GTZ India Pvt. Ltd. Vs Artek Surfins Chemicals Limited

Section 17(2)(b) of the Trade Marks Act, 1999 and anti-dissection rule

The appeal under scrutiny challenges an order dated February 23, 2024, from the learned Commercial Court, which allowed an application by the respondents under Order 39 Rules 1 and 2 of the Civil Procedure Code (CPC). This article critically analyzes the implications of this decision, particularly in the context of Section 17(2)(b) of the Trade Marks Act, 1999 (TM Act), and the anti-dissection rule.

Background of the Case:

The respondents, plaintiffs in the original suit, sought a permanent injunction to restrain Appellant from engaging in the sale, distribution, manufacture, and advertising of products bearing a unique combination of a numeral and an alphabet, which they claimed as their trademark.

The respondents argued that these alpha-numerals, when combined with their primary trademark ‘TECHNOBRITE,’ had become a source identifier for their products. They alleged that GTZ was using these alpha-numerals to trade on their goodwill and pass off their goods as those of the respondents.

Appellant's Defense: Section 17(2)(b) and Anti-Dissection Rule:

Appellant based its defense on Section 17(2)(b) of the TM Act, which states that if a trademark includes any matter common to trade, the registration of the trademark does not confer any exclusive rights over the common matter. They argued that the alpha-numerals were part of the respondents' trademark and could not independently be claimed as exclusive. Furthermore, Appellant invoked the anti-dissection rule, which mandates that trademarks should be considered in their entirety rather than dissected into their component parts for the purpose of determining exclusivity and infringement.

The Court's Decision:

The court, however, dismissed Appellant’s arguments, providing interpretation of the anti-dissection rule and its exceptions. It acknowledged that while trademarks are typically considered as a whole, there are circumstances where a component of the trademark, if recognized as a source identifier, could warrant separate protection. The court noted that the respondents had successfully established that the specific alpha-numerals used in conjunction with ‘TECHNOBRITE’ were unique identifiers of their products. This finding justified an exception to the anti-dissection rule, granting the respondents protection over the alpha-numerals, even though they were not registered as separate trademarks.

Section 17(2)(b) of the TM Act: A Double-Edged Sword?

Section 17(2)(b) aims to prevent monopolization of common trade elements, ensuring that no trader can claim exclusive rights over commonplace or generic components of a trademark. This provision is critical for maintaining competitive fairness in the market. However, the interpretation and application of this section require a delicate balance. The current case highlights a scenario where rigid adherence to this provision could potentially undermine the distinctiveness and goodwill associated with a composite trademark.

The Anti-Dissection Rule: Flexibility in Application:

The anti-dissection rule is foundational in trademark law, reinforcing the principle that trademarks must be viewed in their entirety. This holistic approach prevents unfair parsing of a trademark to challenge its distinctiveness or validity. However, the court's decision in this case underscores an important flexibility within this rule. When a specific component of a composite trademark gains significant recognition as a source identifier, it can, and perhaps should, be afforded individual protection. This flexibility ensures that trademark law remains responsive to market realities and consumer perceptions.

Implications for Trademark Holders and Legal Practitioners:

The ruling provides valuable insights for trademark holders and legal practitioners. It emphasizes the importance of demonstrating the distinctiveness and source-identifying function of trademark components. Trademark holders should consider collecting evidence of consumer recognition and market association of specific elements of their trademarks. For legal practitioners, this case reinforces the necessity of a strategic approach in trademark litigation, balancing the application of statutory provisions with pragmatic considerations of market dynamics and consumer behavior.

Conclusion:

The court's decision to affirm interim injunction in favor of the respondents marks a significant interpretation of Section 17(2)(b) of the TM Act and the anti-dissection rule. By recognizing the distinctiveness of the alpha-numerals within the composite trademark ‘TECHNOBRITE,’ the court has highlighted the importance of market context and consumer perception in trademark protection.

