FMI Limited vs. Midas Touch Metalloys Pvt. Ltd.

Non Mentioning of Defendant's Trademark Registration in different class is not material suppression

Introduction: This case concerns a dispute between FMI Limited (Plaintiff) and Midas Touch Metalloys Pvt. Ltd. (Defendant) over the alleged trademark infringement and passing off involving the trademarks "INDI" (owned by the Plaintiff) and "INDEED" (used by the Defendant). The Plaintiff claimed that the Defendant's mark was deceptively similar and likely to confuse customers.

Background: FMI Limited is a well-established company specializing in measuring tools, operating since 1950, with significant domestic and international presence. It uses the trademark "INDI" for its measuring tapes and related tools, a brand developed since 2015. The Defendant launched a similar range of products under the mark "INDEED" in July 2024, prompting FMI to seek legal action.  FMI alleged that Midas Touch Metalloys' mark "INDEED" not only infringed upon its rights but also copied its trade dress and color scheme (blue and white), potentially leading to confusion among consumers.

Plaintiff’s Position: FMI Limited owns registered trademarks for "INDI" and its variations under Class 9 (tools and measuring instruments). It has invested heavily in marketing, gaining recognition and goodwill for "INDI," supported by substantial sales figures. Defendant's "INDEED" mark is deceptively similar to "INDI," phonetically and structurally. Defendant also adopted a similar trade dress, including the blue-and-white color scheme.

Defendant’s Position: Defendant argued that it is the registered proprietor of "INDEED" in Classes 7 and 8, and these registrations predate some of FMI’s applications. Claimed FMI’s mark "INDI" is generic or short for "India," thus lacking exclusivity. Asserted that their use of "INDEED" was accompanied by their brand identifiers ("Midas Touch" and "SCOTTS"), which sufficiently distinguish it. Alleged suppression of material facts by FMI, including information about other trademark registrations and oppositions.

Issues Involved: Trademark Infringement: Whether the Defendant’s use of the mark "INDEED" infringes upon FMI Limited's registered trademark "INDI." Passing Off: Whether the Defendant’s use of a similar mark and trade dress causes deception or confusion in the market. Suppression of Facts: Whether the Plaintiff concealed material facts regarding its trademark and the Defendant’s registrations in other classes. Bona Fide Use: Whether the Defendant’s adoption of "INDEED" was bona fide.

Plaintiff’s Submissions: Strong goodwill and reputation exist for "INDI" due to its consistent and long-standing use since 2015.The Defendant adopted "INDEED" deceptively, with no justification for the mark or trade dress.Plaintiff does not claim exclusivity over the color combination, but its use in conjunction with "INDEED" creates confusion.

Defendant’s Submissions: "INDEED" was adopted to emphasize product quality and is distinct from "INDI." No exclusivity exists for "INDI," as it is generic. Plaintiff suppressed material facts about third-party oppositions and trademark history. Reasoning and Analysis by the Judge.  

Court's Finding:Misrepresentation and Suppression of Facts: The Court found no merit in the Defendant's allegations of suppression, as the Plaintiff disclosed relevant trademark registrations related to Class 9 (the applicable class for measuring tapes).Trademark Infringement:Both marks, "INDI" and "INDEED," are registered under Class 9, covering identical products.Phonetic and structural similarities were found between the marks. The difference introduced by the letter "D" in "INDEED" was deemed insufficient to distinguish it.Passing Off:The Defendant's adoption of a similar trade dress (blue-and-white) and design elements was not bona fide.Consumer confusion was likely, especially as the competing products could be displayed side by side in stores.Goodwill and Reputation:The Plaintiff demonstrated extensive goodwill through significant sales figures and long-standing use of the "INDI" mark since 2015.Defendant’s Bona Fides:The Defendant failed to provide a satisfactory explanation for adopting "INDEED," despite having used other marks like "CUBIT" and "ALCOR" previously.Balance of Convenience:Favored the Plaintiff due to its prior use, established goodwill, and the Defendant’s recent entry into the market with "INDEED."

Decision:The Court upheld the ex-parte ad interim injunction restraining the Defendant from using the mark "INDEED" or any similar mark.The Defendant’s plea to release seized goods bearing the infringing mark was denied.The Defendant was prohibited from using the blue-and-white trade dress or other elements likely to confuse consumers.

Conclusion:This case emphasizes the importance of prior use and goodwill in trademark disputes. The Court relied heavily on principles of passing off and consumer confusion, concluding that the Defendant’s actions lacked bona fide intent and were likely to harm the Plaintiff’s goodwill. The decision reflects the judiciary's robust protection of established trademarks against deceptive practices.

Case Title: FMI Limited vs. Midas Touch Metalloys Pvt. Ltd.

Date of Order: January 8, 2025

Case Number: CS(COMM) 721/2024 

Neutral Citation: 2025:DHC:32

Court: High Court of Delhi, New Delhi

Judge: Hon'ble Justice Amit Bansal

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.

