Atyati Technologies Private Limited Vs Cognizant Technologies Solution

Suppression of Actual Knowledge Regarding Defendant's Trademark and Vacation of Injunction Order

Introduction:

In recent litigation concerning intellectual property rights, particularly trademark infringement and passing off, the issue of suppression of material facts by the plaintiff has emerged as a critical point of contention. This article delves into the legal implications of such suppression under trademark law and explores the consequential vacation of an ex-parte injunction order.

Background of the Case:

The current legal dispute centers on the plaintiff's assertion of copyright in the ATYATI Device Mark and its registered trademarks. Allegedly, the defendants infringed upon these rights with an impugned artistic work or logo. Seeking immediate protection, the plaintiff secured an ex-parte ad-interim injunction on 19th March 2024, citing urgency in safeguarding its intellectual property.

Allegations of Suppression and Misstatements:

In response, the defendants filed an Affidavit in Reply dated 27th April 2024, contesting the continuation of the ex-parte injunction. They contended that the injunction had been improperly obtained by the plaintiff through suppression, misstatements, and false representations in their pleadings.

Legal Principles Regarding Injunctions:

Under Indian law, specifically Section 151 of the Code of Civil Procedure, 1908, and established judicial precedents, the grant of ex-parte injunctions necessitates the utmost good faith from the applicant. A plaintiff seeking such relief must disclose all material facts, including potential defenses or arguments likely to be raised by the defendants. Failure to provide full disclosure can lead to the injunction being vacated.

Analysis of the Court's Findings:

The court critically examined the plaintiff's submissions and identified a significant inconsistency. Paragraph 19 of the plaint indicated that the plaintiff first became aware of the defendant's impugned logo in October 2023. However, a Cease and Desist Notice issued by the plaintiff on 30th October 2023 contradicted this assertion by alleging that the defendants had been using the impugned logo since 2022.

Impact of Suppression on Judicial Proceedings:

This discrepancy led the court to conclude that the plaintiff's failure to disclose the information contained in the Cease and Desist Notice—particularly the fact that the defendants had been using the impugned logo since 2022—constituted suppression of material facts. Such suppression undermines the foundation of the ex-parte injunction, as the urgency claimed by the plaintiff was based on incomplete information.

Conclusion:

In light of the plaintiff's suppression of material facts concerning the timeline of the defendant's activities, the court decided that the ex-parte injunction granted on 19th March 2024 should not be continued. This decision underscores the paramount importance of full and accurate disclosure in applications for injunctions without notice. Such transparency ensures fairness and promotes integrity in judicial proceedings, particularly in disputes involving intellectual property rights.

Implications for Future Cases:

Legal practitioners and parties involved in intellectual property disputes should take note of this case as it reinforces the obligation to disclose all pertinent information when seeking injunctive relief. Courts will scrutinize applications for ex-parte injunctions to ensure that they are not obtained through suppression or misrepresentation, thereby upholding the principles of equity and justice in trademark litigation.

Case Citation: Atyati Technologies Private Limited Vs Cognizant Technologies Solution: 13.06.2024: Commercial IP Suit No.7897 of 2024:2024:BHC:OS-8665:Bombay High Court: Firsosh P. Pooniwalia. 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
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539

Prem Biyani vs Zee Entertainment Enterprises

Effect of Declaration of Well Known Trademark in Old Trademark Regime

Introduction:

The case under review involves an appeal against the Deputy Registrar of Trade Marks' order dated 19.04.2012, which rejected the appellant's application to register the word mark "ZEE" under class 5. The rejection was primarily based on the opposition from the first respondent, who claimed its trademark to have been declared as well known trademark . This article explores the factual background, court's analysis, and implications of the decision, with a specific focus on the effect of declaring a trademark as well-known.

Factual Background:

The appellant, engaged in manufacturing and marketing insecticides, has used the mark "ZEE" since 1998. Seeking legal protection, the appellant filed an application on 04.10.2000 to register the mark under class 5, which includes pharmaceuticals and related products. The application proceeded without incident through preliminary procedures and was published in the Trade Mark journal.

However, the first respondent opposed the registration, citing prior use of the word "Z" or "ZEE" in combination with other terms. The first respondent claimed to have at least 14 registrations involving "Z" or "ZEE". The Respondent No.1 also asserted that its ZEE Trademark has been declared as well known Trademark.

Court's Analysis and Decision:

The court's analysis focused on two key points:

Combination Marks and Class Registration: The first respondent's mark did not appear in isolation but was combined with other words. Additionally, none of the first respondent's marks were registered under class 5, which is crucial since the appellant's mark application pertained specifically to this class.

