Sanjay Gupta Vs Anil Udyog

Trade Mark Rectification and the Triple Identity Test

Introduction:

This article examines a recent case involving the rectification of the trademark "SHIV GANGA" registered under No. 3274256 in Class 01 for camphor, highlighting the application of the Triple Identity Test. The Hon'ble High Court of Delhi cancelled this impugned trademark, emphasizing the absence of use by the respondent and the likelihood of confusion due to the Triple Identity Test.

Case Background:

In this case, the petitioner sought the removal of the trademark "SHIV GANGA" registered by respondent no. 1 for camphor in Class 01, dated December 15, 2011. The petitioner's trademark was applied for in Class 03 for camphor, isobornyl, and other related products, with usage dating back to 1974. Despite the differing classes (Class 01 vs. Class 03), both trademarks covered the same product—camphor. The court's decision hinged on two pivotal aspects: the non-use of the trademark by the respondent and the application of the Triple Identity Test.

Trademark Non-Use of Trademark:

Under Section 47 of the Trade Marks Act, 1999, a trademark may be subject to rectification if it has not been used for a continuous period of five years and three months from the date of registration. The burden of proof lies on the registered proprietor to show the use of the trademark. In this case, respondent no. 1 failed to provide any evidence of the use of the "SHIV GANGA" trademark. The court noted this absence of use as a primary reason for cancellation, reflecting the statutory mandate that trademarks should be actively used in commerce to maintain their registration.

The Triple Identity Test:

The doctrine of the Triple Identity Test was a cornerstone in the court's decision. Originating from the case of "Jain Electronics Vs Cobra Cables P. Ltd. and Ors., 2010 SCC OnLine Del 4199", the Triple Identity Test assesses three critical aspects to determine the likelihood of confusion:

Identity of the Marks: 

Whether the trademarks in question are identical or deceptively similar.

Identity of the Goods or Services:

 Whether the goods or services for which the trademarks are used are identical or similar.

Identity of the Trade Channels: 

Whether the goods or services are marketed through the same or similar trade channels.

In the present case, the court found that The trademarks "SHIV GANGA" and the petitioner’s mark (although not explicitly mentioned, implied to be similar) were considered identical or at least confusingly similar.Both parties were dealing with camphor, thus fulfilling the second criterion of identical goods.The court observed that camphor, regardless of its classification under different classes (Class 01 for respondent and Class 03 for petitioner), would typically be sold through similar trade channels, such as general stores, religious shops, and other retail outlets.

Given these findings, the court concluded that the simultaneous use of these trademarks was likely to cause confusion among consumers. The deceptive similarity and identical nature of the goods and trade channels satisfied the Triple Identity Test, warranting the cancellation of the impugned trademark.

 Implication:

The application of the Triple Identity Test in this case underscores its significance in trademark litigation. It provides a robust framework for evaluating the likelihood of confusion, crucial for protecting both consumer interests and the proprietary rights of trademark owners. The Delhi High Court's decision to cancel the "SHIV GANGA" trademark reiterates the importance of actual use of a trademark and the potential for consumer confusion as decisive factors in trademark rectification cases.

Conclusion:

This case highlights the necessity for trademark proprietors to actively use their marks in commerce and maintain vigilance over similar registrations. For practitioners and businesses, understanding the nuances of the Triple Identity Test can offer valuable insights into effectively managing trademark portfolios and navigating disputes. The rectification of the "SHIV GANGA" trademark demonstrates the judicial application of established legal principles to ensure fair competition and prevent consumer deception, reinforcing the essential role of trademark law in modern commerce.

Case Title: Sanjay Gupta Vs Anil Udyog

Order Date: 20.05.2024

Case No. C.O. (COMM.IPD-TM) 106/2024

Neutral Citation:NA

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Anish Dayal. 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Radico Khaitan Vs Dhampur Bio Agencies

Trademark Infringement and Passing Off in "MASTIH" Vs. "FULL MASTI" Case

Introduction:

This legal analysis delves into a recent trademark dispute between the Plaintiff, who has held a trademark registration for "MASTIH" since 1992, and the Defendant, who applied for the registration of "FULL MASTI" in 2024. The primary issues concern the likelihood of confusion, deceptive similarity, and the legal principles guiding the grant of injunctions in such cases.

Background:

The Plaintiff’s trademark "MASTIH" has been in use for over three decades, establishing significant market recognition and consumer association. In contrast, the Defendant’s application for the trademark "FULL MASTI" is recent and pending consideration. The Plaintiff argues that the Defendant’s mark is deceptively similar to its own and could mislead consumers, potentially leading to market confusion and a dilution of the Plaintiff's brand identity.

