Yogi Ayurvedic Products Pvt. Ltd. Vs. Vaishali Industries

Brief Facts

Yogi Ayurvedic Products Pvt. Ltd. filed a suit against Vaishali Industries alleging trademark infringement and passing off concerning the mark "YOGI." The plaintiff claimed to have proprietary rights over the trademark "YOGI" since 1999, with registered trademarks under Classes 3 and 5. The plaintiff argued that the defendant's use of the identical mark for similar products would lead to consumer confusion and dilution of its brand. An ex-parte ad-interim injunction was granted in favor of the plaintiff, which the defendant later sought to vacate by invoking Order XXXIX Rule 4 of the Code of Civil Procedure, 1908, on the ground that false and misleading statements were made while obtaining the injunction.

Issues

The key issues before the court were whether the defendant had established a valid claim of prior use under Section 34 of the Trade Marks Act, 1999, whether the absence of a written assignment deed affected the defendant’s claim, and whether the ex-parte ad-interim injunction granted to the plaintiff should be vacated.

Submissions of Parties

The plaintiff contended that it had continuously and commercially used the "YOGI" trademark since 1999 and had obtained registrations under Classes 3 and 5. It argued that the defendant failed to demonstrate continuous prior use of the mark and had no legal basis to claim ownership. The plaintiff also pointed out that the defendant lacked a written assignment deed transferring rights from its alleged predecessor, as required under the Trade Marks Act.

The defendant, in response, argued that it had been using the "YOGI" trademark since at least 1997 through its predecessor, M/s. D.V. Deo Aromatics Pvt. Ltd. It asserted that the trademark rights were transferred to the defendant through a family arrangement, despite the absence of a formal assignment deed. The defendant also claimed that it had been continuously using the mark and placed reliance on invoices and other documents.

Reasoning and Analysis of Judge

The court analyzed the defendant’s claim of prior use and found it lacking in legal substance. It noted that Section 34 of the Trade Marks Act requires continuous use of a mark and, where applicable, a written assignment for transferring trademark rights. The court specifically emphasized that under Section 2(1)(b) of the Trade Marks Act, 1999, any assignment of a trademark must be in writing. Since the defendant failed to produce any written document assigning the trademark from its alleged predecessor, its claim of prior use was legally untenable. The court further noted that the absence of a written assignment deed broke the chain of ownership, meaning the defendant could not claim that its use of the mark stemmed from the predecessor company.

The court also highlighted that mere isolated instances of use, such as two invoices from 1997, were insufficient to establish continuous commercial use. Additionally, it observed that the defendant’s argument that a family arrangement could serve as an implied assignment was flawed, as trademark law mandates that assignments be documented in writing.

The court found no merit in the defendant’s argument that the injunction was obtained through misleading statements. It held that the plaintiff had provided sufficient documentary evidence, including registration certificates, invoices, and sales figures, to demonstrate its longstanding use of the "YOGI" mark. The court noted that the defendant's use of an identical mark for similar products could lead to consumer confusion and dilution of the plaintiff’s brand.

Decision of Judge

The court rejected the defendant's plea to vacate the injunction and confirmed the ex-parte ad-interim relief granted to the plaintiff. It ruled that the defendant had failed to establish prior continuous use under Section 34 of the Trade Marks Act and that the absence of a written assignment deed was fatal to its claim. The application was allowed, and the injunction against the defendant’s use of the mark was made permanent.

Case Details

Case Title: Yogi Ayurvedic Products Pvt. Ltd. Vs. Vaishali Industries

Date of Order: February 17, 2025

Case No.: Interim Application No. 1598 of 2023 in Commercial IP Suit No. 45 of 2023

Neutral Citation: 2025:BHC-OS:2772

Name of Court: High Court of Judicature at Bombay

Name of Judge: Hon’ble Mr. Justice Manish Pitale

Tata Power Solar Systems Limited Vs. www.tatapowersolardealership.co.in

Brief Facts

Tata Power Solar Systems Limited, a subsidiary of Tata Power Renewable Energy Limited, filed a suit seeking a permanent injunction against multiple defendants for trademark infringement and passing off. The defendants had registered domain names and email addresses incorporating the trademarks "TATA" and "TATA POWER SOLAR" and were allegedly using them to dupe consumers into believing they were associated with Tata Power Solar. The plaintiffs contended that this unauthorized usage was causing consumer confusion and harming their brand reputation.

Issues

The primary issue was whether the defendants' use of the domain names and email addresses incorporating "TATA" and "TATA POWER SOLAR" amounted to trademark infringement and passing off. Additionally, the court examined whether the plaintiffs were entitled to injunctive relief and summary judgment against the defendants.

Submissions of Parties

The plaintiffs argued that they had longstanding rights over the trademarks "TATA" and "TATA POWER SOLAR" and had invested substantial resources in building their brand. They presented evidence of unauthorized domain names and email addresses being used to mislead consumers into believing they were associated with Tata Power Solar. The plaintiffs sought a permanent injunction to restrain the defendants from using these marks and an order directing the suspension of the infringing domain names and freezing of related bank accounts.

The defendants failed to appear despite being duly served, and no written statement or defense was presented on their behalf.

Reasoning and Analysis of Judge

The court observed that the plaintiffs had demonstrated a clear case of trademark infringement and passing off. The defendants had slavishly copied the plaintiffs' well-known trademarks and were using them in connection with identical services. The court noted that the defendants' unauthorized use of the marks not only misled consumers but also took unfair advantage of the plaintiffs' goodwill. Since the defendants did not appear or contest the allegations, all averments made by the plaintiffs were deemed admitted.

Relying on precedents, the court determined that this was a fit case for summary judgment under Order XIII-A of the Code of Civil Procedure, as the defendants had no real prospect of successfully defending the claims. The court emphasized that permitting such deceptive practices would result in irreparable harm to the plaintiffs and cause confusion in the marketplace.

Decision of Judge

The court granted a decree of permanent injunction in favor of the plaintiffs, restraining the defendants from using the marks "TATA," "TATA POWER," and "TATA POWER SOLAR" in any manner, including as part of domain names and email addresses. It directed the suspension of the infringing domain names and the freezing of bank accounts used by the defendants. Additionally, the court ordered that funds from these bank accounts be transferred to the Reserve Bank of India’s Depositor and Education Awareness Fund. The suit was accordingly decreed in favor of the plaintiffs.

Case Details

Case Title: Tata Power Solar Systems Limited Vs. www.tatapowersolardealership.co.in .

Date of Order: February 13, 2025

Case No.: CS(COMM) 419/2024

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Purosis International LLP Vs. V3 Poly Plast

Brief Facts

Purosis International LLP, the appellant, filed an appeal challenging the order dated January 23, 2024, passed by a Single Judge of the Delhi High Court. The dispute revolved around a design infringement case where the appellant alleged that the respondents, V3 Poly Plast & Ors., had infringed upon their design. The Single Judge had ruled that the new design proposed by the respondents did not fall within the scope of an earlier injunction order and permitted them to proceed with its implementation. The appellant sought to amend its plaint to include a specific challenge to the respondents' new design.

Issues

The primary issue before the court was whether the appellant should be allowed to amend the plaint to challenge the new design of the respondents. A secondary issue was whether the appellant could seek fresh interim relief against the respondents' new design, despite the earlier ruling of the Single Judge.

Submissions of Parties

The appellant submitted that they should be permitted to amend their plaint to challenge the new design introduced by the respondents, as the impugned order had allowed the respondents to proceed with it. They also sought clarification that the findings of the Single Judge would not prejudice the final outcome of the trial.

