Lighthouse Learning Pvt. Ld. Vs Manju Malhotra

Lighthouse Learning Private Limited Secures Court Injunction Against Former Franchisee Over Trademark Infringement

In a pivotal legal ruling, Lighthouse Learning Private Limited, a key player in the preschool education industry, secured a court injunction against a former franchisee to stop the unauthorized use of its registered trademarks. This decision is a significant measure in safeguarding the intellectual property rights of the company, which has operated under the "EUROKIDS" brand for almost 25 years.

Background of the Case:

Lighthouse Learning Private Limited, established under the Companies Act, 2013, has been a dominant force in the preschool sector since 2001. The company, along with its predecessor, has cultivated a strong brand presence with the "EUROKIDS" trademark, incorporating the distinctive "EURO KIDS Pre School and Rabbit Device Mark."

The legal dispute involves Defendant No. 1, a former franchisee who entered into the initial franchise agreement with Lighthouse Learning's predecessor in 2017. This agreement permitted Defendant No. 1 to operate two preschools under the "EUROKIDS" brand from April 1, 2017, to March 31, 2018. The franchise was extended through two subsequent agreements in 2018 and 2019, covering the period up to March 31, 2022. No new franchise agreement was made after this date.

Dispute Over Trademark Use:

After the franchise agreement expired, Lighthouse Learning notified Defendant No. 1 via email on July 1, 2022, about the non-renewal and directed them to cease operations under the "EUROKIDS" brand. Despite this, Defendant No. 1 continued using the company's trademarks. This led Lighthouse Learning to issue multiple legal notices in 2022 and 2023, demanding Defendant No. 1 to stop using the "EUROKIDS" trademarks and any deceptively similar marks that could mislead consumers regarding their association with Lighthouse Learning.

Defendant No. 1 disputed the claims, asserting they had stopped using the "EUROKIDS" trademarks. However, Lighthouse Learning, unsatisfied with this response, initiated pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015, through the Delhi Legal Services Authority. The mediation did not yield a resolution.

Court Ruling:

Under these circumstances, Lighthouse Learning sought judicial intervention to prevent Defendant No. 1 from allegedly infringing on its trademarks. The court determined that the Plaintiff had established a prima facie case, suggesting that Defendant No. 1's use of the "EURO" mark for their preschools was both malicious and dishonest, likely to confuse consumers.

The court issued an ex-parte ad-interim injunction in favor of Lighthouse Learning, acknowledging that the company would suffer irreparable harm without such an order. The court also found the balance of convenience to be in favor of the Plaintiff.

Implications:

This ruling emphasizes the judiciary's role in upholding trademark rights and protecting businesses from the unauthorized use of their established brands. For Lighthouse Learning, the injunction is a crucial protection for its "EUROKIDS" brand, ensuring the preservation of its reputation and consumer trust.

This case sets a significant precedent for similar disputes, highlighting the necessity for clear contractual terms and diligent enforcement of intellectual property rights in franchise agreements.

Case Title:Lighthouse Learning Pvt. Ld. Vs Manju Malhotra
Judgement/Order Date: 27.05.2024
Case No. CS(COMM) 438 of 2024
Neutral Citation:NA
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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Khadi and Village Industries Vs Bala Saheb Walnuj

Delhi High Court Issues Injunction Against Swami Enterprises for Trademark Infringement

In a significant ruling on April 30, 2024, the Delhi High Court issued an ex-parte ad-interim injunction in favor of the Khadi & Village Industries Commission (KVIC), a statutory body established under the Khadi and Village Industries Commission Act of 1956. The plaintiff, KVIC, is the registered proprietor of the well-known wordmark "KHADI" and various device marks, registered across multiple classes including 3, 25, 29, 30, and 35. The "KHADI" mark is also listed among well-known trademarks by the Registrar of Trademarks, as published in the trademark journal no. 2065 dated August 15, 2022.

The defendants in this case, partners of M/s Swami Enterprises—Defendant Nos. 1-3—were found to be marketing, promoting, and selling cosmetic products under the mark "AYUVED'S KHADI" on the e-commerce platform Amazon.in. Additionally, they filed for the registration of a device mark in class 3 under application no. 5584097 through their partnership firm, which has yet to be advertised.

