Mohd. Shakir Vs Gopal Traders and another

Role of Trademark Registrations in Copyright Disputes

Introduction:

The subject matter of this legal analysis revolves around a petition seeking rectification of copyright MYA, with the petitioner contending that Respondent No. 1 is not the original creator of the copyright. The petitioner alleges that a third party located outside of India holds the true authorship of the artwork MYA. However, the court dismissed the petition, highlighting the petitioner's reliance on trademark registrations by the third party as unsustainable due to procedural and evidentiary inadequacies.

Rectification of Copyright and the Burden of Proof:

Rectification of copyright involves the correction of errors or inaccuracies in the copyright register, typically concerning ownership or authorship. In the present case, the petitioner seeks rectification based on the assertion that the copyright in MYA belongs to a third party outside of India, challenging the claim of Respondent No. 1 as the originator. However, the burden rests on the petitioner to substantiate their claim with compelling evidence demonstrating the inaccuracy of the existing copyright registration.

Importance of Originator Identity and Evidence:

Central to the dispute is the identity of the true originator of the copyrighted artwork MYA. The petitioner contends that the third party, situated outside of India, holds rightful ownership of the copyright. However, the court emphasizes the necessity of incontrovertible evidence to support such claims, particularly in the absence of the third party's participation in the proceedings. The petitioner's reliance solely on trademark registrations obtained by the third party in Australia and other countries is deemed insufficient to conclusively establish their ownership of the copyright.

Role of Trademark Registrations in Copyright Disputes:

Trademark registrations serve as valuable indicators of intellectual property rights but are not inherently determinative of copyright ownership. While trademark registrations by a third party may suggest a connection to the artwork MYA, they do not inherently prove authorship or legitimate ownership of the copyright. The court rightly cautions against basing copyright rectification solely on extraneous and unverified evidence, such as trademark registrations, without corroborating evidence directly addressing copyright ownership.

The Case Discussed:

Case Title: Mohd. Shakir Vs Gopal Traders and another
Judgment/Order Date: 08.04.2024
Case No: Co Comm IPD CR 699 OF 2022
Neutral Citation: NA
Name of Court: High Court of Delhi
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 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

PM Diesels P Ltd. Vs Thukral Mechanical Works

P.M. Diesels Private Limited vs. Thukral Mechanical Works:An interim injunction cannot be granted against a registered trade mark owner unless the registration is declared invalid

Case Title: P.M. Diesels Private Limited vs. Thukral Mechanical Works
Date of Order: 19 January 1988
Neutral Citation: AIR 1988 DELHI 282, 1988(1) ARBLR 150 (DELHI), 34 (1988) DLT 235, 1988 (15) DRJ 47
Court: Delhi High Court
Judge: Hon'ble Justice Shri Justice B.N. Kirpal

Introduction:The case of P.M. Diesels Private Limited vs. Thukral Mechanical Works revolved around trademark infringement and the concept of passing off under the Trade and Merchandise Marks Act, 1958. The dispute arose regarding the use of the trade mark "Field Marshal," which both parties claimed rights over in relation to diesel oil engines and centrifugal pumps. The plaintiff sought an injunction to prevent the defendant from using the trade mark, while the defendant argued that it was the registered proprietor of the mark for centrifugal pumps. This case is significant in defining the rights of registered trade mark owners and prior users.

Factual Background:P.M. Diesels Private Limited had been engaged in the business of manufacturing, marketing, and exporting diesel oil engines, centrifugal pumps, and electric motors since 1963. It had obtained registration of the trade mark "Field Marshal" under the Trade and Merchandise Marks Act, 1958. Thukral Mechanical Works was also manufacturing centrifugal pumps and had adopted the trade mark "Field Marshal" for its products. The plaintiff alleged that the defendant was infringing its registered trade mark and engaging in passing off, which misled customers into believing that the defendant’s products were associated with the plaintiff. The plaintiff obtained an ex parte injunction on 19 December 1985, restraining the defendant from manufacturing or selling goods under the trade mark "Field Marshal." However, the defendant contested this order, arguing that it was the registered proprietor of the trade mark for centrifugal pumps, having acquired it through an assignment from Jain Industries, Agra, in 1986.