The respondents, while not opposing the amendment of the plaint, expressed concerns that the appellant might use this order to file a fresh application for interim relief, which they argued had already been decided by the Single Judge. The respondents contended that allowing a fresh interim injunction application would reopen an issue that had already been adjudicated.

Reasoning and Analysis of Judge

The court recognized the appellant’s right to amend its plaint to challenge the respondents' new design. It acknowledged that such a challenge should be decided at trial based on the evidence presented by both parties. However, the court also considered the respondents’ argument that a fresh application for interim relief should not be entertained since the issue had been settled in the impugned order.

The court balanced both parties' interests by allowing the amendment but prohibiting the appellant from filing a fresh interim injunction application against the respondents' new design. The judges emphasized that the question of whether the new design infringes upon the appellant’s design should be determined during the final trial.

Decision of Judge

The court allowed the appellant to amend its plaint to challenge the new design of the respondents. However, it barred the appellant from filing a fresh application for interim relief against the new design, holding that the issue had already been decided in the earlier order. The court also noted that the decision should not be circulated in trade circles to prevent any undue commercial implications.

Case Details

Case Title: Purosis International LLP Vs. V3 Poly Plast .

Date of Order: February 20, 2025

Case No.: FAO(OS) (COMM) 31/2025

Neutral Citation: 2025:DHC:1083-DB

Name of Court: High Court of Delhi

Name of Judges: Hon’ble Mr. Justice Navin Chawla, Hon’ble Ms. Justice Shalinder Kaur

Punjab FC Private Limited Vs. Posshusa Apparels India Private Limited

Brief Facts

Punjab FC Private Limited, the petitioner, is a registered football club that has been using the trademarks "PUNJAB FC," "PUNJAB FOOTBALL CLUB," and "PFC" since 2017. It claimed to be the prior adopter and honest user of these trademarks. The respondent, Posshusa Apparels India Private Limited, obtained a registration for the mark "PFC" under Class 18, covering leather goods and related products, on a "proposed to be used" basis. The petitioner sought rectification and removal of the respondent’s trademark on the grounds of prior use and potential consumer confusion.

Issues

The primary issue before the court was whether the respondent’s registration of the mark "PFC" in Class 18 was legally valid or if it should be rectified and removed due to deceptive similarity with the petitioner’s pre-existing trademarks in the football industry.

Submissions of Parties

The petitioner argued that it had established a strong reputation under the "PFC" mark, which was widely recognized in the sports industry. It contended that the respondent’s adoption of the "PFC" mark was dishonest and intended to ride upon the goodwill of the petitioner. Additionally, the petitioner presented evidence that the respondent had not been using the mark in commerce.

The respondent did not file a reply or make an appearance, despite being served. The Registrar of Trademarks, named as Respondent No. 2, was represented in court.

Reasoning and Analysis of Judge

The court noted that the petitioner had been actively using the "PFC" mark in connection with its football club and had a pending registration under Class 18. The respondent, on the other hand, had only applied for the trademark on a "proposed to be used" basis. The court emphasized the deceptive similarity between the marks, both phonetically and visually, and highlighted that the respondent’s mark, including its logo, was likely to mislead consumers into believing an association with the petitioner’s football club.

Relying on precedents related to trademark infringement and passing off, the court held that the respondent had dishonestly adopted the mark and that continued registration would lead to confusion and dilution of the petitioner’s brand identity. Since no evidence of actual use of the mark by the respondent was presented, the court found that the trademark registration was not justified.

Decision of Judge

The court ruled in favor of the petitioner, allowing the rectification petition and ordering the cancellation of the respondent’s trademark registration for "PFC" under Class 18. The Registrar of Trademarks was directed to update its records accordingly.

Case Details

Case Title: Punjab FC Private Limited vs. Posshusa Apparels India Private Limited 

Date of Order: February 20, 2025

Case No.: C.O. (COMM.IPD-TM) 160/2024

Neutral Citation: 2025:DHC:1206

Name of Court: High Court of Delhi

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

Infiniti Retail Limited Vs Croma Wholeseller

Brief Facts

Infiniti Retail Limited filed a suit seeking a permanent injunction to restrain trademark infringement, passing off, dilution, and tarnishment of its well-known trademark "CROMA." The plaintiff, a subsidiary of Tata Sons Pvt. Ltd., operates a nationwide retail chain under the "CROMA" brand. It alleged that several defendants were operating fraudulent websites using domain names incorporating "CROMA," misleading consumers and causing reputational harm. An ex-parte ad-interim injunction was granted on July 25, 2022, directing domain registrars, telecom service providers, and payment platforms to block and disable infringing domain names, mobile numbers, and payment accounts linked to the fraudulent websites. Over time, additional infringing websites and parties were impleaded in the suit.

Issues

Whether the defendants' use of domain names containing "CROMA" amounts to trademark infringement and passing off.

Whether the unauthorized use of the plaintiff’s mark dilutes its goodwill and reputation.

Whether a summary judgment should be granted in favor of the plaintiff due to the defendants' failure to contest the suit.

Submissions of the Parties

The plaintiff argued that it owns over 130 trademark registrations for "CROMA" and its stylized variants, which have been in use since 2005 and declared well-known by the Trade Marks Registrar. The fraudulent websites not only infringed the plaintiff’s trademarks but also misled consumers into believing they were affiliated with the plaintiff. The plaintiff presented evidence of substantial financial losses and reputational damage caused by the infringing websites, which were used for deceptive activities, including soliciting payments from unsuspecting consumers. It sought a summary judgment on the grounds that the defendants had failed to file replies despite being served.

The defendants, primarily domain registrants of the infringing websites, failed to contest the suit. However, GoDaddy.com LLC, a domain registrar, opposed the plaintiff’s request for an overarching directive requiring domain registrars to suspend any future infringing domain names upon the plaintiff’s request. It argued that such a request placed an undue burden on domain registrars and lacked judicial oversight.

Reasoning and Analysis of the Judge

The court analyzed whether a summary judgment was appropriate under Order XIII-A of the CPC, which allows courts to dispose of cases without oral evidence if there is no real prospect of the defendants succeeding. Relying on Rockwool International A/S v. Thermocare Rockwool (India) Pvt. Ltd. and Bright Enterprises Pvt. Ltd. v. MJ Bizcraft, the court held that a summary judgment was justified since the defendants failed to contest the suit, and the plaintiff had provided conclusive evidence of infringement.

The court found that the infringing websites misled consumers and diluted the plaintiff’s trademark. The comparison of domain names revealed that the defendants had merely appended generic words like "wholeseller" or "retail" to "CROMA" to create deceptive domain names. Citing Parle Products v. J.P. & Co., the court reiterated that minor modifications to a well-known trademark do not prevent a finding of deceptive similarity.

While the court upheld the plaintiff’s claim, it agreed with GoDaddy.com LLC that granting an overarching directive to domain registrars without judicial oversight would be excessive. The plaintiff withdrew its request for such relief, allowing the court to proceed with the remaining claims.

Decision of the Judge

The court granted a summary judgment in favor of the plaintiff and issued a permanent injunction against the defendants from using domain names containing "CROMA." It directed domain registrars to transfer the infringing domain names to the plaintiff and ordered telecom service providers to permanently disable associated mobile numbers. Payment platforms and banks were instructed to freeze and transfer funds from accounts linked to the fraudulent activities to the plaintiff. The suit was decreed in the plaintiff’s favor, and all pending applications were disposed of.

Case Details

Case Title: Infiniti Retail Limited v. M/s Croma Wholeseller & Ors.

