Remedi Healthcare India Pvt Ltd Vs Neurosynaptic Communications Pvt Ltd

Commercial Courts lack extraterritorial jurisdiction; injunctions apply only within India

Introduction:

The case concerns a trademark dispute between Remedi Healthcare India Pvt Ltd and Neurosynaptic Communications Pvt Ltd over the trademark "Remedi" in the medical and healthcare industry. The Commercial Court granted an interim injunction in favor of Neurosynaptic Communications Pvt Ltd, restraining the appellants from using the trademark "Remedi." 

The appellants challenged this order under Section 13(1A) of the Commercial Courts Act, 2015, arguing that the injunction was unwarranted and that their application under Section 124 of the Trade Marks Act, 1999, for challenging the validity of the respondent's trademark, was wrongly dismissed.

Detailed Factual Background:

The appellants, Remedi Healthcare India Pvt Ltd, are an Indian subsidiary of Remedi, Inc., a South Korean company engaged in providing medical equipment and services. 

They claimed to have been using the trademark "Remedi" since 2012 on sophisticated medical devices. The respondent, Neurosynaptic Communications Pvt Ltd, operates in medical diagnostics and telemedicine services and had registered the trademark "Remedi" under Class 10 for diagnostic apparatus in India on 2 April 2019.

The respondent had alerted the appellants about their registered trademark when the appellants incorporated their Indian subsidiary in September 2023. 

However, the appellants continued using the "Remedi" mark. The respondent then filed a commercial suit (Com O.S. No. 111/2024) before the Additional District and Sessions Judge (Commercial Court Division), Bengaluru Rural District, seeking:

A permanent injunction against the appellants' use of "Remedi."

Damages for trademark infringement.

A declaration that the appellants were passing off their goods as those of the respondent.

Detailed Procedural Background:

1. The respondent filed Com O.S. No. 111/2024, claiming trademark infringement and passing off.

2. The Commercial Court granted an interim injunction on 6 July 2024, preventing the appellants from using the "Remedi" trademark.

3. The appellants filed I.A. Nos. 5 and 7 under Section 124 of the Trade Marks Act, 1999, seeking a stay of proceedings to challenge the validity of the respondent’s trademark before the appropriate authority.

4. The Commercial Court dismissed the Section 124 application, holding that the validity challenge was not prima facie tenable and that the interim injunction should remain in effect.

5. The appellants filed the present Commercial Appeal before the Karnataka High Court, challenging both the grant of injunction and the dismissal of their Section 124 application.

Issues Involved in the Case

1. Whether the Commercial Court erred in granting an interim injunction against the appellants' use of "Remedi."

2. Whether the Commercial Court erred in rejecting the appellants’ application under Section 124 of the Trade Marks Act, 1999.

3. Whether the appellants' claim of prior global use of "Remedi" since 2012 justified lifting the injunction.

4. Whether the Commercial Court’s injunction extended beyond India’s territorial jurisdiction.

Detailed Submission of Parties:

Appellants (Remedi Healthcare India Pvt Ltd) argued that:

They had been using the "Remedi" trademark since 2012 globally, whereas the respondent's registration only dates back to 2019.

The respondent's application for trademark registration in Class 10 had been abandoned earlier, making the later grant of registration potentially invalid.

There was no likelihood of confusion between their sophisticated medical devices and the respondent's diagnostic services.

The respondent had approached the court with unclean hands, failing to disclose relevant facts.

The injunction should not apply outside India since the appellants are registered in Korea and have a global presence.

Respondent (Neurosynaptic Communications Pvt Ltd) argued that:

Their trademark "Remedi" was registered in India on 2 April 2019, and they had been using it since 2004.

The appellants incorporated their Indian subsidiary only in September 2023, after being explicitly warned of the trademark conflict.

Under Indian trademark law, registration grants exclusive rights, making the appellants' prior international use irrelevant for operations within India.

Even if a validity challenge was raised under Section 124, Section 124(5) allows the court to grant an injunction while the validity issue is pending.

Detailed Discussion on Judgments Cited by Parties

The appellants relied on:

Google LLC v. MakeMyTrip (India) Pvt Ltd (2023 FAO(OS) COMM Nos. 147/2022 & 148/2022) – Holding that mere registration does not automatically grant exclusivity if prior use can be proven.

Khoday Distilleries Ltd v. Scotch Whisky Association (2008) 10 SCC 723 – Holding that prior user rights prevail over subsequent registration.

Paramount Surgimed Ltd v. Paramount Bed India Pvt Ltd (2017 SCC OnLine Del 8728) – Holding that likelihood of confusion must be assessed based on market realities.

The respondent relied on:

Midas Hygiene Industries (P) Ltd v. Sudhir Bhattia (2004) 3 SCC 90 – Holding that injunctions in trademark cases must be granted to protect registered proprietors.

Neon Laboratories Ltd v. Medical Technologies Ltd (2016) 2 SCC 672 – Holding that registration gives statutory rights over common law claims of prior use.

Wander Ltd v. Antox India P Ltd (1990 Supp SCC 727) – Holding that appellate courts should not interfere with injunctions unless they are perverse or arbitrary.

Detailed Reasoning and Analysis of Judges:

The Karnataka High Court held that:

The respondent had established prior and continuous use of the "Remedi" mark since 2004.

The appellants failed to prove actual commercial use of "Remedi" in India before 2023.

Section 124(5) of the Trade Marks Act allows an injunction even if a validity challenge is raised.

The Commercial Court acted within its jurisdiction in granting the injunction.

However, the injunction cannot extend beyond India, as the Commercial Court lacks extraterritorial jurisdiction.

Final Decision:

The Commercial Appeal was dismissed, and the injunction was upheld for India.

The High Court clarified that the injunction does not apply outside India.

No costs were awarded.

Law Settled in This Case:

Registered trademark holders are entitled to injunctive relief against infringers.

Prior use claims must be substantiated with evidence of commercial use in India.

Courts can grant injunctions even when a validity challenge is pending under Section 124(5).

Commercial Courts lack extraterritorial jurisdiction; injunctions apply only within India.

Case Title: Remedi Healthcare India Pvt Ltd vs Neurosynaptic Communications Pvt Ltd

Date of Order: 31 August 2024

Case No.: Commercial Appeal No. 264 of 2024

Name of Court: High Court of Karnataka at Bengaluru

Name of Judge: Hon’ble Mrs. Justice Anu Sivaram and Hon’ble Mr. Justice G. Basavaraja

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Sri Laxmi Balaji Industries Vs Lakshmi Venkateshwar

Failure to raise validity in an initial written statement does not bar a later challenge if rectification is sought

Introduction:

The case concerns a trademark dispute between M/S Sri Laxmi Balaji Industries and M/S Lakshmi Venkateshwar over the brand name "Swamy Ayyappa Gold." The petitioners sought a stay of proceedings in a civil suit (O.S. No. 3/2012) filed by the respondent, pending the disposal of their rectification application before the Registrar of Trademarks, Chennai. The trial court had dismissed the petitioners' application under Section 124 of the Trade Marks Act, 1999, leading to the present writ petition under Articles 226 and 227 of the Constitution of India.