Well-Known Mark Doctrine: While the first respondent's mark might be considered well-known today, this was not necessarily the case in 1997. The concept of a well-known mark was not recognized under the Trade Marks Act, 1958, which was in force at the time of the appellant's application. Despite this, the Registrar invoked the well-known mark concept to decide the issue.

Under Section 12 of the Trade Marks Act, the Registrar has the discretion to impose conditions to ensure that similar marks can coexist. Section 11 is subject to Section 12, which implies that even well-known marks do not automatically override other marks. The legislative intent is to provide a balanced approach, allowing for coexistence under certain conditions.

The court found merit in the appellant's appeal, noting that the Registrar had not adequately considered whether both marks could coexist with appropriate conditions under Section 12. Consequently, the court allowed the appeal and remanded the matter back to the Trade Mark Registry for reconsideration, emphasizing the need to reassess the application in light of the observations made.

This case highlights several important implications for trademark law and practice:

Thorough Evaluation for Coexistence: The Registrar must thoroughly evaluate the potential for coexistence of similar marks across different classes. Section 12 provides the flexibility to allow similar or identical marks to coexist under specific conditions, reflecting a balanced approach that considers the interests of both parties.

Timely Decision-Making: The case underscores the importance of timely decisions by regulatory authorities. The twelve-year delay in the Registrar's decision caused undue prejudice to the appellant, emphasizing the need for efficiency in trademark application processing.

Well-Known Marks Doctrine: The declaration of a mark as well-known has significant implications, but it must be applied judiciously. The court's decision reinforces that the well-known status of a mark should not automatically preclude the registration of other similar marks, especially when they pertain to different classes or can coexist with conditions.

Legislative Intent and Judicial Interpretation: The case demonstrates the importance of adhering to legislative intent and judicial interpretation in trademark disputes. The interplay between Sections 11 and 12 of the Trade Marks Act is critical, ensuring that well-known marks do not monopolize the market to the detriment of other legitimate mark holders.

Conclusion:

The appeal against the Deputy Registrar of Trade Marks' order reveals crucial aspects of trademark law, particularly the effect of declaring a trademark as well-known. By remanding the case for reconsideration, the court has set a precedent for a balanced and judicious approach in trademark registration disputes. This decision will likely influence future cases, promoting fairness and thorough evaluation in the trademark registration process.

Case Citation: Prem Biyani vs Zee Entertainment Enterprises: 07.03.2024: OA/26/2015/TM/CHN: Madras High Court: N.Seshasayee. 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
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539

Indian Institute of Technology Vs Controller of Patent and Designs

Evaluating Lack of Inventive Step in a Patent in Absence of Experimental Data

Introduction:

This article delves into a recent appellate decision regarding the evaluation of inventive step in the absence of experimental data, specifically focusing on the case involving the method of doping potassium into ammonium perchlorate (AP) to increase burn rates in solid propellants.

Background of the Case:

The appeal was lodged against an order dated April 20, 2020, where the Controller refused the patent application under Sections 2(1)(ja), 3(d), and 3(a) of the Patents Act, 1970. The appellant's invention pertained to a method of doping potassium into AP, a process claimed to enhance the burn rates of solid propellants used in defense and space applications.

Grounds of Appeal and Legal Contentions:

Inventive Step under Section 2(1)(ja):

The appellant argued that the invention's use of filtering material without external reagents to produce a new product with enhanced burn rates constitutes an inventive step. Section 2(1)(ja) defines an inventive step as a feature of an invention that involves a technical advance compared to existing knowledge or has economic significance, or both, and is not obvious to a person skilled in the art.

Exclusion under Section 3(a):

The Appellant asserted that the objection under Section 3(a), which relates to the invention being frivolous or contrary to well-established natural laws, was not raised during the initial examination but appeared for the first time in the impugned order. The court found this inclusion to violate principles of natural justice, as the appellant was not given an opportunity to respond to this new ground, rendering this part of the Controller's decision unsustainable.

Exclusion under Section 3(d):

Section 3(d) excludes the mere discovery of a new form of a known substance unless it results in the enhancement of the known efficacy, the discovery of any new property or new use for a known substance, and the use of a known process, machine, or apparatus unless it results in a new product or employs a new reactant. The court observed that the invention's process—comprising dissolution, filtration, heating, drying, and reheating—utilized known methods without introducing a new reactant, leading to the conclusion that the invention is not patentable under this section.

Court's Analysis and Decision:

Lack of Experimental Data and Inventive Step (Section 2(1)(ja)):

The court held that for an invention to demonstrate an inventive step, it must show a technical advancement or economic significance that is not obvious to someone skilled in the field. The appellant failed to provide experimental data to substantiate the economic advantages of using filtering material over external reagents. Without such data, the court could not assess the purported economic significance, leading to the conclusion that the claimed invention lacked an inventive step.

