Black Diamond Track Parts Private Limited & Ors. Vs. Black Diamond Motors Private Limited

A party that engages in forum shopping by refiling a case in a different jurisdiction after being denied relief elsewhere may be disentitled from seeking an injunction.

Introduction:

The case of Black Diamond Track Parts Private Limited & Ors. Vs. Black Diamond Motors Private Limited revolves around a dispute over the use of the trademark "BLACK DIAMOND" in relation to the manufacture and sale of industrial vehicles and machinery. The plaintiff, Black Diamond Motors Private Limited, sought an injunction against the defendants, Black Diamond Track Parts Private Limited and others, restraining them from using the trademark "BLACK DIAMOND" for their business. The dispute originated from a family business arrangement in which the right to use the trade name was allegedly settled. The core issue before the court was whether the defendants' use of the trademark was in violation of a family settlement and whether the plaintiff was entitled to an injunction.

Detailed Factual Background:

The plaintiff, Black Diamond Motors Private Limited, was engaged in the manufacture and sale of industrial vehicles such as trippers, tip-trailers, flatbed trailers, ash handling bulkers, and tailor-made carriers since 2005. The trademark "BLACK DIAMOND" was allegedly being used by the family of the plaintiff’s directors since 1983 across various businesses, including mining machinery, spare parts, hotels, and civil construction. The plaintiff claimed that under an oral family settlement dated March 31, 2014, the right to use the trademark "BLACK DIAMOND" in relation to industrial vehicles was exclusively assigned to the plaintiff, while other members of the family were allotted different business segments.

Despite this arrangement, the defendants, who were also part of the family, allegedly started using the name "BLACK DIAMOND" in relation to industrial vehicles in 2018, violating the family settlement. The plaintiff contended that the defendants applied for registration of the trademarks "BLACK DIAMOND TRACK PARTS" and "BLACK DIAMOND TRAILER TECH" in 2018, claiming prior use since 1991, which was opposed by the plaintiff. The plaintiff further claimed that the defendants' actions caused confusion in the market and sought an injunction to restrain them from using the disputed trademarks.

Detailed Procedural Background:

The plaintiff initially filed a suit in 2018 before the District Judge in Bilaspur, Chhattisgarh, seeking an injunction against the defendants. The court declined to grant an interim injunction, and the High Court of Chhattisgarh upheld this decision. The plaintiff then withdrew the suit with liberty to file a fresh suit. Subsequently, the plaintiff refiled the case before the Commercial Court in Delhi in July 2020, where the court granted an ex-parte ad-interim injunction restraining the defendants from using the disputed trademarks. The defendants challenged this decision, arguing that the plaintiff engaged in forum shopping by re-filing the case in Delhi after failing to secure an injunction in Bilaspur.

The Commercial Court later confirmed the injunction against the defendants. Dissatisfied with this decision, the defendants filed an appeal before the Delhi High Court under Section 13(1A) of the Commercial Courts Act, 2015, and Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908. The appeal was heard by a division bench of Justices Rajiv Sahai Endlaw and Amit Bansal.

The primary issues before the Delhi High Court were:

Whether the plaintiff was disentitled from seeking an injunction due to engaging in forum shopping? Whether the plaintiff had an exclusive right to the trademark "BLACK DIAMOND" for industrial vehicles? Whether the defendants' use of the trademark "BLACK DIAMOND" was in violation of the family settlement? Whether the defendants were entitled to use the trademark under Section 34 of the Trade Marks Act, 1999, which protects prior users of a mark?

Detailed Submission of Parties:

The plaintiff argued that the family settlement of 2014 allocated the exclusive right to use "BLACK DIAMOND" for industrial vehicles to the plaintiff, and the defendants were bound by this agreement. The plaintiff contended that allowing the defendants to use the name would cause confusion among consumers and dilute its brand reputation. The plaintiff also emphasized that it had applied for registration of the trademark in 2009 and obtained registration in 2014, whereas the defendants only applied for registration in 2018.

