Syngenta Limited Vs GSP Crop Science Private Limited

Confidentiality Club and Confidential Information

Introduction:

This case concerns the alleged infringement of two process patents granted to the plaintiffs, Syngenta Limited and another, relating to the manufacture of a fungicide, Azoxystrobin. The primary issue revolves around the defendant, GSP Crop Science Pvt. Ltd., allegedly infringing the said patents through their processes for manufacturing similar products. The plaintiffs sought interim relief and compliance with terms agreed upon during proceedings.

Background:

Patents in Question:Indian Patent No. 278868: Relates to processes for preparing Azoxystrobin using DABCO as a catalyst. Indian Patent No. 271751: Relates to methods for preparing Azoxystrobin. These patents pertain to Syngenta’s proprietary fungicide sold under the brand name "AMISTAR®."

Interim Application: The plaintiffs initially sought an interim injunction to prevent the defendant from manufacturing or selling products infringing their patents.Scientific Advisor Appointment: To decide the interim relief, the court appointed a Scientific Advisor to inspect and analyze the defendant’s processes.

Brief Facts of the Case:The plaintiffs alleged that the defendant’s manufacturing process infringed their patents for Azoxystrobin.A two-tier confidentiality club was constituted to ensure the secure handling of confidential information.Dispute arose regarding the defendant’s refusal to share certain records with a Tier-II Confidentiality Club member nominated by the plaintiffs.

Issues Involved:Whether the defendant should share confidential documents with the plaintiffs’ Tier-II Confidentiality Club representative.Whether the plaintiffs’ application under Section 151 of the CPC was maintainable.Interpretation of Terms of Reference (ToR) and its implications on the parties.

Plaintiffs:Argued for access to records based on mutually agreed ToR.Highlighted the need for access to assist in preparing for the interim injunction.Submitted that their Tier-II member, Dr. Alan Whitton, complies with confidentiality rules.

Defendant:Opposed sharing confidential information, citing risks of misuse.Argued that the ToR limited access to Tier-I members unless otherwise agreed.Stated that the application was an attempt to conduct a "roving and fishing" inquiry.

Reasoning and Analysis by the Judge:

Maintainability of the Application: The application was not for production of documents but to ensure compliance with the ToR. Hence, the application under Section 151 of CPC was deemed maintainable.

Interpretation of ToR: The ToR allowed access to records by Tier-II members except for certain confidential details like supplier records. The court noted the explicit inclusion of Tier-II members for accessing certain information, demonstrating that any restrictions would have been explicitly mentioned in the ToR if intended.

Confidentiality Club Rules: Dr. Whitton, the plaintiffs' Tier-II representative, was found to comply with the confidentiality requirements. His independent contractor status and lack of day-to-day involvement in Syngenta’s operations ensured compliance with confidentiality norms.

Section 104A of the Patents Act: The court clarified that sharing documents with Dr. Whitton would not violate Section 104A, as the defendant was still obligated to show non-infringement of the plaintiffs’ patent.

Decision: The court directed the defendant to supply the required records (except supplier details) to the plaintiffs’ Tier-II representative, Dr. Whitton, within two weeks. Dr. Whitton’s access would be strictly for analysis and in compliance with his confidentiality affidavit.

Conclusion:

This judgment underscores the delicate balance courts must maintain in patent disputes between protecting confidential information and ensuring fair proceedings. The decision reinforced the importance of adhering to mutually agreed procedural safeguards while upholding transparency necessary for adjudication.

Case Title:Syngenta Limited Vs GSP Crop Science Private Limited

Date of Order:8th January 2025

Case Number:CS(COMM) 87/2020

Neutral Citation:2025:DHC:104

Name of Court:High Court of Delhi

Name of Judge:Hon’ble Mr. 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.

Wipro Enterprises Private Limited vs Himalaya Wellness Company & Ors.

Hush Product and possibility of Trademark Confusion 

Introduction:This case addresses a trademark dispute between Wipro Enterprises and Himalaya Wellness Company concerning the use of the mark "EVECARE." The dispute centers around allegations of passing off and trademark infringement, with both parties claiming rights to the mark in different product categories. The case explores the interplay between common law rights, prior use, and the classification of goods under the Trade Marks Act, 1999.

Background:Respondents (Himalaya Wellness):Himalaya Wellness adopted the mark "EVECARE" in 1997 and has used it continuously since 1998 for their proprietary ayurvedic medicines (e.g., uterine tonics) in Class 5. The products have gained significant goodwill and are sold under the umbrella brand "HIMALAYA."

Appellants (Wipro Enterprises):Wipro Enterprises adopted the mark "EVECARE" in Class 3 in 2020 for female hygiene products, specifically intimate washes. The mark was registered in 2021 after conducting a trademark search in their class. They began selling the product in 2021.

The Dispute:Himalaya Wellness claimed that Wipro’s use of "EVECARE" for allied products created confusion, given their prior use and goodwill. They sought an injunction to restrain Wipro from using the mark.Brief Facts of the Case:Himalaya Wellness used the mark "EVECARE" for over 25 years, gaining recognition in the ayurvedic medicine market.Wipro registered the same mark in a different class (Class 3) for female hygiene products in 2021, citing no prior registration in that class.Himalaya issued a cease-and-desist notice in 2022, which Wipro contested, leading to the suit.The Single Judge granted an interim injunction against Wipro, restraining them from using the mark "EVECARE" for female hygiene products.

Issues Involved:Passing Off: Whether Wipro’s use of "EVECARE" amounts to passing off, given Himalaya’s prior use and goodwill.Trademark Infringement: Whether the use of identical marks for unrelated goods in different classes constitutes infringement.Consumer Confusion: Whether the products are similar enough to cause confusion among consumers.Classification of Goods: Whether the difference in trademark classes (Class 3 vs. Class 5) affects the rights of the parties.

Submissions of the Parties:

Appellant (Wipro Enterprises):Claimed their use of "EVECARE" was bona fide and unrelated to Himalaya’s products.Argued that their product (intimate wash) is a cosmetic and falls under Class 3, distinct from Himalaya’s ayurvedic medicines (Class 5).Highlighted differences in product nature, packaging, and target use.Asserted that the mark "EVECARE" is generic, combining "EVE" (woman) and "CARE."

Respondents (Himalaya Wellness):Asserted prior and continuous use of "EVECARE" since 1998, creating goodwill in the market.Claimed Wipro’s use of the mark caused consumer confusion due to the allied nature of the products, both catering to female reproductive health.Highlighted that consumers might associate Wipro’s products with Himalaya due to similar branding and distribution channels.Contended that the mark "EVECARE" is coined and distinctive, deserving protection.Reasoning and Analysis by the Court:

Passing Off:The Court emphasized that passing off is based on prior use and goodwill, which Himalaya successfully established.Relying on the "classical trinity" of passing off (goodwill, misrepresentation, damage), the Court found Wipro’s use of "EVECARE" likely to mislead consumers.

Hush Product and Classification of Goods:The Court rejected Wipro’s argument that different trademark classes negate consumer confusion.Goods are in the category of "hush products" and thus a prospective buyer would be unlikely to ask too many questions about the product before purchasing the same. Both products, despite differing classes, target women’s reproductive health, making them allied goods.