Procedural Background:The plaintiff initially filed a suit for a perpetual injunction, preventing the defendant from using the mark "Field Marshal" for diesel oil engines and related products. The Delhi High Court granted an ex parte injunction on 19 December 1985. The defendant challenged the injunction, asserting its trade mark registration for centrifugal pumps. The plaintiff subsequently filed C.O. 6/87 for rectification of the trade mark register, seeking removal of the defendant’s registration. The court considered whether the plaintiff, despite being a prior user, could restrain the defendant from using a trade mark registered in its favor.

Issues Involved:Whether the plaintiff could restrain the defendant from using the trade mark "Field Marshal" despite the defendant’s registration? Whether the defendant’s registration of the trade mark for centrifugal pumps was valid? Whether the plaintiff’s prior use of the trade mark gave it a superior right over the registered proprietor? Whether the defendant had engaged in fraudulent activities to secure the trade mark registration? Whether the principles of "passing off" were applicable in this case?

Submission of Parties:The plaintiff argued that it had been using the trade mark "Field Marshal" since 1963 and had goodwill and reputation in the market. The defendant’s use of the trade mark constituted infringement and passing off, causing confusion among consumers. The defendant had fraudulently acquired registration for centrifugal pumps and manipulated trade mark records. The plaintiff’s application for rectification should be given precedence, and an interim injunction should be maintained until a final decision on rectification.

The defendant countered that it was the registered proprietor of the trade mark for centrifugal pumps, which was assigned to it by Jain Industries, Agra. Under Section 28 of the Trade and Merchandise Marks Act, 1958, a registered proprietor had an exclusive right to use the trade mark. The plaintiff never challenged the registration when it was first granted in 1965 to Jain Industries. The plaintiff could not seek an injunction because the registration of the trade mark was prima facie valid under Section 31 of the Act.

Discussion on Judgments Cited:The plaintiff relied on Narayanan’s Trade Marks and Passing Off, which states that prior user rights override registration rights, citing Section 33 of the Trade and Merchandise Marks Act, 1958. The defendant relied on M/s. Mayor Brothers v. M/s. Watkins Mayor & Co., IA 2061/78 in Suit No. 530/78, decided on 13 April 1983, where the Delhi High Court refused to grant an injunction against a registered proprietor of a trade mark. The defendant also cited Marfleet Refining Co. v. Warden Chemicals, IA 2969/82 in Suit No. 1024/82, where the court held that an injunction cannot be granted against a registered proprietor unless the trade mark is removed from the register. The plaintiff referred to Valentine Extract Co. Ltd., (1901) 18 RPC 175, arguing that an injunction can be granted if a trade mark was fraudulently obtained. However, the court found this case inapplicable as it did not involve Sections 28 and 31 of the Indian Act.

Reasoning and Analysis of the Judge:Justice B.N. Kirpal analyzed the case based on the principles of trade mark registration, prior user rights, and passing off. Registration of the Trade Mark: Under Section 28, a registered proprietor has the exclusive right to use the trade mark. The defendant was the registered owner of the trade mark "Field Marshal" for centrifugal pumps. Prior User Rights: The plaintiff claimed prior user rights under Section 33, but this did not give the plaintiff the right to restrain a registered proprietor. Prima Facie Validity: Under Section 31, the defendant’s registration was prima facie valid, and the plaintiff had to prove fraud in rectification proceedings. Co-existence of Rights: Since both parties were registered proprietors for different goods, Section 28(3) applied, preventing one from restraining the other. Allegations of Fraud: The court held that allegations of fraudulent registration could only be decided in the rectification proceedings.

Final Decision:The court vacated the interim injunction and allowed the defendant to use the trade mark "Field Marshal" for centrifugal pumps. The defendant was required to not use the logo/style owned by the plaintiff, mention "Thukral Mechanical Works, Sirhind" on its products, and maintain accounts of sales under the trade mark.The plaintiff was allowed to pursue rectification proceedings, but until the trade mark was removed, the defendant retained its registered trade mark rights.

Law Settled in This Case:A registered proprietor has exclusive rights under Section 28 unless the trade mark is removed. Prior user rights do not automatically override trade mark registration. An interim injunction cannot be granted against a registered trade mark owner unless the registration is declared invalid. Allegations of fraud must be decided in rectification proceedings, not in an injunction application. Co-existence of trade mark rights under Section 28(3) applies if both parties have separate registrations.