The defendants contended that the plaintiff engaged in forum shopping by withdrawing the suit from Bilaspur and refiling it in Delhi after failing to secure an injunction. They argued that they had been using the "BLACK DIAMOND" name since 1983 and that the plaintiff's claim to exclusive use was unfounded. The defendants also pointed out that the plaintiff's claim of an oral family settlement was unsupported by any documentary evidence or board resolutions. Additionally, they argued that under Section 34 of the Trade Marks Act, their prior use of the trademark protected them from being restrained by the plaintiff’s registration.

Detailed Discussion on Judgments Cited by Parties:

The plaintiff relied on Power Control Appliances vs. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448, arguing that mere delay in seeking an injunction does not amount to acquiescence. The plaintiff also cited Kamat Hotels (India) Ltd. vs. Royal Orchid Hotels Ltd. 2011 (4) Mh.L.J. 71, supporting its claim that a prior registered user has superior rights over subsequent users.

The defendants relied on Union of India vs. Cipla Ltd. (2017) 5 SCC 262, where the Supreme Court condemned forum shopping and held that litigants cannot switch courts to obtain a favorable order. The defendants also cited Allied Blenders and Distillers Pvt. Ltd. vs. Amit Dahanukar (2019 SCC OnLine Del 8898), where the court rejected an injunction when a party had previously failed to obtain one in another jurisdiction.

Detailed Reasoning and Analysis of the Judge:

The court found that the plaintiff engaged in forum shopping by withdrawing the case from Bilaspur and refiling it in Delhi to obtain a favorable order. The court held that while withdrawal with liberty to file afresh is legally permissible, it does not erase the prior proceedings, and courts can consider such conduct when deciding on equitable relief.

The court also held that the plaintiff failed to provide sufficient evidence of the alleged family settlement and noted that the defendants had been using the "BLACK DIAMOND" name for various businesses since 1983. The judges observed that even though the plaintiff had a registered trademark, it could not claim exclusivity over a family name without clear evidence of an agreement restricting its use.

The court ruled that the defendants’ prior use of the trademark gave them protection under Section 34 of the Trade Marks Act. The court also noted that both parties had distinct business identities, and the likelihood of consumer confusion was low, especially since the defendants agreed to add "Raminder Singh Bhatia Group" and "Parvinder Singh Bhatia Group" to their labels to distinguish their products.

Final Decision:

The Delhi High Court allowed the appeal and set aside the injunction granted by the Commercial Court. The court ruled that the plaintiff was not entitled to an injunction due to its forum shopping and lack of conclusive evidence of exclusive rights to the trademark. The plaintiff was directed to pay costs of Rs. 50,000 to the defendants.

Law Settled in This Case:

A party that engages in forum shopping by refiling a case in a different jurisdiction after being denied relief elsewhere may be disentitled from seeking an injunction. Prior use of a trademark can be a valid defense under Section 34 of the Trade Marks Act, even against a registered proprietor. A family business name used collectively by multiple parties cannot be claimed exclusively by one party without clear and documented evidence of an agreement restricting its use. Courts will consider equitable factors such as clean hands and good faith when granting discretionary relief such as injunctions.

Case Title: Black Diamond Track Parts Private Limited & Ors. Vs. Black Diamond Motors Private Limited

Date of Order: May 28, 2021

Case No.: FAO (COMM) 41/2021

Citation: AIRONLINE 2021 DEL 896

Name of Court: High Court of Delhi

Judges: Hon’ble Justice Rajiv Sahai Endlaw and Hon’ble 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

Ramji Lal Agarwal Vs. Sourav Agarwal

Family agreements bind heirs if they accept benefits under them

Introduction:

The case of Ramji Lal Agarwal vs. Sourav Agarwal revolves around a dispute over the right to use the trade name "Sindharam Sanwarmal" in the dry-fruits, spices, and dry-vegetables business. The plaintiff, Ramji Lal Agarwal, sought an interim injunction to restrain the defendant, Sourav Agarwal, from using the trade name within a one-kilometer radius of the plaintiff's shop, citing a family agreement that divided business rights among family members. The defendant opposed the suit, arguing that the trade name was a family asset and that the agreement was not binding on him. The dispute raises questions about family business agreements, trade name rights, and the applicability of the Commercial Courts Act, 2015.

