Aktiebolaget Volvo & Ors. vs. R. Venkatachalam

Territorial Jurisdiction of Court under Section 134(2) of Trademarks Act 1999 through Plaintiff's Dealer

Introduction:This case pertains to trademark infringement, passing off, dilution, and unfair competition involving the globally recognized trademarks "VOLVO" and "PENTA and objection of Territorial Jurisdiction.The plaintiffs alleged unauthorized use of their trademarks by the defendants, seeking a permanent injunction, damages, and other reliefs.

Background:The plaintiffs, part of the VOLVO group, are globally reputed manufacturers of vehicles, engines, and related products. They are the registered proprietors of the trademarks "VOLVO," "PENTA," and "VOLVO PENTA," used for marine engines and industrial applications. The defendants were accused of using the trademark "PENTA" in their corporate name and products, allegedly leading to consumer confusion and trademark dilution.

Brief Facts of the Case:The plaintiffs have been using "PENTA" since 1913 and "VOLVO PENTA" since 1964. These trademarks are registered in India and globally. In 2006, the plaintiffs discovered that the defendants had applied for registration of the trademark "PENTA" for goods in Class 7, overlapping with the plaintiffs' business. Despite legal notices in 2006, the defendants continued using "PENTA" in their corporate name and products, prompting the plaintiffs to file the suit in 2007.

Issues Raised:Does the Delhi High Court have territorial jurisdiction to entertain the suit? Are the plaintiffs the registered proprietors of the trademark "PENTA"? Does the defendants' use of "PENTA" constitute trademark infringement or passing off?Are the plaintiffs guilty of delay, laches, or acquiescence in filing the suit?

Plaintiffs' Submissions: The trademarks "VOLVO PENTA" and "PENTA" are well-known and have been extensively used and promoted globally. The defendants' use of "PENTA" in their corporate name and products creates confusion and constitutes trademark infringement and passing off. The plaintiffs' statutory and common law rights in the trademarks should be protected.

Defendants' Submissions: "PENTA" is a generic term and cannot be monopolized by the plaintiffs. The defendants operate in a different business domain (special service tools for vehicles) and do not compete directly with the plaintiffs. The plaintiffs' delay in filing the suit indicates acquiescence, barring their claims.

Judgments Referred and Their Context:Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2018 SCC OnLine SC 1): Highlighted the necessity of rectification proceedings to challenge trademark validity.Automatic Electric Ltd. v. R.K. Dhawan (1999 SCC OnLine Del 27): Established that a party cannot claim a mark as generic if they have sought proprietary rights over it.Century Traders v. Roshan Lal Duggar (1977 SCC OnLine Del 50): Emphasized that mere registration does not prove usage; actual use must be demonstrated.Kabushiki Kaisha Toshiba v. Toshiba Appliances Co. (2024 SCC OnLine Del 5594): Discussed the authority of a corporate representative to institute legal proceedings.

Reasoning of the Judge:Territorial Jurisdiction: The plaintiffs established their business presence in Delhi, including agents and dealers, satisfying the jurisdictional requirements under Section 134(2) of the Trade Marks Act, 1999.Ownership of Trademarks: The plaintiffs provided extensive documentary evidence of their registrations and use of "PENTA" and "VOLVO PENTA" since 1970, predating the defendants' use.Infringement and Passing Off: The defendants' use of "PENTA" in Class 7 goods, similar to the plaintiffs' domain, was likely to confuse consumers and dilute the plaintiffs' trademark.Delay and Acquiescence: The plaintiffs' consistent opposition to the defendants' trademark applications and legal notices negated any inference of acquiescence.

Decision:The court ruled in favor of the plaintiffs: The defendants were restrained from using "PENTA" or any deceptively similar mark.The plaintiffs' ownership of the trademarks was upheld. The court directed the defendants to deliver up infringing materials for destruction and awarded costs to the plaintiffs.

Case Title: Aktiebolaget Volvo & Ors. vs. R. Venkatachalam & Anr.

Date of Order: January 20, 2025

Case No.: CS (COMM) 346/201

Neutral Citation: 2025:DHC:284

Name of Court: Delhi High Court

Judge: Hon'ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman

[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.

DCM Shriram Limited vs. Mr. Amrik Singh Chawla

Suppression and misrepresentation by the plaintiff and entitlement of Equitable relief of Interim Injunction

Introduction:This case revolves around a dispute concerning trademark infringement and deceptive similarity in the agricultural seed industry. The plaintiff, DCM Shriram Limited, alleged that the defendants were infringing upon their trademark and trade dress for wheat seed products. The case also examined issues of suppression of facts and material misrepresentation.

Background:The plaintiff, DCM Shriram Limited, is a reputed entity in the agricultural sector, engaged in producing and marketing wheat seeds under the brand names "Shriram Super 303" and "Shriram Super 404." The defendants, led by Mr. Amrik Singh Chawla, were accused of selling wheat seed products under deceptively similar names, "Sartaj 303" and "Sartaj 404," with packaging allegedly imitating the plaintiff's trade dress.The plaintiff sought an ex-parte injunction to restrain the defendants from marketing their products. However, the defendants contested this on the grounds of prior use and suppression of facts by the plaintiff.

Brief Facts of the Case: The plaintiff claimed to have discovered the defendants' infringing activities on October 30, 2024.An operative of the plaintiff found the defendants' products being sold under deceptively similar marks at a local retailer in Bihar.The plaintiff alleged that the defendants' use of the marks "303" and "404" and the similar trade dress caused confusion among consumers.The defendants filed an application under Order XXXIX Rule 4 of the CPC to vacate the ex-parte injunction, arguing that:The plaintiff had knowledge of their products since 2018.The defendants had been using the marks "303" and "404" since 2014, predating the plaintiff's usage.The plaintiff suppressed material facts from the court.

Issues Raised:Whether the plaintiff was guilty of suppression of material facts regarding the defendants' prior use of the marks. Whether the ex-parte injunction granted on November 8, 2024, should be vacated.

Plaintiff's Submissions:The plaintiff argued that the defendants' marks and packaging were deceptively similar to their own, causing consumer confusion.The plaintiff claimed exclusive rights over the marks "303" and "404" due to their extensive use since 2013 and 2015, respectively.The plaintiff alleged that the defendants' conduct amounted to trademark infringement and passing off.

Defendants' Submissions:The defendants contended that they had been selling products under the marks "303" and "404" since 2014, predating the plaintiff's usage of "404."They presented evidence, including a letter from 2018 signed by the plaintiff's representative, demonstrating the plaintiff's prior knowledge of their products.The defendants argued that "303" and "404" were generic terms for seed varieties and could not be monopolized by the plaintiff.They accused the plaintiff of suppressing material facts and misleading the court to obtain the ex-parte injunction.

Judgments Referred: Tata Sons Pvt. Ltd. v. Marvel Ltd., CS(COMM) 724/2024Held that misrepresentation of facts and suppression of material information warranted vacation of an injunction.

Freebit AS v. Exotic Mile Pvt. Ltd., 2023 SCC OnLine Del 8213.Emphasized that plaintiffs seeking equitable relief must approach the court with clean hands and disclose all relevant facts.Satish Khosla v. Eli Lilly Ranbaxy Ltd., 71 (1998) DLT 1 Highlighted the duty of a plaintiff to disclose all material facts to the court.Kent RO Systems Ltd. v. Gattubhai, 2022 SCC OnLine Del 791Established that suppression of material facts alone could justify vacating an injunction.

Reasoning of the Judge:The plaintiff's claim that they discovered the defendants' activities only in October 2024 was false, as evidenced by the 2018 letter signed by the plaintiff's representative.The defendants' prior use of the marks "303" and "404" since 2014 was substantiated by invoices and other documents.The plaintiff failed to disclose these facts, violating the duty of disclosure under Order XI of the CPC.Suppression and misrepresentation by the plaintiff disentitled them to equitable relief.

