Amit Sood Vs Union of India and Ors

Bad Faith and Trademark Rectification

Rectification from the register:

Case at hand refers to the process of correcting or removing a registration from an official record or register. In this case, the registration for "ROSHAN" was rectified, meaning it was altered or removed from the register.

Impugned Registration:

The registration of "ROSHAN" is being challenged or questioned.

Not honest adoption of mark/name:

The adoption of the names "ROSHAN STUDIOS" or "ROSHAN PORTRAITS" was not done in good faith or with honesty.

Resulting in passing off:

Passing off refers to the act of unfairly using someone else's intellectual property (such as a trademark or brand name) to deceive or confuse consumers. The adoption of the names "ROSHAN STUDIOS" or "ROSHAN PORTRAITS" is leading to confusion or deception among consumers.

No plausible justification:

The respondents (those defending the use of the names) have not provided any reasonable explanation or justification for using the impugned name/mark.

Flawed claim of ownership:

The respondents' claim of ownership of the mark is considered flawed because the goodwill associated with the name does not belong to them but to the petitioner (the party challenging the registration).

Duty of the court in cancellation petitions:

The court has a responsibility to ensure that the register of trademarks is maintained accurately and that registrations are not allowed to remain if they are obtained dishonestly or if they infringe on the rights of others.

Case at hand describes a legal dispute over the registration of the trademark "ROSHAN" and the use of related names, with the court finding that the adoption of these names was not honest and resulted in passing off, leading to the rectification of the registration.

The Case Discussed:

Case Title: Amit Sood Vs Union of India and Ors
Judgment/Order Date: 03.05.2024
Case No:WP (C) IPD 54 of 2021
Neutral Citation: 2024:DHC-3533
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh,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

Electonica India Limited Vs Electonica Hitech Machines Pvt. Limited and another

Failure of the Trade Mark Registry to consider objections is fatal to recordial

Context:

The petitioner has challenged the decisions made by the Trade Mark Registry (Respondent No. 2) regarding two Form TM-24 applications submitted by Respondent No. 1. These applications were for updating the proprietorship details of a trademark.

Objection Letter:

The petitioner had previously issued an objection letter on January 19, 2018, opposing Respondent No. 1's request for changes in ownership under Section 45 of the Trade Marks Act, 1999.

Registry's Actions:

Despite receiving the objection letter, the Trade Mark Registry (Respondent No. 2) allowed the Form TM-24 applications without considering the objections or passing any order in response to them. Two communications/orders were issued by the Registry on January 25, 2018, and May 18, 2018, confirming the approval of the applications.

Legal Issue Raised:

The petitioner contends that the Trade Mark Registry (Respondent No. 2) failed to adhere to Section 45 of the Trade Marks Act by not considering their objection letter. Additionally, if the Registry considered the petitioner as an interloper (someone who intrudes into a situation where they are not wanted or are considered not to belong), this should have been explicitly stated in a formal order.

Decision:

The court or adjudicating body has decided to set aside the orders/communications issued by the Trade Mark Registry (Respondent No. 2). It directs Respondent No. 2 to reconsider the Form TM-24 applications, giving the petitioner an opportunity to be heard. The Registry must then issue a formal, detailed order (a speaking order) in accordance with Section 45 of the Trade Marks Act.

Conclusion:

The case outlines a legal challenge to the trademark registration process, highlighting the failure of the Trade Mark Registry to consider objections raised by the petitioner and the need for proper procedural adherence in such matters.

The Case Discussed:

Case Title: Electonica India Limited Vs Electonica Hitech Machines Pvt. Limited and another

Judgment/Order Date: 15.04.2024

Case No:Commercial Misc Petition 47 of 2022

Neutral Citation: 2024:BHC-OS-6550

Name of Court: Delhi High Court

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

Informa Markets India Pvt. Ltd. Vs 4Pinfotech and another

Non Copyright ability of generic concept Note

Background:

The Petitioner filed cancellation petition seeking cancellation of concept note under the title Virtual Expo. The Hon'ble High Court of Delhi rectified the impugned copyright.

The Rectification:

The Hon'ble High Court of Delhi reviewed the copyright registration and found that it lacked the essential elements to qualify as a protectable concept note. The court determined that the contents of the registration were merely a generic description of the advantages and benefits of conducting a Virtual Expo, rather than a specific concept or idea.

Generic Description:

The content of the copyright registration did not articulate a specific concept related to conducting a Virtual Expo. Instead, it outlined the general benefits without providing any unique or innovative approach.

Lack of Specificity:

The registration did not offer any detailed or specific instructions on how to conduct a Virtual Expo. It merely listed the advantages without delving into the principles, ideas, or step-by-step procedures involved.

