Therelek Machine Pvt. Ltd. Vs Therelek Engineers Pvt. Ltd.

Section 124 of the Trademarks Act 1999 and third Party Rectification

Introduction:

The interpretation and application of Section 124 of the Trademarks Act 1999, particularly concerning the reliance on third-party rectification petitions in suit proceedings, have been a subject of legal scrutiny. This article delves into a recent case where the High Court examined whether a party in a suit proceeding could invoke Section 124 based on a third-party rectification petition.

Background:

In the case at hand, the petitioner filed a writ petition challenging the order of the Trial Court rejecting their application under Section 124(1) of the Trademarks Act 1999. The petitioner, defendant No.1 in the suit, sought a stay of the proceedings based on a third-party rectification petition filed against the plaintiff's registered trademark.

Legal Analysis:

The core issue revolved around whether the petitioner could rely on the third-party rectification petition to seek a stay of the suit proceedings under Section 124. The plaintiff argued that since the rectification application was filed by a third party, not a party to the suit, Section 124 was inapplicable.

However, the High Court rejected this contention and emphasized the language of Section 124 and Section 57 of the Trademarks Act 1999. Section 57 allows any aggrieved person to file a rectification application against the registration of a trademark. On the other hand, Section 124 provides for a stay of proceedings if an application for rectification is pending.

The court noted that Section 124 does not explicitly require the applicant seeking a stay to be a party to the suit or the one who filed the rectification application. Instead, it focuses on the existence of an application for rectification, irrespective of the applicant's identity. The key consideration is whether there is an ongoing rectification proceeding related to the trademark in question.

Conclusion:

The case underscores the importance of interpreting statutory provisions in accordance with their language and legislative intent. It clarifies that Section 124 of the Trademarks Act 1999 can be invoked based on a third-party rectification petition, provided there is an ongoing rectification proceeding concerning the trademark in question. This interpretation ensures that the statutory objective of protecting the integrity of trademarks is upheld, irrespective of the identity of the rectification applicant.

Case Title: Therelek Machine Pvt. Ltd. Vs Therelek Engineers Pvt. Ltd.

Order Date: 28.02.2024

Case No. WP No. 28029 of 2023

Neutral Citation:NA

Name of Court: Karnatak High Court 

Name of Hon'ble Judge:Anant Ramanath Hegde H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Times Drugs and Pharmaceutical Limited Vs Galpha Laboratories Limited

Failure to Conduct Trademark Search prior to adoption of Trademark 

Introduction:

The case of failure to conduct a trademark search prior to adopting a trademark highlights the importance of due diligence in trademark registration and use. This article analyzes the legal implications of such failure, focusing on a recent court decision where the plaintiff succeeded in a suit against the defendant for infringing on its registered trademark.

Background:

In the case at hand, the plaintiff claimed to be the registered proprietor of the trademark "DPS" in Class 05, relating to medicinal and pharmaceutical preparations, with claimed user dating back to October 1, 2005. The defendant, on the other hand, adopted an identical mark "DPS" for its products, claiming innocence and stating that the mark was derived from the first letters of the ingredients.

Legal Analysis:

The crux of the legal analysis lies in the defendant's failure to conduct a thorough search of the Trademarks Registry prior to adopting the mark "DPS". The court, in its judgment, emphasized the importance of conducting such searches before adopting a trademark. It held that a prudent user of a mark is expected to undertake due diligence to ensure that the chosen mark does not infringe upon existing trademarks.

The court highlighted that the plaintiff's registration of the trademark "DPS" predated the defendant's use of the same mark. Therefore, the defendant's subsequent adoption of an identical mark raised questions about its intent. Despite the defendant's claim of innocence, the court inferred that the failure to conduct a trademark search amounted to a deliberate action to capitalize on the plaintiff's goodwill and reputation in the market.

Legal Implications:

The case sets a precedent regarding the legal implications of failing to conduct a trademark search. It underscores the duty of businesses to conduct thorough searches of the Trademarks Registry before adopting a trademark to avoid infringing on existing rights. Failure to do so can lead to legal consequences, including claims of passing off and trademark infringement.

Remedies:

In this case, the court decreed the suit in favor of the plaintiff, granting relief against the defendant for infringing on its registered trademark. The defendant was restrained from using the mark "DPS", and the plaintiff was awarded appropriate remedies for the infringement.