Diamond Modular Pvt. Ltd. Vs. Yash Arora

Trademark of Ex Distributor, Rectified, being dishonesty in adoption

Introduction:This case pertains to a trademark dispute between Diamond Modular Pvt. Ltd. (the petitioner) and Yash Arora, trading as Siddhi Vinayak Traders (respondent no. 1). The petitioner sought the cancellation of the respondent’s trademark "GREEN DIAMOND" under Section 57/125 of the Trademarks Act, 1999, alleging infringement, passing off, and dishonest adoption.

Background:The petitioner, a prominent manufacturer of electrical goods since 1975, has been using the trademark "DIAMOND" extensively, building substantial goodwill and reputation in the market. The respondent, an ex-distributor of the petitioner, registered the trademark "GREEN DIAMOND" in 2019 for similar goods. The petitioner alleged that this registration was dishonest and intended to capitalize on its established goodwill.

Brief Facts of the Case:The petitioner’s trademark "DIAMOND" has been in use since 1975 and is associated with electrical goods, including LED lights and switches.The respondent registered the trademark "GREEN DIAMOND" in 2019 under Class 9 for electrical accessories.The petitioner discovered the respondent’s registration in 2021 and filed for rectification, alleging trademark infringement and passing off.The petitioner had previously obtained an injunction against the respondent from using "GREEN DIAMOND" in a separate District Court proceeding.

Issues Involved:Whether the respondent’s trademark "GREEN DIAMOND" infringes upon the petitioner’s trademark "DIAMOND."Whether the respondent’s registration was dishonest and intended to create confusion in the market.Whether the petitioner is entitled to cancellation of the respondent’s trademark.

Submission of Parties: Petitioner Claimed prior and extensive use of the trademark "DIAMOND."Alleged that the respondent, as an ex-distributor, was fully aware of the petitioner’s trademark and dishonestly adopted "GREEN DIAMOND."Highlighted the likelihood of confusion among consumers due to the similarity of the marks.Respondent:Argued that "DIAMOND" is a generic term and cannot be monopolized.Claimed that "GREEN DIAMOND" is a device mark, distinct from the petitioner’s word mark.Asserted that the registration followed due process and was valid.

Reasoning and Analysis by the Judge:Prior Use and Goodwill: The court recognized the petitioner’s prior and continuous use of "DIAMOND" since 1975, establishing its goodwill and reputation.Dishonest Adoption: The respondent’s status as an ex-distributor of the petitioner strongly indicated knowledge of the petitioner’s trademark. The adoption of "GREEN DIAMOND" was deemed dishonest and aimed at capitalizing on the petitioner’s goodwill.Likelihood of Confusion: The similarity in the dominant part of the marks ("DIAMOND") and the identical nature of goods heightened the risk of consumer confusion.Genericity Argument: The court rejected the respondent’s claim that "DIAMOND" is generic, holding that long-term use and goodwill had given the mark distinctiveness and secondary meaning.

Decision:The court allowed the rectification petition and directed the cancellation of the respondent’s trademark "GREEN DIAMOND" under No. 4290006 in Class 9. The respondent was restrained from using the mark "GREEN DIAMOND" for goods under Classes 9 and 11. Additionally, the respondent was ordered to file a statement of accounts detailing profits earned from using the impugned trademark.

Conclusion:This judgment reaffirms the principle that dishonest adoption of a trademark, especially by an ex-associate, is actionable under trademark law. It underscores the importance of protecting established trademarks from misuse and maintaining the integrity of the trademark registry.

Case Title: Diamond Modular Pvt. Ltd. Vs. Yash Arora 

Date of Order:January 8, 2025

Case No.C.O. (COMM.IPD-TM) 225/2021

Neutral Citation: 2025:DHC:37

Name of Court:High Court of Delhi at New Delhi

Name of Judge:Hon’ble Ms. Justice Mini Pushkarna

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.

Novenco Building & Industry Vs. Xero Energy Engineering Solutions Private Ltd. & Another

Mandatory Nature of Section 12-A of Commercial Court Act 2015

Introduction:The case involves a commercial dispute between Novenco Building & Industry A/S (plaintiff) and Xero Energy Engineering Solutions Private Ltd. (defendants) concerning allegations of patent and design infringement. The primary issue was whether the plaintiff's failure to comply with the mandatory Pre-Institution Mediation under Section 12-A of the Commercial Courts Act, 2015, warranted the rejection of the plaint.

Background:The plaintiff, a manufacturer of axial fans, alleged that the defendants were infringing its patents and designs by manufacturing and selling similar products. The plaintiff issued a Cease-and-Desist notice in December 2022 but claimed that the defendants continued their infringing activities. The suit was filed in June 2024, seeking urgent interim relief without undergoing Pre-Institution Mediation.

Brief Facts of the Case: The plaintiff entered into a Distributor Agreement with the defendants in 2017.  In July/August 2022, the plaintiff became aware of alleged patent and design infringements by the defendants.  The plaintiff terminated the Distributor Agreement in October 2022 and issued a Cease-and-Desist notice in December 2022. Despite the notice, the defendants continued to manufacture and sell the impugned products online and offline. The plaintiff filed the suit in June 2024, citing urgency to prevent further loss of market share and reputation.

