Renaissance Hotel Holdings Inc. Vs B. Vijaya Sai

Renaissance Hotel Holdings Inc. Vs B. Vijaya Sai: Trademark Infringement and honesty in adoption

Case Title: Renaissance Hotel Holdings Inc. vs B. Vijaya Sai and Others

Date of Order: 19 January 2022

Case No.: Civil Appeal No. 404 of 2022 (Arising out of SLP(C) No. 21428 of 2019)

Citation: [2022] SCC OnLine SC 40

Court: Supreme Court of India

Judges: Hon'ble Justices B.R. Gavai, B.V. Nagarathna, and L. Nageswara Rao

Introduction:The case of Renaissance Hotel Holdings Inc. vs B. Vijaya Sai is a landmark judgment in Indian trademark law, elucidating the principles of infringement, trans-border reputation, honest adoption and cuncurrent user and the application of Section 29 and Section 30 of the Trade Marks Act, 1999. 

This case involved the appellant, Renaissance Hotel Holdings Inc., a renowned global hospitality chain, and the respondents, B. Vijaya Sai, operating under the name “SAI RENAISSANCE.” The central issue revolved around the use of the trademark “RENAISSANCE” and whether the respondent's use constituted infringement, despite the prefix “SAI.”

Factual Background:The appellant, Renaissance Hotel Holdings Inc., incorporated in Delaware, USA, is a global hospitality chain using the trademark “RENAISSANCE” since 1981, including in India from 1990, with hotels in Mumbai and Goa. The appellant registered the trademark in India under Class 16 (printed materials) and Class 42 (hotel services).

The dispute arose when the appellant discovered that the respondents were operating hotels under the name “SAI RENAISSANCE” in Bangalore and Puttaparthi. The appellant alleged that this usage infringed its registered trademark and sought a permanent injunction and damages.

Procedural Background:The trial court ruled in favor of the appellant, restraining the respondents from using the mark “SAI RENAISSANCE” in relation to printed materials and hotel services under Classes 16 and 42. However, the court rejected the appellant’s claim for damages.

On appeal, the Karnataka High Court reversed the trial court’s decision, holding that the appellant failed to establish trans-border reputation and that the respondents’ use was not detrimental to the appellant’s trademark. The appellant then approached the Supreme Court.

Issues Involved:

1. Whether the appellant's trademark “RENAISSANCE” was infringed by the respondents’ use of “SAI RENAISSANCE.”

2. Whether the High Court erred in its interpretation of Sections 29 and 30 of the Trade Marks Act, 1999.

3. Whether the appellant’s trademark had a trans-border reputation in India.

4. Whether the respondents’ use of the mark was honest concurrent use under Section 12 of the Act? 

Submissions of Parties:

Appellant's Submissions:

The appellant argued that the respondents’ use of “SAI RENAISSANCE” was phonetically and visually similar to its registered trademark, amounting to infringement under Section 29(5) and (9) of the Act.

It relied on judgments like Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], asserting that prior use and registration provide exclusive rights.

The appellant contended that the High Court misapplied Section 29(4), which requires proof of reputation only when the goods/services are dissimilar.

Respondents' Submissions:

The respondents argued that “RENAISSANCE” is a generic term meaning “rebirth” and was used in homage to Sai Baba as “SAI RENAISSANCE”.

They claimed honest concurrent use under Section 12 of the Act and highlighted that their clientele was different from the appellant’s clientele.

Cited cases like Khoday Distilleries Ltd. v. Scotch Whisky Association [(2008) 10 SCC 723] and Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. [(2018) 9 SCC 183] to support their defense.

Discussion on Judgments Cited:

Laxmikant V. Patel v. Chetanbhai Shah established that prior use of a trademark grants exclusive rights irrespective of deceptive similarity.

Ruston & Hornsby Ltd. v. Zamindara Engineering Co. [(1969) 2 SCC 727] ruled that no proof of confusion is necessary when the mark is identical.

Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia [(2004) 3 SCC 90] emphasized the importance of injunctions in trademark infringement.

Reasoning and Analysis:

The Supreme Court held that the High Court misinterpreted Section 29 by applying sub-section (4), which pertains to dissimilar goods/services. Here, both parties were in the hospitality industry, making sub-sections (1), (2), and (3) applicable.

The Court clarified that once a mark is registered, its exclusive use is protected. The addition of the prefix “SAI” did not negate infringement as per Section 29(5) and (9).

The respondents' argument of honest concurrent use was rejected as they failed to prove long, continuous use without knowledge of the appellant’s mark. The Court emphasized textual and contextual interpretation, noting that the High Court overlooked essential conditions of Section 30. 

The Supreme Court outlined how a defendant could establish honesty in adoption of a trademark, particularly under Section 30(1) of the Trade Marks Act, 1999. According to the judgment, for a defendant to successfully claim honest adoption and use, two key conditions must be fulfilled simultaneously:

Honest Practices in Industrial or Commercial Matters:The defendant must demonstrate that the adoption and use of the trademark were in accordance with honest practices within the industry. This involves proving that the selection of the mark was bona fide, without any intention to exploit the goodwill associated with the registered trademark of another party.

No Unfair Advantage or Detriment to the Distinctive Character or Repute of the Registered Mark:The use of the mark must not take unfair advantage of, nor be detrimental to, the distinctive character or repute of the registered trademark. Even if the defendant claims honest adoption, any association that creates a likelihood of confusion or benefits from the reputation of the registered trademark negates the defense.

In this case, the Supreme Court found that the High Court had erroneously considered only the second condition (i.e., lack of unfair advantage or detriment) and overlooked the first essential condition of honest practices. The Court held that the defendants failed to prove that their adoption of “SAI RENAISSANCE” was honest, as the use of the word “RENAISSANCE” was phonetically and visually similar to the appellant’s registered trademark and directly related to the same industry (hospitality services).

The Court emphasized that merely stating the term was chosen due to religious devotion (in reference to Sai Baba) was insufficient. The defendants also could not show continuous, long-term use without knowledge of the appellant’s established global brand. Hence, their defense of honest adoption failed.

For a defendant to establish honesty in adoption, they must show both:Bona fide selection without intent to mislead or benefit from another's trademark, andNo resultant unfair advantage or harm to the existing registered trademark's reputation. 

Final Decision:The Supreme Court quashed the High Court’s order and reinstated the trial court’s injunction against the respondents from using the trademark “SAI RENAISSANCE.” No damages were awarded, and pending applications were disposed of.

This judgment reaffirms the stringent protection offered to registered trademarks in India, emphasizing that even slight variations in usage may constitute infringement when the core trademark is identical.

Dsclaimer: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.

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

Toni & Guy Products Ltd. & Anr. Vs Shyam Sunder Nagpal

Toni & Guy Products Ltd. & Anr. Vs Shyam Sunder Nagpal: Ib Quia Timet Actions Damages could not be granted in the absence of actual infringement.

Case Title:Toni & Guy Products Ltd. & Anr. vs Shyam Sunder Nagpal

Date of Order:22 November 2013

Case No:CS(OS) No. 2224/2012

Citation: (2014) 57 PTC 159

Court:High Court of Delhi

Coram:Hon'ble Ms. Justice Mukta Gupta

Introduction:

The case of Toni & Guy Products Ltd. & Anr. vs Shyam Sunder Nagpal is a significant decision in Indian trade mark law, particularly regarding the applicability of Quia Timet actions—legal proceedings initiated to prevent an apprehended infringement or passing off before it actually occurs. The judgment analyzes the balance between protecting intellectual property rights and the pecuniary jurisdiction of courts, setting a precedent for similar disputes in the future.

