Novartis Ag Vs Natco Pharma Limited and another

Introduction:

The realm of patent law is characterized by a delicate balance between fostering innovation and ensuring that patents are granted on meritorious grounds. Central to this balance is the mechanism of pre-grant opposition, designed to facilitate a rigorous examination of patent applications. This article delves into the nuanced legal principles governing pre-grant opposition, emphasizing its facilitation role in the examination process and delineating its limitations.

The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to answer this issue while passing the Judgement dated 09.01.2024 in Appeal bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and another, delved into the critical examination of the order dated 14.12.2022 passed by controller of Patent , which allowed certain amendments and ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent to Novartis subsequently led to litigation. The Hon'ble Division Bench, High Court of Delhi rejected the argument of the pre grant Opponent that the same had any right to be heard in Patent Examination process. Thereby  affirmed the order of controller , granting the subject matter Patent.

Background:

Novartis AG was the Applicant of the subject matter patent IN‘518, originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which was filed as Indian national phase application bearing no. 4412/DELNP/2007 on 08.06.2007 before the Controller of Patents. Natco and few other entities were pre grant opponent. The subject matter order dated 14.12.2022 passed by the controller which resulted in filing of the subject matter writ and subsequent thereto the present Letters Patent Appeal , whereby certain amendments in Indian Patent Application No. IN4145 were allowed without granting any opportunity to pre grant opponent , to be heard. 

The crux of the controversy lies in the alleged violation of the principles of natural justice. The opponent contended that the order permitting amendments to the patent application was issued without granting them a fair hearing. Specifically, all five pre-grant opposition hearings had concluded on 03 November 2022. Despite this, the Controller of Patents directed the applicant to carry out amendments, which were eventually allowed on 14.12.2022.

The Core Legal Question:

The pivotal issue at hand is whether an opponent possesses the right to participate in the patent examination process, especially when amendments are under consideration. Stated differently, does the opponent have a stake in the examination process, mandating their participation when modifications to the patent application are being evaluated? 

Judicial Interpretation:

The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.

Furthermore, the court elucidated that while pre-grant opposition undoubtedly aids the Controller in decision-making, it does not ipso facto grant opponents an inherent right to participation or an audience during the Patent examination process. This interpretation upholds the procedural autonomy of the Controller in conducting examinations while balancing the interests of both applicants and opponents.

Implications:

it is imperative to understand that the representation for opposition is not inherently adversarial or contentious. Instead, its primary objective is to aid and facilitate the examination of the patent application. This facilitative role underscores the constructive intent behind pre-grant opposition, which aims to ensure that patents are granted based on valid and meritorious grounds.

The scope and limitations of pre-grant opposition are circumscribed by Section 25(1) of the relevant statute. This provision specifies the grounds on which opposition can be raised, thereby confining the opposition's ambit to statutory parameters. Consequently, any challenge raised by an opponent must align with the grounds delineated in Section 25(1), ensuring that the opposition remains tethered to statutory constraints.

The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.

The Concluding Note:

Pre-grant opposition serves a pivotal yet circumscribed role in the patent examination landscape. Its facilitative nature aims to aid the Controller in conducting a holistic examination of patent applications, ensuring adherence to statutory criteria and principles of natural justice. However, this role is not without limitations, as evidenced by the Court's observations emphasizing the pre grant opponent's restricted right to intervene in the process of grant of Patent only by way of pre grant opposition , however the same has no right to be heard in examination process of the Patent, which is solely the domain between Controller of Patent and the Applicant for Patent. 

The Case Law Discussed:

Case Title: Novartis Ag Vs Natco Pharma Limited and another 

Date of Judgement/Order:09.01.2024

Case No. LPA 50/2023 

Neutral Citation: 2023:DHC:84:DB

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Yashwant Varma+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

Serveshwar Food Products Pvt. Ltd vs Mr. Sachin Gupta

Ad Interim Injunction against Registered Proprietor of Trademark

In a recent trademark dispute between the plaintiff's mark "LACY" and the defendant's mark "LECY," the court granted an ad interim injunction against the defendant, despite them being the registered proprietor of the trademark. This case raises important legal considerations regarding passing off relief and the obligations of registered trademark proprietors.