During a routine search in October 2023, KVIC discovered the impugned marks on cosmetic products sold by the defendants, which led to the legal action. The court, upon examining the evidence, found that the defendants' use of "AYUVED'S KHADI" and the domain name "ayuvedskhadi.com" wholly incorporated the plaintiff's "KHADI" mark. This, according to the court, is likely to cause consumer confusion and deception due to the prima facie deceptive similarity to the plaintiff's well-known trademark.

Judge Sanjeev Narula noted that the defendants' use of the impugned marks in their trading name and on their products, which do not originate from KVIC, constitutes trademark infringement and passing off. The court recognized the irreparable harm KVIC would suffer without the injunction, finding the balance of convenience in favor of the plaintiff.

As a result, the Delhi High Court granted KVIC an ex-parte ad-interim injunction, restraining M/s Swami Enterprises from using the impugned marks "AYUVED'S KHADI" and related domain names, pending further orders.

This case underscores the robust protection afforded to well-known trademarks in India and highlights the judiciary's proactive stance in preventing consumer confusion and safeguarding the rights of trademark proprietors.

Case Title:Khadi and Village Industries Vs Bala Saheb Walnuj

Judgement/Order Date: 30.04.2024

Case No. CS(COMM) 345 of 2024

Neutral Citation:NA

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Cipla Health Limited Vs Glister Pharmaceuticals Limited

Cipla Limited Files Lawsuit Against OLNIGEL for Copyright  Infringement and passing off

Cipla Limited has initiated legal action to prevent the defendants from infringing copyright and passing off their trademark "OMNIGEL." The case centers on the defendants' use of the mark "OLNIGEL," which Cipla contends is almost identical to its established trademark, leading to potential consumer confusion.

Cipla's connection to the "OMNIGEL" trademark dates back to 2000, when it adopted the mark for its line of topical analgesics containing Diclofenac. The company's predecessor, Cipla Limited, had previously registered the device mark "OMNI" in Class 5, with use dating back to 1937. Since adopting "OMNIGEL," Cipla has used distinctive trade dress and packaging for its products, which the company argues has become well-recognized among consumers.

In the second week of May 2024, Cipla's representatives discovered the defendants marketing a product under the name "OLNIGEL." Cipla claims this product not only bears a deceptively similar name but also uses nearly identical packaging and trade dress. Both products are pain relief gels marketed through identical trade channels and to the same class of consumers.

The court, upon a prima facie analysis, found substantial similarities between the two marks, noting that "OMNIGEL" and "OLNIGEL" differ only by a single letter. Additionally, the court observed that the packaging, color schemes, taglines, and motifs of the two products were almost indistinguishable.

Based on these findings, the court concluded that Cipla has established a strong prima facie case of copyright infringement and passing off. The court determined that failing to grant an ex-parte ad-interim injunction would likely result in irreparable harm to Cipla. Consequently, the court issued the injunction, favoring Cipla and restricting the defendants from continuing to use the contested mark and packaging pending further legal proceedings.

Case Title:Cipla Health Limited Vs Glister Pharmaceuticals Limited

Judgement/Order Date: 27.05.2024

Case No. CS(COMM) 441/2024

Neutral Citation:NA

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Jamboree Resorts India Llp Anr Vs Mehul Sharma

Delhi High Court Grants Interim Injunction to Jamboree Resorts in Trademark Dispute

In a recent decision, the Delhi High Court granted an ex-parte interim injunction favoring Jamboree Resorts India LLP and its partners, Ms. Priyanka Sharma and Mr. Rajinder Sharma, in their trademark dispute against Mehul Sharma and Signum Hospitality Pvt. Ltd. (SHPL). 

The Plaintiffs, proprietors of the "JAMBOREE" and "JAMBOREE CREEK" trademarks, have been operating the Jamboree Creek Yoga eco-farm homestay resort since 2013, establishing a strong market presence and goodwill. The resort is renowned for hosting yoga retreats and training, attracting international clientele and A-list Bollywood celebrities.

In November 2023, the Plaintiffs entered into a Hotel Revenue Sharing Agreement with SHPL, intended for SHPL to operate the resort under a revenue-sharing model. However, operational mismanagement by SHPL led to significant issues. The agreement was deemed void upon discovering that "Signum Hospitality and Resorts Pvt. Ltd. (SHRPL)," listed as the operator in the agreement, did not exist.