Decision:The court vacated the ex-parte injunction dated November 8, 2024, allowing the defendants to resume their business operations. The products seized by the Local Commissioner were ordered to be released to the defendants. The matter was referred to mediation to address the issue of deceptive similarity in packaging.

Case Title: DCM Shriram Limited vs. Mr. Amrik Singh Chawla & Ors.

Date of Order: January 17, 2025

Case No.: CS(COMM) 990/2024

Neutral Citation: 2025:DHC:267

Name of Court: High Court of Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman

[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.

Licensee Patent Estoppel Challenges in Indian Patent Law

Licensee Patent Estoppel Challenges in Indian Patent Law

Introduction: Licensee patent challenges represent a critical intersection between contractual agreements and patent law. This concept, which addresses whether a licensee can dispute the validity of a patent they are licensing, is of immense importance in safeguarding public interest while maintaining the sanctity of private agreements. Indian patent law, with its unique statutory framework and jurisprudence, presents a nuanced perspective on this issue.  In this Article, I delve  into the doctrinal underpinnings of licensee estoppel, its evolution, and its status in Indian law. Through a comprehensive analysis of international and Indian case laws, including their respective legal citations, we aim to provide a structured understanding of the legal and policy challenges surrounding licensee patent validity disputes.

Doctrine of Licensee Estoppel: An Overview:The doctrine of licensee estoppel traditionally bars licensees from challenging the validity of the patents they are licensing. This principle was established under English and American common law to ensure contractual integrity and avoid contradictory positions. However, over time, courts have limited or outright rejected this doctrine to prioritize the public interest in invalidating unworthy patents.

Foundational International Cases: 

MacGregor Vs. Westinghouse Electric & Manufacturing Co., 329 U.S. 402 (1947):

Facts:This U.S. Supreme Court case examined the enforceability of a patent licensing agreement containing a price-fixing provision. The licensor, Westinghouse, sued the licensee, MacGregor, for unpaid royalties under the agreement. MacGregor countered by challenging the validity of Westinghouse's patent, alleging misuse of monopoly power and violation of antitrust laws through the price-fixing provision.

Key Holdings: A licensee is not estopped from challenging the validity of the licensor's patent under federal law. If the patent is invalid, the price-fixing clause violates antitrust laws.Federal law governs disputes involving patent validity and alleged misuse, overriding state estoppel or contract severability rules.

Lear, Inc. Vs. Adkins (395 U.S. 653, 1969):Citation: 395 U.S. 653 (1969):

Facts: Adkins, the inventor, licensed a gyroscope patent to Lear, with Lear agreeing to pay royalties. Lear later challenged the validity of the patent, arguing it lacked novelty. 

Ruling: The U.S. Supreme Court rejected the doctrine of licensee estoppel, emphasizing the public policy favoring competition and the removal of invalid patents. 

Significance: This decision remains a cornerstone for jurisdictions like India that prioritize the public interest in patent validity challenges.

MedImmune Vs. Genentech (549 U.S. 118, 2007):Citation: 549 U.S. 118 (2007): 

Facts: MedImmune continued to pay royalties under protest while challenging Genentech’s patent validity. The dispute centered on whether a licensee in good standing could challenge the validity of a licensed patent. 

Ruling: The U.S. Supreme Court held that licensees could challenge patents without breaching their contracts, underscoring the importance of judicial scrutiny for invalid patents.

Significance: Indian courts often refer to such cases to ensure balance between contractual rights and public interest.

Statutory Framework in Indian Law:

Section 140(1)(iii)(d) of the Patents Act, 1970:Indian patent law under Section 140(1)(iii)(d) of the Patents Act, 1970, allows licensees to challenge patent validity

Section 64 of the Patents Act, 1970:This provision allows “any person interested” to challenge a patent’s validity. Unlike U.S. law, Indian patent law does not explicitly recognize the doctrine of licensee estoppel, giving licensees statutory backing for such challenges.

Section 23 of the Indian Contract Act, 1872: Contracts that contravene public policy are void. Thus, no-contest clauses that restrict licensees from challenging patent validity may be deemed unenforceable if they undermine public interest.

Indian Jurisprudence on Licensee Patent Challenges:

Bajaj Auto Ltd. Vs. TVS Motor Co. Ltd., 2008 (36) PTC 417 (Mad HC):

Facts: Bajaj Auto filed an infringement suit against TVS, alleging the latter violated its patented DTS-i technology. TVS counterclaimed for patent invalidation, asserting lack of novelty and prior art. 

Key Issue: Whether a licensee can challenge patent validity under Section 64 of the Patents Act, 1970.

Ruling: The Madras High Court upheld the right to challenge patents, reinforcing the principle that public interest in eliminating invalid patents outweighs contractual constraints. 

Analysis:This case underscores the legislative intent of Section 64, which permits “any person interested” to challenge a patent’s validity, including licensees. The decision aligns with global trends rejecting the doctrine of licensee estoppel when public interest is at stake.

Enercon (India) Ltd. Vs. Enercon GmbH, 2014 (60) PTC 1 (SC): 

Facts: Enercon GmbH, a German firm, claimed infringement against its Indian subsidiary, Enercon (India). The subsidiary countered by challenging the validity of the parent company’s patents. 

Key Issue: Can a subsidiary (licensee) challenge the validity of its parent company’s patents?

Ruling: The Supreme Court of India allowed the challenge, emphasizing that Section 64 of the Patents Act does not bar licensees from questioning patent validity. 

Analysis: The Supreme Court of India’s ruling emphasized the non-existence of licensee estoppel in Indian law. By allowing the subsidiary to challenge the patents, the Court highlighted the importance of preventing the misuse of patent rights, particularly in cases involving potential abuse of monopoly power. This decision reflects the Indian judiciary’s alignment with public policy considerations similar to the U.S. Supreme Court’s decision in Lear, Inc. Vs. Adkins.

Telefonaktiebolaget LM Ericsson Vs. Xiaomi Technology:2016 (68) PTC 1 (Del HC): 

Facts: Ericsson accused Xiaomi of infringing its Standard Essential Patents (SEPs). Xiaomi, despite being in discussions for licensing, sought to invalidate Ericsson’s patents, citing anticompetitive practices. 

Key Issue: Whether a potential licensee can challenge the validity of Standard Essential Patents (SEPs) during licensing negotiations.

Ruling: The Delhi High Court permitted Xiaomi to challenge Ericsson’s patents, stressing that even potential licensees are entitled to question validity. 

Analysis: The Delhi High Court’s decision underscores that even potential licensees are entitled to question the validity of patents. This ruling reflects the judiciary’s recognition of the anti-competitive risks posed by SEPs and the need to balance the rights of patent holders with fair competition principles. It also demonstrates the Court’s willingness to ensure that SEP holders do not misuse their dominant position to stifle competition.

Nokia Technologies Oy Vs Guangdong Oppo Mobile Telecommunications Corp. Ltd. FAO(OS)(COMM) 321/2022 High Court of Delhi, Decision dated July 3, 2023:

Facts of the Case:Nokia held a portfolio of Standard Essential Patents (SEPs) related to 2G, 3G, 4G, and 5G technologies. Oppo had a licensing agreement with Nokia from 2018 to 2021, during which Oppo paid royalties. The license expired in June 2021.After the expiration, Oppo continued selling devices using Nokia's SEP technology without securing a new license or making royalty payments.Nokia sued Oppo for patent infringement in India and sought interim relief, including security deposits based on estimated royalties.

Key Issue: Can an ex-licensee challenge patent validity after benefiting from a licensing agreement?

