Novartis AG Vs. Natco Pharma [Pre Grant Opponents and Patent Amendment[

Pre Grant Opponent and Patent Amendment

Case Title:Novartis AG vs. Natco Pharma Limited & Anr.

Date of Order: January 9, 2024

Case Number: LPA 50/2023

Neutral Citation: 2024:DHC:84:DB

Court: High Court of Delhi, New Delhi

Coram: Hon’ble Mr. Justice Yashwant Varma 

and Hon’ble Mr. Justice Dharmesh Sharma

This landmark case delves into the procedural intricacies of pre-grant opposition under the Indian Patents Act, 1970, with a focus on the Controller’s authority to amend patent claims and the corresponding rights of pre-grant opponents. The case underscores the delicate balance between protecting patentees' rights and ensuring procedural fairness for opponents, particularly in a rapidly evolving and competitive pharmaceutical landscape.

Introduction:

The case revolves around a fundamental question: to what extent should pre-grant opponents be involved during the examination and amendment process of a patent application? It arises from a decision by the Controller of Patents, where amendments to Novartis AG's patent application were approved without notifying or consulting pre-grant opponents, including Natco Pharma. The Single Judge ruled in favor of Natco, asserting that such actions violated principles of natural justice. This appeal challenges that decision, bringing to light critical issues in patent law, administrative fairness, and industrial implications.

Background:

Novartis AG, a global pharmaceutical leader, filed an Indian national phase application under the Patent Cooperation Treaty (PCT) on June 8, 2007, claiming priority from a PCT application dated November 8, 2006. The application, published on August 24, 2007, faced numerous pre-grant oppositions over the years, significantly delaying the grant process.

This case exemplifies the challenges posed by India’s pre-grant opposition mechanism, where procedural delays and multiple objections can prolong the patent grant process, affecting the commercial viability of innovations.

Brief Facts of the Case:

1. Timeline of Events:

2006-2007: Novartis filed its application (No. 4412/DELNP/2007), which was published, inviting pre-grant oppositions.

2015-2022: Ten pre-grant oppositions were filed by various parties, including Natco Pharma, Indian Pharmaceutical Alliance, and others. Hearings were frequently adjourned due to procedural complexities, requests for cross-examinations, and delays in the examination process.

2022: The Controller directed amendments to the claims, which Novartis complied with. The patent was granted on December 14, 2022.

2. Natco’s Challenge:

Natco Pharma contended that the Controller failed to notify them of amendments made to the claims during the examination process. They argued that this deprived them of a fair opportunity to oppose the revised claims, constituting a violation of natural justice.

3. Single Judge Decision:

The Single Judge set aside the Controller’s decision, holding that procedural lapses, including the failure to involve pre-grant opponents in the amendment process, warranted intervention. The judgment emphasized the importance of transparency and procedural fairness in patent prosecution.

Issues Involved:

1. Right to Be Heard:

Do pre-grant opponents have a statutory or procedural right to be heard regarding amendments to patent claims during the examination process?

2. Violation of Natural Justice:

Did the Controller’s actions, particularly the approval of amendments without notifying pre-grant opponents, breach principles of natural justice?

3. Balancing Interests:

How should the patent system balance the need for expeditious patent grants with the procedural rights of pre-grant opponents?

4. Legislative Intent:

Does the current framework under the Patents Act, 1970, provide sufficient clarity on the roles and rights of pre-grant opponents during amendments?

Submissions of the Parties:

Novartis AG:

Delays Caused by Oppositions:

Novartis highlighted that the serial filing of pre-grant oppositions significantly delayed the patent grant process, undermining the legislative intent of Section 43 of the Patents Act, which mandates expeditious patent grants.

Impact on Patent Term:

Novartis argued that 16 out of the 20 years of the patent’s term were consumed in prosecution, leaving only a limited period for commercial exploitation.

Compliance with Directions:

The company maintained that the amendments were made as per the Controller’s directions and did not necessitate fresh rounds of opposition.