Despite the void agreement, the Defendants continued managing the resort, causing continuous mismanagement and breaches of agreement terms. After multiple unsuccessful attempts to rectify the situation, the Plaintiffs terminated the agreement on May 10, 2024, and regained possession of the resort with local law enforcement's assistance. 

However, the Plaintiffs faced challenges in managing the resort effectively as the Defendants retained control over essential online booking and social media accounts. The Plaintiffs' inability to access these accounts hindered their operations significantly.

The Plaintiffs approached the court to protect their intellectual property rights, stating their intention to operate the resort under the name "JAMBOREE CREEK YOGA Resort" and remove all references to the Defendants' "SIGNUM" trademark once access is restored.

Judge Sanjeev Narula noted the Plaintiffs' substantial goodwill and ruled that without the injunction, they would suffer irreparable harm. Consequently, the Court restrained the Defendants from using the "SIGNUM JAMBOREE CREEK" trademark or any similar mark until the next hearing, though allowed the Defendants to use "SIGNUM" independently.

Case Title:Jamboree Resorts India Llp Anr Vs Mehul Sharma

Judgement/Order Date: 16.05.2024

Case No. CS(COMM) 404 of 2024

Neutral Citation:NA

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

GS1 India Vs Kalpesh Sudhakar Kothawade

Delhi High Court Grants Interim Injunction Against Unauthorized Use of '890' Barcodes

An Indian affiliate of GS1 AISBL has secured an interim injunction against defendants accused of unauthorized use of 13-digit barcode numbers starting with '890'. The application, filed under Order XXXIX Rules 1 & 2 along with Section 151 of CPC, 1908, aims to prevent the defendants from using, selling, offering for sale, issuing, or allocating these barcodes, which are misleadingly presented as compliant with GS1 standards.

GS1 AISBL, headquartered in Brussels, Belgium, manages a network of 116 member organizations worldwide and is responsible for setting global barcode standards. The plaintiff, granted an exclusive license by GS1 AISBL, allocates GS1 company prefix numbers starting with '890' in India. These numbers are essential for generating the Global Trade Item Number (GTIN), a unique 13-digit product code used for identifying specific products and ensuring compliance with global best practices related to counterfeit detection, product authentication, stock management, and wastage control.

According to the plaintiff, the defendants, who had signed up for the allocation of GS1 barcode numbers, violated the terms of the licensing agreement. The agreement stipulates that the license is non-exclusive, non-transferable, and non-sublicensable. Despite these conditions, the defendants allegedly transferred the barcode numbers 8904452202918, 8904452202529, and 8904452202536 to an entity named Pratibha’s Spices, thereby causing market confusion and infringing on the plaintiff's registered trademark.

The court found a prima facie case in favor of the plaintiff, noting that the balance of convenience lies with the plaintiff and that irreparable harm would occur if the injunction were not granted. Consequently, an ex-parte ad-interim injunction has been issued. This order restrains the defendants and all those acting on their behalf, including proprietors, partners, affiliates, franchisees, officers, servants, agents, distributors, and representatives, from using, selling, offering for sale, issuing, or allocating 13-digit barcode numbers starting with '890' or any deceptively similar marks in any manner that could lead to confusion regarding the origin, association, or certification of compliance with GS1 standards.

The injunction remains in effect until the next court hearing, providing temporary relief to the plaintiff while the case proceeds. This ruling underscores the importance of adhering to licensing agreements and the legal repercussions of unauthorized use and transfer of standardized identifiers crucial for maintaining global supply chain integrity.

Case Title:GS1 India Vs Kalpesh Sudhakar Kothawade

Judgement/Order Date: 03.05.2024

Case No. CS(COMM) 360 of 2024

Neutral Citation:NA

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Archian Foods Private Limited Vs Devsar Industries

Court Grants Injunction in 'Lahori Zeera' Trademark Dispute:

The Delhi High Court has granted an ex-parte ad-interim injunction in favor of a plaintiff engaged in the manufacturing and marketing of flavored soft drinks and non-alcoholic beverages under the "LAHORI" trademark. The plaintiff's popular variant, "LAHORI ZEERA," launched in 2015, was found to be imitated by defendants using the mark "LOHORE ZEERA."