Likelihood of Confusion:The Court noted similarities in product purpose (female health), distribution channels (pharmacies, online platforms), and overlapping consumer bases.Highlighted that both products appear under "women’s care" categories on e-commerce platforms, increasing the likelihood of confusion.Hush Products:Observed that both products fall under "hush products," where consumers are less likely to ask detailed questions, further amplifying confusion.Distinctiveness of the Mark:Found "EVECARE" to be a coined term, with Himalaya’s long use making it distinctive and associated with their brand.

Decision:The Court upheld the Single Judge’s interim injunction, restraining Wipro from using the mark "EVECARE" for their products. It concluded that Wipro’s use of the mark constituted passing off, given Himalaya’s prior use and goodwill. 

Conclusion:The judgment reaffirms the principle that prior use and goodwill take precedence over subsequent registration in trademark disputes. Even when products fall under different trademark classes, their allied nature and overlapping consumer base can lead to a finding of passing off. The case underscores the importance of due diligence and the risks of adopting identical marks, even in unrelated categories.

Case Title:Wipro Enterprises Private Limited Vs Himalaya Wellness Company & Ors.

Date of Order:1 October 2024

Case Number:FAO (OS) (COMM) 145/2023

Neutral Citation:2024:DHC:7544-DB

Name of Court:High Court of Delhi

Name of Judges:Justice Vibhu Bakhru and Justice Tara Vitasta Ganju

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.

Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel

Ramdev Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel: Prevention of Food Adulteration Act and trademark rights

Case Title:Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel & Ors

Date of Order:29 August 2006

Case Number:Civil Appeal Nos. 8815-8816 of 2003

Neutral Citation:AIR 2006 SUPREME COURT 3304:2006 (8) SCC 726:2006 AIR SCW 4988

Name of Court:Supreme Court of India

Name of Judges: Hon'ble Justice S.B. Sinha and Justice P.P. Naolekar

Introduction:This case involves a dispute over trademark rights and business arrangements within a family-run entity, focusing on the interpretation of the Trade and Merchandise Marks Act, 1958. The case is significant as it addresses the conflict between statutory trademark rights and agreements stemming from family settlements.

Background:The business began in 1965 when Rambhai Patel started grinding and selling spices under the trade name "Ramdev." Over time, partnerships and companies were formed within the family to expand the business. Disputes arose between three brothers, leading to a Memorandum of Understanding (MOU) in 1998 to distribute assets and manage rights.

Brief Facts of the Case:Trademark Registration: The trademark "Ramdev" was registered in 1986.Family Business Evolution: The family expanded into companies and partnerships, including "Ramdev Masala Stores" and "Ramdev Exports," for manufacturing and exporting spices.Dispute: Following the dissolution of "Ramdev Masala Stores" and the establishment of "Ramdev Exports," disputes arose over the use of the "Ramdev" trademark.Legal Proceedings: The appellant, Ramdev Food Products Pvt. Ltd., filed a suit claiming infringement and sought injunctions to prevent the respondents from using the trademark deceptively.

Issues Involved:

Trademark Infringement: Whether the respondents infringed the "Ramdev" trademark registered under the 1958 Act? Permitted Use: Whether the respondents had rights under the MOU to use the trademark for manufacturing or retail? Goodwill and Reputation: Whether the respondents’ actions diluted the goodwill associated with the trademark. Conflicts with Statutory Law: Whether statutory requirements under the Prevention of Food Adulteration Act and Standards of Weights and Measures Act could override trademark rights?

Appellant (Ramdev Food Products Pvt. Ltd.):Exclusive rights to the "Ramdev" trademark under the 1958 Act.Respondents’ use of the trademark diluted its distinctiveness.MOU restricted the respondents to retail use in seven outlets, not manufacturing.Statutory requirements do not permit infringing use.

Respondents:The MOU allowed the respondents to continue retail and manufacturing activities.Their actions complied with statutory requirements.No exclusive rights existed over individual elements of the trademark, such as the name "Ramdev."Waiver and estoppel prevented the appellants from enforcing trademark rights.

Reasoning and Analysis by the Court:

Trademark Rights: The Court reaffirmed that registration under the 1958 Act confers exclusive rights. The respondents’ use of similar marks created confusion and amounted to infringement. MOU Interpretation: The MOU did not grant the respondents any rights to manufacture goods under the "Ramdev" trademark. Their rights were limited to selling products from seven retail outlets.Goodwill Protection: The Court emphasized that goodwill and reputation tied to a trademark must be protected to avoid misleading consumers.Statutory Obligations: Compliance with food and packaging laws does not permit infringement of trademark rights.Limited Rights: The respondents were restrained from using "Ramdev" for manufacturing but allowed retail operations under the specified conditions.

Decision:The Supreme Court ruled in favor of the appellant, granting an injunction to prevent the respondents from infringing the "Ramdev" trademark, except in the limited scope defined by the MOU. Respondents were prohibited from using deceptive labels or manufacturing goods under the disputed trademark.

Conclusion:This case underscores the balance between family arrangements and statutory rights. It highlights the principle that agreements like MOUs cannot override legal protections afforded by trademark registration. The ruling reinforces the need to protect trademarks from dilution and misuse, ensuring that consumer trust in a brand remains intact.

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.

Praveen Sharma (Since Deceased) & Others vs. Ravi Kumar & Another

Non Joinder of Partnership firm and its effect

Introduction:

The plaintiffs purchased a two-storied building in Meerut Cantt through a registered sale deed in 2006. The disputed shop was let out to the partnership firm M/s Janta Finance & Trading Corporation, in which the defendants and their father were partners.Upon the death of one partner, the firm allegedly dissolved. The plaintiffs claimed the defendants inherited the tenancy rights.The plaintiffs filed a suit alleging default in rent payment and subletting the shop to a registered society.

Brief Facts of the Case:The defendants contested the suit, asserting that the firm had been reconstituted and the plaintiffs lacked title over the property.They argued that rent was regularly deposited and denied subletting the shop. The trial court decreed in favor of the plaintiffs, leading the defendants to file a revision before the High Court.

Issues Involved: Whether the suit was defective due to the non-joinder of the partnership firm as a party.? Whether the defendants denied the plaintiffs' title, rendering them ineligible for protection under Section 20(4) of the U.P. Act No. 13 of 1972. Whether the defendants had sublet the disputed shop, violating tenancy terms.

Submissions of the Parties:

Plaintiffs: The shop tenancy was transferred to the defendants after the firm's dissolution.The defendants defaulted on rent payments and sublet the shop without permission. The defendants cannot deny the plaintiffs' title after recognizing them as landlords.

Defendants: The firm was reconstituted and remained the tenant; its non-joinder rendered the suit defective. Rent was deposited regularly, and no valid notice of termination under the Transfer of Property Act was served. The alleged subletting was a misunderstanding; the shop was used for correspondence purposes only.

Reasoning and Analysis by the Court: Non-joinder of the Partnership Firm: The court held that under Order 30, Rule 1 CPC, suing partners individually was valid. A firm is not a legal entity but a collective of partners; thus, the suit was not defective. Denial of Title: The court noted that defendants acknowledged the landlord-tenant relationship and made rent deposits.The plea challenging the sale deed was deemed not a denial of title but a procedural argument.The trial court erred in concluding that the defendants were ineligible for protection under Section 20(4).Subletting Allegation:Evidence demonstrated that the society operated from the disputed shop, including tax returns and registration documents.The court found the defendants failed to prove that the shop was not sublet.Under Section 25 of the U.P. Act, parting with possession to a separate legal entity (the society) constituted subletting.Default in Rent Payment:The court upheld the finding of default since defendants failed to prove unconditional rent payments.