Date of Order: 15.02.2025

Case No.: CS (COMM) 490/2022

Neutral Citation: 2025:DHC:1160

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Prathiba M. Singh

Castrol Limited Vs. Kapil & Anr.

Brief Facts

Castrol Limited filed a suit seeking a permanent injunction against the defendants for manufacturing, selling, and advertising engine oils, coolants, and lubricants using marks and packaging deceptively similar to those of the plaintiff. The plaintiff is the registered proprietor of marks such as "ACTIV" and "ACTIBOND" and has a distinctive trade dress associated with its products. The defendants were found to be using infringing marks like "ACTIVE" and "ACTIBOND" along with similar packaging to mislead consumers. An ex-parte ad-interim injunction was granted on July 2, 2024, restraining the defendants from using the infringing marks. Despite the lapse of the statutory period, the defendants failed to file written statements, leading the court to proceed under Order VIII Rule 10 of the CPC.

Issues

Whether the defendants' use of marks and trade dress similar to the plaintiff's constitutes trademark infringement and passing off.

Submissions of the Parties

The plaintiff argued that it has been using its registered marks and trade dress for decades and has acquired immense goodwill and reputation worldwide, including in India. The defendants were engaged in manufacturing and selling lubricants under deceptively similar marks and packaging, leading to consumer confusion. The plaintiff submitted that an investigation revealed that the infringing products were being openly advertised and sold via online platforms such as Facebook and IndiaMart, and that a local commissioner appointed by the court had found substantial quantities of counterfeit goods at the defendants' premises. The plaintiff contended that the defendants' actions constituted deliberate trademark infringement and sought a permanent injunction along with damages.

The defendants, through their counsel, denied liability but failed to file a written statement within the statutory period. They contended that no local commission was executed at the premises of Defendant No. 2 and that no infringing goods were found there. However, the plaintiff countered this claim by presenting documentary evidence, including GST registrations, IndiaMart listings, and Facebook posts, linking Defendant No. 2 to the infringing activities.

Reasoning and Analysis of the Judge

The court noted that the plaintiff had produced extensive evidence establishing its ownership of the marks and trade dress. A comparative analysis of the plaintiff’s and defendants’ products revealed striking similarities, particularly in trade dress, which included a silver-grey container with a red cap, a trapezium-shaped label, and a green and white color scheme. The court observed that the defendants had made only minor modifications, such as adding an extra letter to the plaintiff’s "ACTIV" mark to create "ACTIVE."

Applying the test of deceptive similarity from Parle Products v. J.P. & Co., the court held that an ordinary consumer with imperfect recollection could easily mistake the defendants' products for those of the plaintiff. It also referred to National Insurance v. Virat Travels, where copying a distinctive mark with minor changes was deemed to constitute trademark infringement.

The court found that the defendants had failed to file written statements, leaving the plaintiff’s claims unrebutted. Citing Sandisk LLC v. Laxmi Mobiles, it held that in such circumstances, a summary judgment was justified. The evidence from the local commissioner’s report, which detailed the seizure of infringing products and the operation of a manufacturing unit producing counterfeit goods, further supported the plaintiff’s case.

Decision of the Judge

The court decreed the suit in favor of the plaintiff, granting a permanent injunction restraining the defendants from using the infringing marks and trade dress. It awarded damages of Rs. 10,00,000 each against Defendant Nos. 1 and 2, payable within six months in two installments. The plaintiff was also granted liberty to visit Defendant No. 1’s premises to destroy the infringing goods.

Case Details

Case Title: Castrol Limited Vs. Kapil & Anr.

Date of Order: 18.02.2025

Case No.: CS(COMM) 532/2024

Neutral Citation: 2025:DHC:1207

Court: High Court of Delhi

Judge: Hon'ble Ms. Justice Mini Pushkarna

Allied Blenders And Distillers Limited vs Boutique Spirit Brands Private Limited

Brief Facts

Allied Blenders And Distillers Limited filed rectification petitions under Section 57 of the Trade Marks Act, 1999, seeking cancellation of the trademark "BSB MYRON" registered by Boutique Spirit Brands Private Limited in Classes 32 and 33. The petitioner, a reputed manufacturer of alcoholic beverages, claimed prior use of the trademark "KYRON" since 2012 and argued that the respondent's mark was deceptively similar. The petitioner asserted that the respondent had dishonestly adopted the mark "MYRON" to mislead consumers. The respondent failed to appear in the proceedings despite being duly served, leading the court to hear the matter ex-parte.

Issues

Whether the trademark "BSB MYRON" was deceptively similar to the petitioner’s mark "KYRON" and likely to cause confusion among consumers. Whether the respondent’s registration should be cancelled under Section 57 of the Trade Marks Act, 1999. Whether the petitioner, as a prior user, had a superior right over the trademark compared to the respondent’s registration.

Submissions of Parties

The petitioner contended that "KYRON" had acquired substantial goodwill and reputation in the alcoholic beverages market. It argued that the respondent's mark "BSB MYRON" was phonetically, visually, and conceptually similar, and the likelihood of confusion was high since both parties operated in the same industry and targeted the same customer base. The petitioner provided evidence of prior use, including sales invoices, promotional activities, and trademark registrations dating back to 2012, while the respondent’s registration was on a "proposed to be used" basis. The respondent did not contest the proceedings or submit any defense.

Reasoning and Analysis of Judge

The court examined the phonetic and visual similarity between the two marks and referred to established precedents, including Lakme Ltd. vs. Subhash Trading & Ors., 1996 SCC OnLine Del 585, which emphasized phonetic resemblance in determining deceptive similarity. The court observed that "MYRON" was the dominant element of the respondent's mark, while "BSB" was inconspicuous in its representation, making the respondent’s mark deceptively similar to "KYRON." Citing Kia Wang vs. Registrar of Trademarks & Anr., 2023 SCC OnLine Del 5844, the court reaffirmed the principle that the rights of a prior user override those of a subsequent registrant. It held that the petitioner had successfully demonstrated continuous use since 2012, whereas the respondent had no evidence of actual use. Given the respondent’s failure to defend its registration and the deceptive similarity of the marks, the court found that the respondent’s registration was liable to be cancelled.

Decision of Judge

The court ruled in favor of the petitioner, cancelling the respondent’s registrations for "BSB MYRON" in Classes 32 and 33 and directing the Registrar of Trade Marks to rectify the records. The petitioner waived its claim for costs and clarified that it had no objection to the respondent using "BSB" alone without "MYRON." The judgment reinforced key principles of trademark law, particularly the primacy of prior use, phonetic similarity, and the consequences of failing to contest a rectification petition.

Case Title: Allied Blenders And Distillers Limited vs Boutique Spirit Brands Private Limited

Date of Order: 22 February 2025

Case No.: C.O. (COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023

Neutral Citation: 2025:DHC:1152

Court: High Court of Delhi

Judge: Hon’ble Ms. Justice Mini Pushkarna

Bharat Singh Vs. Karan Singh

Brief Facts

The case concerns a partition dispute over two properties located in Green Park Extension, New Delhi, and Sector 4, Chandigarh. The plaintiff, Bharat Singh, sought partition by metes and bounds for independent possession of his share. The dispute arose when Defendants No.1 and 4 delayed filing their written statements beyond the initial 30-day period, leading to the question of whether the time spent in mediation should be excluded from the limitation period.

Issues

The primary issue before the court was whether the period spent in mediation should be excluded from the 120-day limitation period for filing the written statement under the Delhi High Court (Original Side) Rules, 2018. Another issue was whether the court had the discretion to condone the delay and allow the written statements beyond the prescribed period.

