Cipla Ltd. Vs. F. Hoffmann-La Roche Ltd.

Rejection of a subsequent patent application does not create a carve-out or exception in an earlier granted patent

Introduction:The case of Cipla Ltd. vs. F. Hoffmann-La Roche Ltd. & Anr. is a significant judgment in Indian patent jurisprudence, especially concerning pharmaceutical patents. The dispute centers around the alleged infringement and validity of a patent related to Erlotinib Hydrochloride, a life-saving cancer drug marketed by Roche as "Tarceva" and by Cipla as "Erlocip." The case involved core issues such as inventive step, application of Section 3(d) of the Patents Act, and the balance between intellectual property rights and public access to affordable medicines.

Factual Background: Roche applied for a patent in the United States on March 31, 1991, for Erlotinib Hydrochloride, which was granted as US Patent '498 on August 5, 1998. Subsequently, Roche filed an application in India on March 13, 1996, which was eventually granted as Indian Patent IN '774 on February 23, 2007. The patent covered Erlotinib Hydrochloride, an EGFR inhibitor used to treat non-small cell lung cancer (NSCLC).

Following further research, Roche discovered that Polymorph B of Erlotinib Hydrochloride exhibited greater thermodynamic stability and enhanced properties. Roche filed a separate patent application for Polymorph B in the United States (granted as US '221) and in India (DEL '507), but the Indian patent application for Polymorph B was rejected by the Controller of Patents. In the meantime, Cipla announced its intention to launch a generic version of Erlotinib Hydrochloride under the name "Erlocip." Roche alleged that Cipla’s product infringed its IN '774 patent.

Procedural Background:Roche approached the Delhi High Court in January 2008 seeking an injunction to restrain Cipla from manufacturing and selling Erlocip. The Single Judge of the Delhi High Court dismissed the interim injunction application on March 19, 2008, primarily considering the public interest involved in making life-saving drugs accessible and affordable to patients. Roche’s appeal against this decision was dismissed by the Division Bench on April 24, 2009. The Supreme Court also refused to entertain Roche’s special leave petition, and the matter proceeded to trial. The Single Judge eventually ruled on the validity of IN '774 and whether Cipla’s activities amounted to infringement.

Issues Involved:The primary issues in the case were whether IN '774 was liable to revocation due to lack of inventive step or being hit by Section 3(d) of the Patents Act, 1970? whether Cipla’s manufacture and sale of Erlocip infringed IN '774; and whether Roche failed to disclose relevant information under Section 8 of the Act, warranting revocation?

Submissions of Parties: Roche contended that IN '774 covered the entire molecule Erlotinib Hydrochloride, inclusive of all its polymorphs. Roche argued that the patented molecule was non-obvious over prior art, demonstrated improved efficacy, and was distinct from previous compounds. The rejection of the Polymorph B application (DEL '507) did not diminish the enforceability or scope of IN '774. Cipla’s manufacture and sale of Erlotinib Hydrochloride, regardless of its form, infringed IN '774.

Cipla argued that IN '774 lacked an inventive step as it was obvious from prior art, particularly Example 51 of EP '226. Cipla maintained that its product was based on Polymorph B of Erlotinib Hydrochloride, which was not covered under IN '774 but rather under the rejected DEL '507 application. Cipla further contended that Roche suppressed information about corresponding foreign patent applications, violating Section 8 of the Act. Cipla also emphasized that Section 3(d) barred patent protection for Polymorph B as it was a mere new form of a known substance without proven enhancement of efficacy.

Discussion of the Court on Subject Matter of the Patent:The court undertook a detailed examination of what constituted the subject matter of IN '774. The court held that IN '774 covered the compound Erlotinib Hydrochloride itself, as described in Claim 1 of the patent, which was independent of the crystalline form (i.e., polymorphic forms A or B). The court interpreted that the subject matter of IN '774 was a chemical compound characterized by its molecular structure, specifically "[6,7-bis(2-methoxyethoxy)quinazolin-4-yl]-(3-ethynylphenyl)amine hydrochloride," and not its physical or crystalline forms.

The court further clarified that polymorphism, which refers to different crystalline arrangements of the same molecule, does not change the chemical identity of the compound. Polymorph A or B merely reflect different solid-state structures of the same chemical molecule, which is Erlotinib Hydrochloride in this case. Since the suit patent claimed the molecule itself, it necessarily covered all polymorphic forms unless the claims explicitly restricted the protection to a specific polymorph, which was not the case with IN '774.

The court noted that Cipla’s argument hinged on conflating the scope of the later DEL '507 application for Polymorph B (which was rejected) with the scope of IN '774. The rejection of DEL '507 under Section 3(d) did not retroactively narrow the coverage of IN '774. The court pointed out that the rejection of a subsequent patent application does not create a carve-out or exception in an earlier granted patent. The subject matter of IN '774 stood independently and remained valid.

The court held that Section 3(d) was intended to prevent the patenting of new forms of known substances that lacked enhanced efficacy, but it was not designed to retrospectively affect the enforceability of valid patents already granted on the parent molecule. Therefore, the invention covered by IN '774 was not barred by Section 3(d) since the patent was granted for the base molecule itself, and not for any specific polymorphic form.

Reasoning and Analysis of the Judge:The Division Bench held that IN '774 granted Roche rights over Erlotinib Hydrochloride, including all its polymorphic forms, as polymorphs are merely different crystalline forms of the same compound. The rejection of DEL '507 under Section 3(d) did not limit the scope of IN '774. Section 3(d) was a filter for patent eligibility but did not operate as a defense against infringement once a valid patent had been granted for the base molecule.