Decision:

1. The High Court upheld the trial court's decree of eviction on the ground of subletting.

2. It modified the order to grant the defendants protection under Section 20(4) regarding rent arrears.

3. The revision was disposed of with the eviction decree maintained.

Conclusion:The case establishes critical principles about the distinction between procedural and substantive aspects of tenancy disputes. It emphasizes that subletting to a legal entity distinct from tenants constitutes a violation under rent control laws. The judgment also highlights the necessity of clear evidence to support claims of reconstitution and denial of title. The ruling reflects a balanced application of statutory provisions to protect landlords' rights while ensuring procedural fairness for tenants.

Case Title: Praveen Sharma (Since Deceased) & Others vs. Ravi Kumar & Another

Case Number: S.C.C. Revision No. 269 of 2014

Neutral Citation: LAWS All 2019 [3] 114

Date of Order: 6 March 2019

Court: High Court of Judicature at Allahabad

Judge: Hon'ble Manoj Kumar Gupta

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.

Ansul Industries Vs. Shiva Tobacco Company

Subsequent use of a Trademark cannot cure initial dishonesty in Adoption

Introduction: The case involves a trademark dispute over the marks “Udta Panchhi” and “Panchhi Chaap,” both used in connection with chewing tobacco. The central issues revolved around initial dishonesty in adoption,  deceptive similarity, prior use, delay in filing for injunction, and the doctrine of honest concurrent use under the Trade and Merchandise Marks Act, 1958.

Background: The dispute arose between Ansul Industries (appellant) and Shiva Tobacco Company (respondent), both engaged in manufacturing and selling chewing tobacco. The respondent claimed to be the prior user and registered proprietor of the trademark “Panchhi Chaap” since 1973, while the appellant adopted the mark “Udta Panchhi” in 1982. The trial court granted an injunction in favor of the respondent, restraining the appellant from using the mark "Panchhi." This order was challenged by the appellant.

Brief Facts of the Case: Respondent's Claim: Shiva Tobacco Company began using “Panchhi Chaap” in 1973 and obtained trademark registration in 1974. Appellant's Claim: Ansul Industries adopted “Udta Panchhi” in 1982 through its predecessor, Bansal Tobacco Store, and applied for registration in 1990. Trial Court's Decision: The trial court restrained the appellant from using the mark, emphasizing the respondent's prior use and registration.Appeal: Ansul Industries appealed, arguing delay in filing the suit and claiming honest concurrent use.

Issues Involved: Are the marks “Udta Panchhi” and “Panchhi Chaap” deceptively similar?Can an injunction be denied on grounds of delay and latches?Does the appellant qualify as an honest concurrent user under Section 12(3) of the Trade and Merchandise Marks Act, 1958? Is the respondent still the valid owner of the registered trademark?Has the respondent concealed material facts or committed fraud?

Submissions of the Parties:

Appellant (Ansul Industries):Claimed that “Udta Panchhi” was adopted honestly and independently.Argued that the respondent's delay of 15 years in filing the suit indicated acquiescence.Asserted that their sales were higher, suggesting consumer preference for their product.Cited the principle of reverse confusion, where a stronger market presence of the junior user could lead to consumer association with their brand.

Respondent (Shiva Tobacco Company):Emphasized prior use and registration of “Panchhi Chaap” since 1973.Argued that delay was not a valid defense in cases of trademark infringement.Claimed that the appellant's adoption of “Udta Panchhi” was dishonest and aimed at exploiting their goodwill.

Reasoning and Analysis by the Court:

Deceptive Similarity:The Court applied the visual and phonetic similarity test, emphasizing that the word “Panchhi” was the dominant feature of both marks.It held that the use of the word “Panchhi” along with the image of a flying bird created a likelihood of confusion, especially among semi-literate and illiterate consumers of chewing tobacco.

Delay and Latches:The Court noted that delay alone does not defeat the right to injunction unless accompanied by acquiescence or prejudice to the defendant.It observed that the respondent had consistently objected to the appellant's use of the mark and engaged in legal proceedings, negating any inference of acquiescence.

Dishonesty in adoption:The Court highlighted that honest concurrent use requires proof of good faith and lack of knowledge of the prior mark at the time of adoption.It found the appellant’s adoption of “Udta Panchhi” in 1982 to be dishonest, as they were likely aware of the respondent’s established mark “Panchhi Chaap.”

Ownership of Trademark:The Court rejected the appellant's claim that the respondent was no longer the owner of the trademark due to changes in the partnership firm.It held that the reconstituted partnership retained ownership of the registered mark.

Fraud and Concealment:The Court found no evidence of fraud or concealment by the respondent.It concluded that any omission in the plaint did not materially affect the respondent’s case or mislead the Court.

Decision:The Delhi High Court dismissed the appeal, upholding the trial court’s order of injunction against Ansul Industries. The Court ruled that the respondent, as the prior user and registered proprietor of the mark “Panchhi Chaap,” was entitled to protection under trademark law.

Conclusion:This judgment reaffirms the importance of prior use and registration in trademark disputes. It underscores that:Delay does not bar injunction in cases of infringement unless accompanied by acquiescence.Honest concurrent use requires proof of good faith at the time of adoption.Courts prioritize consumer protection against confusion and deception, especially for goods marketed to vulnerable populations.The case serves as a significant precedent in Indian trademark law, particularly on the issues of deceptive similarity, delay, and honest concurrent use.

Case Title: Ansul Industries Vs. Shiva Tobacco Company

Date of Order:January 16, 2007

Case Number:FAO No. 228/2005

Citation:MANU/DE/9852/2007, (2007) ILR 1 Delhi 409, 2007 (34) PTC 392 (Del)

Name of the Court:High Court of Delhi

Bench:Hon'ble Mr. Justice Sanjiv Khanna

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.

Kapil Wadhwa Vs. Samsung Electronics

Introduction:This case revolves around the doctrine of trademark exhaustion under the Trade Marks Act, 1999. The primary issue was whether the Act embodies the principle of National Exhaustion or International Exhaustion. The decision had far-reaching implications for parallel imports and trademark enforcement in India.

Background:Samsung Electronics Co. Ltd. (Respondent No. 1) and its Indian subsidiary (Respondent No. 2) were the registered proprietors of the trademark SAMSUNG in India. The appellants, Kapil Wadhwa & Ors., were importing Samsung printers and selling them in India without the respondents' consent. This led to a dispute over the legality of such imports and sales under Indian trademark law.

Brief Facts of the Case: Samsung’s Trademark Rights: Samsung Electronics held registered trademarks for various electronic goods, including printers, in India. Parallel Imports: The appellants imported Samsung printers from international markets and sold them in India at prices significantly lower than those offered by Samsung’s Indian subsidiary. Respondents' Allegations: Samsung argued that the appellants' actions amounted to trademark infringement. They claimed that the imported products were not identical to those sold in India, leading to consumer confusion and potential harm to their brand reputation. Appellants' Defense: The appellants contended that their actions were lawful under the principle of international exhaustion, as the products were legitimately purchased abroad.

Issues Involved: Does the Trade Marks Act, 1999, adopt the principle of National Exhaustion or International Exhaustion? Are parallel imports of genuine goods without the trademark owner's consent permissible under Indian law? What constitutes trademark infringement in the context of parallel imports?