Detailed Factual Background:

The petitioners, M/S Sri Laxmi Balaji Industries and M/S Sri Laxmi Vinayaka Rice Industries, are engaged in the business of manufacturing and supplying rice products. They claim to have introduced "Swamy Ayyappa Gold" as a brand name in 1998 under the firm Sri Raghavendra Agro Agencies. Subsequently, they applied for trademark registration of "Swamy Ayyappa Gold" and the "Image/Device of Lord Ayyappa" in 2010.

The respondent, M/S Lakshmi Venkateshwar, filed a civil suit (O.S. No. 3/2012) before the Principal District Judge at Ballari, seeking a permanent injunction restraining the petitioners from using the "Swamy Ayyappa Gold" mark. An interim injunction was granted against the petitioners on 1 March 2012 under Order XXXIX Rule 1 & 2 of CPC.

In response, the petitioners filed a rectification application before the Registrar of Trademarks, Chennai, on 24 July 2012, challenging the respondent’s trademark registration. They then applied for a stay of the civil suit under Section 124 of the Trade Marks Act, 1999, arguing that the validity of the respondent's trademark was in question.

The trial court dismissed this application on 30 March 2013, holding that the rectification proceedings were not pending at the time of the suit’s filing and that the petitioners had not initially raised the issue of validity in their written statement. The petitioners challenged this order before the Karnataka High Court, Dharwad Bench.

Detailed Procedural Background:

1. The respondent filed O.S. No. 3/2012 before the Principal District Judge, Ballari, seeking a permanent injunction against the petitioners.

2. The trial court granted an interim injunction on 1 March 2012, restraining the petitioners from using "Swamy Ayyappa Gold."

3. The petitioners filed a rectification application on 24 July 2012 before the Registrar of Trademarks, Chennai.

4. The petitioners filed I.A. No. VII under Section 124 of the Trade Marks Act, 1999, seeking a stay of O.S. No. 3/2012 pending the rectification proceedings.

5. The trial court dismissed I.A. No. VII on 30 March 2013, holding that the rectification application was not pending when the suit was filed and that the petitioners had not initially raised the invalidity plea in their written statement.

6. The petitioners filed the present writ petition before the Karnataka High Court, Dharwad Bench, challenging the dismissal of I.A. No. VII.

Issues Involved in the Case:

1. Whether the trial court erred in dismissing the petitioners' application under Section 124 of the Trade Marks Act, 1999.

2. Whether the pendency of the rectification proceedings before the Registrar of Trademarks warranted a stay of the civil suit.

3. Whether the petitioners had raised the issue of validity of the respondent’s trademark in their written statement.

4. Whether the trial court misinterpreted the provisions of Section 124 of the Trade Marks Act, 1999.

Detailed Submission of Parties:

Petitioners (M/S Sri Laxmi Balaji Industries) argued that:

The trial court erred in dismissing their Section 124 application, as rectification proceedings were indeed pending before the Registrar of Trademarks.

Under Section 124(1)(a)(i), if rectification proceedings are pending, the civil suit should be stayed until their disposal.

The trial court incorrectly interpreted Section 124 by focusing only on Section 124(1)(b), which applies when rectification proceedings are not pending.

The petitioners had raised the issue of invalidity in their written statement, particularly in Paragraphs 20 and 21, challenging the respondent’s claim of prior use.

Respondent (M/S Lakshmi Venkateshwar) argued that:

The petitioners had not challenged the validity of the respondent’s trademark in their initial written statement.

The rectification application was not pending at the time the suit was filed, making Section 124(1)(a) inapplicable.

The petitioners filed the rectification application only after the civil suit had progressed, indicating deliberate delay.

Detailed Discussion on Judgments Cited by Parties:

The Karnataka High Court referred to Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112, which held that:

A civil court must stay proceedings under Section 124 if a rectification petition is pending.

The court has no jurisdiction to decide trademark validity; this power lies solely with the Registrar or the High Court.

The court also cited Whirlpool Corporation v. Registrar of Trade Marks, (1999) 1 SCC 409, which emphasized that:

A trial court must stay an infringement suit if rectification proceedings are pending.

Detailed Reasoning and Analysis of Judge

The Karnataka High Court held that:

The trial court misinterpreted Section 124 by considering only 124(1)(b) and ignoring 124(1)(a).

Since the rectification proceedings were pending, the suit should have been stayed.

The petitioners had raised the issue of invalidity in their written statement, contrary to the trial court’s findings.

The trial court erred in dismissing I.A. No. VII, and its order required interference.

Final Decision:

The writ petition was allowed, and the trial court’s order dated 30 March 2013 was quashed.

The petitioners' application under Section 124 was allowed, and the proceedings in O.S. No. 3/2012 were stayed until the disposal of the rectification petition before the Registrar of Trademarks, Chennai.

Law Settled in This Case:

If rectification proceedings are pending, the infringement suit must be stayed under Section 124(1)(a).

A trial court cannot ignore a valid rectification application and must stay proceedings accordingly.

Trademark validity must be decided by the Registrar or High Court, not a civil court.

Failure to raise validity in an initial written statement does not bar a later challenge if rectification is sought.

Case Title: M/S Sri Laxmi Balaji Industries vs M/S Lakshmi Venkateshwar

Date of Order: 13 September 2024

Case No.: WP No. 77807 of 2013

Neutral Citation: 2024:KHC-D:13121

Name of Court: High Court of Karnataka, Dharwad Bench

Name of Judge: Hon’ble Mr. Justice H.P. Sandesh

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Microsoft Corporation Vs Azure Knowledge Corporation Private Limited

Microsoft Corporation Vs Azure Knowledge Corporation Private Limited: A civil court cannot examine detailed merit of case while deciding the validity of a registered trademark under Section 124 of Trademarks Act 1999

Introduction: The case involves a dispute over the trademark "AZURE" between Microsoft Corporation, the petitioner, and Azure Knowledge Corporation Private Limited, the respondent. Microsoft Corporation filed a commercial civil suit seeking a permanent injunction to restrain the respondent from using the trademark "AZURE", alleging trademark infringement. The respondent contested the validity of Microsoft’s trademark registration and sought rectification of the register under Section 124 of the Trade Marks Act, 1999. The trial court rejected the respondent’s application, leading to the present petition under Article 227 of the Constitution of India before the Gujarat High Court.

Detailed Factual Background:Microsoft Corporation obtained registration of the trademark "AZURE" on 18 June 1998 under Class 9 for computer software. Subsequently, in 2010, Microsoft applied for registration of "AZURE" as a device mark in Classes 16, 37, 38, 41, and 42, which were duly registered.The respondent, Azure Knowledge Corporation Private Limited, applied for registration of "AZURE" on 23 October 2008, which was published for opposition in June 2017. Microsoft filed an opposition against the respondent’s trademark application, and the matter remained pending before the Trademark Registry.Microsoft filed a commercial civil suit on 6 February 2020, alleging that the respondent’s use of "AZURE" constituted infringement and passing off. The respondent filed a written statement on 12 March 2020, denying infringement.The trial court rejected Microsoft’s interim injunction application on 14 March 2020. On 19 November 2022, the respondent filed an amendment application in its written statement to include a challenge to the validity of Microsoft's trademark.The trial court initially rejected the amendment application on 4 May 2023, but the Gujarat High Court set aside that order in Special Civil Application No. 9620 of 2023 on 9 August 2023, allowing the amendment.Following this, the respondent filed an application under Section 124 of the Trade Marks Act, 1999, seeking the framing of an issue on the validity of Microsoft's trademark registration and an adjournment of the suit to enable it to file a rectification petition before the High Court. The trial court rejected the Section 124 application on the grounds that:Microsoft had been using the "AZURE" trademark for 25 years, and the respondent was aware of this usage.The respondent failed to raise the issue of validity when filing its written statement in 2020.The rectification application was not pending before any forum:This led the respondent to challenge the trial court’s order before the Gujarat High Court under Article 227 of the Constitution of India.