The court emphasized that patent claims should be construed in their plain and ordinary meaning, in accordance with the language of the specification. It rejected Cipla’s argument that Polymorph B should be excluded from the scope of IN '774 merely because a separate patent application for Polymorph B had been rejected under Section 3(d). The court further reasoned that even though polymorphs may exhibit different physical properties, they remain the same chemical entity.

On the issue of non-disclosure under Section 8, the court acknowledged that Roche had not disclosed certain information regarding corresponding foreign applications. However, it exercised discretion under Section 64(1)(m) and refused to revoke the patent solely on this procedural ground, considering that such non-disclosure did not prejudice Cipla’s defense on the merits.

Final Decision:The Division Bench reversed the Single Judge’s decision, holding that Cipla’s Erlocip, being Erlotinib Hydrochloride, infringed Roche’s IN '774 patent. The court upheld the validity of IN '774, ruling that the patent was not liable for revocation based on the grounds raised by Cipla, including lack of inventive step and the Section 3(d) challenge.

Law Settled in this Case:The judgment clarified that once a compound is patented, all polymorphic forms of that compound are covered by the patent unless explicitly excluded. Section 3(d) cannot be used as a defense to infringement; it is applicable at the patent grant stage to filter what constitutes an invention. Procedural lapses such as non-disclosure under Section 8 do not automatically result in patent revocation. The court reaffirmed that patent claims must be interpreted according to their plain meaning and within the context of the specification, without importing limitations from prosecution history or from related but rejected applications.

Case Title: Cipla Ltd. Vs. F. Hoffmann-La Roche Ltd. & Anr.

Date of Order: 27 November 2015

Case No.: RFA(OS) 92/2012 & RFA(OS) 103/2012

Name of Court: Delhi High Court

Name of Judge: Hon'ble Judges Shri Pradeep Nandrajog, Mukta Gupta

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

Chanel Ltd. Vs Sunder Chemicals Agarbati

Phonetic similarity alone can be sufficient to establish trademark infringement and passing off, even if visual differences exist

Introduction:The case involves a trademark dispute where the plaintiff, Chanel Ltd., alleged infringement of its registered trademark "CHANEL" by the defendant, Sunder Chemicals Agarbati Works (P) Ltd., which was using the mark "SHANELLE" for perfumes. The plaintiff sought an interim injunction to restrain the defendant from using a mark that was allegedly deceptively similar to its well-known trademark. The Delhi High Court considered whether phonetic similarity and the possibility of consumer confusion justified granting interim relief.

Detailed Factual Background: Chanel Ltd., a globally recognized manufacturer of perfumes and cosmetics, has held the "CHANEL" trademark since 1925. The trademark, derived from the surname of its French founder, has been extensively used and promoted worldwide. The plaintiff reported sales exceeding Rs. 5000 million in the three years preceding the suit and an annual advertising expenditure of approximately Rs. 500 million.

The defendant, Sunder Chemicals Agarbati Works (P) Ltd., launched a perfume brand under the name "SHANELLE." Chanel Ltd. claimed that "SHANELLE" was deceptively similar to "CHANEL," especially in phonetic terms, and was likely to mislead consumers. The defendant contended that its trademark was visually distinct and that there was a significant delay in the plaintiff's legal action.

Detailed Procedural Background:Chanel Ltd. filed a suit before the Delhi High Court for trademark infringement and passing off, seeking a permanent injunction, damages, and other reliefs. The plaintiff also filed an interim application under Order 39 Rules 1 and 2 of the Code of Civil Procedure (CPC) for an immediate injunction restraining the defendant from using "SHANELLE."

The defendant opposed the interim relief, arguing that "SHANELLE" was not deceptively similar to "CHANEL" and that the plaintiff had delayed filing the suit, weakening its claim for injunction. The court analyzed the phonetic and visual similarities between the two marks and examined whether the plaintiff had established a strong prima facie case.

Issues Involved in the Case

Whether the trademark "SHANELLE" was deceptively similar to "CHANEL" and likely to cause confusion among consumers? Whether phonetic similarity alone was sufficient to establish trademark infringement and passing off?

Detailed Submission of Parties: The plaintiff argued that "CHANEL" was a globally reputed trademark with extensive recognition in India. It contended that the defendant’s mark "SHANELLE" was phonetically identical and created consumer confusion. The plaintiff relied on previous Supreme Court decisions affirming that phonetic similarity is a crucial factor in determining trademark infringement. The plaintiff also contended that even if there were minor visual differences in packaging, consumers primarily relied on brand names when purchasing perfumes.

The defendant asserted that "SHANELLE" had been in use for over 17 years and that there was no actual evidence of consumer confusion. It contended that Indian consumers would not confuse "CH" (as pronounced in "CHANEL") with "SH" (as in "SHANELLE") and that phonetic resemblance alone was insufficient to establish infringement. The defendant further argued that the plaintiff had delayed legal action, weakening its case for interim relief.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case:  Parle Products (P) Ltd. v. J.P. & Co., Mysore, (1972) 1 SCC 618, was cited by the plaintiff to argue that trademark similarity can be visual, phonetic, or both. The Supreme Court held that when there is a strong likelihood of consumer confusion, minor differences in spelling or packaging do not negate infringement.Amritdhara Pharmacy v. Satya Deo Gupta, (1963) AIR SC 449, was referenced to emphasize that the test for deceptive similarity must consider the imperfect recollection of an average consumer. The Supreme Court held that a person with average intelligence and imperfect memory may confuse similar-sounding trademarks, making phonetic similarity a decisive factor.K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., (1970) AIR SC 146, was relied upon to highlight that phonetic resemblance alone can lead to deception, even if the marks are visually different. The Supreme Court refused registration of "Sri Andal" because of its phonetic similarity to "Sri Ambal," despite the absence of visual resemblance.Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65, was cited in support of the passing off claim. The Supreme Court held that passing off protects traders from unfair competition, which includes misleading consumers into associating one brand with another. The judgment affirmed that a reputation built over decades must be safeguarded against dishonest adoption by competitors.