Court's Ruling: The Court acknowledged that while Indian patent law under Section 140(1)(iii)(d) of the Patents Act, 1970, allows licensees to challenge patent validity, Oppo’s conduct as an ex-licensee and its previous acknowledgment of the license suggested that its challenges might lack bona fides.  Oppo's willingness to negotiate a new licensing agreement and its actions, such as filing a suit in China to determine Fair, Reasonable, and Non-Discriminatory (FRAND) rates, were treated as implied admissions of the patents’ validity and essentiality.

Analysis:The Delhi High Court adopted a nuanced approach, acknowledging the statutory right of licensees to challenge patents while scrutinizing the bona fides of Oppo’s actions. By considering Oppo’s prior acknowledgment of the patents and its conduct, the Court balanced the need to protect patent holders from bad-faith challenges with the broader public interest in patent scrutiny. This case reinforces judicial fairness and reflects the importance of contextualizing licensee challenges within the broader framework of competition and public interest.

Key Takeaways:The cases of Bajaj Auto Ltd. Vs. TVS Motor Co. Ltd., Enercon (India) Ltd. Vs. Enercon GmbH, Telefonaktiebolaget LM Ericsson v. Xiaomi Technology, and Nokia Technologies Oy Vs. Oppo highlight the evolving jurisprudence on licensee patent challenges in India. Together, they reflect a judicial commitment to balancing the interests of patent holders with public policy imperatives that prioritize competition, innovation, and the invalidation of weak patents.

Licensee Patent Estoppel and Public Interest: The intersection of patent law and contractual agreements, particularly concerning licensee patent estoppel challenges, highlights the delicate balance between upholding public interest and ensuring the sanctity of private contracts. The evolution of the doctrine of licensee estoppel across jurisdictions underscores a shift towards prioritizing public policy over rigid adherence to contractual terms.

Judicial Rejection of Licensee Estoppel: Indian courts have consistently rejected the doctrine of licensee estoppel, favoring public interest over contractual restrictions.

Balancing Public Interest and Patent Rights: The judiciary ensures that patent holders’ rights are not misused to perpetuate weak or invalid patents while safeguarding licensees’ ability to contest patent validity.

Alignment with Global Jurisprudence: Indian courts’ approach mirrors international principles, particularly those from U.S. cases like Lear, Inc. v. Adkins and MedImmune v. Genentech, which emphasize the public interest in removing invalid patents.

Contextual Analysis: Recent cases like Nokia v. Oppo highlight the courts’ nuanced consideration of the licensee’s conduct, ensuring a fair balance between rights and obligations.

Patent Right is Right in rem: The patent holder enjoys an exclusive right over the patented invention against the world at large, as patent rights are classified as "rights in rem." This classification means that these rights are enforceable not only against a specific individual but against everyone, thereby granting the patent holder the authority to exclusively use, exploit, and commercialize the invention. Such exclusivity effectively prevents others from using, manufacturing, or distributing the patented invention without the patent holder's prior authorization or license. However, given the monopolistic nature of patent rights, the Patent Act, 1970, incorporates a robust framework to ensure that such rights are granted only after rigorous scrutiny and are not misused. The Act provides for a multi-layered opposition mechanism, including pre-grant and post-grant opposition, which allows third parties to challenge the grant of a patent on various grounds. Additionally, the Act includes provisions for revocation and invalidation of patents, enabling interested parties to contest the validity of a granted patent even after its issuance. These mechanisms reflect the legislative intent to balance the rights of the patent holder with the public interest, ensuring that patent monopolies are not granted or upheld arbitrarily. The overarching scheme of the Patent Act, 1970, demonstrates a clear inclination against the unchecked grant of patent monopolies. In this context, the doctrine of licensee estoppel, which prevents a licensee from challenging the validity of a patent they have agreed to use, becomes inapplicable in patent cases. 

Concluding Note: Public interest demands that any individual, including a licensee, should have the right to question the validity of a patent if it appears to be improperly granted or is detrimental to societal interests. This ensures that the patent system remains fair, transparent, and aligned with its primary objective of promoting innovation while safeguarding public welfare. This balanced framework enhances the integrity and credibility of the patent system. By fostering a culture of fairness and accountability, it encourages genuine innovation while deterring attempts to exploit the patent system for undue advantage. Patent holders are assured that their valid inventions will be protected, while licensees and competitors are empowered to challenge questionable patents, ensuring a level playing field. Ultimately, this approach not only strengthens the patent ecosystem but also aligns it with the broader goals of economic development and social welfare. By prioritizing innovation and fair competition, the Indian legal framework creates a dynamic environment where businesses can thrive, consumers can benefit from improved access to technology, and the public interest remains paramount.

Written by:Ajay Amitabh Suman,Patent and Trademark Attorney,High Court of Delhi

LG Electronics India Pvt Ltd vs Bharat Bhogilal Patel & Others

Jurisdiction of Customs Authority in Patent Disputes

Introduction:This case revolves around the interpretation and application of the Patents Act, 1970, and the Customs Act, 1962, concerning the actions of customs authorities in suspending the clearance of imported goods alleged to infringe a patent. The plaintiff, LG Electronics India Pvt Ltd, contested the actions of the customs authorities and the patent holder, Bharat Bhogilal Patel, arguing that such actions amounted to groundless threats under Section 106 of the Patents Act.

Background:The case involves a dispute between LG Electronics India Pvt Ltd (plaintiff), a well-known electronics manufacturer, and Bharat Bhogilal Patel (defendant no. 1), the holder of a patent for a process involving laser engraving. The customs authorities (defendants no. 2 and 3) acted on a complaint filed by the patent holder, leading to the interdiction of the plaintiff's imported goods.

Brief Facts of the Case: Bharat Bhogilal Patel filed a complaint with customs authorities alleging infringement of his patent (No. 189027) by LG Electronics' imported goods. Customs authorities acted on the complaint, interdicting the plaintiff’s consignments. The plaintiff argued that:The customs authority lacked jurisdiction to determine patent infringement. The patent in question lacked novelty and inventive step. The plaintiff filed a suit for:Declaration that the customs actions were void. Injunction against further groundless threats. Damages for alleged harm caused by the interdiction.

Issues Raised: Jurisdiction: Whether the Delhi High Court had territorial jurisdiction to entertain the suit. Authority of Customs: Whether customs authorities could act on a patent holder's complaint without judicial determination of infringement. Groundless Threats: Whether the actions of the patent holder and customs authorities constituted groundless threats under Section 106 of the Patents Act.

Plaintiff's Submissions:The customs authority acted beyond its jurisdiction as it cannot adjudicate patent infringement.The patent lacked novelty, and a revocation petition had been filed before the Intellectual Property Appellate Board (IPAB).Actions by the customs authority were causing irreparable harm to the plaintiff’s business.

Defendants' Submissions: The customs authority was acting within its powers under the Customs Act and the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007. The Delhi High Court lacked territorial jurisdiction as the primary actions occurred in Mumbai. The plaintiff had alternative remedies under the Customs Act. 

Judgments Referred and Their Context:

Jawahar Engineering Co. v. Jawahar Engineers Pvt. Ltd. (1983 PTC 207):

Established that courts can entertain suits based on threatened infringement. Relevant to the plaintiff’s argument on jurisdiction.

Pfizer Products Inc. v. Rajesh Chopra (2006 (32) PTC 301): Discussed jurisdiction based on apprehensions of harm. Supported the plaintiff’s claim that jurisdiction could be invoked in Delhi.

Exphar SA v. Eupharma Laboratories Ltd. (2004) 3 SCC 688: Affirmed that jurisdiction should be tested based on averments in the plaint.

