Ciena Corporation Vs Union of India

An Applicant should not be allowed to suffer on account of negligence of Patent Agent

Introduction: 

This case revolves around the abandonment of a patent application due to a failure to respond to the First Examination Report (FER) within the prescribed period under Section 21(1) of the Patents Act, 1970. The petitioner, Ciena Corporation, approached the Delhi High Court challenging the abandonment order issued by the Indian Patent Office. The case primarily deals with whether a patent applicant should suffer due to a bona fide mistake of its patent agent in failing to respond to the FER.

Detailed Factual Background:

Ciena Corporation, a global leader in networking systems and software, developed an invention titled "Modular Network Element Architecture." The invention is a hybrid between a rack-mounted module and a line module inserted in a chassis. The company filed priority patent applications in the United States Patent and Trademark Office (USPTO) on April 23, 2018. On April 9, 2019, Ciena filed an international patent application (PCT/US2019/026489) under the Patent Cooperation Treaty (PCT) with the World Intellectual Property Organization (WIPO), which published the invention on October 31, 2019.

Ciena entered the Indian national phase by filing a patent application on August 11, 2020, before the Indian Patent Office, New Delhi. On April 15, 2022, Ciena's Indian Patent Agent filed the required forms under the Indian Patent Rules, 2003, requesting an examination and seeking an amendment to the application. The Patent Office issued the First Examination Report (FER) on September 1, 2022, and sent it to Ciena's patent agent. However, due to an inadvertent error, the patent agent failed to inform Ciena about the FER. Consequently, no response was filed within the statutory period.

On February 16, 2024, the Indian Patent Office issued an abandonment letter stating that the application was deemed abandoned under Section 21(1) of the Patents Act, 1970, due to the failure to respond to the FER within the prescribed time. Ciena only became aware of this abandonment on January 23, 2025, through a third party. Upon learning about the abandonment, Ciena immediately contacted its patent agent, who admitted that the FER had not been docketed in his firm’s system, leading to non-communication. The patent agent provided an affidavit on February 25, 2025, acknowledging the mistake.

Detailed Procedural Background:

Ciena filed a writ petition before the Delhi High Court on February 25, 2025, challenging the abandonment order and seeking restoration of its patent application. The petitioner argued that the abandonment was a result of a bona fide mistake of its patent agent, which should not be held against it. The matter was heard by Hon'ble Justice Amit Bansal.

The Court noted that the issue in this case was limited to determining whether the petitioner should be penalized for its patent agent’s error and whether the abandonment order could be set aside under the Court’s writ jurisdiction. With the consent of both parties, the petition was taken up for disposal at the initial hearing stage itself.

Issues Involved in the Case:

The primary legal issue before the Court was whether a patent applicant should be penalized for the mistake of its patent agent in failing to respond to the FER within the prescribed period.

A secondary issue was whether the Court, in exercising its writ jurisdiction under Article 226 of the Constitution of India, could interfere in a case where statutory timelines under the Patents Act had not been met due to an inadvertent error.

Detailed Submission of Parties:

The petitioner argued that it had no intention to abandon the patent application and had actively pursued patent protection for the same invention in multiple jurisdictions. The failure to respond to the FER was due to the negligence of its patent agent, not any fault of the petitioner. Relying on past judicial precedents, Ciena contended that litigants should not suffer due to mistakes made by their legal representatives.

The respondent, represented by the Union of India, opposed the petition, arguing that there was a significant delay in filing the writ petition. The FER had been issued in September 2022, the abandonment order in February 2024, and yet the petition was filed only in February 2025. The respondent contended that the statutory timelines under the Patents Act are strict and cannot be relaxed except under extraordinary circumstances.

Detailed Discussion on Judgments Cited:

The petitioner relied on European Union Represented by the European Commission v. Union of India & Ors., 2022 SCC OnLine Del 1793. The Delhi High Court in that case had held that inadvertent errors by patent agents should not result in the abandonment of patent rights when the applicant had no intention to abandon the application. The Court emphasized that the consequences of abandonment are severe, as the applicant is deprived of exclusivity over its invention.

Other cases relied upon included:

Smt. Lachi Tewari v. Director of Land Records, 1984 Supp SCC 431 – Holding that litigants should not suffer due to mistakes of their legal representatives.

Rafiq v. Munshilal, (1981) 2 SCC 788 – Establishing that clients cannot be penalized for their lawyer’s negligence.

Mangi Lal v. State of M.P., (1994) 4 SCC 564 – Emphasizing that courts should adopt a liberal approach where procedural lapses do not reflect the litigant’s intent.

The Secretary, Department of Horticulture, Chandigarh v. Raghu Raj, (2008) 13 SCC 395 : AIR 2009 SC 514 – Reinforcing that procedural errors should not cause irreversible harm to a litigant’s substantive rights.

The respondent argued that the statutory timelines in patent law are strict and non-compliance results in automatic abandonment. The respondent also cited Rule 138 of the Patent Rules, which does not permit an extension of time for filing a response to the FER beyond the prescribed period.

Detailed Reasoning and Analysis of Judge:

The Court held that the case merited intervention. It emphasized that the petitioner had diligently pursued the patent application globally and had filed the request for examination in India within the prescribed time. The mistake of the patent agent in failing to communicate the FER should not lead to the extreme consequence of patent abandonment.

The Court reasoned that while statutory timelines must generally be adhered to, extraordinary cases where an applicant demonstrates diligence and the failure is attributable solely to legal representatives require a liberal approach. The Court noted that the European Commission judgment fully applied to the present case, as Ciena Corporation had actively prosecuted its patent in multiple jurisdictions and had no intention of abandonment.

The Court balanced the need for strict adherence to patent law procedures with the fundamental principle that no party should suffer due to an error beyond its control.

Final Decision:

The Court set aside the abandonment letter dated February 16, 2024. It restored the petitioner’s patent application to its original status. The petitioner was granted a final opportunity to file a response to the FER within four weeks. The Court directed the Registry to send a copy of the order to the Controller General of Patents, Designs, and Trademarks for compliance.

Law Settled in This Case:

This case reaffirmed that the failure of a patent agent to communicate an examination report to a patent applicant, leading to unintentional abandonment, should not defeat the applicant’s rights. The Court reiterated that procedural errors attributable to legal representatives should not have drastic consequences for litigants. It also clarified that in exceptional circumstances, courts can exercise their writ jurisdiction to remedy unjustified procedural lapses that would otherwise extinguish valuable intellectual property rights.

Case Title: Ciena Corporation Vs Union of India & Ors.

Date of Order: March 7, 2025

Case Number: W.P.(C)-IPD 15/2025 & CM 49-51/2025

Neutral Citation: 2025:DHC:1615

Name of Court: High Court of Delhi

Name of Hon'ble Judge: 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

Johnson & Johnson Vs. Pritamdas Arora

Fact of the Case

Johnson & Johnson, a global healthcare company, filed a suit against Pritamdas Arora and others for trade mark infringement, counterfeiting, and passing off. The case arose when a counterfeit version of Johnson & Johnson's surgical hemostatic device, SURGICEL, was discovered in a U.S. hospital. Investigations traced the source back to the defendants in India, who were allegedly manufacturing and distributing counterfeit SURGICEL products globally.

Procedural Background (in brief)

In 2019, Johnson & Johnson filed a suit in the Delhi High Court seeking a permanent injunction and damages. In October 2019, the Court granted an ad-interim injunction against the defendants and appointed Local Commissioners to search and seize counterfeit products. Between November 2019 and April 2024, multiple court orders were issued, directing investigations and reports on the defendants' whereabouts as they became untraceable. The defendants failed to comply with court orders and were declared ex-parte in December 2022. Between April 2023 and February 2025, the plaintiff provided substantial evidence of counterfeiting, including invoices, bank records, and seized counterfeit goods. In March 2025, the Court pronounced its judgment, ruling in favor of Johnson & Johnson.