Conclusion:

The case highlights the importance of due diligence in trademark matters and underscores the legal consequences of failing to conduct a trademark search. Businesses must exercise caution and diligence when adopting trademarks to avoid infringing on existing rights and facing legal action. Conducting thorough searches of the Trademarks Registry is essential to ensure compliance with trademark laws and regulations.

Case Title: Times Drugs and Pharmaceutical Limited Vs Galpha Laboratories Limited 

Order Date: 22.02.2024

Case No. C.A.(COMM.IPD-PV) 3/2022

Neutral Citation:CS(COMM) 398/2018

Name of Court: Delhi High Court 

Name of Hon'ble Judge:Sanjeev Narula, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

UPL Limited Vs Registrar and another

Relief under Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act 2001

Introduction:

Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act 2001 pertains to the granting of relief during the pendency of an application for registration of plant varieties. A recent case has brought to light the interpretation and application of this provision, particularly concerning whether relief can be granted during the pendency of an application. This article undertakes an analytical examination of this issue, focusing on the legal arguments, judicial reasoning, and implications of the case in question.

Legal Background:

Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001, explicitly addresses the issue of granting relief during the period between the filing of an application for registration and the decision made by the relevant authority. This provision empowers the Registrar to issue directions and grant relief during this interim period, thereby ensuring effective protection of rights pending the final determination of the application.

Case Overview:

The case under scrutiny involves an appeal filed under Section 56 of the Act against an order passed by the Registrar, wherein relief sought under Section 24(5) was denied on the grounds of prematurity. The Appellant had applied for relief, including damages, injunction, and rendition of accounts, during the pendency of their application for plant variety registration. The Registrar deemed the application premature, contending that relief could only be sought after the grant of registration, not during the application process.

Judicial Analysis:

Upon appeal, the Delhi High Court examined the language and intent of Section 24(5) of the Act. The Court emphasized the plain reading of the provision, which explicitly allows for the issuance of directions and granting of relief during the period between application filing and the decision by the authority. The Court observed that the Registrar's interpretation was contrary to the statutory mandate, as it deprived the Registrar of the power conferred by the statute to provide interim relief.

The Court's decision underscores the importance of adhering to the statutory language and purpose. By affirming the Registrar's authority to grant relief during the pendency of an application, the Court ensures the effective implementation of the Act's objectives, including the protection of plant breeders' and farmers' rights.

Implications:

The ruling of the Delhi High Court clarifies the scope and applicability of Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001. It establishes that relief can indeed be granted during the pendency of an application for plant variety registration, in accordance with the statutory provisions. This decision provides certainty to stakeholders by reaffirming the authority of the Registrar to intervene and provide interim relief when necessary, thereby promoting confidence in the legal framework governing plant varieties and farmers’ rights.

Conclusion:

The case discussed herein sheds light on the interpretation and application of Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001. The Delhi High Court's decision underscores the importance of upholding statutory provisions and ensuring the effective implementation of legislative objectives. By affirming the Registrar's authority to grant relief during the pendency of an application, the Court reinforces the protection afforded to plant breeders and farmers under the Act. 

Case Title: UPL Limited Vs Registrar and another

Order Date: 22.02.2024

Case No. C.A.(COMM.IPD-PV) 3/2022

Neutral Citation:2024:DHC:1913

Name of Court: Delhi High Court 

Name of Hon'ble Judge:Sanjeev Narula, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Jindal Industries Pvt.Ltd. Vs Suncity Sheets Pvt.Ltd.

Defence of Section 35 of Trademarks Act 1999 and Bonafide Use of Name:

In a recent trademark dispute between the plaintiff's mark "JINDAL" and the defendant's mark "RNJ RN JINDAL SS TUBES LABEL," the question of whether the plaintiff was entitled to relief of interim injunction arose. The defendants invoked Section 35 of the Trademarks Act 1999 and argued for the bonafide use of their surname.

Defendant's Defence:

The defendants argued that "JINDAL" is a common surname and, therefore, while it may be registerable, it should not be enforceable under Section 35 of the Trademarks Act. They contended that the use of one's own surname as a trademark is prima facie bona fide. Since Defendant 2's name is Rachna Nitin Jindal, her use of the mark "RNJ RN JINDAL SS TUBES LABEL" is legitimate.