Natco Pharma:

Interconnection of Processes:

Natco contended that pre-grant opposition and examination processes are intertwined, and opponents must be involved in decisions regarding amendments to ensure procedural fairness.

Denial of Opportunity:

The company argued that the Controller’s failure to notify them of the amendments deprived them of a fair chance to contest the revised claims, violating principles of natural justice.

Reasoning and Analysis by the Court:

1. Role of Pre-Grant Opponents:

The court recognized that pre-grant opposition serves as a critical mechanism to ensure the validity and robustness of granted patents. It allows third parties to raise objections on statutory grounds, thereby safeguarding public interest.

2. Principles of Natural Justice:

The court emphasized the importance of adhering to principles of natural justice, particularly transparency and fairness. It held that the Controller’s failure to notify pre-grant opponents of amendments and provide them with an opportunity to respond constituted a procedural lapse.

3. Balancing Competing Interests:

The court acknowledged the need to balance the rights of pre-grant opponents with the objective of timely patent grants. While opponents play a vital role in ensuring patent quality, prolonged delays in the grant process can undermine the commercial viability of patents and discourage innovation.

4. Critique of Single Judge’s Decision:

The Division Bench critiqued the Single Judge’s decision for overextending the procedural rights of pre-grant opponents. It noted that excessive procedural requirements could disrupt the legislative framework for patent grants, leading to inefficiencies.

5. Legislative Intent and Procedural Safeguards:

The court examined the legislative intent behind the Patents Act, noting that while pre-grant opposition is intended to be a tool for ensuring robust examination, it should not be misused to delay patent grants.

Decision:

The Division Bench set aside the Single Judge’s order and reinstated the Controller’s decision to grant the patent. It provided guidelines to ensure procedural fairness in future cases, emphasizing the need for timely communication of amendments and resolution of objections without compromising the efficiency of the patent prosecution process.

Conclusion:

This case underscores the tension between procedural fairness and the efficient functioning of the patent system. It highlights the necessity for clear procedural safeguards to prevent delays while ensuring that the rights of all stakeholders are respected. The judgment serves as a critical precedent in shaping the balance between administrative efficiency and the procedural rights of opponents in India’s patent system.

Implications for the Industry:

1. For Patent Applicants:

Encourages applicants to adopt efficient prosecution strategies to mitigate delays caused by serial oppositions.

Reinforces the importance of adhering to procedural requirements to safeguard granted patents from future challenges.

2. For Pre-Grant Opponents:

Affirms their role in ensuring the robustness of granted patents.

Clarifies procedural boundaries to prevent misuse of the opposition mechanism.

3. For the Regulatory Framework:

Calls for amendments to streamline the opposition and amendment processes.

Highlights the need for clear timelines and procedural safeguards to balance competing interests effectively.

This judgment is expected to influence the conduct of patent prosecution and opposition proceedings, fostering a more balanced and efficient patent system in India.

Supplementary Inputs:

Global Perspective: The court’s observations align with international practices, where pre-grant opposition systems aim to strike a balance between innovation and public interest.

Future Reforms: The case underscores the need for legislative amendments to address ambiguities in the Patents Act, particularly concerning the roles and rights of pre-grant opponents.

Industrial Impact: The judgment sets a precedent for pharmaceutical and biotech industries, emphasizing the importance of procedural clarity in safeguarding innovations while preventing misuse of opposition mechanisms.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Amrish Aggarwal Trading as Mahalaxmi ProductVersus Venus Home Appliances Pvt. Ltd. and another

Title: Analysis of Amrish Aggarwal vs. Venus Home Appliances Pvt. Ltd. Reconciling Rectification Proceedings and Infringement Suits under Trade Marks Act, 1999

Date of Order:Judgement:17.05.2024

Case No.CO (COMM.IPD-TM) 258/2022

Neutral Citation: 2024:DHC:3991:DB

Name of Court: Delhi High Court

Name of Hon’ble Judge: Yashwant Varma and Ravinder Dudeja

Case Title:Mr. Amrish Aggarwal Trading as Mahalaxmi Product

Versus Venus Home Appliances Pvt. Ltd. and another

Introduction

The case primarily examines the interplay between infringement suits and rectification proceedings under Section 124 of the Trademarks Act, 1999. It raises critical legal questions regarding the necessity of staying civil suits pending rectification petitions, especially after the abolition of the Intellectual Property Appellate Board (IPAB) through the Tribunal Reforms Act, 2021. The case also evaluates the correctness of previous judicial interpretations, including the controversial Sana Herbals Pvt. Ltd. vs. Mohsin Dehlvi decision.