Detailed Procedural Background:1. Microsoft filed a commercial civil suit on 6 February 2020, claiming trademark infringement and seeking a permanent injunction against the respondent.2. The respondent filed a written statement on 12 March 2020, without raising the issue of the validity of Microsoft’s trademark registration.3. The trial court rejected Microsoft's interim injunction application on 14 March 2020.4. The respondent filed an amendment application on 19 November 2022 to introduce a challenge to the validity of Microsoft’s registration.5. The trial court rejected the amendment application on 4 May 2023, but the Gujarat High Court allowed it on 9 August 2023.6. The respondent filed an application under Section 124 of the Trade Marks Act, 1999, seeking to frame an issue on the validity of Microsoft's trademark and adjourn the suit for rectification proceedings.7. The trial court rejected the Section 124 application, holding that the respondent’s plea was not prima facie tenable.8. The respondent filed the present Special Civil Application before the Gujarat High Court under Article 227, challenging the rejection of its Section 124 application.

Issues Involved in the Case:1. Whether the trial court erred in rejecting the respondent’s application under Section 124 of the Trade Marks Act, 1999?2. Whether the respondent’s plea challenging the validity of Microsoft’s trademark was prima facie tenable?3. Whether the trial court exceeded its jurisdiction by conducting a detailed examination of the merits of the validity challenge at the Section 124 stage?4. Whether the respondent was estopped from challenging Microsoft’s trademark due to delay?

Respondent (Azure Knowledge Corporation Private Limited) argued that:Microsoft had wrongly obtained registration of "AZURE" for a broad range of goods and services without genuine use.Microsoft’s registration in multiple classes created an unfair monopoly, restricting legitimate businesses from using "AZURE" for unrelated services.The Gujarat High Court, in Special Civil Application No. 9620 of 2023, had already allowed the respondent to amend its written statement, showing that its plea was prima facie tenable.Under Section 124 of the Trade Marks Act, 1999, the trial court was only required to examine whether the validity challenge was arguable, not to decide the merits of the claim.

Petitioner (Microsoft Corporation) argued that:Microsoft had continuously used the "AZURE" trademark since 1998, establishing significant goodwill and reputation.The respondent delayed raising the validity issue until 2022, despite knowing about Microsoft's trademark for over 25 years.The respondent’s application under Section 124 was an attempt to delay the infringement suit and should be dismissed.

Detailed Discussion on Judgments Cited by Parties:The Gujarat High Court relied on the Supreme Court's decision in Patel Field Marshal Agencies Vs. P.M. Diesels Ltd., (2018) 2 SCC 112, which held that:A civil court must only assess whether a validity challenge is prima facie tenable before staying the infringement suit.The trial court has no jurisdiction to decide the validity of a registered trademark; this power is exclusively vested in the High Court or Registrar.The court also referred to Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd., (2018) 9 SCC 183, which reiterated that:A proprietor cannot monopolize an entire class of goods if the trademark is not used for all goods in that class.

Detailed Reasoning and Analysis of the Judge:The Gujarat High Court held that:The trial court wrongly examined the merits of the validity challenge, instead of simply determining whether it was prima facie tenable.The respondent had raised an arguable issue, meaning the trial court should have framed an issue and stayed the suit under Section 124.Delay in raising a validity challenge does not bar an otherwise genuine claim.

Final Decision:The Gujarat High Court set aside the trial court’s order and directed it to:1. Frame an issue on the validity of Microsoft's trademark.2. Stay the infringement suit for three months, allowing the respondent to file a rectification petition before the appropriate forum.

Law Settled in This Case:A civil court cannot examine detailed merit of case while deciding the validity of a registered trademark under Section 124 of Trademarks Act 1999.A prima facie tenable challenge under Section 124 must be allowed. Delay alone does not bar a rectification plea.Framing of an issue and staying the suit is mandatory if a validity challenge is arguable.

Case Title: Microsoft Corporation vs Azure Knowledge Corporation Private Limited

Date of Order: 22 July 2024

Case No.: R/Special Civil Application No. 5927 of 2024

Name of Court: High Court of Gujarat at Ahmedabad

Neutral Citation:2024:GUJHC:37685-DB

Name of Judge: Hon’ble Chief Justice Mrs. Justice Sunita Agarwal and Hon’ble Mr. Justice Aniruddha P. Mayee

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Woltop India Pvt. Ltd. Vs Union of India

Woltop India Pvt. Ltd. Vs Union of India: Rectification petitions under Sections 47 & 57 of the Trade Marks Act, 1999, must be filed before the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry

Introduction: The case revolves around a trademark rectification dispute in which the petitioner, M/S Woltop India Pvt. Ltd., sought the transfer of its pending rectification petitions from the Registrar of Trademarks, Ahmedabad, to the Intellectual Property Division (IPD) of the Madras High Court.The petitioner argued that since a trademark infringement and passing off suit was already pending before the Madras High Court, the rectification proceedings should also be transferred to avoid conflicting decisions and ensure expeditious disposal.

The respondent, M/S Ace Assets, contested this claim, arguing that the appropriate jurisdiction for rectification proceedings was the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry office, which in this case was the Gujarat High Court.

The court had to decide whether it had the authority to transfer the rectification petitions under Article 226 of the Constitution of India and whether it had jurisdiction under Sections 47 & 57 of the Trade Marks Act, 1999 to entertain rectification petitions for trademarks registered with the Ahmedabad Trade Marks Registry.

Detailed Factual Background:The petitioner, M/S Woltop India Pvt. Ltd., had filed a civil suit (C.S.(Comm.Div.) No. 199 of 2023) before the Madras High Court against several defendants, including the fifth respondent, M/S Ace Assets, alleging trademark infringement and passing off.In parallel, the petitioner had also filed two rectification petitions (Nos. 272370 & 272372) before the Registrar of Trademarks, Ahmedabad, seeking the cancellation of trademarks registered under Nos. 4376003 (Class 27) and 4545395 (Class 35).

On 30 May 2024, the petitioner formally requested the Registrar of Trademarks, Ahmedabad, to transfer the rectification petitions to the IPD of the Madras High Court under Section 125(2) of the Trade Marks Act, 1999, but received no response.