Detailed Reasoning and Analysis of the Judge: The Delhi High Court found that the plaintiff had established a strong prima facie case for trademark infringement and passing off. The court emphasized that phonetic similarity is a key determinant in cases of trademark confusion. It noted that "CH" in "CHANEL" is commonly pronounced as "SH," making "SHANELLE" nearly identical in sound. The court dismissed the defendant’s argument that Indian consumers distinguish between "CH" and "SH" sounds, citing judicial recognition of phonetic similarity in previous cases.The court rejected the defendant's delay argument, noting that the plaintiff had been engaged in opposition proceedings before the Trademark Registry and had promptly challenged the defendant’s trademark once administrative remedies were exhausted. The court reiterated that delay is not a valid defense in trademark infringement cases where deceptive similarity is apparent.

On the balance of convenience, the court found that allowing the defendant to continue using "SHANELLE" would cause irreparable harm to Chanel Ltd. by diluting its brand reputation. The court concluded that an interim injunction was necessary to prevent confusion and protect the plaintiff’s rights.

Final Decision: The Delhi High Court granted an interim injunction in favor of Chanel Ltd., restraining the defendant from manufacturing, selling, or advertising perfumes under the mark "SHANELLE" or any other mark deceptively similar to "CHANEL." The injunction was limited to the interim stage, with the final decision pending trial. The court directed the parties to proceed with evidence submission and scheduled further hearings for final adjudication.

Law Settled in This Case:Phonetic similarity alone can be sufficient to establish trademark infringement and passing off, even if visual differences exist. The test for deceptive similarity must consider the imperfect recollection of an average consumer, who may confuse similar-sounding marks. Delay in legal action does not bar injunctive relief when deceptive similarity is evident. Balance of convenience and irreparable harm favor the protection of well-established trademarks against potentially misleading variations.

Case Title: Chanel Ltd. Vs Sunder Chemicals Agarbati Works (P) Ltd.

Date of Order: 1 October 2002

Case No.: IA No. 11043/2001

Neutral Citation: 2003(26)PTC52(DEL)

Name of Court: Delhi High Court

Name of Judge: Hon'ble Justice Shri Justice S. Mukerjee

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

Chandra Kishore Chaurasia Vs R A Perfumery Works Private Limited

Section 12A of the Commercial Courts Act is in applicable to suits involving urgent interim reliefs

Introduction:The case concerns a trademark and copyright dispute where the appellant, Chandra Kishore Chaurasia, filed a suit against R A Perfumery Works Private Limited for alleged infringement of his registered trademarks "1192" and "JAGMAG 1192" and copyright over their label and packaging. The dispute primarily involved the issue of territorial jurisdiction and compliance with the pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015. The learned Commercial Court had returned the plaint for lack of territorial jurisdiction, leading to this appeal before the Delhi High Court.

Detailed Factual Background: The appellant, Chandra Kishore Chaurasia, claimed ownership of the trademarks "1192" and "JAGMAG 1192," which were registered under Class 34 with the Trade Mark Registry since 2012. Additionally, he had obtained copyright registration for the artistic work, layout, and packaging design of "JAGMAG 1192" in 2014.  The appellant alleged that the respondent, R A Perfumery Works Private Limited, was manufacturing and selling chewing tobacco under the name "SIGNAL 1191," which was deceptively similar to his registered trademarks. The appellant contended that the respondent had deliberately adopted an identical label, color combination, and artistic elements, thereby infringing his copyright and passing off his products as those of the appellant.The appellant, a resident of Varanasi, claimed that the respondent, based in Kolkata, was clandestinely selling its infringing products in the markets of Delhi, particularly in Shahdara and Anand Vihar. He also alleged that the respondent was advertising and selling its goods online through platforms such as IndiaMart and the company's website, which were accessible in Delhi.

Detailed Procedural Background: The appellant filed a suit before the Commercial Court-II, Shahdara, Karkardooma, Delhi, seeking a permanent injunction against trademark infringement, copyright infringement, and passing off, along with rendition of accounts. The respondent filed an application under Order VII Rule 10 of the Code of Civil Procedure (CPC), seeking the return of the plaint for lack of territorial jurisdiction. The respondent also sought dismissal of the suit under Order VII Rule 11(d) CPC, arguing that the suit was not maintainable due to non-compliance with the mandatory pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015.

The learned Commercial Court ruled that the appellant had failed to establish territorial jurisdiction and directed the return of the plaint. However, it rejected the respondent’s argument regarding non-compliance with Section 12A, as the appellant had sought urgent interim relief.The appellant challenged the Commercial Court’s decision before the Delhi High Court, while the respondent filed a cross-objection regarding the rejection of its application under Order VII Rule 11(d) CPC.

Issues Involved in the Case: Whether the Delhi High Court had territorial jurisdiction to entertain the suit? Whether the plaint was liable to be rejected due to non-compliance with the pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015?

