Priya Enterprises Vs. Prestige Housewares (India) Ltd.

Priya Enterprises Vs. Prestige Housewares (India) Ltd.: Effect of dynamic Effect on Trademark Cancellation

Introduction

The case Priya Enterprises vs. Prestige Housewares (India) Ltd. pertains to the rectification of a registered trademark and the territorial jurisdiction of the High Court in such matters. The petitioner, Priya Enterprises, sought the removal of the registered trademark "Prestige" from the register due to its alleged non-use by the respondent, Prestige Housewares (India) Ltd. A key legal issue was whether the Madras High Court had jurisdiction to entertain the rectification petition, given that the trademark was originally registered at the Calcutta Trade Marks Registry. This case explores the interpretation of Section 3 of the Trade and Merchandise Marks Act, 1958, which governs the jurisdiction of High Courts in trademark rectification matters.

Detailed Factual Background

Priya Enterprises, a sole proprietorship based in Saidapet, filed a petition seeking rectification of the register and removal of the trademark "Prestige" on grounds of non-use. The disputed trademark, bearing registration No. 141602 under Class 21, was initially registered in 1949 in the name of Plaster and Stampers Limited, Lancashire, England. It was later transferred to The Prestige Group Limited, England, in 1957. Subsequently, in 1989, the trademark was registered in the name of Prestige Housewares (India) Ltd., Bangalore, with effect from October 4, 1985.

Priya Enterprises was engaged in manufacturing rubber gaskets used in pressure cooker lids, which were compatible with multiple brands, including Prestige, Killicks, Videocon, and Usha. The petitioner used these brand names to indicate compatibility with corresponding pressure cooker models.

Prestige Housewares (India) Ltd. issued a cease-and-desist notice to Priya Enterprises, alleging unauthorized use of its registered trademark "Prestige." In response, Priya Enterprises filed a rectification petition before the Madras High Court, seeking the removal of the trademark from the register on the ground that the respondent had not used it for over five years. The respondent contested the jurisdiction of the Madras High Court, arguing that the trademark was originally registered at the Calcutta Trade Marks Registry, and hence, any rectification proceedings should be initiated before the Calcutta High Court.

Detailed Procedural Background

Priya Enterprises filed O.P. No. 474 of 1995 before the Madras High Court, challenging the validity of the respondent's trademark. The respondent subsequently filed an application (Application No. 3670 of 1997) seeking the dismissal of the petition on jurisdictional grounds, asserting that the rectification petition should have been filed in the Calcutta High Court.

The petitioner did not file a formal counter but contested the matter on the basis that the respondent's registered office was in Bangalore, which falls under the jurisdiction of the Madras Trade Marks Registry. The respondent argued that since the trademark was registered at the Calcutta Trade Marks Registry, rectification proceedings should be filed before the Calcutta High Court, as per Section 3 of the Trade and Merchandise Marks Act, 1958.

Issues Involved in the Case

Whether the Madras High Court had jurisdiction to entertain the rectification petition.

Whether the location of the registered office of the trademark proprietor (Bangalore) had any bearing on territorial jurisdiction.

Whether the rectification petition should be filed before the High Court having jurisdiction over the Trade Marks Registry where the trademark was originally registered.

Detailed Submission of Parties

The respondent argued that under Section 3 of the Trade and Merchandise Marks Act, 1958, jurisdiction for rectification petitions is determined by the location of the Trade Marks Registry where the trademark is registered. Since the "Prestige" trademark was registered at the Calcutta Trade Marks Registry, any rectification petition should be filed in the Calcutta High Court. The respondent relied on multiple precedents to support this argument.

The petitioner contended that since the respondent's registered office was in Bangalore, which falls under the jurisdiction of the Madras Trade Marks Registry, the Madras High Court had jurisdiction. The petitioner further argued that Section 3(e) of the Act was applicable since the original owner of the trademark was a foreign company with no place of business in India at the time of registration. Thus, the petitioner claimed that jurisdiction should be determined based on the respondent’s current business location.

Detailed Discussion on Judgments Cited by Parties

The respondent relied on the following judgments to support its contention that jurisdiction is determined by the location of the Trade Marks Registry where the trademark is registered:

Chunulal v. G.S. Muthiah & Bros., MANU/TN/0211/1959 : AIR 1959 Mad 359

Held that since the Registrar of Trade Marks is located in Bombay and the register is maintained there, the Bombay High Court has exclusive jurisdiction over rectification matters.

Vikas Manufacturing Co. v. Bharaj Manufacturing Co., 1980 (1) P.L.R. 16

The Punjab and Haryana High Court ruled that under Section 3, read with Section 5 of the Trade and Merchandise Marks Act, jurisdiction lies with the High Court within whose jurisdiction the Trade Marks Registry is located.

A recent decision in O.P. No. 803 of 1994 and Appln. No. 2495 in C.S. No. 5 of 1994

The Madras High Court held that an application under Section 56 of the Act can only be entertained by the High Court specified under Section 3 of the Act, meaning that jurisdiction is tied to the original registration location.

Detailed Reasoning and Analysis of Judge

Justice B. Akbar Basha Kadiri analyzed the provisions of Section 3 of the Trade and Merchandise Marks Act, 1958, and emphasized that jurisdiction for rectification proceedings is determined by the location of the Trade Marks Registry where the trademark was registered. The judge rejected the petitioner’s argument that the registered office of the respondent should influence jurisdiction, holding that the situs of the original trademark registration remains the determining factor.

The judge observed that prior to 1959, Calcutta was the sole Trade Marks Registry for all of India. After the establishment of regional registries, trademarks continued to be registered in their respective registries based on applications. Since the "Prestige" trademark was registered in Calcutta, rectification petitions could only be filed in the Calcutta High Court.

The judge further noted that even in cases where a foreign company initially registered a trademark, jurisdiction remains fixed at the location where the application was filed and the register is maintained. The address for service in India, as recorded in the Trade Marks Registry, was in Calcutta, further confirming the jurisdiction of the Calcutta High Court.

Final Decision

The Madras High Court ruled that it did not have jurisdiction to entertain the rectification petition. The petition was returned for presentation before the Calcutta High Court. The respondent’s application (A. No. 3670 of 1997) was allowed, and O.P. No. 474 of 1995 was directed to be filed before the proper court.

Law Settled in This Case

Jurisdiction for trademark rectification petitions is determined by the location of the Trade Marks Registry where the trademark is registered.

The situs of the original registration remains unchanged even if the trademark is later assigned to an entity in another jurisdiction.

The registered office of the trademark proprietor does not affect territorial jurisdiction for rectification proceedings.

Section 3 of the Trade and Merchandise Marks Act, 1958, is the governing provision for determining jurisdiction in trademark rectification cases.

Case Details

Case Title: Priya Enterprises Vs. Prestige Housewares (India) Ltd.

Date of Order: 03.04.1998

Case No.: O.P. No. 474 of 1995, Application No. 3670 of 1997

Neutral Citation: MANU/TN/1746/1998; 1998(Suppl.)ARBLR624(Madras); 1998(18)PTC539(Mad)

Court: Madras High Court

Judge: Justice B. Akbar Basha Kadiri

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

Lakha Ram Vs Balar Marketing

Lakha Ram Vs Balar Marketing: Effect of dynamic Effect on Trademark Cancellation-Para ii

Introduction

The case of Lakha Ram Sharma vs. Balar Marketing Pvt. Ltd. and Ors. primarily revolves around the issue of territorial jurisdiction in rectification proceedings concerning a registered trademark. The petitioner, Lakha Ram Sharma, sought the rectification of the trademark "KUNDAN/KUNDAN CAB" registered in favor of Balar Marketing Pvt. Ltd. The dispute centered on whether the High Court of Delhi had the jurisdiction to entertain the rectification petition or if it should have been filed in the Madras High Court, given that the trademark was originally registered at the Trade Marks Registry in Chennai. The case provides an insightful analysis of the interplay between Section 3 of the Trade and Merchandise Marks Act, 1958, and procedural rules governing trademark rectification proceedings.