Factual Background:

Plaintiffs (Toni & Guy Products Ltd. & Anr.): Both companies, incorporated under the laws of England, are engaged in the manufacturing, marketing, and operation of hair care products and salons under the globally recognized trade mark "TONI & GUY." The mark, coined in 1963 by Mascolo PLC, has gained international repute, including in India, where Toni & Guy operates 400 salons and enjoys substantial goodwill.

Defendant (Shyam Sunder Nagpal): Operating under the name SK Cosmetics, the defendant obtained registration for the mark "TONI & GIRL" in Class 3 (cosmetic and hair care products) in 2009, much after the plaintiffs’ usage and registration of "TONI & GUY."

Procedural Background:

Plaintiffs’ Suit (2012): Filed for permanent injunction against the defendant’s use of "TONI & GIRL," alleging deceptive similarity and potential passing off.

Defendant’s Applications: Sought rejection of the plaint under Order VII Rule 11 CPC for lack of cause of action, return of plaint for lack of pecuniary jurisdiction, and contended that no damages could be claimed as no infringement had occurred.

Issues Involved in the Case:

1. Whether a Quia Timet action can be sustained when the defendant has not commenced the use of the allegedly infringing mark.

2. Whether the suit is maintainable within the pecuniary jurisdiction of the Delhi High Court.

3. Whether damages can be claimed in a Quia Timet action where no actual infringement or passing off has occurred.

Submissions of Parties:

Plaintiffs:

Argued that the defendant’s registration of "TONI & GIRL" posed an imminent threat to their trade mark "TONI & GUY."

Emphasized that Quia Timet actions allow preventive relief even before actual damage occurs.

Claimed substantial goodwill in India and globally, with their mark "TONI & GUY" recognized as a "SUPER BRAND."

Defendant:

Contended that no cause of action existed as they had not used the mark "TONI & GIRL."

Asserted that merely obtaining registration cannot form the basis of a passing off suit.

Argued that the Delhi High Court lacked pecuniary jurisdiction as the only relief surviving was injunction, valued at Rs. 200 each, while damages (valued at Rs. 20 lakhs) were untenable without actual infringement.

Discussion on Judgments Cited:

K. Narayanan v. S. Murli, 2008 (38) PTC 22 (SC): Affirmed that mere registration without use does not automatically constitute infringement.

Mars Incorporated v. Kumar Krishna Mukherjee, 2003 (26) PTC 60 (Del): Established that Quia Timet actions are valid when there is an imminent threat of infringement.

Marks & Spencer Plc. v. One in a Million Ltd., (1998) FSR 265: Recognized that even registration of domain names with intent to misappropriate goodwill can be restrained through Quia Timet actions.

Reasoning and Analysis by the High Court:

Validity of Quia Timet Actions:

The Court, relying on Mars Incorporated, emphasized that Quia Timet actions serve to prevent potential infringement. It rejected the defendant’s contention that the absence of actual use nullifies the plaintiffs’ cause of action, holding that the threat itself suffices.

Legal Maxim Applied: Qui timet damnum — he who fears damage may take preventive action.

Pecuniary Jurisdiction Analysis:

While acknowledging the plaintiffs’ right to injunctive relief, the Court held that damages were not maintainable as no actual infringement occurred. Consequently, the suit, with injunction valued at Rs. 200 and damages at Rs. 20 lakhs, fell outside the pecuniary jurisdiction of the Delhi High Court.

Legal Maxim Applied: Ubi jus ibi remedium — where there is a right, there is a remedy, but jurisdictional limitations must be respected.

Final Decision:

The Delhi High Court concluded:

The suit was maintainable as a Quia Timet action but limited to injunctive relief.

Damages could not be granted in the absence of actual infringement.

The plaint was returned for filing before a court of competent pecuniary jurisdiction.

Conclusion:

The Toni & Guy case is pivotal in elucidating the scope of Quia Timet actions in trade mark law. It reinforces that intellectual property holders need not wait for actual infringement to seek preventive relief, particularly when their goodwill is at risk. However, it also clarifies that damages cannot be claimed in the absence of actual use, highlighting the importance of pecuniary jurisdiction in such matters.

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.

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

Cadila Healthcare Limited Vs Cadila Pharmaceuticals Limited

Cadila Healthcare Limited Vs Cadila Pharmaceuticals Limited:The Need for Higher Standards in Pharmaceutical Trade Mark Disputes

Case Title:Cadila Healthcare Limited Vs Cadila Pharmaceuticals Limited

Date of Order:26 March 2001

Case No.:Civil Appeal No. 2372 of 2001 (Arising out of SLP (C) No. 15994 of 1998)

Citation:AIR 2001 SC 1952, 2001 (5) SCC 73

Court:Supreme Court of India

Coram:Hon'ble Justice B.N. Kirpal, Hon'ble Justice Doraswamy Raju, and Hon'ble Justice British Kumar

Introduction: 

The decision in Cadila Healthcare Limited Vs Cadila Pharmaceuticals Limited is a cornerstone in Indian trade mark law, particularly for pharmaceutical products. This case is often cited for its detailed analysis of the principles governing passing off and the higher standards of scrutiny required when adjudicating trade mark disputes in the pharmaceutical industry. The Supreme Court emphasized that, given the potential health risks, even the slightest possibility of confusion between medicinal products must be avoided, thereby establishing a stringent standard for trade mark protection in the medical field.

Factual Background: 

Appellant (Cadila Healthcare Limited): Post-restructuring of the Cadila Group under Sections 391 and 394 of the Companies Act, 1956, the appellant retained the right to use the name "Cadila." It manufactured and sold the drug "Falcigo," containing Artesunate, for treating Falciparum Malaria. It applied for trade mark registration in August 1996 and began marketing in October 1996.

Respondent (Cadila Pharmaceuticals Limited): Also part of the restructured Cadila Group, the respondent obtained permission in April 1997 to manufacture and import "Falcitab," containing Mefloquine Hydrochloride, also for treating Falciparum Malaria. The appellant alleged that "Falcitab" was deceptively similar to "FalcFalcigo.

Procedural Background: 

Trial Court (Vadodara, 1998): Dismissed the appellant’s application for interim injunction, holding that both drugs differed in appearance, formulation, and price, and were sold only to hospitals and clinics, thus minimizing the chance of confusion.

High Court (Gujarat, 1998): Upheld the trial court’s decision, noting the lack of likelihood of confusion due to the specialized market of Schedule L drugs.

Supreme Court (2001): The appellant challenged the High Court’s decision, leading to an extensive analysis by the Supreme Court on the principles of passing off in the pharmaceutical industry.

Issues Involved in the Case:

Whether the trade marks "Falcigo" and "Falcitab" are deceptively similar? Whether the fact that both drugs are Schedule L drugs (sold only to hospitals and clinics) eliminates the likelihood of confusion? What are the principles to be applied in pharmaceutical trade mark disputes, particularly concerning the health risks posed by confusion?

Appellant’s Submissions: Asserted that "Falcigo" and "Falcitab" are phonetically similar and likely to cause confusion. Emphasized that the potential consequences of such confusion in the pharmaceutical context could be fatal. Argued that the specialized sale of Schedule L drugs did not eliminate the risk of confusion, as physicians and pharmacists are not infallible.

Respondent’s Submissions: Contended that "Falci" is derived from Falciparum Malaria, making it a common prefix in anti-malarial drugs. Highlighted differences in appearance, formulation, and pricing of the two drugs. Stressed that Schedule L drugs are sold only to hospitals and clinics, reducing the risk of confusion.

Discussion on Judgments Cited:

National Sewing Thread Co. Ltd. v. James Chadwick and Bros Ltd., AIR 1953 SC 357: Highlighted that the likelihood of deception must be assessed from the perspective of an average consumer with imperfect recollection.

Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968: Emphasized the "first impression" test and the need to consider trade marks as a whole.

Amritdhara Pharmacy v. Satya Deo, AIR 1963 SC 449: Applied the principle that phonetic and structural similarities must be judged from the viewpoint of an average Indian consumer, including illiterate and semi-literate individuals.

Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980: Differentiated between passing off (common law) and infringement (statutory), noting that phonetic similarity alone can establish infringement.

F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., (1969) 2 SCC 716: Reiterated the importance of visual and phonetic tests in trade mark disputes.

S.M. Dyechem Ltd. v. Cadbury (India) Ltd., (2000) 5 SCC 573: Considered the balance of convenience and comparative strength of cases in trade mark disputes but was criticized by the Court in the present case for undermining phonetic similarity.

Reasoning and Analysis by the Supreme Court and over ruling earlier S Y Dychem Judgement:

The Supreme Court in Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited overruled the decision in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. (2000) 5 SCC 573 by rejecting the principles laid down in the latter regarding the determination of deceptive similarity in trademarks. The Dyechem judgment had introduced a three-test approach for assessing similarity: (1) whether any special aspect of the common feature had been copied, (2) whether the parts of the mark that were different were sufficiently dissimilar to distinguish the two marks as a whole, and (3) whether more importance should be given to the parts that were not common rather than the common elements. 

The Supreme Court in Cadila Healthcare disagreed with this approach, holding that it was inconsistent with the established principles of trademark law, particularly in cases involving pharmaceutical products. The Court emphasized that the principle of phonetic and visual similarity, as laid down in earlier judgments such as Amritdhara Pharmacy v. Satya Deo (AIR 1963 SC 449) and Corn Products Refining Co. v. Shangrila Food Products Ltd. (1960 1 SCR 968), should be the guiding test rather than a detailed dissection of the marks into their component parts. It reiterated that in cases of deceptive similarity, an overall comparison must be made without dissecting the marks into individual elements, as the average consumer perceives trademarks in their entirety rather than in isolated parts.

In Dyechem, the Court had considered the comparison between the marks Piknik and Picnic and concluded that the differences in essential features of the marks outweighed their phonetic similarity. It placed greater weight on the visual distinctions, including the script and packaging, rather than on the phonetic similarity. However, in Cadila Healthcare, the Supreme Court rejected this reasoning, holding that phonetic similarity plays a crucial role in determining the likelihood of confusion, especially in the pharmaceutical industry, where incorrect administration of drugs due to confusion could have serious health consequences. 

The Court pointed out that in cases involving medicinal products, even a slight possibility of confusion must be avoided, as the consequences of such confusion could be life-threatening. It further emphasized that the Dyechem judgment did not correctly apply the principles set out in earlier decisions such as National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. (AIR 1953 SC 357), Durga Dutt Sharma v. N.P. Laboratories (AIR 1965 SC 980), and F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. (1969 2 SCC 716), which had consistently held that the overall phonetic, visual, and structural similarity of marks must be considered, rather than isolating certain features.

The Court also criticized the Dyechem ruling for failing to acknowledge the realities of consumer behavior, particularly in India, where linguistic diversity and literacy levels vary significantly. It noted that Indian consumers, particularly those purchasing pharmaceutical products, may not always be literate or familiar with English words, making phonetic similarity a more significant factor in determining likelihood of confusion than in jurisdictions with higher literacy rates. 

In this context, the Court It cited American cases like Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc., 25 USPQ 2nd 1473 (TTAB 1993) and Glenwood Laboratories, Inc. v. American Home Products Corp., 173 USPQ 19 (1972), which held that stricter standards are necessary for medicinal products due to potential health risks. It emphasized that Dyechem had incorrectly diluted the importance of phonetic similarity by focusing excessively on visual and structural differences.

The Supreme Court in Cadila Healthcare further noted that in Dyechem, undue reliance had been placed on English case law, without accounting for the specific market conditions in India. It rejected the approach taken in Dyechem that considered the standard of a “careful purchaser” rather than that of an average consumer with imperfect recollection, which had been the test consistently applied by the Court in previous cases. 

In light of these considerations, the Supreme Court in Cadila Healthcare expressly disapproved of the reasoning in Dyechem and reaffirmed the principle that phonetic similarity, consumer perception, and the possibility of confusion must take precedence in assessing trademark disputes.

Final Decision:

The Supreme Court disposed of the appeal with the following directions: The trial court was directed to decide the suit expeditiously, considering the principles laid down in the judgment. Emphasized that the risk of confusion in medicinal products necessitates a higher standard of scrutiny. Provided a comprehensive list of factors to consider in passing off actions, including the nature of marks, degree of resemblance, nature of goods, class of purchasers, and mode of purchasing.

Legal Principles Settled:

A stricter standard applies to pharmaceutical trademarks due to potential health risks. Phonetic similarity is a key factor in determining deceptive similarity. The fact that drugs are prescription-based does not eliminate the possibility of confusion. A higher level of judicial scrutiny is required for medicinal product trademarks. The average consumer test applies, considering imperfect recollection and linguistic diversity in India. The judgment remains a cornerstone in Indian trademark law, shaping future disputes involving pharmaceutical products.

Conclusion:

The judgment in Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited is a seminal ruling that has profoundly influenced pharmaceutical trade mark jurisprudence in India. By underscoring the critical public health implications of trade mark confusion in the pharmaceutical industry, the Supreme Court laid down a rigorous standard for adjudicating such disputes, ensuring that patient safety remains paramount. This case continues to serve as a guiding precedent in balancing commercial interests with public welfare in trade mark law.

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.

Written By: 

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

S. Syed Mohideen Vs P. Sulochana Bai

S. Syed Mohideen Vs P. Sulochana Bai:  The Primacy of Prior User Rights in Trade Mark Law

Case Title:S. Syed Mohideen Vs P. Sulochana Bai

Date of Order:17 March 2015

Case No.:Civil Appeal No. 2758 of 2015 (Arising out of SLP (C) No. 12671 of 2014)

Citation:2015 (61) PTC 1 (SC)

Court:Supreme Court of India

Coram:Hon'ble Chief Justice H.L. Dattu and Hon'ble Justice A.K. Sikri

Introduction:The case of S. Syed Mohideen vs. P. Sulochana Bai is a landmark judgment on the doctrine of prior use and the interplay between statutory rights under the Trade Marks Act, 1999, and common law rights. The Supreme Court examined whether a later registered proprietor could claim exclusive rights over a trademark despite the existence of a prior user with an established reputation. The ruling reinforced the principle that statutory rights conferred by registration do not override common law rights acquired through continuous and extensive use. The decision also emphasized that a registered proprietor cannot claim exclusivity against a prior user, even if both parties hold valid trademark registrations.

Factual Background:The respondent, P. Sulochana Bai, was the registered proprietor of the trademark "Iruttukadai Halwa." However, the business of selling halwa under this name was allegedly started by her father-in-law in the year 1900 in Tirunelveli, Tamil Nadu. Over the decades, the shop became synonymous with high-quality halwa and gained widespread recognition. The unique feature of the shop was that it operated only during specific hours in the evening, and its traditional method of preparation made it well-known across India and even internationally. Due to its reputation, the name "Iruttukadai Halwa" became closely associated with the plaintiff’s shop.