The court noted that the defendants had emulated the plaintiff's distinctive packaging, including the color scheme, trademark style, sliced lemon device, label design, and bottle shape of the "LAHORI ZEERA" product. The plaintiff argued that this imitation could cause irreparable harm to their business.

The defendants’ product, bearing the name "LOHORE ZEERA," exhibited a striking resemblance to the plaintiff's "LAHORI ZEERA" in its visual presentation. The court observed that the similarity was not merely superficial but extended to specific elements that are integral to the plaintiff’s brand identity. These elements included the overall layout, font style, and graphical representation, which could easily mislead consumers into believing that the defendants' product was associated with or endorsed by the plaintiff.

Recognizing a prima facie case and the potential for irreparable loss, the court ruled in favor of the plaintiff, granting the injunction to prevent further damage to their brand. The court's decision was based on the principles of trademark protection, which aim to prevent consumer confusion and protect the goodwill associated with established brands. The injunction will remain in effect until the final disposal of the suit or until further orders.

The plaintiff provided substantial evidence demonstrating the market presence and popularity of the "LAHORI ZEERA" product, highlighting its unique positioning in the market since its launch. The court was convinced that the defendants' actions could lead to significant consumer confusion and dilution of the plaintiff's brand equity.

Furthermore, the court emphasized the importance of maintaining the integrity of trademark rights, particularly in cases where a product's distinctive features play a critical role in its market success. The decision underscores the judiciary's role in upholding intellectual property rights and ensuring fair competition in the marketplace.

Case Summary:

Plaintiff:Manufacturer of "LAHORI" brand beverages

Defendants:Accused of imitating the "LAHORI ZEERA" product

Court's Decision:Granted ex-parte ad-interim injunction to the plaintiff. 

Case Title:Archian Foods Private Limited Vs Devsar Industries

Judgement/Order Date: 02.05.2024

Case No. CS(COMM) 354/2024

Neutral Citation:NA

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Anil Kumar Gera Vs Ramesh Chander

Non compliance of Rule 70(9) of the Copyright Rules, 2013 and Copyright Rectification

Introduction:

The current petitions challenge the validity of copyright registrations No. A-65448/2003 and No. A-57086/1999, granted in favor of the Respondent under the provisions of the Copyright Act, 1957. The Petitioner contends that these registrations were improperly obtained, violating statutory rules, particularly Rule 16(3) of the Copyright Rules, 1958 (now Rule 70(9) of the Copyright Rules, 2013). This article aims to critically analyze the legal framework, arguments presented, and the court’s ruling on this matter, focusing on the procedural integrity and implications of non-compliance with statutory requirements.

Legal Framework;

Section 50 of the Copyright Act, 1957 provides a mechanism to challenge the validity of a copyright registration. Under this provision, any person aggrieved by the registration of a copyright may apply to the Copyright Board for rectification of the Register of Copyrights.

Rule 16(3) of the Copyright Rules, 1958 (now Rule 70(9) of the Copyright Rules, 2013) mandates that notice be issued to any party who claims or is disputing the rights to the work being registered. This rule ensures that all interested parties are given an opportunity to present their claims before the copyright registration is finalized. The principle behind this rule is to maintain transparency and fairness in the registration process.

Factual Background:

The Petitioner claims authorship of the artistic work associated with the packaging label/carton titled "TINY MINY," created by Ankur Advertising and Marketing. The Respondent, however, obtained copyright registrations for similar works under the titles CHATMOLA in 2003 and 1999. The primary issue before the court was whether the copyright registrations were sustainable given the alleged non-compliance with Rule 16(3) of the Copyright Rules, 1958.

Non-Compliance with Rule 16(3) of the Copyright Rules, 1958 (now Rule 70(9) of the Copyright Rules, 2013):

The court's examination revealed that no notice was issued to the Petitioner at the time of scrutiny and registration of the Impugned Copyrights. Given that the Petitioner was already disputing the Respondent’s claims in a pending lawsuit, the failure to notify constitutes a direct violation of Rule 16(3) of the Copyright Rules, 1958 (now Rule 70(9) of the Copyright Rules, 2013). This rule is crucial for ensuring procedural integrity, and its non-compliance fundamentally undermines the legitimacy of the copyright registration process.