Background

The abolition of the IPAB and the reallocation of its jurisdiction to High Courts have created uncertainty about the procedural implications of Section 124. While Section 124 mandates staying civil suits when rectification petitions are filed, the Sana Herbals judgment suggested that such stays might not be necessary since High Courts can hear both matters, potentially avoiding conflicting decisions.

Brief Facts of the Case

1. Parties:

Petitioner: Amrish Aggarwal, trading as M/s Mahalaxmi Product.

Respondent: Venus Home Appliances Pvt. Ltd.

2. Dispute:

The respondent filed a suit for trademark infringement and passing off against the petitioner. The petitioner challenged the validity of the respondent's trademark in their written statement and subsequently filed a rectification application before the High Court.

3. Procedural Issue:

The rectification application was filed before the Commercial Court could assess the prima facie tenability of the invalidity claim, raising questions about the maintainability of such an application under Section 124(1)(ii).

Issues Involved

1. Does the filing of a rectification petition automatically necessitate a stay of the civil suit under Section 124(2)?

2. Can a rectification petition be filed before the trial court evaluates the prima facie validity of the invalidity claim?

3. What is the effect of the abolition of the IPAB on the procedural requirements of Section 124?

Submissions of the Parties

1. Petitioner:

Argued that Sana Herbals correctly held that stays are unnecessary since rectification and infringement matters can now be consolidated in High Courts.

Emphasized that passing-off actions are independent of Section 124 and should not be stayed.

2. Respondent:

Contended that Section 124(2) mandates staying suits to prevent conflicting decisions.

Cited precedents, including Puma Stationer P. Ltd. vs. Hindustan Pencils Ltd., to argue that Sana Herbals misinterpreted the statutory framework.

Reasoning and Analysis by the Judges

1. Statutory Interpretation:

The court emphasized the mandatory language of Section 124(2), which states that civil suits "shall stand stayed" when rectification petitions are filed.

Justice Varma clarified that the legislative intent is to avoid conflicting rulings by prioritizing the resolution of rectification proceedings.

2. Abolition of IPAB:

The court held that the abolition of the IPAB does not alter the mandatory nature of Section 124(2). The legislature amended Section 124(1) to replace "Appellate Board" with "High Court" but retained Section 124(2), indicating its continued applicability.

3. Criticism of Sana Herbals:

The judgment rejected the Sana Herbals interpretation, stating it contradicts the statutory mandate and established precedents.

The court noted that consolidation of proceedings is not always feasible, especially when infringement suits are filed in Commercial Courts rather than High Courts.

Decision

The High Court ruled:

1. Rectification petitions filed without the trial court's prima facie assessment are not invalid but must await such assessment before proceeding.

2. Once a rectification petition is filed and deemed prima facie tenable, the civil suit must be stayed under Section 124(2).

3. The Sana Herbals judgment is overruled as inconsistent with the statutory framework and judicial precedents.

Conclusion

This judgment reaffirms the mandatory nature of Section 124(2), ensuring that rectification proceedings take precedence over civil suits. It addresses ambiguities arising from the abolition of the IPAB and restores clarity to the procedural framework governing trademark disputes.

Implications

1. Legal Certainty:

The decision eliminates confusion about the procedural requirements of Section 124, providing clear guidance to litigants.

2. Precedence of Rectification:

By prioritizing rectification proceedings, the judgment ensures that trademark validity issues are conclusively resolved before infringement suits proceed.

