Modi Paints and Varish Works Vs Sanjay Gupta

Non Renewed Registered Trademark are no more in existence

Introduction:

Trademark registration is a crucial aspect of intellectual property law, providing businesses with the exclusive rights to use distinctive signs to identify their products or services. However, the continued protection of a trademark depends on timely renewals. Failure to renew a trademark results in its expiration, leading to the loss of exclusive rights. This article explores the legal implications of non-renewed registered trademarks, with a focus on the case C.O. (COMM.IPD-TM) 324/2021 concerning the trademark 'MODI CRYL'.

Case Background:

Parties Involved:

The petitioner in this case was Modi Paints and Varnish Works, who sought the removal of the trademark 'MODI CRYL' under Registration No. 1689069 in Class 2. The respondents were Sanjay Gupta and Anr., with Sanjay Gupta being the proprietor of the trademark in question.

Trademark Status:

The trademark 'MODI CRYL' was registered in the name of Sanjay Gupta, but its validity expired on May 21, 2018, due to non-renewal. As of July 8, 2024, the online status report indicated that the trademark was still listed as "Registered," although its non-renewal pointed to an inevitable removal.

Legal Analysis:

Trademark Renewal and Expiration:

Under trademark law, a registered trademark must be renewed periodically to maintain its validity. The failure to renew a trademark results in its expiration, effectively removing the exclusive rights previously granted to the trademark holder. This principle was at the heart of the case involving 'MODI CRYL'.

Petition for Removal:

Modi Paints and Varnish Works filed a petition seeking the removal of the trademark 'MODI CRYL' on the grounds of non-renewal. The legal basis for this petition was straightforward: the trademark had not been renewed after its validity expired on May 21, 2018. This non-renewal rendered the trademark non-existent in the eyes of the law, and therefore, the petitioners sought formal recognition of this fact.

Court's Decision:

On July 9, 2024, the court disposed of the petition. The court noted that the trademark 'MODI CRYL' was valid only until May 21, 2018, and had not been renewed thereafter. As a result, the trademark was no longer subsisting. The court concluded that the prayer sought by the petitioners had already been satisfied by the expiration of the trademark due to non-renewal, thus rendering the petition moot.

Implications of the Decision:

Confirmation of Legal Principles:

This case reaffirms the fundamental legal principle that trademarks must be renewed to remain in force. Non-renewed trademarks lose their legal protection and are effectively considered non-existent. This outcome underscores the importance for trademark holders to diligently monitor and renew their trademarks to avoid the loss of rights.

Practical Considerations for Trademark Holders:

Trademark holders must be vigilant in managing their trademark portfolios. Regular monitoring of renewal deadlines and ensuring timely renewals are essential practices to maintain trademark protection. The failure to do so not only results in the loss of exclusive rights but also exposes the brand to potential misuse by others.

Author's Ending Note:

The case of C.O. (COMM.IPD-TM) 324/2021 serves as a clear reminder of the critical importance of trademark renewals in maintaining the legal protection of a brand. The court's decision underscores that non-renewed trademarks are effectively removed from the register, confirming their non-existence in the eyes of the law. Trademark holders must take proactive steps to ensure their trademarks are renewed in a timely manner to preserve their exclusive rights and avoid legal complications.

Case Citation: Modi Paints and Varish Works Vs Sanjay Gupta:09.07.2024: C.O. (COMM.IPD-TM) 324/2021:2024:DHC:5061: Delhi High Court, Minipushkarna, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Hoffmann-La Roche AG & Anr. Versus Zydus Lifesciences Limited

Lack of Necessary Regulatory Approval and Patent Infringement

Introduction:

The intersection of patent law and regulatory compliance forms a critical backdrop in disputes involving pharmaceutical products. This article examines the legal complexities arising from the case of Hoffmann-La Roche AG & Anr. versus Zydus Lifesciences Limited, particularly focusing on allegations of patent infringement and the defendant's launch of "Sigrima" without necessary regulatory approvals.

The Dispute:

The plaintiffs, Hoffmann-La Roche AG & Anr., holders of patents IN 268632 and IN 464646 related to "Perjeta®" (Pertuzumab), allege that the defendant, Zydus Lifesciences Limited, infringed upon these patents with their biosimilar product "Sigrima." The plaintiffs sought an interim injunction to prevent the defendant from marketing "Sigrima" in India, citing potential irreparable harm to their market position and asserting a balance of convenience in their favor.