Issues Involved:

1. Whether the plaintiff's failure to comply with the mandatory Pre-Institution Mediation under Section 12-A of the Commercial Courts Act rendered the plaint liable for rejection.

2. Whether the urgency claimed by the plaintiff justified bypassing Pre-Institution Mediation.

Submissions of the Parties:

Defendants:Argued that the plaint was barred by law due to non-compliance with Section 12-A of the Commercial Courts Act.Contended that the plaintiff failed to demonstrate genuine urgency in the suit.Claimed that the application for interim relief was merely a tactic to bypass Pre-Institution Mediation.

Plaintiff:Asserted that the suit contemplated urgent interim relief, making Pre-Institution Mediation unnecessary.Highlighted the defendants’ ongoing commercial activities, including online sales, which infringed the plaintiff’s patents and designs.Argued that the delay in filing the suit was due to the time required for technical analysis and evaluation of the infringement.

Reasoning and Analysis by the Judge:

Mandatory Nature of Section 12-A: The court referred to the Supreme Court’s rulings in Patil Automation Pvt. Ltd. vs. Rakheja Engineers Pvt. Ltd. and Yamini Manohar vs. T.K.D. Keerthi, which held that Section 12-A of the Commercial Courts Act is mandatory. It emphasized that urgent interim relief must not be a pretext to bypass mandatory mediation.

Assessment of Urgency: The court scrutinized the timeline and found no compelling urgency to justify bypassing mediation. The plaintiff became aware of the infringement in 2022 but waited until June 2024 to file the suit. The plaintiff’s claim of urgency was undermined by its own delay.

Application for Interim Relief: The court found the plaintiff’s application under Order XXXIX, Rules 1 and 2 of the CPC lacked sufficient evidence of irreparable harm or immediate necessity.

Legislative Intent: The court highlighted that the intent behind Section 12-A is to reduce the burden on courts and promote alternative dispute resolution. Allowing the suit without mediation would defeat this objective.

Decision:The court allowed the defendants’ application under Order VII, Rule 11 of the CPC and rejected the plaint on the following grounds:

1. Non-compliance with Section 12-A of the Commercial Courts Act.

2. Lack of demonstrated urgency to bypass Pre-Institution Mediation. 

Conclusion: This judgment reinforces the mandatory nature of Pre-Institution Mediation under Section 12-A of the Commercial Courts Act. It underscores the importance of adhering to procedural requirements and the judiciary’s commitment to promoting alternative dispute resolution mechanisms. The decision serves as a precedent for ensuring that claims of urgency are not misused to bypass statutory mandates.

Case Title: Novenco Building & Industry Vs. Xero Energy Engineering Solutions Private Ltd. & Another

Case No. and Neutral Citation:

OMP No. 540 of 2024 in COMS No. 13 of 2024

Neutral Citation: 2024:HHC:7518

Date of Order:28th August 2024

Court:High Court of Himachal Pradesh, Shimla

Judge:Hon’ble Justice Ajay Mohan Goel

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.

Haldiram India Pvt. Ltd. vs. Berachah Sales Corporation & Ors.

Case Title: Haldiram India Pvt. Ltd. vs. Berachah Sales Corporation & Ors.

Case No.CS(COMM) 495/2019

Date of Order:2nd April 2024

Court:Delhi High Court

Judge:Hon'ble Justice Prathiba M. Singh

Introduction:

This case is a landmark trademark dispute involving Haldiram India Pvt. Ltd., a renowned food brand, against Berachah Sales Corporation and others. The plaintiff sought protection for its trademark "HALDIRAM" and related marks, claiming unauthorized use and dilution of its goodwill by the defendants. The case delves into the principles of trademark protection, well-known mark recognition, and the doctrine of spill-over reputation.

Background

Haldiram India Pvt. Ltd., established in 1941, is a leading food brand with a significant domestic and international presence. The company holds trademarks for "HALDIRAM" in various classes, including food products and eateries. The defendants, Berachah Sales Corporation and others, allegedly used identical and deceptively similar marks for their products and services, leading to this suit for injunction, damages, and declaration of "HALDIRAM" as a well-known mark.

Brief Facts of the Case

1. Plaintiff's Claim:

Ownership of the trademark "HALDIRAM" and its variants since 1941.

Allegations of unauthorized use of the mark by the defendants for products like mustard oil, salt, and ghee.

The defendants operated under names such as "Haldiram Restro Pvt. Ltd." and registered domain names like www.haldiramrestro.com.

2. Defendants' Stand:

Claimed use of the mark in Class 43 (restaurants and eateries), which was not covered by the plaintiff's registrations.

Argued the existence of other companies using "Haldiram" without objections from the plaintiff.

Issues Involved

1. Whether the defendants' use of "HALDIRAM" constituted trademark infringement and passing off.

2. Whether the plaintiff's mark qualifies as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.

3. Entitlement of the plaintiff to damages and injunction.

Submissions of the Parties

Plaintiff:

Asserted exclusive rights over the "HALDIRAM" mark, supported by registrations and long-standing goodwill.