Reasoning of the Judge:

Territorial Jurisdiction: The court relied on the principles laid down in Jawahar Engineering and Pfizer Products to hold that the apprehension of harm in Delhi provided a valid basis for jurisdiction.

Role of Customs Authorities: Customs authorities are primarily implementing bodies under the IPR Rules, 2007, and cannot adjudicate patent infringement. The court emphasized that infringement disputes must be resolved by civil courts or the IPAB.

Groundless Threats: The actions of the patent holder and customs authorities were deemed to cause unnecessary harm to the plaintiff, amounting to groundless threats.

Decision: The Delhi High Court Held that it had jurisdiction to entertain the suit. Issued an injunction restraining customs authorities from interdicting the plaintiff’s consignments based on the patent holder’s complaint. Directed that the customs authority could only act upon a judicial determination of infringement.

Case Title: LG Electronics India Pvt Ltd vs Bharat Bhogilal Patel & Others

Date of Order: 13 July 2012

Case No.: CS (OS) No. 2982/2011

Court: Delhi High Court

Judge: Hon’ble Mr. Justice Manmohan Singh

Advocate Ajay Amitabh Suman

[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.

Satyam Infoway Ltd. vs. Siffynet Solutions Pvt. Ltd.

Domain Names as Trade Identifiers

Introduction:This landmark case delves into the applicability of intellectual property law principles, particularly those governing trademarks, to internet domain names. The Supreme Court of India examined whether domain names could function as identifiers of a business's goodwill and reputation and whether they warranted protection similar to trademarks under Indian law.

Background:The rapid expansion of internet-based businesses necessitated clarity on the legal status of domain names, especially when conflicts arose concerning their similarity. This case is a seminal decision on whether domain names can serve as trade identifiers and be protected under the principles of "passing off."

Parties Involved: Appellant: Satyam Infoway Ltd. (SIL), a leading internet services provider in India, operating under the trade name "Sify."

Respondent: Siffynet Solutions Pvt. Ltd. (SSPL), a company involved in internet marketing and registered domain names resembling those of SIL.

Timeline: SIL incorporated in 1995 and began using the trade name "Sify" in 1999.SSPL registered domain names such as "siffynet.net" and "siffy.com" in 2001 and 2002, respectively.

Initial Conflict:SIL claimed that SSPL's domain names and corporate identity were deceptively similar to its own, causing confusion among consumers and amounting to "passing off."

Proceedings:SIL filed a suit in the City Civil Court, which granted an injunction in favor of SIL. SSPL appealed to the High Court, which overturned the lower court's decision. SIL then appealed to the Supreme Court.

Issues Raised:Are domain names subject to the legal norms applicable to trademarks?Can domain names serve as identifiers of goodwill and reputation in commerce?Does the respondent's use of similar domain names amount to "passing off"?

Submissions of the Parties:

Appellant (Satyam Infoway Ltd.): Claimed extensive goodwill and reputation associated with the trade name "Sify." Argued that SSPL's domain names created confusion and misled consumers. Asserted its prior usage and registration of similar domain names.

Respondent (Siffynet Solutions Pvt. Ltd.): Claimed its domain names were derived from the initials of its founders. Denied knowledge of SIL's trade name and reputation. Argued that there was no overlap in their business operations to cause confusion.

Judgments Referred and Context:

Yahoo Inc. v. Akash Arora (1999): The Delhi High Court held that domain names are akin to trademarks in terms of their potential to create confusion.

Rediff Communication Ltd. v. Cyberbooth (2000):The Bombay High Court recognized that domain names have commercial value and can be protected under intellectual property law.

Dr. Reddy’s Laboratories Ltd. v. Manu Kosuri (2001):The court applied the principles of "passing off" to domain name disputes.

Reasoning of the Judge:

Domain Names as Trade Identifiers: The court acknowledged that domain names have evolved beyond mere internet addresses to function as business identifiers. This transformation brings domain names within the purview of trademark law principles.

Applicability of Passing Off:The court applied the doctrine of "passing off," which protects the goodwill of a business against misrepresentation by another. It emphasized the following elements:

Goodwill: SIL established its reputation in the market with the trade name "Sify."

Misrepresentation: SSPL's domain names were phonetically and visually similar to "Sify," likely causing confusion.

Likelihood of Damage: Consumers could mistake SSPL’s services for SIL’s, potentially harming SIL's reputation.

Balance of Convenience: The court found that the inconvenience to SIL due to the similarity outweighed any potential harm to SSPL.

International Context:The court referenced international practices, including WIPO and ICANN regulations, affirming that domain names are globally exclusive and require stringent protection.

Decision:The Supreme Court allowed SIL's appeal, affirming the decision of the City Civil Court and reversing the High Court's ruling. It granted an injunction against SSPL, restraining it from using the domain names in dispute.

Case Title: Satyam Infoway Ltd. vs. Siffynet Solutions Pvt. Ltd.

Date of Order: 6 May 2004

Case Number: Appeal (Civil) No. 3028 of 2004

Neutral Citation: AIR 2004 SC 3540

Court: Supreme Court of India

Judges: Ruma Pal and P. Venkatarama Reddi

Advocate Ajay Amitabh Suman

[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.

Banyan Tree Holding (P) Ltd Vs A. Murali Krishna Reddy

Intersection of intellectual property rights and the jurisdiction of courts in online disputes

Introduction: This case explores the intersection of intellectual property rights and the jurisdiction of courts in online disputes. Specifically, it addresses whether the hosting of a website accessible in a particular jurisdiction gives rise to territorial jurisdiction in cases of passing off or trademark infringement.

Background: The plaintiff, Banyan Tree Holding (P) Limited, operates in the hospitality sector and has used the trademark "Banyan Tree" and related devices internationally since 1994. The dispute arose when the defendants initiated a real estate project named "Banyan Tree Retreat" in Hyderabad, with promotional materials and a website allegedly infringing on the plaintiff's goodwill and reputation. The plaintiff, a Singapore-based company, claimed the defendants' actions constituted passing off. The primary issue was whether the Delhi High Court could assert jurisdiction over the case based on the defendants' website's accessibility in Delhi.

Parties Involved: The plaintiff is a Singapore-registered company. The defendants, including A. Murali Krishna Reddy, are based in Hyderabad.

Nature of Dispute:The plaintiff alleged passing off by the defendants using a deceptively similar name and logo for their project.

Jurisdictional Challenge:The plaintiff argued that the Delhi High Court had jurisdiction as the defendants' website was accessible in Delhi and solicited business there.

Issues Raised:Whether the Delhi High Court had territorial jurisdiction under Section 20 of the Code of Civil Procedure (CPC) based on the accessibility of the defendants' website in Delhi. Whether the defendants' use of the mark amounted to passing off.To what extent can website interactivity determine jurisdiction in online disputes.

Plaintiff's Submissions: Claimed exclusive rights to the "Banyan Tree" mark and device through extensive international use and goodwill.Asserted jurisdiction under Section 20(c) CPC, stating the defendants' website actively solicited business from Delhi residents. Argued that the website was interactive, enabling inquiries and feedback from potential customers in Delhi.

Defendants' Submissions: Denied jurisdiction, stating neither the parties nor the alleged passing off activities occurred in Delhi. Contended that their website was passive and did not specifically target Delhi customers. Highlighted that their business operations and target audience were confined to Hyderabad.

Judgments Referred:

Casio India Co. Ltd. vs. Ashita Tele Systems Pvt. Ltd. (2003): Established that mere website accessibility does not suffice to confer jurisdiction.

India TV Independent News Service vs. India Broadcast Live LLC (2007): Recognized that interactivity and targeting are essential for establishing jurisdiction.

Zippo Manufacturing Co. vs. Zippo Dot Com (USA): Introduced a sliding scale test for website interactivity to determine jurisdiction.