Submissions of the Parties:

Appellants (Kapil Wadhwa & Ors.): Asserted that the principle of international exhaustion allowed them to import and sell Samsung products lawfully acquired abroad.  Argued that their actions did not cause consumer harm or mislead buyers.  Highlighted that their pricing benefited Indian consumers, offering products at significantly lower prices.

Respondents (Samsung Electronics Co. Ltd. & Anr.): Claimed that the Trade Marks Act embodies the principle of national exhaustion, restricting the sale of imported goods without the trademark owner's consent. Emphasized that the imported products differed in features and specifications from those sold in India, potentially misleading consumers. Raised concerns about the lack of warranty and after-sales service for the imported products.

Reasoning and Analysis by the Court: Interpretation of the Trade Marks Act, 1999: The Court analyzed Sections 29 and 30 of the Act, focusing on the phrases "the market" and "any market." It concluded that the Act does not explicitly define "the market" as either domestic or international.

Doctrine of Exhaustion: The Single Judge had earlier held that the Act embodies the principle of national exhaustion. However, the appellate bench disagreed, emphasizing the absence of clear legislative intent to restrict exhaustion to the domestic market. The Court referred to the Statement of Objects and Reasons of the Act, which indicated an inclination towards international exhaustion.

Consumer Protection and Brand Reputation: The Court acknowledged Samsung's concerns about consumer confusion and brand dilution. However, it noted that such issues could be addressed through proper disclaimers and consumer education.

Global Context: The Court examined international practices, highlighting that many jurisdictions explicitly adopt either national or international exhaustion principles. It criticized the Indian legislature for not providing similar clarity.

Legitimate Reasons for Opposition (Section 30(4)): The Court held that while the respondents could oppose further dealings in imported goods if the products were altered or impaired, no such changes were alleged in this case.

Decision: The Court ruled in favor of the appellants, holding that the Trade Marks Act, 1999, adopts the principle of International Exhaustion. It allowed the appellants to continue importing and selling Samsung printers in India, provided they prominently displayed disclaimers clarifying the absence of Samsung's authorization, warranty, or after-sales service for these products.

Conclusion: This landmark judgment clarified the scope of trademark rights concerning parallel imports in India. By endorsing the principle of international exhaustion, the Court struck a balance between protecting trademark owners' rights and promoting consumer access to affordable goods. The decision underscored the need for legislative clarity on this critical issue to avoid future disputes.

Case Title:Kapil Wadhwa & Ors. vs. Samsung Electronics Co. Ltd. & Anr.

Date of Order:October 3, 2012

Case Number:FAO(OS) 93/2012

Neutral Citation:2013(53)PTC112(Del)

Name of the Court:High Court of Delhi, New Delhi

Bench:Hon'ble Mr. Justice Pradeep Nandrajog

Hon'ble Mr. Justice Siddharth Mridul

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.

Dr. Snehlata C. Gupte Vs. Union of India

The Date of Grant of Patent

Introduction: The case primarily revolved around the interpretation of provisions under the Patents Act, 1970, particularly the timing of the grant of a patent and its implications for pre-grant opposition. The dispute arose when Dr. Snehlata C. Gupte filed a pre-grant opposition after an order granting a patent was passed but before the issuance of the patent certificate. The central issue was determining when a patent is deemed granted.

Background: The dispute stemmed from two patent applications filed by J. Mitra & Co. Ltd. in 2001. These applications were published in the Official Gazette in 2004 for pre-grant oppositions under Section 25 of the Patents Act. One Span Diagnostics Ltd. (SDL) filed pre-grant opposition. It was considered by the Controller and vide detailed order dated 23.8.2006, the Controller rejected this opposition. Dr. Snehlata C. Gupte, challenged the grant of patents by filing pre-grant opposition on 24.08.2006. This was rejected being time barred on the Ground that Patent was already graned on 23.08.2006. The appellant, Dr. Snehlata C. Gupte, challenged the grant of patents, arguing that her pre-grant opposition was filed within the permissible time frame under the amended provisions of the Act.

Brief Facts of the Case:  Patent Applications: J. Mitra & Co. Ltd. filed two patent applications on June 14, 2001. These were published on November 20, 2004, under Section 11A of the Patents Act, inviting pre-grant oppositions.  Initial Opposition: Span Diagnostics Ltd. filed a pre-grant opposition, which was rejected by the Controller on August 23, 2006. The Controller simultaneously passed an order granting the patent.  Appellant’s Opposition: Dr. Gupte sent her pre-grant opposition on August 22, 2006, which was received by the Patent Office on August 24, 2006, after the order granting the patent.  Controller’s Rejection: The Controller rejected Dr. Gupte’s opposition, stating it was time-barred as the patent was already granted.  Legal Challenge: Dr. Gupte challenged the rejection before the Delhi High Court, raising the question of when a patent is deemed granted.

Issues Involved: When is a patent deemed granted under the Patents Act, 1970? Whether the appellant's pre-grant opposition was filed within the permissible time frame? The legal implications of issuing a patent certificate versus the Controller’s order of grant.

Submissions of the Parties:

Appellant (Dr. Snehlata C. Gupte): Argued that the patent is not granted until it is sealed and entered into the Register under Section 43(1) of the Patents Act.Asserted that her opposition was valid as it was filed before the sealing and entry of the patent.Contended that the Controller’s order dated August 23, 2006, was conditional, requiring compliance with formalities before the patent could be deemed granted.

Respondent No. 5 (J. Mitra & Co. Ltd.): Claimed that the patent was granted on August 23, 2006, when the Controller rejected the opposition and passed the order of grant. Argued that the issuance of the patent certificate is a ministerial act and does not affect the date of grant. Highlighted the misuse of the opposition mechanism by the appellant, allegedly acting at the behest of a business rival, Span Diagnostics Ltd.

Reasoning and Analysis by the Court:

Nature of the Controller’s Order: The Court held that the Controller’s order dated August 23, 2006, granting the patent, was not conditional. The requirement to amend certain formalities was a routine procedure that did not delay the grant.

Timing of Grant: The Court clarified that the grant of a patent occurs when the Controller passes an order of grant, not when the patent certificate is issued.  Issuance of the certificate and entry into the Register are administrative acts that confirm the grant but do not determine its date.

Pre-Grant Opposition: The Court emphasized that pre-grant opposition must be filed before the date of grant. Since the patent was granted on August 23, 2006, the appellant’s opposition filed on August 24, 2006, was time-barred.

Misuse of Opposition Mechanism: The Court noted that allowing multiple oppositions after the grant order could lead to endless delays, defeating the purpose of the Patents Act. It observed a potential nexus between the appellant and Span Diagnostics Ltd., indicating an ulterior motive.

Decision: The Court dismissed the appeals, upholding the Controller’s order and the Single Judge’s decision. It ruled that the patent was granted on August 23, 2006, and the appellant’s opposition was not maintainable. Costs of ₹25,000 were imposed on each appellant.

Conclusion: This case clarified the legal position on the timing of patent grants under the Patents Act, 1970. It established that the date of the Controller’s order is the date of grant, not the issuance of the certificate. The judgment also highlighted the need to prevent misuse of opposition mechanisms to delay patent grants.

Case Title:Dr. Snehlata C. Gupte Vs. Union of India & Ors.

Date of Order:April 20, 2012

Case Number:LPA Nos. 561/2010, 562/2010, 563/2010 & 564/2010

Neutral Citation:AIR 2012 DELHI 182, (2012) 189 DLT 342

Name of the Court:High Court of Delhi, New Delhi

Bench:Hon'ble Acting Chief Justice A.K. Sikri,Hon'ble Mr. Justice Rajiv Sahai Endlaw

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.

