Rajeev Kumar vs. Central Information Commission (CIC)

PhD thesis and right to information Act 

Introduction: The case addresses the denial of access to a PhD thesis under the Right to Information Act, 2005 (RTI Act). The petitioner, Rajeev Kumar, sought a copy of the thesis titled "Studies on some nitrogen-fixing genes of Azotobacter vinelandii" from Jamia Millia Islamia University (JMIU). The university and the Central Information Commission (CIC) denied access, citing exemptions under Section 8(1)(d) of the RTI Act, claiming the thesis had commercial importance and intellectual property concerns.

Background:The petitioner filed an RTI application in March 2019, seeking access to a PhD thesis submitted to JMIU. The Public Information Officer (PIO) and the First Appellate Authority (FAA) denied the request, citing Section 8(1)(d) of the RTI Act. The petitioner escalated the matter to the CIC, which upheld the denial, leading to the filing of the present writ petition.

Brief Facts of the Case: RTI Request: Filed on March 26, 2019, seeking access to the PhD thesis. Initial Denial: The PIO forwarded a response stating the thesis was in "safe custody" and inaccessible. First Appeal: Rejected on May 24, 2019, citing Section 8(1)(d) of the RTI Act. Second Appeal: The CIC, in its order dated April 12, 2021, upheld the denial, asserting the thesis had commercial importance and intellectual property concerns. Petition: Filed by Rajeev Kumar to challenge the CIC's decision and seek access to the thesis.

Issues Involved:

1. Whether the PhD thesis qualifies as "information" under the RTI Act.

2. Whether the thesis can be exempted from disclosure under Section 8(1)(d) of the RTI Act.

3. Whether the CIC and JMIU acted lawfully in denying access to the thesis.

Submissions of the Parties:

Petitioner: Argued that a PhD thesis is an academic document meant for public access to promote research and transparency. Highlighted that JMIU regulations and UGC guidelines mandate the publication of PhD theses. Asserted that the thesis was previously accessible, as evidenced by its citation in academic works. Contended that the CIC's reasoning of "commercial importance" was speculative and unsubstantiated.

Respondents (CIC and JMIU): Claimed the thesis had commercial value and intellectual property concerns, warranting exemption under Section 8(1)(d) of the RTI Act. Argued that the university's guidelines could not override statutory exemptions under the RTI Act.

Reasoning and Analysis by the Court:

Definition of "Information" under RTI Act: The court noted that a PhD thesis, being a document held by a public university, qualifies as "information" under the RTI Act.

Application of Section 8(1)(d):Section 8(1)(d) exempts disclosure of information involving "commercial confidence," "trade secrets," or "intellectual property," only if disclosure harms the competitive position of a third party.  The court emphasized the dual test for invoking this exemption: (i) the information must fall within the specified categories, and (ii) its disclosure must demonstrably harm competitive interests.

JMIU's Failure to Substantiate Claims: The court found no evidence to support JMIU's claim that the thesis had commercial importance or intellectual property concerns. The thesis had already been cited in academic works, indicating prior public availability.

Public Interest vs. Confidentiality:The court highlighted the larger public interest in accessing PhD theses, which serve as foundational academic resources. It rejected speculative claims of harm, emphasizing the transparency and academic advancement objectives of the RTI Act.

Role of Universities as Custodians:Universities are mandated to disseminate knowledge and make PhD theses accessible. JMIU's withholding of the thesis contradicted its own regulations and UGC guidelines.

Improper Basis for CIC's Decision: The CIC relied on unsubstantiated claims by JMIU, failing to balance public interest against alleged concerns.

Decision:

1. Impugned Order Set Aside: The court quashed the CIC's order dated April 12, 2021.

2. Disclosure Directed: JMIU was ordered to provide the petitioner with access to the PhD thesis within two weeks.

3. Observations on Transparency:The court underscored the importance of academic transparency and the RTI Act's role in promoting accountability.

Conclusion: This judgment reaffirms the principles of transparency and academic freedom, emphasizing that public institutions cannot arbitrarily withhold access to information. By directing the disclosure of the PhD thesis, the court upheld the RTI Act's objective of fostering accountability and enabling public access to knowledge. The decision serves as a reminder that speculative claims of "commercial importance" cannot override the larger public interest in academic research.

Case Title: Rajeev Kumar vs. Central Information Commission & Ors.

Case No.: W.P.(C) 10118/2021

Court: High Court of Delhi at New Delhi

Date of Order: December 10, 2024

Judge: Hon'ble Mr. Justice Sanjeev Narula

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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.

Malpani Enterprises vs. Registrar of Trademarks

Technical Glitch in Trade Mark Registry website and Delay in filing Notice of Opposition

Introduction:This case concerns the procedural challenge faced by Malpani Enterprises in filing a notice of opposition against the trademark application for "R3 DÉCOR." The issue arose due to a technical glitch in the Registrar of Trademarks' online portal, which allegedly denied the petitioner their statutory right to oppose the trademark registration.

Background: Malpani Enterprises, the registered proprietor of the trademark "DECOR PLY," sought to oppose a conflicting trademark application for "R3 DÉCOR," alleging visual, structural, and phonetic similarity. The petitioner attempted to file the opposition on the last permissible day, but technical issues with the online portal led to delays.

Brief Facts of the Case: Petitioner's Trademark: "DECOR PLY," registered under Class 19 for goods like plywood and flush doors. The mark has been in continuous use since 2010. Conflicting Trademark: Application No. 5587879 for "R3 DÉCOR," accepted and published in the Trade Mark Journal on April 15, 2024. Opposition Deadline: August 15, 2024, extended to August 16, 2024, due to the national holiday. Technical Glitch: On August 16, 2024, the online portal erroneously displayed that the opposition period had lapsed. Physical Submission: The petitioner sent the notice of opposition via Speed Post on August 16, 2024, but it was received by the Registrar on August 19, 2024.Registrar's Rejection: The Registrar, citing Rule 14 of the Trade Mark Rules, 2017, deemed the opposition time-barred.