The appellant, S. Syed Mohideen, operated a halwa business under the name "Tirunelveli Iruttukadai Halwa." His father had earlier started a shop called "Raja Sweets" near Tirunelveli Railway Station, selling halwa and other sweets. Subsequently, the appellant opened another shop five kilometers from the respondent's store under the name "Nellai Raja Sweets." Eventually, he started using "Tirunelveli Iruttukadai Halwa" for his business, leading to confusion among consumers who believed the appellant's shop was connected to the respondent’s renowned establishment. The respondent sent a legal notice on 20 July 2007, demanding that the appellant cease using the name. The appellant refused, prompting the respondent to file a suit for declaration, permanent injunction, and rendition of accounts.

Procedural Background:The trial court ruled in favor of the respondent on 20 April 2011, holding that she was the prior user of the mark "Iruttukadai Halwa." The court granted a permanent injunction restraining the appellant from using the name. However, it denied the claim for rendition of accounts. The appellant challenged this decision before the Madras High Court, which upheld the trial court’s findings on 7 June 2013. The High Court reaffirmed that the respondent’s use of the mark dated back to 1900, making her the prior user with superior rights over the appellant. The appellant then approached the Supreme Court.

Issues Involved in the Case:The primary issue before the Supreme Court was whether the appellant, despite having obtained registration of the mark "Tirunelveli Iruttukadai Halwa" in 2008, could claim exclusive rights over the trademark against the respondent, who had been using the mark since 1900 but obtained formal registration in 2007. The Court also had to determine whether a prior user of a mark could claim rights superior to those of a registered proprietor under the Trade Marks Act, 1999.

Submission of the Parties:The respondent contended that she and her family had been using the mark "Iruttukadai Halwa" since 1900, long before the appellant began using "Tirunelveli Iruttukadai Halwa." She argued that her mark had gained distinctive character and widespread recognition, making it a household name. She asserted that the appellant’s use of a similar name created confusion and amounted to passing off. The respondent also relied on Section 34 of the Trade Marks Act, 1999, which protects the rights of a prior user.

The appellant countered that he had been in the halwa business for 40 years under the name "Raja Sweets" and had lawfully registered "Tirunelveli Iruttukadai Halwa" in 2008. He contended that since both parties had registered trademarks, the respondent could not claim infringement. He also argued that his shop was located five kilometers away from the respondent’s, and there was no likelihood of confusion. The appellant relied on his registration certificate under Section 25(2) of the Trade Marks Act, claiming that registration conferred exclusive rights to use the trademark.

Discussion on Judgments Cited and Their Context in This Case:The Supreme Court referred to several precedents while analyzing the legal principles involved.

In N.R. Dongre & Ors. v. Whirlpool Corporation & Anr., (1996) 5 SCC 714, the Supreme Court held that prior use of a trademark grants superior rights over subsequent registrations. The Court reiterated that even if a trademark is registered, it does not override the rights of a prior user.

In Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1 All ER 873, the House of Lords laid down the "classical trinity" for passing-off actions, which includes goodwill, misrepresentation, and damage. The Supreme Court applied this principle, holding that the respondent’s goodwill in "Iruttukadai Halwa" was well-established, and the appellant’s use of "Tirunelveli Iruttukadai Halwa" amounted to misrepresentation, potentially causing damage.

The Court also relied on Laxmikant V. Patel v. Chetanbhat Shah & Anr., (2002) 3 SCC 65, which reaffirmed that common law rights of passing off are independent of statutory rights under the Trade Marks Act.

Reasoning and Analysis of the Judge:The Supreme Court held that the doctrine of prior use is well-established in trademark law and is codified under Section 34 of the Trade Marks Act, 1999. The Court reasoned that while both parties held valid registrations, the appellant could not claim exclusive rights against the respondent, who had been using the mark for over a century. The Court clarified that the rights conferred by registration under Section 28(3) of the Act are not absolute and are subject to common law rights of passing off. The Court observed that trademark registration merely recognizes pre-existing rights and does not create new rights.

The Court rejected the appellant’s contention that registration granted him exclusivity, emphasizing that statutory rights under the Trade Marks Act are subject to the rights of prior users. The Court concluded that allowing the appellant to use "Tirunelveli Iruttukadai Halwa" would deceive the public and unfairly encroach upon the respondent’s goodwill and reputation.

Final Decision:The Supreme Court dismissed the appeal and upheld the decisions of the trial court and the High Court. It granted a permanent injunction restraining the appellant from using "Tirunelveli Iruttukadai Halwa" and ordered him to pay Rs. 50,000 in costs to the respondent.

Law Settled in This Case:The doctrine of prior use prevails over trademark registration, granting superior rights to the first user. The statutory rights conferred by trademark registration under Section 28 of the Trade Marks Act, 1999, are subject to common law rights under Section 27(2). Registration does not create new rights but merely recognizes pre-existing rights acquired through use. Even if two parties hold trademark registrations, one cannot claim exclusivity over the other if the latter is a prior user. A passing-off action can succeed even if the defendant has a registered trademark, as goodwill and reputation take precedence over formal registration.

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.

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

Ruston & Hornsby Ltd. Vs The Zamindara Engineering Co.

Ruston & Hornsby Ltd. Vs The Zamindara Engineering Co.:The Test of Infringement and Passing Off in Trade Mark Law

Case Title:Ruston & Hornsby Ltd. Vs The Zamindara Engineering Co.

Date of Order:8 September 1969

Case No.:Civil Appeal No. 1274 of 1966

Citation:1970 AIR 1649, 1969 SCC (2) 725

Court:Supreme Court of India

Coram:V. Ramaswami and J.C. Shah, H. J. 

Introduction :The case of Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co. is a landmark decision in Indian trademark law that dealt with the question of whether the use of a mark similar to a registered trademark, with the addition of a distinguishing suffix, still amounts to trademark infringement. The Supreme Court's ruling emphasized that the primary consideration in an infringement action is the likelihood of deception or confusion in the minds of consumers. The judgment reaffirmed that statutory protection of a registered trademark is absolute and that any mark which is deceptively similar to a registered mark constitutes infringement. The Court also clarified the distinction between infringement and passing-off actions and reinforced the principle that minor modifications in an infringing mark do not absolve liability.

Factual Background :Ruston & Hornsby Ltd. was a company incorporated under the English Companies Act with its registered office in Lincoln, England. The company was engaged in the manufacture and sale of diesel internal combustion engines and their accessories. Its subsidiary in India, Ruston & Hornsby (India) Ltd., was a registered user of the trademark "RUSTON" in India. The plaintiff was the proprietor of the registered trademark "RUSTON" under Registration No. 5120 in Class 7 for internal combustion engines. In June 1955, the plaintiff discovered that The Zamindara Engineering Co., a firm engaged in the manufacture and sale of diesel internal combustion engines, was selling engines under the mark "RUSTAM." The plaintiff believed that "RUSTAM" was deceptively similar to "RUSTON" and would likely confuse consumers. On July 8, 1955, the plaintiff issued a cease-and-desist letter to the defendant, demanding that it stop using the mark "RUSTAM" on its engines. In response, the defendant asserted that "RUSTAM" was not an infringement of "RUSTON" because it was using the mark "RUSTAM INDIA" rather than "RUSTAM" alone. The plaintiff, being dissatisfied with this response, proceeded to file a suit for permanent injunction against the defendant.

Procedural Background:The plaintiff instituted a suit on February 17, 1956, before the Additional District Judge, Meerut, seeking a permanent injunction restraining the defendant from infringing its registered trademark "RUSTON." The trial court dismissed the suit on January 3, 1958, holding that there was no visual or phonetic similarity between "RUSTON" and "RUSTAM" and that the defendant’s use of the mark "RUSTAM" did not constitute an infringement of the plaintiff’s registered trademark. Aggrieved by this decision, the plaintiff appealed before the Allahabad High Court, which held in its judgment dated November 23, 1965, that the use of the mark "RUSTAM" constituted infringement of the plaintiff’s registered trademark "RUSTON" and granted an injunction restraining the defendant from using "RUSTAM." However, the High Court held that the defendant’s use of the mark "RUSTAM INDIA" was not an infringement, as the suffix "INDIA" served as a distinguishing element and indicated that the defendant’s engines were manufactured in India, while the plaintiff’s engines were manufactured in England. The plaintiff challenged this decision before the Supreme Court of India.