Highlighted the defendants' malafide intent to exploit the plaintiff's reputation.

Sought permanent injunction, damages, and recognition of "HALDIRAM" as a well-known mark.

Defendants:

Denied infringement, citing use in a different class (restaurants and eateries).

Claimed that the plaintiff lacked exclusive rights in Class 43.

Argued that the plaintiff failed to act against other entities using the "HALDIRAM" name.

Reasoning and Analysis by the Judge

1. Trademark Infringement and Passing Off:

The court observed that the defendants used identical marks for identical services, fulfilling the triple identity test.

The defendants' actions were deemed to exploit the plaintiff's goodwill and reputation.

2. Well-Known Mark Declaration:

The court analyzed factors under Section 11(6) of the Trade Marks Act, including the plaintiff's extensive sales, advertising, and global presence.

The mark "HALDIRAM" was declared well-known, even in West Bengal, despite territorial limitations under a dissolution deed.

3. Damages:

Based on the Local Commissioner's report, the court found substantial misuse of the plaintiff's mark.

Awarded exemplary damages of ₹50 lakhs, emphasizing the need to deter such malpractices.

Decision

The Delhi High Court ruled in favor of Haldiram India Pvt. Ltd., granting:

1. A permanent injunction restraining the defendants from using "HALDIRAM" or deceptively similar marks.

2. Recognition of "HALDIRAM" as a well-known trademark.

3. Damages of ₹50 lakhs and costs of ₹2 lakhs.

Conclusion

This judgment reinforces the robust protection afforded to well-known trademarks under Indian law. It highlights the judiciary's proactive stance in safeguarding intellectual property rights and deterring infringement. The recognition of "HALDIRAM" as a well-known mark is a significant milestone, reflecting its widespread reputation and goodwill.

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.

T Series Vs. Dreamline Reality Movies

Case Title:T Series Vs. Dreamline Reality Movies

Case No. FAO No. 6386 of 2023

Neutral Citation: 2024:PHHC:025132

Date of Order:27th February 2024

Court:Punjab and Haryana High Court

Judge: Hon'ble Justice Raj Kumar

Introduction:

The case revolves around a copyright dispute between T Series and Dreamline Reality Movies concerning allegations of infringement related to cinematographic works and sound recordings. It examines the scope of rights under the Copyright Act, 1957, particularly regarding unauthorized reproductions.

Background:

T Series, a leading entertainment company, alleged that Dreamline Reality Movies reproduced and distributed its copyrighted works without authorization. The case focuses on the interpretation of "infringing copy" and the rights conferred upon copyright holders under the Copyright Act, 1957.

Brief Facts of the Case:

1. T Series owns the copyright in several cinematographic films and sound recordings.

2. Dreamline Reality Movies allegedly reproduced and distributed these works in violation of copyright laws.

3. T Series sought an injunction to restrain Dreamline Reality Movies from further infringement.

Issues Involved

1. Whether the reproduction and distribution by Dreamline Reality Movies constituted an "infringing copy" under the Copyright Act, 1957.

2. Whether T Series was entitled to an injunction and damages.

3. The applicability of statutory exceptions under the Act.

Submissions of the Parties

Plaintiff (T Series):

Asserted ownership of copyright in the works.

Alleged that the defendant's actions amounted to unauthorized reproduction and distribution.

Sought a permanent injunction, damages, and accounting of profits.

Defendant (Dreamline Reality Movies):

Denied allegations of infringement.

Claimed that their actions fell within statutory exceptions, including fair use.

Argued the lack of substantial similarity in the works.

Reasoning and Analysis by the Judge

1. Interpretation of "Infringing Copy":

The court analyzed Section 14 of the Copyright Act, defining the rights conferred upon copyright holders.

It emphasized that unauthorized reproduction in any medium constitutes infringement.

2. Evaluation of Evidence:

The court reviewed the evidence submitted by T Series, including original and alleged infringing copies.

It found substantial similarity in the content, supporting T Series's claims.

3. Statutory Exceptions:

The court rejected the defendant's argument of fair use, holding that the reproduction was for commercial purposes, not covered under statutory exceptions.

4. Injunction:

The court emphasized the importance of protecting intellectual property rights and granted a permanent injunction against Dreamline Reality Movies.

Decision:

The Punjab and Haryana High Court ruled in favor of T Series, granting:

1. A permanent injunction restraining Dreamline Reality Movies from further infringement.

2. Damages to T Series for the losses incurred.

3. An order for the defendant to provide an account of profits made from the infringing activities.

Conclusion:

The judgment reinforces the stringent protection afforded to copyright holders under Indian law. It highlights the judiciary's proactive approach in addressing copyright infringement and ensuring compliance with the Copyright Act, 1957. The case serves as a precedent for similar disputes, emphasizing the deterrence of unauthorized reproductions.

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.

Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Introduction

This case revolves around the alleged infringement of the plaintiffs' trademark "CHUPA CHUPS" by the defendants, who marketed their products under the mark "HARNIK CHUPA CHUP." The legal dispute primarily concerns trademark infringement, passing off, and the interplay between pending rectification proceedings and the rights to seek relief in a civil court under the Trade Marks Act, 1999.