Detailed Procedural Background:Following the lack of response from the Registrar, the petitioner filed the present writ petitions before the Madras High Court, seeking a Writ of Mandamus directing the Registrar of Trademarks, Ahmedabad, to transfer the rectification petitions to the Madras High Court.The maintainability of the writ petitions was challenged, prompting the petitioner’s counsel to argue that:Consolidation of proceedings was necessary under Rule 14(1) of the Madras High Court Intellectual Property Division Rules, 2023 (MHC IPD Rules) to facilitate the expeditious disposal of both the rectification petitions and the suit.The Supreme Court could not be approached under Article 139A of the Constitution of India or Section 25 of the Code of Civil Procedure, 1908 (CPC) since neither provision applied to rectification petitions.The Madras High Court could exercise jurisdiction under Article 226 of the Constitution, as part of the cause of action arose within its jurisdiction.

Issues Involved in the Case: 1. Whether the Madras High Court had jurisdiction under Sections 47 & 57 of the Trade Marks Act, 1999 to entertain rectification petitions for trademarks registered with the Ahmedabad Trade Marks Registry.2. Whether the Madras High Court could transfer the rectification petitions pending before the Registrar of Trademarks, Ahmedabad, to itself.3. Whether Article 226 of the Constitution conferred jurisdiction over the Ahmedabad Registrar, even though the rectification petitions originated in Gujarat.4. Whether consolidation of proceedings was permissible under Rule 14(1) of the MHC IPD Rules, 2023.

Petitioner (M/S Woltop India Pvt. Ltd.) argued that:Since a civil suit was already pending before the Madras High Court, it was necessary to transfer the rectification proceedings for a comprehensive adjudication.Rule 14(1) of the MHC IPD Rules, 2023, allowed consolidation of proceedings before the same forum to avoid conflicting decisions.Since the Registrar of Trademarks had failed to act on their transfer request, the petitioner was justified in seeking judicial intervention.

Respondent (M/S Ace Assets) argued that:The rectification petitions were filed before the appropriate Trade Marks Registry (Ahmedabad) based on Rule 4 of the Trade Mark Rules, 2017, which determines jurisdiction based on the principal place of business of the trademark owner (in this case, Surat, Gujarat).Only the Gujarat High Court had appellate jurisdiction over the Ahmedabad Trade Marks Registry, meaning the Madras High Court could not exercise jurisdiction under Sections 47 & 57 of the Trade Marks Act, 1999.If the petitioner was aggrieved by the Registrar's inaction, it should have approached the Gujarat High Court instead of filing a writ petition in Madras.

Detailed Discussion on Judgments Cited by Parties:The court analyzed previous judgments on High Court jurisdiction over rectification petitions, including:

1. Adiuvo Diagnostics Private Limited v. University Health Network, 2024 SCC OnLine Mad 185 – Held that jurisdiction under Article 226 is not determined solely by the location of the Patent Office.

2. The Hershey Company v. Dilip Kumar Bacha, MANU/DE/0904/2024 – Confirmed that rectification petitions must be filed in the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry.

3. Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma, 2023 SCC OnLine Del 5409 – Suggested a broader interpretation of jurisdiction, but this approach was not followed by the Madras High Court.

Detailed Reasoning and Analysis of Judge: The court held that:Sections 47 & 57 of the Trade Marks Act, 1999, explicitly refer to "the High Court", meaning the High Court with appellate jurisdiction over the Trade Marks Registry that made the entry.Ahmedabad Trade Marks Registry had jurisdiction over the disputed trademarks, meaning the Gujarat High Court was the appropriate forum.Allowing any High Court to entertain rectification petitions would create jurisdictional chaos, with multiple courts passing conflicting orders.Rule 14(1) of the MHC IPD Rules, 2023, did not override the Trade Marks Act and could not be used to transfer proceedings.

Final Decision:The writ petitions were dismissed, and the court directed the petitioner to approach the Gujarat High Court for appropriate relief. No costs were imposed.

Law Settled in This Case:Rectification petitions under Sections 47 & 57 of the Trade Marks Act, 1999, must be filed before the High Court exercising appellate jurisdiction over the relevant Trade Marks Registry.The use of "the High Court" in the Trade Marks Act signifies a specific High Court, not any High Court.Consolidation under Rule 14(1) of the MHC IPD Rules, 2023, cannot override statutory jurisdiction under the Trade Marks Act.Article 226 jurisdiction cannot be used to bypass territorial limits imposed by the Trade Marks Act.

Case Title: M/S Woltop India Pvt. Ltd. vs Union of India

Date of Order: 20 February 2025

Case No.: W.P.(IPD) Nos. 30 & 32 of 2024

Neutral Citation: 2025:MHC:485

Name of Court: High Court of Judicature at Madras

Name of Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Godfrey Phillips India Limited Vs ITC Limited and Anr

Filing Application seeking condonation within the limitation period does not exempt a party from showing sufficient cause

Introduction: The case involved rectification petitions filed by Godfrey Phillips India Limited against ITC Limited, seeking cancellation of certain trademark registrations. These petitions were previously dismissed for default on 11 November 2024. The present applications were filed to recall the dismissal orders, alleging that the petitioner was unaware of the proceedings due to non-receipt of court notices. The respondent, ITC Limited, contested the recall applications, arguing that the petitioner had been duly served and was attempting to mislead the court.

Detailed Factual Background: Godfrey Phillips India Limited had initiated rectification proceedings against ITC Limited’s trademarks before the Intellectual Property Division of the Calcutta High Court. These petitions were part of a broader trademark dispute between the two parties, which also involved civil suits before the Bombay High Court and opposition proceedings before the Trademark Registry. The rectification petitions were dismissed for default on 11 November 2024 after the petitioner failed to appear. The petitioner later claimed that it only discovered the dismissal during a review of another ongoing case before the Delhi High Court. It contended that it never received court notices regarding the listing of the rectification petitions and sought recall of the dismissal orders.

ITC Limited opposed the recall applications, arguing that: 1. The petitioner had full knowledge of the pending proceedings.  2. The petitioner was duly served on 11 May 2023. 3. The matter had appeared multiple times in the daily cause list, proving that the petitioner had ample notice.

Detailed Proceeding:The rectification petitions were first listed on 10 April 2023, when the court directed the issuance of notices to both parties. The court registry confirmed that notices were served on 11 May 2023. The cases were subsequently listed multiple times in the daily cause list on:6 April 2023,10 April 2023,4 August 2023,1 September 2023,6 October 2023,1 December 2023,5 January 2024,2 February 2024,1 March 2024.Despite this, the petitioner failed to appear, leading to dismissal for default on 11 November 2024.

The petitioner filed recall applications in early 2025, arguing that:It had no knowledge of the proceedings.It never received court notices.The recall applications were filed within the limitation period, so no further justification was required.

Issues Involved in the Case:1. Whether the petitioner was duly served with court notices.2. Whether the dismissal for default should be recalled.3. Whether the petitioner’s explanation of lack of knowledge was credible.4. Whether the recall application could be allowed without showing sufficient cause.

Petitioner (Godfrey Phillips India Limited) submitted that:It only became aware of the dismissal while reviewing files for another case before the Delhi High Court.No notice of the April 2023 listing was received from either its advocates or the court registry.Several trademark-related disputes were pending between the parties, including civil suits before the Bombay High Court and opposition proceedings before the Trademark Registry.Since the recall applications were filed within the limitation period, the court should automatically grant relief without requiring any further justification.