Background of the Dispute:

The plaintiff adopted the trademark "LACY" in 2006 and has been extensively using it since then for their snack products. On the other hand, the defendant's trademark "LECY" bears close similarity to the plaintiff's mark. Moreover, the defendant provided contradictory information regarding the use of their trademark, casting doubt on the legitimacy of their claims.

Legal Analysis:

Substantial Reputation and Misrepresentation:

The court recognized the plaintiff's substantial efforts in advertising and promoting their products under the trademark "LACY." The defendant's use of a confusingly similar mark, coupled with false claims regarding the duration of use, suggests an intentional attempt to misrepresent their products as those of the plaintiff.

Passing Off Relief against Registered Proprietor:

Despite being the registered proprietor of the trademark, the defendant was restrained from using the impugned mark. This decision underscores the principle that passing off relief can be granted against a registered proprietor if they engage in conduct that deceives or causes confusion among consumers, thereby unfairly exploiting the reputation of another's mark.

Contradictory Claims and Lack of Substantiation:

The court noted the defendant's contradictory statements regarding the duration of use of their trademark. Failure to provide sufficient documentation to substantiate their claims further weakened their defense and supported the grant of ad interim injunction in favor of the plaintiff.

Conclusion:

This case highlights the court's willingness to grant ad interim injunctions against registered proprietors of trademarks when they engage in conduct tantamount to passing off. It emphasizes the importance of protecting established reputations in the marketplace and the need for trademark proprietors to maintain transparency and credibility in their claims of use.

Case Title: Serveshwar Food Products Pvt. Ltd vs Mr. Sachin Gupta
Order Date: 06.03.2024
Case No. CS COMM 200  of 2024
Neutral Citation:NA
Name of Court: Delhi High Court 
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

Mahesh Gupta Vs Registrar of Trademarks and another

The Applicability of Trademarks Rules 2017 to Pending Proceedings under Trademarks Rules 2002

Introduction:

The legal landscape governing trademarks in India underwent a significant change with the enactment of the Trademarks Rules 2017. However, questions have arisen regarding the retrospective application of these rules to proceedings initiated under the earlier Trademarks Rules 2002. This article delves into the recent decision of the Hon'ble Division Bench of the High Court of Delhi, which clarified the applicability of Trademarks Rules 2017 to pending proceedings under Trademarks Rules 2002, and its implications on trademark law in India.

Background of the Case:

The reference before the Hon'ble Division Bench stemmed from doubts expressed by a learned Single Judge regarding the application of Trademarks Rules 2017 to proceedings initiated under Trademarks Rules 2002. The specific questions posed for consideration were whether the procedural rules introduced by Trademarks Rules 2017 applied retrospectively to pending proceedings and whether the failure to file evidence under Trademarks Rules 2002 would continue to be governed by those rules.

Analysis of the Decision:

Upon thorough examination of the submissions made by the parties and the relevant legal provisions, the Hon'ble Division Bench concluded that Trademarks Rules 2017 would not apply retrospectively to pending proceedings under Trademarks Rules 2002. This decision emphasizes that liabilities incurred and consequences suffered under Trademarks Rules 2002 would not be effaced by the introduction of new procedural rules.

Legal Interpretation:

The decision of the Hon'ble Division Bench aligns with the principle that procedural laws generally do not have retrospective application unless expressly provided for. The transition from Trademarks Rules 2002 to Trademarks Rules 2017 signifies a change in procedural requirements and obligations. However, it does not automatically alter the legal status or rights accrued under the previous regime. Rule 158 of the Trademarks Rules 2017, which saves actions taken under the earlier rules, reinforces this interpretation.

Implications for Trademark Proceedings:

The clarity provided by the Hon'ble Division Bench regarding the non-retrospective application of Trademarks Rules 2017 brings certainty to pending trademark proceedings. Parties involved in such proceedings can continue to rely on the procedural framework established under Trademarks Rules 2002 without fear of unexpected changes or disruptions. This decision also underscores the importance of preserving legal rights and obligations accrued under previous laws during transitions to new regulatory regimes.