3. Judicial Precedent:

The judgment serves as a binding precedent, emphasizing the importance of legislative intent and statutory interpretation in resolving procedural conflicts.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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.

V. Lakshminarayanasamy Vs Siva Bhaskaren

Trademark Rectification and Passing Off

Factual Background of the Case:

The case titled V Lakshminarayanasamy Vs Siva Bhaskaren, registered as (T) OP (TM) No.165 of 2023 in the High Court of Judicature at Madras, revolves around a trademark dispute involving the mark 'SUGUNA.' The petitioner, V Lakshminarayanasamy, has been using the trademark since 1959 and holds a registered trademark in Class 7. This longstanding use and registration grant the petitioner substantial rights to the mark, positioning them as a prior user.

Conversely, the first respondent, Siva Bhaskaren, claims to be a prior user of a uniquely designed logo mark that also incorporates 'SUGUNA.' They assert that their usage is both honest and concurrent with the petitioner’s usage. This conflict raises significant legal questions regarding the validity of trademark registration and the potential for passing off.

The court was tasked with determining several pivotal issues that would shape the outcome of the trademark dispute:

Prior Use: Who between the petitioner and the first respondent can claim the status of the prior user of the mark 'SUGUNA'?

Deceptive Similarity: Is the impugned mark of the first respondent deceptively similar to the petitioner's mark, thereby risking consumer confusion?

Trademark Cancellation: Can a trademark be cancelled on the grounds of passing off, particularly if the petitioner demonstrates prior use and the potential for consumer deception?

Contentions of the Parties:Petitioner (V Lakshminarayanasamy):

The petitioner contends that they are the rightful and prior user of the mark 'SUGUNA,' having used it since 1959. Their arguments include:

Prior Use: The petitioner emphasizes that they have been using the trademark for over six decades, establishing a reputation and goodwill associated with the mark.

Deceptive Similarity: They argue that the first respondent's mark is deceptively similar to their own, which could mislead consumers and create confusion in the marketplace.

Right to Rectification: The petitioner seeks rectification of the trademark registration held by the first respondent, asserting that it violates their established rights as a prior user.

Respondent (Siva Bhaskaren):The first respondent, Siva Bhaskaren, presents several defenses:

Concurrent Use: The respondent claims that they are an honest and concurrent user of the mark and that their logo is uniquely designed, thus distinguishing it from the petitioner’s mark.

Lawful Registration: They argue that their trademark registration is lawful and should not be revoked, asserting that their usage does not infringe on the petitioner’s rights.

Reasoning

The court’s reasoning hinged on established legal principles derived from precedents such as the Parle Products case. The key points of the court's analysis included:

Essential Features of the Marks: The court underscored the importance of considering the broad and essential features of the trademarks in question. It emphasized that a comparison of the marks should not be limited to a superficial side-by-side evaluation.

Risk of Consumer Confusion: The court determined that if the essential features of the petitioner's trademark were adopted by the respondent, this could lead to confusion among consumers. The overall presentation of the marks may differ, but if the core features are similar, the potential for confusion exists.

Longstanding Registration: The petitioner’s maintenance of their trademark registration for several decades was viewed as reinforcing their claim to the mark. The court recognized that longstanding use is a strong indicator of established rights and goodwill in the market.

Final Decision

In its judgment, the court made several critical observations:

Passing Off Principle: The court ruled that if a trademark’s use in India is likely to be prevented by virtue of the law of passing off, then the trademark shall not be registered. This principle underscores the fundamental tenet that prior users have rights that must be protected against subsequent users who may create confusion.

Ruling in Favor of the Petitioner: The court ruled in favor of the petitioner, allowing the petition and directing the removal of Trademark Registration No.1171847 in Class 7 from the Register. The court concluded that the petitioner had successfully established their rights as a prior user and demonstrated the potential for consumer confusion.

.