Submissions of Parties

The defendants argued that the timeline for filing their written statement commenced on October 3, 2022, when they received legible copies of the plaint. They contended that the court's order referring the matter to mediation halted the limitation period, which resumed only after the mediation failed on January 24, 2023. They maintained that their written statements, filed in April 2023, were within the 120-day window. The plaintiff opposed this stance, asserting that the time spent in mediation should not pause the limitation clock and that written statements filed beyond the prescribed period could not be accepted under the court's rules.

Reasoning and Analysis of the Judge

The court examined the legal framework under the Delhi High Court (Original Side) Rules, 2018, which mandates that a written statement must be filed within 30 days of service, with an extension of up to 120 days under exceptional circumstances. The judge analyzed judicial precedents emphasizing the significance of mediation in dispute resolution and held that forcing parties to file pleadings during mediation would defeat its purpose. Relying on previous judgments, the court determined that the mediation period should be excluded from the limitation computation. It also considered whether the defendants had valid reasons for the delay beyond 30 days and found that their explanations were satisfactory.

Decision of the Judge

The court ruled that the time spent in mediation should be excluded while computing the limitation period for filing the written statement. Since the written statements of Defendants No.1 and 4 were filed within 120 days, they were allowed on the condition that the defendants pay costs of ₹5,000 to the Armed Forces Battle Casualties Welfare Fund. The appeals were disposed of accordingly.

Case Title: Bharat Singh v. Karan Singh and Others

Date of Order: February 3, 2025

Case No.: CS(OS) 427/2022

Neutral Citation: 2025:DHC:777

Court: High Court of Delhi

Judge: Hon’ble Mr. Justice Subramonium Prasad

RSPL Health Private Limited Vs Deep Industry

Case Title: RSPL Health Private Limited Vs Deep Industry

Date of Order: 10 November 2014

Case No.: CS (OS) No.1660/2014

Court: Delhi High Court

Judge: Hon'ble Mr. Justice Manmohan Singh

Introduction

This case involves a dispute between RSPL Health Private Limited (plaintiff) and Deep Industry (defendant) concernin trademark infringement, passing off, and copyright infringement. The plaintiff sought a permanent injunction to restrain the defendant from using Trade Dress and packaging and branding allegedly similar to its well-known "XPERT" brand.

Factual Background

RSPL Health Private Limited is engaged in manufacturing and selling washing soaps, detergent cakes, and cleaning products under the trademark "XPERT," which has been in use since 1993. The plaintiff claimed ownership of copyright over the artistic elements of the "XPERT" label, including its unique color scheme, lettering style, and overall trade dress. The plaintiff also asserted that the punch line "Pehle Istemal Karen Phir Vishwas Karen" had acquired distinctiveness.

The defendant, Deep Industry, was found selling dishwashing bars and similar cleaning products under the trademark "POSH." The plaintiff alleged that the defendant's packaging was deceptively similar to "XPERT" in terms of layout, design, and color combination. The suit was filed when the plaintiff discovered in March 2014 that the defendant was using an allegedly infringing label.

Procedural Background

The plaintiff filed a suit seeking a permanent injunction against the defendant, along with an application under Order 39 Rule 1 and 2 CPC for interim relief. On 29 May 2014, the court granted an ex-parte interim injunction restraining the defendant from using the impugned packaging. The defendant responded by filing an application under Order 39 Rule 4 CPC seeking vacation of the interim order.

Issues Involved

Whether the defendant's packaging amounted to trademark infringement and passing off. Whether the plaintiff had an exclusive right over the trade dress and artistic elements of the "XPERT" label. Whether the suit was maintainable in terms of jurisdiction. Whether there was any delay or laches in filing the suit.

Submission of Parties

The plaintiff contended that the defendant deliberately copied the "XPERT" label's essential features, creating a likelihood of confusion among consumers. It argued that the defendant's label was deceptively similar in terms of layout, color combination, and artistic arrangement, which misled customers into believing the products originated from the plaintiff.

The defendant countered that "POSH" was a registered trademark of a third party, Darshan Detergents Pvt. Ltd., and that it was merely a licensee. It argued that color pink was common in the detergent industry, citing brands like Surf Excel and Tide. The defendant also challenged the jurisdiction of the Delhi High Court, claiming that it operated only in Maharashtra. Additionally, the defendant argued that the plaintiff delayed in bringing the suit since "POSH" was registered in 2005.

Discussion on Judgments Cited

The court referred to various precedents to establish that similarity in trade dress, even without phonetic similarity, can cause consumer confusion.

Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. India Trading House, AIR 1977 Delhi 41, held that deceptive similarity in trade dress could cause confusion even when brand names were different.

Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd., (1999) 19 PTC 188 (Del), established that copyright exists in artistic work irrespective of registration.

Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359, emphasized that trade dress and overall impression matter more than minute differences.

Vicco Laboratories Bombay v. Hindustan Rimmer, AIR 1979 Delhi 114, granted an injunction based on deceptive similarity in packaging despite different brand names.

Nova Ball Bearing Industries v. Mico Ball Bearing, (1981) 19 DLT 20, held that similarity in packaging can mislead consumers despite differences in brand names.

Hoffmann-La Roche and Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, 1972 RPC 1, ruled that marketing identical capsules despite different brand names amounted to passing off.

Smith Kline and French Laboratories Limited v. Trade Mark Applications, 1974 RPC 91, stated that color schemes in branding can serve as trademarks if they indicate origin.

Tavener Rutledge Ld. v. Specters Ld., 1959 RPC 83, held that even slight similarities in packaging could cause confusion among consumers.

Reasoning and Analysis

The court noted that the defendant's packaging was strikingly similar to the plaintiff’s label except for the brand name. It held that the likelihood of confusion was high, given that both products catered to the same market segment and were sold through the same distribution channels.

On the issue of delay, the court rejected the defendant’s argument, observing that the plaintiff acted promptly upon discovering the alleged infringement. The defendant’s reliance on prior registration was dismissed as it had only recently switched to the pink color scheme, which was central to the plaintiff’s claim.

Regarding jurisdiction, the court upheld its authority to hear the case under Section 62(2) of the Copyright Act, 1957, as the plaintiff had a presence in Delhi.

Final Decision

The court confirmed the interim injunction granted earlier, restraining the defendant from using the impugned packaging. The defendant’s application for vacation of the order was dismissed. The matter was directed to proceed further for trial.

Key Legal Principles Settled

Trade dress similarity can constitute trademark infringement even if brand names differ. Copyright in artistic work exists even without registration. Delay in filing suit does not disentitle a plaintiff if the infringement is recent. Jurisdiction can be invoked under Section 62(2) of the Copyright Act if the plaintiff has a presence in the forum state. The test for deceptive similarity considers the overall impression rather than minute differences.

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

Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger

Brief Facts

Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) sought to register the word "Chiemsee" as a trademark for its goods. Boots- und Segelzubehör Walter Huber and Franz Attenberger opposed this registration, arguing that "Chiemsee" was a geographical name referring to a well-known lake in Germany and could not function as a trademark. The case was referred to the Court of Justice of the European Communities (ECJ) for a preliminary ruling on whether a geographical name could be registered as a trademark under Directive 89/104/EEC.

Issues

The primary legal issues before the ECJ were:

Whether a geographical name could be refused registration as a trademark under Article 3(1)(c) of Directive 89/104/EEC if it designates the geographical origin of goods.

Whether a trademark could acquire distinctive character through use under Article 3(3) of Directive 89/104/EEC.