Detailed Factual Background

Lakha Ram Sharma, the petitioner, claimed that he had been using the trademark "KUNDAN/KUNDAN CAB/KUNDAN CABLES INDIA" since 1980 for electrical accessories, including switches, fuse units, and cables. However, he later discovered that respondent No. 1, Balar Marketing Pvt. Ltd., had obtained registration of the trademark "KUNDAN/KUNDAN CAB" under Class 9. This registration had been originally applied for by respondent No. 2, a firm based in Chennai. Before the application was granted, respondent No. 2 assigned the trademark to respondent No. 1, which is based in Delhi.

The petitioner had earlier filed a suit for a permanent injunction in the District Court of Delhi against the respondent's use of the trademark. In response, the respondent filed a counterclaim asserting its registered ownership of the mark. This prompted the petitioner to file a rectification petition, seeking the cancellation of trademark registration No. 507445 from the Trade Marks Register. The primary legal question that arose was whether the High Court of Delhi had jurisdiction to entertain the rectification petition, given that the trademark had been registered at the Chennai Trade Marks Registry.

Detailed Procedural Background

The petitioner filed the rectification petition under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958. The respondents contested the jurisdiction of the Delhi High Court, arguing that as per the territorial jurisdiction rules in the Act, the petition should have been filed before the Madras High Court. The respondents relied on Section 3(b) of the Act, which states that jurisdiction lies with the High Court within whose appellate jurisdiction the Trade Marks Registry is situated. Since the application for registration had been made at the Chennai Trade Marks Registry, they argued that only the Madras High Court had jurisdiction.

The petitioner, on the other hand, contended that after the assignment of the trademark to respondent No. 1, which was based in Delhi, the jurisdiction should shift to Delhi under Section 3(a) of the Act. The petitioner also argued that rectification proceedings should be treated as a suit under Section 107 of the Act, and since respondent No. 1 had its office in Delhi, the Delhi High Court had jurisdiction.

Issues Involved in the Case

Whether the High Court of Delhi had territorial jurisdiction to entertain the rectification petition.

Whether the assignment of a trademark during the pendency of a registration application altered the jurisdiction of rectification proceedings.

Whether Section 3(a) or Section 3(b) of the Trade and Merchandise Marks Act, 1958, was applicable to determine the proper forum for rectification.

Detailed Submission of Parties

The respondents argued that since the application for the registration of the trademark was originally filed at the Chennai Trade Marks Registry, the rectification petition could only be filed in the Madras High Court. They relied on the definitions provided under Section 2(1)(h) and the territorial jurisdiction provisions under Section 3(b) of the Act. The respondents also emphasized that under Rule 4 of the Trade and Merchandise Marks Rules, 1959, the appropriate office for rectification applications was the Trade Marks Registry where the trademark was registered. They cited judgments supporting the view that jurisdiction remains fixed with the original Trade Marks Registry, irrespective of any subsequent assignment.

The petitioner, however, contended that since the registered owner (respondent No. 1) was based in Delhi, the rectification petition should be maintainable in Delhi. The petitioner relied on Section 3(a) of the Act, which allows jurisdiction to be determined based on the proprietor’s principal place of business. He further argued that rectification proceedings should be treated akin to a civil suit, which should be heard where the affected party resides.

Detailed Discussion on Judgments Cited by Parties

The respondents relied on the following judgments to support their argument that the rectification petition should be filed in the Madras High Court:

Priya Enterprises v. Prestige Housewares (India) Ltd., 1998 (18) PTC 539

Held that rectification applications must be filed in the High Court that has jurisdiction over the Trade Marks Registry where the mark is registered.

Satya Narayan Khub Chand and Ors. v. Rama Chandra Laxmi Narayan, MANU/AP/0105/1977 : AIR 1977 AP 360

Reaffirmed the principle that the situs of the Trade Marks Registry determines jurisdiction for rectification petitions.

Vikas Manufacturing Company v. Maharaj Manufacturing Company, 1981 PTC 87

Ruled that subsequent assignment of a trademark does not change the jurisdiction of rectification proceedings.

The petitioner cited the following judgments:

Amrutanjan Ltd. v. Ashwin Fine Chemicals and Pharmaceuticals, 1991(2) Arb.L.R. 384 (Mad)

Argued that civil suits could be filed where the registered proprietor carries on business.

K.B. Venkatachala Mudaliar v. Vanaja Match Works, 1990 PTC 259

Addressed the relevance of principal place of business in determining jurisdiction.

Ramu Hosiery Rep. by M. Murugeshan v. Ramu Hosiery Rep. by Pandela Ramu and Anr., 1999 PTC 183

Discussed the implications of assignment on jurisdiction.

Detailed Reasoning and Analysis of Judge

Justice A.K. Sikri analyzed Section 3 of the Trade and Merchandise Marks Act, 1958, and ruled that Section 3(a) did not apply since it covered trademarks already on the register at the commencement of the Act. Instead, Section 3(b) applied to trademarks registered after the Act came into force, in which case the jurisdiction is based on the location of the Trade Marks Registry where the application was filed.

The judge emphasized that even though the trademark had been assigned to a Delhi-based entity, the situs of the trademark’s original registration determined jurisdiction. The judge noted that allowing jurisdiction to change upon assignment would create uncertainty and inconvenience. Thus, the appropriate forum for rectification remained the Madras High Court.

Final Decision

The Delhi High Court ruled that it lacked jurisdiction to hear the rectification petition. The petition was returned for presentation before the appropriate court, i.e., the Madras High Court.

Law Settled in This Case

The territorial jurisdiction for rectification petitions is determined by the location of the Trade Marks Registry where the original application was filed, not by the location of the assignee.

Subsequent assignment of a trademark does not alter the jurisdiction for rectification proceedings.

Section 3(b) of the Trade and Merchandise Marks Act, 1958, is the relevant provision for determining jurisdiction in cases of trademark rectification.

Case Details

Case Title: Lakha Ram Sharma vs. Balar Marketing Pvt. Ltd. and Ors.

Date of Order: 10.10.2001

Case No.: CO No. 19 of 1995

Neutral Citation: MANU/DE/1900/2001; 97(2002)DLT342; 2002(24)PTC115(Del); 2002(3)RCR(Civil)246

Court: Delhi High Court

Judge: Justice A.K. Sikri

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

Effect of dynamic effect in Trademark, Design and Patent Revocation Petition

Effect of dynamic effect: Part:5 [Trademark, Design and Patent Revocation Petitions]

Introduction:The concept of dynamic effect has played a crucial role in determining the jurisdiction of High Courts in intellectual property disputes, particularly in trademark rectification, design cancellation, and patent revocation petitions. Courts have examined whether the impact of an intellectual property right beyond its place of registration can justify jurisdiction in a different High Court. While this principle has been recognized in design and patent revocation cases, its applicability to trademark rectification petitions has been rejected in recent rulings, particularly in The Hershey Company v. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr. (2024).

However, the Hershey judgment appears to have overlooked Section 29(4) of the Trade Marks Act, 1999, which extends trademark rights even to different classes of goods and services where the mark has a reputation in India. The court failed to appreciate that, like patents and designs, trademark rights also extend nationwide, thereby warranting a broader interpretation of jurisdiction under the dynamic effect doctrine. This article critically examines the evolution of the dynamic effect doctrine, its judicial interpretations, and how the Hershey judgment deviates from established IP principles.

The Concept of Dynamic Effect in IP Disputes:The static effect of an intellectual property right refers to its formal registration at a particular registry, while the dynamic effect refers to the wider commercial impact of that right beyond the registry location. In disputes involving patents and designs, courts have acknowledged that such rights operate nationwide, restricting competitors across multiple jurisdictions. This has led to an expanded interpretation of jurisdiction in patent revocation and design cancellation cases.

However, in trademark rectification matters, the Hershey judgment limited jurisdiction to the High Court governing the Trade Marks Registry where the mark was granted, disregarding the nationwide impact of well-known trademarks under Section 29(4) of the Trade Marks Act, 1999.

Dynamic Effect in Design Cancellation Petitions:Girdhari Lal Gupta Vs. K. Gian Chand Jain & Co., AIR 1978 Delhi 146

Factual Background:The Petitioner, Girdhari Lal Gupta, obtained registration for two designs (Nos. 131357 and 131364) under the Designs Act, 1911, for laces. The Respondents, K. Gian Chand Jain & Co., were also engaged in the lace business in Delhi. They contested the validity of these registered designs, claiming that the designs had been published in India before registration, which restricted their business unfairly.