Issues Involved in the Case:The primary issue before the Supreme Court was whether the defendant’s use of the mark "RUSTAM" constituted an infringement of the plaintiff’s registered trademark "RUSTON." The Court also had to determine whether the addition of the suffix "INDIA" to the infringing mark "RUSTAM" created sufficient differentiation so as to negate the likelihood of confusion and thereby preclude liability for trademark infringement.

Submission of the Parties:The plaintiff contended that the marks "RUSTON" and "RUSTAM" were phonetically and visually similar and that their resemblance was likely to deceive or cause confusion among consumers. The plaintiff argued that the statutory protection granted to a registered trademark under Section 21 of the Trade Marks Act, 1940, gave the proprietor exclusive rights over the mark and that any unauthorized use of a deceptively similar mark constituted an infringement. The plaintiff further asserted that the use of "RUSTAM INDIA" did not mitigate the deceptive similarity and that the additional word "INDIA" did not sufficiently distinguish the defendant’s mark from the plaintiff’s registered trademark.

The defendant contended that "RUSTON" and "RUSTAM" were distinct marks and that there was no likelihood of deception or confusion. The defendant also argued that the plaintiff’s engines were manufactured in England, whereas the defendant’s engines were manufactured in India, and that the use of "RUSTAM INDIA" was a clear differentiating factor that indicated the origin of the products, thereby eliminating any possibility of confusion.

Discussion on Judgments Cited and Their Context in This Case:The Supreme Court referred to the case of Millington v. Fox (3 My & Cr. 338), which held that fraudulent intent is not necessary for an action of trademark infringement and that an injunction could be granted even in the absence of intent to deceive. This principle was applied in the present case to emphasize that infringement occurs when an unauthorized mark is deceptively similar to a registered trademark, regardless of whether the defendant intended to mislead consumers. The Court also cited Saville Perfumery Ltd. v. June Perfect Ltd. (58 R.P.C. 147 at 161), which established that the statutory protection afforded to a registered trademark is absolute and that once a mark is shown to be deceptively similar, the defendant cannot rely on external distinguishing factors to escape liability. The Supreme Court further analyzed the provisions of Section 21 of the Trade Marks Act, 1940, which states that a registered proprietor has the exclusive right to use the trademark and that any mark so nearly resembling it as to cause confusion constitutes infringement.

Reasoning and Analysis of the Judge:The Supreme Court held that the marks "RUSTON" and "RUSTAM" were phonetically and visually similar and that their use by the defendant was likely to deceive or cause confusion among consumers. The Court observed that in trademark infringement cases, the primary test is whether the impugned mark is likely to cause confusion in the minds of consumers, rather than whether confusion has actually occurred. The Court rejected the High Court’s view that the addition of "INDIA" to "RUSTAM" was a distinguishing factor, holding that if "RUSTAM" was an infringement of "RUSTON," then "RUSTAM INDIA" was also an infringement. The Court reasoned that the addition of a geographical suffix does not negate deceptive similarity and that once a mark is found to be infringing, the use of any additional words does not exonerate the infringer.

Final Decision:The Supreme Court allowed the appeal and granted a permanent injunction restraining the defendant from using the marks "RUSTAM" and "RUSTAM INDIA." The Court also awarded nominal damages of Rs. 100 to the plaintiff and directed the defendant to deliver all price lists, invoices, and advertising material bearing the infringing marks. The appeal was allowed with costs.

Law Settled in This Case:The test for trademark infringement is whether the impugned mark is deceptively similar to the registered mark and likely to cause confusion. The addition of a suffix or distinguishing word does not necessarily negate infringement. In an infringement action, actual deception need not be proved, and likelihood of confusion is sufficient. The statutory protection granted to a registered trademark is absolute, and any mark that closely resembles it constitutes infringement.

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.

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

Bayer Intellectual Property Gmbh & Anr vs Alembic Pharmaceuticals Ltd

Bayer Intellectual Propertys Vs  Alembic Pharmaceuticals Ltd: The Bolar Exemption Under Indian Patent Law: 

Case Title: Bayer Intellectual Property Gmbh & Anr vs Alembic Pharmaceuticals Ltd.

Date of Order: 8th March 2017

Case Numbers: W.P.(C) No.1971/2014 & CS(COMM) No.1592/2016

Court: High Court of Delhi at New Delhi

Judge: Hon'ble Mr. Justice Rajiv Sahai Endlaw

Introduction:

The Bolar Exemption, derived from the US case Roche Products, Inc. v. Bolar Pharmaceutical Co., and incorporated into Indian law through Section 107A of the Patents Act, 1970, provides that certain acts related to patented inventions, if performed solely for obtaining regulatory approvals, do not constitute patent infringement. The landmark case Bayer Intellectual Property Gmbh & Anr vs Alembic Pharmaceuticals Ltd critically examines the scope of the Bolar Exemption, particularly whether it allows for the export of patented inventions from India for the purpose of securing regulatory approvals in foreign jurisdictions. This decision has significant implications for the Indian pharmaceutical industry, balancing patent rights and the need for timely access to generic medicines.

Factual Background:

• Bayer Corporation, a global pharmaceutical giant, held the Indian patent (No. 215758) for Sorafenib Tosylate, a drug used in the treatment of liver and kidney cancer. Natco Pharma Limited obtained a compulsory license in 2012 under Section 84 of the Patents Act to manufacture and sell the drug within India. Bayer, however, alleged that Natco was exporting the patented drug for clinical trials abroad, thereby infringing its patent rights.
• 
  
• Simultaneously, Alembic Pharmaceuticals Ltd. was accused of exporting another patented drug, Rivaroxaban, also held by Bayer, to jurisdictions like the European Union and the United States for regulatory purposes. Bayer sought to enjoin Alembic from exporting the drug, claiming that such exports were beyond the scope of the Bolar Exemption provided under Section 107A.

Procedural Background:

• Bayer filed W.P.(C) No.1971/2014, seeking a direction to the Customs Authorities to prevent the export of Sorafenat (manufactured by Natco) covered under the compulsory license.
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• Bayer also instituted CS(COMM) No.1592/2016 against Alembic Pharmaceuticals Ltd., seeking an injunction against the export of Rivaroxaban.
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• Natco and Alembic defended their actions under Section 107A of the Patents Act, asserting that their exports were for regulatory approvals and thus protected under the Bolar Exemption.

Issues Involved:

• 1. Interpretation of Bolar Exemption under Section 107A: Does Section 107A allow the export of patented inventions for regulatory approvals outside India?
• 2. Interplay between Compulsory Licensing and Bolar Exemption: Does obtaining a compulsory license limit the scope of the Bolar Exemption available to the licensee?
• 3. Territorial Scope of Section 107A: Whether the phrase "or in a country other than India" under Section 107A permits the sale (export) of patented inventions to foreign jurisdictions for regulatory purposes.

Submissions of the Parties:

Bayer’s Submissions:

• Bayer contended that Section 107A allows only domestic activities related to obtaining regulatory approvals and does not extend to exports.
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• It was argued that the absence of the word “export” in Section 107A indicates the legislative intent to confine the Bolar Exemption within the territory of India.
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• Bayer relied on Raghunath Rai Bareja v. Punjab National Bank (2007) 2 SCC 230, emphasizing that the literal rule of statutory interpretation must prevail, and any act not explicitly stated in the statute should not be implied.
• 
  
• Reference was also made to the TRIPS Agreement, particularly Article 31(f), to argue that compulsory licenses are predominantly for domestic supply and not for export, and thus, the Bolar Exemption should also be interpreted restrictively.