Detailed Submission of Parties: The appellant argued that territorial jurisdiction was established as the infringing products were being clandestinely sold in Delhi, and the respondent was advertising and offering its products for sale through interactive websites accessible in Delhi. The appellant contended that under Section 20(c) CPC, a part of the cause of action arose in Delhi, justifying the court's jurisdiction. The respondent contended that the appellant had not provided any concrete evidence of sales in Delhi and that mere apprehensions of future sales were insufficient to confer jurisdiction. The respondent further argued that the appellant had not complied with Section 12A of the Commercial Courts Act, which mandates pre-institution mediation for commercial suits not involving urgent interim reliefs.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case: D. Ramachandran v. R.V. Janakiraman, (1999) 3 SCC 267, was relied upon to emphasize that an objection regarding jurisdiction must be determined based on the averments in the plaint, accepting them as true. The Supreme Court had held that for preliminary objections, the court should consider whether any relief could be granted based on the plaintiff’s claims. Liverpool & London S.P. & I Association Ltd. v. M.V. Sea Success I & Anr., (2004) 9 SCC 512, reiterated that whether a plaint discloses a cause of action is a question of fact and must be determined by reading the plaint as a whole. Exphar Sa and Anr. v. Eupharma Laboratories Ltd. and Anr., (2004) 3 SCC 688, supported the principle that an objection to jurisdiction, when raised at a preliminary stage, must proceed on the assumption that the plaintiff's claims are true.RSPL Limited v. Mukesh Sharma & Anr., (2016) SCC OnLine Del 4285, held that objections to territorial jurisdiction under Order VII Rule 10 CPC must be construed after taking all averments in the plaint as correct.Patil Automation Private Limited and Ors. v. Rakheja Engineers Private Limited, 2022 SCC OnLine SC 1028, was cited by the respondent to argue that Section 12A of the Commercial Courts Act is mandatory. The Supreme Court had ruled that non-compliance with Section 12A would result in the rejection of the plaint unless the suit involved urgent interim reliefs.

Detailed Reasoning and Analysis of the Judge: The Delhi High Court observed that at the stage of deciding an application under Order VII Rule 10 CPC, the court must assume the plaintiff’s averments to be true. If the appellant had pleaded that the respondent was clandestinely selling its products in Delhi and advertising them online, these claims must be taken at face value for jurisdictional determination. The Commercial Court had erred by requiring the appellant to provide evidence of clandestine sales at the preliminary stage. The court noted that while actual proof might be required at a later stage, the allegations in the plaint were sufficient to establish a prima facie case for jurisdiction.Regarding Section 12A of the Commercial Courts Act, the court held that the requirement of pre-institution mediation does not apply to suits involving urgent interim reliefs. Since the appellant had sought such reliefs, there was no obligation to undergo mediation before filing the suit. The court rejected the respondent’s contention that the plaintiff should have sought exemption through a separate application.

Final Decision: The Delhi High Court set aside the Commercial Court’s order directing the return of the plaint and held that the suit was maintainable in Delhi. The cross-objection filed by the respondent regarding non-compliance with Section 12A was dismissed. The appeal and cross-objections were disposed of accordingly.

Law Settled in This Case:F or deciding an application under Order VII Rule 10 CPC, the court must assume the averments in the plaint to be true and not require evidence at the preliminary stage. Clandestine sales and online advertisements can be sufficient to establish territorial jurisdiction in intellectual property disputes. Section 12A of the Commercial Courts Act, 2015 does not apply to suits where urgent interim reliefs are sought. There is no requirement for a plaintiff to seek exemption from Section 12A through a separate application.

Case Title: Chandra Kishore Chaurasia vs R A Perfumery Works Private Limited

Date of Order: 27 October 2022

Case No.: FAO (COMM) 128/2021

Neutral Citation: 2022/DHC/004454

Name of Court: Delhi High Court

Name of Judges: Hon'ble Justice Shri Vibhu Bakhru, Hon'ble Justice Shri Amit Mahajan

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

Carlsberg Breweries Vs Som Distilleries And Breweries Ltd.

A composite suit for design infringement and passing off in the form of trade dress is maintainable. Order II Rule 3 CPC allows joinder of multiple causes of action against the same defendant.

Introduction:The case revolves around a dispute regarding design infringement and passing off. Carlsberg Breweries A/S, the plaintiff, alleged that Som Distilleries and Breweries Ltd., the defendant, had infringed its registered design and engaged in passing off. The primary issue before the court was whether a composite suit combining claims of design infringement and passing off was maintainable. A learned single judge had earlier referred the matter for reconsideration of the precedent set in Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB), which held that such claims could not be combined in a single suit. A special five-judge bench was constituted to decide the legal question of whether a composite suit for design infringement and passing off was maintainable?

Detailed Factual Background:

Carlsberg Breweries is a global beer manufacturer that uses a distinctive bottle design and trade dress for its Carlsberg beer brand. The plaintiff had obtained a registered design for its bottle and claimed exclusivity over its overall appearance.Som Distilleries and Breweries Ltd. launched a competing beer brand with a bottle design and trade dress allegedly similar to Carlsberg’s. The plaintiff contended that the defendant’s bottle was deceptively similar and amounted to both design infringement and passing off. The plaintiff filed a composite suit seeking relief for infringement of its registered design and an injunction against passing off.The defendant contested the maintainability of the suit, citing the decision in Mohan Lal v. Sona Paint, which held that a suit for design infringement and passing off cannot be combined due to the different legal foundations of the two claims.

Detailed Procedural Background: Carlsberg Breweries filed a commercial suit before the Delhi High Court under the Commercial Courts Act, 2015, seeking an injunction, damages, and other reliefs against Som Distilleries and Breweries Ltd.  The defendant objected to the maintainability of the suit, arguing that as per the precedent in Mohan Lal v. Sona Paint, claims for design infringement and passing off had to be pursued separately. The single judge, considering the importance of the issue, referred the matter to a larger bench.  A five-judge special bench was constituted to decide whether the Mohan Lal precedent required reconsideration. During the pendency of the reference, the main dispute between the parties was settled amicably, but the court proceeded with the hearing due to the importance of the legal question.