Conclusion:

The decision of the Hon'ble Division Bench of the High Court of Delhi regarding the applicability of Trademarks Rules 2017 to pending proceedings under Trademarks Rules 2002 provides crucial guidance in the interpretation and application of trademark law in India. By affirming that procedural changes do not retroactively affect pending proceedings, the court ensures stability and fairness in the legal process. Moving forward, parties and practitioners can rely on this decision to navigate trademark proceedings with confidence and clarity.

Case Title: Mahesh Gupta Vs Registrar of Trademarks and another

Order Date: 13.03.2024

Case No. LPA 429/2023

Neutral Citation:2024:DHC:2017-DB

Name of Court: Delhi High Court

Name of Hon'ble Judge : Yashwant Sharma and Dharmesh Sharma H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Mahesh Gupta Vs Registrar of Trademarks and another

The Applicability of Trademarks Rules 2017 to Pending Proceedings under Trademarks Rules 2002

Introduction:

The legal landscape governing trademarks in India underwent a significant change with the enactment of the Trademarks Rules 2017. However, questions have arisen regarding the retrospective application of these rules to proceedings initiated under the earlier Trademarks Rules 2002. This article delves into the recent decision of the Hon'ble Division Bench of the High Court of Delhi, which clarified the applicability of Trademarks Rules 2017 to pending proceedings under Trademarks Rules 2002, and its implications on trademark law in India.

Background of the Case:

The reference before the Hon'ble Division Bench stemmed from doubts expressed by a learned Single Judge regarding the application of Trademarks Rules 2017 to proceedings initiated under Trademarks Rules 2002. The specific questions posed for consideration were whether the procedural rules introduced by Trademarks Rules 2017 applied retrospectively to pending proceedings and whether the failure to file evidence under Trademarks Rules 2002 would continue to be governed by those rules.

Analysis of the Decision:

Upon thorough examination of the submissions made by the parties and the relevant legal provisions, the Hon'ble Division Bench concluded that Trademarks Rules 2017 would not apply retrospectively to pending proceedings under Trademarks Rules 2002. This decision emphasizes that liabilities incurred and consequences suffered under Trademarks Rules 2002 would not be effaced by the introduction of new procedural rules.

Legal Interpretation:

The decision of the Hon'ble Division Bench aligns with the principle that procedural laws generally do not have retrospective application unless expressly provided for. The transition from Trademarks Rules 2002 to Trademarks Rules 2017 signifies a change in procedural requirements and obligations. However, it does not automatically alter the legal status or rights accrued under the previous regime. Rule 158 of the Trademarks Rules 2017, which saves actions taken under the earlier rules, reinforces this interpretation.

Implications for Trademark Proceedings:

The clarity provided by the Hon'ble Division Bench regarding the non-retrospective application of Trademarks Rules 2017 brings certainty to pending trademark proceedings. Parties involved in such proceedings can continue to rely on the procedural framework established under Trademarks Rules 2002 without fear of unexpected changes or disruptions. This decision also underscores the importance of preserving legal rights and obligations accrued under previous laws during transitions to new regulatory regimes.

Conclusion:

The decision of the Hon'ble Division Bench of the High Court of Delhi regarding the applicability of Trademarks Rules 2017 to pending proceedings under Trademarks Rules 2002 provides crucial guidance in the interpretation and application of trademark law in India. By affirming that procedural changes do not retroactively affect pending proceedings, the court ensures stability and fairness in the legal process. Moving forward, parties and practitioners can rely on this decision to navigate trademark proceedings with confidence and clarity.

Case Title: Mahesh Gupta Vs Registrar of Trademarks and another

Order Date: 13.03.2024

Case No. LPA 429/2023

Neutral Citation:2024:DHC:2017-DB

Name of Court: Delhi High Court

Name of Hon'ble Judge : Yashwant Sharma and Dharmesh Sharma H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Prasar Bharti Vs Dish Tv India Ltd

No exclusivity over descriptive and common elements of Trademark

Introduction:

In the case at hand, the appellant challenges an order restraining them from adopting the trademark 'DD Free Dish' pending disposal of the suit. The principal question revolves around the similarity between the marks 'Dish TV' and 'DD Free Dish' and the extent of exclusivity afforded to descriptive and common elements such as 'Dish'. This article provides a detailed legal analysis of the court's decision and its implications regarding the protection of descriptive and common marks in trademark law.