Reasoning of the Court

The plaintiff established proprietary rights over the trade marks ‘SURGICEL’, ‘ETHICON’, and ‘LIGACLIP’. Evidence proved that the defendants were engaged in manufacturing and selling counterfeit surgical devices. The defendants' actions endangered public health by distributing substandard medical devices. The Court noted the defendants’ evasion of legal proceedings, fraudulent activities, and involvement in money laundering. The defendants’ conduct warranted stringent action, including compensatory and exemplary damages.

Decision

A permanent injunction was granted, restraining the defendants from using Johnson & Johnson’s trademarks. The Court awarded compensatory damages of ₹2,34,82,986 in favor of the plaintiff. Exemplary damages of ₹1,00,00,000 were imposed on the defendants. The plaintiff was permitted to destroy the counterfeit products. The plaintiff was also entitled to recover actual litigation costs.

Case Details

Case Title: Johnson & Johnson vs. Pritamdas Arora & Anr.

Date of Order: March 11, 2025

Case Number: CS(COMM) 570/2019

Neutral Citation: 2025:DHC:1585

Name of Court: High Court of Delhi

Hon’ble Judge: Justice Amit Bansal

Jangeer Singh Vs. Yogesh Jangid

Fact of the Case

The case involves a trademark dispute between Jangeer Singh, trading as Jangeer Singh Kabulshah Agriculture Works, and Yogesh Jangid, trading as Jangid Agro Engineering. The plaintiff, Jangeer Singh, alleged that the defendant was infringing and passing off his registered trademark "JANGEER" by using the marks "JANGID" and "JANGIR" for similar agricultural implements. The plaintiff sought a permanent injunction, damages, and other reliefs. The defendant, however, claimed prior use of the mark "JANGID" as part of his family business since 1980 and argued that his use was bona fide.

Procedural Background in Brief 

The plaintiff filed the suit seeking interim relief under Order XXXIX Rules 1 and 2 of the Civil Procedure Code, 1908. Summons were issued on August 31, 2022, but no ad interim injunction was granted. The defendant submitted that he was neither using nor intending to use "JANGEER/JANGIR." The matter was subsequently listed multiple times, and the judgment on the interim injunction was reserved on February 24, 2025.

Reasoning of Court 

The Court analyzed the claims of both parties, focusing on the registered trademarks, prior usage, and potential deceptive similarity between the marks. It observed that both parties held trademark registrations, making an infringement claim non-maintainable under Section 28(3) of the Trade Marks Act. The Court also examined whether the defendant’s use of "JANGID" was bona fide under Section 35 of the Trade Marks Act and concluded that the defendant had established genuine prior use of the mark based on his father's business records dating back to 1980. Additionally, the Court found that the marks "JANGEER" and "JANGID" were visually distinct, reducing the likelihood of confusion.

Decision 

The Court denied the plaintiff’s request for an interim injunction and directed that the defendant may continue using the mark "JANGID" but only in the exact manner of his registered device mark. The defendant was restrained from using "JANGIR" or "JANGEER" as standalone marks. The case was listed for framing of issues on July 28, 2025.

Case Title: Jangeer Singh Vs. Yogesh Jangid
Date of Order: March 11, 2025
Case Number: CS(COMM) 598/2022
Neutral Citation: 2025:DHC:1587
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Hon'ble Justice Shri Amit Bansal

BASF SE Vs. Joint Controller of Patents and Designs

Lack of inventive step and insufficiency in disclosure are anti thesis to each other. A Patent can not be revoked simultaneously on both grounds

Introduction:

The case of BASF SE Vs. Joint Controller of Patents revolves around the patentability of an invention filed by BASF SE. The dispute concerns the rejection of a patent application by the Indian Patent Office and the legal questions surrounding the inventive step, novelty, and sufficiency of disclosure.

Detailed Factual Background:

BASF SE, a multinational chemical company, filed a patent application seeking protection for a particular chemical formulation. The application was examined by the Patent Office, and objections were raised under various provisions of the Patents Act, 1970. The objections primarily pertained to lack of inventive step and sufficiency of disclosure.

Upon responding to the objections, the applicant faced further rejections from the Patent Office, leading to an appeal before the Intellectual Property Division (IPD) of the High Court. The core contention was whether the invention met the statutory requirements for patentability under Indian law.

Detailed Procedural Background:

The patent application was initially examined by the Controller of Patents, who issued an examination report citing prior art references that allegedly anticipated the invention. The applicant responded to these objections, arguing that the cited prior art did not disclose or suggest the claimed invention in an obvious manner.

Despite the applicant’s submissions, the Controller of Patents rejected the application on the grounds of lack of inventive step and insufficient disclosure. BASF SE then filed an appeal before the IPD, challenging the rejection and arguing that the decision failed to properly appreciate the technical advancement offered by the invention.

Issues Involved in the Case:

Whether the invention claimed by BASF SE involved an inventive step under Section 2(1)(ja) of the Patents Act, 1970. Whether the prior art cited by the Controller of Patents disclosed or suggested the claimed invention. Whether the sufficiency of disclosure requirement under Section 10 of the Patents Act was met by the patent application. Whether the rejection by the Controller was justified based on the evidence and arguments presented.

Detailed Submission of Parties Submission by BASF SE: 

The appellant argued that the invention demonstrated a significant improvement over prior art and was not obvious to a person skilled in the field. The prior art references cited by the Patent Office did not render the invention obvious, as they failed to teach the unique combination of components claimed in the application. The sufficiency of disclosure requirement was fulfilled, as the specification provided adequate details for a skilled person to work the invention without undue experimentation. The rejection of the application was based on an incorrect assessment of inventive step and an improper interpretation of prior art references.

Submission by the Joint Controller of Patents: 

The respondent maintained that the invention lacked an inventive step as it was an obvious modification of known prior art. The disclosure was insufficient, as it did not enable a person skilled in the art to practice the invention without undue effort. The Controller exercised proper discretion in rejecting the application based on statutory provisions and relevant case laws.

Detailed Discussion on Judgments and Their Citations:

The parties cited multiple precedents in support of their arguments, including Novartis AG v. Union of India (2013) 6 SCC 1 – Cited by the respondent to argue that mere improvements in known substances do not qualify as inventive. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979) 2 SCC 511 – Referred by the appellant to argue that an inventive step must be assessed in light of the technical advancement over prior art. Enercon (India) Ltd. v. Alloys Wobben (2014) 5 SCC 590 – Discussed in relation to sufficiency of disclosure and the need for clear and complete specifications.

The Court analyzed these judgments in the context of the case, emphasizing the need for a proper assessment of inventive step and sufficiency of disclosure as per statutory requirements.

Detailed Reasoning and Analysis of the Judge:

The Court examined whether the prior art references, when considered as a whole, would render the claimed invention obvious to a skilled person. It concluded that the claimed invention provided a technical advancement that was not obvious from the cited prior art. The Controller’s decision did not adequately address the technical contribution of the invention. The sufficiency of disclosure was met, as the description in the patent application was found to be enabling for a skilled person. Lack of inventive step and insufficiency in disclosure are anti thesis to each other. A Patent can not be revoked simultaneously on both grounds.The rejection was based on an erroneous interpretation of inventive step and lacked a detailed consideration of the applicant’s submissions.

Final Decision:

The Court set aside the rejection order of the Controller of Patents and directed the Patent Office to grant the patent, subject to compliance with formal requirements.