Analysis of Deceptive Similarity:

To determine trademark infringement, courts primarily assess the likelihood of confusion among consumers. This involves comparing the visual, phonetic, and conceptual similarities between the two marks. In this case, the Defendant’s mark "FULL MASTI" includes the entirety of the Plaintiff’s mark "MASTIH" with the addition of the prefix "FULL." 

Visual Similarity:

The core element "MASTI" in "FULL MASTI" is phonetically identical to "MASTIH," notwithstanding the slight variation in spelling. The prefix "FULL" does not sufficiently distinguish the marks, as the dominant portion remains identical.

Phonetic Similarity:

Both marks are pronounced similarly, enhancing the likelihood of auditory confusion. Consumers are likely to recall the shared element "MASTI/MASTIH" and may overlook the prefix, leading to misidentification.

Conceptual Similarity:

 Both marks evoke similar ideas associated with pleasure or enjoyment, further contributing to the potential for confusion.

Under trademark law, particularly in jurisdictions like the United States and India, it is a settled principle that when two marks are nearly identical or deceptively similar, and they cover similar goods or services, an injunction should follow to prevent consumer confusion. The key case law supporting this principle includes:

Consumer Confusion and Market Impact:

The court must consider the practical implications of allowing the Defendant to use "FULL MASTI." Given the Plaintiff’s long-standing use of "MASTIH," consumers have developed a recognition and trust in the brand. The introduction of a similar mark by the Defendant could lead consumers to mistakenly associate the Defendant's products with the Plaintiff, assuming they are a brand extension or a new product line from the Plaintiff.

This mistaken belief could cause significant damage to the Plaintiff’s brand equity and goodwill. The principle of "initial interest confusion" also plays a role, where consumers may initially be attracted to the Defendant’s product due to the similarity, even if they realize the difference later.

Court’s Decision and Injunction:

Given the analysis, the court is likely to find merit in the Plaintiff’s contention. The visual and phonetic similarities, coupled with the established legal principles, strongly support the issuance of an injunction. The Defendant and anyone acting on their behalf should be restrained from using "FULL MASTI" or any deceptively similar mark in connection with alcoholic beverages or related goods. This injunction aims to prevent consumer confusion, protect the Plaintiff’s brand equity, and uphold fair competition standards.

Conclusion:

Trademark law seeks to balance the interests of businesses and consumers by preventing confusion and protecting brand identity. In the case of "MASTIH" vs. "FULL MASTI," the Plaintiff's prior use and the deceptive similarity of the marks justify legal intervention. An injunction against the Defendant is appropriate to prevent consumer confusion and protect the Plaintiff's longstanding trademark rights. 

Case Title: Radico Khaitan Vs Dhampur Bio Agencies Order Date: 15.05.2024 Case No. CS(COMM) 393/2024 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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Paresh Ajitkumar Kapoor vs Controller Of Patents

Cancellation of Registered Design and Nature of prior publication 

Abstract:

This article analyzes the legal implications of the appeal filed under Section 19(2) of the Designs Act, 2000, concerning the cancellation of a registered design for an air cooler. The appeal challenges the order of cancellation passed by the Deputy Controller of Patents and Designs, which was based on alleged prior publication of the design in China. The High Court's decision to set aside the cancellation order and remand the case for fresh adjudication underscores critical legal considerations regarding prior publication and the evidentiary standards required for design cancellation under Indian law.

Fact:

The appellant, engaged in the business of designing, manufacturing, selling, and exporting industrial air coolers since 2009-2010, registered a design (No. 233559) for an air cooler on 23 December 2010. On 4 May 2021, the respondent sought the cancellation of this registered design under Section 19 of the Designs Act, 2000, claiming that the design had been previously published in China. The Deputy Controller of Patents and Designs, relying primarily on information from the China National Intellectual Property (CNIPA) website, cancelled the registration on 12 April 2023. However, the High Court subsequently set aside this order, questioning the validity of the evidence and the interpretation of what constitutes prior publication.

Finding:

The High Court's examination revealed several critical flaws in the Deputy Controller's decision. It emphasized that prior publication must be established with clear, tangible evidence that someone skilled in the relevant field can understand and apply. The publication should involve a clear, tangible depiction of the design applied to the same article, either through physical samples or detailed photographs. The six-view images presented as evidence were unverified and lacked sufficient clarity and specificity to meet these standards. Consequently, the court found that the cancellation order was based on a preconceived notion of publication without adequately addressing the legal requirements or verifying the authenticity of the evidence.