Absence of Exclusive Rights:

The court concluded that the generic description provided in the copyright registration did not grant the registered proprietor any exclusive rights over the idea or concept of conducting a Virtual Expo. Copyright protection typically extends to original expressions of ideas, not to generic or commonplace descriptions.

Concluding Note:

The court rectified the copyright registration, recognizing that it did not meet the criteria for protection as a concept note. This decision underscores the importance of originality and specificity in copyright protection, particularly in cases involving abstract concepts or ideas.

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

The Case Discussed:

Case Title: Informa Markets India Pvt. Ltd. Vs 4Pinfotech and another

Judgment/Order Date: 06.05.2024

Case No:Co Comm IPD CR 695 of 2024

Neutral Citation: 2024:DHC-3771

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal,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

Sonalkumar Sureshrao Solanke Vs The Assistant Controller of Patents

Non-Appealability of Orders under Section 21(1) of the Patents Act 1970

Introduction:

The question arose before the Hon'ble High Court of Bombay regarding the appealability of orders made under Section 21(1) of the Patents Act 1970 in this case. This article aims to dissect the legal intricacies surrounding this issue, focusing on the interplay between Section 21(1) and Section 117A of the Patents Act.

Background:

The Patents Act 1970 serves as the primary legislation governing patents in India. Section 21(1) of the Act empowers the Controller of Patents to raise objections against patent applications if they fail to comply with FER [First Examination Report]. Conversely, Section 117A provides for the mechanism of appeals against certain orders made under the Act, provided the orders are passed under Section 15 of the Patent Act 1970.

Legal Analysis:

The crux of the matter revolves around the interpretation of Section 117A vis-à-vis orders issued under Section 21(1). The contention raised by the respondent, supported by the court's observation, underscores the non-appealability of orders falling under the purview of Section 21(1). This conclusion stems from the explicit language of Section 117A, which does not envisage appeals against such orders.

The court's rationale for upholding the respondent's preliminary objection is multifaceted. Firstly, it underscores the absence of a statutory provision explicitly allowing appeals against Section 21(1) orders. This absence suggests a legislative intent to exclude such orders from the appellate ambit. Secondly, the court highlights the petitioner's failure to address all objections raised in the First Examination Report (FER), signaling non-compliance with procedural requisites.

Non-Appealability of Orders under Section 21(1) of the Patents Act 1970:

The court's ruling carries significant implications for patent applicants and practitioners alike. It reinforces the importance of meticulous compliance with statutory requirements, particularly those delineated in Section 21(1). Failure to adhere to these requirements not only exposes applicants to the risk of adverse orders but also precludes the avenue of appellate recourse, as orders passed under Section 21 (1) of the Patent Act 1970 are non Appealable under Section 117 A of the Patent Act 1970.

Implications:

The decision underscores the need for a comprehensive approach to addressing objections raised during patent examination. Merely cursorily addressing one objection while neglecting others, as exemplified in this case, is unlikely to suffice. Patent applicants must diligently engage with all objections to maximize the prospects of successful application prosecution.

Conclusion:

The non-appealability of orders issued under Section 21(1) of the Patents Act 1970 underscores the need for precision and thoroughness in patent application procedures. The court's adherence to statutory interpretation principles, coupled with a pragmatic assessment of procedural compliance, sets a precedent that resonates within India's patent law landscape. Moving forward, stakeholders must navigate these legal intricacies with diligence and precision to safeguard their patent interests effectively.

The Case Discussed:

Case Title: Sonalkumar Sureshrao Solanke Vs The Assistant Controller of Patents

Judgment/Order Date: 30.04.2024

Case No:Commercial Misc. Petition 8 of 2022

Neutral Citation: 2024:BHC-OS:7309

Name of Court: Bombay High Court

Name of Hon'ble Judge: Firdosh P. Pooniwalia.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

Pinnacle Engines Inc Vs Assistant Controller of Patent and Designs

Patent Rejection and Reversal: A Case Study of "Opposed Piston Engine with Non-Collinear Axes of Translation"

Introduction:

This case pertains to invention titled "Opposed Piston Engine with Non-Collinear Axes of Translation," the rejection of the patent application and subsequent reversal on appeal underscore the complexities of patent law and the importance of legal analysis in patent disputes. This article provides a detailed analysis of the case, examining the grounds for rejection, the appellate court's observations, and the implications for patent applicants and the patent system.

Background:

The appellants sought patent protection for their invention related to opposed piston engines, specifically focusing on the arrangement of pistons with non-collinear axes of translation. The application, filed in 2012, faced substantive objections, primarily concerning the inventive step in light of cited prior art documents. The Patent Office rejected the application, citing lack of inventive step in view of the cited documents.

However, the appellants appealed the decision to the Hon'ble High Court, challenging the rejection and presenting arguments to support the patentability of their invention. The court's analysis and subsequent decision offer valuable insights into the interpretation and application of patent law principles.