Background

The plaintiffs, Perfetti Van Melle S.P.A., are globally recognized manufacturers of confectionery products and owners of the registered trademark "CHUPA CHUPS." The defendants used the mark "HARNIK CHUPA CHUP" for similar products. The plaintiffs claimed this use was deceptive and likely to cause confusion among consumers, constituting trademark infringement and passing off.

Brief Facts of the Case

1. The plaintiffs filed a suit seeking a permanent injunction against the defendants from using the mark "HARNIK CHUPA CHUP."

2. The defendants argued their mark was registered and invoked Sections 28(3), 30(2)(e), and 124 of the Trade Marks Act, asserting the suit was not maintainable.

3. The plaintiffs had already filed a rectification petition in 2011, prior to instituting the present suit in 2017, seeking cancellation of the defendants' trademark registration.

Issues Involved

1. Primary Issue: Whether the suit for trademark infringement could proceed while rectification proceedings were pending.

2. Secondary Issue: Whether the relief for passing off could continue independently despite the stay on infringement claims.

Submissions of the Parties

Plaintiffs

Argued that under Section 124 of the Trade Marks Act, the court must frame an issue regarding the invalidity of the defendants' mark before staying the infringement proceedings.

Relied on the Supreme Court's decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd., which mandates the court to assess the prima facie tenability of the rectification claim.

Defendants

Contended that since the rectification petition was filed before the suit, the stay under Section 124(1)(b)(i) was automatic, without requiring the court to frame any issue.

Asserted that both infringement and passing off claims should be stayed as they are interconnected.

Reasoning and Analysis by the Judge

1. Stay of Infringement Proceedings:

Section 124(1)(b)(i) provides for an automatic stay when rectification proceedings are already pending at the time of instituting the suit.

The court clarified that no prima facie assessment or framing of issues is required in such cases, distinguishing it from situations where rectification proceedings are initiated post-suit.

2. Passing Off Claims:

The court held that Section 124 applies only to trademark infringement claims, not to passing off.

Referring to precedents like Puma Stationer P. Ltd. v. Hindustan Pencils Ltd., the court emphasized that passing off claims can proceed independently.

3. Applicability of Precedents:

The court rejected the plaintiffs' reliance on Patel Field Marshal Agencies and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, noting that these cases addressed different factual scenarios.

Decision

1. The court stayed the suit concerning the infringement of the plaintiffs' trademark under Section 124(1)(b)(i).

2. The passing off claim was allowed to proceed independently, as it fell outside the scope of Section 124.

Conclusion

The judgment underscores the distinct procedural pathways for trademark infringement and passing off claims under Indian law. It reaffirms the automatic stay provision under Section 124(1)(b)(i) when rectification proceedings are pending, while preserving the independent nature of passing off claims. This case is a vital reference for understanding the procedural nuances in trademark litigation.

Case Title: Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Case Number: CS(COMM) 363/2017

Neutral Citation: 2022:DHC:3414

Date of Decision: September 1, 2022

Court: High Court of Delhi, New Delhi

Judge: Hon’ble Mr. Justice Navin Chawla

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.

Arun Kumar vs. State of Punjab and Another

IP Adjutor: Episode 19

Is prior opinion of Registrar of Trade Mark under Section 115 of Trademarks Act 1999 mandatory before filing Criminal Complaint?

Case Title:Arun Kumar vs. State of Punjab and Another
Date of Order:25th November 2024
Case Number:CRM-M-54104-2023
Case Citation:2024:PHHC:155158
Court:High Court of Punjab and Haryana at Chandigarh
Judge:Hon’ble Mr. Justice Karamjit Singh

Introduction:
This case concerns the quashing of an FIR and related proceedings under the Copyright Act, 1957, and the Trade Marks Act, 1999. The petitioner, Arun Kumar, challenged the procedural and substantive grounds of the case, alleging non-compliance with statutory requirements.

Background:
FIR Registration: FIR No. 281 was registered on 20.07.2017 under Sections 63 and 65 of the Copyright Act, 1957, at Police Station Jodhewal, Ludhiana.
Allegations: The petitioner was accused of manufacturing fake garments bearing the "Puma" label and selling them at inflated prices.

Investigation and Charges:
Police seized garments labeled as "Puma" during a raid and arrested the petitioner.Following investigation, a challan was submitted under Sections 63 and 65 of the Copyright Act, 1957.Additional charges under Sections 103 and 104 of the Trade Marks Act, 1999, were later framed by the trial court.

Brief Facts of the Case:
The complainant, authorized by RNA-IP Attorneys, alleged unauthorized manufacturing of garments with the "Puma" label.A raid led by Inspector Vijay Kumar resulted in the seizure of fake garments.The petitioner contended that procedural violations under the Trade Marks Act, 1999, invalidated the proceedings.

