Glaxo Group Limited Vs IVA Healthcare Pvt. Ltd

Overview of the Case:

This is a trademark infringement lawsuit filed by Glaxo Group Limited (the plaintiffs) against Iva Healthcare Private Limited (the defendant).
The plaintiffs allege that the defendant's use of the 'ZENTOVATE' mark infringes upon the plaintiffs' registered trademarks 'BETNOVATE' and 'TENOVATE'.

The plaintiffs claim that the defendant's mark is deceptively similar to their marks, both visually and phonetically, and the defendant has adopted it with the mala fide intention of benefiting from the plaintiffs' reputation and goodwill.

Plaintiffs' Trademark Rights:

BETNOVATE Mark:

The plaintiffs have used the 'BETNOVATE' mark for their pharmaceutical and medicinal preparations for decades.

The 'BETNOVATE' mark is inherently distinctive and has acquired the status of a well-known mark under Article 6bis of the Paris Convention.

The plaintiffs have obtained over 150 registrations for the 'BETNOVATE' mark and its variations (e.g., BETNOVATE-N, BETNOVATE-S, BETNOVATE-GM) in numerous countries.

TENOVATE Mark:

The plaintiffs have been using the 'TENOVATE' mark in India since 1990 for their skin creams.

The plaintiffs' products bearing the 'TENOVATE' marks have been sold through a network of distributors and stockists throughout India, as well as online pharmacies.

Defendant's Alleged Infringement:

The defendant is engaged in manufacturing, marketing, and selling pharmaceutical and medicinal products, including creams, under the 'ZENTOVATE' mark.

The defendant's 'ZENTOVATE' mark is deceptively similar to the plaintiffs' 'BETNOVATE' and 'TENOVATE' marks, particularly due to the common letter combination 'OVATE' and the similar initial letter combinations 'ZENT' and 'BETN'.

The defendant's products are also pharmaceutical and medicinal in nature, and are sold through the same trade channels as the plaintiffs' products, targeting the same consumers.

The plaintiffs contend that the defendant has adopted the 'ZENTOVATE' mark with the mala fide intention of benefiting from the plaintiffs' reputation and goodwill.

Court's Interim Order:

The court has granted an interim injunction restraining the defendant from manufacturing products bearing the 'ZENTOVATE' mark.

Case Citation: Glaxo Group Limited Vs IVA Healthcare Pvt. Ltd: 22.07.2024: CS(COMM) 593/2024: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

Escorts Ltd Vs Sudhir Kumar

Background and Plaintiff's Allegations:

The plaintiff, Escorts Ltd., is engaged in the manufacturing and marketing of various equipment, including railway equipment.

The plaintiff had obtained registered designs for 'AAR-H type Couplers' and 'Buffer Couplers'.

The defendant, Sudhir Kumar, is a former employee of the plaintiff who was working in the Engineering Division responsible for the production of railway equipment.

The plaintiff apprehended that the defendant, after leaving the plaintiff's employment, had started a proprietary concern (defendant no. 2) and intended to use the plaintiff's registered designs to participate in a railway tender for supplying AAR-H type Couplers.

Ex-parte Ad-interim Injunction Granted:

Based on the plaintiff's apprehension, the court granted an ex-parte ad-interim injunction restraining the defendants from using or transferring the designs and data of the plaintiff's registered designs of AAR-H type Couplers.

The court also appointed a Local Commissioner to inspect the defendants' premises and seize any infringing goods or materials.

Findings from Local Commissioner's Report:

The Local Commissioner's report identified 24 infringing parts of the Couplers at the defendants' premises and also listed the machinery used for manufacturing the Couplers.

Photographs of the infringing goods were taken, and the industrial drawings/designs of the Couplers were seized and handed over to the defendants.

Court's Observations and Conclusion:

The ex-parte ad-interim injunction was granted merely on the basis of the fact that the defendant was a former employee and had applied for a railway tender, without any prima facie finding of design infringement.

The 'imminent threat of substantial damages', which was the basis for granting the quia timet action, is no longer present as the tender in question has concluded.

The plaintiff has not been able to demonstrate how the products photographed by the Local Commissioner infringe the plaintiff's registered designs, despite having access to the seized designs.

In the absence of any prima facie proof of infringement, the court concluded that the ad-interim injunction cannot be sustained any longer and vacated the order dated 5th July, 2018.