Legal Implication:

This case highlights the stringent standards for proving prior publication under the Designs Act, 2000. The ruling underscores the necessity for concrete, verifiable evidence to demonstrate that a design has been published in a manner that is accessible and comprehensible to those skilled in the field. It clarifies that mere registration of a design in another jurisdiction, without clear and tangible proof of its publication in a manner that allows replication or visualization, does not suffice to establish prior publication. The decision reinforces the protection offered to registered designs in India, ensuring that cancellation requires robust and admissible evidence.

Ratio:

The High Court's rationale centered on the definition and evidentiary standards for prior publication. The court underscored that prior publication requires the design to be disclosed in a tangible form that clearly illustrates its application to the article in question. Unverified images from a foreign website do not meet the stringent requirements for prior publication. 

Concluding Note:

The High Court's decision to set aside the cancellation of the appellant's design for an air cooler and remand the matter for fresh adjudication is a significant affirmation of the stringent standards required for proving prior publication under the Designs Act, 2000. This case serves as a crucial precedent, emphasizing the importance of verifiable and clear evidence in cancellation proceedings and reinforcing the legal protections afforded to registered designs in India. 

Case Title: Paresh Ajitkumar Kapoor vs Controller Of Patents

Order Date: 24.05.2024

Case No. AID/5/2023

Neutral Citation:NA

Name of Court: Calcutta High Court 

Name of Hon'ble Judge: Ravi Krishan Kapur. 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

Kutbuddin Kanorwala Vs Zakir Hussain Kanorwala

Defense of Section 28 of Trademarks Act 1999 when parties have registration in Different Class

 Abstract:

This article analyzes the legal intricacies of Section 28 of the Trademarks Act, 1999, particularly when parties hold trademark registrations in different classes. The focal point is a first appeal case where the appellant-plaintiff, Kutbuddin, contested an order favoring the defendant-respondent, Zakir Hussain. The case delves into the interpretation of Sections 28(3), 29, and 30(2)(e) of the Act, evaluating the exclusive rights conferred by trademark registration in distinct classes and their implications on infringement and passing off claims.

Facts:

The appellant-plaintiff, Kutbuddin, holds registered trademarks "UPKAR Spices" (Registration No.1034169) and "ZK (label)" (Registration No.481894) under Class 30 for spices. The defendant-respondent, Zakir Hussain, registered the trademark "ZK" with "Upkar Spices" under Class 35 for services (Registration No.2276741). The plaintiff alleged that the defendant's use of the trademarks infringed upon their rights, prompting a suit for permanent injunction against the defendant. During the suit, the defendant filed an application under Sections 28(3), 29, and 30(2)(e) of the Trademarks Act, which was allowed by the Additional District Judge, leading to the dismissal of both the suit and the counterclaim.

Findings:

The High Court, upon appeal, reversed the lower court's decision, emphasizing the distinct nature of trademark classes. The court noted that the appellant held valid registrations under Class 30 (goods), while the respondent's registration was under Class 35 (services). This distinction was critical in the court's analysis of the legal rights conferred by the Trademarks Act.

Section 28 of the Trademarks Act, 1999:

Sub-section (1):

Grants the registered proprietor the exclusive right to use the trademark in relation to the goods or services for which it is registered.

Sub-section (3):

 Addresses situations where multiple proprietors hold registrations for identical or similar trademarks within the same class.

The High Court underscored that Sub-section (1) of Section 28 delineates the rights based on the specific class of registration, thereby preventing overlap between "goods" and "services." Consequently, Sub-section (3) must be interpreted in harmony with Sub-section (1), reinforcing the principle that trademarks in different classes operate independently.

Sections 29 and 30(2)(e):

Section 29:

Defines infringement, including unauthorized use that causes confusion regarding the origin of goods or services.

Section 30(2)(e):Provides defenses against claims of infringement, particularly if the use is in accordance with honest practices in industrial or commercial matters.

Ratio:

The High Court's ratio decidendi hinged on the interpretation of the scope of exclusive rights under Section 28(1). By acknowledging that trademarks in different classes do not infringe upon each other's exclusive rights, the court effectively narrowed the application of Section 28(3) to scenarios within the same class. This interpretation aligns with the legislative intent to segregate the protection of trademarks for goods from those for services, thereby reducing potential conflicts.