Conclusion:

The decision in V Lakshminarayanasamy Vs Siva Bhaskaren highlights the importance of prior use and the potential for consumer confusion in trademark disputes. It reinforces the notion that the rights of prior users must be respected and that trademarks cannot be registered if their use would infringe upon the established rights of others.

This case serves as a significant reference point for future trademark disputes, particularly in interpreting the principles of passing off and the evaluation of deceptive similarity in marks. The ruling emphasizes that trademarks are not merely legal instruments but also vital components of brand identity and consumer trust, necessitating careful judicial scrutiny in conflicts.

Case Citation:.V. Lakshminarayanasamy Vs Siva Bhaskaren: 27.09.2024: (T) OP (TM) No.165 of 2023: Madras High Court: P. B. Balaji: H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

News Tamil 24 X 7 Vs Ananda Vikatan Publishers P Ltd

Success or Failure of the Plaintiff's Interlocutory Application Does Not Influence the Determination of Whether the Suit Contemplates Urgent Interim Relief Under Section 12A of the Commercial Court Act

Introduction:

The interplay between the requirements for filing a suit and the necessity for urgent interim relief is crucial in commercial litigation. This case, News Tamil 24 X 7 Vs Ananda Vikatan Publishers P Ltd, exemplifies the nuances involved in interpreting Section 12A of the Commercial Courts Act, 2015. The court’s analysis underscores that the success or failure of a plaintiff's interlocutory application does not dictate whether a suit warrants urgent interim relief. This case provides insight into the court’s approach in assessing the urgency of claims and the implications of procedural requirements.

Background of the Case: Overview of the Parties Involved:

News Tamil 24 X 7, the plaintiff, is a media organization that operates in the Tamil news sector, focusing on digital broadcasting and content dissemination. The defendant, Ananda Vikatan Publishers P Ltd, is a well-established publishing entity known for its magazines and digital platforms in Tamil Nadu. The legal dispute centers around allegations of infringement of intellectual property rights, which the plaintiff claims has resulted from the defendant's unauthorized use of its content.

Filing of the Suit:

The plaintiff filed the suit in January 2024, subsequent to a cease and desist notice issued to the defendants. This notice was a formal request for the defendants to halt their allegedly infringing activities. The plaintiff argued that the delay in filing the suit was due to the extensive documentation required to substantiate the claims, which became available only after the court re-opened following the holiday season.

Defendants' Arguments:

In response, the defendants contended that the plaint should be rejected for failing to adequately demonstrate a request for urgent interim relief, a crucial requirement under Section 12A of the Commercial Courts Act. They highlighted the plaintiff’s delay in filing the suit, suggesting that this inaction indicated a lack of urgency in addressing the alleged infringement.

Reasoning of the Court:Examination of Arguments:

The court undertook a thorough examination of the arguments presented by both parties, with a particular focus on whether the plaintiff had contravened Section 12A. This section mandates that a party seeking urgent interim relief must explicitly outline the necessity for such relief within the plaint.

Holistic Assessment Requirement:

The court underscored that the determination of whether a suit contemplates urgent interim relief is not solely the plaintiff’s prerogative. Instead, it requires a holistic assessment by the court, which involves a detailed evaluation of the nature of the suit, the cause of action, and the specific circumstances surrounding the case. This approach ensures that the court remains vigilant against parties using the request for interim relief as a strategic maneuver to circumvent procedural requirements.

Separation of Interlocutory Application from Urgency Determination:

One of the pivotal points in the court's reasoning was the clarification that the success or failure of the plaintiff's interlocutory application does not influence the determination of whether the suit itself contemplates urgent interim relief. The court emphasized that the assessment of urgency must be conducted independently of the outcome of any interlocutory applications. This demarcation is essential to prevent conflating procedural setbacks with the substantive rights of the parties involved.

Evaluation of the Plaintiff's Claims:

In reaching its conclusion, the court recognized that the plaintiff did not contravene Section 12A. The assessment of the urgency of the claims indicated that the plaintiff’s request for interim relief was indeed justified. The court acknowledged the reasons for the delay in filing the suit, including:

Extensive Documentation: The court accepted that the nature of the claims necessitated a significant amount of documentation, which required time to compile.