Regulatory and Launch Issues:

Despite ongoing legal proceedings and assurances from the defendant about the lengthy regulatory approval process, "Sigrima" was launched without prior disclosure to the court. This launch occurred without providing accurate timelines for regulatory approvals, raising concerns about procedural fairness and transparency in the litigation process.

Court's Response:

Justice Sanjeev Narula, presiding over the High Court of Delhi, expressed serious reservations about the defendant's conduct. The court viewed the defendant's failure to disclose regulatory approvals and the subsequent product launch as potentially undermining the equitable handling of the case. This lack of transparency was seen as overreaching the court's process and potentially gaining an unfair advantage in the legal proceedings.

Legal Analysis:

Importance of Regulatory Compliance:

In pharmaceutical patent disputes, compliance with regulatory approvals is crucial. Launching a product without obtaining necessary regulatory clearances not only violates statutory requirements but also complicates the legal landscape. It raises questions about the defendant's adherence to regulatory norms and fair play in litigation.

Impact on Patent Infringement Claims:

The defendant's preemptive launch of "Sigrima" complicates the patent infringement claims. The plaintiffs argue that this launch undermines their exclusive rights to "Perjeta®" and could lead to substantial market competition that affects their market share and revenue.

Court's Intervention: Interim Injunction:

The court's decision to grant an interim injunction restraining the defendant from marketing "Sigrima" reflects its acknowledgment of the potential harm to the plaintiffs. This preventive measure aims to preserve the status quo until the court resolves the substantive issues of patent infringement and evaluates the defendant's conduct in light of regulatory non-compliance.

Implications for Stakeholders:

Plaintiffs:

Protection of Intellectual Property: The interim injunction safeguards the plaintiffs' patent rights and prevents potential financial losses.

Legal Strategy: The case highlights the importance of strategic legal maneuvers to protect market exclusivity amid competitive challenges.

Defendants:

Legal and Commercial Risks: Non-disclosure of regulatory approvals and premature product launch may lead to adverse legal consequences and reputational risks.

Litigation Strategy: The defendant's actions underscore the necessity of transparent and compliant conduct in litigation to maintain credibility before the court.

Conclusion:

The case of Hoffmann-La Roche AG & Anr. vs. Zydus Lifesciences Limited illustrates the intricate balance between patent protection, regulatory compliance, and procedural fairness in pharmaceutical disputes. The court's interim injunction underscores the gravity of regulatory non-compliance and its potential impact on patent litigation outcomes. It serves as a cautionary tale for stakeholders to adhere rigorously to legal and regulatory norms while navigating complex patent infringement disputes.

Author's Ending Note:

The legal landscape surrounding patent infringement and regulatory compliance demands meticulous adherence to procedural fairness and transparency. Intersection of patent law and regulatory compliance is pivotal in shaping the outcomes of intellectual property disputes. The Hoffmann-La Roche AG & Anr. vs. Zydus Lifesciences Limited case serves as a critical reminder of the implications of regulatory non-compliance on patent infringement claims and underscores the courts' vigilance in safeguarding the interests of all parties involved.

Case Citation: Hoffmann-La Roche AG & Anr. versus Zydus Lifesciences Limited:09.07.2024: CS(COMM) 159/2024:Delhi High Court, Sanjeev Narula, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

MMI Tabacco Pvt Ltd And Another Vs Iftikhar Alam

Status Quo in Trademark disputes pertaining to conflict between family members

Introduction:

The High Court of Judicature at Allahabad adjudicated the case of *M/S Mmi Tabacco Pvt Ltd And Another vs Iftikhar Alam* on July 5, 2024. This case involves a complex dispute over the trade mark "Musa-Ka-Gul," used for a tooth powder product. The appellants, M/S Mmi Tabacco Pvt Ltd and Mohd. Nazish, assert their exclusive rights to the trade mark, alleging its usage since 1974 and registration in 1994. The respondent, Iftikhar Alam, challenges this claim, contending the validity of the appellants' trade mark and asserting his right to use it based on an assignment from a previous authorized user. The procedural journey of the case, marked by temporary injunctions and remands, highlights significant aspects of trade mark law, especially in the context of family disputes and conflicting claims.

Background and Parties' Claims:

Appellants' Position:

Mmi Tabacco Pvt Ltd and Mohd. Nazish claim exclusive rights to the trade mark "Musa-Ka-Gul." They assert continuous use of the trade mark since 1974, with formal registration obtained in 1994. The appellants seek an injunction to restrain the respondent from using the trade mark.