Procedural Background:The Respondents filed applications under Section 51-A of the Designs Act, 1911, before the Delhi High Court, seeking cancellation of the registrations. The Petitioner challenged the jurisdiction, arguing that only the Calcutta High Court had authority since the Register of Designs was maintained in Calcutta.

The Delhi High Court ruled that the impact of a design registration extends beyond the place of registration. Since the Respondents’ business in Delhi was affected, they had a legitimate right to seek cancellation in Delhi. The court held that the dynamic effect of the design’s monopoly was directly felt in Delhi, thereby establishing jurisdiction for the Delhi High Court.

Law Settled

The case established that applications for design cancellation can be filed not only in the Calcutta High Court but also in High Courts where the business impact is felt.

Dynamic Effect in Patent Revocation Petitions:Dr. Reddy’s Laboratories Ltd. & Anr. Vs The Controller of Patents & Ors. (2022/DHC/004746)

Factual Background:The Petitioner, Dr. Reddy’s Laboratories Ltd., filed a patent revocation petition against Patent No. IN 268846, granted to Boehringer Ingelheim for Benzenol derivatives and their medicinal applications. The Petitioners argued that the patent was invalid and filed the revocation petition before the Delhi High Court.

Procedural Background:The Respondent challenged the maintainability of the petition, arguing that since infringement suits were already pending before the Himachal Pradesh High Court, the revocation should be filed as a counterclaim instead of an independent petition.

Decision and Law Settled:The Delhi High Court held that patent revocation is an independent right under Section 64 and can be filed irrespective of pending infringement suits. The court recognized the dynamic effect doctrine, stating that patents impact businesses beyond their place of registration.

Dynamic Effect in Trademark Revocation Petitions:Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma & Anr. (2023/DHC/004746):

This case further reaffirmed the dynamic effect doctrine in Trademark matters. The Delhi High Court upheld jurisdiction, ruling that:Trademark rights impact businesses beyond their place of registration.The Delhi High Court had jurisdiction since the Trademark affected the petitioner’s ability to operate freely in Delhi.These cases confirm that jurisdiction in Trademark revocation is determined by the market impact of the patent, rather than where it was granted.

Rejection of Dynamic Effect in Trademark Rectification Cases: The Hershey Company v. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr. (2024/DHC/004746)

Factual Background:

The Petitioner, The Hershey Company, is a multinational corporation and the registered proprietor of the well-known trademark "HERSHEY". The Respondent, Dilip Kumar Bacha, obtained registration for the trademark "HARSHY" under Application No. 3897902 on July 25, 2018, at the Mumbai Trade Marks Registry.

The Petitioner contended that the Respondent’s mark was phonetically, structurally, and visually similar to "HERSHEY", thereby likely to cause consumer confusion. A rectification petition was filed before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the mark.

Procedural Background:July 25, 2018 – The Respondent’s mark "HARSHY" was registered at the Mumbai Trade Marks Registry.August 2023 – The Petitioner filed the rectification petition before the Delhi High Court.The Respondent objected to jurisdiction, arguing that the correct forum was the Bombay High Court, as per Rule 4 of the Trade Marks Rules, 2017, which links rectification petitions to the Trade Marks Registry where the mark was registered.

Decision and Criticism:The Delhi High Court ruled that trademark rectification petitions must be filed only in the High Court governing the Trade Marks Registry where the mark was granted. The court rejected the dynamic effect doctrine, stating that it applies to patents and designs but not trademarks. Accordingly the matter was referred to larger Bench to evaluate the effect of dynamic effect in Trademark Cancellation Proceeding.

While the court attempted to distinguish trademark rectification from patent and design revocation, it failed to consider Section 29(4) of the Trade Marks Act, 1999, which expands trademark protection beyond its class of goods and services where the mark has a reputation in India.

Section 29(4) states that a trademark may be infringed even if used on completely different goods or services, provided the mark has a reputation in India and its use takes unfair advantage of or is detrimental to the distinctive character or reputation of the mark. This means that trademark rights extend across India, affecting businesses in multiple jurisdictions, much like patents and designs. A well-known mark like "HERSHEY" would be impacted by an infringing mark anywhere in India, justifying jurisdiction in any High Court where the commercial effect of the infringement is felt. The court’s reasoning in rejecting dynamic effect contradicts the expanded protection granted to trademarks under Section 29(4).

By overlooking Section 29(4), the Hershey judgment wrongly confined trademark rectification to the Trade Marks Registry's location, disregarding the nationwide impact of a trademark's reputation and infringement.

Design registrations are specific to particular products as per Section 6 of the Designs Act. Hence, the court wrongly distinguished design and trade mark rights on the ground that trademark rights are in relation to particular products, while design and patent rights are not. Even patent rights are subject to specific products for which patents are granted. Thus, trademarks, patents, and design rights stand on the same footing.

The term "High Court" as defined in Sections 47, 57, and 125 of the Trade Marks Act, 1999, should not derive its interpretation from Rule 3 of the Trade Marks Rules, 2017. Rules are subordinate legislation made under the Act and cannot override the primary statutory provisions.

If the dynamic effect doctrine is valid for patents and designs, where rights extend beyond registration, it should logically apply to trademarks as well, especially in cases involving well-known marks. By restricting jurisdiction to the Trade Marks Registry location, the Hershey judgment creates an artificial and unjustified distinction between different forms of intellectual property rights, weakening trademark enforcement.

Thus, the ruling in Hershey v. Dilip Kumar Bacha should be reconsidered to align trademark jurisprudence with patent and design laws, ensuring a consistent and effective approach to intellectual property protection.

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

The Hershey Company vs. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr.

Effect of Dynamic Effect:Part-4 [Trade Mark Cancellation]

Introduction:

The case concerns a rectification petition filed under Section 57 of the Trade Marks Act, 1999, challenging the registration of the trademark "HARSHY", which was alleged to be deceptively similar to "HERSHEY", a well-known trademark of The Hershey Company. The key issue before the Delhi High Court was whether it had jurisdiction to entertain the rectification petition when the trademark was registered at the Mumbai Trade Marks Registry. The case raised critical questions about territorial jurisdiction, the concept of dynamic effect in trademark law, and the applicability of earlier precedents on this issue. Ultimately the Court referred this question to be decided to Larger Bench.

Factual Background:

The Petitioner, The Hershey Company, is a multinational corporation and the proprietor of the trademark "HERSHEY", registered in multiple jurisdictions, including India. The Respondent, Dilip Kumar Bacha, trading as Shree Ganesh Namkeen, had obtained registration for the trademark "HARSHY", which the petitioner claimed was phonetically, structurally, and visually similar to its well-known mark.

The impugned trademark "HARSHY" was registered under Application No. 3897902 on July 25, 2018, at the Mumbai Trade Marks Registry. The petitioner contended that the respondent’s mark was deceptively similar and likely to cause confusion among consumers. The rectification petition was filed before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the mark.

The Respondent challenged the jurisdiction of the Delhi High Court, arguing that the appropriate High Court for a rectification petition should be the Bombay High Court, as the registration was granted at the Mumbai Trade Marks Registry. This led to the primary legal question—whether the Delhi High Court could assume jurisdiction based on the “dynamic effect” of the trademark registration.

Procedural Background:

July 25, 2018 – The respondent's mark "HARSHY" was registered under Application No. 3897902 at the Mumbai Trade Marks Registry.

August 2023 – The petitioner filed the rectification petition before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the respondent’s mark.

The respondent objected to the jurisdiction of the Delhi High Court, arguing that the case should have been filed before the Bombay High Court, as per Rule 4 of the Trade Marks Rules, 2017, which links rectification petitions to the Trade Marks Registry where the mark was registered.

Issues Involved:

Whether the Delhi High Court had jurisdiction to entertain a rectification petition under Section 57 of the Trade Marks Act, 1999, when the impugned trademark was registered at the Mumbai Trade Marks Registry?

Whether the dynamic effect of a trademark registration—which impacts business interests beyond the place of registration—could be a valid basis for jurisdiction?

Whether the term “the High Court” in Section 57 of the Trade Marks Act should be interpreted to mean only the High Court that has territorial jurisdiction over the Trade Marks Registry where the mark was registered?