Issues Involved:

1. Whether the technical glitch in the online portal can deprive the petitioner of their statutory right to file a notice of opposition.

2. Whether the delay caused by the technical glitch should be condoned.

3. Whether the Registrar's rejection of the notice of opposition was justified under the Trade Mark Rules, 2017.

Submissions of the Parties:

Petitioner:Claimed a technical glitch in the online portal prevented the timely filing of the notice of opposition.Argued that the statutory right to oppose cannot be denied due to a technical error.Highlighted that the notice of opposition was prepared and sent on August 16, 2024, within the extended deadline.

Respondent (Registrar of Trademarks):Asserted that the notice of opposition was received on August 19, 2024, beyond the statutory period.Cited Rule 14 of the Trade Mark Rules, 2017, which considers the date of receipt as the relevant date.Claimed the portal's software automatically calculated deadlines, and the petitioner should have adhered to them.

Reasoning and Analysis by the Court:

1. Acknowledgment of the Technical Glitch:The court noted that the Registrar admitted the portal showed an incorrect deadline, thereby confirming the technical glitch.2. Statutory Rights:Justice Mini Pushkarna emphasized that statutory rights cannot be forfeited due to technical errors in the respondent's system.3. Responsibility of the Registrar:The court held that the Registrar, being responsible for maintaining a functional system, cannot penalize parties for glitches in their infrastructure.4. Equitable Considerations:Since the petitioner acted within the statutory deadline by attempting to file online and subsequently mailing the notice, the delay caused by the glitch was beyond their control.

Decision:The court quashed the Registrar's letter dated August 20, 2024, rejecting the notice of opposition.Directed the Registrar to accept and process the notice of opposition filed by the petitioner.Held that the petitioner cannot be penalized for the delay caused by a technical glitch.

Conclusion:This judgment reinforces the principle that statutory rights must not be compromised due to administrative inefficiencies or technical errors. The court’s decision ensures fairness and accountability, highlighting the Registrar's duty to maintain a functional and error-free system. By directing the Registrar to process the opposition, the court upheld the petitioner’s right to challenge conflicting trademarks within the prescribed legal framework.

Case Title: Malpani Enterprises vs. Registrar of Trademarks

Case No.: W.P.(C)-IPD 27/2024 & CM 87/2024

Neutral Citation: 2025:DHC:36

Court: High Court of Delhi at New Delhi

Date of Order: January 7, 2025

Judge: Hon'ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman

IP Adjutor 

[Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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.

RPG Enterprises Limited Vs. RPG Industrial Products Pvt. Ltd.

Effect of Well Known Trademark Declaration in Trademark Cancellation Proceeding

Introduction:The case concerns a rectification petition filed by RPG Enterprises Limited seeking cancellation of the trademark registration granted to RPG Industrial Products Pvt. Ltd. for the mark “RPG” under Class 23. The petitioner alleged that the impugned registration violates the provisions of the Trade Marks Act, 1999, as it misappropriates the petitioner’s well-established trademark, “RPG.”

Background:The petitioner, RPG Enterprises Limited, is a well-known conglomerate with diverse business interests, including infrastructure, IT, pharmaceuticals, and e-commerce. The trademark "RPG," derived from the initials of the founder, Shri R.P. Goenka, has been in use since 1979 and has gained immense goodwill and recognition globally.The respondent, RPG Industrial Products Pvt. Ltd., registered the trademark "RPG" in Class 23 for polyester staple fiber. The petitioner challenged this registration, alleging that it constitutes passing off and trademark dilution.Petitioner’s Trademark Usage: The petitioner adopted the “RPG” mark in 1979. It owns multiple trademark registrations, including Registration No. 850255 (Class 12) and 3930988 (Class 25). The petitioner’s mark has been declared well-known by courts, including the Bombay High Court in RPG Enterprises Limited v. Riju Ghoshal & Anr., 2022 SCC OnLine Bom 626.

Respondent’s Registration and Usage:The respondent registered “RPG” under Registration No. 2778255 in Class 23 on July 22, 2017. The respondent claims use since 2011 and states that “RPG” represents the initials of its founder, Shri Rajendra Prasad Gupta.

Issues Involved:Whether the petitioner has exclusive rights over the “RPG” trademark across all classes of goods and services. Whether the respondent’s adoption and registration of the “RPG” mark were made in good faith. Whether the respondent’s use of the “RPG” mark creates a likelihood of confusion and dilution of the petitioner’s trademark. Whether the registration is liable to be rectified under Sections 47 and 57 of the Trade Marks Act, 1999.

Petitioner’s Submissions:The impugned registration violates Sections 11(1), 11(2), and 11(3) of the Trade Marks Act as it creates confusion and dilutes the distinctive character of the petitioner’s mark.The respondent’s claim of use since 2011 is unsupported by credible evidence.The respondent acted in bad faith by adopting the identical mark “RPG.”The petitioner’s mark is well-known and entitled to protection even for dissimilar goods.

Respondent’s Submissions:The petitioner is not an aggrieved party under Section 57 of the Trade Marks Act.The marks are distinct due to differences in style, color, and class of goods.The respondent adopted “RPG” honestly, representing the founder’s initials.No evidence of confusion or deception has been presented.