Case Title: GTZ India Pvt. Ltd. Vs Artek Surfins Chemicals Limited

Judgement/Order Date: 31.05.2024

Case No. FAO Comm 60 of 2024

Neutral Citation:2024:DHC:4539-DB

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Vibhu Bakhru and Tara Vitasta Ganju. 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.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Galactus Funware Technology Limited Vs MLP & Ors

Court Grants Ex-Parte Ad-Interim Injunction to Protect ‘MPL’ Trademark in Online Gaming Dispute

In a significant legal development, the Hon'ble Court has granted an ex-parte ad-interim injunction in favor of the Plaintiff, restraining Defendants Nos. 1-4 and their associates from using the Plaintiff's trademarks related to online gaming. This decision follows an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), filed as part of a broader suit seeking a permanent injunction.

Background of the Case

The Plaintiff, owner of the trademarks ‘MPL’ and ‘MOBILE PREMIER LEAGUE,’ along with associated device marks and the trademark ‘MLP,’ filed the application to prevent the Defendants from using these trademarks or any marks deceptively similar to them. The Plaintiff argued that the unauthorized use of these trademarks by the Defendants in the context of online gaming could lead to significant confusion among consumers and damage the Plaintiff's brand reputation.

Court's Findings

Upon reviewing the application, the Court found that the Plaintiff had established a strong prima facie case warranting the issuance of an ex-parte ad-interim injunction. The Court noted the following key points:

Prima Facie Case: The Plaintiff demonstrated sufficient evidence to show that the unauthorized use of their trademarks by the Defendants could cause consumer confusion and harm the Plaintiff's brand.

Balance of Convenience: The Court determined that the balance of convenience favored the Plaintiff. The potential harm to the Plaintiff’s reputation and consumer trust outweighed any inconvenience the injunction might cause to the Defendants.

Irreparable Harm: The Court agreed with the Plaintiff’s contention that they would suffer irreparable harm if the Defendants continued to use the disputed trademarks, as it could lead to a loss of consumer trust and market standing.

Injunction Order

In light of these considerations, the Court issued an ex-parte ad-interim injunction, effective until the next date of hearing. The terms of the injunction are as follows:

Defendants Restrained: Defendants Nos. 1-4 and all individuals acting on their behalf are restrained from using the Plaintiff’s trademarks ‘MPL,’ ‘MOBILE PREMIER LEAGUE,’ and ‘MLP,’ as well as any other marks identical or deceptively similar to the Plaintiff’s trademarks, in connection with online gaming.

Implications and Next Steps

This ruling underscores the Court’s commitment to protecting trademark rights and preventing consumer deception in the rapidly growing online gaming industry. The interim relief granted to the Plaintiff aims to preserve the status quo and prevent any further damage to the Plaintiff’s brand pending the final resolution of the case.

The case will continue to be litigated, with both parties expected to present further evidence and arguments at the next hearing. The outcome of this dispute will be closely watched by stakeholders in the online gaming sector, given its potential implications for trademark enforcement and brand protection.

Case Title: Galactus Funware Technology Limited Vs MLP & Ors

Judgement/Order Date: 27.05.2024

Case No. CS Comm 440 of 2024

Neutral Citation:NA

Name of Court: High Court of Delhi

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.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Federated Hermes Limited Vs John Doe and another

Court Issues Ex-Parte Ad-Interim Injunction Against Fraudulent Use of Federated Hermes Trademarks

In a decisive move to protect both consumers and the reputation of the Federated Hermes brand, the Hon'ble Court has issued an ex-parte ad-interim injunction against unknown individuals or groups identified as Defendant No. 1. This order was granted following compelling evidence presented by the Plaintiff, demonstrating the fraudulent activities conducted by these defendants.

Evidence of Fraudulent Activity

The Plaintiff submitted substantial evidence, including screenshots and other materials, that clearly depict Defendant No. 1’s misuse of the Federated Hermes trademarks. The defendants, operating through various WhatsApp groups, communities, and channels, have been attracting unsuspecting consumers by leveraging the Plaintiff’s well-established reputation. These unauthorized operators have falsely represented themselves as offering financial trading and investment advice, along with platforms for monetary transactions, including purported "VIP accounts."