Neon Laboratories Ltd. Vs. Medical Technologies Ltd.

Neon Laboratories Ltd. Vs. Medical Technologies Ltd: Prior User of Trade Mark prevails over prior Registration but subsequent User of Trademark

Case Title: Neon Laboratories Ltd. Vs. Medical Technologies Ltd. & Ors.
Date of Order: October 5, 2015
Case No.: Civil Appeal No. 1018 of 2006
Neutral Citation: 2015 AIR SCW 6470, 2016 (1) AKR 20, 2015 (6) AIR BOM R 828, (2016) 2 SCC 672
Name of Court: Supreme Court of India
Name of Judges: Hon’ble Mr. Justice Vikramajit Sen and Hon’ble Mr. Justice Shiva Kirti Singh

Introduction:

This case revolved around a dispute over the trademarks PROFOL and ROFOL, both of which were used for the pharmaceutical product Propofol, an anesthetic drug. The core issue before the Supreme Court was whether the prior registration of the trademark ROFOL granted Neon Laboratories Ltd. superior rights, or whether the first actual user of the mark, Medical Technologies Ltd., could claim priority. The case highlights the interplay between trademark registration, actual use, passing off, and the ‘first in the market’ principle under Indian trademark law.

Detailed Factual Background:

Medical Technologies Ltd. (plaintiff) claimed that its predecessor-in-title had introduced the drug Propofol in India and had coined the trademark PROFOL in April 1998. It had applied for the registration of the mark on May 24, 1998, and had been actively using it in the market since then. After amalgamating with its predecessor in February 2000, Medical Technologies Ltd. continued using PROFOL in commerce and obtained goodwill for its product.

Neon Laboratories Ltd. (defendant) had applied for the registration of the mark ROFOL in 1992 but did not use the mark in commerce until 2004. The plaintiff came to know about the defendant’s use of the ROFOL mark in 2005 and immediately filed a suit for an injunction, damages, and accounts of profits, arguing that ROFOL was deceptively similar to PROFOL and was likely to cause confusion among medical practitioners and consumers.

Detailed Procedural Background:

The case began in 2005 when Medical Technologies Ltd. filed a suit for injunction, claiming that Neon Laboratories Ltd. was passing off its product as that of the plaintiff by using a similar-sounding name. The trial court granted a temporary injunction, which Neon Laboratories challenged before the Gujarat High Court. The High Court affirmed the injunction in 2005, leading the defendant to appeal before the Supreme Court in 2006.

The Supreme Court generally avoids interfering in interlocutory orders, but in cases involving trademark disputes, ad-interim injunctions often determine the final outcome due to delays in legal proceedings. Since Neon Laboratories had been restrained from using its mark since 2005, the case gained significant commercial implications, warranting Supreme Court intervention.

Issues Involved in the Case:

The Supreme Court had to determine whether Neon Laboratories Ltd.’s prior registration of ROFOL in 1992 gave it an absolute right over the mark. The Court also had to decide whether Medical Technologies Ltd., as the first actual user of the mark PROFOL since 1998, had a superior claim over a non-user registered proprietor. The issue of whether Neon Laboratories Ltd.’s delayed use of the ROFOL mark in 2004 after years of inaction amounted to abandonment or acquiescence was also considered. Another key question was whether confusion among consumers and medical professionals was likely due to the similarity between PROFOL and ROFOL, and whether an ad-interim injunction preventing the use of ROFOL should be upheld or vacated.

Detailed Submissions of Parties:

Medical Technologies Ltd. argued that it had coined and continuously used the mark PROFOL in India since 1998 and had built goodwill and market recognition. It contended that Neon Laboratories Ltd., despite having applied for trademark registration in 1992, had not used the mark until 2004, indicating a lack of bona fide intent to use it. The plaintiff relied on Section 34 of the Trade Marks Act, 1999, which states that a prior actual user has superior rights over a registered proprietor who has not used the mark. It was also argued that Neon Laboratories Ltd. had initiated the use of ROFOL only after seeing the success of PROFOL, indicating an intent to ride upon its goodwill. The phonetic and visual similarity between PROFOL and ROFOL was highlighted as a serious concern, especially in the pharmaceutical industry, where mistaken prescriptions could have dangerous consequences.

Neon Laboratories Ltd. countered that it had applied for trademark registration in 1992, much before Medical Technologies Ltd. started using PROFOL in 1998. It argued that the date of registration application is the relevant factor, not the date of actual use. The defendant further contended that the plaintiff’s mark was similar to the generic drug name Propofol, which should not be given exclusivity. Since it had secured trademark registration for ROFOL in 2001, it claimed a legal right to use the mark.

Detailed Discussion on Judgments Cited:

The Supreme Court considered multiple precedents, including Wander Ltd. v. Antox India P. Ltd. (1990 Supp SCC 727), which held that appellate courts should not interfere with the exercise of discretion by lower courts unless it is perverse or unreasonable. This principle guided the Supreme Court’s approach to injunctive relief. The Court also referred to N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714, which upheld the prior user principle and ruled that a worldwide prior user had superior rights over a subsequently registered Indian proprietor.

The decision in Milmet Oftho Industries v. Allergan Inc. (2004) 12 SCC 624 was considered, where the Supreme Court had applied the first in the market test, holding that prior users in foreign markets could restrain Indian companies from using similar marks. Another relevant judgment cited was S. Syed Mohideen v. P. Sulochana Bai (2015) 7 SCALE 136, which held that passing off actions are based on common law principles and that prior user rights override trademark registration.

Detailed Reasoning and Analysis of Judge

The Supreme Court held that prior user trumps prior registration under Section 34 of the Trade Marks Act, 1999. Since Medical Technologies Ltd. had continuously used PROFOL since 1998, it had superior rights over Neon Laboratories Ltd., which registered ROFOL in 1992 but did not use it until 2004. Neon Laboratories Ltd.’s long delay in using the mark suggested abandonment, which worked against it under Sections 34 and 47 of the Trade Marks Act. The Court noted that the confusing similarity between PROFOL and ROFOL was a serious concern in the pharmaceutical industry, where mistaken prescriptions could have harmful consequences. The balance of convenience was in favor of Medical Technologies Ltd., as it had been using PROFOL for years, while Neon Laboratories had alternative branding options.

Final Decision:

The Supreme Court dismissed the appeal, upholding the injunction against Neon Laboratories Ltd. The Court ruled in favor of Medical Technologies Ltd., holding that prior user rights took precedence over registration.

Law Settled in This Case:

Prior use is superior to trademark registration under Section 34 of the Trade Marks Act, 1999. Non-use of a registered trademark for extended periods can lead to a loss of rights under Section 47. The first in the market principle applies strongly in pharmaceutical trademarks, where confusion can impact public health. Trademark rights are established through actual use and market goodwill, not just registration.

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.

T.V. Venogopal Vs. Ushodaya Enterprises Ltd.

T.V. Venogopal vs. Ushodaya Enterprises Ltd: Use of Common Word as a Trademark and Acquired Distinctiveness, The ENADU Case

Case Title: T.V. Venogopal vs. Ushodaya Enterprises Ltd. & Anr.