Case Citation: Escorts Ltd Vs Sudhir Kumar: 20.05.2024: CS(COMM) 271/2019: Delhi High Court: Prathiba M Singh: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Elanco Tieresundheit AG Vs Assitant Controller of Patent

This is a judgment from the High Court of Delhi in the case of Elanco Tiergesundheit AG versus The Assistant Controller of Patents and Designs, dated July 30, 2024. The case involves an appeal by Elanco Tiergesundheit AG against the rejection of their patent application for a method of preparing live vaccines by the Assistant Controller of Patents and Designs. The patent application, originally filed by Lohmann Animal Health Gmbh and later assigned to Elanco, was rejected on grounds of lack of novelty, inventive step, and sufficiency of disclosure under the Patents Act, 1970.

The appellant argued that the impugned order was passed mechanically, without proper consideration of their submissions. They pointed out that the Assistant Controller's order was a verbatim copy of the hearing notice, indicating a lack of independent reasoning. The respondent defended the rejection, citing the same grounds mentioned in the order.

Justice Mini Pushkarna, after reviewing the documents, found that the impugned order was indeed passed without independent reasoning, merely reproducing the contents of the hearing notice. The court noted that the respondent had not applied their mind to the appellant's submissions and had not provided a reasoned order. The court also emphasized the importance of recording reasons in decision-making as a basic tenet of natural justice, citing Supreme Court judgments.

The court set aside the impugned order and restored the patent application to its original position. The matter was remanded back to the respondent for fresh consideration, with instructions to provide a reasoned order within four months. The court directed that the matter be heard by an officer other than the one who passed the impugned order.

Case Citation: Elanco Tieresundheit AG Vs Assitant Controller of Patent: 30.07.2024: C.A.(COMM.IPD-PAT) 479/2022: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dr. Reddy's Laboratories Limited Vs. Zentech Pharmaceuticals

Trademark Infringement Case: Dr. Reddy's Laboratories Limited Vs. Zentech Pharmaceuticals

Key Arguments and Insights:

Trademark Infringement:

The plaintiff, Dr. Reddy's Laboratories Limited, owns the registered trademark "ZEDEX" for its cough syrup product since 1983.

The defendant, Zentech Pharmaceuticals, has adopted a deceptively similar trademark "ZEEDUX" for its cough syrup product containing the same formulation.

The defendant's use of a phonetically similar trademark and copying the plaintiff's trade dress, packaging, color scheme, and layout is to impersonate the plaintiff's well-known "ZEDEX" brand and pass off its products as those of the plaintiff.

Copyright Infringement and Unfair Competition:

The plaintiff alleges that the defendant has copied the plaintiff's unique and distinctive trade dress, packaging, color scheme, get-up, and layout for its "ZEDEX" brand, which the defendant has adopted for its "ZEEDUX" product.

This is done with the malafide and dishonest intention to ride upon the goodwill and reputation of the plaintiff's well-known "ZEDEX" trademark.

Prima Facie Case and Balance of Convenience:

The court has found that the plaintiff has established a prima facie case in its favor and that the balance of convenience is also in favor of the plaintiff.

The court has granted an interim injunction restraining the defendant from manufacturing, selling, or using the trademark "ZEEDUX" or any other deceptively similar mark that may infringe the plaintiff's "ZEDEX" trademark.

Case Citation: Dr.Reddys Laboratories Vs Zentech Pharmaceuticals: 22.07.2024: CS(COMM) 588/2024: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dr.Reddys Laboratories Vs IKon Pharmachem Pvt. Ltd.

Copyright Infringement Lawsuit: Dr. Reddy's Laboratories Limited v. Ikon Pharmachem Pvt. Ltd.

Overview of the Case:

Dr. Reddy's Laboratories Limited (the plaintiff) has filed a lawsuit against Ikon Pharmachem Pvt. Ltd. (the defendants) for copyright infringement and passing off.

The plaintiff alleges that the defendants have copied the trade dress, packaging, color scheme, and layout of the plaintiff's 'PRACTIN' strip packaging for their product 'PACYPON'.

The plaintiff claims that the defendants have intentionally copied the distinctive elements of the plaintiff's packaging to ride on the goodwill and reputation of the 'PRACTIN' brand.

Key Arguments and Evidence:

Plaintiff's Arguments:

The trademark 'PRACTIN' is a coined word with no dictionary meaning, and the plaintiff has been using the distinctive packaging since 1986.

The plaintiff's 'PRACTIN' strip packaging features a distinctive orange color scheme, layout, and get-up.