Misrepresentation and Public Deception

The court noted that the operators and administrators of these groups and channels have not been authorized by the Plaintiff to provide any financial services or advice. By misrepresenting themselves to the public, they have engaged in illegitimate and fraudulent activities designed to deceive unsuspecting consumers into investing substantial sums of money. This fraudulent scheme not only poses a significant risk to public interest but also tarnishes the reputation of the Federated Hermes brand.

Impact on Public and Plaintiff's Reputation

The court acknowledged the detrimental impact of Defendant No. 1’s actions on both the public and the Plaintiff. Consumers, initially attracted by the use of the Federated Hermes trademarks, are likely to associate any financial harm they suffer with the Plaintiff, thereby damaging the Plaintiff’s standing in the market. The court emphasized that such deceptive practices could lead to substantial financial losses for consumers and irreparable harm to the Plaintiff’s reputation.

Court's Ruling

Given the strong prima facie case presented by the Plaintiff and the significant public interest involved, the court concluded that an ex-parte ad-interim injunction was necessary to prevent further harm. The court’s order aims to halt the fraudulent activities of Defendant No. 1 immediately, thereby protecting consumers from potential financial exploitation and safeguarding the integrity of the Federated Hermes trademarks.

Conclusion

This ruling underscores the court’s commitment to protecting both consumers and businesses from fraudulent schemes that exploit well-known trademarks. By granting the ex-parte ad-interim injunction, the court has taken a critical step in curbing deceptive practices and maintaining public trust in reputable brands. The case highlights the importance of vigilance and swift legal action in combating trademark misuse and consumer fraud.

Case Title: Federated Hermes Limited Vs John Doe and another

Judgement/Order Date: 28.05.2024

Case No. CS Comm 454 of 2024

Neutral Citation:NA

Name of Court: High Court of Delhi

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.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Boehringer Ingelheim International GmbH Vs Eris Life Sciences Limited

Court Grants Interim Injunction in Patent Dispute in relation to Indian Patent No. 268846.

In a recent ruling, the Hon'ble Court has granted an interim injunction in favor of the Plaintiff in an ongoing patent dispute, citing the inability of the Defendant to effectively challenge the validity of the Plaintiff's patent. The court's decision was significantly influenced by procedural considerations regarding the expert evidence presented by the Defendant.

Expert Affidavit Excluded from Consideration

The Defendant had relied heavily on an affidavit provided by an expert to support their argument that the Plaintiff's patent was invalid and should be considered vulnerable. However, the court refused to rely on this expert affidavit at this stage of the proceedings. The court noted that the expert's statements had not yet been subjected to cross-examination, a crucial process for evaluating the credibility and reliability of the testimony.

Importance of Cross-Examination

The court underscored the importance of cross-examination in legal proceedings, particularly in cases involving complex technical and scientific issues such as patent validity. Cross-examination allows for a thorough examination of the expert's qualifications, the methodology used, and the conclusions drawn. Without this critical step, the court determined that the expert affidavit could not be given substantial weight.

Defendant's Inability to Prove Patent Vulnerability

With the exclusion of the expert affidavit, the Defendant was left without sufficient evidence to substantiate their claim that the Plaintiff's patent was vulnerable or likely to be invalidated. The burden of proof in such cases lies with the party challenging the patent, and in this instance, the Defendant failed to meet that burden.

Interim Injunction Granted

As a result of the Defendant's failure to provide convincing evidence against the Plaintiff's patent, the court granted an interim injunction in favor of the Plaintiff. This injunction prevents the Defendant from engaging in activities that would infringe on the Plaintiff's patent rights until the final resolution of the case. The court's decision to grant the interim injunction is aimed at maintaining the status quo and preventing potential harm to the Plaintiff's interests during the litigation process.

Implications for Future Proceedings

This ruling highlights the critical role of expert testimony in patent litigation and the procedural safeguards that ensure its reliability. The court's insistence on cross-examination before considering expert affidavits sets a significant precedent for how similar cases may be handled in the future. The interim injunction provides temporary relief to the Plaintiff while the case continues to be litigated, underscoring the importance of robust evidence in challenging patent validity.