Attempts at Amicable Resolution: The plaintiff's efforts to resolve the matter amicably with the defendants before resorting to legal action were deemed appropriate and reflected a reasonable approach to dispute resolution.

Conclusion:

The court ultimately dismissed the application to reject the plaint, finding no grounds to conclude that the suit was barred by law. The ruling reinforces the principle that the evaluation of whether a suit contemplates urgent interim relief under Section 12A must be comprehensive and consider the plaintiff's position without being unduly influenced by procedural dynamics.

This case serves as a pivotal reference point for understanding how courts interpret statutory provisions concerning interim relief, particularly within the context of commercial disputes. The decision emphasizes the importance of ensuring that plaintiffs are afforded the opportunity to present their cases without being penalized for procedural intricacies that do not fundamentally undermine the legitimacy of their claims.

Case Citation:News Tamil 24 X 7 Vs Ananda Vikatan Publishers P Ltd: 25.09.2024: C.S(Comm Div).No.58 of 2024: Madras High Court: Senthil Kumar Ramamoorthy: H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Itc Limited Vs Arpita Agro Products Pvt Ltd

Post Assignment of Trademark, a Party Cannot Use a Similar Trademark

Introduction:

Trademark law plays a crucial role in maintaining fair competition in the marketplace and protecting consumers from confusion regarding the source of goods and services. This case involves ITC Limited, a prominent player in the fast-moving consumer goods (FMCG) sector, which faced infringement issues stemming from the defendants’ use of a trademark that was similar to its registered marks. This analysis will delve into the facts of the case, the arguments presented by both parties, the court's findings, and the resulting injunction against the defendants.

Background of the Plaintiff: Overview of ITC Limited:

ITC Limited is a major manufacturer and seller of a diverse range of products, including home care, health and hygiene items, personal care, and other FMCG products. Established as a leading brand, ITC has invested heavily in creating a strong presence in the market. The company acquired registered trademarks, namely 'NIMYLE' and 'JOR-POWR', from the defendants through assignment agreements in 2018.

Marketing and Sales Efforts:

Since acquiring these trademarks, ITC has dedicated significant resources to promote and market its 'NIMYLE' product line, which includes 'NIMEASY' and 'NIMWASH'. The company recorded impressive sales turnover, amounting to over ₹400 crores, and has invested more than ₹60 crores in marketing efforts for the 'NIMYLE' and 'NIM' family of products. These investments underscore ITC’s commitment to establishing its brand in the market and enhancing consumer recognition.

Defendants' Infringing Acts: Introduction of 'POWRNYM:

In contrast to ITC’s efforts, the defendants began marketing a floor cleaner product under the mark 'POWRNYM'. This trademark is considered a derivative of ITC’s registered trademarks, 'NIMYLE' and 'JOR-POWR'. The defendants not only adopted a similar name but also mimicked the trade dress, bottle shape, and overall packaging of ITC’s 'NIMYLE' products.

Trademark Application:

Defendant No. 1 proceeded to apply for the registration of the 'POWRNYM' trademark, which further escalated the dispute. ITC's assertion was that the adoption of this trademark constituted a direct infringement of their rights and could lead to significant consumer confusion in the marketplace.

Plaintiff’s Arguments: Breach of Assignment Agreements:

ITC contended that the defendants were bound by the assignment agreements, which explicitly prohibited them from using any confusingly similar marks after transferring all rights to 'NIMYLE' and 'JOR-POWR'. The plaintiff argued that 'POWRNYM' was phonetically, structurally, and visually similar to its registered marks, thereby constituting a breach of the agreements.

Likelihood of Confusion:

The plaintiff emphasized that the defendants' use of the impugned mark and trade dress amounted to trademark infringement and passing off. ITC expressed concern over the potential for irreparable harm, asserting that consumers would likely be misled into believing that the products originated from or were affiliated with ITC.