Concluding Note:

The High Court's decision in favor of the appellant-plaintiff, Kutbuddin, reinforces the doctrine that trademark rights are class-specific under the Trademarks Act, 1999. This case sets a significant precedent by clarifying that the registration of a trademark in one class (goods or services) does not impinge upon registrations in a different class, provided there is no direct overlap or confusion. 

Case Title: Kutbuddin Kanorwala Vs Zakir Hussain Kanorwala

Order Date: 23.05.2024

Case No. S.B. Civil First Appeal No. 404/2022

Neutral Citation:2024:RJ-JD:21585

Name of Court: Rajasthan High Court 

Name of Hon'ble Judge: Vinit Kumar Mathur. 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

Global Music Injunction Pvt. Ltd. Vs Annapurna Film Pvt. Ltd. and Ors

Nature and Scope of punishment under Order 39 Rule 2A CPC for breach of injunction order

Abstract:

This article explores the nature and scope of punishment under Order 39 Rule 2A of the Code of Civil Procedure, 1908 (CPC), in the context of a breach of an injunction order. The case study involves a dispute between a Plaintiff engaged in the entertainment industry and Defendant No. 6, a popular Bhojpuri artist, over allegations of breach of an exclusive content production agreement. The Plaintiff alleged contempt by Defendant No. 6 for violating an injunction order, which later led to complex legal proceedings and a re-evaluation of contempt under Order 39 Rule 2A CPC.

Facts:

The Plaintiff, a business entity in the music and entertainment sector, and Defendant No. 6, Khesari Lal Yadav, a renowned Bhojpuri artist, entered into a Production Agreement on 27th May 2021, effective from 1st June 2021. This agreement granted the Plaintiff exclusive ownership of intellectual property rights in the content created by Defendant No. 6 during the agreement term, prohibiting him from engaging with third parties for similar content production.

Subsequently, the Plaintiff accused Defendant No. 6 of breaching this agreement by allowing third parties to promote and monetize content on YouTube. The Plaintiff sought and obtained an ex parte ad-interim injunction on 14th October 2022, restraining Defendant No. 6 from such activities. This injunction was vacated on 6th January 2023 but later reinstated with specific terms by a Division Bench on 5th September 2023.

Despite this, Defendant No. 6 accused the Plaintiff of contempt of court under Order 39 Rule 2A CPC and Section 151 CPC, alleging misrepresentation of the injunction terms to third parties, implying exclusive collaboration with the Plaintiff. On 21st February 2024, the court found prima facie contempt by the Plaintiff and directed them to issue clarificatory notices. The Plaintiff appealed, and the Division Bench remanded the case for further consideration.

Finding:

The Hon'ble Single Judge determined that the Plaintiff's actions were not bona fide mistakes. The notices issued by the Plaintiff appeared to deliberately misrepresent the terms of the injunction, likely to enforce their interests more aggressively. However, recognizing the Plaintiff’s prompt corrective measures, including issuing clarificatory notices and filing a compliance affidavit, the court acknowledged the Plaintiff's efforts to rectify the mistake.

Legal Implications:

Order 39 Rule 2A CPC provides the court with the authority to punish for disobedience of injunction orders. This case highlights the complexity of interpreting and enforcing injunction orders and the potential for misuse of court orders by parties. The Plaintiff's corrective actions, though mitigating, do not negate the initial contemptuous behavior. This sets a precedent for how courts might handle similar cases where initial contempt is followed by good-faith corrective actions.

Ratio:

The court's rationale rested on distinguishing between a bona fide mistake and deliberate misrepresentation. The Plaintiff's initial actions were deemed contemptuous due to the likely intention behind the miscommunication. However, the prompt corrective measures taken by the Plaintiff influenced the court's decision to recall the restrictions imposed on the Plaintiff, highlighting the importance of subsequent conduct in contempt proceedings.

:Concluding Note

This case underscores the delicate balance courts must maintain in enforcing injunction orders and adjudicating contempt. While the Plaintiff’s initial miscommunication was contemptuous, their proactive correction demonstrated good faith, leading to a nuanced judicial approach that avoided punitive measures. The decision emphasizes the need for parties to act transparently and responsibly when under court injunctions and the court's role in ensuring compliance without undue harshness. 