Reasoning and Analysis by the Court

Dominance of the Mark:The court held that the dominant feature of the respondent’s mark is “RPG,” which is identical to the petitioner’s well-known trademark.Well-Known Status:The court recognized the petitioner’s mark as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, citing its long-standing use, reputation, and prior judicial recognition.Similarity of Goods:Although the respondent dealt with polyester fiber (Class 23) and the petitioner with clothing (Class 25), the court noted that the goods are allied and cognate, increasing the likelihood of confusion.Bad Faith Adoption:The court found the respondent’s adoption dishonest, as the petitioner’s mark was widely recognized before the respondent’s registration.

Legal Precedents:The court relied on several precedents, including M/s Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., to emphasize that bad faith adoption vitiates trademark rights.

Decision:The court allowed the petition and directed the cancellation of the trademark registration (No. 2778255) in favor of RPG Industrial Products Pvt. Ltd. The Registrar of Trademarks was instructed to remove the impugned mark from the register and issue a notification to this effect.

Conclusion:This case underscores the importance of good faith in adopting trademarks and the robust protection afforded to well-known marks under Indian law. The decision reaffirms that bad faith adoption cannot be legitimized by subsequent use and that courts will prevent misuse of established trademarks to protect consumer interests and brand equity.

Case Title: RPG Enterprises Limited v. RPG Industrial Products Pvt. Ltd.

Date of Order: January 8, 2025

Case Number: C.O. (COMM.IPD-TM) 203/2022

Neutral Citation: 2025:DHC:38

Court: High Court of Delhi, New Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman

IP Adjutor

[Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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.

Novartis AG & Another Vs. Natco Pharma Limited-Mini Pushkarna H.J.

Additional Written Statement under Order VIII Rule 9 CPC

Introduction:This case concerns a suit filed by Novartis AG and its affiliate seeking a permanent injunction to restrain Natco Pharma Limited from infringing its Indian Patent No. 276026 (hereafter "IN'026"), along with reliefs for rendition of accounts, damages, and delivery of infringing goods. A key development was the Defendant’s request to file an additional written statement, which was contested by the Plaintiffs.

Patent Ownership and Dispute Initiation:Novartis owns Indian Patent IN'026, granted in September 2016, covering specific pharmaceutical innovations.The Plaintiffs claimed Natco infringed their patent by manufacturing and marketing products using their patented invention.

Interim Injunction:The Court granted an interim injunction in favor of the Plaintiffs on January 9, 2023, barring Natco from further infringement.Natco's attempts to vacate this injunction were dismissed on April 9, 2024.

Divisional Application:Novartis had filed a Divisional Application, IN 5338/DELNP/2014 ("IN'5338"), linked to the same innovation but chose not to pursue it, leading to its rejection in December 2022.Natco argued that the rejection of the Divisional Application was a significant development and sought to include it in the proceedings through an additional written statement.

Brief Facts of the Case:Natco sought leave under Order VIII Rule 9 of the Code of Civil Procedure (CPC) to file an additional written statement.Natco argued the Plaintiffs had suppressed material facts related to the Divisional Application and its rejection.Novartis opposed the application, asserting the rejection of the Divisional Application was immaterial to the suit, as it was unrelated to the validity of IN'026.

Issues Involved:Materiality of the Divisional Application: Whether the facts surrounding the Divisional Application (its rejection and related prior art) were relevant to the present dispute.Application of Order VIII Rule 9 CPC: Whether the Defendant should be permitted to file an additional written statement given the procedural constraints of the Commercial Courts Act, 2015.Impact on Interim Injunction: Whether allowing the additional written statement would affect prior decisions on the interim injunction.

Submissions of the Parties: Natco (Defendant):The Divisional Application's rejection revealed prior art that undermines the Plaintiffs' claims.The Plaintiffs failed to disclose the rejection, violating their duty under Order XI Rule 1(12) CPC, which mandates continuous disclosure of material facts.Filing an additional written statement was necessary to ensure the dispute's full adjudication.

Novartis (Plaintiffs): The rejection of the Divisional Application was procedural, not on merits, and hence irrelevant.Prior decisions on the interim injunction already considered the cited prior art, and the Defendant's claims amounted to issue estoppel.Allowing the additional written statement would delay proceedings and prejudice the Plaintiffs.

Reasoning and Analysis by the Court:

Materiality of Divisional Application:The Court noted that while the Divisional Application was not pursued by the Plaintiffs, its rejection could be considered a subsequent development relevant to the case.However, the rejection was procedural, not on the merits of the patent claims, as confirmed by prior judgments.

Procedural Framework under Order VIII Rule 9 CPC:The Court emphasized its discretionary power to allow additional pleadings under Order VIII Rule 9 CPC, provided they were necessary for justice.It clarified that the statutory limit for filing a written statement under Order VIII Rule 1 (120 days under the Commercial Courts Act, 2015) did not apply to subsequent pleadings.

Impact on Interim Injunction:The Court rejected Natco's argument that the Divisional Application's rejection warranted revisiting the interim injunction.It highlighted that prior judgments (January 9, 2023, and April 9, 2024) had comprehensively addressed the validity of IN'026 and the relevance of cited prior art.

Duty of Continuous Disclosure: The Court agreed with Natco that both parties had a duty to disclose material facts until the suit's resolution.It concluded that the rejection of the Divisional Application, though not critical, was a fact that could be brought on record without prejudice to the Plaintiffs.

Decision:  Grant of Leave to File Additional Written Statement: The Court allowed Natco to file an additional written statement to incorporate facts related to the Divisional Application.It directed Natco to restrict its additional pleadings to matters already raised in its prior application for vacation of the interim injunction (I.A. 4636/2023).Natco was given 30 days to file the additional written statement.