Dow Jones & Co. Inc. vs. Gutnick (Australia): Applied the effects test to hold jurisdiction where the plaintiff suffered harm.

Reasoning of the Judges:The Division Bench, comprising Chief Justice and Justice S. Muralidhar, examined three critical aspects:

a) Website Accessibility and Jurisdiction:Distinguished between "passive," "interactive," and "targeted" websites. Held that mere accessibility of a website in Delhi does not suffice to establish jurisdiction. The plaintiff must show that the website specifically targeted Delhi residents for business.

b) Burden of Proof on the Plaintiff:The plaintiff must demonstrate that the defendant engaged in commercial activities in the forum state, causing harm or injury within that jurisdiction.

c) Use of Trap Orders:Cautioned against reliance on "trap transactions" unless conducted fairly and transparently. Emphasized that evidence of purposeful targeting and actual harm is essential to substantiate jurisdiction.

Decision:The court held that the plaintiff failed to prove that the defendants specifically targeted Delhi residents or conducted business through their website in Delhi. Consequently, the Delhi High Court lacked territorial jurisdiction to entertain the suit.

Case Title: Banyan Tree Holding (P) Limited vs A. Murali Krishna Reddy & Anr.

Date of Order: 23 November 2009

Case No.: CS(OS) No. 894/2008

Court: High Court of Delhi

Judges: Chief Justice and Justice S. Muralidhar

Advocate Ajay Amitabh Suman

[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.

F. Hoffmann-La Roche Ltd. and Anr. vs Cipla Limited. Ravinder Bhatt, H. J.

Section 3 d of Patent Act 1970 and Evergreening of Patent

Introduction: The case represents a landmark decision in Indian patent law, addressing critical issues such as patent infringement, the public interest in life-saving drugs, and the interpretation of Section 3(d) of the Indian Patents Act. The ruling balanced intellectual property rights with access to affordable healthcare.

Background: This dispute arose over the patent rights of the anti-cancer drug Erlotinib, sold under the brand name Tarceva, owned by F. Hoffmann-La Roche and Pfizer. The plaintiffs alleged Cipla's generic version, marketed as Erlocip, infringed their patent. Cipla countered, citing invalidity and public interest considerations.

Brief Facts of the Case: The plaintiffs held an Indian patent for Erlotinib (Patent No. 196774) since 2007, asserting exclusive rights to manufacture, sell, and distribute the drug. Cipla announced its intention to sell a generic version, prompting Roche to seek an ad-interim injunction to restrain Cipla from manufacturing or selling Erlocip. Cipla argued the patent lacked novelty and inventive step under Section 3(d) and claimed the drug was priced exorbitantly, restricting accessibility to patients in India.

Issues Raised:Whether the plaintiffs’ patent was valid under Indian patent law. Whether Cipla’s manufacture and sale of Erlocip constituted patent infringement. Whether granting an injunction would serve public interest, especially concerning affordable access to life-saving drugs.

Plaintiffs submission: Argued the patent underwent thorough scrutiny before grant, making it presumptively valid. Highlighted Erlotinib's novelty and enhanced efficacy over prior compounds. Emphasized their financial investment in R&D and the potential irreparable harm caused by Cipla’s infringement.

Defendant's submission: Contended the patent was invalid, citing Section 3(d) of the Patents Act, asserting that Erlotinib was a derivative of a known compound lacking enhanced efficacy. Highlighted public interest, arguing that Cipla's generic version was significantly cheaper, thus ensuring access to cancer patients in India. Asserted the balance of convenience favored Cipla as the patent had not been commercially worked in India.

Judgments Referred:

Novartis v. Union of India (Madras High Court, 2007): Examined the scope of Section 3(d) and emphasized enhanced efficacy as a criterion for patentability.

American Cyanamid Co. v. Ethicon Ltd. (UK): Laid down principles for granting interlocutory injunctions, requiring courts to assess balance of convenience and irreparable harm.

Telemecanique v. Schneider Electric: Affirmed that patents confer statutory monopoly, protecting inventors from infringement.

Reasoning of the Judge:

Patent Validity: Recognized the legislative intent behind Section 3(d) to prevent "evergreening" of patents. Determined that Cipla's challenge raised prima facie doubts about Erlotinib's enhanced efficacy, warranting detailed examination.

Public Interest: Prioritized affordability of life-saving drugs. The court noted that Cipla’s version was priced substantially lower, making it accessible to a broader population.

Balance of Convenience: Concluded that denying the injunction served greater public good. The court emphasized that any harm to the plaintiffs could be compensated through damages, whereas public health implications were irreversible.

Decision:The court denied the ad-interim injunction sought by Roche, allowing Cipla to continue manufacturing and selling Erlocip. The judgment underscored the need for balancing patent protection with public health needs.

Case Title: F. Hoffmann-La Roche Ltd. and Anr. vs Cipla Limited

Date of Order: 19 March 2008

Case No.: IA 642/2008 in CS(OS) 89/2008

Neutral Citation: 148(2008)DLT598, MIPR2008(2)35

Court: High Court of Delhi

Judge: Justice S. Ravindra Bhat

Advocate Ajay Amitabh Suman

[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.

Shaktiman Equipments Pvt. Ltd. Vs. Union of India

Corporate Name and Trade Mark Infringement

Introduction:This case involves a dispute over the rectification of the corporate name under Section 16 of the Companies Act, 2013, between the petitioner, M/s. Shaktiman Equipments Pvt. Ltd., and the third respondent, Tirth Agro Technology Pvt. Ltd. The petitioner challenged the order of the Regional Director (R2) directing it to change its name, alleging that it infringed upon the trademark rights of the third respondent.

Background: The Petitioner namely Shaktiman Equipments Pvt. Ltd., incorporated in 2012 under the name "Pioneer Generators Pvt. Ltd." and renamed in 2019. Respondent (R3): Tirth Agro Technology Pvt. Ltd., using the trademark "Shaktiman" since 2001 for agricultural machinery and equipment.

Dispute: The third respondent filed a petition under Section 16 of the Companies Act, alleging that the petitioner's corporate name was identical to its trademark, causing confusion and violating statutory provisions. The Regional Director accepted the petition and directed the petitioner to change its name. The petitioner filed a writ petition challenging this decision.

Trademark Usage: R3 is the registered owner of the trademark "Shaktiman," with registrations across multiple classes since 2001. The petitioner adopted the name "Shaktiman Equipments Pvt. Ltd." in 2019.

Regional Director’s Order: R2 held that the petitioner’s corporate name violated Rule 8A(1)(d) of the Companies (Incorporation) Rules, 2014, and directed a name change.

Arguments Before the Court:R3 argued prior and extensive use of the trademark, resulting in significant goodwill. The petitioner contended that its adoption of the name was bona fide and did not cause confusion.

Issues Raised:Whether the petitioner’s corporate name infringed upon the third respondent’s trademark rights. Whether the petitioner’s use of the name violated Section 16 of the Companies Act and Rule 8(2)(a)(ii) of the Companies (Incorporation) Rules, 2014. Whether businesses operating in different industries can use identical or similar names.

Petitioner's submission: Claimed bona fide adoption of the name "Shaktiman" based on due diligence.

Argued that the term "Shaktiman" is descriptive and used by multiple entities. Highlighted differences in business nature and product categories between the petitioner and R3.

Respondent (R3) Submission: Asserted prior use of the trademark "Shaktiman" since 2001. Highlighted trademark registrations across various classes, including international registrations.Claimed that the petitioner’s name caused confusion and diluted its brand identity.

Judgments Referred:

MindTree Ltd. v. Regional Director:

Held that suffixing additional words to a distinctive name does not negate the similarity.