Law Settled in This Case:

The case reaffirmed the principles governing the assessment of inventive step and sufficiency of disclosure under the Patents Act, 1970. It clarified that an invention should be assessed for its technical contribution and advancement over prior art. A proper analysis of inventive step must consider whether a skilled person would arrive at the claimed invention without inventive ingenuity. The sufficiency of disclosure must be evaluated in light of whether a skilled person can practice the invention based on the description provided.Lack of inventive step and insufficiency in disclosure are anti thesis to each other. A Patent can not be revoked simultaneously on both grounds.

Case Title: BASF SE Vs. Joint Controller of Patents and Designs & Ors.
Date of Order: March 7, 2025
Case Number: IPDPTA/5/2024
Name of Court: Calcutta High Court
Hon’ble Judge: Hon'ble Justice Shri Ravi Krishan Kapur

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

VST Industries Limited Vs. ASD Tobacco Private Limited

Fact of the Case

VST Industries Limited filed a petition under Section 57 of the Trade Marks Act, 1999, seeking rectification of the Trade Marks Register by removing the trademark "CHUMS," registered in favor of ASD Tobacco Private Limited. VST Industries claimed that "CHUMS" was phonetically, visually, and deceptively similar to its registered trademark "CHARMS," which had been in use since 1982 for cigarettes and tobacco products. VST argued that the respondent's mark was infringing on its well-established goodwill and reputation.

Procedural Background in Brief

VST Industries filed a rectification petition against ASD Tobacco's trademark "CHUMS," registered under Class 34 on September 30, 2018, with a claimed user date of August 20, 2018. Despite multiple attempts to serve notice, ASD Tobacco failed to appear before the court. The petitioner submitted evidence of its prior use and goodwill, including sales turnover certificates and trademark registration details dating back to 1982. Additionally, VST relied on a prior order dated May 18, 2022, from the Additional District Judge, Panchkula, which had restrained ASD Tobacco from using the "CHUMS" mark in a trademark infringement suit.

Reasoning of the Court

The Delhi High Court found that VST Industries had been using the "CHARMS" mark since 1982, well before ASD Tobacco registered "CHUMS" in 2018. The court observed that both marks were phonetically and visually similar, used for identical goods in the same class, and that ASD Tobacco’s packaging closely resembled that of VST Industries. The court also noted that in a previous case, a district court had already found "CHUMS" to be deceptively similar to "CHARMS" and had restrained ASD Tobacco from using it. Given these facts, the court concluded that ASD Tobacco had attempted to imitate the petitioner’s mark and packaging, leading to a likelihood of confusion among consumers.

Decision

The Delhi High Court allowed the petition and ordered the cancellation of ASD Tobacco's trademark "CHUMS" (Registration No. 3960579). It directed the Registrar of Trade Marks to rectify the register and issue a notification regarding the cancellation. The court also instructed the Registry to inform the Controller General of Patents, Designs, and Trade Marks for compliance.

Case Details

Case Title: VST Industries Limited Vs. ASD Tobacco Private Limited & Anr.

Date of Order: March 6, 2025

Case Number: C.O. (COMM.IPD-TM) 128/2021

Neutral Citation:2025:DHC:1562

Name of Court: Delhi High Court

Hon’ble Judge: Justice Mini Pushkarna

Pawan Kumar Goel Vs. Dr. Dhan Singh

Fact of the Case

The appellant, Pawan Kumar Goel, filed a suit alleging that the respondents, Dr. Dhan Singh and another, were infringing his Indian Patent (IN 369150) related to the process for extracting "Alpha Yohimbine" from Rauwolfia Tetraphylla/Rauwolfia Canescens with a purity greater than 90%. He sought an injunction to restrain the respondents from using, making, selling, exporting, distributing, advertising, or manufacturing the said product.

Procedural Background in Brief

The appellant filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction. The learned Single Judge, via order dated March 14, 2024, rejected the injunction application. The appellant filed an appeal before the Division Bench of the Delhi High Court but with a delay of 85 days beyond the statutory limit. The appellant sought condonation of delay, citing reasons such as frequent business travel, difficulty in obtaining documentary evidence, and delay in seeking legal advice.

Reasoning of the Court

The Court held that none of the grounds provided by the appellant constituted "sufficient cause" for condoning the delay. The fact that the appellant traveled frequently and was a sole proprietor could not justify the delay. The need to obtain documentary evidence should have been anticipated before filing the suit. The mere assertion that the appellant took time to seek legal advice was unpersuasive and lacked supporting material. The Court relied on the Supreme Court judgment in Government of Maharashtra (Water Resources Department) v. Borse Brothers Engineers & Contractors (P) Ltd. (2021) 6 SCC 460, which emphasized that the expression “sufficient cause” cannot be used as a broad excuse for condoning delays in commercial litigation. The Court also noted that the Commercial Courts Act, 2015, aims to ensure the speedy resolution of disputes and does not favor a lenient approach to delays in filing appeals.

Decision

The Court dismissed the application for condonation of delay. Consequently, the appeal was also dismissed along with the pending applications.

Case Details

Case Title: Pawan Kumar Goel Vs. Dr. Dhan Singh & Anr.

Date of Order: September 23, 2024

Case Number: FAO(OS) (COMM) 176/2024

Name of Court: Delhi High Court

Hon’ble Judges: Justice Vibhu Bakhru & Justice Sachin Datta

Bayer Corporation Vs. Union of India

BOLAR PROVISION:Section 107 A of Patent Act 1970:Section 107A permits the sale and export of patented drugs for regulatory approval in other countries and for research purpose only.

Introduction:

The case of Bayer Corporation vs. Union of India & Ors., decided by the Delhi High Court on April 22, 2019, concerns the interpretation of Section 107A of the Patents Act, 1970, commonly known as the "Bolar provision." 

The central issue in this case was whether the sale or export of a patented drug for the purpose of regulatory approval in another country constitutes patent infringement. 

Bayer Corporation, a multinational pharmaceutical company, filed legal proceedings against Natco Pharma and Alembic Pharmaceuticals, challenging their export of patented drugs under Section 107A. The case is significant for its impact on the pharmaceutical industry, particularly concerning the balance between patent rights and the promotion of generic medicines.

Factual Background:

Bayer Corporation held a patent for Sorafenib Tosylate, a drug used to treat kidney and liver cancer, under Patent No. 215758. In 2011, Natco Pharma applied for a compulsory license under Section 84 of the Patents Act, which was granted in 2012 by the Patent Controller. The license allowed Natco to manufacture and sell the drug in India at an affordable price. However, Bayer filed a writ petition when it discovered that Natco was also exporting Sorafenib Tosylate outside India, arguing that this was beyond the scope of the compulsory license.

Simultaneously, Alembic Pharmaceuticals was manufacturing and exporting Rivaroxaban, another patented drug, for regulatory purposes. Bayer filed a suit against Alembic, alleging that its export of Rivaroxaban infringed Bayer’s patent rights. Alembic contended that the exports were covered under Section 107A, which allows the sale of patented products solely for uses reasonably related to the development and submission of information required under any law.

Procedural Background:

Bayer initially filed a suit against Natco in 2011, seeking an injunction against the sale and export of Sorafenib Tosylate. The Patent Controller granted a compulsory license to Natco in 2012. Bayer then approached the Delhi High Court, seeking to prevent Natco from exporting the drug.

In parallel, Bayer filed a suit against Alembic in 2016, seeking an injunction against the export of Rivaroxaban. During the proceedings, Alembic argued that its exports were permissible under Section 107A.

The learned Single Judge ruled in favor of Natco and Alembic, holding that Section 107A permitted the sale and export of patented drugs for regulatory purposes. Bayer appealed the decision, leading to the present judgment by the Division Bench of the Delhi High Court.

Issues Involved in the Case:

The primary issue in this case was whether Section 107A of the Patents Act permits the export of patented drugs for the purpose of obtaining regulatory approvals in other countries?

Whether the word "sale" in Section 107A includes export or is limited to sales within India?