Detailed Factual Background:

The business "Sindharam Sanwarmal" was originally established by Mangi Lal Agarwal, the grandfather of the defendant and father of the plaintiff. Over time, his five sons joined the business, expanding it across India. After the death of Mangi Lal Agarwal in 2006 and his wife in 2016, a Family Agreement was executed on January 13, 2017, to divide the family business among the heirs. This agreement allowed different branches of the family to continue using the trade name "Sindharam Sanwarmal" with a prefix or suffix, but restricted any new business under this name within a one-kilometer radius of the existing shops.

Under this agreement, the plaintiff, Ramji Lal Agarwal, was allotted a shop at 43/44 Cotton Street, Kolkata, operating under the name “Sindharam Sanwarmal.” The defendant's father, Mohan Kumar Agarwal, was allotted a different shop at the same location, operating under the name “Shree Hanuman Stores.” After the death of the defendant’s father in 2019, the defendant took over the shop but started using the name "Sindharam Sanwarmal Mewawala," which the plaintiff claims is a violation of the Family Agreement. The defendant justified his actions by arguing that the trade name was a coparcenary asset under Hindu law, granting him the right to use it.

Detailed Procedural Background:

The plaintiff filed an application (GA No. 1 of 2023) for an interim injunction to restrain the defendant from using the trade name within a one-kilometer radius. The defendant, in turn, filed an application (GA No. 2 of 2023) for dismissal of the suit, contending that the agreement was not binding on him as he was not a signatory, that the suit was time-barred since he had been using the trade name since 2017, and that the dispute fell under the Commercial Courts Act, 2015, making it not maintainable before this court.

Issues Involved in the Case:

Whether the Family Agreement dated January 13, 2017, was binding on the defendant despite him not being a signatory?

Detailed Submission of Parties:

The plaintiff argued that the Family Agreement was signed by all branches of the family and applied to heirs and legal representatives. The defendant’s shop was originally under the name “Shree Hanuman Stores,” and he had only started using the name "Sindharam Sanwarmal Mewawala" in 2017, violating the agreement. Clause 3 of the agreement expressly prohibited starting a business under "Sindharam Sanwarmal" within one kilometer of the plaintiff’s shop. The defendant cannot benefit from the agreement (by using the shop allotted to his father) while claiming that it does not bind him.

The defendant contended that the trade name belonged to the joint family and was a coparcenary asset, which he was entitled to use. He argued that the Family Agreement was not binding because he was not a signatory to it and that it was a commercial arrangement rather than a binding legal document. He also claimed that the plaintiff had waived his rights by allowing the defendant to operate under the disputed name for over five years since 2017. The suit was allegedly barred by limitation under the Limitation Act. The defendant further asserted that the dispute was a commercial matter and should have been filed before the appropriate Commercial Court under the Commercial Courts Act, 2015.

Detailed Discussion on Judgments Cited by Parties:

The defendant relied on M.N. Aryamurthy & Another vs. M.D. Subbaraya Setty (1972) 4 SCC 1, arguing that if all family members do not accept a family arrangement, it is not binding. The defendant also cited Kalyani (Dead) by LRs. vs. Narayanan & Ors., 1980 Supp SCC 298, contending that family agreements require consent from all affected members. The defendant further referred to Chairman, State Bank of India & Anr. vs. M.J. James (2022) 2 SCC 301, asserting that the plaintiff delayed filing the suit and thus lost his right to claim an injunction.The court referred to Ambalal Sarabhai Enterprises Ltd. vs. K.S. Infraspace LLP (2020) 15 SCC 585, holding that disputes over immovable property used for business fall under the Commercial Courts Act, 2015.

Detailed Reasoning and Analysis of the Judge:

The court rejected the defendant’s argument that the agreement was not binding, noting that he was enjoying the benefits of the shop allotted under the agreement while refusing to comply with its terms. The court found that the defendant had indeed started using “Sindharam Sanwarmal Mewawala” within a one-kilometer radius, in violation of Clause 3 of the agreement. However, the court ruled that the dispute fell under the Commercial Courts Act, 2015, as it involved trademark rights and commercial agreements related to immovable property. Since the case was not filed before the appropriate court, the suit was dismissed on jurisdictional grounds, without ruling on the merits of the plaintiff’s claim.