Conclusion: This case underscores the balance courts must strike between procedural efficiency and ensuring complete adjudication. The judgment highlights:The discretionary scope of Order VIII Rule 9 CPC in permitting subsequent pleadings.The importance of continuous disclosure in commercial litigation.The distinction between procedural and substantive grounds in determining the relevance of additional evidence.

Case Title: Novartis AG & Another Vs. Natco Pharma Limited

Date of Order: January 8, 2025

Case Number: CS(COMM) 229/2019 

Neutral Citation: 2025:DHC:51

Court: High Court of Delhi, New Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman
IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539

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.

FMI Limited vs. Midas Touch Metalloys Pvt. Ltd.

Non Mentioning of Defendant's Trademark Registration in different class is not material suppression

Introduction: This case concerns a dispute between FMI Limited (Plaintiff) and Midas Touch Metalloys Pvt. Ltd. (Defendant) over the alleged trademark infringement and passing off involving the trademarks "INDI" (owned by the Plaintiff) and "INDEED" (used by the Defendant). The Plaintiff claimed that the Defendant's mark was deceptively similar and likely to confuse customers.

Background: FMI Limited is a well-established company specializing in measuring tools, operating since 1950, with significant domestic and international presence. It uses the trademark "INDI" for its measuring tapes and related tools, a brand developed since 2015. The Defendant launched a similar range of products under the mark "INDEED" in July 2024, prompting FMI to seek legal action.  FMI alleged that Midas Touch Metalloys' mark "INDEED" not only infringed upon its rights but also copied its trade dress and color scheme (blue and white), potentially leading to confusion among consumers.

Plaintiff’s Position: FMI Limited owns registered trademarks for "INDI" and its variations under Class 9 (tools and measuring instruments). It has invested heavily in marketing, gaining recognition and goodwill for "INDI," supported by substantial sales figures. Defendant's "INDEED" mark is deceptively similar to "INDI," phonetically and structurally. Defendant also adopted a similar trade dress, including the blue-and-white color scheme.

Defendant’s Position: Defendant argued that it is the registered proprietor of "INDEED" in Classes 7 and 8, and these registrations predate some of FMI’s applications. Claimed FMI’s mark "INDI" is generic or short for "India," thus lacking exclusivity. Asserted that their use of "INDEED" was accompanied by their brand identifiers ("Midas Touch" and "SCOTTS"), which sufficiently distinguish it. Alleged suppression of material facts by FMI, including information about other trademark registrations and oppositions.

Issues Involved: Trademark Infringement: Whether the Defendant’s use of the mark "INDEED" infringes upon FMI Limited's registered trademark "INDI." Passing Off: Whether the Defendant’s use of a similar mark and trade dress causes deception or confusion in the market. Suppression of Facts: Whether the Plaintiff concealed material facts regarding its trademark and the Defendant’s registrations in other classes. Bona Fide Use: Whether the Defendant’s adoption of "INDEED" was bona fide.

Plaintiff’s Submissions: Strong goodwill and reputation exist for "INDI" due to its consistent and long-standing use since 2015.The Defendant adopted "INDEED" deceptively, with no justification for the mark or trade dress.Plaintiff does not claim exclusivity over the color combination, but its use in conjunction with "INDEED" creates confusion.

Defendant’s Submissions: "INDEED" was adopted to emphasize product quality and is distinct from "INDI." No exclusivity exists for "INDI," as it is generic. Plaintiff suppressed material facts about third-party oppositions and trademark history. Reasoning and Analysis by the Judge.  

Court's Finding:Misrepresentation and Suppression of Facts: The Court found no merit in the Defendant's allegations of suppression, as the Plaintiff disclosed relevant trademark registrations related to Class 9 (the applicable class for measuring tapes).Trademark Infringement:Both marks, "INDI" and "INDEED," are registered under Class 9, covering identical products.Phonetic and structural similarities were found between the marks. The difference introduced by the letter "D" in "INDEED" was deemed insufficient to distinguish it.Passing Off:The Defendant's adoption of a similar trade dress (blue-and-white) and design elements was not bona fide.Consumer confusion was likely, especially as the competing products could be displayed side by side in stores.Goodwill and Reputation:The Plaintiff demonstrated extensive goodwill through significant sales figures and long-standing use of the "INDI" mark since 2015.Defendant’s Bona Fides:The Defendant failed to provide a satisfactory explanation for adopting "INDEED," despite having used other marks like "CUBIT" and "ALCOR" previously.Balance of Convenience:Favored the Plaintiff due to its prior use, established goodwill, and the Defendant’s recent entry into the market with "INDEED."

Decision:The Court upheld the ex-parte ad interim injunction restraining the Defendant from using the mark "INDEED" or any similar mark.The Defendant’s plea to release seized goods bearing the infringing mark was denied.The Defendant was prohibited from using the blue-and-white trade dress or other elements likely to confuse consumers.

Conclusion:This case emphasizes the importance of prior use and goodwill in trademark disputes. The Court relied heavily on principles of passing off and consumer confusion, concluding that the Defendant’s actions lacked bona fide intent and were likely to harm the Plaintiff’s goodwill. The decision reflects the judiciary's robust protection of established trademarks against deceptive practices.

Case Title: FMI Limited vs. Midas Touch Metalloys Pvt. Ltd.

Date of Order: January 8, 2025

Case Number: CS(COMM) 721/2024 

Neutral Citation: 2025:DHC:32

Court: High Court of Delhi, New Delhi

Judge: Hon'ble Justice Amit Bansal

Advocate Ajay Amitabh Suman

IP Adjutor

[Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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.