Montari Overseas Ltd. v. Montari Industries Ltd.:

Affirmed that adoption of a similar trade name likely results in appropriation of goodwill.

Raymond Pharmaceuticals Pvt. Ltd. v. Union of India:

Established that similarity or identity in names is a bar against subsequent adoption.

These precedents reinforced the principles of prior use and the bar on identical names under the Companies Act.

Reasoning of the Court:

Prior Use and Goodwill:The Court emphasized that R3 had been using the trademark "Shaktiman" since 2001, establishing significant goodwill in the agricultural machinery industry.

Violation of Statutory Provisions:The petitioner’s use of the name violated Rule 8(2)(a)(ii) of the Companies (Incorporation) Rules, which prohibits identical names without the trademark owner’s consent.

Distinct Industries Argument:The Court rejected the petitioner’s argument that the parties operated in different industries, holding that similarity in names is barred across trades.

Descriptive Nature of the Mark:The Court held that while "Shaktiman" may be descriptive, its long-standing association with R3 gave it a secondary meaning, making it distinctive.

Public Confusion:The Court found that the similarity in names could confuse the public and dilute the distinctiveness of R3’s trademark.

Decision: The Court dismissed the writ petition and upheld the Regional Director’s order, directing the petitioner to change its corporate name within three months. The Court emphasized that the statutory framework protects prior users and prohibits identical or deceptively similar names to avoid confusion.

Case Title: Shaktiman Equipments Pvt. Ltd. Vs. Union of India & Others

Date of Order: October 14, 2024

Case Number: W.P. No. 12314 of 2021

Neutral Citation: 2024:MHC:4124

Court: High Court of Madras

Bench: Hon’ble Dr. Justice Anita Sumanth

Advocate Ajay Amitabh Suman

[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.

KRBL Ltd. Vs. Praveen Kumar-C Hari Shankar, H.J.

Price differences are irrelevant in cases of trademark infringement.

Introduction:This case revolves around a trademark dispute between KRBL Ltd., the registered owner of the trademark "INDIA GATE" for rice, and the respondents, who marketed rice under the name "BHARAT GATE." The High Court of Delhi addressed the question of whether the respondent's use of "BHARAT GATE" infringed the appellant's trademark rights.

Background:KRBL Ltd., a prominent rice manufacturer, has been using the trademark "INDIA GATE" since 1993, with the mark registered under the Trade Marks Act, 1999. The respondents began selling rice under the name "BHARAT GATE," prompting KRBL Ltd. to file a suit seeking a permanent injunction and damages for trademark infringement and passing off. The dispute escalated when the trial court vacated an earlier ex parte interim injunction granted in favor of KRBL Ltd. The company appealed this decision to the Delhi High Court.

Brief Facts of the Case:

Appellant: KRBL Ltd., a well-known rice manufacturer, owns the trademark "INDIA GATE." 

Respondents: Praveen Kumar and others, engaged in selling rice under the name "BHARAT GATE."

Trademark Conflict:KRBL Ltd. alleged that "BHARAT GATE" was deceptively similar to "INDIA GATE" and amounted to infringement and passing off.The respondents argued that the marks were dissimilar in design, packaging, and phonetics, and that "India" and "Bharat" are synonymous and publici juris.

Trial Court Ruling:The court vacated the interim injunction, holding that the marks were not deceptively similar and catered to different customer segments based on price and quality.

Issues Raised:Whether "BHARAT GATE" is deceptively similar to "INDIA GATE."Whether the registration of "INDIA GATE" grants exclusivity over its components ("India" and "Gate").Whether the differences in packaging, design, and price mitigate the likelihood of confusion.Whether the trial court's decision was based on erroneous reasoning.

Appellant's submission: Asserted that "BHARAT GATE" was phonetically, visually, and conceptually similar to "INDIA GATE." Highlighted the prominence of the India Gate monument in both marks, suggesting an attempt to mislead consumers. Cited several precedents to argue that deceptive similarity should be assessed from the perspective of an average consumer with imperfect recollection.

Respondents' submission:Claimed that "BHARAT GATE" was distinct in phonetics, design, and packaging. Argued that "India" and "Bharat" are synonymous and publici juris, and "Gate" is a generic term. Emphasized the price and quality differences between the products, asserting that they cater to different customer segments.

Judgments Referred:

Amritdhara Pharmacy v. Satyadeo Gupta (1963):

Established the test of an average consumer with imperfect recollection for determining deceptive similarity.

Parle Products (P) Ltd. v. J.P. & Co. (1972):

Highlighted the importance of the overall impression of marks rather than side-by-side comparison.

K.R. Chinna Krishna Chettiar v. Shri Ambal & Co. (1969):

Held that phonetic similarity can establish infringement, even in the absence of visual resemblance.

Renaissance Hotel Holdings Inc. v. B. Vijaya Sai (2022):

Reiterated that price differences are irrelevant in cases of trademark infringement.

Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia (2004):

Emphasized that dishonest adoption of a mark warrants an injunction, irrespective of delay in filing the suit.

Reasoning of the Court:

Deceptive Similarity:The Court held that "BHARAT GATE" was phonetically and conceptually similar to "INDIA GATE." The use of "Bharat" (a synonym for "India") and the prominent depiction of the India Gate monument indicated an attempt to capitalize on the goodwill of the appellant's trademark.

Publici Juris Argument: The Court rejected the argument that "India" and "Gate" are publici juris, emphasizing that the appellant claimed exclusivity over the composite mark "INDIA GATE," not its individual components.

Design and Packaging:Visual differences in packaging and design were deemed insufficient to negate the likelihood of confusion, especially since both marks featured the India Gate monument prominently.

Price and Customer Segments:  The Court dismissed the relevance of price differences, noting that trademarks protect goodwill and consumer perception, regardless of market segments.

Dishonest Adoption: The Court found that the respondents’ adoption of "BHARAT GATE" was a deliberate attempt to mislead consumers and exploit the appellant's reputation.

Decision:The Delhi High Court quashed the trial court's order and restored the interim injunction granted earlier. The respondents were restrained from using "BHARAT GATE" or any deceptively similar mark for rice or related products.

Case Title: KRBL Ltd. Vs. Praveen Kumar & Others

Date of Order: January 15, 2025

Case Number: FAO (COMM) 24/2024

Neutral Citation: 2025:DHC:251-DB

Court: High Court of Delhi

Bench: Hon’ble Mr. Justice C. Hari Shankar and Hon’ble Mr. Justice Ajay Digpaul

Advocate Ajay Amitabh Suman

[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.

Kiran Sehgal vs. Veena Aggarwal

Trademark Registration is no defense in Passing off Action

Introduction:This case involves a trademark dispute between the appellant, Kiran Sehgal, and the respondent, Veena Aggarwal, concerning the alleged deceptive similarity between the trademarks "POWERMAN" and "POWERMEN." The Delhi High Court was tasked with determining whether the interim injunction granted by the trial court restraining the appellant from using the contested trademarks should be upheld.

Background:The respondent, Veena Aggarwal, is the proprietor of the trademark "POWERMAN," which has been in use since April 2000 for manufacturing and selling electrical goods. The trademark is registered as a label mark since February 13, 2008. The appellants, former distributors of the respondent, started using the trademarks "POWERMEN DLX" and "POWERMEN MAXX," leading to the present litigation.

Parties Involved:

Respondent: Veena Aggarwal, proprietor of Power Electro Controls.

Appellants: Kiran Sehgal and others, former exclusive distributors of the respondent’s products.

Dispute:The respondent alleged that the appellants adopted trademarks deceptively similar to "POWERMAN" with dishonest intent to ride on the goodwill of the respondent.

Trial Court Decision:The District Judge (Commercial) granted an interim injunction restraining the appellants from using "POWERMEN DLX" and "POWERMEN MAXX" until the final disposal of the suit.