Respondent (ITC Limited) submitted that:The petitioner was duly served on 11 May 2023, as per certified records from the court registry.The case had been listed multiple times in the daily cause list, proving that the petitioner had knowledge of the proceedings.The recall applications contained false statements and attempted to mislead the court.Granting the recall applications would reward negligence and dishonesty.

Detailed Discussion on Judgments Cited by Parties:The court referred to legal principles on recalling orders and dismissal for default, emphasizing that:An application for recall must be carefully drafted and should not assume automatic approval.Sufficient cause must be shown for seeking recall, even if the application is filed within the limitation period.False or misleading explanations disentitle the applicant from relief.The court compared the petitioner’s claims against the official records, which confirmed that:Notices were duly served on 11 May 2023.The matter was listed multiple times.The petitioner’s claim of non-receipt of notices was false.The court rejected the petitioner’s argument that no justification was required for recall and held that:Filing Application seeking condonation within the limitation period does not exempt a party from showing sufficient cause.The court records clearly showed that the petitioner was served and had ample notice of the proceedings.The petitioner knowingly made false statements to mislead the court.The petitioner, being a large multinational company, had a higher duty of care in conducting litigation.Allowing the recall applications would set a bad precedent by rewarding negligence and dishonesty.

Final Decision:The court dismissed all three recall applications and refused to reinstate the rectification petitions. No costs were imposed.

Law Settled in This Case:A recall application must demonstrate sufficient cause; mere filing within the limitation period is not enough.Falsely claiming non-receipt of notices disentitles a party from relief.Official court records will prevail over unsubstantiated claims by litigants.Multinational companies have a greater duty of care in conducting litigation and cannot evade procedural requirements.Repeated non-appearance, despite multiple listings, is sufficient ground for dismissal for default.Granting recall in such cases would set a dangerous precedent by encouraging negligence in legal proceedings.

Case Title: Godfrey Phillips India Limited Vs ITC Limited and Anr

Date of Order: 21 February 2025

Case No.: IPDATM/120/2023

Name of Court: High Court of Calcutta 

Name of Judge: Hon’ble Mr. Justice Ravi Krishan Kapur

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Arcturus Therapeutics Inc Vs Assistant Controller of Patents and Designs

Patent examiners must issue reasoned orders considering all objections, responses, and oral submissions before rejecting an application

Brief Facts of the Case:

The appellant, Arcturus Therapeutics Inc, filed an Indian patent application (No. 201617019205) titled "Ionizable Cationic Lipid for RNA Delivery" as a national phase application under the Patent Cooperation Treaty (PCT) on 2 June 2016.  The First Examination Report (FER) was issued on 15 February 2019, raising objections under Section 2(1)(ja) (lack of inventive step) and Sections 3(d) and 3(h) (non-patentability) of the Patents Act, 1970. The appellant filed a response on 13 August 2019. Two hearings were conducted, on 29 March 2022 and 2 May 2023, after which the appellant was allowed to file additional written submissions by 17 June 2023. However, the appellant filed the submissions late, on 25 July 2023, by which time the Assistant Controller of Patents had already passed an order rejecting the patent under Section 15 of the Patents Act, 1970 due to the delay in submission.

Brief Issue:Whether the Assistant Controller of Patents was justified in rejecting the patent application solely on procedural grounds without examining the merits of the invention.

Reasoning of the Court:The Court noted that the impugned order did not examine the merits of the case and only rejected the patent based on procedural delay in filing additional written submissions. Patent rights are valuable rights, and their rejection based on a mere procedural lapse could have serious consequences for the applicant. The Assistant Controller should have passed a reasoned order considering: The objections in the FER, The response submitted by the appellant on 13 May 2022,Oral submissions made during the hearings, In similar situations, courts have taken a pragmatic approach to ensure that substantive patentability is evaluated rather than rejecting applications on technicalities, Given the peculiar facts of the case, natural justice principles required that the appellant’s patent application be reconsidered on merits.

Decision:The Court set aside the impugned order and remanded the case back to the Assistant Controller of Patents for fresh consideration on merits. A new hearing notice was to be issued, and the application was to be decided based on the existing record, without requiring any further submissions.

Law Point Settled:Patent applications should not be rejected solely on procedural grounds if substantive examination has not been conducted. Natural justice requires that patent applications be decided on their merits, especially where valuable patent rights are involved. Patent examiners must issue reasoned orders considering all objections, responses, and oral submissions before rejecting an application.

Case Title:Arcturus Therapeutics Inc Vs Assistant Controller of Patents and Designs

Date of Order: 24 February 2025

Case Number: C.A. (COMM.IPD-PAT) 40/2023

Neutral Citation:2025:DHC:1361

Name of Court: High Court of Delhi at New Delhi

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

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Sakthi Oil Mills Vs The Registrar of Trademarks

Renewal of Trademarks Beyond the Statutory Period: Judicial Recognition of Proprietors' Rights

Legal Principle:
If a trademark remains on the register and no steps have been taken for its removal, the registered proprietor may still seek renewal even after the expiration of the statutory period.

Brief Facts of the Case
The petitioner, M/S Sakthi Oil Mills, was the registered proprietor of the trademark "THENALEE," registered under Trade Mark No. 1133971 in Class 29. The mark was initially registered on September 4, 2006, and was subsequently renewed in 2012, extending its validity up to September 17, 2022.

Upon the expiry of the renewal period, the petitioner sought to renew the trademark in October 2024. However, the Registrar of Trademarks denied the renewal request, citing delay beyond the prescribed statutory period. Aggrieved by this decision, the petitioner approached the Hon’ble High Court through a writ petition, seeking a Writ of Mandamus directing the Registrar to allow the renewal.

Key Issue for Determination
The primary question before the Court was whether the petitioner is entitled to seek renewal of the trademark despite the expiration of the statutory renewal period, particularly in light of the Registrar’s failure to take steps for its removal from the register.

Reasoning and Legal Analysis
The Court undertook a thorough analysis of the Trade Marks Act, 1999, relevant judicial precedents, and the factual matrix of the case before arriving at its decision.

The Court noted that as of October 29, 2024, the impugned trademark had not been removed from the register. Since the mark was still officially recorded, the proprietor retained the right to seek renewal, as the Registrar had not exercised its authority to strike off the trademark.

The petitioner relied on the ruling in A. Abdul Karim Sahib and Sons v. Assistant Registrar of Trade Marks, 1973 SCC OnLine Mad 390, where the Madras High Court’s Division Bench affirmed that if a mark remains on the register, the proprietor can apply for renewal even after the expiration period. The Court also referred to Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks, 2024:MHC:3109; 2024 (100) PTC 25 (Mad), where it was reiterated that failure by the Registry to remove an expired mark enables the proprietor to invoke the right to renewal.

The respondent (Registrar of Trademarks) argued that a statutory notice (Form RG-3/13549385) was issued to the petitioner on May 26, 2022, informing them of the impending expiration. However, the Court observed that mere issuance of a notice does not amount to removal of the mark from the register. Since the Registry had failed to take active steps for striking off the trademark, the petitioner could not be deprived of the right to seek renewal.