The case will proceed to further stages where the evidence can be fully examined, and the parties will have the opportunity to present their arguments in detail. The outcome of this litigation will be closely watched by legal practitioners and businesses alike, given its potential impact on patent enforcement and defense strategies.

Case Title: Boehringer Ingelheim International GmbH Vs Eris Lifesciences Limited

Judgement/Order Date: 30.05.2024

Case No. COMS No. 09 of 2023

Neutral Citation:NA

Name of Court: High Court of Himachal Pradesh at Shimla

Name of Hon'ble Judge:Ajay Goel. 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.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com

Ph No: 9990389539

Colgate Palmolive Company Vs State of NCT of Delhi

Quashing of Summoning order in a Criminal Complaint pertaining to Trademark Dispute

Introduction:

The present petitions under Section 482 of the Code of Criminal Procedure, 1973, seek the setting aside of an order dated April 2, 2012, passed by the learned Metropolitan Magistrate, Patiala House Courts in CC No. 7/2/09. This order summoned the petitioners to face trial in a complaint case initiated by Anchor Health and Beauty Care Pvt. Ltd. The petitioners also seek the quashing of the impugned complaint, alleging that the documents produced by Colgate, particularly regarding their trademark registration, were forged.

Background of the Case:

Anchor Health and Beauty Care Pvt. Ltd. (Anchor) alleged that Colgate, through its Directors, produced a copy of the certificate of registration for Trademark Number 1223059, along with a purported certified copy for use in legal proceedings. Anchor contended that both documents were forged and were never issued by the Trade Marks Registry. The crux of Anchor's complaint revolves around the registration and color combination of Colgate's trademark for "toothpaste, toothpowder, non-medicated mouthwash, and dentifrices," identified as "Colgate Strong Teeth."

Forgery Allegations:

Anchor claimed that Colgate's registration certificate falsely depicted a red and white color combination, which was not granted by the Registrar of Trade Marks. Instead, the original subject matter of Trademark No. 1223059 was a black and white label. Anchor's contention is that the certificate produced by Colgate deviated from the original registration and subsequent advertisements in the Trade Mark Journal.

Document Authenticity:

The Court noted that Anchor did not dispute the issuance of the certified copy for legal proceedings dated February 28, 2006. Additionally, a similar certificate was issued on December 5, 2011, and returned by Colgate shortly thereafter. The issuance under the signature of Jai Prakash, Examiner of Trade Marks, suggested the possibility of clerical errors rather than deliberate forgery.

Procedural Lapses:

The learned Metropolitan Magistrate was criticized for not conducting an inquiry from the Trade Marks Registry to verify the alleged forgery. It was incumbent upon the Magistrate to ascertain the authenticity of the documents from the Registry's records, especially given the serious nature of forgery allegations.

Burden of Proof:

The burden to prove forgery lies with Anchor. Forgery cannot be presumed merely based on discrepancies; it must be established through conclusive evidence. Anchor's claim hinged on the non-conformity of the registration certificate with the Trade Marks Journal's advertisement, which required verification from the Trade Marks Registry.

Adverse Inference:

Anchor argued that Colgate's failure to surrender the original registration certificate, despite an undertaking to the Court, should lead to an adverse inference against Colgate. However, the Court emphasized that forgery must be established by law, and adverse inference alone cannot substantiate the claim.

Critical Analysis:

The present case highlights the importance of procedural diligence in handling allegations of forgery, especially concerning intellectual property rights. The Metropolitan Magistrate's omission to verify the documents from the Trade Marks Registry represents a critical procedural lapse that could undermine the integrity of judicial proceedings. The case underscores the need for meticulous judicial inquiry to prevent miscarriages of justice in intellectual property disputes.