Issues Involved in the Case:
Procedural Compliance:
Whether the investigation complied with Section 115(4) of the Trade Marks Act, 1999, requiring involvement of an officer not below the rank of Deputy Superintendent of Police (DSP).
Whether the Registrar of Trade Marks’ opinion was obtained before search and seizure, as mandated by the Act.
Substantive Grounds:Whether the charges under the Copyright Act, 1957, and the Trade Marks Act, 1999, were legally sustainable.

Submissions of the Parties:

Petitioner:
Violation of Section 115(4):Search and seizure were conducted by an Inspector, not a DSP, violating statutory requirements.No opinion from the Registrar of Trade Marks was sought before initiating proceedings.

Applicability of the Copyright Act:
Manufacture and sale of garments do not fall under the purview of the Copyright Act, 1957.Cited Deepak vs. State of Haryana (2023), which held similar allegations unsustainable under the Copyright Act.

Quashing of Proceedings:
Sought quashing of FIR, challan, and additional charges for procedural and substantive deficiencies.

State:
Supported the FIR and subsequent proceedings.Justified the seizure of fake garments with "Puma" labels and the petitioner’s arrest.Admitted procedural lapses, including the absence of a DSP and Registrar’s opinion.

Reasoning and Analysis by the Court:
Non-Compliance with Section 115 of the Trade Marks Act:

Investigation and seizure were conducted by an Inspector, violating Section 115(4), which mandates a DSP or higher rank.The Registrar’s opinion was not obtained before search and seizure, contravening the Act’s proviso.

Applicability of the Copyright Act:Section 13 of the Copyright Act does not cover the manufacture and sale of garments.Prosecution failed to establish infringement of copyright under Sections 63 and 65 of the Act.Relied on the Deepak vs. State of Haryana (2023) precedent, which held similar actions outside the scope of the Copyright Act.

Procedural Deficiencies:
Procedural lapses rendered the prosecution legally unsustainable under both the Copyright Act and the Trade Marks Act.

Decision:
The Court allowed the petition and quashed:
FIR No. 281 dated 20.07.2017.
Final report dated 18.02.2018.
Order dated 02.09.2023 framing additional charges under Sections 103 and 104 of the Trade Marks Act, 1999.
All consequential proceedings arising from the above were also quashed.

Conclusion:

The case highlights the critical importance of procedural compliance in intellectual property infringement cases. The Court emphasized adherence to statutory mandates under the Copyright Act, 1957, and the Trade Marks Act, 1999, particularly concerning investigation and prosecution. Procedural lapses and substantive inadequacies led to the quashing of the FIR and related proceedings.

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.

Aloys Wobben Vs. Yogesh Mehra

Aloys Wobben Vs. Yogesh Mehra: Scope of Simultaneous Counterclaims and Patent Revocation

Case Title:Aloys Wobben and Ors. Vs. Yogesh Mehra and Ors.