Submissions of the Petitioner (The Hershey Company):

The Delhi High Court had jurisdiction because the impact of the respondent’s mark was felt in Delhi due to the wide commercial presence of the petitioner’s brand. The concept of dynamic effect, recognized in Girdhari Lal Gupta v. K. Gian Chand Jain & Co., AIR 1978 Delhi 146, should apply, allowing rectification petitions to be filed where the trademark affects business.  Section 57 of the Trade Marks Act, 1999, does not define "High Court," meaning there is no statutory restriction confining jurisdiction to the High Court governing the Trade Marks Registry where the mark was granted.The Tribunal Reforms Act, 2021, transferred jurisdiction to High Courts without limiting jurisdiction to the Registry location.

Submissions of the Respondent (Dilip Kumar Bacha):The Delhi High Court lacked jurisdiction, as the correct forum was the Bombay High Court, which had territorial juris

diction over the Mumbai Trade Marks Registry.Rule 4 of the Trade Marks Rules, 2017, explicitly links jurisdiction for rectification petitions to the Trade Marks Registry where the mark was registered.The earlier judgment in Girdhari Lal Gupta should not apply to the present case because it dealt with designs, not trademarks, and trademark laws follow different principles.

How and Why the Court Differed from Earlier Judgments on Dynamic Effect:

The Delhi High Court differed from earlier judgments such as Girdhari Lal Gupta by holding that dynamic effect does not apply to rectification petitions under Section 57 of the Trade Marks Act.

The court distinguished trademark law from patent and design law, stating that dynamic effect may apply in patent cases, but trademark rectification has a specific jurisdictional rule under Rule 4 of the Trade Marks Rules, 2017.

Patents and designs confer monopolistic rights, meaning their impact is nationwide and justifies broader jurisdictional principles like dynamic effect.

Trademarks function differently because they are tied to specific goods and services, and their rectification process is linked to the place of registration, as per statutory rules.

The earlier judgments did not consider Rule 4, which explicitly links rectification jurisdiction to the Registry where the mark was granted.

The court held that allowing rectification petitions in any High Court would lead to forum shopping, creating uncertainty for trademark owners.

Final Decision:

The Delhi High Court differed from earlier judgments such as Girdhari Lal Gupta by holding that dynamic effect does not apply to rectification petitions under Section 57 of the Trade Marks Act and referred the matter to larger Bench for adjudication.

Case Title: The Hershey Company Vs. Dilip Kumar Bacha, Trading as Shree Ganesh Namkeen & Anr.

Date of Order: 9 February 2024

Case No.: C.O. (COMM.IPD-TM) 179/2023

Court: Delhi High Court

Judge: Hon'ble Justice Mrs. Prathiba M. Singh

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

Dr. Reddy’s Laboratories Ltd. Vs. Fast Cure Pharma

Effect of Dynamic Effect: Part-3 [Trademark Cancellation]

Introduction:

This case primarily deals with whether a High Court other than the one having jurisdiction over the Trade Marks Registry that granted the trademark can entertain rectification petitions under Section 47 and Section 57 of the Trade Marks Act, 1999. The key issue is whether the dynamic effect of trademark registration—which impacts business interests beyond the place of registration—can be a factor in determining jurisdiction?

Factual Background:

Dr. Reddy’s Laboratories Limited, the petitioner, had filed CS (COMM) 436/2021 against Fast Cure Pharma (FCP), alleging that FCP’s mark "RAZOFAST" infringed its registered trademark "RAZO", which is used for Rabeprazole, a pharmaceutical compound. The Delhi High Court, on 16 August 2023, had already decreed the infringement suit in favor of Dr. Reddy’s Laboratories.

During the pendency of the infringement suit, on 23 August 2022, the petitioner sought adjournment to file a rectification petition for cancellation of the respondent’s "RAZOFAST" mark. The present rectification petition was filed on 15 November 2022, seeking to remove "RAZOFAST" from the Register of Trade Marks. However, the registered mark "RAZOFAST" was granted by the Kolkata Office of the Trade Marks Registry, leading to the issue of whether the Delhi High Court had jurisdiction to hear the rectification petition.

Procedural Background:

16 August 2023 – Delhi High Court decreed the infringement suit in favor of Dr. Reddy’s Laboratories.

23 August 2022 – The petitioner sought adjournment to file a rectification petition.

15 November 2022 – The petitioner filed the rectification petition under Section 57 of the Trade Marks Act before the Delhi High Court.

Respondent’s Argument:Fast Cure Pharma challenged the jurisdiction of the Delhi High Court, arguing that the rectification petition should have been filed before the Calcutta High Court, as the registration was granted by the Kolkata Trade Marks Registry.

Issues Involved:

Whether the Delhi High Court had jurisdiction to entertain a rectification petition under Section 47 and Section 57 of the Trade Marks Act, 1999, when the impugned mark was registered at the Kolkata Trade Marks Registry?

Whether the concept of “dynamic effect” could be applied to determine jurisdiction, allowing the rectification petition to be filed where the trademark’s impact was felt?

Whether jurisdiction in rectification matters should be limited to the High Court having territorial jurisdiction over the Trade Marks Registry that granted the mark?

Submissions of the Parties

Submissions of the Petitioner (Dr. Reddy’s Laboratories Limited):

The Delhi High Court had jurisdiction as the dynamic effect of the trademark was felt in Delhi.The petitioner’s business was adversely affected in Delhi due to the presence of the respondent’s trademark in the Register.Under Section 57 of the Trade Marks Act, a rectification petition can be filed before “the High Court”, and the law does not limit this to the High Court covering the Trade Marks Registry.The petitioner relied on Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146, where the Delhi High Court’s Full Bench recognized that jurisdiction could be based on the dynamic effect of registration.

Submissions of the Respondent (Fast Cure Pharma & Anr.):The Delhi High Court lacked jurisdiction as the correct jurisdiction was the Calcutta High Court, which covered the Kolkata Trade Marks Registry.Section 47 and Section 57 of the Trade Marks Act do not expressly state that rectification petitions can be filed outside the territorial jurisdiction of the Trade Marks Registry where the mark was granted.The Tribunal Reforms Act, 2021, abolished the Intellectual Property Appellate Board (IPAB) and transferred jurisdiction to High Courts. The respondent argued that this did not expand the scope of jurisdiction beyond what existed under IPAB rules.Cited Ayyangar Committee Report, which recommended that rectification petitions should be filed in the High Court covering the Trade Marks Registry where the mark was registered.

Discussion on Judgments and Citations:

The court extensively analyzed judicial precedents to determine the correct interpretation of jurisdiction under the Trade Marks Act:Girdhari Lal Gupta v. K. Gian Chand Jain & Co. AIR 1978 Delhi 146:The Full Bench of the Delhi High Court held that jurisdiction in rectification matters is not confined to the place of registration but also extends to the place where the business impact is felt.This introduced the concept of dynamic effect, recognizing that intellectual property rights impact businesses beyond their place of registration. Kusum Ingots & Alloys Ltd. Vs. Union of India (2004) 6 SCC 254:The Supreme Court ruled that jurisdiction is determined not only by where an order is passed but also by where its legal consequences are felt.Applied to trademarks, this meant that if a business suffers due to a registered mark in Delhi, the Delhi High Court could have jurisdiction.Workmen of Shri Rangavilas Motors (P) Ltd. v. Shri Rangavilas Motors (P) Ltd. (1967) 2 SCR 528: Held that the place where an order affects employees determines jurisdiction. This reasoning was applied to trademarks, concluding that the impact of a trademark in a jurisdiction can be a factor in determining High Court jurisdiction.

Detailed Reasoning and Interpretation of the Court on the Issue of Dynamic Effect:

The court analyzed the static effect and dynamic effect of trademark registration. The static effect refers to the registration of the mark in the Trade Marks Registry, while the dynamic effect refers to the impact of the registration on businesses beyond the place of registration. 

The court held that:The dynamic effect of a trademark is not confined to the place of its registration but extends to all locations where it restricts competitors’ business activities.If a trademark’s presence in the Register adversely impacts a business in Delhi, Delhi High Court can exercise jurisdiction over a rectification petition.Section 57 of the Trade Marks Act does not restrict jurisdiction to the High Court covering the Trade Marks Registry, unlike the Patent Act, which specifies jurisdiction.The Tribunal Reforms Act, 2021, did not change the principle that High Courts could hear rectification petitions based on their impact on businesses.