Submissions of Parties

WSC argued that the name "Chiemsee" had acquired distinctiveness through use and was associated with its products rather than the geographical location. The opposing parties contended that geographical names should be kept free for use by all traders and that allowing "Chiemsee" as a trademark would limit fair competition.

Reasoning and Analysis of Judge

The ECJ held that geographical names are generally not registrable as trademarks if they indicate the origin of goods. However, the court clarified that such names could be registered if they had acquired distinctiveness through use, meaning consumers associated the name with a specific business rather than the geographical location itself. The assessment of distinctiveness should be based on consumer perception, market conditions, and potential exclusivity of the name. The court also noted that national authorities could rely on public opinion polls to determine distinctiveness.

Decision of Judge

The ECJ ruled that geographical names could be refused trademark registration under Article 3(1)(c) if they indicate the geographical origin of goods. However, under Article 3(3), such a mark could be registered if it had acquired distinctiveness through use. The case was remitted to the national court to apply this test to "Chiemsee."

Case Title: Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger

Date of Order: 4 May 1999

Case No.: Joined Cases C-108/97 and C-109/97

Neutral Citation: Not available

Name of Court: European Court of Justice

Name of Judge: Not specified

Abu Dhabi Global Market Vs. Registrar of Trademarks

Brief Facts

The case involved an appeal by Abu Dhabi Global Market (ADGM) against the order of the Assistant Registrar of Trademarks rejecting its trademark application. The trademark application, filed under No. 3184380, sought registration of a device mark. The Assistant Registrar refused the application on the grounds that the mark lacked distinctiveness, was neither coined nor invented, and that Abu Dhabi being a geographical name could not be monopolized. The order also cited the applicant’s failure to submit an affidavit of use.

Issues

The primary issue was whether the rejection of the trademark application was legally sustainable under Section 9 of the Trademarks Act, 1999. The court also examined whether a composite mark containing a geographical name could be granted protection and whether distinctiveness could be established without an affidavit of use.

Submissions of Parties

The appellant argued that the mark had acquired distinctiveness and had been recognized under Federal Decree No. 15/2013 of the UAE, which established Abu Dhabi Global Market as a financial free zone. The appellant contended that the mark was already in use and that a composite mark containing a geographical name was eligible for registration. The respondent countered that Abu Dhabi was a geographical indicator and could not be monopolized. It also argued that the mark lacked inherent distinctiveness and that the appellant had failed to establish distinctiveness through evidence of use.

Reasoning and Analysis of Judge

The court held that the Assistant Registrar had erred in rejecting the mark on the grounds that it was neither coined nor invented, as distinctiveness, rather than inventiveness, was the criterion for trademark registration. The court found that the mark, when considered in its entirety, was a composite mark and did not fall within the absolute prohibitions of Section 9(1)(b). The court also held that distinctiveness does not necessarily require evidence of use, particularly where a mark is inherently capable of distinguishing goods and services. The Registrar’s failure to consider the Federal Decree establishing ADGM was also deemed a critical omission. The court further observed that procedural fairness was lacking, as the Assistant Registrar had failed to apply its mind to the detailed reply filed by the appellant.

Decision

The court quashed the rejection order and remanded the matter to the Registrar of Trademarks for advertisement and further proceedings. The Registrar was directed to process the application in accordance with law, ensuring due consideration of all relevant factors.

Case Title: Abu Dhabi Global Market vs. Registrar of Trademarks

Date of Order: May 18, 2023

Case No.: C.A.(COMM.IPD-TM) 10/2023

Neutral Citation: 2023:DHC:3476

Name of Court: High Court of Delhi

Name of Judge: Honourable Mr. Justice C. Hari Shankar

Caleb Suresh Motupalli Vs. Controller of Patents

Caleb Suresh Motupalli vs. Controller of Patents: Judicial Scrutiny of Patent Rejection under the Patents Act, 1970

Introduction

The case of Caleb Suresh Motupalli vs. Controller of Patents involves the rejection of a patent application by the Controller of Patents, which was subsequently challenged before the High Court of Madras. The appeal was filed under Section 117-A of the Patents Act, 1970, against the order of the Controller rejecting the patent application on multiple grounds, including lack of inventive step, lack of enablement, and non-patentability under various provisions of the Act. The judgment provides an in-depth analysis of the legal standards for patentability in India and the application of statutory requirements under the Patents Act.

Factual Background

The appellant, Caleb Suresh Motupalli, filed Indian Patent Application No. 5606/CHENP/2012, claiming priority from a PCT application dated 08.10.2010. The invention was titled 'Necktie Persona-Extender/Environment-integrator and method for Super-Augmenting a Persona to Manifest a Pan-Environment Super-Cyborg.' The First Examination Report (FER) raised objections under Sections 2(1)(j), 3(k), 3(m), 10(4), and 10(5) of the Patents Act. The appellant responded by amending claims and deleting some. Despite a further hearing and additional amendments, the patent application was rejected in an order dated 21.04.2021. A review petition under Section 77(1)(f) and (g) of the Patents Act was also dismissed, leading to the present appeal.

Procedural Background

The appeal challenged the order of the Controller rejecting the patent application on grounds including lack of enablement, lack of inventive step, and non-patentability under Sections 3(k) and 3(m) of the Patents Act. The High Court examined whether the appellant had adequately demonstrated an inventive step, whether the claimed invention was sufficiently enabled, and whether the patent application complied with statutory requirements. The appellant argued that the rejection was erroneous and violated principles of natural justice, particularly as Section 3(b) was introduced at the review stage without prior notice.

Issues Involved

Whether the patent application satisfied the requirements of inventive step under Section 2(1)(ja) of the Patents Act. Whether the rejection under Section 10(4) and 10(5) of the Patents Act was justified based on lack of enablement and definiteness of claims. Whether the patent application was non-patentable under Sections 3(k) and 3(m) of the Patents Act. Whether the introduction of Section 3(b) at the review stage without prior notice violated the principles of natural justice.

Submissions of Parties

The appellant contended that his invention addressed the challenge of human-AI integration and loss of agency due to automation. He argued that the claimed invention was a technical advancement beyond artificial intelligence and that the use of specialized terminology did not render the invention non-enabled. The appellant relied on precedents, including Novartis AG v. Union of India (2013) 6 SCC 1, to argue that sufficiency of disclosure should be assessed from the perspective of a person skilled in the art (PSITA). The appellant also contended that black-box modernization techniques, which formed the core of the claimed invention, had been misinterpreted as mere software algorithms under Section 3(k).

The respondent, represented by the Controller of Patents, argued that the claimed invention lacked inventive step as it was an aggregation of known technologies without a novel technical advancement. The respondent also contended that the claims lacked definitiveness, used ambiguous language, and failed to provide sufficient technical details to enable a person skilled in the art to reproduce the invention. The objections under Section 3(k) and 3(m) were reiterated, asserting that the invention primarily involved an abstract idea without concrete industrial application.

Discussion on Cited Judgments

The court referred to several judicial precedents to analyze the grounds of rejection. In Novartis AG v. Union of India (2013) 6 SCC 1, the Supreme Court held that the assessment of inventive step and sufficiency of disclosure must be made from the perspective of a person skilled in the art. The High Court applied this standard to evaluate the claimed invention’s technical contribution. The judgment also cited Ferid Allani v. Union of India, 2019 SCC Online Del 11867, which discussed patentability of computer-related inventions and emphasized that a technical effect beyond a mere algorithm is necessary for patentability under Section 3(k). Additionally, the court relied on No-Fume Ltd. v. Frank Pitchford & Co. Ltd. (1935) 52 RPC 231, which established that a patent specification should not demand undue experimentation by a person skilled in the art. The UK precedent The General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. [1972] RPC 457 was also referenced to emphasize that patent claims should provide clear definitions.