Diamond Modular Pvt. Ltd. Vs. Yash Arora

Trademark of Ex Distributor, Rectified, being dishonesty in adoption

Introduction:This case pertains to a trademark dispute between Diamond Modular Pvt. Ltd. (the petitioner) and Yash Arora, trading as Siddhi Vinayak Traders (respondent no. 1). The petitioner sought the cancellation of the respondent’s trademark "GREEN DIAMOND" under Section 57/125 of the Trademarks Act, 1999, alleging infringement, passing off, and dishonest adoption.

Background:The petitioner, a prominent manufacturer of electrical goods since 1975, has been using the trademark "DIAMOND" extensively, building substantial goodwill and reputation in the market. The respondent, an ex-distributor of the petitioner, registered the trademark "GREEN DIAMOND" in 2019 for similar goods. The petitioner alleged that this registration was dishonest and intended to capitalize on its established goodwill.

Brief Facts of the Case:The petitioner’s trademark "DIAMOND" has been in use since 1975 and is associated with electrical goods, including LED lights and switches.The respondent registered the trademark "GREEN DIAMOND" in 2019 under Class 9 for electrical accessories.The petitioner discovered the respondent’s registration in 2021 and filed for rectification, alleging trademark infringement and passing off.The petitioner had previously obtained an injunction against the respondent from using "GREEN DIAMOND" in a separate District Court proceeding.

Issues Involved:Whether the respondent’s trademark "GREEN DIAMOND" infringes upon the petitioner’s trademark "DIAMOND."Whether the respondent’s registration was dishonest and intended to create confusion in the market.Whether the petitioner is entitled to cancellation of the respondent’s trademark.

Submission of Parties: Petitioner Claimed prior and extensive use of the trademark "DIAMOND."Alleged that the respondent, as an ex-distributor, was fully aware of the petitioner’s trademark and dishonestly adopted "GREEN DIAMOND."Highlighted the likelihood of confusion among consumers due to the similarity of the marks.Respondent:Argued that "DIAMOND" is a generic term and cannot be monopolized.Claimed that "GREEN DIAMOND" is a device mark, distinct from the petitioner’s word mark.Asserted that the registration followed due process and was valid.

Reasoning and Analysis by the Judge:Prior Use and Goodwill: The court recognized the petitioner’s prior and continuous use of "DIAMOND" since 1975, establishing its goodwill and reputation.Dishonest Adoption: The respondent’s status as an ex-distributor of the petitioner strongly indicated knowledge of the petitioner’s trademark. The adoption of "GREEN DIAMOND" was deemed dishonest and aimed at capitalizing on the petitioner’s goodwill.Likelihood of Confusion: The similarity in the dominant part of the marks ("DIAMOND") and the identical nature of goods heightened the risk of consumer confusion.Genericity Argument: The court rejected the respondent’s claim that "DIAMOND" is generic, holding that long-term use and goodwill had given the mark distinctiveness and secondary meaning.

Decision:The court allowed the rectification petition and directed the cancellation of the respondent’s trademark "GREEN DIAMOND" under No. 4290006 in Class 9. The respondent was restrained from using the mark "GREEN DIAMOND" for goods under Classes 9 and 11. Additionally, the respondent was ordered to file a statement of accounts detailing profits earned from using the impugned trademark.

Conclusion:This judgment reaffirms the principle that dishonest adoption of a trademark, especially by an ex-associate, is actionable under trademark law. It underscores the importance of protecting established trademarks from misuse and maintaining the integrity of the trademark registry.

Case Title: Diamond Modular Pvt. Ltd. Vs. Yash Arora 

Date of Order:January 8, 2025

Case No.C.O. (COMM.IPD-TM) 225/2021

Neutral Citation: 2025:DHC:37

Name of Court:High Court of Delhi at New Delhi

Name of Judge:Hon’ble Ms. Justice Mini Pushkarna

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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.

Novenco Building & Industry Vs. Xero Energy Engineering Solutions Private Ltd. & Another

Mandatory Nature of Section 12-A of Commercial Court Act 2015

Introduction:The case involves a commercial dispute between Novenco Building & Industry A/S (plaintiff) and Xero Energy Engineering Solutions Private Ltd. (defendants) concerning allegations of patent and design infringement. The primary issue was whether the plaintiff's failure to comply with the mandatory Pre-Institution Mediation under Section 12-A of the Commercial Courts Act, 2015, warranted the rejection of the plaint.

Background:The plaintiff, a manufacturer of axial fans, alleged that the defendants were infringing its patents and designs by manufacturing and selling similar products. The plaintiff issued a Cease-and-Desist notice in December 2022 but claimed that the defendants continued their infringing activities. The suit was filed in June 2024, seeking urgent interim relief without undergoing Pre-Institution Mediation.

Brief Facts of the Case: The plaintiff entered into a Distributor Agreement with the defendants in 2017.  In July/August 2022, the plaintiff became aware of alleged patent and design infringements by the defendants.  The plaintiff terminated the Distributor Agreement in October 2022 and issued a Cease-and-Desist notice in December 2022. Despite the notice, the defendants continued to manufacture and sell the impugned products online and offline. The plaintiff filed the suit in June 2024, citing urgency to prevent further loss of market share and reputation.

Issues Involved:

1. Whether the plaintiff's failure to comply with the mandatory Pre-Institution Mediation under Section 12-A of the Commercial Courts Act rendered the plaint liable for rejection.

2. Whether the urgency claimed by the plaintiff justified bypassing Pre-Institution Mediation.

Submissions of the Parties:

Defendants:Argued that the plaint was barred by law due to non-compliance with Section 12-A of the Commercial Courts Act.Contended that the plaintiff failed to demonstrate genuine urgency in the suit.Claimed that the application for interim relief was merely a tactic to bypass Pre-Institution Mediation.