Final Decision:

The Delhi High Court held that:The rectification petition was maintainable before the Delhi High Court, as the dynamic effect of the registered mark was felt in Delhi.The concept of dynamic effect is applicable to trademark cases, meaning businesses affected by a mark’s presence in the Register can file rectification petitions in their jurisdiction. Jurisdiction for rectification petitions is not confined to the place of grant but includes locations where the trademark has a restrictive impact on businesses.

Law Settled in this Case:

Dynamic effect applies to trademark rectification petitions, allowing businesses to file cases in High Courts where they suffer commercial injury.

Rectification petitions are not limited to the jurisdiction of the Trade Marks Registry that granted the mark.

The abolition of IPAB did not restrict jurisdiction but instead allowed businesses to seek relief where they feel the impact of a registered mark.

Case Title: Dr. Reddy’s Laboratories Ltd. vs. Fast Cure Pharma & Anr.

Date of Order: 4 September 2023

Case No.: C.O. (COMM.IPD-TM) 8/2023

Court: Delhi High Court

Judge: Hon'ble Justice Shri C. Hari Shankar

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

Dr. Reddy’s Laboratories Ltd. & Anr. Vs. The Controller of Patents

Effect of dynamic effect: Part-2 [Patent Revocation Petition  and Patent Appeal]

Introduction This case pertains to a revocation petitionfiled under Section 64 of the Patents Act, 1970, by Dr. Reddy’s Laboratories Limited and MSN Laboratories Pvt. Ltd. against the patent granted to Boehringer Ingelheim International GmbH as well as Patent Appeal. The case primarily examines jurisdictional aspects following the abolition of the Intellectual Property Appellate Board (IPAB) and the reallocation of patent disputes to High Courts.

Factual Background Boehringer Ingelheim applied for a patent for certain Benzenol derivatives and medicinal preparations containing these derivatives via the PCT route on August 23, 2006. The Indian patent application (No. 4844/DELNP/2006) was filed in the Patent Office, Delhi, and was subsequently granted as Patent No. IN 268846 on September 18, 2015.

On October 16, 2021, Dr. Reddy’s Laboratories Limited and MSN Laboratories Pvt. Ltd. filed a revocation petition before the Delhi High Court seeking revocation of the patent on grounds of invalidity under Section 64 of the Patents Act, 1970.

Three days later, Boehringer Ingelheim filed infringement suits against Dr. Reddy’s Laboratories in the High Court of Himachal Pradesh on October 19, 2021, obtaining an interim injunction against them. A similar infringement suit was filed against MSN Laboratories on October 25, 2021, and an interim injunction was granted.

Procedural Background The revocation petition was filed before the Delhi High Court. However, Boehringer raised a preliminary objection challenging the maintainability of the petition, arguing that since the infringement suit was already pending in the Himachal Pradesh High Court, the petitioners should file a counterclaim for revocation there instead of initiating a separate revocation proceeding in Delhi. Boehringer also sought a stay on the revocation proceedings under Section 10 of the Code of Civil Procedure (CPC), pending the disposal of the infringement suits.

Meanwhile, Elta Systems Ltd. filed a patent appeal under Section 117A of the Patents Act, challenging the refusal of its patent application by the Controller of Patents. The patent application was filed as an Indian national phase application under the PCT route at the Mumbai Patent Office. Due to internal administrative processes, the application was transferred for examination to the Delhi Patent Office, where the rejection order was issued. Elta Systems, considering that the rejection order was passed by the Delhi Patent Office, filed its appeal before the Delhi High Court.

Boehringer, in response, contended that since the original application was filed at the Mumbai Patent Office, the appeal should have been filed before the Bombay High Court, as per the territorial jurisdiction governing patent appeals under Section 117A. The issue before the Court was whether the appeal should be heard in Delhi based on the office that issued the rejection or in Mumbai based on the appropriate office at the time of filing.

Issues Involved:

Whether the revocation petition was maintainable before the Delhi High Court despite ongoing infringement suits in Himachal Pradesh?

Whether a revocation petition under Section 64 of the Patents Act could be filed independently, or whether it should only be filed as a counterclaim in the infringement suit?

Whether a patent appeal under Section 117A should be filed in the High Court with jurisdiction over the Patent Office that examined and rejected the application or the Patent Office where the application was initially filed?

Submissions of the Parties

Petitioners (Dr. Reddy’s Laboratories & MSN Laboratories) argued that Section 64 of the Patents Act provides an independent right to seek revocation, irrespective of whether an infringement suit is pending. They claimed that since the patent was granted by the Delhi Patent Office, the appropriate High Court for the revocation petition was Delhi. They asserted that the revocation petition was filed before the infringement suits, thus justifying its maintainability in Delhi.

Respondents (Boehringer Ingelheim) contended that the revocation petition should be filed as a counterclaim in the Himachal Pradesh High Court where the infringement suits were pending, to avoid multiplicity of proceedings. They cited jurisdictional concerns, arguing that once an infringement suit was filed, any revocation claim should be addressed within the same suit. They sought a stay of the revocation proceedings under Section 10 CPC.

In the patent appeal, Elta Systems argued that since the rejection order was issued by the Delhi Patent Office, the appeal should be maintainable before the Delhi High Court. The Controller of Patents, however, submitted that as per Rule 4 of the Patent Rules, the appropriate office for the application was Mumbai, and thus, the Bombay High Court should have jurisdiction over the appeal.

Discussion on Patent Revocation and Patent Appeal Proceedings:

The Court carefully examined the fundamental differences between patent revocation proceedings under Section 64 of the Patents Act and patent appeals under Section 117A. It acknowledged that while both proceedings pertain to the validity of a patent, their scope, legal basis, and jurisdictional implications differ significantly.

A patent appeal under Section 117A is a continuation of the examination process, where an applicant seeks a judicial review of the Controller of Patents' decision regarding the grant or refusal of a patent. The Court determined that an appeal primarily concerns the static effect of a patent decision, as it is restricted to reviewing the correctness of an administrative order. Given that patent appeals are limited to examining the legal and factual correctness of decisions made by the Patent Office, the Court held that they should be heard by the High Court exercising jurisdiction over the appropriate Patent Office at the time of filing, rather than where the final rejection order was issued. 

The Court negated the dynamic effect principle in the case of patent appeals, stating that these proceedings do not create widespread commercial implications but rather focus on the applicant’s specific grievance against the decision of the Patent Office.

In contrast, patent revocation under Section 64 is an independent legal action that any interested party can initiate to challenge the validity of a granted patent. The Court emphasized that revocation proceedings have a dynamic effect, as they do not merely review past administrative decisions but actively challenge the enforceability and legal standing of the patent across the country. The impact of a patent extends beyond the Patent Office and affects businesses, competitors, and researchers nationwide. Thus, revocation cannot be confined to the territorial jurisdiction of the Patent Office but should be determined based on where the commercial and legal consequences of the patent are significantly felt.

The Court drew upon the dynamic effect principle established in Girdhari Lal Gupta v. K. Gian Chand Jain & Co., 1977 SCC OnLine Del 146, which highlighted that intellectual property rights influence markets, industries, and research activities far beyond the place of registration. Applying this principle, the Court reasoned that while appeals must be geographically confined, revocation petitions should be entertained in jurisdictions where their effects are materially experienced.

Final Decision The Delhi High Court held that the revocation petition was maintainable and dismissed Boehringer’s application seeking a stay. In the patent appeal, the Court ruled that the appropriate High Court was the Bombay High Court, as the original filing took place in Mumbai, and transferred the case accordingly.

Law Settled in the Case:

A revocation petition under Section 64 of the Patents Act can be filed independently and is not necessarily required to be a counterclaim in an infringement suit. 

The dynamic effect principle applies differently to revocation petitions and patent appeals. Dynamic effect principle are applicable to patent revocation ensuring that jurisdiction is determined based on the actual legal and commercial impact. 

Patent appeals should be filed in the High Court governing the original Patent Office where the application was filed, rather than where the examination or rejection order was issued.

Case Title: Dr. Reddy’s Laboratories Ltd. & Anr. Vs. The Controller of Patents & Ors.