Court's Observations:

The Hon'ble High Court of Delhi refused to grant relief of interim injunction to the plaintiff. It observed that the defendant's trademark prominently featured "RNJ" with a sun symbol alongside, followed by the name of Defendant 2, R.N. Jindal. The mark did not excessively highlight "JINDAL" over "RN" or "RNJ." Therefore, it was not justified to interpret the mark as infringing the plaintiff's registered "JINDAL" marks. The Defendant was given the benefit of Section 35 of Trademarks Act 1999 as the Defendant 2's name is Rachna Nitin Jindal, her use of the mark "RNJ RN JINDAL SS TUBES LABEL" was held to be bonafide.

Analysis:

This case highlights the application of Section 35 of the Trademarks Act 1999, which allows for the bonafide use of one's own name, including surnames, in trademarks. The court emphasized that the defendant's mark did not unduly emphasize "JINDAL" and that tearing out "JINDAL" from the composite mark to allege infringement was unjustified.

Conclusion:

The defence of bonafide use of one's own surname as a trademark, as provided under Section 35 of the Trademarks Act 1999, can be a potent argument in trademark disputes involving common surnames. This case underscores the importance of considering the overall composition and prominence of elements in a trademark when assessing likelihood of confusion and infringement.

Case Title: Jindal Industries Pvt.Ltd. Vs Suncity Sheets Pvt.Ltd.

Order Date: 07.03.2024

Case No. CS COMM 679  of 2023

Neutral Citation:2024:DHC:1883

Name of Court: Delhi High Court 

Name of Hon'ble Judge: C Harishankar, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Jindal Industries Pvt.Ltd. Vs Suncity Sheets Pvt.Ltd.

Defence of Section 35 of Trademarks Act 1999 and Bonafide Use of Name:

In a recent trademark dispute between the plaintiff's mark "JINDAL" and the defendant's mark "RNJ RN JINDAL SS TUBES LABEL," the question of whether the plaintiff was entitled to relief of interim injunction arose. The defendants invoked Section 35 of the Trademarks Act 1999 and argued for the bonafide use of their surname.

Defendant's Defence:

The defendants argued that "JINDAL" is a common surname and, therefore, while it may be registerable, it should not be enforceable under Section 35 of the Trademarks Act. They contended that the use of one's own surname as a trademark is prima facie bona fide. Since Defendant 2's name is Rachna Nitin Jindal, her use of the mark "RNJ RN JINDAL SS TUBES LABEL" is legitimate.

Court's Observations:

The Hon'ble High Court of Delhi refused to grant relief of interim injunction to the plaintiff. It observed that the defendant's trademark prominently featured "RNJ" with a sun symbol alongside, followed by the name of Defendant 2, R.N. Jindal. The mark did not excessively highlight "JINDAL" over "RN" or "RNJ." Therefore, it was not justified to interpret the mark as infringing the plaintiff's registered "JINDAL" marks. The Defendant was given the benefit of Section 35 of Trademarks Act 1999 as the Defendant 2's name is Rachna Nitin Jindal, her use of the mark "RNJ RN JINDAL SS TUBES LABEL" was held to be bonafide.

Analysis:

This case highlights the application of Section 35 of the Trademarks Act 1999, which allows for the bonafide use of one's own name, including surnames, in trademarks. The court emphasized that the defendant's mark did not unduly emphasize "JINDAL" and that tearing out "JINDAL" from the composite mark to allege infringement was unjustified.

Conclusion:

The defence of bonafide use of one's own surname as a trademark, as provided under Section 35 of the Trademarks Act 1999, can be a potent argument in trademark disputes involving common surnames. This case underscores the importance of considering the overall composition and prominence of elements in a trademark when assessing likelihood of confusion and infringement.

Case Title: Jindal Industries Pvt.Ltd. Vs Suncity Sheets Pvt.Ltd.

Order Date: 07.03.2024

Case No. CS COMM 679  of 2023

Neutral Citation:2024:DHC:1883

Name of Court: Delhi High Court 

Name of Hon'ble Judge: C Harishankar, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Swiss Bike Vertriebs GMBH Vs Reliance Brands Limited

Visually Dissimilar but Phonetically Similar Trademark

In a recent trademark dispute, the plaintiff sought a permanent injunction restraining the defendant from using the trademark 'RALLEYZ' or any other marks deceptively similar to the plaintiff's trademark 'RALEIGH.' The plaintiff alleged that the defendant's mark was phonetically similar to theirs and used for identical goods, bicycles.