Appeal:The appellants challenged the interim injunction before the Delhi High Court.

 Issues Raised:Whether the trademarks "POWERMAN" and "POWERMEN" are deceptively similar.Whether the registration of the appellants’ trademarks provides a valid defense against the injunction.Whether the respondent's failure to act against other infringers undermines their case.Whether the alleged monetary claim by the appellants against the respondent is relevant to the dispute.

Appellants Submission:Claimed that "POWERMAN" and "POWERMEN" are distinct marks.Argued that their trademarks are registered, and thus, no injunction could be granted.Asserted that the respondent owes them money, and the suit was filed in retaliation.

Respondent's Submission:Asserted ownership of the "POWERMAN" trademark and alleged deceptive similarity with the appellants’ marks. Claimed that the appellants, as former distributors, were well aware of the respondent’s trademark and adopted similar marks dishonestly.

Judgments Referred:

S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683:

Established that registration of a trademark does not preclude an injunction in a passing-off action.

Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1:

Highlighted the principles for judging passing-off actions, including the significance of goodwill and deceptive similarity.

Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744):

Emphasized that registration does not provide a defense against passing-off if deceptive similarity is established.

Amritdhara Pharmacy v. Satyadeo Gupta (1963):

Discussed the test of an unwary purchaser with imperfect recollection in determining deceptive similarity.

Reasoning of the Court:

Deceptive Similarity:  The Court observed that "POWERMAN" and "POWERMEN" are phonetically and visually similar, with only a minor variation (changing "A" to "E").The addition of suffixes like "DLX" or "MAXX" did not negate the deceptive similarity.

Goodwill and Intent:The appellants were former distributors of the respondent, which indicated knowledge of the respondent’s trademark and suggested dishonest intent.

Registration of Appellants’ Marks:Registration does not protect a party from an injunction in a passing-off action, especially when the later adoption of the mark is dishonest.

Action Against Other Infringers:The respondent is not obligated to sue every infringer, particularly if the infringers are insignificant or do not pose a substantial threat.

Monetary Claims:The appellants’ claim of money owed by the respondent was deemed irrelevant to the trademark dispute.

Decision:The Delhi High Court dismissed the appeal and upheld the interim injunction, restraining the appellants from using the trademarks "POWERMEN DLX" and "POWERMEN MAXX." The Court emphasized that the observations were prima facie and would not affect the final decision in the suit.

Case Title: Kiran Sehgal vs. Veena Aggarwal

Date of Order: January 10, 2025

Case Number: FAO (COMM) 5/2025

Neutral Citation: 2025:DHC:153-DB

Court: High Court of Delhi

Bench: Hon’ble Mr. Justice Navin Chawla and Hon’ble Mr. Justice Ravinder Dudeja

Advocate Ajay Amitabh Suman

[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.

K. Mangayarkarasi & Anr. vs. N.J. Sundaresan & Anr.

Trademarks Right, Right in Rem and its Arbitrability

Background: The plaintiffs are the proprietors of the trademark associated with "Sri Angannan Biriyani Hotel," a name rooted in their family business since the late 20th century. The first plaintiff inherited the trademark from her father and, later, her husband managed the business until his death in 1990. The first respondent, a relative involved in the family business, claimed an assignment of the trademark through agreements executed in 2017 and 2019. The plaintiffs contended these agreements were fraudulent and sought a permanent injunction and damages. The case raised questions about the arbitrability of disputes involving intellectual property rights and allegations of fraud.

Trademark Ownership: The first plaintiff inherited the trademark "Sri Angannan Biriyani Hotel" after the death of her father in 1986. The business was managed by her husband and later by family members, including the first respondent.

Alleged Assignment of Trademark:The first respondent claimed rights to the trademark through assignment deeds executed in 2017 and 2019, which included an arbitration clause.The plaintiffs alleged these agreements were obtained through fraud and misrepresentation.

Dispute:The plaintiffs filed a suit in the Commercial Court, Coimbatore, seeking to restrain the defendants from using the trademark and for damages of ₹20,00,000.The defendants moved an application to refer the dispute to arbitration, which was allowed by the Commercial Court.

Issues Raised:Whether the dispute regarding the alleged fraudulent assignment of a trademark is arbitrable. Whether the arbitration clause in the assignment deeds is valid and enforceable despite allegations of fraud. Can a trademark dispute, which is argued to involve rights in rem, be referred to arbitration? Did the Commercial Court err in referring the matter to arbitration?

Plaintiffs’ Submissions: The assignment deeds were fraudulent and fabricated, rendering the arbitration clause invalid. Trademark disputes, involving rights in rem, are inherently non-arbitrable. Allegations of fraud fall outside the purview of arbitration and require adjudication by a civil court. Several Supreme Court judgments, including Avitel Post Studioz Ltd. v. HSBC PI Holdings and Vidya Drolia v. Durga Trading Corporation, establish that disputes involving fraud and intellectual property rights are non-arbitrable.

Defendants’ Submissions:The arbitration clause in the assignment deeds is binding, and the dispute should be resolved through arbitration.Mere allegations of fraud are insufficient to oust arbitration jurisdiction, as clarified in Rashid Raza v. Sadaf Akhtar.Trademark assignments are contractual matters and can be referred to arbitration.Payments made to the plaintiffs and the plaintiffs' signature on the agreements validate the assignment.

Judgments Referred and Their Context:

Vidya Drolia v. Durga Trading Corporation:

Established a fourfold test to determine arbitrability, emphasizing that disputes involving rights in rem or public interest are non-arbitrable.

Avitel Post Studioz Ltd. v. HSBC PI Holdings:

Held that serious allegations of fraud affecting the validity of an arbitration agreement render the matter non-arbitrable.

Booz Allen & Hamilton Inc. v. SBI Home Finance Ltd.:

Clarified that disputes involving rights in rem are non-arbitrable, while those involving subordinate rights in personam are arbitrable.

Rashid Raza v. Sadaf Akhtar:

Distinguished between fraud affecting the contract as a whole (non-arbitrable) and fraud specific to internal affairs (arbitrable).

Reasoning of the Judge:

Existence of Arbitration Clause:

The arbitration clause in the assignment deeds is binding unless proven otherwise. The plaintiffs admitted to signing the agreements but contested their validity due to alleged fraud.

Arbitrability of the Dispute:

The dispute arises from a contract (assignment deed) and pertains to the validity and enforceability of the trademark assignment. This is a matter in personam and, therefore, arbitrable.

Allegations of Fraud:

Mere allegations of fraud are insufficient to render a dispute non-arbitrable unless they affect the arbitration agreement's validity or have implications in the public domain.

Trademark Disputes and Rights in Rem:

The judge noted that while trademark disputes often involve rights in rem, the specific issue here concerns contractual rights arising from the assignment deed, making it arbitrable.

Decision:The Madras High Court dismissed the revision petition and upheld the Commercial Court’s decision to refer the dispute to arbitration. It emphasized that the allegations of fraud and the validity of the assignment deed could be addressed by the arbitral tribunal.

Case Title: K. Mangayarkarasi & Anr. vs. N.J. Sundaresan & Anr.

Date of Order: 9th January 2025

Case No.: C.R.P. No. 1272 of 2024

Neutral Citation: Not provided

Court: High Court of Madras

Judge: Hon’ble Mr. Justice M. Nirmal Kumar

Advocate Ajay Amitabh Suman

[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.

Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors.

Use of registered trademark as a keyword in Google’s AdWords program and Trademark infringement

Introduction:This case examines intellectual property rights, focusing on whether the use of registered trademarks as keywords in Google's AdWords program constitutes trademark infringement and passing off. The decision rendered by the Madras High Court on 10th September 2012 highlights the legal implications of modern online advertising mechanisms, especially in the context of trademark protection.