Date of Order: March 3, 2011

Case No.: Civil Appeal Nos. 6314-15 of 2001

Neutral Citation: 2011(45)PTC433(SC)

Court: Supreme Court of India

Bench: Hon'ble Justice Dalveer Bhandari and Hon'ble Justice K.S. Panicker Radhakrishnan

Introduction:This case addresses a trademark and passing-off dispute between T.V. Venogopal, the appellant, and Ushodaya Enterprises Ltd., the respondent. The appellant claimed to have used the word "Eenadu" for incense sticks (agarbattis), while the respondent, a well-known publisher of the Telugu newspaper "Eenadu," alleged infringement and passing off of its trademark. The Supreme Court’s judgment explores issues of trademark distinctiveness, secondary meaning, and passing off.

Background:Ushodaya Enterprises Ltd. is a renowned media company that publishes the "Eenadu" newspaper, a widely circulated Telugu daily, since 1974. The word "Eenadu" in Telugu means "today." The appellant, T.V. Venogopal, a manufacturer of incense sticks, adopted the term "Eenadu" in 1988 for his products.  The respondent alleged that the appellant's use of "Eenadu" for incense sticks caused confusion among consumers and diluted the goodwill associated with its trademark. The appellant argued that "Eenadu" is a generic word commonly used in South Indian languages, and no single entity could claim exclusive rights over it.

Brief Facts of the Case: The appellant, T.V. Venogopal, used the mark "Ashika’s Eenadu" for incense sticks since 1988.The respondent claimed exclusive rights over "Eenadu," asserting it had acquired secondary meaning associated with its newspaper.The respondent initiated legal proceedings for trademark infringement and passing off in the City Civil Court, Hyderabad.The trial court granted an injunction, which was modified by the High Court of Andhra Pradesh, limiting the restriction to the state of Andhra Pradesh.The appellant challenged the High Court’s decision, arguing that "Eenadu" is a generic term and its use for incense sticks was bona fide. 

Issues Involved in the Case

1. Whether "Eenadu" is a generic term or has acquired secondary meaning as a trademark?

2. Whether the appellant’s use of "Eenadu" for incense sticks constitutes passing off?

3. Whether the respondent’s goodwill and reputation associated with "Eenadu" extend to unrelated goods like incense sticks?

4. Whether the appellant acted dishonestly in adopting the term "Eenadu"?

Submissions of the Parties

Appellant (T.V. Venogopal):Argued that "Eenadu" is a generic term meaning "today" in Telugu and cannot be monopolized. Claimed that the term is commonly used by various businesses and entities, including banks and films. Asserted that there was no likelihood of confusion, as the respondent operates in the media industry while the appellant manufactures incense sticks.Stated that the adoption of "Eenadu" was honest and bona fide, with no intention to deceive consumers.

Respondent (Ushodaya Enterprises Ltd.): Contended that "Eenadu" had acquired secondary meaning, signifying the respondent’s newspaper and its associated goodwill. Argued that the appellant’s use of the term diluted the distinctiveness of its trademark and caused consumer confusion. Highlighted that the appellant used a similar script and font, indicating an intention to deceive. Claimed that the reputation of "Eenadu" extended beyond newspapers to other goods and services.

Reasoning and Analysis by the Court

Generic vs. Secondary Meaning: The court acknowledged that "Eenadu" is a common term in Telugu but held that it had acquired secondary meaning due to its extensive use and association with the respondent’s newspaper. It emphasized that a descriptive term could attain trademark protection if it became synonymous with a specific source of goods or services.

Passing Off: The court applied the classic trinity test for passing off: goodwill, misrepresentation, and damage.  It found that the respondent had established significant goodwill associated with "Eenadu."  The appellant’s use of a similar mark and font was deemed likely to mislead consumers into believing a connection between the products.

Honesty of Adoption:The court examined the appellant’s conduct and concluded that the adoption of "Eenadu" was not bona fide. The appellant’s registration of "Eenadu" for multiple classes of goods suggested an intent to capitalize on the respondent’s reputation.

Scope of Protection:  The court noted that while the respondent primarily operated in the media industry, its trademark protection could extend to unrelated goods if goodwill and reputation were established.  It cited precedents where well-known trademarks were protected across diverse product categories.

Decision:The Supreme Court upheld the respondent’s claim, affirming that "Eenadu" had acquired secondary meaning and was entitled to protection. It restrained the appellant from using the mark "Eenadu" for incense sticks and other goods.

Conclusion:This case underscores the principle that a descriptive term can gain trademark protection if it acquires secondary meaning through extensive use and reputation. The judgment highlights the importance of goodwill and consumer perception in passing-off actions and reinforces the need for honest adoption of trademarks. The decision serves as a landmark in balancing trademark rights and the fair use of common terms.

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.

Advocate Ajay Amitabh Suman,IP Adjutor ,[Patent and Trademark Attorney] ,High Court of Delhi

Rajeev Kumar vs. Central Information Commission (CIC)

PhD thesis and right to information Act 

Introduction: The case addresses the denial of access to a PhD thesis under the Right to Information Act, 2005 (RTI Act). The petitioner, Rajeev Kumar, sought a copy of the thesis titled "Studies on some nitrogen-fixing genes of Azotobacter vinelandii" from Jamia Millia Islamia University (JMIU). The university and the Central Information Commission (CIC) denied access, citing exemptions under Section 8(1)(d) of the RTI Act, claiming the thesis had commercial importance and intellectual property concerns.

Background:The petitioner filed an RTI application in March 2019, seeking access to a PhD thesis submitted to JMIU. The Public Information Officer (PIO) and the First Appellate Authority (FAA) denied the request, citing Section 8(1)(d) of the RTI Act. The petitioner escalated the matter to the CIC, which upheld the denial, leading to the filing of the present writ petition.

Brief Facts of the Case: RTI Request: Filed on March 26, 2019, seeking access to the PhD thesis. Initial Denial: The PIO forwarded a response stating the thesis was in "safe custody" and inaccessible. First Appeal: Rejected on May 24, 2019, citing Section 8(1)(d) of the RTI Act. Second Appeal: The CIC, in its order dated April 12, 2021, upheld the denial, asserting the thesis had commercial importance and intellectual property concerns. Petition: Filed by Rajeev Kumar to challenge the CIC's decision and seek access to the thesis.

Issues Involved:

1. Whether the PhD thesis qualifies as "information" under the RTI Act.

2. Whether the thesis can be exempted from disclosure under Section 8(1)(d) of the RTI Act.

3. Whether the CIC and JMIU acted lawfully in denying access to the thesis.

Submissions of the Parties:

Petitioner: Argued that a PhD thesis is an academic document meant for public access to promote research and transparency. Highlighted that JMIU regulations and UGC guidelines mandate the publication of PhD theses. Asserted that the thesis was previously accessible, as evidenced by its citation in academic works. Contended that the CIC's reasoning of "commercial importance" was speculative and unsubstantiated.

Respondents (CIC and JMIU): Claimed the thesis had commercial value and intellectual property concerns, warranting exemption under Section 8(1)(d) of the RTI Act. Argued that the university's guidelines could not override statutory exemptions under the RTI Act.

Reasoning and Analysis by the Court:

Definition of "Information" under RTI Act: The court noted that a PhD thesis, being a document held by a public university, qualifies as "information" under the RTI Act.

Application of Section 8(1)(d):Section 8(1)(d) exempts disclosure of information involving "commercial confidence," "trade secrets," or "intellectual property," only if disclosure harms the competitive position of a third party.  The court emphasized the dual test for invoking this exemption: (i) the information must fall within the specified categories, and (ii) its disclosure must demonstrably harm competitive interests.