Whether the acts of Natco and Alembic constituted infringement under Section 48 of the Patents Act.

Whether the purpose of Section 107A was to facilitate only the Indian market or to allow global generic competition.

Whether the burden of proof lay on the patent holder (Bayer) or the generic manufacturers (Natco and Alembic) to prove the intended use of the patented product.

Submissions of the Parties:

Bayer argued that Section 107A is an exception to the patentee's rights under Section 48 and should be interpreted narrowly. Bayer contended that the provision does not explicitly mention "export," and therefore, sale under this section should be restricted to India. Bayer further relied on foreign precedents, including the U.S. Bolar exemption and German and Polish case law, to argue that the sale of a patented drug for regulatory purposes should be limited to the domestic market. Bayer emphasized that allowing exports under Section 107A would contravene the TRIPS Agreement and international patent norms.

Natco and Alembic countered that Section 107A allows the sale of patented products for the purpose of developing and submitting regulatory information in other countries. They argued that the plain language of the provision does not restrict sale to India. They also pointed out that regulatory authorities in many countries require local clinical trials, which necessitate the export of the drug. They cited WTO rulings and global practices to support their interpretation.

Discussion on Judgments and Citations:

The court examined the legislative intent behind Section 107A and compared it with similar provisions in other jurisdictions. The court relied on the WTO Dispute Settlement Panel's ruling in the Canada-Patent Protection of Pharmaceutical Products case (WTO/DS114/R), which upheld the Bolar exemption. The court also referred to the U.S. Supreme Court’s decision in Merck v. Integra Lifesciences (545 U.S. 193), which interpreted the American Bolar exemption broadly.

Additionally, the court considered the decision in Intermedics Inc. v. Ventritex (775 F. Supp. 1269), which allowed the export of patented products for regulatory approval. The court rejected Bayer’s reliance on German and Polish case law, holding that Indian law provides a broader exemption than those jurisdictions.

Reasoning and Analysis of the Judge:

The court held that the plain meaning of Section 107A does not restrict "sale" to India and that the term includes exports. 

It observed that the provision was intended to facilitate the development of generic medicines globally and that restricting sales to India would defeat this purpose. The court noted that requiring generic manufacturers to conduct separate trials in each country would be impractical and contrary to international trade practices.

The court also rejected Bayer’s argument that the burden of proof should be on the generic manufacturers. It held that placing the burden on the patentee to prove wrongful use was consistent with international norms and would prevent unnecessary litigation.

The court further reasoned that allowing exports under Section 107A was consistent with India’s obligations under the TRIPS Agreement, as it did not unreasonably prejudice the patent holder’s rights. The court emphasized that regulatory approvals are necessary for timely market entry and that a restrictive interpretation of Section 107A would hinder access to affordable medicines.

Final Decision:

The Delhi High Court upheld the Single Judge’s ruling and dismissed Bayer’s appeal. 

The court held that Section 107A permits the sale and export of patented drugs for regulatory approval in other countries and for research purpose only.

It ruled that Bayer had failed to establish that Natco and Alembic’s actions amounted to infringement. 

The court also directed that Bayer’s patents could not be used to block exports of drugs intended solely for regulatory purposes.

Law Settled in This Case

The judgment clarified that Section 107A of the Patents Act includes the right to export patented drugs for regulatory approval. The decision reinforced that patent rights are subject to reasonable exceptions aimed at promoting public health and access to medicines. The ruling also established that the burden of proof lies on the patentee to prove infringement rather than on the generic manufacturer to justify its actions.

Case Details:

Case Title: Bayer Corporation Vs. Union of India & Ors.

Date of Order: April 22, 2019

Case No.: LPA No. 359/2017, RFA(OS)(COMM) 6/2017

Neutral Citation: AIRONLINE 2019 DEL 1712

Name of Court: Delhi High Court

Name of Judges: Hon'ble Justice Shri S. Ravindra Bhat and Shri Justice Sanjeev Sachdeva

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

Bajaj Electricals Limited Vs Metals & Allied Products

The defense of using one’s surname INNOCENTLY in trade could not justify confusion among consumers

Introduction:

This case concerns a dispute between Bajaj Electricals Limited (plaintiff) and Metals & Allied Products and another (defendants) regarding the unauthorized use of the trademark "Bajaj." The core issue revolved around the alleged passing off of the defendant's products as those of the plaintiff, based on the similarity in trade name and branding. The plaintiff alleged that the defendant’s use of the term “Bajaj” created confusion among consumers, causing potential financial and reputational damage.

Factual Background:

Bajaj Electricals Limited, a company incorporated in 1938 (originally as Radio Lamp Works Limited), has been engaged in manufacturing electrical appliances, kitchen wares, and domestic appliances. In 1960, the company changed its name to Bajaj Electricals Limited and began extensively marketing its products under the trademark "Bajaj" since 1961. The mark "Bajaj" with the 'eye' device was registered in 1964 (Class 11) and subsequently under Class 7 and Class 11 in the 1970s.

The plaintiff's sales grew significantly, with revenues climbing to ₹73.94 crores by 1986. Bajaj's products were heavily advertised, gaining substantial market recognition.

The defendants, Metals & Allied Products, began manufacturing kitchen utensils in 1976-77 and allegedly used the "Bajaj" mark since then. In February 1977, they applied to register the mark for stainless steel utensils under Class 21, but this application was deemed abandoned. A subsequent application for registration was filed in 1984. Despite this, the defendants continued using the mark and claimed their surname "Bajaj" entitled them to do so.

Procedural Background:

The plaintiffs initiated a suit seeking to restrain the defendants from using the mark “Bajaj” to prevent consumer confusion and passing off. On February 24, 1987, an interim injunction was granted by the Single Judge in favor of the plaintiffs. The defendants filed an appeal, which was dismissed, and the motion was scheduled for an early hearing.

During this hearing, the defendants claimed their use of the mark since 1976, producing invoices, affidavits, and certificates from traders. The Single Judge eventually ruled against granting a full injunction but ordered the defendants to modify their branding to prominently display the manufacturer’s name along with the “Bajaj” mark.

Issues Involved in the Case:

• Whether the defendants' use of the mark "Bajaj" constituted passing off.
• Whether the defendants had established prior use of the mark dating back to 1977.
• Whether the defendants’ use of the mark, even if honest, was likely to cause deception or confusion.
• Whether the defendants' claim of using their family name in trade was legitimate.

Submissions of the Parties:

The plaintiffs argued that:

• They had established significant goodwill and reputation for their products under the "Bajaj" mark.
• The defendants had deliberately adopted the mark to take advantage of this reputation.
• The defendants' use of the mark, combined with misleading statements in their brochure, was evidence of bad faith.
• The invoices produced by the defendants were dubious and possibly fabricated.

The defendants contended that:

• They had been using the mark “Bajaj” since 1976 and had made applications for its registration.
• The mark was derived from the surname of the partners, which entitled them to use it in trade.
• Their products differed from those of the plaintiffs, reducing the likelihood of confusion.
• They had obtained certifications from traders and had been using stickers bearing the “Bajaj” name since 1979.

Discussion on Judgments and Citations:

The court referred to Parker-Knoll Ltd. v. Knoll International Ltd. [(1962) R.P.C. 265], wherein it was held that while individuals may trade under their own names, the use of such names must not cause confusion or deception. The court noted that the defendants were not merely using “Bajaj” as a family name but were employing it as a trade mark to pass off their goods as those of the plaintiffs.

The court also referred to Joseph Rodgers & Sons Ltd. v. W.N. Rodgers & Co. [(1924) 41 R.P.C. 277], which emphasized that even honest use of one’s name could be restrained if it resulted in consumer deception.