Procedural Violation (Section 3(a)):

The court highlighted procedural lapses in invoking Section 3(a) without prior notice to the appellant. This contravention of natural justice principles rendered the Controller's decision on this ground unsupportable.

Known Processes (Section 3(d)):

Since the claimed invention employed known processes without resulting in a new product or using a new reactant, the court upheld the exclusion under Section 3(d).

Conclusion:

The appellate court's decision reaffirms the stringent requirements for establishing an inventive step under Indian patent law. The absence of experimental data to demonstrate the claimed economic benefits was pivotal in sustaining the rejection under Section 2(1)(ja). While procedural fairness led to overturning the rejection under Section 3(a), the reliance on known processes without significant advancement or new reactants substantiated the rejection under Section 3(d).

Case Citation: Indian Institute of Technology Vs Controller of Patent and Designs: 11.06.2024: OA/56/2020/PT/CHN:2024:MHC:2264: Senthil Kumar Ramamoorthy. 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
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539

Glenmark Pharmaceuticals Ltd vs Gleck Pharma Opc Pvt Ltd

Structural and Phonetic Similarity of Trademarks and Interim Injunctions

I. Introduction:

Trademark infringement cases often hinge on the concept of deceptive similarity, where the disputed marks are not identical but so similar that they are likely to cause confusion. This article explores a specific legal dispute involving the trademarks "ZITA-MET" and "XIGAMET," focusing on the legal principles related to structural and phonetic similarity whereby interim injunction was granted to the Plaintiff.

II. Factual Background:

The Plaintiff, a pharmaceutical company, markets an anti-diabetic drug under the registered trademark “ZITA-MET.” Initially, from April 2013 to January 2014, the drug contained Sitagliptin as the active molecule. In 2015, the Plaintiff modified the drug's composition to include Teneligliptin and Metformin. The trademark “ZITA-MET” is registered in Class 5, which covers pharmaceuticals.

In August 2020, the Plaintiff discovered that Defendant No.1 had applied for the trademark “XIGAMET” also in Class 5. The Plaintiff filed a suit alleging trademark infringement, arguing that “XIGAMET” was deceptively similar to “ZITA-MET.”

Defendant No.1 countered that a court order from Srinagar, dated February 19, 2024, prevented the Plaintiff from interfering with the sale and distribution of “XIGAMET.” Furthermore, the Defendant challenged the jurisdiction of the current court, claiming that they did not manufacture, sell, or stock their products within the court’s territorial jurisdiction.

III. Legal Principles:

A. Structural and Phonetic Similarity:

The determination of deceptive similarity involves both structural and phonetic analysis. Structural similarity considers the visual appearance of the marks, including the number of letters, their arrangement, and any distinctive elements. Phonetic similarity assesses how the marks sound when pronounced. Courts consider the overall impression created by the marks rather than focusing on specific elements.

B. Interim Injunction:

An interim injunction is a provisional remedy granted to prevent irreparable harm to the plaintiff during the pendency of a lawsuit. Courts considered several factors when deciding on interim injunctions i.e. Prima facie case, Balance of convenience and Irreparable harm.

IV. Analysis of the Court:

A. Structural Similarity:

The trademarks “ZITA-MET” and “XIGAMET” both consist of seven letters and share the suffix "-MET." This suffix could be interpreted as indicative of the common ingredient Metformin, used in anti-diabetic medications. The prefixes "ZITA-" and "XIGA-" both follow a consonant-vowel-consonant pattern, enhancing their structural resemblance.

B. Phonetic Similarity:

Phonetically, “ZITA-MET” and “XIGAMET” sound remarkably similar. The initial sounds "ZITA" and "XIGA" can be easily confused, especially in the pharmaceutical context where precise pronunciation by consumers might not be common. This phonetic resemblance increases the likelihood of confusion, particularly among consumers who might rely on oral recommendations or prescriptions.

C. Likelihood of Confusion:

Given that both trademarks are used for anti-diabetic drugs, the potential for confusion is significant. The similarity in structure and phonetics can lead to mistaken purchases, adversely affecting consumer safety and the Plaintiff’s business. The average consumer, even with a degree of attentiveness, might not distinguish between the two marks, especially when faced with handwritten prescriptions or verbal instructions.

V. Interim Injunction:

The Court observed that the Plaintiff has established a prima facie case of trademark infringement by demonstrating the deceptive similarity between “ZITA-MET” and “XIGAMET.” The balance of convenience favors the Plaintiff, as allowing the continued use of “XIGAMET” could cause substantial harm to its business reputation and consumer trust. The potential for irreparable harm is considerable, given the risk of consumer confusion in the pharmaceutical market. Accordingly interim injunction was granted to the Plaintiff.