Plaintiff:Asserted that the suit contemplated urgent interim relief, making Pre-Institution Mediation unnecessary.Highlighted the defendants’ ongoing commercial activities, including online sales, which infringed the plaintiff’s patents and designs.Argued that the delay in filing the suit was due to the time required for technical analysis and evaluation of the infringement.

Reasoning and Analysis by the Judge:

Mandatory Nature of Section 12-A: The court referred to the Supreme Court’s rulings in Patil Automation Pvt. Ltd. vs. Rakheja Engineers Pvt. Ltd. and Yamini Manohar vs. T.K.D. Keerthi, which held that Section 12-A of the Commercial Courts Act is mandatory. It emphasized that urgent interim relief must not be a pretext to bypass mandatory mediation.

Assessment of Urgency: The court scrutinized the timeline and found no compelling urgency to justify bypassing mediation. The plaintiff became aware of the infringement in 2022 but waited until June 2024 to file the suit. The plaintiff’s claim of urgency was undermined by its own delay.

Application for Interim Relief: The court found the plaintiff’s application under Order XXXIX, Rules 1 and 2 of the CPC lacked sufficient evidence of irreparable harm or immediate necessity.

Legislative Intent: The court highlighted that the intent behind Section 12-A is to reduce the burden on courts and promote alternative dispute resolution. Allowing the suit without mediation would defeat this objective.

Decision:The court allowed the defendants’ application under Order VII, Rule 11 of the CPC and rejected the plaint on the following grounds:

1. Non-compliance with Section 12-A of the Commercial Courts Act.

2. Lack of demonstrated urgency to bypass Pre-Institution Mediation. 

Conclusion: This judgment reinforces the mandatory nature of Pre-Institution Mediation under Section 12-A of the Commercial Courts Act. It underscores the importance of adhering to procedural requirements and the judiciary’s commitment to promoting alternative dispute resolution mechanisms. The decision serves as a precedent for ensuring that claims of urgency are not misused to bypass statutory mandates.

Case Title: Novenco Building & Industry Vs. Xero Energy Engineering Solutions Private Ltd. & Another

Case No. and Neutral Citation:

OMP No. 540 of 2024 in COMS No. 13 of 2024

Neutral Citation: 2024:HHC:7518

Date of Order:28th August 2024

Court:High Court of Himachal Pradesh, Shimla

Judge:Hon’ble Justice Ajay Mohan Goel

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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.

Haldiram India Pvt. Ltd. vs. Berachah Sales Corporation & Ors.

Case Title: Haldiram India Pvt. Ltd. vs. Berachah Sales Corporation & Ors.

Case No.CS(COMM) 495/2019

Date of Order:2nd April 2024

Court:Delhi High Court

Judge:Hon'ble Justice Prathiba M. Singh

Introduction:

This case is a landmark trademark dispute involving Haldiram India Pvt. Ltd., a renowned food brand, against Berachah Sales Corporation and others. The plaintiff sought protection for its trademark "HALDIRAM" and related marks, claiming unauthorized use and dilution of its goodwill by the defendants. The case delves into the principles of trademark protection, well-known mark recognition, and the doctrine of spill-over reputation.

Background

Haldiram India Pvt. Ltd., established in 1941, is a leading food brand with a significant domestic and international presence. The company holds trademarks for "HALDIRAM" in various classes, including food products and eateries. The defendants, Berachah Sales Corporation and others, allegedly used identical and deceptively similar marks for their products and services, leading to this suit for injunction, damages, and declaration of "HALDIRAM" as a well-known mark.

Brief Facts of the Case

1. Plaintiff's Claim:

Ownership of the trademark "HALDIRAM" and its variants since 1941.

Allegations of unauthorized use of the mark by the defendants for products like mustard oil, salt, and ghee.

The defendants operated under names such as "Haldiram Restro Pvt. Ltd." and registered domain names like www.haldiramrestro.com.

2. Defendants' Stand:

Claimed use of the mark in Class 43 (restaurants and eateries), which was not covered by the plaintiff's registrations.

Argued the existence of other companies using "Haldiram" without objections from the plaintiff.

Issues Involved

1. Whether the defendants' use of "HALDIRAM" constituted trademark infringement and passing off.

2. Whether the plaintiff's mark qualifies as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.

3. Entitlement of the plaintiff to damages and injunction.

Submissions of the Parties

Plaintiff:

Asserted exclusive rights over the "HALDIRAM" mark, supported by registrations and long-standing goodwill.

Highlighted the defendants' malafide intent to exploit the plaintiff's reputation.

Sought permanent injunction, damages, and recognition of "HALDIRAM" as a well-known mark.

Defendants:

Denied infringement, citing use in a different class (restaurants and eateries).

Claimed that the plaintiff lacked exclusive rights in Class 43.

Argued that the plaintiff failed to act against other entities using the "HALDIRAM" name.

Reasoning and Analysis by the Judge

1. Trademark Infringement and Passing Off:

The court observed that the defendants used identical marks for identical services, fulfilling the triple identity test.

The defendants' actions were deemed to exploit the plaintiff's goodwill and reputation.

2. Well-Known Mark Declaration:

The court analyzed factors under Section 11(6) of the Trade Marks Act, including the plaintiff's extensive sales, advertising, and global presence.

The mark "HALDIRAM" was declared well-known, even in West Bengal, despite territorial limitations under a dissolution deed.

3. Damages:

Based on the Local Commissioner's report, the court found substantial misuse of the plaintiff's mark.

Awarded exemplary damages of ₹50 lakhs, emphasizing the need to deter such malpractices.