Recognizing that renewal beyond the prescribed period could set a problematic precedent, the Court sought to balance judicial discretion with procedural discipline. The Court ruled that renewal should be permitted but subject to conditions that discourage laxity in the future.

Court’s Decision
The Hon’ble High Court allowed the writ petition and issued the following directions. The Registrar of Trademarks was directed to permit the petitioner to file a renewal application within 30 days from the date of the order. As a condition for renewal, the petitioner was required to pay ₹20,000 as costs to the Adyar Cancer Institute, Chennai, within two weeks. If the petitioner faced technical difficulties in accessing the online renewal portal, the Registrar was instructed to accept a physical renewal application to ensure procedural fairness.

Law Point Settled by the Court
This ruling reinforces several key legal principles regarding trademark renewal. If a trademark remains on the register and no formal steps for its removal have been taken, the proprietor retains the right to seek renewal, even beyond the statutory period. The Trade Marks Registry has an obligation to actively remove expired marks. Failure to do so allows the proprietor to assert the right to renewal. The issuance of an expiry notice alone does not extinguish the proprietor’s right to renewal if the mark has not been struck off from the register. Courts possess discretionary authority to permit delayed renewal, albeit with conditions to ensure compliance with statutory timelines in the future.

Conclusion
This judgment underscores the significance of proactive regulatory action by the Trade Marks Registry. It also safeguards the rights of trademark proprietors by ensuring that procedural delays by the Registry do not unduly prejudice legitimate renewal claims. While reinforcing the importance of adhering to statutory deadlines, the Court has also recognized the necessity of judicial flexibility in cases where procedural lapses occur on the part of the authorities.

Case Title:  Sakthi Oil Mills Vs The Registrar of Trademarks

Date of Order: 25 February 2025

Case Number: W.P.(IPD) No.38 of 2024

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Aurobindo Pharma Limited Vs The Registrar of Trade Marks

The Trade Marks Registry must issue an expiry notice to the registered proprietor, before removing it from register.

Brief Facts of the Case:

The petitioner, Aurobindo Pharma Limited, had registered the trademark "ENRIL" under Trade Mark No. 636467 in Class 5. The application for registration was filed on 10 August 1994, and the registration certificate was issued on 18 July 2018. The petitioner later attempted to renew the registration, but the online system indicated that renewal was not possible due to the delay exceeding one year beyond expiry.The petitioner argued that the Trade Marks Registry failed to issue a mandatory expiry notice six months before the expiration date. Since the trademark was still shown as "registered" on the official database, the petitioner sought a Writ of Mandamus directing the Registrar to permit renewal.

Brief Issue:Whether the petitioner is entitled to renewal of the trademark despite the statutory deadline for renewal having passed, particularly in light of the alleged failure of the Registrar to serve an expiry notice.

Reasoning of the Court:The Court referred to the official trademark status as of 7 November 2024, which confirmed that the trademark had not been removed from the register.The respondent (Trade Marks Registry) failed to provide evidence that an expiry notice was properly served on the petitioner.

The Court relied on Jaisuryas Retail Ventures Private Limited v. The Registrar of Trade Marks, 2024:MHC:3109; 2024(100) PTC 25 (Mad), which held that if the Registry does not serve an expiry notice and does not remove the mark, the proprietor may seek renewal.The Court also cited P. Pandiyan v. The Registrar of Trade Marks (Order dated 13.02.2025 in W.P.(IPD) No.36 of 2024), where a similar situation arose where the registration certificate was issued after the expiry of the original term, and renewal was allowed.Since no steps had been taken to remove the trademark, the Court concluded that the petitioner could apply for renewal, subject to payment of renewal fees.

Decision:

The writ petition was allowed, and the Court directed the Registrar of Trade Marks to provide access to the online portal for filing a renewal application. Alternatively, the petitioner was permitted to submit a physical renewal application with the requisite renewal fees. No costs were imposed.

Law Point Settled:

If a trademark remains on the register and no steps have been taken for its removal, renewal may be permitted even after the statutory period lapses.The Trade Marks Registry must issue an expiry notice to the registered proprietor, and failure to do so can justify discretionary relief in favor of the applicant.A proprietor can seek renewal despite delays, provided the mark has not been formally removed.

Case Title: Aurobindo Pharma Limited Vs The Registrar of Trade Marks

Date of Order: 25 February 2025

Case Number: W.P.(IPD) No.34 of 2024

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Designo Lifestyle Solutions Vs The Registrar of Trade Marks

Assignee of Trademark must apply for recording the assignment within a reasonable time, but failure to do so does not extinguish renewal rights.

Brief Facts of the Case:

The petitioner, Designo Lifestyle Solutions, acquired the trademark "SO FA, SO GOOD" (Trade Mark No. 1775649, Class 99) through an assignment deed dated 30 September 2010. However, the petitioner did not apply for recording the assignment until 2024. The trademark was due for renewal on 19 January 2019, and the Trade Marks Registry issued an expiry notice on 27 January 2018 to the predecessor-in-interest, rather than the petitioner. The petitioner sought renewal in 2024, but the Registrar of Trade Marks refused on the ground that renewal was not permissible beyond a one-year delay.

Brief Issue:

Whether the petitioner was entitled to renewal of the trademark despite the expiration of the statutory renewal period and the failure to register the assignment in a timely manner.

Reasoning of the Court

The Court noted that the trademark had not been removed from the register.

The Trade Marks Registry failed to provide evidence that the expiry notice was properly served on either the predecessor-in-interest or the petitioner.

The petitioner was indeed obligated to apply for recording the assignment in a reasonable timeframe, but this delay alone did not justify denying renewal.

Relying on Jaisuryas Retail Ventures v. The Registrar of Trade Marks, 2024:MHC:3109; 2024(100) PTC 25 (Mad), the Court held that if a trademark remains on the register and no steps for removal have been taken, renewal should be permitted with reasonable conditions.

Decision:

The Court allowed the writ petition and directed the Registrar of Trade Marks to enable the petitioner to file a renewal application within 30 days, subject to payment of ₹20,000 as costs to the Adyar Cancer Institute.

Law Point Settled:

If a trademark remains on the register without removal proceedings, renewal may be allowed even after the statutory period lapses.

The Trade Marks Registry must serve expiry notices to the registered proprietor, and failure to do so can justify discretionary relief.

An assignee must apply for recording the assignment within a reasonable time, but failure to do so does not extinguish renewal rights.

Designo Lifestyle Solutions Vs The Registrar of Trade Marks

Date of Order: 25 February 2025

Case Number: W.P.(IPD) No.35 of 2024

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Phonographic Performance Limited Vs. Azure Hospitality Private Limited

Phonographic Performance Limited Vs. Azure Hospitality Private Limited :Section 33 of the Copyright Act does not bar owners from issuing licenses independently.

Case Title: Phonographic Performance Limited Vs. Azure Hospitality Private Limited & Ors.