Date of Order: 10 November 2022

Case No.: C.O.(COMM.IPD-PAT) 3/2021

Neutral Citation: 2022/DHC/004746

Court: Delhi High Court

Judge: Hon'ble Justice Mrs. Prathiba M. Singh

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

Girdhari Lal Gupta Vs K. Gian Chand Jain

Effect of Dynamic Effect Part 1 Design cancellation can be filed at Delhi High Court because of its dynamic effect

Introduction:

This case, decided by the Delhi High Court on December 22, 1977, addressed the jurisdictional question of whether the High Court of Delhi had the authority to entertain applications under Section 51-A of the Designs Act, 1911, for cancellation of registered designs. 

The judgment analyzed the static and dynamic effects of design registration, emphasizing the impact of jurisdiction in intellectual property disputes.

Factual Background:

The appellant, Girdhari Lal Gupta, obtained registration for two designs (131357 and 131364) under the Designs Act, 1911, for laces. The respondents, K. Gian Chand Jain & Co., were also engaged in the same trade in Delhi. They contested the validity of these registered designs, claiming that the designs had been published in India before registration and that their business was being unfairly restricted by the appellant's monopoly over the designs. Consequently, they sought cancellation of these registrations under Section 51-A of the Act.

Procedural Background:

Filing of Petitions under Section 51-A of the Designs Act, 1911:

The respondents, K. Gian Chand Jain & Co., filed applications under Section 51-A before the Delhi High Court, seeking cancellation of the appellant’s registered designs (Nos. 131357 and 131364).Their contention was that these designs had been published in India before registration and that their business was being unfairly restricted by the appellant's monopoly over the designs.

Opposition by the Appellant:

The appellant, Girdhari Lal Gupta, contested the petitions, arguing that the High Court of Delhi lacked jurisdiction.He asserted that only the Calcutta High Court had the authority to entertain such applications since the Register of Designs was maintained in the Patent Office at Calcutta.

Amendment Application by the Appellant:

The appellant moved an application under Order VI, Rule 17 of the Civil Procedure Code, seeking amendment of his written statement to formally raise the jurisdictional plea.He argued that the jurisdiction for cancellation of design registrations was exclusively vested in the High Court of Calcutta, as the Controller of Designs was based there.

Rejection of the Amendment Application:

A learned single judge of the Delhi High Court rejected the appellant’s amendment application, reasoning that it was meritless and unnecessary.The judge held that jurisdiction under Section 51-A was not limited to Calcutta and that any High Court in India could entertain such applications.

Appeal to the Full Bench:

Dissatisfied with the single judge's ruling, the appellant filed an appeal before a Full Bench of the Delhi High Court for a more detailed consideration of the jurisdictional issue.The Full Bench was tasked with examining whether the Delhi High Court had jurisdiction over applications for cancellation of designs registered under the Designs Act.

Decision by the Full Bench:

The Full Bench concluded that an application under Section 51-A could be filed not only in the High Court of Calcutta but also in any other High Court where the dynamic effect of the design registration caused injury to a business.It ruled that the amendment sought by the appellant should have been allowed, but ultimately upheld the jurisdiction of the Delhi High Court to entertain the cancellation petitions.

Issues Involved:

Whether the Delhi High Court had jurisdiction to entertain applications under Section 51-A of the Designs Act, 1911, for cancellation of design registrations?

Whether the jurisdiction was confined to the Calcutta High Court, given that the Register of Designs was maintained at the Patent Office in Calcutta?

Whether the dynamic effect of registration, impacting businesses in various locations, could justify jurisdiction in multiple High Courts?

Submissions of the Parties

The appellant argued that:The High Court of Calcutta had exclusive jurisdiction to entertain applications under Section 51-A since the Register of Designs and the Controller of Designs were located in Calcutta.The cause of action arose only at the place of registration, which was Calcutta, and thus, any application for cancellation of registration should be made before the Calcutta High Court.

The respondents countered that:The registration of the design had a dynamic effect beyond Calcutta, affecting businesses across India, including Delhi.Since their business was suffering due to the wrongful monopoly granted by the registration, they had the right to seek cancellation in the jurisdiction where they conducted their business.Section 2(7) of the Designs Act defined ‘High Court’ in a broad manner, which did not restrict jurisdiction exclusively to Calcutta.

How the Court Reached the Conclusion that the Dynamic Effect of Design Was Felt at Delhi:

The Full Bench observed that the impact of a design registration extends beyond the place where it is registered. The registered proprietor enjoys an exclusive monopoly over the design, which prevents competitors from using it across the country. 

The court noted that:The respondents were conducting business in Delhi and alleged that their commercial activities were adversely affected by the appellant’s registered designs.The appellant had filed suits for infringement against the respondents in Delhi, which demonstrated that he was enforcing his monopoly rights in this jurisdiction.The effect of registration was not merely static (i.e., limited to the Register of Designs in Calcutta), but also dynamic—it restricted competitors in other locations, including Delhi.

Citing the Supreme Court judgment in Workmen of Shri Rangavilas Motors (P) Ltd. v. Shri Rangavilas Motors (P) Ltd. (AIR 1967 SC 1040), the Full Bench emphasized that jurisdiction must be determined based on where the legal injury occurs, rather than the mere location of the administrative authority.The injury to the respondents' trade occurred in Delhi, as they were unable to sell or manufacture laces with similar designs due to the appellant’s design registration.

Therefore, the court concluded that the dynamic effect of the design’s monopoly was directly felt in Delhi, thereby establishing jurisdiction for the Delhi High Court to entertain the cancellation petition under Section 51-A of the Designs Act.

Final Decision:

The Delhi High Court held that:The application for amendment made by the appellant should have been allowed since the jurisdictional plea was a substantial legal issue.

The Delhi High Court had jurisdiction to entertain the applications under Section 51-A because the respondents' business was affected by the design registration.

An application under Section 51-A could be filed either in the High Court of Calcutta (where the Register of Designs was maintained) or in a High Court where the dynamic effect of the registration caused legal injury.

The case was remanded for further proceedings before the learned single judge.

Law Settled in this Case:

A High Court other than Calcutta can entertain applications for cancellation of a design under Section 51-A if the applicant's business interests are affected within its territorial jurisdiction.

The dynamic effect of registration, which extends beyond the place of registration and impacts businesses nationwide, is a valid consideration for determining jurisdiction.

Case Title: Girdhari Lal Gupta Vs K. Gian Chand Jain & Co.

Date of Order: 22 December 1977

Neutral Citation: AIR 1978 DELHI 146, ILR (1978) 1 DELHI 472, 14(1978) DLT 132

Court: Delhi High Court

Judge(s): Hon'ble Justice V.S. Deshpande, H.L. Anand, S. Chadha

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

Apex Laboratories Private Limited Vs. The Registrar of Copyrights & Anr.

The Impugned Art of the second respondent's artistic work was a copy or a substantial reproduction of the petitioner’s work, hence the same was rectified

Facts of the Case:

The petitioner, Apex Laboratories Private Limited, filed a petition under Section 50 of the Copyright Act, 1957, seeking rectification of the Register of Copyrights by expunging the copyright registration No.A-90270/2011, dated 29.03.2011, granted to the second respondent for the artistic work “ZINCOVIT WITH FRUITS DEVICE LABEL.” The petitioner claimed prior use of the ZINCOVIT trademark since 1988 and copyright registration of its label since 1997. The second respondent had entered into an agreement with the petitioner in 2007 for manufacturing ZINCOVIT SYRUP, but after the agreement was terminated in 2009, the second respondent obtained a copyright registration for a substantially similar label.

Issues:

Whether the second respondent's artistic work was a copy or a substantial reproduction of the petitioner’s work? 

The Court examinedPrior Copyright and Trademark Rights:

The petitioner had registered the word mark ZINCOVIT on 16.03.1988 and obtained copyright registration for its ZINCOVIT SYRUP artistic label on 22.10.1997 (No.A-54243/1997).The petitioner’s label depicted fruits and vegetables in a distinctive manner, which was first published in 1990.

Unauthorized Registration by the Second Respondent:

The second respondent applied for copyright registration on 29.12.2009, long after the petitioner had secured its copyright.

The registration was granted on 29.03.2011 (No.A-90270/2011).

The petitioner argued that the second respondent was merely a contract manufacturer and had no independent rights over the ZINCOVIT label.