Reasoning and Analysis of Judge

The court examined whether the claimed invention involved an inventive step beyond prior art and found that the claimed subject matter primarily repackaged known black-box modernization techniques without a novel contribution. The court also found that the patent specification was vague and required undue experimentation to implement, thereby failing the enablement requirement under Section 10(4). The High Court also held that the claims lacked clarity and conciseness under Section 10(5), as the description contained undefined terminology and excessive theoretical elaboration without concrete implementation details. Regarding Section 3(k), the court ruled that the claimed invention did not demonstrate a technical effect sufficient to distinguish it from a mere software-based system. On Section 3(m), the court found that the invention involved abstract cognitive processes that could not be considered patentable subject matter. The court also addressed the procedural issue of introducing Section 3(b) at the review stage and held that while the principles of natural justice required prior notice, this did not alter the overall outcome given the multiple substantive grounds for rejection.

Final Decision

The High Court dismissed the appeal, affirming the Controller’s decision to reject the patent application. The court held that the claimed invention lacked inventive step, failed the enablement requirement, and was not patentable under Sections 3(k) and 3(m) of the Patents Act. The appeal was dismissed without costs.

Law Settled in This Case

The assessment of inventive step must be made from the perspective of a person skilled in the art, considering prior art disclosures. The enablement requirement under Section 10(4) requires that a patent specification should not require undue experimentation by a skilled person to reproduce the invention. Patent claims must be clear, concise, and fairly based on the specification, in line with Section 10(5) of the Patents Act. Computer-related inventions must demonstrate a technical effect beyond a mere algorithm to qualify for patentability under Section 3(k). Abstract cognitive processes and mental acts are not patentable under Section 3(m). Procedural fairness in patent examination requires that new objections should not be introduced at the review stage without prior notice. The judgment reinforces that patent claims must provide a clear technical advancement and not merely aggregate existing technologies without substantive innovation.

Case Title: Caleb Suresh Motupalli Vs. Controller of Patents

Date of Order: January 29, 2025

Case No.: C.M.A. (PT) No. 2 of 2024

Neutral Citation: 2025:MHC:293

Name of Court: High Court of Madras

Name of Judge: Honourable Mr. Justice Senthilkumar Ramamoorthy

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

UK Ltd. Vs. Eli Lilly & Co.

Actavis UK Ltd. vs. Eli Lilly & Co.: The Doctrine of Equivalents in Patent Infringement

Introduction

The case of Actavis UK Ltd. vs. Eli Lilly & Co. is a landmark decision by the UK Supreme Court on the application of the doctrine of equivalents in determining patent infringement. The case revolved around whether Actavis’s products infringed Eli Lilly’s European Patent (UK) No. 1 313 508, which covered a specific use of pemetrexed disodium in cancer treatment. This judgment significantly impacted UK patent law by broadening the scope of patent claims beyond their literal meaning, aligning the UK approach with other European jurisdictions.

Factual Background

Eli Lilly owned a patent for the use of pemetrexed disodium in combination with vitamin B12 to reduce the toxic effects of chemotherapy. The patent explicitly referred to pemetrexed disodium, a specific salt form of the active compound. Actavis sought to market alternative pemetrexed formulations—pemetrexed diacid, pemetrexed dipotassium, and pemetrexed ditromethamine—arguing that these formulations fell outside the literal wording of the patent claims and therefore did not infringe.

Procedural Background

The case was initially heard by the High Court, which ruled in favor of Actavis, holding that its products did not directly or indirectly infringe Eli Lilly’s patent. The Court of Appeal partially reversed this decision, finding indirect infringement but rejecting direct infringement claims. Eli Lilly then appealed to the Supreme Court, arguing that Actavis’s products should be considered infringing under the doctrine of equivalents.

Issues Involved

The key issue in this case was whether Actavis’s products, which did not literally fall within the scope of the patent claims, could still be considered infringing under the doctrine of equivalents. Additionally, the court had to determine whether the prosecution history of the patent could be used as an aid in claim interpretation and whether Actavis’s formulations constituted indirect infringement.

Submissions of the Parties

Eli Lilly contended that despite the literal wording of the patent referring to pemetrexed disodium, the invention was intended to cover all forms of pemetrexed that achieved the same therapeutic effect. It argued that Actavis’s products were functionally equivalent to pemetrexed disodium and that excluding them from the scope of the patent would undermine the purpose of patent protection.

Actavis argued that the claims of the patent specifically mentioned pemetrexed disodium and did not include other salt forms of pemetrexed. It contended that allowing such an expansive interpretation would violate legal certainty and unfairly broaden the patent’s scope beyond what was disclosed and claimed.

Discussion on Cited Judgments

The court relied on several key cases in reaching its decision. The judgment referred to Catnic Components Ltd. v. Hill & Smith Ltd. [1982] RPC 183, where Lord Diplock introduced the concept of purposive construction in patent law, emphasizing that minor variations should not escape infringement if they do not affect the invention’s core function. Another critical reference was Kirin-Amgen Inc. v. Hoechst Marion Roussel Ltd. [2005] RPC 9, where the House of Lords had rejected the doctrine of equivalents in favor of purposive construction.

Additionally, the court considered Improver Corp. v. Remington Consumer Products Ltd. [1990] FSR 181, which introduced a three-step test for determining whether a variant product infringes a patent. The Supreme Court also examined European patent jurisprudence, including decisions from German and Dutch courts, which had consistently applied the doctrine of equivalents to extend patent protection beyond the literal claim wording.

Reasoning and Analysis of Judge

Lord Neuberger, delivering the judgment of the court, held that Actavis’s products infringed Eli Lilly’s patent under the doctrine of equivalents. The court adopted a new test for determining equivalence, asking three questions: whether the variant achieves substantially the same result in substantially the same way, whether this would have been obvious to a person skilled in the art at the priority date, and whether strict compliance with the claim language was an essential requirement. The court ruled that Actavis’s products satisfied these criteria and thus infringed Eli Lilly’s patent.

The judgment also clarified the role of prosecution history in claim interpretation. While generally disfavoring its use, the court acknowledged that it could be considered in exceptional cases where the patentee had made clear representations limiting the claim scope. In this case, the court found that the prosecution history did not preclude a finding of infringement.

Final Decision

The Supreme Court allowed Eli Lilly’s appeal, holding that Actavis’s products directly infringed the patent in the UK, France, Italy, and Spain. The court dismissed Actavis’s cross-appeal, affirming that if the products did not directly infringe, they would still infringe indirectly. This decision marked a significant shift in UK patent law, embracing the doctrine of equivalents and aligning the UK approach with other European jurisdictions.

Law Settled in This Case

The doctrine of equivalents applies in UK patent law, allowing patent claims to cover variants that achieve the same result in substantially the same way. The test for equivalence includes assessing whether the variant is functionally the same, whether this would be obvious to a skilled person, and whether strict compliance with claim language is essential. Prosecution history may be considered in claim interpretation but only in limited circumstances. Indirect infringement remains applicable when a third party supplies an essential element of a patented invention, even if it does not fall within the literal scope of the claims. This case reinforced the balance between fair patent protection and legal certainty, ensuring that minor variations do not allow infringers to escape liability.

Case Title: Actavis UK Ltd. Vs. Eli Lilly & Co.