VI.Conclusion:

In conclusion, the structural and phonetic similarities between “ZITA-MET” and “XIGAMET” create a high likelihood of consumer confusion, justifying the grant of an interim injunction. The Plaintiff has demonstrated a prima-facie case of trademark infringement on the basis of phonetic and structural similar between the competing Trademarks in question , resulting in grant of interim injunction in favour of Plaintiff.

Case Citation: Glenmark Pharmaceuticals Ltd vs Gleck Pharma Opc Pvt Ltd.: 13.06.2024: Commercial IP Suit No. 30149 of 2023:2024:BHC:OS:8628: Firdosha P.PooniwaliaH.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
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539

Pidilite Industries Limited Vs Astral Limited

Mosaicing and design registration

Introduction:

The issue of design registration and its infringement has become increasingly significant with the growth of industries that rely heavily on distinct packaging for branding and consumer recognition. This article delves into the legal nuances of mosaicing in the context of design registration, illustrated through a case involving the Plaintiff's M-SEAL PV SEAL containers and the Defendant's SOLVOBOND containers.

Background:

In 2018, the Plaintiff pioneered the use of Coex plastic containers for its solvent cement products, M-SEAL PV SEAL, transitioning from traditional tin containers. By 2019, these plastic containers were fully integrated into the market, completely replacing tin containers by 2023. In 2024, the Plaintiff accused the Defendant of infringing upon its design rights by marketing solvent cement products in containers under the SOLVOBOND brand, which allegedly mimicked the Plaintiff’s container design.

Legal Framework:

The Court's assessment of design infringement hinged on several core principles:

Ocular Appeal:The design's appeal to the eye as a whole is the definitive test of its validity. The Court emphasized that this assessment must be objective, avoiding subjective biases.

Whole Article Comparison:The design must be evaluated in its entirety. Isolated comparisons of individual parts, such as caps or body shapes, are impermissible.

Mosaicing: The practice of breaking down a design into constituent parts and comparing these with elements from other designs is not allowed. A design should be considered as a unique whole, not a patchwork of known designs.

Prior Art and Publications: Prior art must be substantially similar to the contested design to invalidate it. The filing of a patent application does not equate to prior publication unless it visually discloses the design in a manner recognizable to the eye.

Court's Analysis and Findings:

Ocular Appeal: The Court found that the Plaintiff’s container design appealed to the eye as a whole, fulfilling the requirement for design protection.

Comparison of Designs: The Defendant’s evidence of prior art was not sufficiently similar to the Plaintiff’s design. The Court noted substantial differences between the Plaintiff's registered design and the prior art presented by the Defendant.

Impermissible Comparisons: The Defendant’s strategy of comparing individual components (e.g., caps or bottle bodies) in isolation was rejected. The Court maintained that the design must be viewed holistically.

Mosaicing: The Court reinforced that mosaicing is not a valid defense. The Plaintiff’s design was not merely an aggregation of known designs but a distinctive, original creation. Mosaicing cannot be used to dismantle and discredit the uniqueness of a registered design.

Patent Application: The Court ruled that the Plaintiff’s prior patent application did not constitute prior publication. The application did not visually disclose the design in a way that would affect its registration validity.

Implications of the Decision:

Holistic Design Evaluation: This case underscores the importance of considering the design as an integrated whole rather than dissecting it into parts. This approach protects the unique character of a design against piecemeal challenges.

Objective Standard Application: By applying an objective standard, the Court avoids subjective biases that could undermine the consistency and fairness of design infringement rulings.

Defense Strategies: Defendants in design infringement cases should focus on presenting prior art that is substantially similar in its entirety to the contested design rather than relying on mosaicing or isolated comparisons.

Patent and Design Distinction: This case clarifies that the mere existence of a patent application does not invalidate a subsequent design registration unless the design is explicitly disclosed in a manner that is visually recognizable.

Conclusion:

The Court's ruling in favor of the Plaintiff reinforces critical principles in design registration and infringement cases. The prohibition of mosaicing and the requirement for holistic evaluation protect the integrity of registered designs. This case sets a precedent that emphasizes the need for objective standards and comprehensive comparison methods in legal assessments of design infringement.

Case Citation: Pidilite Industries Limited Vs Astral Limited: 09.05.2024: Commercial IP Suit No. 13638 of 2024:2024:BHC:OS:8629: Firdosha P.PooniwaliaH.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
D/1027/2002 [United & United]
IP Adjutor [Patent and Trademark Attorney]
Email: amitabh@unitedandunited.com
Mob No.:+91-9990389539