Defendants’ Contentions: Distinctiveness of 'POWRNYM:

The defendants contended that 'POWRNYM' is a distinct and different mark from ITC's trademarks. They claimed that their use of 'POWRNYM' commenced only after the expiry of the non-compete period specified in the assignment agreements, thereby arguing that they were within their rights to develop and market this new brand.

Meaning of 'NYM':

The defendants argued that the term 'NYM' in 'POWRNYM' referred to 'NEEM', which is a common ingredient used in various cleaning products. This claim was presented as a means to differentiate their product in the market and emphasize that the differences in composition, branding, and packaging would prevent any likelihood of confusion among consumers.

Defendants’ Defenses:Delay in Objection:

The defendants asserted that ITC did not raise any objections to the 'POWRNYM' trademark application at an earlier stage, suggesting that this delay undermined the plaintiff's claims of infringement. They highlighted instances where ITC had not acted against similar third-party marks, arguing for a lack of consistency in their enforcement of trademark rights.

Non-Use of 'JOR-POWR':

Furthermore, the defendants noted that ITC had not actively used the 'JOR-POWR' trademark in the market, which they argued weakened the plaintiff's position to claim infringement based on that particular mark.

Court's Findings and Ruling:Key Observations:

Ownership and Assignment: The court found that the defendants were the previous owners of the 'NIMYLE' and 'JOR-POWR' trademarks, having assigned all rights in these marks to ITC for ₹100 crores. This transfer of rights established a clear legal basis for ITC’s claims against the defendants.

Derivative Nature of 'POWRNYM': The court concluded that the adoption of the 'POWRNYM' mark was likely a derivative of ITC’s existing trademarks. The similarity in naming, along with the adoption of a comparable trade dress and packaging, heightened the risk of consumer confusion.

Unconvincing Explanations: The explanations provided by the defendants regarding the reasons for adopting the 'POWRNYM' mark were found to be unconvincing. The court expressed skepticism about their claims that 'NYM' referred to 'NEEM', considering the context of the existing trademark landscape.

Injunction Granted:

In light of the findings, the court granted an ad-interim injunction in favor of the plaintiff. The defendants were restrained from manufacturing, selling, or dealing with the 'POWRNYM' mark or any other mark that is deceptively similar to ITC’s 'NIMYLE', 'JOR-POWR', and the 'NIM' family of marks.

Additionally, the court dismissed the defendants’ application under Order XXXIX Rule 4 of the Civil Procedure Code (CPC), which sought to vacate the injunction.

Conclusion:

This case reinforces the principles of trademark assignment and the implications of adopting similar marks after an assignment has taken place. The court's ruling highlights the necessity of protecting established trademarks and preventing consumer confusion in the marketplace. It serves as a reminder that parties involved in trademark assignments are bound by the terms of their agreements, and any infringement or passing off will not be tolerated. The injunction granted in favor of ITC not only protects its brand but also upholds the integrity of trademark law in India.

Case Citation: Itc Limited Vs Arpita Agro Products Pvt Ltd: 08.10.2024: CS(COMM) 698/2023: 2024:DHC: 7796: Delhi High Court: Saurabh Banerjee: H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Delhi Gymkhana Club Vs Col Ashish Khanna

No Written Statement Can Be Filed Beyond 120 Days for Non-Commercial Disputes:

Background of the Case:

The case at hand revolves around a dispute between the Delhi Gymkhana Club Limited (hereinafter referred to as the "Appellant") and Col. Ashish Khanna (hereinafter referred to as the "Respondent"). Col. Khanna served as the former Secretary of the Delhi Gymkhana Club and initiated legal proceedings against the club due to ongoing internal management issues. The matter reached the National Company Law Tribunal (NCLT), which intervened by appointing a new General Committee to oversee the club's operations and restore order.

During this transitional period of management restructuring, the club found itself in a position where it failed to adhere to the statutory requirement of filing a written statement in response to the suit filed by Col. Khanna. The Delhi High Court (Original Side) Rules, 2018, under Rule 4 of Chapter VII, mandates that a written statement must be filed within a maximum period of 120 days. However, the club's inability to meet this deadline led to the emergence of significant legal questions regarding the interpretation and applicability of this rule in non-commercial disputes.