Date of Order: 12 July 2017

Case No.: [2017] UKSC 48

Neutral Citation: [2017] UKSC 48

Name of Court: Supreme Court of the United Kingdom

Name of Judge: Lord Neuberger, Lord Mance, Lord Clarke, Lord Sumption, Lord Hodge

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

GlaxoSmithKline Pharmaceuticals Ltd. vs. Horizon Bioceuticals Pvt. Ltd.

Case Title: GlaxoSmithKline Pharmaceuticals Ltd. vs. Horizon Bioceuticals Pvt. Ltd.

Date of Order: March 22, 2023

Case No.: C.O. (COMM.IPD-TM) 6/2023

Name of Court: High Court of Delhi

Name of Judge: Honourable Mr. Justice C. Hari Shankar

Brief Facts

GlaxoSmithKline Pharmaceuticals Ltd. (Plaintiff) filed a suit against Horizon Bioceuticals Pvt. Ltd. (Defendant) over the alleged infringement of its registered trademark 'COBADEX.' The plaintiff, a well-known pharmaceutical company, had been using the mark for its range of multivitamin supplements. The defendant challenged the plaintiff’s trademark registration by filing Rectification Petition No. 273818 before the Registrar of Trade Marks, Calcutta, seeking to cancel the registration, claiming that 'COBADEX' was generic and lacked distinctiveness. The dispute resulted in multiple proceedings, including C.O. (COMM.IPD-TM) 6/2023 and CS (COMM) 8/2023, both pending before the Delhi High Court.

Issues

The primary issue before the court was whether the plaintiff’s trademark 'COBADEX' was distinctive and validly registered, and whether the defendant’s use of a similar mark constituted infringement. Another issue was whether the rectification proceedings pending before the Trade Marks Registry should be transferred to the Delhi High Court for simultaneous adjudication.

Submissions of Parties

The plaintiff argued that 'COBADEX' had acquired distinctiveness through long and extensive use in the pharmaceutical sector and that the defendant’s attempt to use a deceptively similar mark would lead to confusion among consumers. The plaintiff also contended that the rectification petition was a strategy to delay the infringement proceedings.

The defendant contended that 'COBADEX' was a generic term derived from the ingredients of the multivitamin supplement and was therefore not eligible for trademark protection. It argued that the plaintiff could not claim exclusivity over a descriptive term and that the rectification petition was a legitimate attempt to challenge an improperly granted trademark.

Reasoning and Analysis of Judge

The court analyzed whether 'COBADEX' had acquired secondary meaning beyond its descriptive nature, making it distinctive. The court considered precedents on generic terms and trademark protection, holding that a mark primarily descriptive in nature can attain distinctiveness through prolonged and exclusive use. The court observed that the plaintiff had produced evidence of market recognition, advertising, and substantial sales to demonstrate that 'COBADEX' was associated with its brand.

The court also addressed the issue of simultaneous proceedings. It invoked Rule 26 of the Delhi High Court Intellectual Property Rights Division Rules, 2022, and directed the Registrar of Trade Marks, Calcutta, to forward the records of Rectification Petition No. 273818 to the Delhi High Court, ensuring a consolidated hearing.

Decision

The court directed the transfer of the rectification petition to the Delhi High Court and ordered its listing alongside the pending infringement suit. It emphasized that simultaneous adjudication would ensure consistency in the determination of rights over the trademark 'COBADEX.' The matter was set for further arguments, with interim relief remaining in favor of the plaintiff.

Harjivanbhai Hansrajbhai Patel vs. Mahendrabhai Mahadevbhai Ambani

Harjivanbhai Hansrajbhai Patel vs. Mahendrabhai Mahadevbhai Ambani: Quashing of FIR Under the Designs Act and Copyright Act

Case Title: Harjivanbhai Hansrajbhai Patel & Ors. vs. Mahendrabhai Mahadevbhai Ambani & Anr.

Date of Order: February 21, 2025

Case No.: R/SCR.A/2413/2018

Neutral Citation: 2025:GUJHC:12040

Name of Court: High Court of Gujarat at Ahmedabad

Name of Judge: Honourable Mr. Justice Divyesh A. Joshi

Introduction

This case concerns the quashing of an FIR under Sections 420 and 114 of the Indian Penal Code, Sections 11 of the Designs Act, 2000, and Sections 63, 64, and 65 of the Copyright Act, 1957. The petitioners, involved in manufacturing and selling tractor and trailer parts, challenged the FIR, contending that the complainant’s design registrations lacked novelty and were already in the public domain before registration. The High Court examined the scope of prosecution under the Designs Act and Copyright Act and whether the FIR should be quashed in light of legal principles governing copyright and design infringement.

Factual Background

The complainant, Mahendrabhai Mahadevbhai Ambani, engaged in manufacturing and selling trailers under the brand 'Maruti Trailer,' alleged that his registered designs were copied by the petitioners. He claimed to hold valid design registrations issued by the Design & Patent Office, Government of India, Kolkata. Public notices were issued in newspapers to prevent unauthorized use. However, the complainant discovered that the petitioners were using similar designs and filed an FIR on March 16, 2018.

The petitioners, who operated 'Prince Steel and Maruti Traders,' argued that the designs were commonly used in the industry and were in existence well before the complainant’s registration. They also presented an R.C. book of a vehicle dated June 18, 2010, and affidavits from manufacturers stating that such designs had been in public use for many years.

Procedural Background

Following the registration of the FIR, the petitioners approached the High Court seeking relief under Article 226 of the Constitution and Section 482 of the CrPC for quashing the FIR. On October 3, 2018, the Coordinate Bench of the High Court granted interim relief, staying further proceedings.

During hearings, the petitioners argued that the designs were already in public use before registration, negating exclusivity claims. Copyright does not subsist in registered designs under Section 15(1) of the Copyright Act. Under Section 15(2) of the Copyright Act, copyright ceases when a design is reproduced more than fifty times. A pending civil suit made parallel criminal proceedings unsustainable.

Issues Involved

Whether the FIR alleging design and copyright infringement could be sustained under criminal law. Whether the complainant's design registrations granted exclusive rights despite prior public use. Whether the petitioners’ reliance on Section 15 of the Copyright Act nullified criminal liability. Whether criminal prosecution was justified when civil remedies were available.

Submissions of the Parties

The petitioners asserted that the designs were commonly used and predated registration. They argued that a registered design does not attract copyright protection under Section 15 of the Copyright Act. They contended that the complainant’s registration was improper as the designs lacked originality. They cited affidavits and registration documents showing prior use of the designs. The respondents argued that the petitioners had copied the registered designs and infringed on exclusive rights. They stated that the FIR was valid as the petitioners had violated the Copyright Act and Designs Act. They contended that the petitioners should have challenged the design registrations before using the designs.

Discussion on Cited Judgments

The Supreme Court examined several key precedents in its analysis. The case of Binita Rahul Shah v. State of Gujarat, 2009 (3) GLR 2688 held that copyright protection does not extend to registered designs under Section 15 of the Copyright Act. The case of Mayur Kanaiyalal Shah v. State of Gujarat, R/Special Criminal Application No. 1115 of 2017, decided on August 8, 2023 quashed an FIR in similar circumstances where designs were in prior public use. The case of Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942) established that a design must be novel to claim exclusivity. The case of Hubbell v. United States, 179 U.S. 77 (1900) stressed that registered designs lacking novelty can be challenged. The case of S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 clarified that criminal liability should not arise when civil remedies are available.