Final Decision:

The plaint was returned to the plaintiff, allowing him to file it before the appropriate Commercial Court. GA No. 1 of 2023 (injunction request) was dismissed. GA No. 2 of 2023 (defendant’s application to dismiss) was allowed. CS No. 126 of 2023 (the main suit) was dismissed.

Law Settled in This Case:

Family agreements bind heirs if they accept benefits under them. Commercial disputes over business names and property fall under the jurisdiction of Commercial Courts. A party cannot approbate and reprobate—accept benefits from an agreement while denying its obligations. A suit filed in an incorrect jurisdiction is liable to be dismissed, even if the plaintiff has a valid claim.

Case Title: Ramji Lal Agarwal Vs. Sourav Agarwal

Date of Order: March 12, 2025

Case No.: CS No. 126 of 2023

Name of Court: High Court at Calcutta

Judge: Hon’ble Justice Krishna Rao

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

Biswanath Prasad Radhey Shyam Vs Hindustan Metal Industries

Patent Claim Construction:Patent specification is to read first and then the description of the invention and then examine the claims

Introduction:

The case of Biswanath Prasad Radhey Shyam Vs Hindustan Metal Industries is a landmark judgment in Indian patent law, where the Supreme Court of India examined the principles of novelty and inventive step in patent protection. The case revolved around a patented method for manufacturing utensils and its alleged infringement, raising critical issues on what constitutes an invention under the Indian Patent and Designs Act, 1911.

Detailed Factual Background:

The appellant, Biswanath Prasad Radhey Shyam, and the respondent, Hindustan Metal Industries, were both engaged in the business of manufacturing utensils in Mirzapur. In 1951, Purshottam Dass, a partner in the respondent firm, claimed to have invented a new method and device for manufacturing utensils. The claimed invention was aimed at improving the pre-existing method, which posed risks to workers as utensils would often fly off during the manufacturing process. The respondent filed for a patent, and after meeting the necessary requirements, the patent was granted under the Indian Patent and Designs Act, 1911, effective from December 13, 1951.

In September 1952, the respondent learned that the appellant was allegedly using the patented method without authorization. A legal notice was served, but the appellant continued to use the method, prompting the respondent to file a suit for a permanent injunction and damages. The appellant contested the suit, arguing that the respondent’s method lacked novelty and an inventive step, making the patent invalid. A counterclaim for revocation of the patent was also filed.

Detailed Procedural Background:

The case initially started in the District Court, Allahabad, but was later transferred to the High Court under Section 29 of the Indian Patent and Designs Act, 1911. Both the suit for injunction and the counterclaim for revocation were consolidated and tried together. A Single Judge of the High Court ruled in favor of the appellant, dismissing the respondent’s suit and allowing the revocation of the patent.

On appeal, a Division Bench of the High Court reversed the decision, holding that the patented method involved an inventive step and amounted to a new method of manufacture. Dissatisfied with this ruling, the appellant moved the Supreme Court, which ultimately decided the matter.

Issues Involved in the Case:

The first issue was whether the patented method constituted a manner of new manufacture or improvement under the Indian Patent and Designs Act, 1911. The second issue was whether the alleged invention involved an inventive step and novelty, given the prior knowledge and practices in the industry. The third issue was whether the decision of the High Court’s Division Bench, which upheld the validity of the patent, was legally sustainable. The fourth issue was whether the revocation of the patent by the Single Judge was justified.

Details of the Patent and its Claims

The respondent's patent was for a "Method of end means for mounting metallic utensils or the like on a lathe for turning them before polishing." The title of the patent was later described in the complete specification as "Means for holding utensils for turning purposes." The complete specification explained that the patent aimed at addressing the problem of utensils slipping off the chuck while being turned, which was hazardous to workers. The patented device included a pressure spindle that was rotatably mounted, with a hollowed end possibly fitted with ball bearings to enable smooth rotation. The end of the pressure spindle could be either pointed or blunt and was meant to be firmly held against the utensil to prevent it from dislodging.

The claims of the patent primarily covered a combination of elements, including an adapter for holding the utensil, a pressure spindle passing through a guide block, and the optional presence of ball bearings. The key claim was that the patented method and means of mounting utensils on a lathe provided a novel and inventive solution to an industrial problem.