Case Title: Global Music Injunction Pvt. Ltd. Vs Annapurna Film Pvt. Ltd. and Ors

Order Date: 24.05.2024

Case No. CS(COMM) 715/2022

Neutral Citation:2024DHC:4263

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

Shrinath Travel Agencies Vs Harsh Kumar.pdf

The Hon'ble High Court of Delhi, has not only added Defendants in the suit, but also extended ex parte injunction agaist them, there by newly impleaded Defendants were also restrained from using the impugned Trademark SHRINATH. 

Case Title:  Shrinath Travel Agencies Vs Harsh Kumar

Order Date: 16.05.2024

Case No. CS(COMM) 340/2022

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

#IPAdjutor #Legalupdate #IPUpdate #Indiaip #IPlaw #IPBlog #IPRIndia #Iplawyer #Ipadvocate #IPlearning #IPRNews #Law #Legal   #AdvAjayAmitabhSuman 

Seagate Technology LLC Vs Daichi International

Giving life to the End of life product [Refurbished HDDs]

We are looking into a legal case decided by the Hon'ble High Court of Delhi, titled Seagate Technology LLC Vs Daichi International, concerning the refurbishment and sale of Hard-Disk Drives (HDDs) by refurbishers in India, with a focus on the implications of trademark infringement when original brand names are removed.

This case is significant as it sets a precedent on how refurbished goods can be marketed without infringing on the trademark rights of the original manufacturers. The Court's interpretation of Sections 30(3) and 30(4) of the Trade Marks Act serves as a guiding framework for similar disputes, ensuring that refurbishers respect the original trademarks while promoting the legal resale of end-of-life products.

Subject Matter HDDs [The End of Life product]:

Used Hard Disk Drives (HDDs) are imported by a number of Indian importers and subsequently sold to refurbishers. These refurbishers undertake a process where they remove the original "Seagate" or "Western Digital" brand names from the HDDs. After the removal of these trademarks, the refurbishers rebrand the HDDs under different names and provide an extended two-year guarantee along with them. These refurbished HDDs are no longer covered by the original manufacturer's warranty and are thus categorized as End of Life (EOL) products.

These EOL products were initially supplied to Original Equipment Manufacturers (OEMs) for integration into laptops, desktop computers, and various other electronic devices. Despite their designation as EOL, these HDDs still possess functional capabilities and are repurposed for alternative applications such as in surveillance systems or custom-built workstations.

The Refurbishment:

The refurbishment process, while extending the useful life of these HDDs, involves significant alterations, particularly the removal of original brand names, which raises legal and trademark concerns. The absence of the original warranty and the introduction of an extended guarantee by the refurbishers highlight the transition of these HDDs from their initial OEM deployment to a secondary market. The case involving Seagate Technology LLC and Daichi International thus examines the legality and implications of these practices under trademark law, particularly focusing on the balance between facilitating the reuse of technological products and protecting the trademark rights of the original manufacturers.

Plaintiff's basic contention:

The Plaintiff in this case alleged that the Defendant's actions of removing the Plaintiff's brand name from these end-of-life (EOL) hard disk drives (HDDs) and subsequently selling them as refurbished products constituted trademark impairment. The Plaintiff argued that such actions violated Sections 30(3) and 30(4) of the Trade Marks Act, 1999.

 Section 30(3) addresses the situation where the trademark has been applied without proper authorization, and Section 30(4) deals with the use of a trademark in a manner that may lead to the misrepresentation of the goods' origin or quality. The Plaintiff contended that by removing the brand name and selling the HDDs as refurbished products, the Defendant was misleading consumers and undermining the value and reputation of the Plaintiff's trademark.

Defense of Defendants:

According to rhe Defendant, The Defendant argued that they were not causing any functional impairment to the hard drives (HDDs). Instead, the plaintiffs had no use for the HDDs, as they considered them "end-of-life" and had discarded them. The original manufacturer’s warranty had expired. The Defendant claimed they were revitalizing the HDDs by repairing and refurbishing them, offering a new two-year warranty with support services. They would inspect the drives, return defective ones to the supplier, and reformat the functional ones, erasing all previous data. 

The refurbished HDDs were sold for their functionality, not aesthetics, benefiting consumers by providing a cheaper alternative. The Defendant argued that removing the branding did not violate Sections 29 or 30(4) of the Trade Marks Act, as they lawfully procured the HDDs and provided details of the transactions, including GST invoices.

The Primary Legal Issue:

The legal issue in this case centered on whether the Defendant's practice of selling refurbished hard disk drives (HDDs) after removing the original brand names and without any reference to the original manufacturers constituted trademark infringement. This issue involved determining if the Defendant's actions misled consumers regarding the origin and quality of the products, thereby potentially causing confusion and harming the reputation of the original manufacturers' trademarks. 