Date of Order:June 2, 2014

Case Number:Civil Appeal No. 6718 of 2013

Citation:MANU/SC/0519/2014: AIR 2014 SC 2210: (2014) 15 SCC 360

Court:Supreme Court of India

Judges:Hon’ble Justice A.K. Patnaik and Hon’ble Justice J.S. Khehar

Introduction: This case is a landmark ruling on patent law in India, addressing the legal conflict between patent infringement suits and revocation petitions under the Patents Act, 1970. The Supreme Court examined whether a party could simultaneously pursue a patent revocation petition before the Intellectual Property Appellate Board (IPAB) and a counterclaim for revocation in a patent infringement suit before the High Court. The judgment clarified the mutual exclusivity of these remedies and established a precedent for handling patent disputes in India. Factual Background: Dr. Aloys Wobben’s Patents and Business Interests: Dr. Aloys Wobben, a German scientist and entrepreneur, owned over 2,700 patents worldwide, including 100 patents in India related to wind turbine technology.He operated Enercon GmbH, a leading manufacturer of wind turbines. Formation of Joint Venture:In 1994, Enercon GmbH entered into a joint venture with Yogesh Mehra and Ajay Mehra (respondents), forming Enercon India Ltd.The company operated under license agreements, the last of which was signed on September 29, 2006. Dispute Between the Parties:On December 8, 2008, Enercon GmbH terminated the license agreement, citing breaches by Enercon India Ltd.The respondents, however, continued using Wobben’s patents, prompting multiple patent infringement suits. Procedural Background: Revocation Petitions:In January 2009, Enercon India Ltd. filed 19 revocation petitions before the IPAB, challenging Wobben’s patents under Section 64 of the Patents Act, 1970.In 2010-2011, they filed four additional revocation petitions, totaling 23 revocation petitions. Patent Infringement Suits:Between 2009 and 2010, Wobben filed 10 patent infringement suits in the Delhi High Court.Counterclaims Filed by Respondents:In response, the respondents filed counterclaims for revocation of the patents in the infringement suits.Delhi High Court’s Ruling:The High Court ruled that revocation petitions before the IPAB and counterclaims in infringement suits could proceed simultaneously.Dr. Wobben appealed this decision to the Supreme Court. Issues Involved:Can a defendant in a patent infringement suit simultaneously pursue a revocation petition before the IPAB and a counterclaim for revocation before the High Court?Does filing a counterclaim in an infringement suit bar the defendant from maintaining a revocation petition before the IPAB?How should Section 64 of the Patents Act, 1970, be interpreted—whether the remedies of revocation petition and counterclaim are mutually exclusive? Submissions of the Parties: Appellants (Dr. Aloys Wobben and Wobben Properties GmbH):Exclusive Jurisdiction of High Court in Counterclaims:Once a counterclaim is filed under Section 64(1) of the Patents Act, the High Court alone has jurisdiction to decide patent revocation.The IPAB loses jurisdiction over revocation petitions for the same patents.Avoiding Conflicting Judgments:Simultaneous proceedings before the IPAB and High Court could result in contradictory decisions.IPAB as an Administrative Tribunal:The High Court, being a constitutional court, has wider jurisdiction and greater authority than the IPAB. Respondents (Yogesh Mehra and Others):Right to Multiple Remedies:The Patents Act allows independent remedies—a revocation petition before the IPAB and a counterclaim in an infringement suit.No Express Prohibition on Parallel Proceedings:There is no statutory bar on pursuing both remedies. Reasoning and Analysis of the Supreme Court:Mutually Exclusive Remedies:The Supreme Court interpreted Section 64 strictly, holding that once a counterclaim is filed, a revocation petition on the same patent cannot be pursued.Avoiding Jurisdictional Conflicts:If simultaneous proceedings were allowed, contradictory judgments could arise, creating legal uncertainty.Preference for High Court Adjudication:Since counterclaims are adjudicated by the High Court, they take precedence over administrative proceedings before the IPAB. Final Decision:Bar on Simultaneous Proceedings:If a party has filed a counterclaim in response to an infringement suit, they cannot pursue a separate revocation petition before the IPAB for the same patent.Revocation Petitions Filed Before Counterclaims:If a revocation petition was already filed before an infringement suit, then the counterclaim cannot be pursued.Delhi High Court’s Decision Overruled:The Supreme Court overturned the High Court’s ruling, holding that only one remedy (revocation petition or counterclaim) is available per patent. Conclusion: The Supreme Court’s decision in Dr. Aloys Wobben vs. Yogesh Mehra established a clear legal precedent on the mutual exclusivity of revocation petitions and counterclaims under Section 64 of the Patents Act, 1970. The ruling prevents forum shopping, reduces conflicting judgments, and ensures judicial consistency in patent litigation in India.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

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.

Novex Communications Pvt. Ltd. Vs. Trade Wings Hotels Limited

Introduction:

The case revolves around the rights of copyright owners and the limitations imposed on entities managing intellectual property under the Copyright Act, 1957, as amended. Novex Communications Pvt. Ltd. (the plaintiff) sought an injunction to restrain the defendant from unauthorized public performance and communication of sound recordings managed by Novex, challenging the interpretation of Section 33(1) concerning copyright societies.

Background:

Novex Communications Pvt. Ltd. and Phonographic Performance Ltd. (PPL) are entities managing intellectual property rights, including the licensing of sound recordings for public performances. They have acquired rights through assignments from original copyright owners. The defendants in these cases allegedly infringed these rights by publicly performing sound recordings without obtaining the requisite licenses.

A preliminary issue arose: whether Novex and PPL, not registered as copyright societies under Section 33(1) of the Copyright Act, could legally grant licenses or seek relief for infringement.

Plaintiff’s Position:

Novex owns exclusive rights to sound recordings, acquired through assignment agreements with various music labels. The plaintiff claims infringement by the defendant, who failed to obtain proper licensing for public performance.

Defendant’s Argument:

The defendant contended that Novex, not being a registered copyright society under Section 33(1), was prohibited from carrying on the business of licensing and was therefore not entitled to seek relief.

Issues Involved:

Can Novex and PPL issue licenses and claim infringement relief without being registered as copyright societies under Section 33(1) of the Copyright Act?

Does the assignment of rights to Novex confer the status of ownership or only administrative rights subject to Section 33 restrictions?

Plaintiff’s Submissions:

Novex argued that as the assignee of copyrights, it held ownership rights equivalent to those of the original copyright owner, as per Sections 18 and 19 of the Act.

Section 30 allowed Novex to grant licenses for public performance in its capacity as the owner’s agent or assignee.

The provisions of Chapter VII, specifically Section 33(1), did not limit the rights of copyright owners or their assignees but regulated collective management organizations.

Defendant’s Submissions:

The defendant claimed that Novex, not being a registered copyright society, could not engage in the licensing business or seek legal remedies under Section 33(1).

They argued that Novex’s primary business was licensing, falling squarely within the ambit of Section 33(1), which prohibits such activities without registration.

Reasoning and Analysis by the Judge:

1. Rights of Copyright Owners and Assignees:

The court analyzed Section 18 and Section 30 of the Copyright Act, which confer ownership and licensing rights to assignees. It was held that an assignee is treated as an owner, and their rights are equivalent to those of the original copyright owner.

2. Interpretation of Section 33(1):

The court clarified that Section 33(1) regulates entities acting as copyright societies but does not curtail the rights of individual copyright owners or their assignees. The section ensures accountability for organizations managing works on behalf of multiple copyright holders.