The court examined Kerly’s Law of Trade Marks and Trade Names, which highlights that once bad faith or intent to deceive is established, the user cannot claim a defense based on their right to use a family name.

The court found that the defendants’ brochure, which claimed “Bajaj quality is well accepted internationally,” was misleading since the defendants had no presence in international markets. This was considered evidence of deliberate misrepresentation.

Reasoning and Analysis of the Judge:

The court found that:

• The plaintiffs had established substantial goodwill and reputation in the "Bajaj" mark.
• The defendants’ claims of long-standing use were unsubstantiated; the invoices presented were suspicious and lacked credibility.
• The fact that the defendants had issued a misleading brochure in 1987 further evidenced bad faith.
• The defense of using one’s surname in trade could not justify conduct that created confusion among consumers.
• The defendants' attempt to differentiate their mark through changes in font and capital letters was insufficient to prevent consumer deception.

Final Decision:

The appellate court set aside the Single Judge’s order and granted a permanent injunction restraining the defendants from using the “Bajaj” mark in connection with domestic appliances and kitchen wares. The court held that the defendants’ continued use of the mark would cause irreparable damage to the plaintiffs' established reputation.

Law Settled in This Case:

This judgment reaffirmed the principle that a party cannot pass off its goods under a mark identical or similar to one associated with a competitor, even if the mark represents their own family name. The decision emphasized that in cases of established intent to deceive, the right to use a family name in business is not absolute and may be restricted to prevent consumer confusion.

Case Title: Bajaj Electricals Limited Vs Metals & Allied Products And Anr.

Date of Order: 4 August 1987

Neutral Citation: AIR 1988 BOM 167

Name of Court: Bombay High Court

Name of Judge: Hon'ble Justice Shri Pendse, J.

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

B.L. And Co. And Others Vs. Pfizer Products Inc.

Ex parte injunctions must be granted only when justified by urgency, with reasons explicitly recorded under Order XXXIX Rule 3 CPC.

Introduction: The case of B.L. And Co. And Others vs. Pfizer Products Inc. revolves around the alleged passing off of the drug 'VIAGRA' by the defendants through their product 'PENEGRA'. The dispute primarily concerns the deceptive similarity in trade names, trade dress, and product appearance. Pfizer, the plaintiff, sought an injunction restraining the defendants from manufacturing and marketing 'PENEGRA', claiming that it infringed upon its global reputation and goodwill associated with 'VIAGRA'. The case was heard before the Delhi High Court, which passed an ex parte injunction against the defendants, leading to an appeal.

Factual Background:Pfizer, a global pharmaceutical company, introduced 'VIAGRA' (sildenafil citrate) in 1998 for the treatment of male erectile dysfunction. The trade mark 'VIAGRA' was registered in various jurisdictions and had pending registration in India. Pfizer contended that the brand had achieved international recognition and had been extensively advertised worldwide, including in India.

The defendants, B.L. & Co. and Others, introduced a similar product under the name 'PENEGRA' in January 2001. The plaintiff discovered the existence of 'PENEGRA' through an internet search and media reports, which referred to it as 'Indian VIAGRA'. Pfizer alleged that the defendants intentionally adopted a deceptively similar trade name and trade dress, including the distinctive blue diamond-shaped tablet. Further, the defendants had allegedly copied elements from Pfizer's website onto their own, thereby misleading consumers and capitalizing on Pfizer's goodwill.

Procedural Background:Pfizer filed a suit for injunction and damages for passing off before the Delhi High Court. On June 1, 2001, the Single Judge granted an ex parte injunction under Order XXXIX Rules 1 and 2 CPC, restraining the defendants from manufacturing, marketing, or selling 'PENEGRA' or any product deceptively similar to 'VIAGRA'. The appellants challenged this order before a Division Bench of the Delhi High Court on multiple grounds, including the alleged failure of the Single Judge to consider crucial legal principles governing the grant of ex parte injunctions.

Issues Involved in the Case:

• Whether the trade mark 'PENEGRA' was deceptively similar to 'VIAGRA'?

• Whether Pfizer, despite not selling 'VIAGRA' in India, could claim passing off based on trans-border reputation?

• Whether the Single Judge’s grant of an ex parte injunction was justified?

• Whether there was undue delay by Pfizer in filing the suit, and if so, whether it impacted its right to relief?

• Whether the balance of convenience favored the defendants, considering their established market presence?

Submissions of the Parties Plaintiff (Pfizer):

• 'VIAGRA' had acquired immense international goodwill and reputation, extending to India despite not being directly marketed.

• The defendants deliberately chose the name 'PENEGRA' to deceive consumers and exploit the reputation of 'VIAGRA'.

• The distinctive blue diamond-shaped tablet had been copied, further contributing to the likelihood of confusion.

• The copying of website content demonstrated mala fide intent.

• The principles of passing off allowed Pfizer to protect its brand even in jurisdictions where it had not commenced commercial operations.

Defendants (B.L. & Co. and Others):

• 'PENEGRA' was developed independently after extensive research and clinical trials.

• The product had been in the market for over five months before the suit was filed, indicating delay on Pfizer's part.

• The pronunciation and spelling of 'PENEGRA' were distinct from 'VIAGRA', and the packaging and branding were different.

• The balance of convenience lay in favor of the defendants, as they had invested significantly in product development and marketing.

• Pfizer’s product was not marketed in India, and hence, there was no possibility of deception or passing off.

Discussion on Judgments and Citations

• Wander Ltd. v. Antox India (P) Ltd., 1990 (Supp) SCC 727: The Supreme Court held that interlocutory injunctions should balance the need to protect the plaintiff's rights against the defendant’s legitimate business operations. The High Court referred to this case in assessing the necessity of the injunction.

• N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583 (SC): The Supreme Court upheld passing off claims based on trans-border reputation, which Pfizer relied upon.

• Daimler Benz Aktiegesellscaft v. Hybo Hindustan, 1994 PTC 287: The Delhi High Court protected the reputation of international brands, even in the absence of direct business operations in India.

• The Financial Times Ltd. v. Evening Standard Co. Ltd. (1991) FSR 7: A case concerning delay in seeking an injunction, which was used by the defendants to argue against Pfizer's claim.

Reasoning and Analysis of the Judge The Division Bench found that the Single Judge failed to consider critical factors before granting an ex parte injunction. These included:

• The defendants had been manufacturing and marketing 'PENEGRA' for over five months before Pfizer took action.

• Pfizer had knowledge of the defendants’ activities but delayed seeking legal recourse, indicating acquiescence.

• The lack of availability of 'VIAGRA' in India weakened Pfizer’s claim of passing off.

• The Single Judge did not record reasons justifying the urgency required for an ex parte injunction under Order XXXIX Rule 3 CPC.

The Bench noted that an interlocutory injunction should be granted only after hearing both parties unless the object of the injunction would be defeated by delay. In the absence of specific reasons recorded by the Single Judge, the ex parte order was deemed unsustainable.

Final Decision The Division Bench set aside the ex parte injunction granted by the Single Judge, allowing the defendants to continue manufacturing and marketing 'PENEGRA'. However, the defendants undertook to change the tablet’s color and refrain from using website content copied from Pfizer’s site. They were also directed to maintain records of production and sales.

Law Settled in This Case

• Ex parte injunctions must be granted only when justified by urgency, with reasons explicitly recorded under Order XXXIX Rule 3 CPC.

• Delay in seeking relief is a crucial factor against granting an interlocutory injunction in passing off cases.

• Trans-border reputation can be a valid basis for a passing off claim, but its application depends on the facts of each case.

• Balance of convenience must be weighed carefully, especially when the defendant has an established market presence.

Case Title: B.L. And Co. And Others Vs. Pfizer Products Inc. 