Additionally, the burden of proof is a cornerstone of criminal jurisprudence. Anchor's reliance on adverse inference without substantive evidence could set a precarious precedent if accepted. It is crucial for courts to demand rigorous evidence before attributing criminal liability, ensuring that accusations of forgery are substantiated beyond reasonable doubt.

Conclusion:

The petitions under Section 482 CrPC seeking the quashing of the impugned summoning order in a Criminal Complaint and setting aside the summoning order underscore the complexities in trademark disputes and the imperative of procedural accuracy. The Court's observations point to the necessity of thorough verification from relevant authorities before proceeding with criminal charges.

Case Title:Colgate Palmolive Company Vs State of NCT of Delhi
Judgement/Order Date: 28.05.2024
Case No. CRL.M.C. 1991/2012
Neutral Citation:2024:DHC:4382
Name of Court: Delhi High Court
Name of Hon'ble Judge: Amit Sharma. 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

Bulgari SPA Vs Prerna Rajpal

Delhi High Court Grants Ex-Parte Ad-Interim Injunction in Favor of Plaintiff in SERPENTI Trademark and Copyright Infringement

The Plaintiff, renowned for their luxury brand “BVLGARI” and its iconic “SERPENTI” collection, has secured a crucial ex-parte ad-interim injunction against the Defendant, Amaris Jewels, for alleged trademark and copyright infringement. The Plaintiff, who first adopted the trademark "SERPENTI" in 1940 for wristwatches and later as a hallmark for its jewelry, is the owner and proprietor of several trademarks, including “BVLGARI SERPENTI,” “BVLGARI,” “BVLGARI BVLGARI,” as well as the B.ZERO1 and various SERPENTI variants.

Trademark and Copyright Claims:

The Plaintiff has also asserted their rights over the product known as the “Serpenti Ocean Treasure Necklace.” This necklace is a result of meticulous craftsmanship, starting from a vision expressed in a sketch and then handcrafted into a three-dimensional finished product. Renowned for its artistic quality, the necklace features distinctively placed elements, unique form, shape, and arrangement, resulting in a unique original expression. The Plaintiff claims that the artwork involved in the Serpenti Ocean Treasure Necklace qualifies as an "original artistic work" under the Copyright Act, 1957.

Discovery of Infringement:

In August 2022, the Plaintiff discovered the Defendant's activities through their website, www.amarisjewels.com. Upon reviewing the site, the Plaintiff found that the Defendant had substantially copied the idea, form, manner of depiction, arrangement, and expression of all essential elements of the Plaintiff's original artistic work in the Serpenti Ocean Treasure Necklace. Additionally, the Defendant had copied the pattern, ornamentation, placement, color combination, and overall look and appearance of the Plaintiff’s SERPENTI collection's trade dress.

Court's Prima Facie Findings:

The Court found that the Defendant's "Shield-It Necklace" is visually and structurally similar to the Plaintiff's Serpenti Ocean Treasure Necklace, sharing similar color combinations and placement of elements and ornamentation. The Plaintiff presented a strong prima facie case of copyright infringement, supported by their copyright registration in Italy. Given that India is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, the Plaintiff's copyright registration in Italy is recognized under Section 40 of the Copyright Act, 1957, thereby establishing the Plaintiff as the original author of the artistic work.

Trademark Infringement:

Moreover, the Court agreed that the Defendant's use of the identical mark “SERPENTI” for similar products constitutes a clear case of trademark infringement under Sections 29(2)(c) read with 29(3) of the Trade Marks Act, 1999.

Court's Decision:

The Court concluded that the Plaintiff has made a strong prima facie case in their favor. The Court noted that if an ex-parte ad-interim injunction is not granted, the Plaintiff would suffer irreparable loss, and the balance of convenience lies in favor of the Plaintiff. Consequently, the Court issued an ex-parte ad-interim injunction against the Defendant, restraining them from using the “SERPENTI” mark and from copying the artistic elements of the Plaintiff's Serpenti Ocean Treasure Necklace.

Case Title:Bulgari SPA Vs Prerna Rajpal
Judgement/Order Date: 29.04.2024
Case No. CS(COMM) 341 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