Plaintiff's Contentions:

The plaintiff claimed extensive commercial use of the 'RALEIGH' mark since 1939, with substantial goodwill and recognition in the market. They argued that their mark was inherently distinctive and had acquired secondary meaning through continuous use. The plaintiff also pointed out their website, www.raleigh.co.uk, registered in 1998, as evidence of their trademark rights.

Interim Relief Granted:

The court granted interim relief in favor of the plaintiff, acknowledging the phonetic similarity between 'RALEIGH' and 'RALLEYZ.' It emphasized that in a linguistically diverse country like India, where accents and dialects vary widely, the pronunciation of words can differ significantly. Thus, the argument that 'RALEIGH' and 'RALLEYZ' are not phonetically similar was deemed untenable. The court noted that the defendant's mark was phonetically close to the plaintiff's, likely to cause confusion among consumers.

Analysis:

This case underscores the importance of considering phonetic similarities in trademark disputes, especially in linguistically diverse regions. While marks may appear visually dissimilar, their pronunciation and phonetic resemblance are crucial factors in determining likelihood of confusion among consumers. The court's decision highlights the need for a nuanced understanding of linguistic variations and accents prevalent in the market where the trademarks are used.

Conclusion:

Trademark disputes involving phonetically similar marks require careful analysis of pronunciation and linguistic factors. Courts must consider the diverse linguistic landscape of the jurisdiction and assess the likelihood of consumer confusion based on phonetic similarities. This case sets a precedent for recognizing the importance of phonetic resemblance in trademark infringement cases and emphasizes the need for comprehensive evaluation of linguistic nuances in such disputes.

Case Title: Swiss Bike Vertriebs GMBH Vs Reliance Brands Limited 

Order Date: 04.03.2024

Case No. CS COMM 25 of 2023

Neutral Citation:2024:DHC:1884

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Kareem Hotel Pvt. Ltd. Vs Kareem Dhanani

Res Judicata and Summary Disposal in Trademark Disputes:

In a recent legal proceeding, the court grappled with the application of the doctrine of res judicata and the principle of summary disposal in a trademark dispute. This article provides a detailed analysis of the legal principles involved and the court's reasoning in rejecting the defendant's application seeking rejection of the plaintiff's suit.

Background:

The defendant filed an application seeking rejection of the plaintiff's suit on the grounds of res judicata, citing a previous order dated 15.11.2017 passed in an earlier suit between the parties. The earlier suit had been disposed of with liberty granted to the plaintiffs to file a new proceeding after the Intellectual Property Appellate Board (IPAB) disposed of a cancellation petition concerning the defendant's trademark. However, the cancellation petition had been transferred to the High Court of Mumbai and the same was pending. In such a situation, the subject matter Suit was filed.

Res Judicata:

The defendant argued that the disposal of the earlier suit without determination of the parties' rights and contentions rendered the present suit redundant and lacking in cause of action. However, the court rejected this argument, emphasizing that subsequent events, such as the purported continuing action of passing off, provided the plaintiff with a cause of action. The court clarified that the mere mention of a continuing cause of action in the previous suit was not determinative, as that suit had concluded without a final adjudication on the merits.

Summary Disposal:

Despite the absence of a final determination on the cancellation petition by the Bombay High Court, the court held that the plaintiff could not be left remediless. It was incumbent upon the court to provide a remedy to the party claiming, particularly when they had suffered a situation akin to the one at hand. Therefore, the court rejected the defendant's application seeking summary disposal of the suit.

Conclusion:

While the doctrine of res judicata aims to prevent parties from relitigating the same issues, it is not absolute and must be applied judiciously in light of the specific circumstances of each case. Similarly, the principle of summary disposal seeks to promote judicial efficiency but must be balanced against the need to ensure access to justice and remedies for aggrieved parties. This decision underscores the court's duty to provide a remedy to parties in situations where they would otherwise be left remediless, despite the absence of a final adjudication on related proceedings.

Case Title: Kareem Hotel Pvt. Ltd. Vs Kareem Dhanani

Order Date: 06.03.2024

Case No. CS COMM 112 of 2022

Neutral Citation:2024:DHC:1886

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Kaleesuwari Refinery Pvt. Ltd. Vs .Rathinasamy Gomathy and Ors

Use of Modified Label and Non-Use of Registered Trademark

Introduction:

In cases where registered trademarks are not used, interested parties may seek rectification on grounds of non-use. This article examines a recent case involving a petition for the rectification of a registered trademark, GOLD WINNER Label, on the basis of non-use in the context of use of modified version of registered Trademark and analyzes the court's decision in light of relevant legal principles.