Date of Order: 30 June 2001 

Case No.: FAO(OS) 249/2001 

Citation: 93 (2001) DLT 346 

Name of Court: Delhi High Court 

Name of Judge: Hon'ble Justices Shri Manmohan Sarin and Shri J.D. Kapoor

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

Astrazeneca AB & Anr. Vs. Westcoast Pharmaceutical Works Ltd.

There is no statutory bar on instituting Patent infringement suit while post-grant opposition is pending

Introduction: Astrazeneca AB & Anr. filed a suit against Westcoast Pharmaceutical Works Ltd. alleging patent infringement. The plaintiffs contended that the defendant was manufacturing and selling a pharmaceutical product that infringed upon their patented invention. The defendant, in response, filed an application under Order VII Rule 11 of the Code of Civil Procedure (CPC), 1908, seeking the rejection of the suit based on grounds of want of pecuniary jurisdiction, want of territorial jurisdiction, and applicability of the Supreme Court's judgment in Aloys Wobben v. Yogesh Mehra.

Detailed Factual Background: The plaintiffs, Astrazeneca AB and its Indian subsidiary, claimed to hold a valid patent for the compound Osimertinib under patent number IN 297581. The patent was granted on June 11, 2018. The plaintiffs contended that the defendant was attempting to manufacture and distribute a product that infringed on their patent rights.

Post-grant oppositions were filed against the patent by Sunshine Organics Pvt. Ltd. on May 14, 2019, and by Natco Pharma Ltd. on June 10, 2019. The plaintiffs argued that despite these oppositions being pending before the Controller General of Patents, they retained the right to file an infringement suit. The defendant, in contrast, argued that the plaintiffs' rights were not crystallized until the resolution of post-grant opposition proceedings.

Detailed Procedural Background: The plaintiffs filed a commercial intellectual property rights (IPR) suit before the Delhi High Court, seeking an injunction to restrain the defendant from manufacturing or selling the allegedly infringing product. In response, the defendant filed an application under Order VII Rule 11 CPC, seeking rejection of the plaint based on:

1. Lack of pecuniary jurisdiction

2. Lack of territorial jurisdiction

3. Applicability of the Supreme Court's judgment in Aloys Wobben, which the defendant claimed precluded the filing of an infringement suit while post-grant opposition proceedings were pending.

Issues Involved in the Case:

1. Whether the suit was maintainable despite the pending post-grant opposition proceedings?

2. Whether the decision in Aloys Wobben precluded the plaintiffs from filing an infringement suit while the post-grant opposition was pending?

Detailed Submission of Parties Plaintiffs' Arguments:

• The plaintiffs asserted that Section 11A(3) of the Patents Act allows an infringement suit to be filed once a patent is granted and does not mandate waiting for post-grant opposition proceedings to conclude.

• They relied on precedents such as Novartis AG v. Natco Ltd. and CDE Asia Ltd. v. Terex India Pvt. Ltd., which held that the right to sue for infringement exists immediately upon the grant of a patent.

• The plaintiffs argued that the judgment in Aloys Wobben was inapplicable to their case, as it dealt with the issue of whether a party could file both a revocation petition and a counterclaim in an infringement suit, not with the maintainability of an infringement suit pending post-grant opposition.

Defendant's Arguments:

• The defendant relied on para 19 of the Aloys Wobben judgment, arguing that the plaintiffs’ patent rights had not crystallized while post-grant opposition proceedings were pending.

• They claimed that as per the judgment in Toni & Guy Products Ltd. v. Shyam Sunder Nagpal, the suit should have been filed before a lower court due to lack of pecuniary jurisdiction.

• They further argued that the court lacked territorial jurisdiction under Section 20 CPC, as the defendant’s principal place of business was outside Delhi.

Detailed Discussion on Judgments Cited and Their Context:

• Aloys Wobben v. Yogesh Mehra (2014) 15 SCC 360: The Supreme Court held that once a party has filed a revocation petition, they cannot file a counterclaim in an infringement suit. The plaintiffs argued that this case was distinguishable as it did not discuss the maintainability of an infringement suit during post-grant opposition.

• Novartis AG v. Natco Ltd.: The Delhi High Court held that a patentee could sue for infringement even while a post-grant opposition was pending.

• CDE Asia Ltd. v. Terex India Pvt. Ltd.: The court reaffirmed that the pendency of a post-grant opposition does not preclude the filing of an infringement suit.

• Toni & Guy Products Ltd. v. Shyam Sunder Nagpal: The court found that the valuation of damages in a quia timet action does not establish pecuniary jurisdiction unless actual damages are demonstrable.

• Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. CTR Manufacturing Industries Ltd.: The Bombay High Court initially held that a post-grant opposition impacted an infringement suit, but the Supreme Court overturned this decision, allowing the suit to proceed.

Detailed Reasoning and Analysis of the Judge: The Delhi High Court, presided over by Justice C. Hari Shankar, rejected the defendant’s application under Order VII Rule 11 CPC, reasoning as follows:

• The court held that there is no statutory bar on instituting an infringement suit while post-grant opposition is pending. The only requirement under Section 11A(3) of the Patents Act is that a patent must be granted before an infringement suit can be filed.

• The court distinguished the case from Aloys Wobben, noting that the Supreme Court’s observations in para 19 were obiter dicta and not binding precedents.

• On pecuniary jurisdiction, the court found that the plaintiff had adequately pleaded damages exceeding the threshold for the Delhi High Court’s jurisdiction.

• On territorial jurisdiction, the court held that the plaintiffs had a subordinate office in Delhi, and the infringing products were likely to be sold in Delhi, satisfying jurisdictional requirements.

Final Decision The Delhi High Court dismissed the defendant’s application under Order VII Rule 11 CPC, allowing the suit to proceed. The court reaffirmed that a patentee can initiate an infringement suit immediately upon the grant of a patent, irrespective of pending post-grant oppositions.

Law Settled in This Case:

• The mere pendency of a post-grant opposition does not bar a patentee from filing an infringement suit.

• The right to sue for infringement crystallizes upon the grant of a patent under Section 11A(3) of the Patents Act.

• The Supreme Court’s observations in para 19 of Aloys Wobben are obiter dicta and do not constitute binding precedent.

• Pecuniary jurisdiction is established if damages are claimed in excess of the court’s threshold, even in a quia timet suit.

• Territorial jurisdiction exists where the infringing products are sold or likely to be sold, even if the defendant's principal place of business is elsewhere.

Case Title: Astrazeneca AB & Anr. Vs. Westcoast Pharmaceutical Works Ltd.

Date of Order: 15 May 2023

Case No.: CS(COMM) 101/2022

Neutral Citation: 2023:DHC:3337

Name of Court: Delhi High Court

Name of Judge: Hon'ble Mr. Justice 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

Karan Johar Vs India Pride Advisory Pvt. Ltd. & Ors.

Fact of the Case:

Karan Johar, a well-known filmmaker and television personality, filed a lawsuit against India Pride Advisory Pvt. Ltd. and others for using his name, "Karan Johar," in the title of the cinematographic film “Shaadi Ke Director Karan Aur Johar.” He alleged that the use of his name without consent violated his personality and publicity rights, causing commercial and reputational harm.

Procedural Background (in Brief):

1. The plaintiff discovered the film's trailer on June 5, 2024, and issued a cease-and-desist notice on June 6, 2024.
2. As the defendants did not respond, the plaintiff urgently filed a commercial IPR suit and an interim application seeking an injunction.
3. The Bombay High Court granted an ad-interim injunction on June 13, 2024, preventing the release of the film.
4. The defendants later sought to vacate the injunction but agreed to modify the film's publicity and some content.

