Mallcom India Limited Vs Shanti Udyog Weldsafe Private Limited and Ors

Passing Off and Deceptive Similarity

Introduction:

The case at hand involves a dispute between two parties, each utilizing similar trademarks in the safety shoe industry. The plaintiff asserts rights over the trademark "TIGER," while the defendant employs "CDTIGER." Despite the defendant's registration of the trademark, the plaintiff claims prior usage and alleges infringement and passing off. This analysis delves into the legal intricacies surrounding trademark infringement and passing off under the Trademarks Act 1999, specifically focusing on Section 28(3) and the concept of deceptive similarity.

Trademark Infringement under Section 28(3) of the Trademarks Act 1999:

Section 28(3) of the Trademarks Act 1999 outlines the rights of a registered proprietor, affording protection against infringement. In the present case, the defendant holds registration for the trademark "CDTIGER," thereby invoking the provisions of Section 28(3) to assert their rights. The Court, guided by this provision, acknowledged the defendant's status as a registered proprietor, thereby limiting the plaintiff's ability to seek relief solely based on trademark infringement.

However, it is essential to note that the mere registration of a trademark does not preclude claims of passing off. Passing off elucidates the circumstances under which this Remedy can be granted , emphasizing factors such as similarity of marks, similarity of goods or services, likelihood of confusion, and the likelihood of detriment to the distinctive character or repute of the registered trademark. Despite the defendant's registration, the court must assess whether the plaintiff's rights have been encroached upon by considering these factors.

Passing Off and Deceptive Similarity:

Passing off is a common law remedy designed to protect the goodwill associated with a trader's business or goods. Unlike trademark infringement, passing off does not require registration of the trademark but rather focuses on the misrepresentation leading to confusion or deception in the minds of the consumers.

In the case at hand, the plaintiff, as the prior user of the trademark "TIGER," successfully argued passing off due to the deceptive similarity between the competing trademarks. The court recognized that while "CDTIGER" differs from "TIGER" by the inclusion of additional characters, the overall impression created by both marks is substantially similar. This deceptive similarity is likely to confuse consumers regarding the origin of the goods.

Conclusion:

The case underscores the complexities inherent in trademark disputes, particularly in scenarios involving competing trademarks and issues of infringement and passing off. While the defendant's registration confers certain rights under Section 28(3) of the Trademarks Act 1999, it does not immunize against claims of passing off.

The Case Discussed:

Case Title: Mallcom India Limited Vs Shanti Udyog Weldsafe Private Limited and Ors

Judgment/Order Date: 10.04.2024

Case No: CS Comm 85 of 2024

Neutral Citation: NA

Name of Court: High Court of Delhi

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 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

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

The Role of Goodwill in Passing Off Action

Introduction:

The legal dispute between P M Diesel and Thukral Mechanical Works over the trademark "FIELDMARSHAL" highlights the complexities and nuances inherent in trademark litigation. Following a protracted trial, the court ruled in favor of P M Diesel, emphasizing its extensive adoption and use of the mark since 1963. This article provides a detailed analysis of the court's observations and the legal principles governing trademark disputes, including the significance of evidence, goodwill, passing off, and entitlement to injunctive relief.

Establishing Prior Rights through Adoption and Use:

The court underscored P M Diesel's successful demonstration of its longstanding adoption and continuous use of the mark "FIELDMARSHAL" since 1963, particularly in relation to diesel oil engines and other goods. Supported by substantial sales, turnover, and a widespread network of dealers, P M Diesel effectively established its prior rights to the trademark. This highlights the importance of consistent and genuine use in substantiating ownership claims in trademark disputes.

The Role of Goodwill and Passing Off:

The court reiterated the fundamental legal principle that mere registration of a trademark does not automatically confer goodwill; rather, it is sustained use that engenders goodwill. Thukral Mechanical Works' adoption of the mark "FIELDMARSHAL" for identical goods and trade channels constituted passing off, as it created confusion among consumers due to the triple identity—identical mark, identical goods, and identical customer class.

Addressing Dishonest Adoption and Lack of Merit in Claims:

The court found Thukral Mechanical Works' adoption of the mark "FIELDMARSHAL" to be dishonest, especially given its attempt to legitimize its use through an assignment from M/s. Jain Industries, which lacked evidence of using the mark for centrifugal pumps. Thukral's assertion of honest and concurrent use lacked merit, as its use was not genuine and did not predate P M Diesel's established rights.

Entitlement to Injunctive Relief:

Despite the delay in seeking injunction for over 35 years, the court affirmed P M Diesel's entitlement to injunctive relief based on its established legal rights and the satisfaction of the criteria for granting injunctions in trademark disputes. This underscores the principle that delay in seeking relief does not necessarily disentitle a party if it can establish its case and entitlement to relief.

Conclusion:

The case of P M Diesel vs. Thukral Mechanical Works provides valuable insights into the legal principles governing trademark disputes and the importance of evidence, goodwill, passing off, and entitlement to injunctive relief. Through its ruling in favor of P M Diesel, the court reaffirmed the significance of genuine adoption and continuous use in establishing trademark rights.

The Case Discussed:

Case Title: PM Diesels P Ltd. Vs Thukral Mechanical Works
Judgment/Order Date: 02.04.2024
Case No: WP (C)-IPD No.28 of 2021
Neutral Citation: NA
Name of Court: High Court of Delhi
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 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

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