Background of the Case:

The subject matter of the case pertains to a petition seeking the rectification of the registered trademark GOLD WINNER Label under Registration No. 1232740 in Class 30, specifically in relation to toor dal, dal varieties, and other goods in Class 30. The petitioner invoked the ground of non-use to challenge the validity of the registered trademark on this fact that the registered proprietor was not using the Label which was registered as Trademark, but instead it was using a modified version of the registered Trademark .

Petitioner's Argument:

The petitioner contended that the use of a substantially altered trademark is tantamount to non-use of the registered trademark. To support this argument, the petitioner relied on findings from a connected suit proceeding, where it was determined that the respondent had not proven the use of the registered label mark and had instead used a modified version of the trademark.

Court's Analysis and Decision:

The court rejected the petitioner's argument, emphasizing that the mere fact that the respondent used a modified version of the trademark does not automatically establish non-use of the registered trademark. The court's decision suggests a nuanced interpretation of the concept of non-use in trademark law.

Substantial Alteration Vs. Non-Use:

The court's rejection of the petitioner's argument underscores the distinction between substantial alteration of a trademark and non-use. While a substantial alteration may impact the distinctiveness of a mark, it does not necessarily equate to non-use. Trademark law recognizes that minor modifications to a mark may occur over time without necessarily constituting abandonment or non-use.

Conclusion:

Trademark rectification on grounds of non-use presents complex legal issues that require careful analysis of the factual circumstances and relevant legal principles. The court's decision in the case of GOLD WINNER Label highlights the importance of distinguishing between substantial alterations to a trademark and genuine non-use.

Case Title: Kaleesuwari Refinery Pvt. Ltd. Vs .Rathinasamy Gomathy and Ors

Order Date: 24.01.2024

Case No. (ORA/9/2018/TM/CHN)

Neutral Citation:2024:MHC:5931

Name of Court: Madras High Court

Name of Hon'ble Judge: Mr. Senthil Kumar Ramamoorthy, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Hogar Controls India Pvt. Ltd. Vs Anadasu Vijay Kumar and Ors

Primacy of Execution in Trademark Assignment Deeds over Recordation

Introduction:

The case at hand revolves around the dispute over the ownership of trademarks "HOGAR," "HOGAR CONTROLS," and "HOGAR DEVICE" between the Plaintiff and Defendants No. 1 to 3. The Plaintiff alleges unlawful usurpation of their intellectual property rights by the Defendants, who are former Directors of the Plaintiff.

Central to the controversy is the validity of the assignment deed through which the Plaintiff claims proprietary rights in the subject trademarks. The Defendants argue that the assignment deed fails to comply with prescribed conditions, particularly regarding the application to the Registrar of Trademarks for direction regarding advertisement within specified timelines.

However, the Delhi High Court rejected this argument, emphasizing the significance of the execution of the assignment deed over its recordation with the Trademark Registry. This legal analysis delves into the court's reasoning and the broader implications of this decision.

Legal Standing and the Role of Execution:

The crux of the Delhi High Court's decision lies in distinguishing between the legal effects of executing an assignment deed and the procedural step of registering it with the Trademark Registry. The court rightly observed that the assignee's legal standing is not compromised by the absence of official registration at the time of initiating a lawsuit. This distinction underscores the fundamental principle that the rights conferred upon the assignee originate directly from the execution of the assignment deed, irrespective of its subsequent recordation.

Preservation of Contractual Intent:

By prioritizing execution over recordation, the court upheld the sanctity of contractual agreements between parties. In the absence of any explicit statutory mandate requiring immediate recordation as a condition precedent to the validity of an assignment, the court rightly recognized the autonomy of parties to determine the timeline for recordation, provided that the execution of the assignment deed is valid.

Protecting Assignee's Rights:

Emphasizing the importance of execution safeguards the assignee's rights and interests in the assigned trademarks. Had the court ruled otherwise, it would have created unnecessary hurdles for assignees, potentially exposing them to the risk of third-party claims despite having a valid assignment deed in place. Such an outcome would undermine the certainty and predictability essential for the smooth functioning of trademark transactions.