Date of Order: March 03, 2025

Case No.: CS(COMM) 714/2022

Neutral Citation: 2025:DHC:1367

Name of Court: High Court of Delhi

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

Introduction: The case revolves around the alleged infringement of copyright by Azure Hospitality Private Limited and its associated entities by playing copyrighted sound recordings owned by Phonographic Performance Limited (PPL) without obtaining the necessary licenses. PPL, as an assignee of public performance rights from various record labels, sought a permanent injunction and damages against Azure Hospitality for unauthorized usage of its copyrighted works.

Detailed Factual Background: PPL is a company registered under the Companies Act, 2013, and is engaged in issuing licenses for the public performance of sound recordings. PPL has been assigned public performance rights by multiple music labels, making it the exclusive entity to license such rights.

Azure Hospitality operates multiple restaurants and bars across India, including brands such as 'Mamagoto,' 'Dhaba,' and 'Sly Granny.' PPL conducted investigations at various outlets of Azure Hospitality on multiple occasions and found that the defendants were playing PPL’s copyrighted sound recordings without obtaining a license. PPL subsequently issued a cease-and-desist notice on July 20, 2022, which the defendants ignored. Further inspections on October 12, 2022, confirmed continued infringement, leading to the present lawsuit.

Detailed Procedural Background: PPL initially filed a commercial suit against Azure Hospitality before the Bombay High Court (Suit No. 29686 of 2021), but later withdrew it without liberty to refile. In the present suit, PPL sought a permanent injunction restraining the defendants from playing its copyrighted works without a license, along with damages. On October 14, 2022, an ex-parte ad interim injunction was granted in favor of PPL, restraining Azure Hospitality from playing the copyrighted sound recordings.

Azure Hospitality subsequently filed an application under Order XXXIX Rule 4 CPC, seeking vacation of the ex-parte injunction, arguing that PPL lacked standing as it was not a registered copyright society.

Issues Involved in the Case:

1. Whether PPL, as an assignee of public performance rights, had the right to license and enforce copyrights in sound recordings?

2. Whether the suit was barred under Order XXIII Rule 1(4)(b) CPC due to the withdrawal of the previous suit before the Bombay High Court?

3. Whether PPL was acting as an owner or as a copyright society, and if the latter, whether it was barred from issuing licenses under Section 33 of the Copyright Act?

4. Whether Azure Hospitality’s use of PPL’s sound recordings without a license constituted copyright infringement?

5. Whether PPL's omission of the Bombay suit in its pleadings amounted to material suppression?

Detailed Submission of Parties:

Submissions on Behalf of the Plaintiff (PPL):

1. PPL, being an assignee of public performance rights, is the owner under Section 18 of the Copyright Act and has exclusive rights to issue licenses.

2. Section 33 of the Copyright Act applies to copyright societies, whereas PPL operates as an owner and can grant licenses under Section 30.

3. PPL had filed the present suit based on a fresh cause of action, arising from the continuous unauthorized use of copyrighted sound recordings, and hence, was not barred by the withdrawal of the Bombay suit.

4. Precedents such as Novex Communication v. Lemon Tree Hotels and Phonographic Performance Ltd. v. Canvas Communication support the right of an owner to issue licenses and enforce copyrights.

Submissions on Behalf of the Defendants (Azure Hospitality):

1. PPL was conducting the business of issuing licenses as a copyright society without proper registration, violating Section 33 of the Copyright Act.

2. The present suit was barred under Order XXIII Rule 1(4)(b) CPC due to PPL’s withdrawal of a similar suit in the Bombay High Court.

3. The interpretation in Novex Communications v. DXC Technology by the Madras High Court supported the argument that only a registered copyright society can grant licenses.

4. PPL had failed to establish irreparable injury, as any damages could be compensated monetarily.

Detailed Discussion on Judgments Cited and Their Context:

1. Novex Communication v. Lemon Tree Hotels (2019 SCC OnLine Del 6568) – Held that an owner of copyright can issue licenses independently of a copyright society.

2. Phonographic Performance Ltd. v. Canvas Communication – Reinforced that copyright owners retain licensing rights unless they have assigned them exclusively to a copyright society.

3. Novex Communications v. Trade Wings Hotel (2024 SCC OnLine Bom 252) – Affirmed that an assignee of public performance rights has ownership and can issue licenses.

4. Novex Communications v. DXC Technology (2021 SCC OnLine Mad 6266) – Contrarily held that copyright licensing can only be done by a registered copyright society.

5. Leopold Café v. Novex Communications (2014 SCC OnLine Bom 4801) – Restrained Novex from issuing licenses without disclosing agency status, but not applicable as PPL acted as an owner.

6. Entertainment Network India v. Super Cassette Industries (2008) 13 SCC 30 – Stressed balancing public interest and copyright protection but was related to compulsory licensing.

Detailed Reasoning and Analysis of the Judge:

1. The Bombay suit withdrawal did not bar the present suit as it was based on a fresh cause of action due to ongoing infringement.

2. PPL, as an assignee of public performance rights, became the owner under Section 18 of the Copyright Act and could issue licenses under Section 30.

3. The argument that PPL needed to be a registered copyright society to issue licenses was rejected, in line with Novex v. Lemon Tree and Trade Wings judgments.

4. PPL’s failure to disclose the Bombay suit was not material suppression since it was withdrawn without liberty to refile.

5. Azure Hospitality’s continued use of copyrighted works without a license amounted to prima facie infringement under Section 51 of the Copyright Act.

6. Balance of convenience favored PPL, as an injunction would not disrupt Azure Hospitality’s core business, but continued infringement would irreparably harm PPL.

Final Decision: The court granted a permanent injunction restraining Azure Hospitality from playing PPL’s copyrighted works without a license. The interim injunction was upheld, and the defendants’ application for vacation was dismissed.

Law Settled in This Case:

• Copyright owners (including assignees) retain the right to issue licenses unless they exclusively assign them to a copyright society.

• Section 33 of the Copyright Act does not bar owners from issuing licenses independently.

• Withdrawal of a prior suit does not bar a fresh suit if based on a new or continuing cause of action.

• Playing copyrighted sound recordings in commercial establishments without a license constitutes infringement.

• A copyright owner need not be a registered copyright society to enforce its rights or issue licenses.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Shrinath Travel Agency Private Limited Vs. Ajay Kumar Sharma

Prior Trademark user prevail over later Trademark registration

Case Title: Shrinath Travel Agency Private Limited Vs. Ajay Kumar Sharma & Anr.

Date of Order: 17 February 2025

Case Number: R/Rectification Application No. 25 of 2023

Neutral Citation: C/RA/25/2023

Court: High Court of Gujarat at Ahmedabad

Judge: Hon’ble Mrs. Justice Mauna M. Bhatt

Brief Facts of the Case

The petitioner, Shrinath Travel Agency Private Limited, filed a rectification application seeking to cancel the trademark registration of respondent no.1, Ajay Kumar Sharma, on the grounds of deceptive similarity to its own registered mark. The petitioner has been using the trademark "Shrinath" since 1978 in the travel and transport industry and holds multiple registrations incorporating the word "Shrinath."

Despite the petitioner’s long-standing use, it was discovered that respondent no.1 had obtained registration of a similar mark in 2021 and had been using it since 2014. The petitioner argued that the respondent’s mark was phonetically, visually, and conceptually identical to its own and that its continued existence on the register would mislead consumers. The petitioner also cited a prior Delhi High Court judgment dated 6 November 2023, which granted an injunction against the respondent’s use of the mark.