Reasoning and Analysis

The High Court found that the complainant’s designs were already in use before registration, as evidenced by affidavits and vehicle registration records. Since the Copyright Act’s Section 15 prohibits copyright in registered designs, criminal liability under Sections 63, 64, and 65 could not arise. Additionally, the Designs Act does not criminalize infringement but provides civil remedies. The Court emphasized that criminal prosecution should not substitute civil proceedings, especially where the complainant had filed a separate civil suit.

Further, the Court noted that under Section 15(2) of the Copyright Act, the complainant’s rights had ceased if the design was reproduced more than fifty times. Given the five-year delay in filing the FIR and the industry-wide use of similar designs, the Court ruled that the FIR was an abuse of process.

Final Decision

The High Court quashed the FIR, ruling that criminal proceedings under the Copyright Act and Designs Act were unsustainable. The Court held that the case was better suited for civil adjudication rather than criminal prosecution.

Law Settled in This Case

Copyright protection does not extend to registered designs under Section 15(1) of the Copyright Act. If a design has been reproduced more than fifty times, copyright ceases under Section 15(2) of the Copyright Act. Criminal proceedings under the Copyright Act and Designs Act are not justified when civil remedies are available. Prior public use of a design before registration negates claims of exclusivity. An FIR based on alleged design infringement is liable to be quashed when designs lack novelty and are in public use.

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

Warner-Jenkinson Co., Inc. Vs. Hilton Davis Chemical Co.

Warner-Jenkinson Co., Inc. Vs. Hilton Davis Chemical Co.: Difference  between amendments made to avoid prior art and those made for other patentability reasons

Case Title: Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co.

Date of Order: March 3, 1997

Case No.: 95–728

Neutral Citation: 520 U.S. 17 (1997)

Name of Court: Supreme Court of the United States

Name of Judge: Justice Clarence Thomas (delivering the unanimous opinion of the Court)

Introduction

The case of Warner-Jenkinson Co. v. Hilton Davis Chemical Co. was a pivotal Supreme Court decision concerning the doctrine of equivalents in patent law. The Court examined whether the doctrine of equivalents remained a viable legal principle post the 1952 Patent Act and how it should be applied in light of prosecution history estoppel. This case was crucial in determining the extent to which a patent holder could assert infringement beyond the literal language of the patent claims. The decision aimed to balance the need for innovation protection with public notice requirements, ensuring that patent claims were not unfairly expanded beyond their granted scope.

Factual Background

Hilton Davis Chemical Co. held a patent (U.S. Patent No. 4,560,746) for an improved dye purification process involving ultrafiltration. The patented process filtered dye through a porous membrane at specific pressures and pH levels, enhancing dye purity. During the patent prosecution process, Hilton Davis amended the claims to specify a pH range of 6.0 to 9.0 after the patent examiner raised concerns about overlap with a prior patent known as the Booth patent, which disclosed a process operating above pH 9.0.

In 1986, Warner-Jenkinson Co. developed its own ultrafiltration process, which operated at a pH level of 5.0. Hilton Davis sued Warner-Jenkinson for patent infringement, relying solely on the doctrine of equivalents. Hilton Davis argued that despite the numerical difference in pH, Warner-Jenkinson’s process was functionally equivalent to the patented process.

Procedural Background

The case was initially tried before a jury, which found in favor of Hilton Davis, determining that Warner-Jenkinson’s process infringed the patent under the doctrine of equivalents. The District Court entered a permanent injunction against Warner-Jenkinson, prohibiting it from operating its process below 500 psi and below pH 9.01.

On appeal, the Federal Circuit affirmed the decision, holding that the doctrine of equivalents remained valid and that the issue of equivalency was rightly submitted to the jury. A divided panel debated the scope of the doctrine, with dissenting judges expressing concerns over potential overreach. The Supreme Court granted certiorari to clarify the scope of the doctrine of equivalents and the role of prosecution history estoppel.

Issues Involved

1. Whether the doctrine of equivalents remained valid after the enactment of the 1952 Patent Act.

2. Whether prosecution history estoppel bars all claims of equivalence when an amendment is made during patent prosecution.

3. Whether the doctrine of equivalents should be applied as an element-by-element inquiry rather than to the invention as a whole.

4. Whether the jury properly decided the issue of equivalency.

Submissions of the Parties

Petitioner (Warner-Jenkinson Co.):

Argued that the doctrine of equivalents conflicted with the statutory requirement that patents must specifically claim their scope.

Contended that any surrender of subject matter during prosecution should create an absolute bar against reclaiming equivalents.

Claimed that amendments made during prosecution to avoid prior art should prevent Hilton Davis from asserting equivalence beyond the literal terms of the claims.

Suggested that the doctrine of equivalents should be limited to equivalents disclosed within the patent itself.

Respondent (Hilton Davis Chemical Co.):

Argued that the doctrine of equivalents was essential to prevent competitors from making minor modifications to evade infringement liability.

Asserted that prosecution history estoppel should not automatically bar all claims of equivalence but should be analyzed based on the reasons for the amendment.

Maintained that the jury’s decision was supported by substantial evidence and should not be overturned.

Discussion on Cited Judgments

The Supreme Court examined several key precedents in its analysis:

1. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950) – Established the doctrine of equivalents, allowing patent holders to claim infringement where an accused product or process was functionally equivalent to the patented invention.

2. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942) – Held that prosecution history estoppel prevents a patentee from reclaiming subject matter surrendered to obtain a patent.

3. Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42 (1935) – Applied prosecution history estoppel where an amendment was made to avoid prior art.

4. Winans v. Denmead, 15 How. 330 (1854) – Recognized the importance of preventing competitors from making trivial changes to avoid literal infringement.

5. Hubbell v. United States, 179 U.S. 77 (1900) – Affirmed that all specified claim elements must be regarded as material.

Reasoning and Analysis

The Supreme Court reaffirmed the doctrine of equivalents, emphasizing that a patent should protect against minor modifications that retain the essence of the invention. However, the Court clarified that the doctrine must be applied on an element-by-element basis rather than considering the invention as a whole.

On prosecution history estoppel, the Court ruled that not all amendments bar the application of the doctrine of equivalents. It distinguished between amendments made to avoid prior art and those made for other patentability reasons, such as clarifying the claim language. The Court established a rebuttable presumption: if an amendment is made to comply with patentability requirements, it is presumed to bar the assertion of equivalence, but the patentee may rebut this presumption by demonstrating that the amendment was unrelated to patentability.

The Court rejected Warner-Jenkinson’s argument that intent played a role in determining equivalence. Instead, it emphasized an objective inquiry based on known interchangeability of elements at the time of infringement. The Court also declined to mandate a specific linguistic test, allowing lower courts to refine the formulation of equivalence through case-by-case adjudication.

Final Decision

The Supreme Court reversed and remanded the case to the Federal Circuit, directing it to reconsider the application of prosecution history estoppel and whether Hilton Davis had adequately rebutted the presumption that the pH amendment barred a finding of equivalence.

Law Settled in This Case

The doctrine of equivalents remains valid and continues to protect patent holders from minor variations that achieve the same result.

The doctrine must be applied on an element-by-element basis rather than to the invention as a whole.

Prosecution history estoppel applies when amendments are made to satisfy patentability requirements, but patentees may rebut the presumption that estoppel bars all equivalents.

Intent is not a factor in determining equivalence; instead, the focus is on the objective interchangeability of elements at the time of infringement.

The issue of equivalency may be decided by a jury, but courts retain the ability to limit the doctrine through legal determinations such as prosecution history estoppel.

This case refined the application of the doctrine of equivalents and prosecution history estoppel, ensuring a balance between protecting patent rights and providing clear notice to competitors.

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