Assessment of Similarity:

The court's decision to allow the appeal rests on the analysis of the similarity between the marks 'Dish TV' and 'DD Free Dish'. While both marks contain the term 'Dish', the court emphasizes that this term is descriptive and common to the trade, primarily referring to the dish antenna used in direct-to-home (DTH) services. Additionally, the presence of 'TV' in 'Dish TV' and 'Free' in 'DD Free Dish' distinguishes the marks further. The court concludes that, aside from the shared term 'Dish', there is no substantial similarity between the marks.

Distinctiveness and Consumer Perception:

Central to the court's decision is the consideration of the distinctiveness of the appellant's mark, which includes the well-known trade name 'DD'. The inclusion of 'DD' alongside 'Dish' in the mark 'DD Free Dish' serves to indicate the distinctive origin of the appellant's services to the general public.

The court emphasizes that consumers are unlikely to be confused regarding the origin of the services due to the presence of 'DD' in the mark. This underscores the importance of considering the overall impression created by the mark and its association with the appellant's reputation and trade name.

No exclusivity over descriptive and common elements of Trademark:

The court's decision reflects a nuanced understanding of trademark law, particularly regarding descriptive and common elements. While trademarks are intended to distinguish the goods or services of one entity from another, exclusivity over descriptive or common terms may be limited.

In industries such as DTH services, where terms like 'Dish' are generic and essential components, trademark protection may be narrower. The court's ruling highlights the need to balance the protection of legitimate trademarks with the recognition of common industry terminology.

Conclusion:

The case exemplifies the complexities involved in trademark disputes, particularly concerning descriptive and common marks. The court's decision underscores the importance of assessing the overall impression created by a mark and considering its association with the origin of goods or services. While trademarks play a crucial role in branding and consumer identification, their protection is not absolute, especially when they contain elements common to an industry.

Case Title: Prasar Bharti Vs Dish Tv India Ltd

Order Date: 06.03.2024

Case No. FAO(OS)(COMM) 267/2019

Neutral Citation:2024:DHC:1855-DB

Name of Court: Delhi High Court

Name of Hon'ble Judge : Vibhu Bakhru and Amit Mahajan H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

A B Mauri India Private Limited Vs Vicky Aggarwal and Ors

Binding Nature of Undertakings in Trademark Disputes

Introduction:

Trademark disputes often hinge on the recognition and protection of proprietary rights. In the case at hand, the dispute revolves around the usage of trademarks 'POWER' and 'TOWER' in relation to specific goods falling under different classes. The defendant initially acknowledged the proprietary rights of the plaintiff in the trademark 'TOWER' for goods in class 30 and undertook to restrict its usage to specific goods falling under classes 1 and 29. However, subsequent violations led to legal action, resulting in the granting of an injunction by the Hon'ble High Court of Delhi. This article aims to analyze the legal implications of undertakings in trademark disputes and the binding nature thereof.

Enforceability of Undertakings:

An undertaking, once given, carries significant legal weight, especially in the context of trademark disputes. It represents a formal commitment by the party giving it and is relied upon by the other party. In this case, the defendant's undertaking dated 20.03.2013 explicitly recognized the proprietary rights of the plaintiff in the trademark 'TOWER' for goods in class 30 and agreed to restrict its usage to specific goods in classes 1 and 29.

Reliance and Detrimental Reliance:

The enforceability of undertakings is often tied to the principle of detrimental reliance. When one party relies on the undertaking to its detriment, the party giving the undertaking cannot subsequently resile from it. The plaintiff, in this case, withdrew its opposition against Application No. 1655205 based on the defendant's undertaking. This withdrawal constituted detrimental reliance on the part of the plaintiff, as it acted to its disadvantage based on the assurance given by the defendant.

Estoppel and Equitable Considerations:

The principle of estoppel also comes into play in situations where one party's actions induce another party to act in a certain way. The defendant, having induced the plaintiff to withdraw its opposition and act to its detriment based on the undertaking, cannot now oppose the enforcement of the undertaking. This principle is essential in maintaining fairness and equity in contractual and legal relationships.