The court noted that the Respondent was fully aware of the ongoing dispute yet failed to notify the Petitioner. This omission not only breached the statutory requirement but also prejudiced the Petitioner’s rights to contest the registration. The procedural lapse thus renders the registrations invalid.

Distinction Between Copyright and Trademark:

The Respondent argued that their trademark registration and the rejection of the Petitioner’s opposition should act as res judicata, barring the current proceedings. However, the court rightly dismissed this argument, highlighting the distinct legal principles governing trademarks and copyrights. While trademark law focuses on distinguishing the source of goods or services, copyright law protects the originality of artistic or literary works. Consequently, a trademark registration does not inherently establish copyright ownership, especially when copyright claims are actively disputed.

The court’s rejection of the res judicata argument underscores the importance of addressing each intellectual property right within its specific legal framework. This distinction is vital to prevent conflation of legal principles that govern different types of intellectual property.

Critical Analysis:

The court’s decision is grounded in a strict interpretation of statutory requirements, emphasizing procedural fairness and the need for adherence to prescribed rules. By invalidating the copyright registrations due to non-compliance with Rule 16(3) of the Copyright Rules, 1958 (now Rule 70(9) of the Copyright Rules, 2013), the court reinforces the principle that procedural lapses cannot be overlooked, especially when they affect the rights of disputing parties.

The distinction between copyright and trademark protections made by the court is also significant. It reaffirms that the recognition of one form of intellectual property does not automatically resolve disputes over another. This separation ensures that the legal standards applicable to each type of intellectual property are appropriately maintained.

However, this case also highlights the need for more robust mechanisms within the copyright registration process to identify and notify all potential claimants effectively. The failure to issue notice in this case points to possible deficiencies in the administrative procedures of the Copyright Office, which could be addressed through reforms aimed at enhancing transparency and stakeholder engagement.

Conclusion:

The court's ruling in this case emphasizes the critical importance of adhering to procedural rules in copyright registration processes. The invalidation of the Impugned Copyrights due to non-compliance with Rule 16(3) serves as a reminder of the need for transparency and fairness in protecting intellectual property rights. Moreover, the decision delineates the distinct legal frameworks governing copyrights and trademarks, ensuring that the principles of each are respected.

Case Title:Anil Kumar Gera Vs Ramesh Chander

Judgement/Order Date: 02.05.2024

Case No. C.O. (COMM.IPD-CR) 750/2022

Neutral Citation:NA

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]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Jitendra Kumar Vs The Registrar of Trademarks

Rectification of trademark on the basis of prior use of Trade Name

Abstract:

This article examines the legal principles surrounding the rectification of a trademark registration based on prior use of a trade name. It focuses on a petition brought under Sections 47 and 57 of the Trademarks Act, 1999, aiming to cancel the registration of the trademark "WHITE BOY" granted to Respondent No. 2. The petitioner, who claims prior use of the trademark, challenges the registration on the grounds that their continuous use since 2010 establishes superior rights. This analysis explores the facts, findings, legal implications, ratio decidendi, and concludes with the case's significance in trademark law.

Facts:

The petitioner established a sole proprietorship, White Boy Apparels, in 2010, manufacturing and trading in shirts under the trademark "WHITE BOY." The petitioner claims continuous and uninterrupted use of the mark since its inception. On March 3, 2021, the petitioner applied for registration of the wordmark "WHITE BOY" in class 25, citing a user claim from January 10, 2013. However, Respondent No. 2 had already filed for the registration of the identical mark on March 2, 2021, one day before the petitioner's application.

Documentary evidence confirms the operation of 'White Boy Apparels' since 2010, though explicit use of the "WHITE BOY" trademark on products from 2010 to 2019 is not demonstrated. The petitioner supports their claim with tax invoices showing the sale of "WHITE BOY" shirts since 2020. In contrast, Respondent No. 2's application was on a proposed-to-be-used basis, with no evidence of actual use before or after registration.