Evaluation of Claim Construction and Patent Infringement:

The Supreme Court analyzed claim construction, which refers to how the scope and meaning of a patent’s claims are determined. The Court noted that the proper way to construe a specification is to first read the description of the invention and then examine the claims, as the patentee cannot claim more than what is disclosed in the specification. The Court relied on Arnold Vs. Bradbury and Parkinson v. Simon, which emphasized that claims must be interpreted in conjunction with the specification and not in isolation.

The Court then evaluated whether the appellant’s allegedly infringing device fell within the scope of the patented claims. The key question was whether the appellant was using the same combination of elements in substantially the same way to achieve the same result. The respondent argued that the appellant’s method copied the patented process, thereby constituting infringement. The appellant contended that the claimed invention was neither novel nor inventive and that similar techniques had been in use long before the patent was granted.

Detailed Submissions of the Parties:

The appellant argued that the patented method was already known and in use in the commercial world before the date of the patent. The appellant contended that the invention did not involve any inventive step or novelty as required by patent law. The appellant also asserted that the respondent’s patent lacked utility and was liable to be revoked. Furthermore, the appellant maintained that the method described in the patent was merely an application of pre-existing techniques with slight modifications, amounting to a workshop improvement rather than an invention. The appellant highlighted that Purshottam Dass, the patentee, did not appear as a witness to establish the novelty of the invention, raising doubts about its originality.

The respondent countered that the patented method introduced significant improvements in the manufacturing process, making it safer and more efficient. The respondent argued that the invention had utility, which should support its validity. The respondent further contended that the appellant’s use of the method constituted an infringement of the patent and that an injunction should be granted. The respondent also submitted that the Single Judge of the High Court erred in revoking the patent, as the improvements were novel and non-obvious.

Detailed Discussion on Judgments:

The Supreme Court extensively discussed the principles of patent law, particularly the concepts of novelty and inventive step. Several precedents were cited, including Rickman Vs. Thierry (1896) 14 Pat. Ca. 105, Blackey Vs. Latham (1888) 6 Pat. Ca. 184, and Humpherson Vs. Syer (4 RPC 407), all of which emphasized that an invention must not only be new but must also involve an inventive step beyond mere mechanical improvements. The Court also relied on Harwood Vs. Great Northern Ry. Co. (1864-65) XI HLC 654, which held that applying an old contrivance to a new purpose does not constitute a valid patent.

Detailed Reasoning and Analysis of the Judge:

Justice Sarkaria, delivering the judgment, reasoned that the patented method was not a new manufacture or a significant improvement over existing methods. The technique of holding an article with a pressure spindle was already known in the industry. The alleged invention was merely an adaptation of existing technology, amounting to a workshop improvement rather than an inventive step. The failure of the patentee to provide evidence of research, experimentation, or innovation further weakened the claim of novelty. The High Court’s Division Bench erred in reversing the Single Judge’s decision, as it overlooked the fundamental principle that patents must demonstrate both novelty and an inventive step.

Final Decision:

The Supreme Court allowed the appeals, set aside the judgment of the Division Bench, and restored the judgment of the Single Judge. The patent was held invalid and revoked. The Court also denied damages to the respondent and ruled that each party would bear its own costs.

Law Settled in This Case

The Court clarified that a valid patent requires both novelty and an inventive step. Mere workshop improvements are not patentable. The grant of a patent does not guarantee its validity, and it can be challenged in court. Prior public knowledge or usage of an alleged invention negates its novelty. The burden of proving novelty and an inventive step lies on the patentee. The absence of experimental research or new principles of operation undermines a claim of invention.

Case Title: Biswanath Prasad Radhey Shyam Vs Hindustan Metal Industries

Date of Order: December 13, 1978

Case No.: Civil Appeal Nos. 1630-1631 of 1969

Neutral Citation: AIR 1982 SC 1444, (1979) 2 SCR 757, 1979 (2) SCC 511

Court: Supreme Court of India

Judge: Hon'ble Justie Shri Justice Sarkaria

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. Smita Naram Vs. Registrar of Trademarks

Where a party contests non-receipt of hearing notices in a Trademark Opposition proceeding, he should be granted a fresh hearing.