Binding Nature of Undertakings:

Undertakings are binding contractual obligations, and parties are expected to adhere to them in good faith. In this case, the defendant's attempt to use the trademark 'TOWER' in relation to goods outside the agreed classes constitutes a breach of the undertaking. The granting of an injunction by the Hon'ble High Court of Delhi underscores the binding nature of undertakings in trademark disputes.

Conclusion:

The case highlights the importance of honoring undertakings in trademark disputes and the legal consequences of failing to do so. Undertakings represent formal commitments that parties rely upon, and breaching them can lead to legal action and injunctions. The principles of detrimental reliance, estoppel, and equity play significant roles in determining the enforceability of undertakings.

Case Title: A B Mauri India Private Limited Vs Vicky Aggarwal and Ors

Order Date: 04.03.2024

Case No. CS(COMM) 810/2022

Neutral Citation:2024:DHC:1923

Name of Court: Delhi High Court

Name of Hon'ble Judge : C Harishankar H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Wings Pharmaceuticals P. Ltd Vs Khatri Healthcare Pvt. Ltd.

No Trademark right over an expression used purely in a descriptive sense

Introduction:

The intersection of trademark law and purely descriptive terms often presents complex legal challenges, as demonstrated in the case of "JU NASHAK" – a term used to describe an anti-lice product. This article delves into the legal intricacies surrounding the protection of trademarks, particularly when they involve purely descriptive expressions.

Background of the Case:

In the present case, the Plaintiff, a renowned manufacturer of pharmaceutical and consumer healthcare products, claimed ownership of the trademark "JU NASHAK," which it had been using since 2015 for its anti-lice cream. The Plaintiff alleged that Defendant No. 1 obtained registration for a similar mark "JUNASHAK" for anti-lice cream shampoo, leading to a legal dispute over trademark infringement.

Legal Analysis:

The crux of the matter lies in determining whether "JU NASHAK" qualifies for trademark protection despite its descriptive nature. Trademarks that are used purely in a descriptive manner in relation to the goods or services they represent face challenges in obtaining legal protection. The primary function of a trademark is to identify the source of goods or services, and purely descriptive terms may not fulfill this criterion.

Court's Decision:

The Hon'ble High Court of Delhi declined to grant an injunction in favor of the Plaintiff, reasoning that "JU NASHAK" is a descriptive term indicating the product's function of combating lice infestations. The Court observed that the Plaintiff predominantly uses the trademark "HAIRSHIELD" for its products, with "JU NASHAK" serving a descriptive function rather than indicating exclusive trademark usage.

Implications and Legal Precedents:

This case highlights the importance of distinctiveness in trademarks and the challenges posed by purely descriptive terms. Trademark law aims to prevent consumer confusion and protect the goodwill associated with a brand. Courts often rely on the distinctiveness and uniqueness of a mark to determine its eligibility for legal protection.

Conclusion:

This case of "JU NASHAK" underscores the significance of trademark distinctiveness and the limitations imposed on purely descriptive terms. While descriptive terms may serve to inform consumers about the nature of a product, they may not necessarily function as exclusive identifiers of a particular brand. 

Case Title: Wings Pharmaceuticals P. Ltd Vs Khatri Healthcare Pvt. Ltd.

Order Date: 04.03.2024

Case No. CS(COMM) 17/2024 

Neutral Citation:NA

Name of Court: Delhi High Court 

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 and the same are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.This article is meant for informational purposes only and should not be construed as substitute for legal advice. Readers are advised to consult with a qualified attorney for legal guidance on specific matters.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Hero Motocorp Limited & Anr vs Pawan Kumar

Difference of Product and Trademark Infringement 

 

In this case, the Plaintiff initiated a lawsuit based on their proprietary rights in the trademark "HERO High" in relation to bicycles, bicycle parts, and related products. The Plaintiff's trademark has been registered since 1966, indicating long-standing use and recognition in the market.

On the other hand, the Defendant adopted a similar trademark "HERO" for potash alum bars, which are unrelated to bicycles or bicycle parts. Potash alum bars are typically used for purposes such as water purification, tanning, and as a deodorant.

Despite the differences in the products offered by both parties, the Plaintiff argued that the adoption of a similar trademark by the Defendant could lead to confusion among consumers, diluting the distinctiveness of the Plaintiff's trademark and potentially causing harm to their brand reputation.