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 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, Delhi High Court

Manisha Mahendra Gala and Ors Vs Shalini Bhagwan

Power of Attorney holder can depose regarding what he is having personal knowledge

Introduction:

The case at hand revolves around a property dispute wherein the plaintiffs/appellants assert their rights over a piece of land against the defendants/respondents, the Gala’s. Central to the dispute is the absence of substantial evidence to substantiate the plaintiffs' claims regarding easementary rights and the validity of the plaintiffs' legal representation. This article aims to analyze the legal intricacies surrounding the evidentiary requirements in property disputes, focusing on the principles of personal knowledge, admissibility of documents, and the burden of proof.

Evidentiary Requirements and Legal Representation:

The plaintiffs' case hinges on the deposition of Joki Woler Ruzer, their representative, who purportedly failed to provide first hand testimony to validate the claims made in the plaint. The legal framework dictates that a Power of Attorney holder can only depose on matters within their personal knowledge. They cannot attest to facts beyond their purview or predating their involvement in the legal proceedings. Therefore, the absence of Joki Woler Ruzer's testimony on pre-existing rights or easementary claims significantly weakens the plaintiffs' case.

Admissibility of Documents:

A critical aspect of the dispute is the admissibility of the Sale Deed dated 17.09.1994, which allegedly transferred rights over the disputed land to the Gala’s. The plaintiffs contend that the production of a photocopy of the Sale Deed renders it inadmissible as evidence. Legal precedents affirm that the original document holds paramount importance in establishing authenticity and admissibility. Thus, the reliance on a photocopy, without presenting the original Sale Deed, undermines the credibility of the document and, consequently, the plaintiffs' claims.

Burden of Proof and Acquisition of Easementary Rights:

Central to the dispute is the assertion of easementary rights by the Gala’s over the disputed land. However, the appellate courts and the High Court have ruled in favor of the defendants/respondents, emphasizing the lack of evidence to substantiate such claims. The burden of proof rests with the party asserting easementary rights, necessitating clear and convincing evidence of continuous and uninterrupted use of the land. In the absence of such evidence, the courts rightly dismissed the plaintiffs' claims and decreed in favor of the defendants.

Conclusion:

The case highlights the critical importance of adhering to stringent evidentiary standards in property disputes. The failure to provide firsthand testimony, produce original documents, and meet the burden of proof can significantly weaken a party's legal position.

The Case Discussed:

Case Title: Manisha Mahendra Gala and Ors Vs Shalini Bhagwan

Judgment/Order Date: 10.04.2024

Case No: Civil Appeal No. 9642 of 2010

Neutral Citation: 2024:INSC:293

Name of Court: Supreme Court of India

Name of Hon'ble Judge: Pankaj Mithal and Prashant Kumar Mishra, 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 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

Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.

Interstate Transfer of Suit in Patent Infringement dispute

Introduction:

The case at hand involves patent litigation between FMC and NATCO, encompassing multiple legal fora including the High Court of Delhi and the District Court in Chandigarh. Here I aim to provide a detailed analytical examination of the legal implications and rationale behind the transfer of suits from the District Court to the High Court of Delhi by the Hon'ble Supreme Court of India.

Background:

FMC initiated patent infringement suits against NATCO before the High Court of Delhi, with NATCO responding by filing counterclaims. Subsequently, FMC filed three additional suits against NATCO before the District Court in Chandigarh, leading to a fragmented legal landscape with parallel proceedings in different jurisdictions. Complicating matters further, the suits involved overlapping claims pertaining to the same patent, IN298645, with a concurrent revocation petition regarding claim No.12, which was also subject to the suits before the District Court.

Legal Analysis:

The central issue before the Supreme Court was the consolidation of litigation concerning the same patent and involving identical parties across multiple forums. The court recognized the potential for conflicting judgments, inefficient adjudication, and forum shopping inherent in such a scenario. Therefore, the court invoked its inherent jurisdiction to transfer the suits from the District Court in Chandigarh to the High Court of Delhi to ensure judicial efficiency, consistency, and avoidance of multiplicity of proceedings.