Substantial Copying and Judicial Precedents:

The Court compared both artistic works and found that the second respondent’s work was either a direct copy or a substantial reproduction of the petitioner’s copyrighted label.

A Division Bench of the Allahabad High Court (Judgment dated 11.07.2014) had already held that the petitioner was the prior user, and the second respondent's artistic work was similar to the petitioner’s.

The Court also noted that the second respondent’s trademark applications for ZINCOVIT in Classes 31 & 32 were dismissed as abandoned, and the trademark registration in Class 29 was directed to be rectified by order dated 14.06.2024 in (T)OP(TM) No.443 of 2023.

Decision:

The Court allowed the petition and directed the Registrar of Copyrights to rectify the Register by expunging the second respondent’s copyright registration No.A-90270/2011 for ZINCOVIT WITH FRUITS DEVICE LABEL. The order was to be implemented within four weeks.

Case Title: Apex Laboratories Private Limited Vs. The Registrar of Copyrights & Anr.

Date of Order: 13th February 2025

Case Number: (T)OP(CR)/6/2024

Court: High Court of Judicature at Madras

Hon'ble Judge: Justice Senthilkumar Ramamoorthy

Cellectis Vs. The Assistant Controller of Patents and Designs

Amendments to a patent specification and claims can be allowed at the appellate stage if they comply with Section 59 of the Patents Act.

Facts of the Case:

The appellant, Cellectis, filed Indian Patent Application No. 10437/DELNP/2015 for a method of engineering allogenic and highly active T-cells for immunotherapy. The application was published on 12th February 2016, and a request for examination was filed on 17th April 2017. The First Examination Report (FER) was issued on 13th December 2019, citing objections under Sections 2(1)(ja), 3(d), and 3(h) of the Patents Act. After hearings and claim amendments, the patent was ultimately rejected on 23rd November 2022 under Section 3(i) of the Patents Act, as the claims were deemed to involve a method of diagnosis/treatment of humans, which is non-patentable.

Issues:

Whether amendments to the complete specification and claims can be made at the appellate stage before the High Court? 

Reasoning of the Court:

The Court analyzed whether amendments to the complete specification and claims were permissible under Section 59 of the Patents Act, 1970. The following three requirements under Section 59 were examined:

Nature of the Amendment: The amendment must be in the form of a disclaimer, correction, or explanation. The appellant’s amendments removed references to "method of treating or preventing cancer or infections in the patients", which was considered a valid disclaimer. The inclusion of "derived from a healthy donor" in claims 1 and 2 was classified as a correction.

No Introduction of New Subject Matter: The amendment must not introduce any matter not originally disclosed in the specification. The Court found that the amendments did not add any new subject matter beyond what was already disclosed in the original specification.

Scope of Claims: The amended claims must remain within the scope of the original claims. The Court observed that the scope of the invention remained unchanged as the modifications were only clarificatory in nature and did not expand the original claims.

The Court relied on two judgments to support its conclusion:

Societe Des Produits Nestle SA v. Controller of Patents and Designs & Anr., 2023 SCC OnLine Del 582 – This judgment held that the High Court, while hearing an appeal against a refusal order passed by the Controller, has the same powers as the Controller under Section 15 of the Patents Act, which includes the power to require amendments.

Opentv Inc. v. Controller of Patents, 2023 SCC OnLine Del 2771 – This case confirmed that amendments at the appellate stage are permissible as long as they comply with Section 59. It also clarified that whether the amendment is directed by the Court or proposed by the applicant, it must remain within the original claim scope.

The appellant modified the claims to remove references to treatment and introduced disclaimers to ensure compliance with Section 59. Since the amendments did not introduce new subject matter or extend the scope of the original claims, they were considered valid.

Decision:

The Court allowed the amendment application, permitting the modified claims and amended specification to be taken on record. The matter was listed for further consideration regarding whether the amendments overcame the objections under Section 3(i) of the Patents Act.

Law Point Settled:

Amendments at the Appellate Stage: Amendments to a patent specification and claims can be allowed at the appellate stage if they comply with Section 59 of the Patents Act.

Case Title: Cellectis Vs. The Assistant Controller of Patents and Designs

Date of Order: 28th February 2025

Case Number: C.A.(COMM.IPD-PAT) 6/2023

Citation:2025:DHC:1466

Court: High Court of Delhi

Hon'ble Judge:Hon'ble Justice Shri Justice Amit Bansal

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

Rohit Sharma Vs A.M Market Place Pvt Ltd.

Rohit Sharma Vs A.M Market Place Pvt Ltd. : Failure to file a written statement within 120 days from the date of service results in an absolute forfeiture of this right

Introduction:The case of Rohit Sharma Vs A.M Market Place Pvt Ltd. was adjudicated by the High Court of Delhi concerning issues related to service of summons, procedural compliance, and forfeiture of the right to file a written statement under the Commercial Courts Act. The primary dispute revolved around whether the appellant, Rohit Sharma, was properly served and whether his right to file a written statement was rightly denied.

Detailed Factual Background:A.M Market Place Pvt Ltd., the plaintiff, operates an e-commerce platform under the brand name “LIMEROAD.” It alleged that Rohit Sharma and others were running a fraudulent scheme by setting up a website called www.limeroadwinner.in, falsely posing as representatives of the plaintiff’s prize department. The fraudulent website offered lotteries and lucky draws using the plaintiff’s brand name, deceiving individuals into depositing money in exchange for purported rewards such as LED televisions, cars, and laptops.

Summons were issued to the appellant-defendant No.1 (Rohit Sharma): by all modes on August 2, 2018. The trial court deemed him served after a postal remark indicated that the summons was refused by his mother. Since he did not appear, the trial court proceeded ex parte against him on December 19, 2018. Subsequently, Rohit Sharma filed an application to recall the ex parte order, contending that he had no knowledge of the proceedings and that the refusal of service by his mother was erroneous. The trial court allowed the recall of the ex parte order but denied him the right to file a written statement, as the 120-day period prescribed under the Commercial Courts Act had elapsed.

Detailed Procedural Background:The appellant filed an appeal against the order of the single judge denying him the right to file a written statement. His primary contention was that he was not properly served, and thus, the 120-day period should not be counted from an alleged improper service. The appeal also sought condonation of a 263-day delay in refiling.

Issues Involved in the Case:Whether service of summons through speed post with a remark of refusal by the appellant’s mother constituted valid service under the CPC and Delhi High Court (Original Side) Rules, 2018. Whether the appellant’s right to file a written statement could be denied due to non-filing within the statutory period under the Commercial Courts Act.

The respondent-plaintiff contended that:The order of the trial court was justified as service was deemed valid when the postal report stated that the appellant’s mother refused service.Under the Commercial Courts Act, failure to file a written statement within 120 days results in forfeiture, which cannot be relaxed.The delay in filing/re-filing the appeal was excessive and unjustified.

Detailed Discussion on Judgments Cited by Parties and Their Context The court referred to the following judgments:M/s. Print Pak Machinery Ltd. vs. M/s. Jay Kay Papers Converters, AIR 1979 Del 217 (F.B.) – It was held that in case of conflict between CPC and High Court Rules, the latter would prevail. This supported the view that service via speed post with refusal was deemed valid. Iridium India Telecom Ltd. vs. Motorola Inc., (2005) 2 SCC 145 – This case reaffirmed the precedence of special procedural rules over general CPC provisions. 

SCG Contracts (India) Private Limited vs. K.S. Chamankar Infrastructure Private Limited & Ors., (2019) 12 SCC 210 – It upheld that a defendant loses the right to file a written statement if it is not filed within 120 days of service under the Commercial Courts Act.

OKU Tech Pvt. Ltd. Vs. Sangeet Agarwal & Ors., 2016 SCC OnLine Del 6601 – This case confirmed that the 120-day limitation is mandatory, and no extension can be granted.

Detailed Reasoning and Analysis of the Judge:

The High Court analyzed the validity of the service of summons and whether the appellant was rightly deemed served. The court held that the trial court correctly proceeded ex parte as per the order dated September 25, 2018, deeming service complete based on the postal remark. The appellant’s argument that he was unaware of the proceedings lacked substantiation, especially since no affidavit from his mother was filed to refute the postal authority’s report.