Background:The appellant, Consim Info Pvt. Ltd., operates a leading matrimonial website under trademarks such as Bharatmatrimony, Tamilmatrimony, and Telugumatrimony. It alleged that Google India and other respondents, including competitors in the matrimonial services space, had used its trademarks as keywords in Google’s AdWords program, leading to confusion, deception, and diversion of business.The suit aimed to secure a permanent injunction against this practice, asserting that it violated Sections 29 and 30 of the Trade Marks Act, 1999.

Appellant’s Claims:Registered proprietor of 22 trademarks.Google’s AdWords program permitted competitors to use these trademarks as keywords in sponsored advertisements, diverting business traffic and creating confusion. Claimed infringement and passing off.

Respondents’ Defense:Google argued that its AdWords program did not amount to trademark use in the course of trade. Competitors contended that the trademarks were generic and descriptive, and no exclusivity could be claimed.

Issues Raised:Does the use of a registered trademark as a keyword in Google’s AdWords program constitute infringement under the Trade Marks Act? Can such use be considered passing off? Are the appellant's trademarks distinctive enough to warrant exclusive protection? Does Google’s role in allowing such keyword use amount to contributory infringement?

Appellant's submission:Argued that Google’s AdWords program directly enabled trademark infringement. Highlighted that the trademarks had acquired goodwill and distinctiveness, qualifying them for protection under the Trade Marks Act. Relied on judicial precedents emphasizing the exclusive rights conferred by trademark registration.

Respondents' Submission:Claimed the appellant’s trademarks were generic and descriptive. Argued that Google’s AdWords program was an automated tool and did not amount to "use in the course of trade." Competitors contended that no confusion arose as users could discern between organic search results and sponsored links.

Judgments Referred and Their Context:

Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd. (2004): Established that domain names can function as trademarks and that misrepresentation in online spaces constitutes passing off.

Google France v. Louis Vuitton Malletier (European Court of Justice, 2010):Held that search engines providing AdWords services are not directly liable for trademark infringement but must ensure compliance with trademark laws.

T.V. Venugopal v. Ushodaya Enterprises Ltd. (2011):Reiterated the importance of protecting goodwill and reputation built over time against deceptive practices.

Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001):Highlighted factors such as consumer intelligence and likelihood of confusion in determining trademark infringement.

Reasoning of the Judges:

Trademark Use in the Course of Trade:The court noted that Google’s role was limited to providing a platform for advertisers and that it did not itself use the trademarks in trade.

Likelihood of Confusion: The court found insufficient evidence to establish that the use of trademarks as keywords created confusion among users, especially since Google clearly demarcated sponsored links from organic search results.

Generic Nature of Trademarks: Observed that words like “Bharat,” “Tamil,” and “Matrimony” were generic and descriptive, weakening the appellant’s exclusivity claims.

Google’s AdWords Policy: The court accepted Google’s assertion that it prohibited the use of registered trademarks in advertisement titles or text.

Decision: The Madras High Court dismissed the appellant’s suit, holding that: The use of trademarks as keywords in Google’s AdWords program did not constitute trademark infringement or passing off. Google was not liable for contributory infringement as it acted within the framework of existing laws and its AdWords policy.

Case Title: Consim Info Pvt. Ltd. vs. Google India Pvt. Ltd. & Ors.

Date of Order: 10th September 2012

Case No.: O.S.A. Nos. 406 and 407 of 2010

Neutral Citation: MANU/TN/2647/2012

Court: High Court of Madras

Judges: Hon’ble P. Jyothimani and M. Duraiswamy, JJ.

Advocate Ajay Amitabh Suman

[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.

Abacus Montessori School Vs. Abacus International Montessori School

Expanding reach of educational institutions and Geographical Distance

Introduction:This case revolves around a trademark dispute between two educational institutions over the use of the term “Abacus” in their names. The petitioner, Abacus Montessori School, sought to protect its established goodwill and prevent the respondent, Abacus International Montessori School, from infringing on its trademark rights.

Background:The petitioner, Abacus Montessori School, was established in 1987 and operates in Chennai, Tamil Nadu. It has gained a reputation for propagating the Montessori method of teaching. The respondent, Abacus International Montessori School, located in Tirupur, Tamil Nadu, adopted a similar name, leading to the present legal dispute.  The petitioner argued that its prior use and established goodwill entitled it to exclusive rights over the name, while the respondent contended that the term "Abacus" is generic and widely used.

Petitioner’s Establishment and Trademark:Founded in 1987, the petitioner adopted the term "Abacus" in its name. An application for trademark registration of "Abacus Montessori School" under Class 41 (Educational Services) was filed in 2012 and remains pending.

Respondent’s Activities: The respondent school began operations in 2003 in Tirupur. It adopted the name "Abacus International Montessori School" and secured registration under Class 41 in 2003.

Conflict: The petitioner issued a cease-and-desist notice in 2003 but did not pursue further legal action until 2015 when it filed for the expungement of the respondent's trademark.

Issues Raised:Does the respondent’s adoption of the name "Abacus International Montessori School" constitute infringement and passing off of the petitioner’s trademark? Is the geographical separation of the two schools relevant in determining the likelihood of confusion? Can the petitioner claim exclusivity over the term "Abacus"?

Petitioner’s Arguments:The petitioner has been a prior user of the mark since 1987, thereby establishing goodwill and reputation. The identical use of "Abacus" creates confusion and amounts to passing off. The addition of the word "International" in the respondent’s name does not distinguish it sufficiently. The petitioner alleged the respondent’s intention to encroach upon its goodwill, particularly due to the proximity of Tirupur to Chennai.

Respondent’s Counterarguments:  The term "Abacus" is generic and cannot be monopolized. The Montessori method of teaching is a public domain concept. The geographical separation of the schools ensures no overlap in operations. The petitioner’s delay in initiating legal proceedings implies acquiescence.

Judgments Referred and Their Context:

Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd. (2004): Addressed trademark protection for domain names and established the principle of passing off based on goodwill and reputation.

S. Syed Mohideen v. P. Sulochana Bai (2016):Emphasized prior use and distinctiveness as grounds for protecting a trademark.

Anjani Kumar Goenka v. Goenka Institute of Education & Research:Focused on surname-based trademarks and the balance of convenience in disputes over educational institution names.

Mindtree Ltd. v. Regional Director, Northern Region:Highlighted that minor alterations to a name do not eliminate the likelihood of confusion if the primary component is identical.

Reasoning of the Judge:

Prior Use and Goodwill: The petitioner established its use of the name since 1987, long before the respondent began operations in 2003.

Generic Nature of "Abacus":While "Abacus" is generic, the combination "Abacus Montessori School" acquired distinctiveness due to the petitioner’s prolonged and exclusive use.

Likelihood of Confusion:The court found that the identical use of "Abacus" in both names could mislead the public into believing a connection between the two schools.

Geographical Proximity:Despite being located in different cities, the potential for confusion remains high given the expanding reach of educational institutions.

Delay in Action:The court dismissed the respondent’s argument of acquiescence, noting that the petitioner resumed action upon learning about the respondent’s trademark registration.

Decision: The court allowed the petitioner’s application and directed the Registrar of Trademarks to expunge the respondent’s trademark registration. It held that the respondent’s use of "Abacus" constituted passing off and infringement of the petitioner’s rights.

Case Details: Abacus Montessori School Vs. Abacus International Montessori School

Date of Order: 8th January 2025

Case No.: (T) OP (TM) No. 447 of 2023

Neutral Citation: 2025:MHC:4357

Court: Madras High Court

Judge: Hon’ble Dr. Justice Anita Sumanth

Advocate Ajay Amitabh Suman

[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.