Implication:

The Supreme Court's decision to transfer the patent infringement suits from the District Court in Chandigarh to the High Court of Delhi exemplifies a judicious exercise of judicial authority to promote efficiency, consistency, and fairness in multi-forum litigation. By prioritizing the principles of jurisdictional unity, avoidance of forum shopping, patent law consistency, and judicial efficiency, the court advanced the interests of justice and upheld the integrity of the legal process.

The Case Discussed:

Case Title: Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.
Judgment/Order Date: 16.04.2024
Case No: Comm IP Suit No. 82 of 2023
Neutral Citation: 2024:BHC:OS:6232
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 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

Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.

Who is first in the world, is the Ultimate Test in Trademark Dispute

Background:

The case under consideration revolves around the assertion of trademark rights by the Plaintiff in the Indian market, despite the absence of actual use of the mark within India. The central contention raised by the Plaintiff pertains to the recognition and reputation of their mark in the global pharmaceutical market, which, they argue, extends to India by virtue of transborder reputation.

Key Legal Analysis:

The crux of the Court's ruling lies in its recognition of the principle that the absence of local use does not necessarily preclude the protection of trademark rights, especially if the mark enjoys transborder reputation. This principle finds resonance with established international norms, particularly the TRIPS Agreement, which acknowledges the importance of protecting trademarks with significant reputation beyond national borders.

Who is First in the World Market , is the Test:

The Court’s assertion that being first in the world market can confer protection even in the absence of local use underscores the recognition of the global interconnectedness of markets, particularly in industries where innovation and reputation play pivotal roles. In the pharmaceutical sector, where advancements in medical sciences are shared internationally, the dissemination of information through various channels such as advertisements, publications, and R&D activities can contribute significantly to the establishment of transborder reputation.

The judgment acknowledges the unique characteristics of the pharmaceutical industry, where medical practitioners, including doctors and researchers, actively engage in global exchanges of knowledge and information. The Court recognizes that the reputation of pharmaceutical products often transcends national boundaries due to the reliance of medical professionals on global advancements and research findings.

Even through advertisements, publications, and promotional activities, trans border reputation can be established.

Furthermore, the Court's emphasis on the liberal interpretation of the test of trans border reputation reflects a pragmatic approach to accommodate the complexities of modern commerce. By considering various forms of evidence, including advertisements, publications, and promotional activities, the Court acknowledges the multifaceted nature of reputation building in the pharmaceutical sector.

The Case Discussed:

Case Title: Daiwa Pharmaceuticals Co Ltd. Vs Daiwa Pharmaceuticals Pvt. Ltd.
Judgment/Order Date: 16.04.2024
Case No: Comm IP Suit No. 82 of 2023
Neutral Citation: 2024:BHC:OS:6232
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

Heifer Project International Vs Heifer Project India

Jurisdiction of Court on the basis of Defendant's Admission

Background:

This case delves into the intricacies of territorial jurisdiction concerning a legal case where the defendant contested the court's jurisdiction by claiming a shift in office location. Despite this claim, the defendant's admission of maintaining a bank account in Delhi led the court to assert its jurisdiction, citing the accrual of part of the cause of action within Delhi.

Bank Account located in Delhi:

In the case at hand, the defendant's challenge to the court's jurisdiction centred on their purported relocation of office from Delhi to Noida. However, the revelation of a Delhi-based bank account during cross-examination introduced complexities into the jurisdictional dispute, ultimately leading to the court's ruling in favor of territorial jurisdiction.

Defendant's Admission:

The defendant's denial of jurisdiction based on office relocation underscores the importance of clarity and consistency in asserting jurisdictional objections. However, the subsequent admission of maintaining a bank account in Delhi introduces a crucial contradiction that undermines the defendant's jurisdictional stance.

Implication:

The case under examination exemplifies the nuanced nature of territorial jurisdiction and its implications for legal proceedings. While the defendant initially contested the court's jurisdiction based on a claimed change in office location, the revelation of a Delhi-based bank account led to the court's assertion of territorial jurisdiction. This ruling underscores the significance of substantive connections to a jurisdiction in determining jurisdictional disputes.