Reasoning of the Court:

1. Personality and Publicity Rights: The Court recognized that Karan Johar, being a highly reputed public figure, has an economic and legal right to control the use of his name.
2. Commercial Exploitation: The Court found that the defendants’ use of "Karan Johar" in the film’s title and dialogues directly associated the film with the plaintiff, attempting to commercially exploit his goodwill.
3. Irrelevance of Censor Board Certification: The Court ruled that a CBFC certification does not evaluate violations of personality or publicity rights, so it could not override Johar’s claim.
4. Inadequacy of Defendants' Modifications: The Court found that merely adding "Aur" between "Karan" and "Johar" did not remove the association with the plaintiff.

Decision:

The Bombay High Court upheld Karan Johar’s claim and granted an injunction preventing the defendants from using his name in the title and promotional materials of the film. The Court ruled in favor of Johar, confirming that his personality and publicity rights had been infringed.

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Case Details:

• Case Title: Karan Johar Vs India Pride Advisory Pvt. Ltd. & Ors.
• Date of Order: March 7, 2025
• Case Number: Comm IPR Suit (L) No. 17863 of 2024
• Name of Court: Bombay High Court
• Name of Hon’ble Judge: Justice R.I. Chagla

P. Pandian v. The Registrar of Trade Marks

Fact of the Case:

The petitioner, P. Pandian, sought renewal of the trademark WAHEED (TM No. 573302) in Class 24. The trademark was registered on 15.05.1992, and a registration certificate was issued on 12.09.2020 after a long procedural delay. However, upon checking the online registry, the petitioner found that the trademark was listed as expired on 15.05.2002. The petitioner was unable to file a renewal application online due to system inaccessibility and hence approached the High Court seeking a writ of mandamus to permit renewal.

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Procedural Background in Brief

1. Trademark application was filed on 15.05.1992.
2. After an examination report and a hearing, the petitioner awaited advertisement before acceptance.
3. The advertisement was published in the Trade Marks Journal on 03.02.2020.
4. The registration certificate was issued on 12.09.2020.
5. The trademark status on the online registry reflected an expiry date of 15.05.2002.
6. The petitioner did not receive a notice of expiry under Rule 58(1) of the Trade Marks Rules, 2017.
7. The petitioner was unable to file a renewal application due to online portal inaccessibility, leading to the filing of the writ petition.

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Reasoning of the Court

1. Failure to Provide Notice: The Trade Marks Rules require that a notice be issued to the trademark holder before the expiration of the registration. Since no such notice was issued, the petitioner was entitled to apply for renewal.
2. Precedents Considered: The Court relied on the Bombay High Court's decision in Motwane Private Ltd. v. Registrar of Trade Marks and the Madras High Court’s own decision in Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks, which held that failure to issue an expiry notice allows the proprietor to seek renewal.
3. No Removal from Register: Since the trademark had not been officially removed from the register, the petitioner still had the right to apply for renewal.

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Decision

The Madras High Court allowed the writ petition and directed the Registrar of Trade Marks to:

1. Provide access to the online portal for the petitioner to file the renewal application.
2. Alternatively, permit the petitioner to submit the renewal application and required documents in physical form.
3. There was no order as to costs.

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Case Details

• Case Title: P. Pandian v. The Registrar of Trade Marks
• Date of Order: 13.02.2025
• Case Number: W.P.(IPD) No.36 of 2024
• Court: High Court of Judicature at Madras
• Hon’ble Judge: Justice Senthilkumar Ramamoorthy

Tahoe Research Ltd. Vs. The Controller of Patents

Brief Fact:

Tahoe Research Ltd., an Irish company, filed an Indian patent application (No. 201647014734) for an invention titled "Method for training a control signal based on a stroke signal in a memory module." The Patent Office issued a First Examination Report (FER) on 27.09.2019, raising objections on novelty and inventive step. The applicant responded, and a hearing notice was issued on 23.02.2022, primarily objecting to a lack of clarity (Section 10(4) of the Patents Act, 1970) and novelty, particularly in light of prior art document D3. The Controller rejected the application on 19.01.2024.

Procedural Background in Brief

FER Issued (27.09.2019): Raised objections on novelty and inventive step.Response by Appellant (26.03.2020): Addressed objections.Hearing Notice (23.02.2022): Raised objections on clarity and novelty.Submission of Written Arguments & Amended Claims (28.03.2022): Incorporated features of original claims 2 and 4 into independent claim 1.

Order Rejecting Patent Application (19.01.2024): 

Cited lack of clarity and novelty, referencing European Patent Office (EPO) proceedings.Appeal Before the Madras High Court under Section 117A of the Patents Act, 1970.

Reasoning of the Court

Violation of Natural Justice: The rejection was based on objections to claims that were not originally objected to in the hearing notice, depriving the appellant of an opportunity to respond.Flawed Novelty Analysis: The Controller adopted the European Patent Office's (EPO) reasoning without recognizing material differences between the independent claim before the Indian Patent Office and the one before the EPO.Remand for Reconsideration: The Court found the rejection procedurally flawed and remanded the case for fresh consideration.

Decision:

The Madras High Court set aside the rejection order dated 19.01.2024 and remanded the matter for reconsideration under the following terms:

Case Title: Tahoe Research Ltd. Vs. The Controller of Patents

Date of Order: 18.02.2025

Case Number: CMA(PT)/35/2024

Neutral Citation: Not mentioned in the judgment.

Court: High Court of Judicature at Madras

Hon’ble Judge: Justice Senthilkumar Ramamoorthy

Havells India Limited Vs. Cab-Rio Industries

Fact of the Case:

Havells India Limited, the plaintiff, is a well-established company engaged in the business of electrical and power distribution equipment, including cables, wires, and other industrial and domestic circuit protection devices. The plaintiff has been using the brand name "REO" since 2012 and claims that it is a well-known trademark. The plaintiff obtained trademark registration for "REO" under classes 7, 9, and 11 and was granted copyright registration for its packaging. The plaintiff alleged that Cab-Rio Industries, the defendants, were manufacturing and selling electrical cables and wires under the name "CAB-RIO," which was deceptively similar to the plaintiff’s mark. The plaintiff contended that the defendants adopted the mark dishonestly to mislead consumers and pass off their products as those of the plaintiff. The plaintiff filed a suit seeking a permanent injunction against the defendants for trademark infringement and passing off.

The defendants argued that they had been using the mark "CAB-RIO" since 2017 and had a valid trademark registration for the same under Class 9. They contended that their mark was distinct and that the term "CAB" referred to cables, which was a descriptive term. The defendants further claimed that the plaintiff’s trademark registration was invalid as a third-party rectification petition was pending against it. The defendants also argued that the plaintiff’s brand "REO" was often used along with the "Havells" brand, and thus, there was no likelihood of confusion among consumers.

Procedural Background in Brief:

The plaintiff filed the suit for a permanent injunction against the defendants in the Delhi High Court, along with an application for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. On November 11, 2024, the Court issued summons and appointed a Local Commissioner to inspect the defendants' premises. The Local Commissioner conducted an inspection on November 18, 2024, and prepared an inventory of the defendants’ products. After hearing both parties, the Court reserved judgment on January 27, 2025, and delivered its decision on February 17, 2025.

Reasoning of the Court:

The Court analyzed the plaintiff’s claim of prior use and found that the plaintiff had produced invoices showing use of the mark "REO" since 2012, while the defendants' earliest invoice under the mark "CAB-RIO" was from 2019. Based on this, the Court held that the plaintiff was the prior user of the mark. The Court compared the marks "REO" and "CAB-RIO" and observed that the dominant and prominent part of the defendants’ mark was "RIO," which was phonetically and structurally similar to "REO." The Court relied on the principles laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) and S. Syed Mohideen v. P. Sulochana Bai (2016) to determine deceptive similarity. The Court emphasized that consumers, particularly electricians, contractors, and builders, were of average intelligence and imperfect recollection, making them susceptible to confusion between the two marks.