Court's Analysis:

The Hon'ble High Court meticulously reviewed the grounds for rejection and evaluated the arguments presented by the appellants. The court noted that the cited prior art documents did not explicitly teach or suggest the features claimed in the invention. Crucially, the court observed that there was no motivation or suggestion in the cited documents that would render the claimed features obvious to a person skilled in the art.

Furthermore, the court considered the amendments made to the patent claims during the appellate process. It found that the amended claims were within the scope of the complete specification of the claimed invention. As per Section 59 of the Patents Act, the court held that such amendments were permissible, especially when the features were already disclosed as an option in the complete specification.

Outcome and Implications:

In light of its analysis, the Hon'ble High Court set aside the impugned order rejecting the patent application. The court directed the controller of patents to reconsider the application and dispose of it within a specified timeframe.

The reversal of the rejection underscores the importance of a thorough legal analysis and strategic approach in patent disputes. The case highlights the significance of clear and comprehensive patent specifications, as well as the potential for amendments to strengthen patent claims during the appellate process.

Conclusion:

The case of the "Opposed Piston Engine with Non-Collinear Axes of Translation" patent application offers valuable insights into the intricacies of patent law and the patent application process. It emphasizes the need for inventors to navigate the complexities of patent examination and appeals with a nuanced understanding of legal principles and strategic considerations.

The Case Discussed:

Case Title: Pinnacle Engines Inc Vs Assistant Controller of Patent and Designs
Judgment/Order Date: 30.04.2024
Case No:CMA(PT)/17/2023
Neutral Citation:2024:MHC:1951
Name of Court: Madras High Court
Name of Hon'ble Judge: Senthilkumar Ramamoorthy.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

Relaxo Footwears Limited Vs XS Brands Consultancy Private Limited and another

Third-Party Trademark Agreements and Their Impact on Interim Injunctions

Introduction:

In this case before the Hon'ble High Court of Delhi, the refusal to grant an interim injunction shed light on the significance of third-party trademark existence agreements. This article provides an in-depth analysis of the legal implications stemming from such agreements in trademark disputes, drawing insights from the aforementioned case.

Background:

The plaintiff, a prominent player in the footwear industry, initiated legal proceedings seeking a permanent injunction against the defendants, alleging trademark infringement. The crux of the plaintiff's argument rested on the deceptive similarity between their 'X' mark, derived from the 'SPARX' logo, and the defendants' 'X' mark used for footwear products. Despite the apparent similarity and identical goods, the court declined to grant the interim injunction, citing various grounds, including the existence of third-party trademark agreements.

Court's Analysis:

The court's decision to deny the interim injunction was multifaceted, with a significant emphasis on the presence of third-party trademark existence agreements. Firstly, the court observed that both the plaintiff's and defendants' 'X' marks were used in conjunction with their respective trademarks, namely 'SPARX' and 'HRX.' This usage indicated that consumers primarily associated the products with the overarching brand rather than the isolated 'X' mark, mitigating the likelihood of confusion.

Furthermore, the court scrutinized the plaintiff's trademark registration and noted the presence of multiple 'X' marks on the Trademarks Register, including device marks. Of particular relevance was a previous settlement entered into by the plaintiff with Soccer International Pvt. Ltd., involving co-existence agreements for a similar device mark. The court reasoned that the plaintiff's acceptance of co-existence with other 'X' marks in the market undermined their claim of exclusive rights over the 'X' mark.

Legal Implications:

The case underscores the significance of third-party trademark existence agreements in trademark disputes, particularly concerning interim injunctions. Trademark law aims to strike a delicate balance between protecting intellectual property rights and fostering fair competition. In this context, prior agreements between parties and the acknowledgment of co-existing trademarks play a pivotal role in assessing the strength of a claimant's case for injunctive relief.

Moreover, the court's analysis highlights the evolving nature of trademark rights and the need for a nuanced understanding of co-existence arrangements. Trademark holders must recognize the limitations of their exclusivity claims in the presence of third-party agreements and the co-existence of similar marks in the market. Failure to acknowledge such agreements may weaken a claimant's position and undermine the prospects of obtaining interim relief.

Conclusion:

The denial of the interim injunction in the trademark dispute underscores the importance of considering third-party trademark existence agreements in legal proceedings. Parties involved in trademark disputes must diligently examine prior agreements and the landscape of co-existing marks to assess the strength of their claims. Ultimately, a comprehensive understanding of third-party agreements is essential for navigating trademark disputes and seeking injunctive relief effectively.

The Case Discussed:

Case Title: Relaxo Footwears Limited Vs XS Brands Consultancy Private Limited and another

Judgment/Order Date: 03.05.2024

Case No: CS Comm 917 of 2018

Neutral Citation:2024:DHC:3971

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal.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