Issues Involved in the Case:Whether a composite suit combining claims for design infringement and passing off is maintainable? Whether the decision in Mohan Lal v. Sona Paint correctly interpreted the provisions of the Code of Civil Procedure (CPC) regarding joinder of causes of action? Whether Order II Rule 3 CPC, which allows joinder of multiple causes of action against the same defendant, applies to cases involving design infringement and passing off?

Detailed Submissions of Parties:The plaintiff argued that Order II Rule 3 CPC explicitly permits joinder of multiple causes of action against the same defendant. The cause of action for both design infringement and passing off arose from the same transaction, and forcing the plaintiff to file separate suits would lead to multiplicity of litigation and an unnecessary burden on the judiciary. The plaintiff further contended that Mohan Lal had incorrectly interpreted the law by creating an artificial distinction between design infringement and passing off that was not supported by the CPC.

The defendant maintained that design infringement and passing off are fundamentally different legal claims. A design infringement claim is based on a statutory right arising from the Designs Act, 2000, while passing off is a common law remedy based on goodwill and deception. The defendant emphasized that Mohan Lal correctly held that different causes of action require separate suits, as the evidence and legal tests for proving design infringement and passing off are distinct.

Detailed Discussion on Judgments Along with Their Complete Citation Cited by Parties and Their Respective Context Referred in This Case: Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB) was the key precedent under scrutiny. The full bench in Mohan Lal had ruled that a composite suit for design infringement and passing off was not maintainable because the causes of action were distinct. The court in Mohan Lal had relied on Order II Rule 2 CPC, which mandates that a suit must include the whole claim based on the same cause of action, and concluded that design infringement and passing off claims do not arise from the same cause of action.Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595 was cited by the plaintiff to argue that multiple causes of action can be joined in one suit if they arise from the same transaction and involve the same defendant. The Supreme Court in Dabur had recognized that different legal claims can be combined in one suit if they are connected and the court has jurisdiction over both claims.Paragon Rubber Industries v. Pragathi Rubber Mills, 2014 (57) PTC 1 was relied upon by the plaintiff to support the argument that commercial realities require a flexible approach to joinder of causes of action to prevent multiplicity of suits.Joginder Metal Works v. Alert India, 1997 PTC 17 was cited to highlight that a design registration does not automatically exclude the possibility of a passing off claim. The decision emphasized that design rights and passing off rights can co-exist and should not be treated as mutually exclusive.

Detailed Reasoning and Analysis of the Judge: The special bench of the Delhi High Court analyzed the reasoning in Mohan Lal and found it to be legally flawed. The court observed that Order II Rule 3 CPC clearly allows joinder of multiple causes of action against the same defendant. The argument that design infringement and passing off are legally distinct was found to be insufficient to deny the maintainability of a composite suit. The court held that forcing plaintiffs to file separate suits for design infringement and passing off would lead to unnecessary duplication of proceedings and wastage of judicial resources. It was noted that separate trials could be ordered under Order II Rule 6 CPC if necessary, but rejecting a composite suit outright was not justified. The court also pointed out that intellectual property rights often overlap, and legal remedies should be interpreted flexibly to provide effective relief. The court rejected the rigid interpretation in Mohan Lal and held that a composite suit for design infringement and passing off is maintainable.

Final Decision:The five-judge bench overruled Mohan Lal v. Sona Paint and held that a composite suit for design infringement and passing off is maintainable. The decision clarified that Order II Rule 3 CPC permits joinder of causes of action as long as they involve the same parties and arise from the same transaction.

Law Settled in This Case: A composite suit for design infringement and passing off is maintainable. Order II Rule 3 CPC allows joinder of multiple causes of action against the same defendant. Intellectual property disputes often involve overlapping rights, and courts should adopt a pragmatic approach to litigation. The decision in Mohan Lal v. Sona Paint, which mandated separate suits for design infringement and passing off, was overruled.

Case Title: Carlsberg Breweries Vs Som Distilleries And Breweries Ltd.

Date of Order: 14 December 2018

Case No.: C.S.(COMM) 690/2018

Neutral Citation: AIR 2019 DELHI 23, (2019) 2 CURCC 238, AIRONLINE 2018 DEL 2599

Name of Court: Delhi High Court

Name of Judges: Hon'ble Justice S. Ravindra Bhat, Hon'ble Justice Hima Kohli, Hon'ble Justice Vipin Sanghi, Hon'ble Justice Valmiki J. Mehta, Hon'ble Justice Vibhu Bakhru

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

Cunniah & Co. Vs Balraj & Co

A copy need not be an exact reproduction; substantial similarity is sufficient for copyright infringement

Introduction:

The case revolves around an alleged infringement of copyright in an artistic work. The plaintiffs, C. Cunniah & Co., claimed that the defendants, Balraj & Co., had produced and sold a picture that was a colorable imitation of their copyrighted work. The plaintiffs sought an injunction, damages, and an account of profits. The trial court dismissed the suit, finding no infringement. On appeal, the court analyzed the similarities and differences between the two works and the principles governing copyright protection.

Detailed Factual Background:

C. Cunniah & Co. were merchants in Madras, engaged in selling pictures and picture frames. In 1932, an artist named T. M. Subramaniam created a picture of Lord Balasubramanya titled "Mayura Priya." On July 13, 1938, Subramaniam assigned the copyright of this picture to the plaintiffs, who began commercially producing and selling printed copies from 1940 onwards. Due to war-related scarcity of printing materials, sales were temporarily halted between 1946 and 1950 but resumed thereafter. In 1952, the plaintiffs registered the picture under the Trade Marks Act.

The plaintiffs later discovered that the defendants were selling a picture titled "Bala Murugan," which they claimed was a close imitation of "Mayura Priya." Despite being warned, the defendants refused to stop selling the allegedly infringing picture, leading to the lawsuit.