Respondent's Position: Iftikhar Alam argues against the injunction, citing the pending rectification of the registered trade mark. Alam claims his right to use the trade mark stems from an assignment from Ishrat Jahan, who was authorized by Mohd. Islam. He contends that the appellants' trade mark differs from his and that they lack a prima facie case.

Procedural History:

The trial court initially granted a temporary injunction in favor of the appellants. However, this decision was set aside by the High Court, which remanded the matter for reconsideration. Upon remand, the trial court rejected the appellants' application for injunction, prompting further appeals and legal scrutiny.

High Court's Analysis:

The High Court's analysis reveals the complexity of the dispute, characterized by family conflicts and competing claims over the trade mark. Key points include:

Interim Injunction and Status Quo:

The High Court emphasizes that the purpose of an interim injunction is to maintain the status quo until the final resolution of the matter. The court refrains from making conclusive findings that could influence the trial court's ultimate decision.

Withdrawal Applications and Trade Mark Assignment:

The court scrutinizes the withdrawal applications of 2016, noting that they were not recognized by the Trade Marks Department. Subsequent developments, including an assignment deed dated March 28, 2019, recognize the appellants as the proprietors of the trade mark. The court concludes that the withdrawal applications cannot solely justify the dismissal of the appellants' claim for an injunction.

Conclusion and Remand:

The High Court remands the matter to the trial court for further consideration, highlighting the need to preserve the status quo. The court underlines that the trial court must fully adjudicate the claims and defenses of both parties before reaching a final determination on the merits of the trade mark dispute.

Author's Note:

The case of Mmi Tabacco Pvt Ltd And Another vs Iftikhar Alam underscores the intricate nature of trade mark disputes, particularly when intertwined with family conflicts and historical claims. The High Court's decision to maintain the status quo and avoid premature conclusions reflects a prudent approach, ensuring that the trial court can thoroughly evaluate the evidence and arguments presented by both sides.

Case Citation: MMI Tabacco Pvt Ltd And Another Vs Iftikhar Alam:05.07.2024: FAO 411 of :2024:AHC:109131:Allahabad High Court, Kshitij Shailendra, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Jaikishan Kakubjai alis Jackie Shroff Vs The Peppy Store

Protection of Personality Right

In the digital age, the intersection of personality rights, publicity rights, and trademark infringement has become increasingly complex. This case involves Mr. Jaikishan Kakubhai Shroff, popularly known as Jackie Shroff, who is suing multiple defendants for the unauthorized use of his name, image, and likeness on the internet. Mr. Shroff asserts his personality rights, publicity rights, and claims trademark infringement against the defendants.

Personality and Publicity Rights:

Personality rights protect an individual's persona from unauthorized commercial exploitation. Publicity rights are a subset, focusing on the commercial use of one's identity. Mr. Shroff asserts these rights against the defendants, emphasizing that unauthorized use of his name, image, and likeness dilutes his brand equity and infringes on his rights.

Trademark Infringement:

Mr. Shroff owns registered trademarks for 'BHIDU' under numbers 3227968 in Class 25 and 3227969 in Class 41. He also holds the mark "Bhidu ka khopcha" under number 4362494 in Class 41. These trademarks are integral to his brand identity. Unauthorized use of these trademarks by the defendants for merchandise, videos, AI chatbots, and wallpapers constitutes trademark infringement.

Personality Rights in Jurisprudence:

The case draws on precedents such as Zacchini v. Scripps-Howard Broadcasting Co, which recognized the right of individuals to control the commercial use of their persona. Indian courts have similarly upheld these rights, recognizing the commercial value of celebrity personas.

Balance with Artistic Expression:

The court balanced Mr. Shroff’s rights with the defendants' rights to artistic expression. The case explores this balance, considering the economic interests of content creators while protecting Mr. Shroff's rights.

Grant of Injunction:

The court granted injunctions against specific defendants based on a prima facie case established by Mr. Shroff. This decision prevents further unauthorized use of his persona, protecting his rights until a final judgment is reached.

Conclusion:

This is a seminal case that addresses the protection of celebrity rights in the digital era. It underscores the importance of personality and publicity rights, emphasizing the need for legal frameworks that balance these rights with artistic expression. As the digital landscape evolves, such cases will play a crucial role in shaping the legal standards for protecting celebrity personas.