Alembic’s Submissions:

• Alembic asserted that the word “selling” in Section 107A includes selling through export, as sale inherently involves the transfer of property, which can occur across borders.
• 
  
• They relied on Padma Ben Banushali v. Yogendra Rathore (2006) 12 SCC 138, advocating a harmonious interpretation of Sections 48, 84, and 107A of the Patents Act.
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• Alembic argued that the purpose of the Bolar Exemption is to ensure that generic manufacturers are ready to enter the market immediately after patent expiry, which necessitates obtaining regulatory approvals during the patent term, even in foreign jurisdictions.
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• Citing the TRIPS Agreement, they emphasized that member states have the discretion to adopt measures necessary for public health, and the Indian legislature, by including the phrase “or in a country other than India,” intended to allow exports for regulatory purposes.

Discussion on Judgments Cited:

• Roche Products, Inc. v. Bolar Pharmaceutical Co. (572 F. Supp. 255 (E.D.N.Y. 1983)): The seminal case that gave rise to the Bolar Exemption, where the US court initially ruled against the use of patented products for regulatory approval, leading to legislative amendments through the Hatch-Waxman Act.
• 
  
• Hiralal Ratanlal v. STO (1973) 1 SCC 216: Reaffirmed the principle of literal interpretation of statutes.
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• Padma Ben Banushali v. Yogendra Rathore (2006) 12 SCC 138: Highlighted that statutory provisions must be interpreted harmoniously to give effect to the legislative intent.
• 
  
• TRIPS Agreement, Articles 7, 8, 30, and 31: Provided the international legal framework for balancing patent rights with public health, allowing member states flexibility in implementing exceptions like the Bolar Exemption.

Reasoning and Analysis by the Judge:

• The court undertook a meticulous examination of Section 107A and its legislative intent:
• 
  
• The Judge noted that the Bolar Exemption is intended to prevent patentees from extending their monopoly beyond the patent term due to delays in obtaining regulatory approvals.
• 
  
• The judge emphasized that the phrase “or in a country other than India” under Section 107A clearly indicates the legislature’s intent to permit the export of patented inventions for regulatory purposes.
• 
  
• Citing the TRIPS Agreement, Justice Endlaw underscored that Indian patent law aligns with international obligations, allowing for measures that promote public health and socio-economic welfare.
• 
  
• The judgment clarified that while Section 48 provides patentees with exclusive rights, Section 107A acts as a statutory exception, permitting certain acts during the patent term, including exports, if solely for obtaining regulatory approvals.

Ruling on the Bolar Exemption:

• The court held that Section 107A of the Patents Act permits the export of patented inventions for the purposes of obtaining regulatory approvals in other countries.
• 
  
• The Court emphasized that the legislative intent behind the Bolar Exemption is to facilitate the timely entry of generic drugs into the market post-patent expiry, including in international markets.
• 
  
• The defendants, Natco and Alembic, were directed to file undertakings ensuring that their exports were solely for regulatory purposes and not for commercial exploitation.
• 
  
• Bayer was granted the right to seek remedies if it could prove that the exported patented inventions were used for unauthorized purposes.
• 
  
• Conclusion:This judgment reaffirms the significance of the Bolar Exemption under Indian patent law, ensuring that generic manufacturers can undertake necessary regulatory procedures during the patent term, both domestically and internationally. The decision strikes a balance between protecting patent holders’ rights and fostering an environment conducive to public health and access to affordable medicines, aligning with India's international commitments under the TRIPS Agreement.

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.

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

Executive Engineer, National Highway Division v. S&P Infrastructure Developers (P) Ltd.

When a Filing of a pleading can be treated as valid filing

Case Title: Executive Engineer, National Highway Division v. S&P Infrastructure Developers (P) Ltd.

Date of Judgment: July 4, 2022

Case Number: O.M.P. (COMM.) 400/2020 

Neutral Citation: 2022:DHC:2374

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Vibhu Bakhru

Introduction:The present case examines an important procedural aspect under Section 34 of the Arbitration and Conciliation Act, 1996—when a filing can be regarded as validly filed. The petitioner sought to challenge an arbitral award but faced procedural hurdles due to defects in filing and re-filing. The Delhi High Court’s discussion on what constitutes a valid filing and the implications of defective submissions is crucial for arbitration practitioners and litigants.

Factual Background:The petitioner, Executive Engineer, National Highway Division, challenged an arbitral award dated September 1, 2019, under Section 34 of the Arbitration and Conciliation Act, 1996. The arbitral award arose from disputes over a road construction project. The petitioner filed the challenge petition on January 13, 2020, but with various defects, leading to multiple rounds of re-filing.

The key procedural aspect that arose was whether the initial defective filing could be considered as a valid filing or whether the petition had to be treated as non-est (non-existent in law), impacting the computation of the limitation period.

Procedural Background:

• The impugned arbitral award was rendered on September 1, 2019.
• Under Section 34(3) of the A&C Act, the petitioner had three months (till December 1, 2019) to file the challenge.
• The petitioner claimed it received the award on September 16, 2019, making the deadline December 16, 2019.
• The petition was initially filed on January 13, 2020, beyond three months but within the additional 30-day grace period under Section 34(3).
• The filing, however, was defective—it lacked signatures, documents, and a hard copy.
• The petition was re-filed multiple times, with the final re-filing on March 2, 2020.
• The respondent contended that the petition should be deemed non-est due to defective initial filing, and the court should not condone the delay beyond the statutory period.

Issues Involved:

• Whether a defective filing can be considered a valid filing for the purposes of limitation under Section 34(3) of the Arbitration and Conciliation Act, 1996.
• Whether the delay in re-filing can be condoned if the initial filing is deemed non-est.
• What constitutes a "validly filed" petition under procedural law.

Petitioner (Executive Engineer, National Highway Division):

• Argued that the petition was filed within the additional 30-day period and the defects were curable.
• Contended that procedural defects such as missing signatures and documents should not render the filing non-est.
• Cited Northern Railway v. M/S Pioneer Publicity Corporation Pvt. Ltd., (2017) 11 SCC 234, which held that re-filing is distinct from initial filing and delay in re-filing can be condoned.
• Respondent (S&P Infrastructure Developers (P) Ltd.)
• Opposed the petition on the ground that the initial filing was non-est and thus, could not be considered a valid filing.
• Argued that since the final corrected filing occurred after the permissible limitation period, the court lacked jurisdiction to condone the delay.
• Cited Union of India v. Bharat Biotech International Ltd., 2020 SCC Online Del 483, which held that an incomplete and defective filing is no filing in the eyes of law.

Judicial Discussion on When a Filing is Valid

1. The Court's Observations on Non-Est Filings:The court held that a defective filing that lacks essential components—such as signatures, vakalatnama, and supporting documents—may be deemed non-est. Relying on Bharat Biotech International Ltd. (supra), the court reaffirmed that such a filing does not trigger limitation computation.

2. Relevance of Section 34(3) and Limitation: Under Section 34(3) of the Arbitration Act, a petition must be filed within three months of receiving the award, with an additional 30-day condonable period for sufficient cause. Beyond this, the court has no jurisdiction to condone delay.

The court clarified:A defective filing does not stop the limitation clock unless the defect is minor.If a petition is filed without signatures, supporting documents, or a vakalatnama, it is considered non-est.The petition must be substantially complete at the time of initial filing for limitation purposes.