The defendants' 'PACYPON' strip packaging is a blatant copy of the plaintiff's 'PRACTIN' packaging, including the color scheme, layout, and overall get-up.

The defendants have admitted in an email that they will withdraw and not use the impugned packaging for their business anymore.

Court's Observations:

The Division Bench of the High Court of Delhi, in a previous order, recognized the plaintiff's packaging and trade dress as a source identifier and protected as an artistic work under the Copyright Act.

The Court found that the similarities in the packaging of the two products are likely to cause confusion for an average consumer with imperfect recollection, even upon closer examination.

Court's Order:

The Court is satisfied that the plaintiff has made out a prima facie case for the grant of ex-parte ad-interim injunction.

The defendants are restrained from manufacturing, marketing, selling, or offering for sale the 'PACYPON' product using the identical or substantially similar strip packaging, trade dress, get-up, and layout as the plaintiff's 'PRACTIN' product.

Case Citation: Dr.Reddys Laboratories Vs IKon Pharmachem Pvt. Ltd: 15.07.2024: CS(COMM) 571/2024: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dabur India Vs Kuldeep Gupta

Trademark Infringement Case: Dabur India Ltd. vs. Mr. Kuldeep Gupta

Plaintiff's (Dabur India Ltd.) Contentions:

Trademark and Copyright Rights:

Dabur India Ltd. is the owner of the registered trademark "DABUR RED" for its toothpaste product, which has acquired significant goodwill and reputation over the years.

The packaging, trade dress, and get-up of the "DABUR RED" toothpaste are original artistic works protected under the Copyright Act, 1957.

Dabur India Ltd. has valid and subsisting trademark registrations for the "DABUR RED" mark, which it has periodically renewed.

Defendant's (Mr. Kuldeep Gupta) Alleged Infringement:

The defendant, who is the sole-proprietor of Real Herbal Cosmetics, has registered the mark "Devson Care Red" in Class 3.

The defendant's "Devson Care Red" toothpaste product has a label/carton/packaging/get-up that is deceptively similar to Dabur India Ltd.'s "DABUR RED" toothpaste.

The defendant has cleverly imitated and substantially reproduced the plaintiff's trademark, packaging, and trade dress, causing irreparable loss, injury, damage, and prejudice to Dabur India Ltd.

Plaintiff's Claim and Relief Sought:

Dabur India Ltd. has established a prima facie case, and the balance of convenience is in its favor. Dabur India Ltd. will suffer irreparable injury unless the defendant is restrained from carrying out its activities.

Dabur India Ltd. seeks a permanent injunction restraining the defendant from selling, offering for sale, exporting, or advertising its "Devson Care Red" toothpaste under the infringing label/carton/packaging/get-up.

Court's Observations and Order:

The court granted an interim injunction restraining the defendant and its associates from selling, offering for sale, exporting, or advertising the "Devson Care Red" toothpaste under the infringing label/carton/packaging/get-up.

Case Citation: Dabur India Vs Kuldeep Gupta: 18.07.2024: CS(COMM) 579/2024: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

Christian Louboutin Vs Nakul Bajaj

Background:

The plaintiff, Christian Louboutin SAS, is a manufacturer of luxury shoes and claims to enjoy goodwill and trademark protection over its brand name, founder's name and image, and the red sole mark.

The defendants operate the website www.darveys.com, which offers for sale various products bearing the plaintiff's trademarks, without authorization.

Intermediary Liability Under Section 79 of the IT Act

Section 79 of the IT Act provides exemption from liability to intermediaries for third-party information/data hosted on their platforms.

However, this exemption is not absolute and has certain conditions - the intermediary must not initiate the transmission, select the receiver, or modify the information.

The intermediary must also observe due diligence and comply with government guidelines.

The exemption is lost if the intermediary conspires, abets, aids, or induces the commission of an unlawful act.

Factors Determining Intermediary Status:

Mere self-identification as an intermediary does not automatically qualify a platform under Section 79.

Factors like actively identifying sellers, enabling them, promoting products, selling products, collecting payments, packaging and delivering goods, etc. indicate active participation beyond that of a neutral intermediary.

The platform's policies, agreements with sellers, enforcement of terms, and measures to protect intellectual property rights are also relevant.

Liability of Darveys.com:

Darveys.com's conduct, including promoting products, providing authenticity guarantees, controlling the sales process, etc. suggest that it is not a neutral intermediary.