Author’s Note:

This case is a pivotal moment in the legal landscape of personality and publicity rights. It serves as a reminder of the evolving nature of intellectual property rights in the digital age. Legal practitioners must navigate these complexities, ensuring that celebrities' rights are protected while fostering an environment that encourages creative expression. The decision in this case will likely influence future litigation involving personality rights and trademark infringement, setting important precedents for the protection of celebrity personas in the digital world.

Case Citation: Jaikishan Kakubjai alis Jackie Shroff Vs The Peppy Store:15.05.2024: CS(COMM) 389/2024 :2024:DHC:4046:Sanjeev Narula, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

BDR Developers Pvt. Ltd. Vs Narsingh Shah

Amendment of Pleadings When the Matter is Reserved for Judgment

Introduction:

On August 3, 2021, the High Court of Delhi pronounced a significant judgment on five petitions filed by M/s. BDR Developers Pvt Ltd. against Narsingh Shah and Shikha Shah. The petitions contested the orders passed in five separate suits initiated by the petitioner/plaintiff against various defendants, primarily for eviction, recovery of arrears of rent, and mesne profits. This case presents an intricate interplay between different provisions of the Code of Civil Procedure, 1908 (CPC), specifically Order XII Rule 6 and Order VI Rule 17.

Background of the Case:

M/s. BDR Developers Pvt Ltd. claimed to be the landlord of several premises and sought eviction and recovery of dues from the respondents/defendants. The petitioner/plaintiff had filed applications under Order XII Rule 6 of CPC, which allows the court to pronounce judgment based on admissions made by the defendants. While the court had reserved orders on this application, the respondents/defendants filed an application under Order VI Rule 17 of CPC, which pertains to the amendment of pleadings.

The petitioner/plaintiff argued that the court erred by not disposing of the application under Order XII Rule 6 before entertaining the application under Order VI Rule 17. They contended that once the matter was reserved for judgment, the court should not have considered the amendment application by the defendants. On the other hand, the respondents/defendants argued that the consideration of an application under Order VI Rule 17 was within the court’s discretion and was not barred by the pending application under Order XII Rule 6.

Legal Provisions and Court’s Analysis:

Order XII Rule 6 of CPC:

This rule empowers the court to pronounce judgment based on admissions made by the parties, without waiting for a full trial. It aims to expedite the litigation process by allowing the court to dispose of cases where there is a clear admission of facts that entitles the plaintiff to a decree.

Order VI Rule 17 of CPC:

This rule provides for the amendment of pleadings, allowing parties to make necessary alterations or additions to their claims or defenses. The court may permit such amendments at any stage of the proceedings to ensure that the real issues between the parties are adjudicated.

Court’s Findings:

The High Court of Delhi highlighted the discretionary nature of both Order XII Rule 6 and Order VI Rule 17. The court has the discretion to decide whether to pass a judgment on admissions under Order XII Rule 6 or to allow an amendment of pleadings under Order VI Rule 17. The court emphasized that the mere fact that an application under Order XII Rule 6 was pending did not preclude the consideration of an amendment application under Order VI Rule 17.

No Prohibition on Amendment Applications:

The court found that there is no legal prohibition against considering an amendment application under Order VI Rule 17, even when the court has already heard arguments on an application under Order XII Rule 6. The trial court's decision to hear the amendment application was within its discretionary powers and aimed at ensuring that all relevant issues were appropriately addressed.

Discretion and Fairness:

The court underscored the importance of judicial discretion and fairness in dealing with procedural applications. It noted that the power to amend pleadings is intended to promote substantial justice and should not be denied merely on technical grounds. The court held that the trial court acted within its jurisdiction by considering the amendment application to avoid multiplicity of proceedings and ensure a comprehensive adjudication of the real issues.

Conclusion:

The High Court of Delhi dismissed the petitions, affirming the trial court's decision to entertain the amendment application under Order VI Rule 17 of CPC. The court clarified that the order did not reflect on the merits of the applications under Order VI Rule 17 or Order XII Rule 6, and the trial court was directed to dispose of these applications in accordance with the law.