JMIU's Failure to Substantiate Claims: The court found no evidence to support JMIU's claim that the thesis had commercial importance or intellectual property concerns. The thesis had already been cited in academic works, indicating prior public availability.

Public Interest vs. Confidentiality:The court highlighted the larger public interest in accessing PhD theses, which serve as foundational academic resources. It rejected speculative claims of harm, emphasizing the transparency and academic advancement objectives of the RTI Act.

Role of Universities as Custodians:Universities are mandated to disseminate knowledge and make PhD theses accessible. JMIU's withholding of the thesis contradicted its own regulations and UGC guidelines.

Improper Basis for CIC's Decision: The CIC relied on unsubstantiated claims by JMIU, failing to balance public interest against alleged concerns.

Decision:

1. Impugned Order Set Aside: The court quashed the CIC's order dated April 12, 2021.

2. Disclosure Directed: JMIU was ordered to provide the petitioner with access to the PhD thesis within two weeks.

3. Observations on Transparency:The court underscored the importance of academic transparency and the RTI Act's role in promoting accountability.

Conclusion: This judgment reaffirms the principles of transparency and academic freedom, emphasizing that public institutions cannot arbitrarily withhold access to information. By directing the disclosure of the PhD thesis, the court upheld the RTI Act's objective of fostering accountability and enabling public access to knowledge. The decision serves as a reminder that speculative claims of "commercial importance" cannot override the larger public interest in academic research.

Case Title: Rajeev Kumar vs. Central Information Commission & Ors.

Case No.: W.P.(C) 10118/2021

Court: High Court of Delhi at New Delhi

Date of Order: December 10, 2024

Judge: Hon'ble Mr. Justice Sanjeev Narula

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.

Malpani Enterprises Vs. Registrar of Trademarks

Technical Glitch in Trade Mark Registry website and Delay in filing Notice of Opposition

Introduction:This case concerns the procedural challenge faced by Malpani Enterprises in filing a notice of opposition against the trademark application for "R3 DÉCOR." The issue arose due to a technical glitch in the Registrar of Trademarks' online portal, which allegedly denied the petitioner their statutory right to oppose the trademark registration.

Background: Malpani Enterprises, the registered proprietor of the trademark "DECOR PLY," sought to oppose a conflicting trademark application for "R3 DÉCOR," alleging visual, structural, and phonetic similarity. The petitioner attempted to file the opposition on the last permissible day, but technical issues with the online portal led to delays.

Brief Facts of the Case: Petitioner's Trademark: "DECOR PLY," registered under Class 19 for goods like plywood and flush doors. The mark has been in continuous use since 2010. Conflicting Trademark: Application No. 5587879 for "R3 DÉCOR," accepted and published in the Trade Mark Journal on April 15, 2024. Opposition Deadline: August 15, 2024, extended to August 16, 2024, due to the national holiday. Technical Glitch: On August 16, 2024, the online portal erroneously displayed that the opposition period had lapsed. Physical Submission: The petitioner sent the notice of opposition via Speed Post on August 16, 2024, but it was received by the Registrar on August 19, 2024.Registrar's Rejection: The Registrar, citing Rule 14 of the Trade Mark Rules, 2017, deemed the opposition time-barred.

Issues Involved:

1. Whether the technical glitch in the online portal can deprive the petitioner of their statutory right to file a notice of opposition.

2. Whether the delay caused by the technical glitch should be condoned.

3. Whether the Registrar's rejection of the notice of opposition was justified under the Trade Mark Rules, 2017.

Submissions of the Parties:

Petitioner:Claimed a technical glitch in the online portal prevented the timely filing of the notice of opposition.Argued that the statutory right to oppose cannot be denied due to a technical error.Highlighted that the notice of opposition was prepared and sent on August 16, 2024, within the extended deadline.

Respondent (Registrar of Trademarks):Asserted that the notice of opposition was received on August 19, 2024, beyond the statutory period.Cited Rule 14 of the Trade Mark Rules, 2017, which considers the date of receipt as the relevant date.Claimed the portal's software automatically calculated deadlines, and the petitioner should have adhered to them.

Reasoning and Analysis by the Court:

1. Acknowledgment of the Technical Glitch:The court noted that the Registrar admitted the portal showed an incorrect deadline, thereby confirming the technical glitch.2. Statutory Rights:Justice Mini Pushkarna emphasized that statutory rights cannot be forfeited due to technical errors in the respondent's system.3. Responsibility of the Registrar:The court held that the Registrar, being responsible for maintaining a functional system, cannot penalize parties for glitches in their infrastructure.4. Equitable Considerations:Since the petitioner acted within the statutory deadline by attempting to file online and subsequently mailing the notice, the delay caused by the glitch was beyond their control.

Decision:The court quashed the Registrar's letter dated August 20, 2024, rejecting the notice of opposition.Directed the Registrar to accept and process the notice of opposition filed by the petitioner.Held that the petitioner cannot be penalized for the delay caused by a technical glitch.

Conclusion:This judgment reinforces the principle that statutory rights must not be compromised due to administrative inefficiencies or technical errors. The court’s decision ensures fairness and accountability, highlighting the Registrar's duty to maintain a functional and error-free system. By directing the Registrar to process the opposition, the court upheld the petitioner’s right to challenge conflicting trademarks within the prescribed legal framework.

Case Title: Malpani Enterprises vs. Registrar of Trademarks

Case No.: W.P.(C)-IPD 27/2024 & CM 87/2024

Neutral Citation: 2025:DHC:36

Court: High Court of Delhi at New Delhi

Date of Order: January 7, 2025

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.

RPG Enterprises Limited Vs. RPG Industrial Products Pvt. Ltd.

Effect of Well Known Trademark Declaration in Trademark Cancellation Proceeding

Introduction:The case concerns a rectification petition filed by RPG Enterprises Limited seeking cancellation of the trademark registration granted to RPG Industrial Products Pvt. Ltd. for the mark “RPG” under Class 23. The petitioner alleged that the impugned registration violates the provisions of the Trade Marks Act, 1999, as it misappropriates the petitioner’s well-established trademark, “RPG.”

Background:The petitioner, RPG Enterprises Limited, is a well-known conglomerate with diverse business interests, including infrastructure, IT, pharmaceuticals, and e-commerce. The trademark "RPG," derived from the initials of the founder, Shri R.P. Goenka, has been in use since 1979 and has gained immense goodwill and recognition globally.The respondent, RPG Industrial Products Pvt. Ltd., registered the trademark "RPG" in Class 23 for polyester staple fiber. The petitioner challenged this registration, alleging that it constitutes passing off and trademark dilution.Petitioner’s Trademark Usage: The petitioner adopted the “RPG” mark in 1979. It owns multiple trademark registrations, including Registration No. 850255 (Class 12) and 3930988 (Class 25). The petitioner’s mark has been declared well-known by courts, including the Bombay High Court in RPG Enterprises Limited v. Riju Ghoshal & Anr., 2022 SCC OnLine Bom 626.

Respondent’s Registration and Usage:The respondent registered “RPG” under Registration No. 2778255 in Class 23 on July 22, 2017. The respondent claims use since 2011 and states that “RPG” represents the initials of its founder, Shri Rajendra Prasad Gupta.