Its use of the plaintiff's marks, founder's name and image without authorization amounts to trademark infringement, dilution and passing off.

Darveys.com cannot claim exemption under Section 79 of the IT Act.

Orders:

Darveys.com must disclose seller details, obtain certificates of genuineness, and notify the plaintiff before offering its products.

It must remove any infringing meta-tags and take down listings of counterfeit products upon notification.

Darveys.com is directed to comply with certain measures to ensure sale of genuine products and protection of the plaintiff's intellectual property rights.

Case Citation: Christian Louboutin Vs Nakul Bajaj: 02.11.2018: CS (COMM) 344/2018:2018:DHC:7106: Delhi High Court: Prathiba M Singh: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Bardhman Agro Vs Kirorimal Kashiram

The Suit filed by the Plaintiff and the cancellation petition filed by the Defendant against registered Trademark of the Defendant were listed together in Court.

The Plaintiff submitted that the rectification petition filed by Bardhaman Agro Products needs to be heard first, as per the judgment in the case of Mr. Amrish Aggarwal Trading as Mahalaxmi Product vs. Venus Home Applicances Pvt. Ltd. & Anr.

The defendant (Bardhaman Agro Products has submitted that the plaintiff ( Kirorimal Kashiram Mkt. and Agencies) has filed additional documents that are part of both the rectification petition and the suit, and hence evidence needs to be carried out for these documents. he plaintiff (Kirorimal Kashiram Mkt. and Agencies) has disputed this contention.

The main issue is whether the rectification petition filed by Bardhaman Agro Products should be heard first before the main suit, CS(COMM) 182/2018.

The court decided that the rectification petition needs to be heard first, based on the judgment in the case of Mr. Amrish Aggarwal Trading as Mahalaxmi Product Versus Venus Home Applicances Pvt. Ltd. & Anr.

Case Citation: Bardhman Agro Vs Kirorimal Kashiram: 22.07.2024: C.O. (COMM.IPD-TM) 16/2022:Delhi High Court: Mini Pushkarna H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Anupam Saxena Vs Shiv Verma

The plaintiff, Anupam Saxena, has filed a suit against the defendants, Shiv Verma Trading as Marksons Herbal Life & Ors., for infringement of copyright, trademarks, passing off, and unfair competition. The plaintiff's product, "ADIBASI Hair Oil," is a natural herbal hair oil with a unique and distinctive brand, trade dress, label, and packaging.

The plaintiff claims that the defendants have replicated the plaintiff's registered trademarks, trade dress, and overall look and feel of the products, leading to consumer confusion and potential harm to the plaintiff's brand reputation.

The plaintiff's trademark "ADIBASI Hair Oil" is registered in India and is valid and subsisting. The plaintiff has also applied for various other trademarks containing the "ADIBASI" brand, which are currently pending.

The defendants' product closely mirrors the plaintiff's established products, including the packaging, design elements, and overall presentation.

The defendants' use of the impugned products is likely to confuse consumers regarding the origin of the goods, leading to significant consumer confusion and potential harm to the plaintiff's brand reputation.

The court found that the plaintiff has established a prima facie case in its favor and that the balance of convenience is in favor of the plaintiff.

Accordingly the court restrained the defendants from using the impugned products under the mark, trade dress, and label that are identical or deceptively similar to the plaintiff's registered trademarks "ADIBASI HAIR OIL" and "ADIBASI."

Case Citation: Anupam Saxena Vs Shiv Verma: 26.07.2024: CS Comm 610 of 2024:Delhi High Court: Mini Pushkarna H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Alok Kumar Indurkhya Vs The State Of Madhya Pradesh

The Collector of Jabalpur issued directions to lodge FIRs against various entities, including school managements, book sellers, and publishers, based on complaints received from parents. The FIRs allege that the book sellers, in conspiracy with school managements and publishers, charged exorbitant prices for books and used forged International Standard Book Numbers (ISBNs). The book sellers are alleged to have been selling books with forged or duplicate ISBN codes.

The Book Sellers alleged that the same are innocent and have been falsely implicated. There are no allegations of forgery or cheating against the book sellers. Mentioning or not mentioning an ISBN on a book is irrelevant and does not attract any penal action.

The Court noted that the FIRs and the enquiry reports submitted by the committees prima facie implicate the book sellers in the alleged offenses.