Detailed Procedural Background:

The plaintiffs filed a suit seeking an injunction restraining the defendants from printing and selling the "Bala Murugan" picture, damages of Rs. 2000 for copyright infringement, and an account of the profits earned by the defendants from the sale of the infringing picture. They also sought the seizure of unsold copies.

The defendants contended that their picture was an independent artistic work created by their artist, D.W. 1, without reference to "Mayura Priya." They also argued that no copyright could exist in a depiction of Lord Balasubramanya, as it was a common religious theme.

During trial, the plaintiffs abandoned their claim for trademark infringement since "Mayura Priya" was not used as a trademark. The trial judge, Justice Ramaswami, ruled that "Mayura Priya" was an original work entitled to copyright protection but found that "Bala Murugan" was an independent creation and dismissed the suit. The plaintiffs appealed.

Issues Involved in the Case:

Whether "Mayura Priya" was entitled to copyright protection?Whether "Bala Murugan" was a copy or colorable imitation of "Mayura Priya?" Whether the similarities between the two pictures indicated an infringement of copyright? 

Detailed Submission of Parties:

The plaintiffs argued that "Mayura Priya" was an original work and had acquired copyright protection. They contended that "Bala Murugan" was a direct imitation, with striking similarities in posture, expression, ornamentation, and other artistic elements. The plaintiffs relied on expert testimony and photographic comparisons to show that "Bala Murugan" was derived from "Mayura Priya" using a reversed-copying technique.

The defendants maintained that their artist created "Bala Murugan" independently based on conventional representations of Lord Balasubramanya. They pointed out various differences in color scheme, hand positioning, background details, and other elements. They argued that no one could claim copyright over a depiction of a widely recognized religious figure, and any similarities were either coincidental or derived from common artistic traditions.

Detailed Discussion on Judgments: 

Hanfsataengl v. W. H. Smith and Sons, 1905-1 Ch. 519, was cited to define what constitutes a "copy." The test laid down was that a copy is one that comes so close to the original that it suggests the original to anyone who sees it. Applying this test, the court examined whether "Bala Murugan" evoked "Mayura Priya" in the minds of viewers.

Corelli v. Gray, 1913-29 T.L.R. 570, was referred to for the principle that similarities between two works could arise from chance, a common source, or copying. The key legal issue was whether the defendants’ work was derived from the plaintiffs’ work.

Hanfstaengl v. Baines and Co., 1895 A.C. 20, was cited to highlight that determining infringement often depends on the overall impression the allegedly infringing work creates rather than merely counting similarities and differences.

Detailed Reasoning and Analysis of the Judge:

The appellate court disagreed with the trial judge's approach in assessing similarity. The correct test was whether a substantial part of the plaintiffs’ work was reproduced in the defendants’ work.

The court found striking similarities between the two pictures, particularly in the facial features of the deity, the positioning of ornaments, and the artistic details of the peacock and background. Expert evidence demonstrated that the defendants’ picture was likely created by reversing and slightly modifying "Mayura Priya," rather than being an independent artistic effort. The number of peacock feathers and their arrangement, the deity’s facial features, and the identical nature of ornaments further supported copying.

The appellate court noted that intelligent copying often introduces slight modifications to avoid direct duplication, but such changes do not negate infringement if substantial copying is evident. The judgment emphasized that copyright protects artistic skill and labor, even if the subject matter (a deity) is common. The defining feature is the artist’s unique expression, which was found to be copied in this case.

Final Decision:

The appellate court set aside the trial court’s judgment and ruled in favor of the plaintiffs. An injunction was granted restraining the defendants from selling or reproducing "Bala Murugan." The court awarded Rs. 500 in damages, as agreed upon by both parties. The claim for an account of profits was denied, as copyright law does not permit both damages and an account of profits for the same infringement.

Law Settled in This Case:

An artistic work is entitled to copyright protection even if it depicts a common religious theme, provided it involves original skill and labor. A copy need not be an exact reproduction; substantial similarity, especially in prominent features, is sufficient to establish infringement. Intelligent copying, which introduces minor modifications, does not escape liability if the core artistic elements are replicated. The proper test for infringement is whether the alleged copy evokes the original work in the minds of ordinary viewers, not whether consumers would mistake one work for another. Expert testimony and forensic analysis, such as reversed copying techniques, can be used to establish infringement.

Case Title: C. Cunniah & Co. Vs Balraj & Co.

Date of Order: 4 February 1959

Case No.: C.S. No. 127 of 1953

Neutral Citation: AIR 1961 Mad 111

Name of Court: Madras High Court

Name of Judge: Hon'ble Justice Ganapatia Pillai

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

Brooke Bond India Limited Vs Balaji Tea (India) Pvt. Ltd.

A publisher of an artistic work is presumed to own its copyright unless rebutted

Introduction:

The case revolves around allegations of trademark infringement, passing off, and copyright infringement by Brooke Bond India Limited against Balaji Tea (India) Pvt. Ltd. The dispute arises over the use of similar trade dress and artistic elements in packaging, leading to claims of deceptive similarity. The plaintiff sought an interim injunction to restrain the defendant from using the impugned label.

Detailed Factual Background:

Brooke Bond India Limited, a reputed tea manufacturer since 1912, marketed tea under the "Super Dust Tea" brand. The trade dress included a green background, white text for "Super Dust Tea," and a floral design in shades of red and pink. The plaintiff had registered multiple trademarks, and since 1987, introduced a yellow circle with "Super Dust Tea" in red and green.