The court needed to consider whether the removal of the brand names and lack of attribution to the original manufacturers violated the exclusive rights granted to trademark holders under the relevant trademark laws, including protections against unauthorized use and misrepresentation.

Finding:

The court found that once the hard disk drives (HDDs) were integrated into electronic equipment and sold with a composite warranty provided by the original equipment manufacturers (OEMs), the original manufacturers, who were the plaintiffs in this case, no longer had control over the HDDs.

The plaintiffs did not extend any warranty to the end-users of the electronic equipment, effectively severing their connection with the HDDs at the point of integration into the equipment. The court observed that the defendants sold the refurbished HDDs through formal, legitimate transactions, which included the issuance of invoices and the payment of Goods and Services Tax (GST).

The plaintiffs were unable to present any evidence proving that these transactions were illegal. Their argument relied solely on the assertion that the payment of GST did not inherently legitimize the transactions. However, the court determined that this assertion was insufficient to establish any illegitimacy in the sale of the refurbished HDDs by the defendants. Consequently, the court concluded that there were no grounds to consider the defendants' sales activities as unlawful, and thus, the sale of refurbished HDDs by the defendants was deemed legitimate.

Giving Life to End of Life product:

By permitting the sale of refurbished hard disk drives (HDDs) under specific conditions, the court's ruling carefully balances the interests of the original manufacturers with the practical realities and demands of the secondary market for end-of-life (EOL) products. This decision acknowledges the necessity for a robust secondary market, allowing for the reuse and recycling of electronic components, while also protecting the rights and reputations of trademark holders. It clarifies that as long as the refurbishers adhere to legitimate business practices and the original manufacturers have no ongoing control or warranty obligations over the refurbished products, such sales do not inherently constitute trademark infringement.

Legal Implication:

This case highlights the intricacies of trademark law in the context of refurbished goods. The court's decision underscores the necessity for plaintiffs to provide concrete evidence of illegality in transactions rather than relying on assumptions about the implications of GST payments. The ruling also clarifies that the removal of original brand names from refurbished products does not inherently constitute trademark infringement if the original manufacturer has no ongoing control or warranty obligation over the products post-integration.

In the absence of ongoing control or warranty commitments from the original manufacturer, the sale of such refurbished goods, when conducted through formal and legitimate channels, does not automatically infringe on trademark rights. 

This ruling sets a precedent that mere removal of a brand name, coupled with proper commercial practices like issuing invoices and paying GST, does not, on its own, provide sufficient grounds for claiming trademark infringement. This case thus provides valuable insights into how trademark laws are applied in the context of refurbished products and the evidentiary standards required to prove illegality in such transactions.

Ratio:

The court's rationale was based on the fact that the original manufacturers lost control over the end-of-life (EOL) hard disk drives once these drives were sold to original equipment manufacturers (OEMs) and incorporated into electronic devices. With the plaintiffs' association with the HDDs ending at that point, the actions of the refurbishers were not considered trademark infringement. The court highlighted the necessity for plaintiffs to present substantial evidence to demonstrate the illegitimacy of transactions involving refurbished goods.

Conclusion:

The judgment in this case establishes a significant precedent for the sale of refurbished products and the application of trademark laws in such contexts. It highlights that trademark holders must provide compelling and substantial evidence when alleging trademark infringement, particularly in situations involving the resale of refurbished goods. The decision underscores the insufficiency of merely assuming infringement based on the act of refurbishment or the presence of formal transactions, such as the payment of Goods and Services Tax (GST).

This ruling provides guidance for future cases involving refurbished goods, emphasizing the importance of detailed evidence and the context in which refurbished products are sold. It ensures that the rights of trademark holders are protected without unduly stifling the secondary market, thereby promoting sustainability and economic efficiency in the reuse of EOL products.

Case Title: Seagate Technology LLC Vs Daichi International

Order Date: 21.05.2024

Case No. CS Comm 67 of 2024

Neutral Citation:2024:DHC:4193

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal. 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

Pidilite Industries Limited Vs Dubond Products India Pvt. Ltd.

Letters from Dealers, Having Similar Contents, Do Not Prove Use of Defendant's Trademark

Abstract:

This article examines a legal judgment where the court restrained the defendant from using the trademarks ‘LW’ and ‘LW+’. The case emphasizes the importance of genuine evidence over similar letters from different dealers to prove the use of a trademark. The defendant was denied the benefit of trademark registration due to registration in a different class and the established prior use by the plaintiff. Additionally, the defendant's adoption of a similar trademark to the plaintiff’s was found to be indicative of dishonesty.