Prior Use of Trade Name and Firm Name:

The petitioner has demonstrated a significant period of continuous use of the trade name "White Boy Apparels" since 2010, establishing goodwill and reputation associated with the name. The use of the trade name as a source identifier aligns with the definition of a trademark under Section 2(1)(m) and Section 2(1)(zb) of the Trademarks Act, 1999.

Lack of Evidence from Respondent No. 2:

Respondent No. 2's application was on a proposed-to-be-used basis, indicating no actual use of the mark "WHITE BOY" at the time of application.The absence of documentary proof of use by Respondent No. 2 weakens their claim to the trademark rights.

Commercial Use by Petitioner: Tax invoices submitted by the petitioner demonstrate active commercial use of the "WHITE BOY" mark since 2020, reinforcing their claim of continuous trademark usage.

Ratio Decidendi:

The decisive principle in this case is the doctrine of prior use. The petitioner’s established and continuous use of the "WHITE BOY" mark since 2010, combined with the lack of actual use by Respondent No. 2, establishes the petitioner’s superior rights. The court's reliance on documentary evidence, such as tax invoices and the longstanding operation of 'White Boy Apparels,' underscores the importance of proving continuous and substantive use in trademark disputes.

Concluding Note:

The cancellation of the trademark "WHITE BOY" under No. 4886714 in class 25 emphasizes the critical role of prior use in trademark law. This case reaffirms that mere filing of a trademark application on a proposed-to-be-used basis does not outweigh established prior use. The decision underscores the necessity for businesses to maintain thorough records of their trademark use to support their claims in potential disputes.

Case Title: Jitendra Kumar Vs The Registrar of Trademarks
Order Date: 28.05.2024
Case No. C.O. (COMM.IPD-TM) 92/2023
Neutral Citation:2024:DHC:4402
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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Macleods Pharmaceuticals Limited Vs Alkem Laboratories Ltd. and another

Even the slightest probability of confusion in medicinal products is unacceptable

Abstract:

This legal analysis examines a trademark dispute involving the plaintiff's mark ‘ALRISTA’ and the defendant's mark ‘ALSITA’. Both marks pertain to pharmaceutical formulations used in diabetes-related treatments. The plaintiff's mark, ‘ALRISTA’, is associated with the drug ‘EPALRESTAT’, used for diabetic neuropathy, while the defendant's mark, ‘ALSITA’, is associated with ‘SITAGLIPTIN’, used for treating Type 2 diabetes.

The primary legal issue revolves around the likelihood of confusion between the two marks and the potential public health implications. This analysis explores the facts, findings, legal implications, ratio decidendi, and concludes with a summary of the case’s significance.

Facts:

The plaintiff has been using the mark ‘ALRISTA’ since 2007 and applied for registration under application No.1585338, in Class 5, on July 30, 2007. This application is currently under opposition. The defendant adopted the mark ‘ALSITA’ in 2021, applied for registration via application No.4969725 on May 10, 2021, and obtained registration on October 31, 2021. The plaintiff claims that the defendant's use of ‘ALSITA’ for a formulation containing ‘SITAGLIPTIN’ is likely to cause confusion with their mark ‘ALRISTA’ used for a formulation containing ‘EPALRESTAT’.

Findings:

Upon analyzing the phonetic and structural similarities between ‘ALRISTA’ and ‘ALSITA’, it is evident that the two marks are remarkably similar. Both marks consist of similar letters arranged in a similar sequence, leading to a high probability of confusion among consumers and healthcare professionals. Considering that both drugs are prescribed to diabetic patients, albeit for different indications, the potential for disastrous consequences if the wrong medication is dispensed is significant. This risk is heightened in the pharmaceutical context, where even minor errors can have severe health implications.

Legal Implications:

The primary legal principle at stake is the doctrine of passing off, which protects the goodwill of a trader from misrepresentation leading to consumer confusion. Since the plaintiff's mark is not yet registered, the action is based on passing off rather than trademark infringement. The court must determine whether the defendant's use of ‘ALSITA’ constitutes a misrepresentation that could lead to consumer confusion, damaging the plaintiff's goodwill and causing potential harm to patients.