In early 1989, the plaintiff noticed similar tea packaging in Nagpur and Visakhapatnam, allegedly introduced by Balaji Tea (India) Pvt. Ltd. The defendant's tea packets, labeled "Super Star Tea," had a strikingly similar color scheme, a yellow star replacing the plaintiff’s yellow circle, and floral designs mimicking the plaintiff’s label. The plaintiff argued that the defendant’s packaging was designed to mislead consumers and capitalize on its goodwill.

Detailed Procedural Background:

Brooke Bond India Limited filed a suit seeking an injunction against copyright infringement, an injunction against infringement of its registered trademarks under Nos. 301187 and 250152, an injunction restraining the defendant from passing off its goods as those of the plaintiff, and leave under Clause 14 of the Letters Patent to combine trademark and passing-off claims with the copyright infringement claim.

A learned single judge of the Madras High Court dismissed all interim injunction applications. The judge found no prima facie case for copyright infringement and held that the court lacked jurisdiction over the trademark and passing-off claims. The plaintiff appealed under Clause 15 of the Letters Patent.

Issues Involved in the Case:

Whether the defendant’s label infringed the plaintiff’s copyright in the artistic work? Whether the defendant’s label infringed the plaintiff’s registered trademarks? 

Detailed Submissions of Parties:

The plaintiff argued that the defendant’s tea packaging was deceptively similar and violated its registered trademarks and copyright. The trade dress and artistic elements had acquired distinctiveness and secondary meaning in the tea trade. The defendant's intent was to ride on the plaintiff’s goodwill and deceive consumers. The Madras High Court had jurisdiction under Section 62(2) of the Copyright Act since the plaintiff carried on business in Madras. Clause 14 of the Letters Patent should permit combining the claims to avoid multiplicity of litigation.

The defendant contended that it operated in Raipur, and its sales were confined to Madhya Pradesh and Orissa, negating jurisdiction in Madras. The trade dress elements used were common in the tea trade. It had independently conceived and used the "Super Star Tea" brand since 1988. No actual confusion had been reported. The plaintiff had no exclusive rights over the words “Super Dust” or "Tea." Clause 14 of the Letters Patent should not be invoked as the plaintiff had branches in cities where the alleged infringement occurred.

Detailed Discussion on Judgments and Citations Cited by Parties:

The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern was relied upon by the plaintiff to assert jurisdiction under Section 62(2) of the Copyright Act. The court reaffirmed that a plaintiff could sue where they carried on business.

Burroughs Wellcome (India) Limited v. G.K. Sharma, etc. (1989) 1 PLR 60 was relied upon by the plaintiff to justify combining copyright and trademark claims under Clause 14 of the Letters Patent. The Bombay High Court had permitted joinder in a similar factual matrix.

Tuticorin Alkali Chemicals and Fertilizers Limited v. Cochin Silicate and Glass Industries discussed the balance of convenience principle in granting relief.

Seshatri Row v. Nawab Askur Jung Aftaldowlah Mushral Mulk, ILR 30 Mad 438 was used by the defendant to argue against granting leave under Clause 14 based on inconvenience to a small trader.

Detailed Reasoning and Analysis of the Judge:

The division bench of the Madras High Court examined the correctness of the single judge’s findings. The court upheld the plaintiff’s right to sue in Madras for copyright infringement under Section 62(2) of the Copyright Act. However, it disagreed with the single judge’s reasoning that joinder of causes of action was inappropriate.

The court clarified that under Section 54 of the Copyright Act, a publisher of an anonymous or pseudonymous artistic work is presumed to be the copyright owner until proven otherwise. The single judge had wrongly required the plaintiff to disclose the author's identity.

The court emphasized avoiding multiplicity of litigation and found that since all claims arose from the same set of facts, joinder was appropriate. The defendant, despite being a small trader, would not suffer more inconvenience by defending all claims in one court rather than multiple courts.

The court found that the defendant's label had substantial similarities to the plaintiff’s label and upheld the prima facie case for copyright and trademark infringement, as well as passing off.

Final Decision:

The appeals were allowed. The suit was permitted to proceed for all claims in the Madras High Court. The court upheld jurisdiction under the Copyright Act and allowed joinder of causes of action under Clause 14 of the Letters Patent. The defendant undertook not to use the impugned label during the proceedings.

Law Settled in This Case:

Section 62(2) of the Copyright Act grants jurisdiction to a court where the plaintiff carries on business, even if the defendant operates elsewhere. Clause 14 of the Letters Patent should be liberally interpreted to avoid multiple suits where claims arise from the same transaction. A publisher of an artistic work is presumed to own its copyright unless rebutted. A strong prima facie case of deceptive similarity suffices for interim relief, even in the absence of direct consumer confusion evidence.

Case Title: Brooke Bond India Limited Vs Balaji Tea (India) Pvt. Ltd.

Date of Order: 25 November 1992

Case No.: O.S.A. No. 279 of 1989 

Neutral Citation: (1993) 2 MLJ 132

Name of Court: Madras High Court

Name of Judge: Hon'ble Justice Shri Mishra

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

Bristol-Myers Squibb Holdings Vs. Natco Pharma Limited

A suit for patent infringement can proceed separately from a declaratory suit and Section 10 CPC does not apply

Introduction:

The case of Bristol-Myers Squibb Holdings Ireland Unlimited Company and Ors. Vs. Natco Pharma Limited revolves around a dispute concerning the alleged infringement of the patent for the pharmaceutical compound "Apixaban." The plaintiffs, Bristol-Myers Squibb Holdings Ireland Unlimited Company and its affiliates, filed a suit seeking a permanent injunction to restrain the defendant, Natco Pharma Limited, from manufacturing and selling the drug "Apigat," which they claimed infringed their patent. The defendant argued that Apixaban was disclosed in an earlier patent and was thus in the public domain. The legal dispute primarily involved the interpretation of patent claims, the applicability of Section 10 of the Code of Civil Procedure (CPC), 1908, regarding the stay of suits, and the alleged forum shopping by the plaintiffs.