Fact:

The plaintiff and defendant were involved in a trademark dispute where the plaintiff held registrations for the trademarks ‘LW’ and ‘LW+’ in Class 19. The defendant had a registration for a similar mark in Class 01 but was restrained from using ‘LW’ and ‘LW+’. The plaintiff demonstrated prior use of these trademarks, strengthening their claim. The defendant, previously using the mark ‘HYDROBUILD’, adopted ‘HYDROBUILD LW+’ subsequently.

The defendant provided letters from different dealers, all with similar content, as evidence of their use of the trademark. However, these letters were not found to be convincing. The court also noted that the defendant could not argue that the trademark was descriptive, generic, or common to trade since they had applied for its registration themselves.

Finding:

The court found that the plaintiff was the prior user of the trademarks ‘LW’ and ‘LW+’, thus establishing their right over the marks. The defendant’s evidence, consisting of letters from different dealers with similar content, was deemed insufficient to prove their use of the trademarks. The court further noted that the defendant's registration in a different class (Class 01) did not entitle them to use the trademarks in question, as the plaintiff's prior use and registration in Class 19 took precedence. The defendant’s subsequent adoption of ‘HYDROBUILD LW+’ after using ‘HYDROBUILD’ was viewed as an act of dishonesty.

Legal Implication:

This case underscores the principle that mere submission of letters from different dealers with similar content does not constitute credible evidence of trademark use. The decision highlights the necessity for genuine and substantial proof of use when asserting trademark rights. Furthermore, the judgment reinforces the significance of prior use in trademark disputes, particularly when registrations are in different classes. The ruling also illustrates that a defendant cannot claim a trademark to be generic or descriptive if they have sought its registration.

Ratio:

The core reasoning in the court's decision is that the plaintiff's prior use of the trademarks ‘LW’ and ‘LW+’ establishes their superior rights over the marks, regardless of the defendant's registration in a different class. The similarity in content among the letters submitted by the defendant from various dealers does not provide sufficient evidence of trademark use. Moreover, the defendant’s subsequent adoption of a similar mark to that of the plaintiff demonstrates dishonesty, further weakening their position.

Concluding Note:

The judgment serves as a crucial reminder for parties in trademark disputes to present authentic and substantial evidence of use. It reiterates that mere letters with similar content from different dealers are inadequate to prove trademark use. The case highlights the importance of prior use in establishing trademark rights and the limitations of registrations in different classes. Additionally, it underscores the judiciary's stance against dishonest practices in trademark adoption.

Case Title:Pidilite Industries Limited Vs Dubond Products India Pvt. Ltd.

Order Date: 21.05.2024

Case No. CS Comm 523 of 2023

Neutral Citation:2024:BHC:OS:8329

Name of Court: Mumbai High Court

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

Mountain Valley Springs India Private Limited Vs Baby Forest Ayurveda Private Limited

Google Search is Not Sufficient to Show Trademark Confusion

Abstract:

This article analyzes a legal judgment wherein the court denied an interim injunction sought by the plaintiff to restrain the defendants from allegedly infringing on their trademarks. The decision explores the limitations of using Google search results as evidence of trademark confusion and emphasizes the importance of substantial, tangible evidence to prove trademark infringement. The case sheds light on the legal standards and requirements for establishing trademark confusion in the context of interim injunctions.

Fact:

The plaintiff filed a suit for a permanent injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, to restrain the defendants from allegedly infringing on their trademarks ‘FOREST ESSENTIALS’, ‘BABY ESSENTIALS’, ‘FOREST ESSENTIALS-BABY ESSENTIALS’, ‘LUXURIOUS AYURVEDA’, and ‘SOUNDARYA’. The plaintiff claimed proprietorship over these marks and sought to prevent the defendants from using any deceptively similar trademarks.

The plaintiff specifically emphasized their use of ‘FOREST ESSENTIALS BABY’ and ‘FOREST ESSENTIALS-BABY ESSENTIALS’ since 2006. However, the plaintiff had not sought registration for these specific marks, despite their claimed long-term use. Documents submitted by the plaintiff indicated that the baby care products were marketed under the main brand ‘FOREST ESSENTIALS’, rather than as distinct sub-brands.