The Court observed that the matter is at the investigation stage, and the allegations against the book sellers, including the seizure of books with forged or duplicate ISBNs, are serious in nature. Considering the nature of the allegations, the Court did not inclined to grant bail to the book sellers at this stage. Accordingly, the Court dismissed the bail applications filed by the book sellers.

Case Citation: Alok Kumar Indurkhya Vs The State Of Madhya Pradesh: 09.07.2024: Misc Crl.Case No. 24947 of 19.07.2024:Madhya Pradesh High Court: Maninder S Bhatti. H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Kunj Roller Flour M Ills Pvt. Ltd. Vs New Ristha Agro India

The case before the High Court at Calcutta involves a trademark dispute between Kunj Roller Flour Mills Pvt. Ltd. (the appellant) and New Ristha Agro India Ltd. (the respondent). The appellant, a manufacturer of various food products under the brand name "Rishta," filed a suit against the respondent for infringing its trademark and passing off its products as those of the appellant. The appellant has been using the trademark "Rishta" since 2000 and claims to have acquired significant goodwill and reputation in the market. The respondent, on the other hand, claims to have been using the trademark "Rishta" since 1995 and argues that it is the prior user of the mark. The respondent also claims to have obtained registration for the trademark in Class 30.

The trial court granted a temporary injunction restricting the respondent from using the trademark "Rishta" for edible vegetable oil only, pending the suit's disposal. The appellant appealed against this order, arguing that the injunction should not be limited to edible vegetable oil, as they are the prior user of the trademark across various food products. The respondent filed cross-objections, asserting that the injunction should not have been granted at all, as they are the prior user and registered owner of the trademark.

The High Court, after considering the arguments and evidence presented by both parties, found that the appellant had established a strong prima facie case for being the prior user of the trademark "Rishta." The court noted that the appellant had provided evidence of continuous and extensive use of the trademark since 2000, including sales volumes and promotional expenses. In contrast, the respondent's evidence of prior use since 1995 was not substantiated with reliable documents.

The High Court modified the trial court's order, extending the temporary injunction to restrain the respondent from passing off any food items and edible oils under the trademark "Rishta" until the suit is disposed of. The appeal was allowed to this extent, and the cross-objection filed by the respondent was dismissed. The court emphasized the importance of goodwill and reputation in the market in relation to a trademark and the rights of a prior user in a passing off action.

Case Citation: Kunj Roller Flour M Ills Pvt. Ltd. Vs New Ristha Agro India: 19.07.2024/FMAT No.403 of 2023 :Calcutta High Court: Harish Tandon and Madhurash Prasad. H.J.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

N.Ranga Rao & Sons Private Limited Vs Sujatha Match Works

The plaintiff claims to be a registered partnership firm engaged in manufacturing and selling incense sticks/Agarbathies and Dhoops since 1948. The plaintiff adopted and has been using the trade mark "Cycle Brand" with the device of a "Cycle" since July 1953. The plaintiff has obtained registrations for the "Cycle Brand" trade mark in various classes, including Class 34 for safety matches. The plaintiff's trade mark "Cycle Brand" has become a well-known mark and enjoys tremendous goodwill and reputation.

The defendant contended that the same has been manufacturing and marketing safety Matches under the name "Cycle" with the device of a "Cycle" since 1995. The defendant claims to be the prior user of the "Cycle" mark for safety matches. The defendant argues that Agarbathies and safety Matches are different products falling under different classes, and therefore, there is no infringement or passing off.

The court found that the defendant's use of the "CYCLE" mark with the device of a "Cycle" infringes the plaintiff's well-known registered trade mark under Section 29(4) of the Trade Marks Act. The plaintiff has established the extensive use and reputation of the "CYCLE" mark since 1954, which the defendant has dishonestly adopted.

The court held that the defendant's adoption of the "CYCLE" mark is dishonest and with the intention to ride on the plaintiff's reputation, constituting passing off. The court found that the defendant has not proved that he is the prior user of the "CYCLE" mark for safety matches, as compared to the plaintiff's prior use since 1954.

The court held that given the "well-known" status of the plaintiff's "CYCLE" mark and the allied/cognate nature of the goods, the plaintiff is entitled to claim exclusive monopoly over the "CYCLE" mark across all classes of goods and services. Based on the findings of infringement and passing off, the court granted the plaintiff's prayer for permanent injunction against the defendant.

Case Citation: N.Ranga Rao & Sons Private Limited Vs Sujatha Match Works: 12.07.2024/C.S. No.310 of 2014 :Madras High Court: P. Velmurugan H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]