Detailed Factual Background:

The plaintiffs are multinational pharmaceutical companies engaged in the research, development, and commercialization of innovative medicines. Bristol-Myers Squibb Holdings Ireland Unlimited Company held Indian Patent No. IN247381 (referred to as the "junior patent"), which covered Apixaban, an anticoagulant drug used to prevent and treat blood clots. The patent was granted on April 4, 2011, and was set to expire on September 17, 2022.

The plaintiffs had previously obtained another patent, Indian Patent No. IN243917 (referred to as the "senior patent"), granted on November 11, 2010, covering a broader class of compounds, including nitrogen-containing heterobicycles used as Factor Xa inhibitors. Although Apixaban was not explicitly mentioned in the senior patent, the plaintiffs asserted that it was generically covered within the patent's scope.

Natco Pharma, an Indian pharmaceutical company, sought to manufacture and market Apixaban under the brand name "Apigat." Natco argued that Apixaban was disclosed in the senior patent and, therefore, was in the public domain, making its production lawful. To preempt potential infringement claims from Bristol-Myers Squibb, Natco filed a declaratory suit in the City Civil Court, Hyderabad, seeking a declaration that Apixaban was not exclusively protected under the junior patent. The Hyderabad court issued summons to Bristol-Myers Squibb, and soon after, the plaintiffs filed a fresh infringement suit in the Delhi High Court, seeking to enjoin Natco from selling Apigat.

Detailed Procedural Background:

The suit was filed by Bristol-Myers Squibb before the Delhi High Court on July 4, 2019, and came up for hearing on July 5, 2019. The defendant, appearing on caveat, contested the suit and filed an application under Section 10 of the CPC, seeking a stay on the proceedings in Delhi on the ground that a previously instituted suit concerning the same subject matter was pending in Hyderabad.The defendant’s application under Section 10 of CPC and the preliminary issue of whether the suit in Delhi should be stayed were framed for adjudication. 

Issues Involved in the Case:

Whether the suit filed by the plaintiffs in the Delhi High Court should be stayed under Section 10 of CPC in light of the earlier suit filed by the defendant in Hyderabad?  Whether the reliefs sought by the plaintiffs and the issues raised in the two suits were substantially the same?

Detailed Submission of Parties:

The plaintiffs argued that the relief sought in the Delhi suit—an injunction against the defendant for patent infringement—was distinct from the declaratory relief sought by the defendant in the Hyderabad suit. They contended that the Hyderabad suit was a defensive strategy by the defendant to preemptively challenge their rights and avoid liability for infringement. The plaintiffs further asserted that their junior patent was valid and enforceable, and that the defendant’s sale of Apigat constituted direct infringement.

The defendant contended that the plaintiffs were engaging in forum shopping by filing the suit in Delhi after being served with summons in Hyderabad. The defendant emphasized that the senior patent already disclosed Apixaban, making it available to the public, and therefore, its manufacture and sale were lawful. Natco also argued that under Section 10 of CPC, the Delhi suit should be stayed because the Hyderabad suit involved a directly and substantially similar issue concerning the scope of the senior patent and the public domain status of Apixaban.

Detailed Discussion on Judgments Cited by Parties:

The plaintiffs relied on Bajaj Auto Ltd. vs. TVS Motor Company Ltd., (2009) 9 SCC 797, where the Supreme Court held that an earlier suit must be between the same parties and involve the same issues for Section 10 of CPC to apply. They also cited Novartis AG vs. Union of India, (2013) 6 SCC 1, to support the principle that patent claims must be examined based on their explicit disclosures rather than broad interpretations.

The defendant relied on Chitivalasa Jute Mills vs. Jaypee Rewa Cement, (2004) 3 SCC 85, arguing that when two suits involve substantially similar issues, the later suit must be stayed under Section 10 of CPC. They also cited Satyam Infoway Ltd. vs. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145, to argue that public domain claims should be interpreted in favor of the party seeking to use the subject matter freely.

Detailed Reasoning and Analysis of the Judge:

The court held that the suit in Delhi was not liable to be stayed under Section 10 of CPC because the reliefs sought in the two suits were different. The court found that while the Hyderabad suit sought a declaration regarding the public domain status of Apixaban, the Delhi suit sought an injunction based on patent infringement. The court also rejected the forum shopping argument, stating that the plaintiffs were within their rights to file an infringement suit where they believed their rights were being violated.

The court further ruled that the determination of whether Apixaban was in the public domain required a detailed examination of both the senior and junior patents, which could not be summarily resolved under Section 10 CPC. The court noted that the plaintiffs had explicitly reserved their right to sue for infringement based on the junior patent, and the defendant’s actions warranted a full trial on the issue of infringement.

Final Decision:

The Delhi High Court dismissed the defendant’s application under Section 10 of CPC and allowed the infringement suit to proceed. The court held that the Hyderabad suit did not bar the Delhi suit, as the reliefs sought were distinct. The matter was directed for further proceedings on the question of infringement.

Law Settled in This Case:

Section 10 of CPC does not apply where the reliefs sought in two suits are distinct, even if they relate to the same subject matter. Forum shopping allegations must be supported by evidence showing a deliberate attempt to manipulate jurisdictional advantages. A suit for patent infringement can proceed separately from a declaratory suit concerning the public domain status of the subject matter.

Case Title: Bristol-Myers Squibb Holdings Vs. Natco Pharma Limited 

Date of Order: January 23, 2020 

Case No.: CS(COMM) 342/2019 

Name of Court: High Court of Delhi 

Judge: Hon’ble Justice Rajiv Sahai Endlaw

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

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