The Hon'ble High Court of Delhi granted an injunction in favor of the Plaintiff after observing a prima facie case in their favor. This indicates that the court found sufficient evidence to support the Plaintiff's claim of trademark infringement based on the similarity between the trademarks and the potential for confusion among consumers.

The court's decision highlights the importance of protecting trademark rights, regardless of the specific products or industries involved. Even though the Defendant's products were unrelated to bicycles or bicycle parts, the court recognized the risk of consumer confusion arising from the similarity between the trademarks.

Case Title: Hero Motocorp Limited & Anr vs Pawan Kumar 

Order Date: 05.02.2024

Case No. CS Comm 90 of 2024

Name of Court: Delhi High Court 

Neutral Citation:Not available

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

Therelek Machine Pvt. Ltd. Vs Therelek Engineers Pvt. Ltd.

Section 124 of the Trademarks Act 1999 and third Party Rectification

Introduction:

The interpretation and application of Section 124 of the Trademarks Act 1999, particularly concerning the reliance on third-party rectification petitions in suit proceedings, have been a subject of legal scrutiny. This article delves into a recent case where the High Court examined whether a party in a suit proceeding could invoke Section 124 based on a third-party rectification petition.

Background:

In the case at hand, the petitioner filed a writ petition challenging the order of the Trial Court rejecting their application under Section 124(1) of the Trademarks Act 1999. The petitioner, defendant No.1 in the suit, sought a stay of the proceedings based on a third-party rectification petition filed against the plaintiff's registered trademark.

Legal Analysis:

The core issue revolved around whether the petitioner could rely on the third-party rectification petition to seek a stay of the suit proceedings under Section 124. The plaintiff argued that since the rectification application was filed by a third party, not a party to the suit, Section 124 was inapplicable.

However, the High Court rejected this contention and emphasized the language of Section 124 and Section 57 of the Trademarks Act 1999. Section 57 allows any aggrieved person to file a rectification application against the registration of a trademark. On the other hand, Section 124 provides for a stay of proceedings if an application for rectification is pending.

The court noted that Section 124 does not explicitly require the applicant seeking a stay to be a party to the suit or the one who filed the rectification application. Instead, it focuses on the existence of an application for rectification, irrespective of the applicant's identity. The key consideration is whether there is an ongoing rectification proceeding related to the trademark in question.

Conclusion:

The case underscores the importance of interpreting statutory provisions in accordance with their language and legislative intent. It clarifies that Section 124 of the Trademarks Act 1999 can be invoked based on a third-party rectification petition, provided there is an ongoing rectification proceeding concerning the trademark in question. This interpretation ensures that the statutory objective of protecting the integrity of trademarks is upheld, irrespective of the identity of the rectification applicant.

Case Title: Therelek Machine Pvt. Ltd. Vs Therelek Engineers Pvt. Ltd.

Order Date: 28.02.2024

Case No. WP No. 28029 of 2023

Neutral Citation:NA

Name of Court: Karnatak High Court 

Name of Hon'ble Judge:Anant Ramanath Hegde 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

Times Drugs and Pharmaceutical Limited Vs Galpha Laboratories Limited

Failure to Conduct Trademark Search prior to adoption of Trademark 

Introduction:

The case of failure to conduct a trademark search prior to adopting a trademark highlights the importance of due diligence in trademark registration and use. This article analyzes the legal implications of such failure, focusing on a recent court decision where the plaintiff succeeded in a suit against the defendant for infringing on its registered trademark.

Background:

In the case at hand, the plaintiff claimed to be the registered proprietor of the trademark "DPS" in Class 05, relating to medicinal and pharmaceutical preparations, with claimed user dating back to October 1, 2005. The defendant, on the other hand, adopted an identical mark "DPS" for its products, claiming innocence and stating that the mark was derived from the first letters of the ingredients.

Legal Analysis:

The crux of the legal analysis lies in the defendant's failure to conduct a thorough search of the Trademarks Registry prior to adopting the mark "DPS". The court, in its judgment, emphasized the importance of conducting such searches before adopting a trademark. It held that a prudent user of a mark is expected to undertake due diligence to ensure that the chosen mark does not infringe upon existing trademarks.