3. Ownership vs. Collective Administration:

The court distinguished between owners managing their copyrights and copyright societies operating under collective mandates. It held that owners or assignees do not need to register as copyright societies to issue licenses for their works.

4. Precedents Considered:

The court referred to: Entertainment Network India Ltd. vs. Super Cassette Industries Ltd and Leopold Café Vs. Novex Communications Pvt. Ltd.

These cases emphasized that copyright societies are administrative entities, whereas owners retain individual rights.

5. Balancing Interests:

The court acknowledged the need to protect authors' and owners' rights while ensuring public access to copyrighted works through fair licensing mechanisms.

Decision:

The court held that Novex, as the assignee of copyrights, had the right to issue licenses and enforce its copyrights without registering as a copyright society under Section 33(1). The defendants were directed to refrain from unauthorized use of Novex’s copyrighted works and obtain the necessary licenses.

Conclusion:

This judgment reaffirmed the distinction between the rights of copyright owners/assignees and the regulatory framework for copyright societies. It clarified that Section 33(1) does not undermine the statutory rights of copyright owners or assignees to manage and license their works. By upholding Novex's claims, the court emphasized the balance between safeguarding intellectual property and ensuring public interest.

Case Title: Novex Communications Pvt Ltd. Vs Trade Wings Hotels Limited

Date of Judgement: 24.01.2024: Commercial IP Suit No. 363 of 2019: 2024: BHC-OS-1428: Bombay High Court :R.I.Chagla: HJ

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.

Entertainment Network India Limited Vs Miss Malini Entertainment Pvt Ltd

Grant of Interim Injunction for Copyright Infringement and Unauthorized Use of Media Content"

Introduction

The plaintiff, Entertainment Network India Limited (ENIL), sought an interim injunction against the defendant, Miss Malini Entertainment Pvt. Ltd., for unauthorized use and infringement of its intellectual property rights. ENIL claimed exclusive ownership of the copyright and other rights related to its show "What Women Want" and alleged that the defendant violated terms of agreement by using media content without authorization.

Background

The dispute arises from the alleged unauthorized use of copyrighted material by the defendant. The plaintiff is a prominent radio broadcaster and media producer in India, owning various intellectual properties, including the show "What Women Want." The defendant, Miss Malini Entertainment Pvt. Ltd., operates social media platforms disseminating entertainment content.

In September 2024, the defendant was engaged by the plaintiff to conduct and promote an interview featuring a celebrity from the show. However, the defendant published the interview in violation of the agreed terms, leading to this legal action.

Brief Facts of the Case

1. The plaintiff owns and produces the show "What Women Want," hosted by Kareena Kapoor Khan, and retains exclusive rights to its content.
2. An agreement between the plaintiff and defendant outlined the terms for conducting and publishing an interview, subject to plaintiff’s prior approval.
3. The defendant violated these terms by publishing the interview on its platforms, with its own logo and branding, without approval.
4. The plaintiff issued a cease-and-desist notice, but the defendant continued publishing the content, leading to significant reputational and financial harm to the plaintiff.
5. The plaintiff sought a permanent and dynamic injunction to restrain the defendants from further infringing its rights.

Issues Involved

1. Whether the defendant’s actions constituted copyright infringement under the Indian Copyright Act, 1957.
2. Whether the plaintiff is entitled to an interim injunction restraining the defendant from unauthorized use of the content.
3. Whether the defendant's branding on the interview content misrepresents the ownership of the work.

Plaintiff's Submissions:

1. The plaintiff argued that it is the original and exclusive owner of all rights related to the show and its associated content.
2. The defendant acted in bad faith by altering and publishing the interview with unauthorized branding.
3. Unauthorized dissemination of the content caused irreparable harm to the plaintiff’s commercial interests.
4. The plaintiff presented a prima facie case for infringement and sought immediate injunction to prevent further misuse.

Reasoning and Analysis by the Judge

1. Ownership and Infringement:

   • The court found that the plaintiff established prima facie ownership of the copyrighted content.
   • The defendant's unauthorized branding and dissemination of the interview infringed the plaintiff’s exclusive rights under the Copyright Act.

Decision

1. The court granted an interim injunction restraining the defendant from hosting, uploading, or distributing the plaintiff’s copyrighted content, including the interview, on any platform.
2. The defendant was directed to remove all infringing content from its platforms within 48 hours of the order.
3. In case of non-compliance by the defendant, intermediary platforms (YouTube and Instagram) were instructed to take down the content.

Conclusion

The order reinforced the principle of protecting intellectual property rights and maintaining the integrity of contractual agreements. By granting the injunction, the court ensured that the plaintiff’s rights were safeguarded against unauthorized use and misrepresentation. This case serves as a precedent for stringent enforcement of intellectual property laws in India’s media and entertainment industry.

Case Citation: Entertainment Network India Limited Vs Miss Malini Entertainment Pvt Ltd: 20.12.2024: CS(COMM) 1141/2024: Delhi High Court :Mini Pushkarna: HJ

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.