Regarding the right to file a written statement, the court reaffirmed the mandatory nature of the 120-day limitation under the Commercial Courts Act. The court noted that procedural amendments aimed to ensure swift disposal of commercial cases, and allowing extensions beyond statutory limits would defeat the legislative intent. Since the appellant had failed to challenge the September 25, 2018 order deeming him served, the consequences of delayed filing were unavoidable.

Final Decision The High Court dismissed the appeal and held that the trial court’s decision was legally sound. It ruled that the appellant had been properly served and that his right to file a written statement was rightly forfeited. The delay in refiling the appeal was deemed excessive and unjustified.

Law Settled in This Case:Deemed Service: A refusal of service by a family member at the defendant’s residence constitutes valid service under procedural law. 

Strict Application of 120-Day Limitation: Under the Commercial Courts Act, failure to file a written statement within 120 days from the date of service results in an absolute forfeiture of this right.High Court (Original Side) Rules Prevail Over CPC:

In case of procedural conflict, the High Court Rules will govern the matter.Necessity of Challenging Foundational Orders: If a party does not challenge an initial procedural order (such as an order deeming service valid), it cannot later contest consequential orders based on that ruling.

Case Title: Rohit Sharma Vs A.M Market Place Pvt Ltd.

Date of Order: March 3, 2021

Case No.: FAO(OS)(COMM) 37/2021 & CM APPLs. 8493-8495/2021

Name of Court: High Court of Delhi

Name of Judges: Hon’ble Mr. Justice Manmohan and Hon’ble Ms. Justice Asha Menon

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

Automatic Electric Limited Vs R.K. Dgawan

Claiming a generic defense is not valid when the defendant itself seeks proprietary rights in a similar mark.

Introduction:The case involves a trademark dispute between Automatic Electric Limited (plaintiff) and R.K. Dgawan & Anr. (defendants) regarding the alleged infringement and passing off of the plaintiff’s registered trademark “DIMMERSTAT.” The plaintiff sought a permanent injunction against the defendants from using the allegedly deceptively similar mark “DIMMER DOT” for variable voltage auto transformers. The case highlights key issues related to trademark exclusivity, genericness, and deceptive similarity under the Trade and Merchandise Marks Act.

Factual Background: The plaintiff, Automatic Electric Limited, adopted the trademark “DIMMERSTAT” in 1945 for its variable voltage auto transformers. The mark was registered under Trade Mark Registration No. 178464 dated 14.02.1957 in Class 9. The plaintiff extensively advertised its product and claimed to have built substantial goodwill. It produced sales invoices from 1976-1982 and 1985-1994 as proof of continuous usage.

The defendants, R.K. Dgawan & Anr., adopted the mark “DIMMER DOT” for their variable voltage auto transformers, which the plaintiff alleged was deceptively similar and likely to cause confusion. The plaintiff argued that such use amounted to trademark infringement and passing off. Consequently, the plaintiff filed a suit seeking an injunction to restrain the defendants from manufacturing, selling, or advertising under the mark “DIMMER DOT” or any other mark identical or similar to “DIMMERSTAT.”

Procedural Background:The plaintiff filed an application under Order 39 Rules 1 & 2 of the Code of Civil Procedure, seeking an interim injunction against the defendants. On 9.11.1994, the Delhi High Court granted an ad-interim ex parte injunction, restraining the defendants from using the mark “DIMMER DOT.” The defendants entered their appearance and filed an application under Order 39 Rule 4, seeking to vacate the injunction. The case was heard on the interim reliefs sought by both parties.

Issues Involved in the Case:Whether the use of the mark “DIMMER DOT” by the defendants constitutes trademark infringement under Section 28 and 29 of the Trade and Merchandise Marks Act? Whether the mark “DIMMERSTAT” is distinctive and entitled to exclusive protection? Whether “DIMMER” is a generic or descriptive term, and if so, whether the plaintiff can claim monopoly over it? Whether there was honest concurrent use by the defendants? Whether the plaintiff’s delay in taking legal action amounted to acquiescence? 

Submissions of the Parties:The plaintiff argued that its registered trademark “DIMMERSTAT” conferred exclusive rights under Section 28 of the Trade and Merchandise Marks Act. Section 29(1) provides that the use of an identical or deceptively similar mark constitutes infringement. “DIMMERSTAT” and “DIMMER DOT” share the identical prefix “DIMMER,” leading to confusion among consumers. The mark “DIMMERSTAT” was registered without a disclaimer, meaning the plaintiff had the exclusive right to use the mark, including the word “DIMMER.” The defendants falsely represented their mark as a registered trademark, which amounted to an offense under Section 81 of the Act. There was no delay or acquiescence as the plaintiff learned about the defendant’s use in April 1994.

The defendants argued that “DIMMER” is a generic term referring to variable voltage transformers and cannot serve as a trademark. Under Section 9(1)(d), generic and descriptive words are not eligible for trademark protection. The plaintiff could not monopolize the term “DIMMER” as it is commonly used in the industry. The plaintiff was aware of the defendant’s use for over a decade and failed to act earlier, amounting to acquiescence. The defendants had been using “DIMMER DOT” since 1980 and had developed independent goodwill. The plaintiff’s customers were technically knowledgeable and unlikely to be confused. The product packaging of both parties was different, reducing the likelihood of confusion.

Discussion on Judgments Cited by Parties:The plaintiff relied on the judgment in Kaviraj Pandit Durga Dutt Sharma vs. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980, which held that an identical prefix in trademarks can cause deception. The decision in Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449, established that similarity in the dominant part of a mark is sufficient for confusion. The case Accurist vs. Accutron, (1966) RPC 152, stated that similarity in the initial part of a mark is significant. The judgment in Turbo Torch vs. Turbogaz, (1978) RPC 206, confirmed that prefix similarity can lead to deceptive similarity. Additional judgments supporting the plaintiff’s case included Alka Seltzer vs. Alka Vescent, (1950) 67 RPC 113, 209, Pill Bond vs. Plyopher, (1951) 69 RPC 40, Star Mist vs. Stardust, (1951) 69 RPC 40, Marie Elizabeth vs. Maria Lisette, (1937) 54 RPC 193, and Univocal vs. Unimac, (1979) RPC 469.

The defendants relied on the case Abercrombie & Fitch Company vs. Hunting World, Inc., 189 USPQ 759, which held that generic words cannot be monopolized. The decision in J.R. Kapoor vs. M/s. Micronix India, 1994(3) SCALE 732, held that if a mark is generic for the product, no one can claim exclusive rights.

Reasoning and Analysis of the Judge:The court held that the plaintiff’s mark “DIMMERSTAT” was registered without a disclaimer, meaning the word “DIMMER” formed part of the plaintiff’s exclusive rights. While “DIMMER” may have some descriptive use, “DIMMERSTAT” as a whole was a distinctive mark for auto transformers. The defendants’ mark “DIMMER DOT” was deceptively similar, particularly because “DIMMER” was the dominant prefix in both marks. The defendants themselves registered “DIMMER DOT” in Australia, contradicting their claim that “DIMMER” was generic. The plaintiff’s delay in filing the suit was not inordinate and did not amount to acquiescence. Honest concurrent use was not established as the defendants falsely claimed registration of their mark.

Final Decision: The court made the ad-interim injunction absolute, restraining the defendants from using “DIMMER DOT” or any other deceptively similar mark. The plaintiff’s application for injunction (I.A. No. 8609/1994) was allowed, and the defendants’ application to vacate the injunction (I.A. No. 10285/1994) was dismissed.

Law Settled in this Case:A registered trademark without a disclaimer covers the entire mark, including individual components. The first syllable of a trademark is often the most significant in assessing deceptive similarity. A mark that is not purely descriptive and has acquired distinctiveness is entitled to protection. The use of a deceptively similar mark constitutes infringement even if part of the mark has descriptive elements. Delay in bringing a suit does not necessarily amount to acquiescence unless the delay is inordinate and prejudices the defendant. Claiming a generic defense is not valid when the defendant itself seeks proprietary rights in a similar mark.

Case Title: Automatic Electric Limited vs R.K. Dgawan & Anr.

Date of Order: 6 January 1999

Case No.: Suit No. 2136/1994

Neutral Citation: 1999 IAD (Delhi) 603, 77 (1999) DLT 292

Court: Delhi High Court

Judge:Hon'ble Judge Shri Dr. M.K. Sharma

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