Issue of the Case:

The core issue before the court was whether the Delhi Gymkhana Club should be granted an extension of time to file its written statement, despite the expiration of the 120-day limit as stipulated by Rule 4 of the Delhi High Court (Original Side) Rules. The court needed to assess whether the circumstances surrounding the management changes provided sufficient grounds to condone the delay in filing.

Contentions of the Parties: Contentions of the Delhi Gymkhana Club:

The Appellant, the Delhi Gymkhana Club, contended that the extraordinary circumstances resulting from the NCLT's intervention, alongside the significant changes in management, warranted an extension of the statutory time limit. The club argued that these factors created a scenario that impeded their ability to prepare and file the written statement within the prescribed timeframe. They emphasized the need for flexibility in procedural requirements, especially in light of the unique circumstances affecting their internal operations.

Contentions of Col. Ashish Khanna:

On the other hand, Col. Khanna's counsel asserted that the suit in question was a non-commercial matter, leading to the interpretation that the 120-day period was directory rather than mandatory. The Respondent's counsel also highlighted that the club had submitted a written statement along with a condonation application seeking relief for the delay. This argument centered on the belief that the rules should allow for exceptions in certain situations, particularly when the litigant has made efforts to comply with procedural norms.

Issues Dealt with by the Court: The court faced a critical examination of several legal issues, including:

Interpretation of Rule 4: The primary focus was to clarify the interpretation and applicability of Rule 4 of the Delhi High Court (Original Side) Rules, which explicitly states a hard deadline of 120 days for filing written statements in non-commercial suits. The court had to determine whether this rule imposed an absolute bar on the filing of statements after the stipulated period.

Nature of the Delay: The court considered whether the change in management constituted sufficient grounds to grant an extension for filing the written statement. This included evaluating the extent of the disruption caused by the NCLT's intervention and whether it could be regarded as a valid reason for the delay.

Procedural Compliance: The court examined the importance of adhering to procedural timelines and whether deviations from these timelines could be justified under extraordinary circumstances.

Reason and Final Decision:

In its ruling, the court emphasized that the 120-day limit for filing written statements in non-commercial suits is mandatory rather than directory, according to Rule 4 of the Delhi High Court (Original Side) Rules. The court highlighted that adherence to procedural timelines is crucial for maintaining the integrity of legal processes and ensuring that litigants do not engage in dilatory tactics.

The court concluded that while the change in management presented an extraordinary situation, it did not qualify as a valid reason to extend the time limit for filing the written statement. The court reaffirmed that strict compliance with the prescribed timeline is essential for the smooth functioning of the judicial process and the prevention of abuse of procedural provisions.

Consequently, the court dismissed the appeal of the Delhi Gymkhana Club, thereby upholding the lower court's decision to close the right of the club to file a written statement. However, the court did allow the club to actively participate in the ongoing suit proceedings, which included engaging in the framing of issues and conducting cross-examinations. This decision underscored the importance of the Delhi High Court (Original Side) Rules and confirmed their precedence over the Code of Civil Procedure in matters pertaining to the High Court's original civil jurisdiction.

Conclusion:

The court's decision in this case serves as a significant reaffirmation of the importance of adhering to procedural rules, especially in the context of non-commercial disputes. The ruling not only clarifies the mandatory nature of the 120-day limit for filing written statements but also highlights the judiciary's commitment to ensuring that legal processes are not unduly delayed. This case stands as a precedent for future litigants and legal practitioners, emphasizing the necessity of timely compliance with procedural requirements to uphold the integrity of the judicial system.

Case Citation: Delhi Gymkhana Club Vs Col Ashish Khanna: 27.09.2024: FAO(OS) 102/2023: 2024:DHC: 7524: Delhi High Court: Prathiba M Singh and Amit SHarma, H.J.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.