3. Application of Bharat Biotech Case:In Bharat Biotech (supra), the Delhi High Court ruled that: A defective filing that is later corrected cannot relate back to the original filing date if the initial filing was materially deficient.If a petition is uploaded electronically but lacks essential elements, it is not a valid filing.Applying this to the present case, the court held that:The January 13, 2020, filing was non-est as it lacked essential elements.The effective filing date was March 2, 2020, making it time-barred.Since the delay beyond the condonable 30-day period could not be excused, the petition was dismissed.

4. Distinguishing from Northern Railway Case:The court distinguished Northern Railway v. Pioneer Publicity Corporation (supra) by clarifying:Re-filing delays can be condoned if the initial filing is valid.If the initial filing is non-est, there is no valid petition to re-file.Since the initial filing in this case was non-est, the court did not condone re-filing delays.

Final Decision:The court dismissed the petition as time-barred, concluding that the filing on January 13, 2020, was non-est.The final valid filing date was March 2, 2020, well beyond the condonable period.As per Section 34(3) of the Arbitration Act, the court lacked jurisdiction to condone further delay.

Key Takeaways:A petition must be substantially complete at the time of initial filing. If a filing lacks fundamental elements, it is non-est and does not stop the limitation period.Re-filing delays can be condoned only if the initial filing was valid.Courts strictly apply Section 34(3), barring petitions beyond the statutory period.

Conclusion:This judgment reinforces the principle that procedural compliance is essential in arbitration challenges. A defective filing that is materially incomplete does not protect litigants from limitation consequences. Practitioners must ensure that all essential components—signatures, documents, vakalatnama, and court fees—are included in the initial submission to avoid their petition being deemed non-est.

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.

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

Mahendra & Mahendra Paper Mills Ltd.Vs Mahindra & Mahindra Ltd.

Principles governing the protection of well-known marks against deceptive similarity and potential passing-off

Case Title: Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.

Date of Judgment: 9 November 2001

Case No.: Civil Appeal No. 7805 of 2001

Neutral Citation: AIR 2002 SC 117; 2002 (2) SCC 147; 2001 AIR SCW 4679

Court: Supreme Court of India

Bench: Hon'ble Justice Mr. D.P. Mohapatra and Hon'ble Justice Mr. Shivaraj V. Patil

Introduction:The case of Mahendra & Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd. (2001) is a seminal decision in Indian trademark law, dealing with the principles governing the protection of well-known marks against deceptive similarity and potential passing-off. The dispute revolved around the defendant company’s use of the name "Mahendra & Mahendra," which the plaintiff alleged was deceptively similar to its established and well-known corporate identity, "Mahindra & Mahindra."The crux of the case lay in whether the defendant's use of the trade name would lead to confusion among consumers and thereby result in passing-off. The Supreme Court's judgment reaffirmed the importance of protecting distinctive trade names and provided clarity on the principles to be applied in cases of passing-off.

Factual Background:

Mahindra & Mahindra Ltd., the plaintiff, was incorporated in October 1945 under the name "Mahindra and Mohammed Ltd." and was later renamed "Mahindra and Mahindra Ltd." in January 1948. Over time, it grew into a flagship enterprise encompassing 15 associated companies engaged in various industrial and trading activities, from automobile manufacturing to IT services. The word "Mahindra" had become a distinctive and well-known trade name associated with their products and services.

In 1996, the plaintiff discovered the existence of the defendant company, Mahendra & Mahendra Paper Mills Ltd., which had issued a public prospectus for its business activities. The name closely resembled the plaintiff's established identity, with the only distinction being the substitution of the vowel "i" with "e" in "Mahindra."The plaintiff alleged that this similarity was not coincidental but a deliberate attempt by the defendant to ride on the goodwill and reputation of the Mahindra group. Consequently, they filed a suit seeking a permanent injunction to restrain the defendant from using the trade name "Mahendra & Mahendra."

Procedural Background:

1. Trial Court:The Single Judge of the Bombay High Court granted an interim injunction in favor of the plaintiff, restraining the defendant from using the name "Mahendra & Mahendra." The court found a prima facie case of deceptive similarity and potential confusion among consumers.

2. Appellate Court:The Division Bench of the Bombay High Court summarily dismissed the defendant's appeal, upholding the trial court's decision.

3. Supreme Court:Dissatisfied with the injunction, the defendant approached the Supreme Court of India by way of a special leave petition, leading to the present judgment.

Issues Involved:

1. Whether the name "Mahendra & Mahendra" was deceptively similar to "Mahindra & Mahindra."

2. Whether the similarity in names was likely to cause confusion or deception in the minds of the public.

3. Whether the defendant's adoption of the name "Mahendra & Mahendra" amounted to passing-off.

4. Whether the grant of an interim injunction was justified in the circumstances of the case.

Plaintiff's Arguments (Mahindra & Mahindra Ltd.)

Established Reputation: The plaintiff contended that "Mahindra" had become a distinctive trade name through decades of consistent use, substantial business activities, and significant advertising investments.

Likelihood of Confusion: The name "Mahendra & Mahendra" was phonetically, visually, and structurally similar, likely causing confusion among consumers.

Intent to Deceive: The prominence of the name "Mahendra & Mahendra" in the defendant's prospectus suggested a deliberate attempt to associate with the Mahindra brand.

Public Perception: Given the wide recognition of the Mahindra brand, an average consumer with imperfect recollection might assume a connection between the two companies.

Defendant's Arguments (Mahendra & Mahendra Paper Mills Ltd.):

Family Name Justification: The defendant asserted that "Mahendra" was derived from the family name of its founders, who had used it in various businesses since 1974.

Distinct Nature of Business: The defendant claimed that its business activities, particularly in the paper industry, did not overlap with those of Mahindra & Mahindra.

Absence of Confusion: Since the businesses were distinct, confusion or deception among consumers was unlikely.

No Unfair Advantage: The defendant argued that it did not seek to capitalize on the Mahindra brand's goodwill and that its own name had acquired independent recognition in Gujarat.

Judicial Analysis and Reasoning:The Supreme Court extensively analyzed the principles governing passing-off actions, relying on established precedents.

Key Legal Precedents Cited:

1. Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142:The Court reiterated that the likelihood of confusion must be assessed from the perspective of an average consumer with imperfect recollection.

2. Wander Ltd. v. Antox India (P.) Ltd., 1990 Supp SCC 727:Emphasized the principle of "balance of convenience" in granting interim injunctions.

3. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73:Laid down factors for assessing deceptive similarity, including phonetic similarity, nature of goods, class of consumers, and surrounding circumstances.

4. Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd., AIR 1966 Bom 149:Highlighted the importance of protecting well-known marks, even if the businesses are dissimilar.

Court's Analysis:The Court observed that the name "Mahindra" had acquired secondary meaning and distinctiveness over five decades of usage.It held that deceptive similarity does not necessarily require identical goods; what matters is the potential for confusion regarding the origin of the goods or services.The defendant's adoption of the name, with a mere change of one vowel, was insufficient to dispel the risk of confusion.The intent to pass off could be inferred from the defendant's emphasis on the "Mahendra & Mahendra" name in its prospectus.The Court also applied the doctrine of res ipsa loquitur — the similarity was so apparent that it spoke for itself.

Final Decision:The Supreme Court upheld the interim injunction granted by the Bombay High Court.

Key Findings:The plaintiff established a strong prima facie case of passing-off.The balance of convenience favored the plaintiff, given its longstanding reputation and the defendant’s comparatively recent entry into the market.Irreparable harm was likely if the defendant continued to use the disputed name.The appeal was dismissed with costs, and the defendant was restrained from using the name "Mahendra & Mahendra" during the pendency of the suit.