The Case Discussed:

Case Title: Heifer Project International Vs Heifer Project India
Judgment/Order Date: 23.04.2024
Case No: CS Comm 542 of 2018
Neutral Citation: NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula,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

Basalingappa Chinappa Goudar and Ors Vs Shantavva and Other

Reliance of thirdparty registration in a opposition proceeding

Introduction:

Trademark opposition proceedings represent a vital stage in the trademark registration process, allowing interested parties to challenge the registration of a trademark that they believe conflicts with their own rights or the public interest. While it is customary for opponents to rely on their own trademarks as the basis for opposition, the ability to leverage third-party registrations introduces a dynamic element into these proceedings.

Legal Framework:

Under trademark law, the grounds for opposition typically encompass a range of factors, including likelihood of confusion, dilution, descriptiveness, and genericness, among others. While opponents traditionally assert their own rights based on existing trademark registrations or common law usage, the option to rely on third-party registrations expands the scope of available arguments.

In many jurisdictions, including [mention specific jurisdictions], the relevant trademark statutes and regulations explicitly permit opponents to cite third-party registrations as evidence of potential conflicts. This allowance reflects the recognition that trademarks are not viewed in isolation but within the broader context of the marketplace and existing rights.

Procedural Considerations:

In practice, the utilization of third-party registrations in trademark opposition proceedings involves several procedural considerations. Opponents must ensure that the cited registrations are relevant to the grounds of opposition being asserted and that they meet the evidentiary standards established by the relevant administrative or judicial body.

Strategic Implications:

The strategic implications of relying on third-party trademark registrations in opposition proceedings are significant. By leveraging a broader array of evidence, opponents can strengthen their case and enhance the likelihood of a successful outcome. Third-party registrations may serve as powerful indicators of the existence of similar or conflicting marks in the marketplace, bolstering arguments related to likelihood of confusion or dilution.

The Case Discussed:

Case Title: Basalingappa Chinappa Goudar and Ors Vs Shantavva and Other

Case Citation: ILR 2002 Kar 260

Name of Court: Karnatak High Court

Name of Hon'ble Judge: N.Kumar, 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 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

B.D.R Developers Pvt. Ltd. Vs Narsingh Shah

The scope of permissible amendments at the stage of Judgement

Background:

In the case at hand , an application for amendment was permitted even as the judgment was about to be pronounced, pursuant to an application under Order 12 Rule 6 of the CPC. This decision was anchored in the understanding that Order VI Rule 17 of the CPC confers upon parties the right to amend their pleadings "at any stage of the proceedings." Unlike Order IX Rule 7, which pertains specifically to the hearing stage, Rule 17's scope spans the entirety of the proceedings, affording litigants the leeway to rectify, alter, or supplement their pleadings in response to evolving circumstances or newly discovered evidence.

At any stage of the proceedings:

The phrase "at any stage of the proceedings" warrants careful examination to discern its implications. Judicial interpretation has expansively construed this provision, acknowledging that the term "stage" encompasses not only the pre-trial phase but also extends to subsequent stages, including judgment pronouncement and even the appellate process. This interpretation aligns with the objective of ensuring a fair and thorough resolution of disputes by enabling parties to refine their claims or defenses in light of evolving legal and factual complexities.

Furthermore, Order VI Rule 17 imposes a threshold requirement of due diligence on parties seeking to amend their pleadings, especially if sought after trial commencement. The court retains discretion to evaluate whether the applicant has diligently pursued the amendment and whether its allowance would prejudice the opposing party or compromise judicial integrity.

The scope of permissible amendments:

The scope of permissible amendments under Order VI Rule 17 is expansive yet circumscribed. While parties enjoy latitude in revising their pleadings to clarify or bolster their assertions, amendments must adhere to certain criteria. They should be relevant to the suit's subject matter, consistent with existing pleadings, and aimed at furthering the interests of justice. Frivolous or vexatious amendments, intended solely to cause delay or harassment, are unlikely to be sanctioned by the court.

Implications:

The court's discretion to allow or disallow amendments entails a delicate balancing act of competing interests, including the imperative of prompt resolution, the principle of litigation finality, and parties' right to effectively present their case. Courts are guided by principles of equity and fairness in wielding this discretion, striving to strike a judicious balance between the parties' interests and the overarching objective of upholding the rule of law.

The Case Discussed:

Case Title: B.D.R Developers Pvt. Ltd. Vs Narsingh Shah
Judgment/Order Date: 03.08.2021
Case No:CM M 412 of 2020
Neutral Citation: NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Asha Menon,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 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