Issues Involved:Whether the petitioner has exclusive rights over the “RPG” trademark across all classes of goods and services. Whether the respondent’s adoption and registration of the “RPG” mark were made in good faith. Whether the respondent’s use of the “RPG” mark creates a likelihood of confusion and dilution of the petitioner’s trademark. Whether the registration is liable to be rectified under Sections 47 and 57 of the Trade Marks Act, 1999.

Petitioner’s Submissions:The impugned registration violates Sections 11(1), 11(2), and 11(3) of the Trade Marks Act as it creates confusion and dilutes the distinctive character of the petitioner’s mark.The respondent’s claim of use since 2011 is unsupported by credible evidence.The respondent acted in bad faith by adopting the identical mark “RPG.”The petitioner’s mark is well-known and entitled to protection even for dissimilar goods.

Respondent’s Submissions:The petitioner is not an aggrieved party under Section 57 of the Trade Marks Act.The marks are distinct due to differences in style, color, and class of goods.The respondent adopted “RPG” honestly, representing the founder’s initials.No evidence of confusion or deception has been presented.

Reasoning and Analysis by the Court

Dominance of the Mark:The court held that the dominant feature of the respondent’s mark is “RPG,” which is identical to the petitioner’s well-known trademark.Well-Known Status:The court recognized the petitioner’s mark as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, citing its long-standing use, reputation, and prior judicial recognition.Similarity of Goods:Although the respondent dealt with polyester fiber (Class 23) and the petitioner with clothing (Class 25), the court noted that the goods are allied and cognate, increasing the likelihood of confusion.Bad Faith Adoption:The court found the respondent’s adoption dishonest, as the petitioner’s mark was widely recognized before the respondent’s registration.

Legal Precedents:The court relied on several precedents, including M/s Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., to emphasize that bad faith adoption vitiates trademark rights.

Decision:The court allowed the petition and directed the cancellation of the trademark registration (No. 2778255) in favor of RPG Industrial Products Pvt. Ltd. The Registrar of Trademarks was instructed to remove the impugned mark from the register and issue a notification to this effect.

Conclusion:This case underscores the importance of good faith in adopting trademarks and the robust protection afforded to well-known marks under Indian law. The decision reaffirms that bad faith adoption cannot be legitimized by subsequent use and that courts will prevent misuse of established trademarks to protect consumer interests and brand equity.

Case Title: RPG Enterprises Limited v. RPG Industrial Products Pvt. Ltd.

Date of Order: January 8, 2025

Case Number: C.O. (COMM.IPD-TM) 203/2022

Neutral Citation: 2025:DHC:38

Court: High Court of Delhi, New Delhi

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.

Novartis AG & Another Vs. Natco Pharma Limited-Mini Pushkarna H.J.

Novartis AG & Another Vs. Natco Pharma Limited: Additional Written Statement under Order VIII Rule 9 CPC

Case Title: Novartis AG & Another Vs. Natco Pharma Limited

Date of Order: January 8, 2025

Case Number: CS(COMM) 229/2019 

Neutral Citation: 2025:DHC:51

Court: High Court of Delhi, New Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Introduction:This case concerns a suit filed by Novartis AG and its affiliate seeking a permanent injunction to restrain Natco Pharma Limited from infringing its Indian Patent No. 276026 (hereafter "IN'026"), along with reliefs for rendition of accounts, damages, and delivery of infringing goods. A key development was the Defendant’s request to file an additional written statement, which was contested by the Plaintiffs.

Patent Ownership and Dispute Initiation:Novartis owns Indian Patent IN'026, granted in September 2016, covering specific pharmaceutical innovations.The Plaintiffs claimed Natco infringed their patent by manufacturing and marketing products using their patented invention.

Interim Injunction:The Court granted an interim injunction in favor of the Plaintiffs on January 9, 2023, barring Natco from further infringement.Natco's attempts to vacate this injunction were dismissed on April 9, 2024.

Divisional Application:Novartis had filed a Divisional Application, IN 5338/DELNP/2014 ("IN'5338"), linked to the same innovation but chose not to pursue it, leading to its rejection in December 2022.Natco argued that the rejection of the Divisional Application was a significant development and sought to include it in the proceedings through an additional written statement.

Brief Facts of the Case:Natco sought leave under Order VIII Rule 9 of the Code of Civil Procedure (CPC) to file an additional written statement.Natco argued the Plaintiffs had suppressed material facts related to the Divisional Application and its rejection.Novartis opposed the application, asserting the rejection of the Divisional Application was immaterial to the suit, as it was unrelated to the validity of IN'026.

Issues Involved:Materiality of the Divisional Application: Whether the facts surrounding the Divisional Application (its rejection and related prior art) were relevant to the present dispute.Application of Order VIII Rule 9 CPC: Whether the Defendant should be permitted to file an additional written statement given the procedural constraints of the Commercial Courts Act, 2015.Impact on Interim Injunction: Whether allowing the additional written statement would affect prior decisions on the interim injunction.

Submissions of the Parties: Natco (Defendant):The Divisional Application's rejection revealed prior art that undermines the Plaintiffs' claims.The Plaintiffs failed to disclose the rejection, violating their duty under Order XI Rule 1(12) CPC, which mandates continuous disclosure of material facts.Filing an additional written statement was necessary to ensure the dispute's full adjudication.

Novartis (Plaintiffs): The rejection of the Divisional Application was procedural, not on merits, and hence irrelevant.Prior decisions on the interim injunction already considered the cited prior art, and the Defendant's claims amounted to issue estoppel.Allowing the additional written statement would delay proceedings and prejudice the Plaintiffs.

Reasoning and Analysis by the Court:

Materiality of Divisional Application:The Court noted that while the Divisional Application was not pursued by the Plaintiffs, its rejection could be considered a subsequent development relevant to the case.However, the rejection was procedural, not on the merits of the patent claims, as confirmed by prior judgments.

Procedural Framework under Order VIII Rule 9 CPC:The Court emphasized its discretionary power to allow additional pleadings under Order VIII Rule 9 CPC, provided they were necessary for justice.It clarified that the statutory limit for filing a written statement under Order VIII Rule 1 (120 days under the Commercial Courts Act, 2015) did not apply to subsequent pleadings.

Impact on Interim Injunction:The Court rejected Natco's argument that the Divisional Application's rejection warranted revisiting the interim injunction.It highlighted that prior judgments (January 9, 2023, and April 9, 2024) had comprehensively addressed the validity of IN'026 and the relevance of cited prior art.

Duty of Continuous Disclosure: The Court agreed with Natco that both parties had a duty to disclose material facts until the suit's resolution.It concluded that the rejection of the Divisional Application, though not critical, was a fact that could be brought on record without prejudice to the Plaintiffs.

Decision:  Grant of Leave to File Additional Written Statement: The Court allowed Natco to file an additional written statement to incorporate facts related to the Divisional Application.It directed Natco to restrict its additional pleadings to matters already raised in its prior application for vacation of the interim injunction (I.A. 4636/2023).Natco was given 30 days to file the additional written statement.

Conclusion: This case underscores the balance courts must strike between procedural efficiency and ensuring complete adjudication. The judgment highlights:The discretionary scope of Order VIII Rule 9 CPC in permitting subsequent pleadings.The importance of continuous disclosure in commercial litigation.The distinction between procedural and substantive grounds in determining the relevance of additional evidence.

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.

Advocate Ajay Amitabh Suman,IP Adjutor,[Patent and Trademark Attorney],High Court of Delhi