Conclusion:This judgment reaffirmed the protective mantle provided by the law to well-known marks under the doctrine of passing-off. The Supreme Court's meticulous application of established legal principles clarified that even when businesses are dissimilar, deceptive similarity in trade names can cause confusion regarding commercial affiliations, thereby justifying judicial intervention.The case serves as a touchstone for businesses seeking to protect their brand identity, emphasizing the significance of long-term reputation, consumer perception, and the prevention of unfair competitive practices.

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.

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

Ram Chandra Maurya Vs. Intellectual Property Appellate Board

Private entities cannot be compelled by writ jurisdiction unless performing public functions.

Case Title: Ram Chandra Maurya v. Intellectual Property Appellate Board & Ors.

Date of Order: 6th February 2025

Case Number: Writ -C No. 22403 of 2020

Neutral Citation: 2025:AHC:17425-DB

Court: High Court of Judicature at Allahabad

Coram: Hon’ble Mr. Justice Ashwani Kumar Mishra & Hon’ble Mr. Justice Donadi Ramesh

Introduction:The case of Ram Chandra Maurya v. Intellectual Property Appellate Board addresses the interpretational boundaries of Section 6 of the Copyright Act, 1957. The petitioner, who claimed copyright ownership over literary works related to the laws of motion, sought to restrain several private entities from allegedly infringing his copyrighted work by manufacturing engines based on his theories.The Allahabad High Court’s decision underscores the limited jurisdiction of the Intellectual Property Appellate Board (IPAB) in copyright matters and clarifies the appropriate remedies available for copyright infringement. 

Detailed Factual Background:

The petitioner, Ram Chandra Maurya, asserted that he had authored literary works titled:Motion’s Fourth and Fifth Law (registered on 15th May 2017),Motion’s Sixth Law (registered on 1st August 2018).These works were registered with the Registrar of Copyrights and claimed to have scientific applications relevant to engine manufacturing. The petitioner alleged that several private companies were manufacturing engines using his copyrighted literary work without authorization, thereby violating his intellectual property rights.The petitioner initially filed a complaint with the IPAB on 14th June 2018, seeking an order to stop the manufacturing activities allegedly based on his copyrighted material. When the complaint was not acted upon promptly, he approached the Allahabad High Court twice through writ petitions to expedite the process.

Detailed Procedural Background:

1. First Writ Petition (Writ-C No. 33023 of 2018):Filed to compel the IPAB to decide the petitioner’s complaint. The High Court dismissed the petition, stating that the petitioner had approached the Court prematurely without allowing reasonable time for the Board to act.

2. Second Writ Petition (Writ-C No. 1976 of 2019):Filed to seek a direction for the Copyright Board to consider the complaint. The Court disposed of the petition, directing the petitioner to submit a fresh representation, which the Board was to decide within three weeks.

3. IPAB’s Decision (Order dated 14th September 2020):The IPAB examined the complaint and dismissed it, holding that the dispute did not fall under the purview of Section 6 of the Copyright Act, 1957.

4. Third Writ Petition (Writ-C No. 22403 of 2020):Filed to challenge the IPAB’s decision and seek injunctive relief against the alleged infringers. This petition was dismissed on 6th February 2025.

Issues Involved in the Case:

1. Whether the complaint filed under Section 6 of the Copyright Act was maintainable.

2. Whether the IPAB had correctly applied the statutory provisions while dismissing the complaint.

3. Whether the petitioner was entitled to a writ of mandamus directing private entities to cease alleged infringing activities.

Petitioner’s Submissions (Ram Chandra Maurya):The petitioner argued that his literary works, registered as Motion’s Fourth, Fifth, and Sixth Laws, were being exploited without consent.The alleged infringing activities involved manufacturing engines based on his copyrighted theories.The petitioner asserted that the IPAB erred in dismissing his complaint, as the matter pertained to the misuse of copyrighted material.He contended that the writ jurisdiction of the High Court should be invoked to prevent ongoing infringement by private entities.

Legal Provision Cited:Section 6 of the Copyright Act, 1957 – The petitioner claimed that the IPAB had jurisdiction under this section to adjudicate the alleged infringement.

Respondents' Submissions (Intellectual Property Appellate Board & Private Entities):The respondents argued that Section 6 was inapplicable to the petitioner's grievance.They emphasized that the provision only deals with disputes about the date of publication or the term of copyright concerning foreign works.The respondents further submitted that the petitioner’s claim related to alleged infringement, which falls under infringement proceedings in civil courts, not IPAB proceedings under Section 6.Regarding the petitioner’s request for a writ of mandamus, the respondents highlighted that private entities cannot be compelled by writ jurisdiction unless performing public functions.

Legal Provisions Cited:Section 6 of the Copyright Act, 1957 – To argue the limited jurisdiction of the IPAB.Article 226 of the Constitution of India – To assert the non-maintainability of the writ petition against private parties.

Detailed Discussion on Relevant Judgments:

1. Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd., (2008) 13 SCC 30

Context: Clarified the jurisdictional boundaries of copyright adjudication.

Relevance: Reinforced the IPAB’s limited jurisdiction under the Copyright Act.

2. Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1

Context: Addressed the scope of copyright protection for literary works.

Relevance: Demonstrated that originality is essential but does not automatically confer enforcement jurisdiction under Section 6.

3. Binny Ltd. v. V. Sadasivan, (2005) 6 SCC 657

Context: Examined the applicability of writ jurisdiction to private entities.

Relevance: The Court applied the principle that writs do not lie against private parties absent public functions.

Detailed Reasoning and Analysis of the Judges

1. Interpretation of Section 6 of the Copyright Act:

The Court undertook a textual and purposive interpretation of Section 6, which states:

 “If any question arises as to whether a work has been published or as to the date on which a work was published for the purposes of Chapter V, or whether the term of copyright for any work is shorter in any other country than that provided in respect of that work under this Act, it shall be referred to the Commercial Court.”

The judges found that the petitioner’s claim did not raise questions regarding publication dates or foreign copyright terms. Instead, it related to alleged unauthorized use of copyrighted material, which falls outside the section’s scope.

2. Jurisdictional Scope of the IPAB:The Court highlighted that the IPAB’s powers are limited to matters specifically enumerated in the Copyright Act. Since the petitioner sought enforcement of rights rather than determination of publication or duration, the Board’s dismissal was upheld.

3. Misapplication of Writ Jurisdiction:The Court emphasized that writ jurisdiction under Article 226 is generally not available against private entities unless public functions are implicated. The petitioner's attempt to restrain private manufacturers via writ proceedings was deemed procedurally improper.

4. Availability of Alternative Remedies:The Court noted that the petitioner failed to pursue available civil remedies for copyright infringement. Civil courts possess jurisdiction over infringement claims and could provide the appropriate relief.

Final Decision of the Court:

The Allahabad High Court dismissed the writ petition with the following conclusions:

1. IPAB’s Order Affirmed: The Board's decision to dismiss the complaint was legally sound, as the case did not pertain to issues under Section 6.

2. No Writ Against Private Parties: The petitioner’s request for a writ of mandamus against private companies was rejected.

3. Alternative Remedy Available: The petitioner was advised to seek redress in a civil court if copyright infringement persisted.

Conclusion:The judgment clarifies the jurisdictional limitations of the Intellectual Property Appellate Board (IPAB), particularly concerning Section 6 of the Copyright Act, 1957. It serves as a guiding precedent for copyright owners to direct infringement claims through civil litigation rather than misconceived applications before the IPAB. The decision also reinforces the principle that Article 226 cannot be indiscriminately invoked against private entities unless they perform public functions.

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.

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