Conclusion:

The Delhi High Court's ruling in this case reinforces the principle that the validity of a trademark assignment primarily derives from the execution of the assignment deed, rather than its subsequent recordation with the Trademark Registry. By recognizing the autonomy of parties to determine the timing of recordation, the court upholds the integrity of contractual agreements while safeguarding the rights of assignees.

Case Title: Hogar Controls India Pvt. Ltd. Vs Anadasu Vijay Kumar and Ors

Order Date: 29.02.2024

Case No. CS Comm 669 of 2022

Neutral Citation:2024:DHC:1644

Name of Court: Delhi High Court

Name of Hon'ble Judge: Mr. Sanjeev Narula, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Microsoft Technology Licensing LLC Vs Assistant Controller of Patents and Designs

Teaching in prior art must be enabling for PSITA [Person skilled in the art] to defeat a patent

Introduction:

In intellectual property law, the determination of patent validity often hinges on the concept of prior art. Prior art refers to any evidence that an invention is already known. When assessing the novelty of an invention, one crucial factor is whether the prior art teaches or enables a person skilled in the art (PSITA) to create the claimed invention. This article delves into the significance of enabling teaching within prior art as a means to invalidate a patent, with a focus on a recent case involving Indian Patent Application No.1783/CHENP/2012.

Background of the Case:

The case in question involves the rejection of an Indian patent application titled "Message Communication of Sensor and other Data" filed on 27 February 2012. The application claimed priority from a PCT Application dated 15 September 2010, with the original priority date being 23 September 2009. The rejection was challenged, leading to an appeal, wherein the Hon'ble High Court overturned the rejection order.

Analysis of the High Court's Observations:

The High Court's decision rested on a critical observation regarding the enabling teaching within the prior art. It was noted that while the cited prior art also dealt with the transmission of sensor data to subscribing applications, it failed to teach or enable the conversion of raw sensor data into easily readable messages, which was the essence of the claimed invention.

The court highlighted the distinction between merely transmitting sensor data and converting it into easily interpretable messages. Despite similarities in functionality, the prior art lacked explicit teachings or enabling disclosures regarding the conversion process. This crucial disparity indicated that the claimed invention addressed a unique problem not addressed by the prior art.

Importance of Enabling Teaching in Prior Art:

The case underscores the significance of enabling teaching within prior art as a determinant of patent validity. Patent law requires that prior art must sufficiently teach or enable a PSITA to create the claimed invention. Mere disclosure of similar functionalities or elements is insufficient if it does not provide explicit guidance or enablement for implementing the claimed invention.

The High Court's analysis reaffirms the principle that patent protection should not extend to inventions that are obvious or readily derivable from existing knowledge in the relevant field. Enabling teaching serves as a safeguard against the granting of patents for incremental innovations lacking inventive step.

Challenges in Establishing Enablement:

Proving lack of enabling teaching in prior art presents challenges in patent litigation. It requires a nuanced analysis of the disclosed content, coupled with an understanding of the knowledge and capabilities of a PSITA at the relevant time. Courts often rely on expert testimony and documentary evidence to evaluate the level of enablement provided by the prior art.

In the present case, the appellant successfully demonstrated the absence of enabling teaching in the cited prior art, thereby invalidating the rejection of the patent application. The court's scrutiny of the prior art's content and its comparison with the claimed invention played a pivotal role in reaching this conclusion.

Conclusion:

The case highlights the critical role of enabling teaching within prior art in determining patent validity. Patent protection should be reserved for inventions that offer solutions not obvious or readily available to a PSITA based on existing knowledge. The requirement of enabling teaching serves as a safeguard against the grant of patents for trivial or incremental innovations.

Moving forward, patent applicants and practitioners should emphasize the uniqueness and non-obviousness of their inventions, supported by clear and enabling disclosures. Likewise, patent examiners and courts must rigorously assess prior art to ensure that patent rights are granted only to deserving inventions that significantly contribute to technological advancement.