The Court rejected the defendants' contention that "CAB-RIO" should be considered as a whole and found that the defendants’ use of the mark was not bona fide. It noted that the defendants had failed to provide any reasonable explanation for adopting the mark "RIO." The Court also found that the defendants' website and advertisements used "CAB" as an acronym for cables, reinforcing the likelihood of confusion. The Court concluded that the adoption of the mark "CAB-RIO" was intended to ride on the goodwill of the plaintiff’s mark "REO."

Decision:

The Court granted an interim injunction in favor of the plaintiff, restraining the defendants from using, selling, soliciting, exporting, advertising, or dealing in electrical cables and wires under the mark "CAB-RIO" or any other mark deceptively similar to "REO" until the final adjudication of the suit. The Court also directed the defendants to change their corporate name within one month.

Case Ttitle: Havells India Limited Vs. Cab-Rio Industries & Ors.
Date of Order: February 17, 2025
Case Number: CS(COMM) 995/2024 & I.A. 44613/2024
Neutral Citation: Not provided in the document
Court: High Court of Delhi
Hon’ble Judge: Hon'ble Justice Shri Amit Bansal

Tapton Tea Company Vs. The Liptons Ltd.

Fact of the Case:

Tapton Tea Company, a firm based in Amritsar, applied for the registration of the trade mark "Tapton Tea". The application was opposed by Lipton Ltd., a company registered in England with its head office in India at Calcutta. The Deputy Registrar of Trade Marks at Bombay refused the application for registration based on the opposition filed by Lipton Ltd. The appellant, Tapton Tea Company, filed an appeal before the Punjab High Court challenging the refusal of registration. The key issue in the case was whether the Punjab High Court had jurisdiction to entertain the appeal, given that the order was passed by the Deputy Registrar at Bombay.

Procedural Background in Brief:

The Deputy Registrar of Trade Marks at Bombay rejected the trade mark application of Tapton Tea Company upon opposition from Lipton Ltd. The appellant, instead of filing an appeal before the Bombay High Court, filed it before the Punjab High Court, citing its place of business in Amritsar as the basis for jurisdiction. The respondents objected, arguing that under Section 76(1) of the Trade Marks Act, 1940, appeals against the Registrar’s decisions must be filed in the High Court having jurisdiction, which, in this case, was the Bombay High Court.

Reasoning of the Court:

The court analyzed Section 76(1) of the Trade Marks Act, 1940, which provides that an appeal against a decision of the Registrar of Trade Marks must be filed in the High Court having jurisdiction. The court relied on the precedent set in Abdul Ghani Ahmad vs. Registrar of Trade Marks, AIR 1947 Lah 171, where it was held that an appeal against an order of the Registrar at Bombay must be filed in the Bombay High Court, even if the appellant's business was located elsewhere.

The court rejected the appellant’s argument that Section 76 did not explicitly state that appeals must be filed in the High Court of the Registrar's location. It held that the phrase "High Court having jurisdiction" was intended to refer to the High Court within whose territorial limits the office of the Registrar passing the order was situated. The court also noted that in James Chadwick & Bros. Ltd. vs. National Sewing Thread Co. Ltd., AIR 1951 Bom 147, a Madras firm had appealed against an order of the Registrar at Bombay before the Bombay High Court, which further established that jurisdiction lay with the Registrar’s location, not the appellant’s business location.

The court concluded that allowing appeals to be filed in different High Courts based on the appellant’s place of business would create confusion and lead to conflicting decisions. It also found that the proviso to Section 76(1), which allows an appeal to be filed in a different High Court only if a related suit or proceeding is already pending there, did not apply to the present case.

Decision:

The Punjab High Court dismissed the appeal for lack of jurisdiction and directed that the memorandum of appeal be returned to the appellants for presentation before the proper court, i.e., the Bombay High Court. No order as to costs was made.

Case Title: Tapton Tea Company Vs. The Liptons Ltd.

Date of Order: July 26, 1954

Case Number: F.A.F.O. No. 93 of 1953

Neutral Citation: AIR 1954 P&H 270

Name of Court: Punjab High Court

Name of Hon’ble Judges: Hon’ble Justice G.D. Khosla and Hon’ble Justice D. Falshaw

Priya Enterprises vs. Prestige Housewares (India) Ltd.

Fact of the Case:

Priya Enterprises, a sole proprietorship engaged in manufacturing rubber gaskets for pressure cookers, filed a petition for rectification of the trade mark "Prestige," registered under Trade Mark No. 141602 in Class 21. The trade mark was originally registered in 1949 in the name of an English company, later transferred to Prestige Housewares (India) Ltd., Bangalore, with effect from October 4, 1985. Priya Enterprises claimed that Prestige Housewares had not used the trade mark for over five years and sought its removal for non-use.

The respondent, Prestige Housewares (India) Ltd., issued a cease-and-desist notice to Priya Enterprises, restraining it from using the word "Prestige" in relation to its products. Fearing legal consequences, Priya Enterprises filed a petition for rectification, arguing that the respondent’s trade mark should be removed from the register. The respondent challenged the jurisdiction of the Madras High Court, asserting that the trade mark was registered at the Trade Marks Registry in Calcutta, and therefore, any rectification proceedings should be filed before the Calcutta High Court.

Procedural Background in Brief:

Priya Enterprises filed a rectification petition before the Madras High Court, seeking the removal of the respondent’s trade mark for non-use. Prestige Housewares (India) Ltd. filed an application challenging the jurisdiction of the Madras High Court, arguing that, under Section 3 of the Trade and Merchandise Marks Act, 1958, only the High Court within whose jurisdiction the Trade Marks Registry was located had authority over rectification matters. Since the trade mark was registered in Calcutta, the respondent contended that only the Calcutta High Court had jurisdiction.

The petitioner countered this argument by stating that the respondent’s principal place of business was in Bangalore, which fell under the jurisdiction of the Trade Marks Registry in Madras. The petitioner relied on Section 3(e) of the Act, which applies where the registered proprietor had no place of business in India at the time of registration. The matter was heard before Justice B. Akbar Basha Kadiri of the Madras High Court.

Reasoning of the Court:

The court examined Section 3 of the Trade and Merchandise Marks Act, 1958, which determines the jurisdiction of High Courts in trade mark matters. It found that the appropriate forum for rectification applications is the High Court within whose jurisdiction the Trade Marks Registry where the mark was registered is located. Since the trade mark "Prestige" was registered in the Calcutta Trade Marks Registry, only the Calcutta High Court had jurisdiction over rectification proceedings.

The court rejected the petitioner’s argument under Section 3(e), which applies when the registered proprietor had no place of business in India at the time of registration. The respondent’s trade mark registration explicitly mentioned an address for service in India at the time of registration, which was in Calcutta. The court held that this fact conferred jurisdiction on the Calcutta High Court and not the Madras High Court.

The court relied on previous judgments, including Chunulal Seetaram vs. G.S. Muthiah & Bros. (AIR 1959 Mad 359), Vikas Manufacturing Co. vs. Bharaj Manufacturing Co. (1980 (1) PLR 16), and a decision in O.P. No. 803 of 1994, which established that trade mark rectification proceedings must be filed before the High Court with jurisdiction over the Trade Marks Registry where the mark is registered.

Decision:

The Madras High Court held that it lacked jurisdiction to entertain the rectification petition. It directed that the petition be returned to the petitioner for presentation before the Calcutta High Court. The application challenging jurisdiction was allowed, and the main petition for rectification was ordered to be filed in the proper court.

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

Date of Order: April 3, 1998

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

Neutral Citation: 1998(Suppl.) ARBLR 624 (Madras), 1998(18) PTC 539 (Mad)

Name of Court: Madras High Court

Name of Hon’ble Judge: Hon’ble Justice B. Akbar Basha Kadiri