Ratio Decidendi:

The key legal precedent applicable here is the necessity to avoid confusion in the pharmaceutical sector due to the potential for serious health risks. The court in *Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.* emphasized that even a remote possibility of confusion in medicinal products warrants restraint. This principle is particularly relevant in this case, where the marks ‘ALRISTA’ and ‘ALSITA’ are used for drugs targeting diabetic patients, albeit for different conditions. Given the phonetic and structural similarities, the likelihood of confusion is substantial.

Concluding Note:

In conclusion, the court's primary concern in this case is the potential for confusion between ‘ALRISTA’ and ‘ALSITA’ and the consequent risk to patient safety. The similarities between the marks, coupled with their use in diabetes-related treatments, underscore the need for careful scrutiny to prevent misprescription or dispensing errors. The legal framework and judicial precedents support the plaintiff's contention that even the slightest probability of confusion in medicinal products is unacceptable. Therefore, it is imperative to restrain the use of the defendant's mark ‘ALSITA’ to safeguard public health and uphold the principles of fair competition and consumer protection.

Case Title: Macleods Pharmaceuticals Limited Vs Alkem Laboratories Ltd. and another
Order Date: 28.05.2024
Case No. CS Comm 86 of 2024
Neutral Citation:2024:DHC:4432
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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539

Laverana GMBH Vs MAC Personal Care Pvt. Ltd.

Admission of Evidence and Section 65B of the Evidence Act, 1872

Introduction:

This article delves into Chamber appeal against an order dated October 16, 2017, issued by the Joint Registrar. The appeal challenges objections raised by the defendants regarding the admissibility of certain documents presented by the plaintiff and the refusal to accept a Certificate under Section 65B of the Evidence Act, 1872.

The Delhi High Court, referencing the judgment in *Eli Lilly & Co. vs. Maiden Pharmaceuticals Ltd.* (2016) 235 DLT 381, has subsequently taken the Certificate on record. This case presents significant questions regarding the procedural and substantive aspects of digital evidence admissibility under Indian law.

Section 65B of the Evidence Act, 1872:

Section 65B addresses the admissibility of electronic records. According to this provision, any information contained in an electronic record, which is printed on paper, stored, recorded, or copied, shall be deemed to be a document admissible in any proceedings, provided certain conditions are met.

Subsection (4) mandates that a certificate, identifying the electronic record containing the statement and describing the manner in which it was produced, must accompany the document. This certificate should be signed by a responsible official, providing assurance of the document's authenticity and the reliability of the electronic process.

Judicial Precedents:

Eli Lilly & Co. Vs. Maiden Pharmaceuticals Ltd. established that the Certificate under Section 65B could be filed along with the affidavit by way of examination-in-chief. This ruling underscores a flexible approach, allowing for the certificate to be submitted at a later stage in the proceedings, ensuring that substantive justice is not hindered by procedural technicalities.

Facts and Procedural History:

The plaintiff, in the present case, attempted to introduce certain documents into evidence, purportedly meeting the requirements of Section 65B. However, the Joint Registrar rejected these documents, citing non-compliance with the statutory prerequisites. Specifically, the Joint Registrar refused to accept the Certificate under Section 65B, which was presented at a later stage. The plaintiff's appeal to the High Court questioned the rigidity of this refusal and sought a more lenient interpretation in line with the Eli Lilly precedent.

Implication:

The Chamber appeal highlights a critical aspect of modern legal proceedings: the admissibility of electronic evidence and the procedural requirements governing it. The Delhi High Court's decision to accept the Certificate under Section 65B of the Evidence Act, 1872, in light of the *Eli Lilly* judgment, signifies a progressive step towards a more flexible and just legal process.

Conclusion:

While statutory compliance is indispensable, courts must also ensure that such compliance does not become a barrier to the administration of justice. The acceptance of Section 65B certificates at a later stage, as upheld in this appeal, exemplifies a balanced and fair approach, promoting the integrity and efficacy of the judicial process.

Case Title: Laverana GMBH Vs MAC Personal Care Pvt. Ltd.
Order Date: 28.02.2018
Case No. CS Comm 122 of 2018
Neutral Citation:NA
Name of Court: Delhi High Court
Name of Hon'ble Judge: Rajiv Sahai Endlaw. 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]
United & United
Email: amitabh@unitedandunited.com
Ph No: 9990389539