Case Title: Microsoft Technology Licensing LLC Vs Assistant Controller of Patents and Designs

Order Date: 28.02.2024

Case No. (OA/3/2021/PT/CHN)

Neutral Citation:2024:MHC:1009

Name of Court: Madras High Court

Name of Hon'ble Judge:Senthil Kumar Ramamoorthy, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Western Digital Technologies Vs Geonix International

Trademark Infringement and Reverse Passing Off

Introduction:

The case at hand revolves around allegations of trademark infringement and reverse passing off by the Plaintiff against Defendant No. 1. The Plaintiff contends that the Defendant is rebranding and reselling old discarded HDDs under the mark 'Geonix', misleading consumers into believing they are new and unused products. This legal analysis aims to delve into the intricacies of trademark law and consumer protection regulations in light of the facts presented in the case.

Trademark Infringement and Consumer Protection:

Trademark infringement occurs when a party uses a mark that is identical or confusingly similar to a registered trademark without authorization, leading to consumer confusion regarding the origin of the goods or services. In this case, the Plaintiff alleges that Defendant No. 1's actions violate their statutory rights and deceive consumers, constituting a breach of consumer protection laws aimed at preventing deceptive marketing practices.

The Principle of Protection of Consumer Interest:

The principle concerning the protection of consumer interest is paramount in cases involving deceptive marketing practices. Consumers rely on trademarks to make informed purchasing decisions, expecting goods to be of a certain quality and origin. By misrepresenting old HDDs as new under the 'Geonix' mark, Defendant No. 1 undermines consumer trust and compromises their interests, thus warranting legal intervention to safeguard consumer rights.

Reverse Passing Off:

Reverse passing off occurs when a party sells another's product under its own name, falsely designating the origin and source of the goods. In this case, Defendant No. 1's act of rebranding and reselling old HDDs as 'Geonix' products constitutes reverse passing off, as they are altering the origin and source of the goods, leading to potential harm to the Plaintiff's reputation and goodwill.

Legal Analysis of the Court's Decision:

The Court, upon prima facie examination, found merit in the Plaintiff's allegations and granted an interim injunction against the Defendants. The Court's decision reflects a recognition of the potential detrimental effects on the Plaintiff's reputation and the deceptive nature of Defendant No. 1's actions. By invoking Sections 30(3) and 30(4) of the relevant Act, the Court acknowledges the legal basis for granting injunction relief to protect the Plaintiff's trademarks and consumer interests.

Case Title: Western Digital Technologies Vs Geonix International

Order Date: 26.02.2024

Case No. CS Comm 168 of 2024

Neutral Citation:N.A.

Name of Court: Delhi High Court

Name of Hon'ble Judge:Sanjeev Narula, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Kudos Pharmaceuticals Limited Vs Natco Pharma Limited

Credible Challenge to Plaintiff's Patent in a Patent Infringement Suit

In a recent legal proceeding, the court granted an interlocutory injunction in a patent infringement case involving the defendant's manufacturing and selling of Olaparib, a product covered by the plaintiff's patent. This article provides a detailed analysis of the legal principles involved and the rationale behind the court's decision.

Background:

The plaintiff, holding a valid patent for Olaparib, alleged that the defendant was infringing upon their patent by manufacturing and selling the same product under the brand name BRACANAT. The plaintiff sought an interlocutory injunction to restrain the defendant from continuing such activities until the final disposal of the patent infringement suit.

Validity of the Suit Patent:

The court noted that the suit patent was in its 19th year of validity and that no credible challenge to its validity had been made by the defendant. Despite the defendant's arguments, no substantial case of vulnerability to invalidity under Section 64 of the Patents Act was established. Therefore, the court found no reason to doubt the validity of the suit patent.

Granting of Interlocutory Injunction:

Based on the absence of a credible challenge to the validity of the suit patent and the defendant's clear exploitation of the patented product, the court determined that the plaintiff was entitled to an interlocutory injunction. The purpose of such an injunction is to maintain the status quo until the final resolution of the dispute. In this case, granting the injunction was necessary to prevent further infringement and protect the plaintiff's rights pending the outcome of the lawsuit.

Scope of the Injunction:

The court's order restrained the defendant from manufacturing, selling, or otherwise dealing with Olaparib, whether under the brand name BRACANAT or any other brand name, for the duration of the patent's validity and until the final disposal of the patent infringement suit. This broad scope ensures comprehensive protection of the plaintiff's rights and prevents potential circumvention of the injunction.

Case Title: Kudos Pharmaceuticals Limited Vs Natco Pharma Limited

Order Date: 01.03.2024

Case No. CS Comm 29 of 2023

Neutral Citation:2024: DHC:1716

Name of Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539