The court highlighted that the plaintiff's registration of the trademark "DPS" predated the defendant's use of the same mark. Therefore, the defendant's subsequent adoption of an identical mark raised questions about its intent. Despite the defendant's claim of innocence, the court inferred that the failure to conduct a trademark search amounted to a deliberate action to capitalize on the plaintiff's goodwill and reputation in the market.

Legal Implications:

The case sets a precedent regarding the legal implications of failing to conduct a trademark search. It underscores the duty of businesses to conduct thorough searches of the Trademarks Registry before adopting a trademark to avoid infringing on existing rights. Failure to do so can lead to legal consequences, including claims of passing off and trademark infringement.

Remedies:

In this case, the court decreed the suit in favor of the plaintiff, granting relief against the defendant for infringing on its registered trademark. The defendant was restrained from using the mark "DPS", and the plaintiff was awarded appropriate remedies for the infringement.

Conclusion:

The case highlights the importance of due diligence in trademark matters and underscores the legal consequences of failing to conduct a trademark search. Businesses must exercise caution and diligence when adopting trademarks to avoid infringing on existing rights and facing legal action. Conducting thorough searches of the Trademarks Registry is essential to ensure compliance with trademark laws and regulations.

Case Title: Times Drugs and Pharmaceutical Limited Vs Galpha Laboratories Limited 

Order Date: 22.02.2024

Case No. C.A.(COMM.IPD-PV) 3/2022

Neutral Citation:CS(COMM) 398/2018

Name of Court: Delhi High Court 

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

UPL Limited Vs Registrar and another

Relief under Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act 2001

Introduction:

Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act 2001 pertains to the granting of relief during the pendency of an application for registration of plant varieties. A recent case has brought to light the interpretation and application of this provision, particularly concerning whether relief can be granted during the pendency of an application. This article undertakes an analytical examination of this issue, focusing on the legal arguments, judicial reasoning, and implications of the case in question.

Legal Background:

Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001, explicitly addresses the issue of granting relief during the period between the filing of an application for registration and the decision made by the relevant authority. This provision empowers the Registrar to issue directions and grant relief during this interim period, thereby ensuring effective protection of rights pending the final determination of the application.

Case Overview:

The case under scrutiny involves an appeal filed under Section 56 of the Act against an order passed by the Registrar, wherein relief sought under Section 24(5) was denied on the grounds of prematurity. The Appellant had applied for relief, including damages, injunction, and rendition of accounts, during the pendency of their application for plant variety registration. The Registrar deemed the application premature, contending that relief could only be sought after the grant of registration, not during the application process.

Judicial Analysis:

Upon appeal, the Delhi High Court examined the language and intent of Section 24(5) of the Act. The Court emphasized the plain reading of the provision, which explicitly allows for the issuance of directions and granting of relief during the period between application filing and the decision by the authority. The Court observed that the Registrar's interpretation was contrary to the statutory mandate, as it deprived the Registrar of the power conferred by the statute to provide interim relief.

The Court's decision underscores the importance of adhering to the statutory language and purpose. By affirming the Registrar's authority to grant relief during the pendency of an application, the Court ensures the effective implementation of the Act's objectives, including the protection of plant breeders' and farmers' rights.

Implications:

The ruling of the Delhi High Court clarifies the scope and applicability of Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001. It establishes that relief can indeed be granted during the pendency of an application for plant variety registration, in accordance with the statutory provisions. This decision provides certainty to stakeholders by reaffirming the authority of the Registrar to intervene and provide interim relief when necessary, thereby promoting confidence in the legal framework governing plant varieties and farmers’ rights.

Conclusion:

The case discussed herein sheds light on the interpretation and application of Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001. The Delhi High Court's decision underscores the importance of upholding statutory provisions and ensuring the effective implementation of legislative objectives. By affirming the Registrar's authority to grant relief during the pendency of an application, the Court reinforces the protection afforded to plant breeders and farmers under the Act. 

Case Title: UPL Limited Vs Registrar and another

Order Date: 22.02.2024

Case No. C.A.(COMM.IPD-PV) 3/2022

Neutral Citation:2024:DHC:1913

Name of Court: Delhi High Court 

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