Finding:

The court found that the plaintiff’s reputation primarily revolved around the ‘FOREST ESSENTIALS’ trademark. The plaintiff failed to provide conclusive evidence that ‘FOREST ESSENTIALS BABY’ or ‘FOREST ESSENTIALS-BABY ESSENTIALS’ had been used independently of the main ‘FOREST ESSENTIALS’ trademark. The court noted that Google search results, which the plaintiff presented to demonstrate trademark confusion, were insufficient as they could be manipulated through various search algorithms and repeated searches by different individuals.

Legal Implication:

The case highlights the evidentiary standards required to prove trademark confusion in seeking an interim injunction. The reliance on Google search results was deemed inadequate due to the potential for manipulation and the inherent limitations of search algorithms. The court emphasized the need for more robust evidence, such as consumer surveys or documented instances of actual confusion, to establish a prima facie case of trademark infringement.

Ratio:

The court's decision is grounded in the principle that trademark confusion must be demonstrated through reliable and concrete evidence. Google search results, susceptible to algorithmic biases and manipulation, do not meet the legal threshold for proving confusion. The judgment underscores the necessity for plaintiffs to present clear, unambiguous evidence of trademark use and confusion, particularly when seeking interim relief.

Concluding Note:

This judgment serves as a critical reminder for trademark proprietors about the importance of thorough and substantive evidence in trademark infringement cases. Google search results alone are insufficient to demonstrate trademark confusion. Plaintiffs must provide robust evidence, such as documented instances of actual consumer confusion or comprehensive consumer surveys, to substantiate their claims.

Case Title:Mountain Valley Springs India Private Limited Vs Baby Forest Ayurveda Private Limited

Order Date: 15.05.2024

Case No. CS Comm 523 of 2023

Neutral Citation:2024:DHC:4053

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, 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

Honey well International Inc Vs The Controller of Patent

What kind of amendments in claims of Patent are permissible

Abstract:

This article examines the permissible scope of amendments to claims in a patent application under the Patents Act, 1970, in the context of an appeal against the rejection of amended claims by the Assistant Controller of Patents and Designs. The case in question involves a patent application for "Organic Fluorescent Compositions," where the appellant sought to amend the claims from a composition to the compound itself. The analysis focuses on the legal implications of such amendments and the rationale behind the court's decision to allow the amendments.

Fact;

The appellant filed a patent application (Application No. 3150/DELNP/2010) on May 5, 2010, seeking protection for "Organic Fluorescent Compositions." The original claims were Markush claims, detailing a composition comprising an organic compound with a structure according to formula I. Post-hearing, the appellant submitted written submissions with a set of amended claims, shifting the scope from "composition comprising a compound" to "the compound" itself, thus eliminating the compositional aspect. The Assistant Controller of Patents and Designs rejected these amended claims on April 28, 2017, stating that they extended beyond the scope of the originally filed claims.

Finding:

In Appeal, it was found that the amendment merely pared down the original claims without introducing new subject matter. The formula I in the amended claims remained the same as in the original claims, with the only change being the removal of the term "composition." This indicated that the scope was narrowed rather than broadened, as no new compounds were claimed, and the essence of the original invention remained intact.

Legal Implication:

Under Section 59 of the Patents Act, 1970, amendments to a patent application are permissible provided they do not introduce new matter beyond what was originally disclosed. The critical issue is whether the amendments broaden the scope of the claims or merely narrow it. In this case, the court found that the amendments were a narrowing of the claims, aligning with the statutory requirements. Therefore, the rejection by the Assistant Controller was deemed unsustainable as it misinterpreted the nature of the amendments.

Ratio:

The court's decision hinged on the interpretation that amendments which narrow the scope of the claims do not constitute new matter and are permissible under the Patents Act. The key ratio decidendi is that the deletion of the term "composition" and the focus on the "compound" did not extend beyond the original disclosure but rather specified the invention more precisely. This interpretation supports a more flexible approach to claim amendments, provided they remain within the bounds of the original invention disclosure.

Concluding Note:

The court's decision underscores the importance of understanding the permissible scope of amendments in patent claims. Amendments that narrow the claims and provide greater precision without introducing new matter are consistent with the legislative intent of the Patents Act, 1970. This case reaffirms that the protection of the original invention's essence is paramount, and technical adjustments that do not alter this essence should be allowed.

Case Title:Honey well International Inc Vs The Controller of Patent

Order Date: 21.05.2024

Case No. CA (Comm IPD Pat) 396 of 2022

Neutral Citation:2024:DHC:4712

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, 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