Decision

The Delhi High Court ruled in favor of Haldiram India Pvt. Ltd., granting:

1. A permanent injunction restraining the defendants from using "HALDIRAM" or deceptively similar marks.

2. Recognition of "HALDIRAM" as a well-known trademark.

3. Damages of ₹50 lakhs and costs of ₹2 lakhs.

Conclusion

This judgment reinforces the robust protection afforded to well-known trademarks under Indian law. It highlights the judiciary's proactive stance in safeguarding intellectual property rights and deterring infringement. The recognition of "HALDIRAM" as a well-known mark is a significant milestone, reflecting its widespread reputation and goodwill.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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.

T Series Vs. Dreamline Reality Movies

Case Title:T Series Vs. Dreamline Reality Movies

Case No. FAO No. 6386 of 2023

Neutral Citation: 2024:PHHC:025132

Date of Order:27th February 2024

Court:Punjab and Haryana High Court

Judge: Hon'ble Justice Raj Kumar

Introduction:

The case revolves around a copyright dispute between T Series and Dreamline Reality Movies concerning allegations of infringement related to cinematographic works and sound recordings. It examines the scope of rights under the Copyright Act, 1957, particularly regarding unauthorized reproductions.

Background:

T Series, a leading entertainment company, alleged that Dreamline Reality Movies reproduced and distributed its copyrighted works without authorization. The case focuses on the interpretation of "infringing copy" and the rights conferred upon copyright holders under the Copyright Act, 1957.

Brief Facts of the Case:

1. T Series owns the copyright in several cinematographic films and sound recordings.

2. Dreamline Reality Movies allegedly reproduced and distributed these works in violation of copyright laws.

3. T Series sought an injunction to restrain Dreamline Reality Movies from further infringement.

Issues Involved

1. Whether the reproduction and distribution by Dreamline Reality Movies constituted an "infringing copy" under the Copyright Act, 1957.

2. Whether T Series was entitled to an injunction and damages.

3. The applicability of statutory exceptions under the Act.

Submissions of the Parties

Plaintiff (T Series):

Asserted ownership of copyright in the works.

Alleged that the defendant's actions amounted to unauthorized reproduction and distribution.

Sought a permanent injunction, damages, and accounting of profits.

Defendant (Dreamline Reality Movies):

Denied allegations of infringement.

Claimed that their actions fell within statutory exceptions, including fair use.

Argued the lack of substantial similarity in the works.

Reasoning and Analysis by the Judge

1. Interpretation of "Infringing Copy":

The court analyzed Section 14 of the Copyright Act, defining the rights conferred upon copyright holders.

It emphasized that unauthorized reproduction in any medium constitutes infringement.

2. Evaluation of Evidence:

The court reviewed the evidence submitted by T Series, including original and alleged infringing copies.

It found substantial similarity in the content, supporting T Series's claims.

3. Statutory Exceptions:

The court rejected the defendant's argument of fair use, holding that the reproduction was for commercial purposes, not covered under statutory exceptions.

4. Injunction:

The court emphasized the importance of protecting intellectual property rights and granted a permanent injunction against Dreamline Reality Movies.

Decision:

The Punjab and Haryana High Court ruled in favor of T Series, granting:

1. A permanent injunction restraining Dreamline Reality Movies from further infringement.

2. Damages to T Series for the losses incurred.

3. An order for the defendant to provide an account of profits made from the infringing activities.

Conclusion:

The judgment reinforces the stringent protection afforded to copyright holders under Indian law. It highlights the judiciary's proactive approach in addressing copyright infringement and ensuring compliance with the Copyright Act, 1957. The case serves as a precedent for similar disputes, emphasizing the deterrence of unauthorized reproductions.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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.

Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Introduction

This case revolves around the alleged infringement of the plaintiffs' trademark "CHUPA CHUPS" by the defendants, who marketed their products under the mark "HARNIK CHUPA CHUP." The legal dispute primarily concerns trademark infringement, passing off, and the interplay between pending rectification proceedings and the rights to seek relief in a civil court under the Trade Marks Act, 1999.

Background

The plaintiffs, Perfetti Van Melle S.P.A., are globally recognized manufacturers of confectionery products and owners of the registered trademark "CHUPA CHUPS." The defendants used the mark "HARNIK CHUPA CHUP" for similar products. The plaintiffs claimed this use was deceptive and likely to cause confusion among consumers, constituting trademark infringement and passing off.

Brief Facts of the Case

1. The plaintiffs filed a suit seeking a permanent injunction against the defendants from using the mark "HARNIK CHUPA CHUP."

2. The defendants argued their mark was registered and invoked Sections 28(3), 30(2)(e), and 124 of the Trade Marks Act, asserting the suit was not maintainable.

3. The plaintiffs had already filed a rectification petition in 2011, prior to instituting the present suit in 2017, seeking cancellation of the defendants' trademark registration.

Issues Involved

1. Primary Issue: Whether the suit for trademark infringement could proceed while rectification proceedings were pending.

2. Secondary Issue: Whether the relief for passing off could continue independently despite the stay on infringement claims.

Submissions of the Parties

Plaintiffs

Argued that under Section 124 of the Trade Marks Act, the court must frame an issue regarding the invalidity of the defendants' mark before staying the infringement proceedings.

Relied on the Supreme Court's decision in Patel Field Marshal Agencies v. P.M. Diesels Ltd., which mandates the court to assess the prima facie tenability of the rectification claim.

Defendants

Contended that since the rectification petition was filed before the suit, the stay under Section 124(1)(b)(i) was automatic, without requiring the court to frame any issue.

Asserted that both infringement and passing off claims should be stayed as they are interconnected.

Reasoning and Analysis by the Judge

1. Stay of Infringement Proceedings:

Section 124(1)(b)(i) provides for an automatic stay when rectification proceedings are already pending at the time of instituting the suit.

