different manufacturing processes.

It also underscores the importance of understanding the nuances of patent claims and how they affect the scope of protection granted to patented inventions.

In summary, the Division Bench's decision provides clarity on the interpretation of product-by-process claims and reinforces the principle that patent protection extends to the product itself, irrespective of variations in the manufacturing process.

Case Title: Vifor International Ltd. Vs MSN Laboratories Pvt. Ltd.

Order Date: 07.02.2024

Case No. FAO(OS) (COMM) 159/2023

Name of Court: Delhi High Court

Neutral Citation:2024:DHC:878:DB

Name of Hon'ble Judge: Yahswant Varma and 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

Sequoia Capital Operations Vs John Doe

Trademark Disputes and Impersonation 

The plaintiff asserted ownership of the trademarks "SEQUOIA" and "PEAK TV PARTNERS" specifically in relation to investment services. This indicates that the plaintiff holds registered trademarks for these names or claims common law rights based on their extensive and exclusive use in the relevant industry.

The defendants were operating through various social media profiles on platforms like Facebook and Telegram. They were using the plaintiff's logo on their profiles and falsely presenting themselves as being associated with the plaintiff. This misuse of the plaintiff's trademarks and branding could confuse consumers and harm the plaintiff's reputation and business interests.

In addition to impersonating the plaintiff, the defendants were also posting false job listings under the plaintiff's name. This deceptive practice could mislead job seekers and potentially cause reputational damage to the plaintiff if applicants associate the false job postings with the plaintiff's business.

The High Court, upon reviewing the evidence and arguments presented, issued a restraint order against the defendants. This order legally prohibits the defendants from continuing their impersonation of the plaintiff, misuse of the plaintiff's trademarks, and posting false job listings in the plaintiff's name.

Impersonating the plaintiff and posting false job listings under its name constitute deceptive practices that can harm both consumers and the plaintiff's business. The court's restraint order helps prevent such deceptive practices and promotes honesty and transparency in business interactions.

The High Court's restraint order serves to uphold the plaintiff's rights, prevent deceptive practices, and maintain the integrity of the marketplace. It underscores the legal consequences for those who engage in trademark infringement, impersonation, and related offenses, while also providing a means for victims to seek redress through the judicial system.

Case Title: Sequoia Capital Operations Vs John Doe

Order Date: 05.02.2024

Case No. CS Comm 103 of 2024

Name of Court: Delhi High Court

Neutral Citation:N.A

Name of Hon'ble Judge: Sanjeev Narula 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

Sequoia Capital Operations Vs Seene Trader

Prevention of deptive practices

Trademark Ownership Claim: The plaintiff asserted ownership of the trademarks "SEQUOIA" and "PEAK TV PARTNERS" specifically in relation to investment services. This indicates that the plaintiff holds registered trademarks for these names or claims common law rights based on their extensive and exclusive use in the relevant industriee.

Defendants' Alleged Impersonation and False Job Postings: The defendants were accused of impersonating the plaintiff or falsely representing themselves as being associated with the plaintiff. Additionally, they were allegedly posting false job opportunities under the plaintiff's name. These actions could potentially harm the plaintiff's reputation and business interests by misleading the public and possibly leading to confusion or financial losses.

High Court's Restraint Order: The High Court, after considering the evidence and arguments presented, decided to restrain the defendants from engaging in the activities mentioned in the lawsuit. This means that the defendants are legally prohibited from continuing their impersonation or posting false job listings under the plaintiff's name.

Protection of Trademark Rights: The court's decision to restrain the defendants reflects the importance of protecting the plaintiff's trademark rights. Trademarks serve as valuable assets for businesses, allowing them to distinguish their products or services from those of others. By preventing the defendants from misusing the plaintiff's trademarks, the court safeguards the plaintiff's brand identity and prevents potential damage to its reputation.

Prevention of Deceptive Practices: Impersonating the plaintiff or falsely advertising job opportunities under its name constitutes deceptive practices that can mislead consumers or job seekers. The court's restraint order helps prevent such deceptive practices and maintains integrity and honesty in business dealings.

Legal Remedies for Trademark Infringement: The court's decision underscores the availability of legal remedies for trademark infringement and related misconduct. In this case, the plaintiff successfully sought judicial intervention to stop the defendants' unlawful activities and protect its trademark rights.

The High Court's restraint order serves to uphold the plaintiff's rights, prevent deceptive practices, and maintain the integrity of the marketplace. It highlights the importance of respecting intellectual property rights and the legal consequences for those who engage in trademark infringement or related offenses.

Case Title: Sequoia Capital Operations Vs Seene Trader

Order Date: 05.02.2024

Case No. CS Comm 109 of 2024

Name of Court: Delhi High Court

Neutral Citation:CS Comm 109 of 2024

Name of Hon'ble Judge: Sanjeev Narula 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

Samya International Vs Relaxo Domeswear

Classification of Goods and Possibility of Confusion 

Plaintiff and Defendant:The Plaintiff is the party who filed the lawsuit, and the Defendant is the party against whom the lawsuit was filed.

Trademark Dispute:The dispute arises from the use of similar trademarks by both parties. The Plaintiff holds a registered trademark for "Dengue Don" since 2006, specifically for household insecticides, mosquito coils, agarbatti (incense sticks), and liquid blue. Meanwhile, the Defendant is using a similar trademark, "Gargen Dengue Don," primarily for agarbatti, mosquito agarbatti, dhoop (another type of incense), and loban (a type of resin incense).

Trial Court Injunction:The Trial Court initially granted an injunction, which is a legal order that restrains a party from performing certain acts. In this case, it likely restrained the Defendant from using the trademark "Garden Dengue Don" due to its similarity to the Plaintiff's registered trademark "Dengue Don."

Appeal:The Defendant appealed the decision of the Trial Court, meaning they challenged the injunction.

Appellate Court Decision:The Appellate Court reviewed the case and dismissed the Defendant's appeal. The court's decision was based on the observation that the classification of goods and services, as defined in Section 7 of the Trademark Act, is not the sole criterion for determining similarity. Instead, the court considered factors such as the nature or composition of the goods, the trade channels, and the class of customers for these goods.

Reasoning for Dismissal:The court found that despite the goods being classified under different classes (Class-5 for household insecticides and Class-3 for agarbatti and related products), they share similarities in nature, composition, trade channels, and target customers. Therefore, there is a high likelihood of confusion among consumers between the Plaintiff's and Defendant's products, justifying the injunction.

The Appellate Court upheld the injunction against the Defendant, emphasizing the potential for confusion among consumers due to the similarities between the trademarks and the related goods and services offered by both parties.

Case Title: Samya International Vs Relaxo Domeswear

Order Date: 18.02.2024

Case No. Appeal from Order No.352 of 2021

Name of Court: Bombay High Court

Neutral Citation:2024:BHC-AS:3772

Name of Hon'ble Judge: Anuja Prabhudessai 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