Case Citation: BDR Developers Pvt. Ltd. Vs Narsingh Shah: 03.08.2021/CM (Main) 412 of 2020/DHC/Asha Menon H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
Mob No.:+91-9990389539

ITW GSE APS Vs Dabico Airport Solutions

Interim Injunction in Patent Infringement Suit and Lack of Credible Challenge

Introduction:

The High Court of Delhi delivered a judgment on July 4, 2024, in the patent infringement case of ITW GSE APS & ANR. versus DABICO AIRPORT SOLUTIONS PVT LTD & ORS. The case, which was reserved for judgment on May 14, 2024, revolves around the alleged infringement of a registered patent (IN 330145, hereinafter referred to as the "suit patent") by the defendants. The plaintiffs, ITW GSE APS & ANR., claimed that the defendants' Pre-Conditioned Air (PCA) units infringed on their suit patent and sought a permanent injunction to restrain the defendants from dealing with the impugned products. After evaluating the arguments of parties, injunction was granted against the defendant.

Background of the Case:

The suit patent pertains to a PCA unit that supplies preconditioned air to aircraft parked on the ground. The invention specifically discloses a compressor with a Variable Frequency Drive (VFD) in each of at least two refrigeration systems of a PCA unit, where each VFD is configured to vary the power of the respective compressor. The plaintiffs argue that the defendants' PCA units infringe on their patent by incorporating these specific technical features.

The plaintiffs supported their claims by highlighting that:

The suit patent had been nationalized in India through a PCT application and granted in major jurisdictions such as the EPO, USA, and Japan.The patent had also been granted in at least five other jurisdictions worldwide.

The plaintiffs had installed PCA units at several Indian airports, including Mumbai and Bengaluru.

The defendants countered by challenging the validity of the suit patent on multiple grounds:

Obviousness and Lack of Inventive Step:

They argued that the suit patent did not meet the criteria for an inventive step and was obvious.

Double Patenting:

The defendants claimed that the plaintiffs engaged in double patenting by filing two patent applications with similar specifications, thus dealing with the same invention.

Non-compliance with the Patents Act:

They asserted that the suit patent was not patentable under Sections 3(d) and 3(f) of the Patents Act, as it was a new use of a known apparatus or merely an arrangement of known devices functioning independently in a known way.

Court’s Analysis

Validity of the Suit Patent:

The court meticulously examined the validity of the suit patent, focusing on the prior art documents D2, D6, and D14, as presented by the defendants. The analysis revealed that the defendants failed to present a credible challenge to the validity of the suit patent. The court found that the defendants’ arguments on obviousness, lack of inventive step, and double patenting were not substantiated adequately.

Obviousness and Inventive Step:

The court noted that the defendants did not convincingly demonstrate that the suit patent lacked an inventive step or was obvious. The combination of the specific technical features disclosed in the suit patent (the VFD in the refrigeration systems) was not found in the prior art, thereby upholding the novelty and inventive step of the suit patent.

Double Patenting:

On the issue of double patenting, the court examined the specifications of the two patents mentioned by the defendants (IN ‘952 and the suit patent). The court concluded that the two patents, though similar in some respects, addressed different aspects of the technology and provided distinct solutions. Therefore, the allegation of double patenting did not hold.

Non-compliance with Sections 3(d) and 3(f):

The court dismissed the defendants’ claim that the suit patent was not patentable under Sections 3(d) and 3(f). The suit patent was not merely a new use of a known apparatus nor an arrangement of known devices functioning independently in a known way. Instead, it presented a novel and non-obvious technical solution.

Principles of Patent Infringement:

The court applied the principles of patent infringement, including the mapping of essential elements and the doctrine of equivalents. The analysis involved a detailed comparison of the suit patent's claims with the elements/claims of the defendants' PCA units. The court found that the defendants' PCA units did incorporate the essential features of the suit patent, thereby constituting infringement.

Judgment and Implications:

The court found in favor of the plaintiffs, concluding that there was no credible challenge to the suit patent’s validity based on the defendants' arguments. The interim injunction against the defendants was upheld, restraining them from using, manufacturing, or selling the infringing PCA units.

Author’s Note:

This case is a significant milestone in the realm of patent litigation, especially concerning interim injunctions and the scrutiny of patent validity. The High Court of Delhi's thorough examination of the suit patent's validity and the principles of infringement highlights the rigorous standards that must be met to challenge a patent effectively. ITW GSE APS & ANR. v. DABICO AIRPORT SOLUTIONS PVT LTD & ORS. case sets a precedent for handling complex patent infringement disputes, providing clarity on the judicial approach to patent validity challenges and the application of interim injunctions in patent litigation.

Case Citation: ITW GSE APS Vs Dabico Airport Solutions: 04.07.2024: CS(COMM) 628/2023: 2024:DHC:4978: Delhi High Court: Prathiba M Singh H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539