The court clarified that no prima facie assessment or framing of issues is required in such cases, distinguishing it from situations where rectification proceedings are initiated post-suit.

2. Passing Off Claims:

The court held that Section 124 applies only to trademark infringement claims, not to passing off.

Referring to precedents like Puma Stationer P. Ltd. v. Hindustan Pencils Ltd., the court emphasized that passing off claims can proceed independently.

3. Applicability of Precedents:

The court rejected the plaintiffs' reliance on Patel Field Marshal Agencies and Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, noting that these cases addressed different factual scenarios.

Decision

1. The court stayed the suit concerning the infringement of the plaintiffs' trademark under Section 124(1)(b)(i).

2. The passing off claim was allowed to proceed independently, as it fell outside the scope of Section 124.

Conclusion

The judgment underscores the distinct procedural pathways for trademark infringement and passing off claims under Indian law. It reaffirms the automatic stay provision under Section 124(1)(b)(i) when rectification proceedings are pending, while preserving the independent nature of passing off claims. This case is a vital reference for understanding the procedural nuances in trademark litigation.

Case Title: Perfetti Van Melle S.P.A. & Anr. vs. Suresh Nanik

Case Number: CS(COMM) 363/2017

Neutral Citation: 2022:DHC:3414

Date of Decision: September 1, 2022

Court: High Court of Delhi, New Delhi

Judge: Hon’ble Mr. Justice Navin Chawla

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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.

Arun Kumar vs. State of Punjab and Another

IP Adjutor: Episode 19

Is prior opinion of Registrar of Trade Mark under Section 115 of Trademarks Act 1999 mandatory before filing Criminal Complaint?

Case Title:Arun Kumar vs. State of Punjab and Another
Date of Order:25th November 2024
Case Number:CRM-M-54104-2023
Case Citation:2024:PHHC:155158
Court:High Court of Punjab and Haryana at Chandigarh
Judge:Hon’ble Mr. Justice Karamjit Singh

Introduction:
This case concerns the quashing of an FIR and related proceedings under the Copyright Act, 1957, and the Trade Marks Act, 1999. The petitioner, Arun Kumar, challenged the procedural and substantive grounds of the case, alleging non-compliance with statutory requirements.

Background:
FIR Registration: FIR No. 281 was registered on 20.07.2017 under Sections 63 and 65 of the Copyright Act, 1957, at Police Station Jodhewal, Ludhiana.
Allegations: The petitioner was accused of manufacturing fake garments bearing the "Puma" label and selling them at inflated prices.

Investigation and Charges:
Police seized garments labeled as "Puma" during a raid and arrested the petitioner.Following investigation, a challan was submitted under Sections 63 and 65 of the Copyright Act, 1957.Additional charges under Sections 103 and 104 of the Trade Marks Act, 1999, were later framed by the trial court.

Brief Facts of the Case:
The complainant, authorized by RNA-IP Attorneys, alleged unauthorized manufacturing of garments with the "Puma" label.A raid led by Inspector Vijay Kumar resulted in the seizure of fake garments.The petitioner contended that procedural violations under the Trade Marks Act, 1999, invalidated the proceedings.

Issues Involved in the Case:
Procedural Compliance:
Whether the investigation complied with Section 115(4) of the Trade Marks Act, 1999, requiring involvement of an officer not below the rank of Deputy Superintendent of Police (DSP).
Whether the Registrar of Trade Marks’ opinion was obtained before search and seizure, as mandated by the Act.
Substantive Grounds:Whether the charges under the Copyright Act, 1957, and the Trade Marks Act, 1999, were legally sustainable.

Submissions of the Parties:

Petitioner:
Violation of Section 115(4):Search and seizure were conducted by an Inspector, not a DSP, violating statutory requirements.No opinion from the Registrar of Trade Marks was sought before initiating proceedings.

Applicability of the Copyright Act:
Manufacture and sale of garments do not fall under the purview of the Copyright Act, 1957.Cited Deepak vs. State of Haryana (2023), which held similar allegations unsustainable under the Copyright Act.

Quashing of Proceedings:
Sought quashing of FIR, challan, and additional charges for procedural and substantive deficiencies.

State:
Supported the FIR and subsequent proceedings.Justified the seizure of fake garments with "Puma" labels and the petitioner’s arrest.Admitted procedural lapses, including the absence of a DSP and Registrar’s opinion.

Reasoning and Analysis by the Court:
Non-Compliance with Section 115 of the Trade Marks Act:

Investigation and seizure were conducted by an Inspector, violating Section 115(4), which mandates a DSP or higher rank.The Registrar’s opinion was not obtained before search and seizure, contravening the Act’s proviso.

Applicability of the Copyright Act:Section 13 of the Copyright Act does not cover the manufacture and sale of garments.Prosecution failed to establish infringement of copyright under Sections 63 and 65 of the Act.Relied on the Deepak vs. State of Haryana (2023) precedent, which held similar actions outside the scope of the Copyright Act.

Procedural Deficiencies:
Procedural lapses rendered the prosecution legally unsustainable under both the Copyright Act and the Trade Marks Act.

Decision:
The Court allowed the petition and quashed:
FIR No. 281 dated 20.07.2017.
Final report dated 18.02.2018.
Order dated 02.09.2023 framing additional charges under Sections 103 and 104 of the Trade Marks Act, 1999.
All consequential proceedings arising from the above were also quashed.

Conclusion:

The case highlights the critical importance of procedural compliance in intellectual property infringement cases. The Court emphasized adherence to statutory mandates under the Copyright Act, 1957, and the Trade Marks Act, 1999, particularly concerning investigation and prosecution. Procedural lapses and substantive inadequacies led to the quashing of the FIR and related proceedings.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539

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.