Introduction:

The case concerns an appeal under Section 91 of the Trademarks Act, 1999, challenging the order passed by the Trademark Registry on April 5, 2016. The opposition filed by Dr. Smita Naram against the registration of the trademark "AYURSHAKTI" was dismissed under Rule 56(4) of the Trademark Rules, 2002, due to non-prosecution. The central issue was whether the appellant had received the hearing notices from the Trademark Registry, as she claimed non-receipt and contested the dismissal of her opposition.

Detailed Factual Background:

Dr. Smita Naram became aware of the trademark application for "AYURSHAKTI" (No. 701490) filed by respondent no. 3 when it was advertised in the Trademarks Journal on June 29, 2003. She opposed the application by filing Opposition No. DEL 129200 on October 8, 2003.

On December 17, 2003, she received a letter from the Trademark Registry confirming that her notice of opposition had been served to the applicant. Later, on April 13, 2004, the applicant filed a counter-statement, a copy of which was forwarded to the appellant’s advocate. The appellant filed her evidence in support of opposition via an affidavit dated June 26, 2004, which was submitted on July 5, 2004.

The Trademark Registry scheduled the first hearing on November 5, 2015, via a notice dated October 13, 2015. During the hearing, the appellant was asked to provide proof that she received the counter-statement on May 5, 2004, to establish the timeliness of her evidence. Following this, she filed an RTI application on December 31, 2015, requesting dispatch details. The Registry responded on February 22, 2016, stating that the counter-statement was dispatched on April 13, 2004, but no dispatch records could be traced.

During the pendency of this inquiry, the Trademark Registry issued multiple hearing notices on November 26, 2015, and January 9, 2016, for hearings scheduled on December 22, 2015, and February 2, 2016. The appellant’s advocates sought adjournments via Form TM-56 on December 18, 2015, and February 8, 2016. However, despite these requests, the appellant received the impugned order dated April 5, 2016, stating that her opposition was dismissed due to non-appearance at hearings on February 9, 2016, and April 5, 2016.

Detailed Procedural Background:

The appellant contended that she did not receive the hearing notice for April 5, 2016, and relied on RTI responses from the Post Office. These RTI replies, marked as Exhibits P and Q, supported her claim of non-receipt. She further argued that the trademark application remained pending due to oppositions filed by other parties.

The respondents, represented by Ms. Nidhi Raman, argued that the dismissal was justified as the appellant failed to respond to multiple hearing notices. They relied on the dispatch register, which purportedly showed that hearing notices were sent.

Issues Involved in the Case:

Whether the appellant received the hearing notices issued by the Trademark Registry? 

Detailed Submission of Parties:

The appellant argued that she was actively pursuing the opposition and had not received hearing notices. She relied on RTI responses suggesting that no records of dispatch could be found. She contended that she had filed requests for adjournment, which were not considered.

The respondents maintained that the dismissal was valid as the Trademark Registry had sent the hearing notices. They referred to the dispatch register, claiming it contained evidence of proper service.

Detailed Reasoning and Analysis of the Judge:

Justice Amit Bansal noted that while the dispatch register indicated that hearing notices were sent, the appellant provided RTI responses showing that she had not received them. Given that the appellant had been pursuing the matter since 2003, the court found it unlikely that she would have deliberately ignored the hearing.

The court observed that procedural fairness required an opportunity for the appellant to present her case, especially since the impugned trademark was still under opposition from other parties. The judge emphasized that denying a hearing in such circumstances would be unjust.

Final Decision:

The court set aside the impugned order dated April 5, 2016, and restored the appellant’s opposition (DEL 129200). The Trademark Registry was directed to issue a fresh hearing notice and decide the opposition on merits.

Law Settled in this Case:

The case reinforces the importance of procedural fairness in trademark opposition proceedings. It establishes that where a party contests non-receipt of hearing notices with documentary evidence, the benefit of doubt should be given in favor of granting a fresh hearing.

Case Title: Dr. Smita Naram vs. Registrar of Trademarks & Ors.

Date of Order: March 5, 2025

Case No.: C.A.(COMM.IPD-TM) 106/2022

Neutral Citation: 2025:DHC:1616

Name of Court: High Court of Delhi 

Name of Judge: Hon'ble Mr. 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

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