The respondent contended that it had been using the trademark since 2014 and had complied with all procedural requirements for registration. It argued that the petitioner had not opposed the registration when it was advertised and that the rectification application was filed belatedly.

Brief Issue

The primary issue before the court was whether the trademark registered by respondent no.1 should be rectified and removed from the register on the grounds of prior use and deceptive similarity with the petitioner’s mark.

Reasoning of the Court

The court observed that the petitioner was the prior user and registered proprietor of the trademark "Shrinath" since 1978. The Delhi High Court had already recognized the deceptive similarity between "Shrinath" and "Shreenath," ruling that even minor differences in spelling did not eliminate the likelihood of confusion.

It was noted that respondent no.1 had failed to appear before the Delhi High Court and had disregarded the injunction order. The Gujarat High Court emphasized that the continued registration of respondent no.1’s mark would mislead consumers and harm the petitioner’s established goodwill.

The court rejected the respondent’s argument that the rectification application was delayed, holding that trademark rights are based on priority of use, not just registration. It further clarified that the failure to oppose the mark at the advertisement stage did not prevent the petitioner from seeking rectification under Section 57 of the Trade Marks Act, 1999.

Decision of the Court

The court allowed the rectification application and directed the Registrar of Trade Marks to strike off and delete the registration of the respondent’s mark. It held that the respondent’s mark was deceptively similar to the petitioner’s prior registered mark and that its continued existence would be against public interest.

Law Points Settled

The case reaffirmed that prior user rights prevail over later registration, emphasizing that a trademark proprietor who has been using the mark for a long period can seek rectification of a deceptively similar later-registered mark. The court also held that deceptive similarity includes phonetic and visual resemblance, making it clear that even slight variations in spelling, such as "Shrinath" vs. "Shreenath," do not prevent a finding of infringement if the marks create consumer confusion.

It was further held that rectification is not barred by delay, as failure to oppose a trademark at the advertisement stage does not preclude rectification under Section 57 of the Trade Marks Act, 1999. The court emphasized that non-appearance and violation of injunctions can strengthen rectification claims, as a party’s failure to defend its case in prior injunction proceedings may weaken its position in subsequent rectification applications.

The court also made it clear that consumer confusion is sufficient to order cancellation, as the existence of two similar marks in the same industry is likely to mislead the public, justifying removal of the impugned mark.

This decision reaffirms the importance of protecting prior trademark users from deceptive later registrations and strengthens the doctrine that mere registration does not confer superior rights over a longstanding user.

UPL Limited Vs. Union of India

Strict adherence to procedural timelines under the Patents Act and Rules is essential

Brief Facts of the Case:

The petitioner, UPL Limited, filed a patent application, which was duly published under Section 14 of the Patents Act, 1970. A pre-grant opposition was filed by respondent no.5, and the hearing was concluded on 13 October 2023, with written submissions filed on 28 November 2023. Subsequently, on 30 November 2023, respondent no.6 filed a second pre-grant opposition on similar grounds, citing largely the same prior arts as respondent no.5. The Controller issued a notice on 1 August 2024, adjourning the hearing scheduled for 22 August 2024, without providing prima facie reasons as required under Rule 55 of the Patents Rules, 2003 (as amended).The petitioner contended that the second pre-grant opposition was a delay tactic and that the Controller failed to follow procedural mandates under the Act and Rules. The respondents argued that the petitioner had sought repeated adjournments, contributing to unnecessary delays. The Controller’s office assured the court that the proceedings would be concluded expeditiously.

Brief Issue: 

The primary issue before the court was whether the adjournment of the hearing for the second pre-grant opposition was lawful and whether the Controller followed the procedural requirements under Rule 55 of the Patents Rules, 2003.

Reasoning of the Court: 

The court noted that the Patents Act and the Rules prescribe strict timelines for hearing and disposing of patent applications. The adjournment granted by the Controller without assigning reasons violated the legislative intent of preventing unnecessary delays. The first pre-grant opposition had been concluded in November 2023, and delaying the final decision on account of a second opposition was unjustified. The second pre-grant opposition raised largely the same issues as the first, yet the Controller failed to record prima facie reasons for allowing or rejecting it, as required under Rule 55(3). The multiple adjournments granted in a mechanical manner violated the principles of natural justice and fairness, affecting the integrity of the decision-making process. The Controller’s inaction in providing prima facie reasons demonstrated an infraction of procedural mandates under the Patents Act.

Decision of the Court:

The court directed the respondent authorities to assign the matter to a different Controller, ensuring impartiality in decision-making. The first pre-grant opposition, filed by respondent no.5, would be reconsidered afresh from the hearing stage, without applying Rule 55(3). The second pre-grant opposition, filed by respondent no.6, must be examined strictly under Rule 55(3), requiring prima facie reasons for its acceptance or rejection. The entire exercise must be concluded within eight weeks without granting unnecessary adjournments. The court clarified that it did not adjudicate on the merits of the case, leaving all substantive issues open for consideration by the Controller. The writ petition was accordingly allowed.

Law Points Settled: 

Strict adherence to procedural timelines under the Patents Act and Rules is essential to prevent undue delays in patent applications. Adjournments cannot be granted mechanically, as they defeat the legislative intent of expeditious disposal. Under Rule 55(3), the Controller must record specific reasons for accepting or rejecting a pre-grant opposition. Repeated adjournments without justification can violate the principles of natural justice and procedural fairness, warranting judicial intervention. If procedural lapses are found, courts can direct reassignment to another Controller to ensure fairness and impartiality. This decision reinforces the principle that patent opposition proceedings must be conducted fairly and expeditiously, without undue procedural delays.

Case Title: UPL Limited Vs. Union of India & Ors.

Date of Order: 25 February 2025

Case Number: WPA-IPD 2 of 2024 (Old No. WPA 28484 of 2024)

Court: High Court at Calcutta 

Judge: Hon’ble Justice Ravi Krishan Kapur

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi

Metravi Instruments Private Limited Vs. Dhanbad Lab Instruments India Private Limited

Minor alterations in a trademark do not remove the deceptive similarity

Case Title: Metravi Instruments Private Limited Vs. Dhanbad Lab Instruments India Private Limited

Date of Order: 25 February 2025

Case Number: IP-COM/7/2024

Judge: Hon’ble Justice Ravi Krishan Kapur

Brief Facts of the Case

The petitioner, Metravi Instruments Private Limited, has been using the trademark METRAVI since 1 July 1998 and officially registered it on 1 April 1998 under Class 9. The mark was assigned to the petitioner in 2015. The respondent, Dhanbad Lab Instruments India Private Limited, was incorporated in 2016 and is engaged in a similar business.

In January 2024, the petitioner discovered that the respondent had obtained registration for the mark "METERIVA" under Class 9 for similar products. The petitioner alleged that METERIVA was phonetically, visually, and structurally similar to METRAVI, leading to potential consumer confusion. The respondent had prior business dealings with the petitioner and had previously purchased its products.

Brief Issue

The issue before the court was whether the respondent’s trademark "METERIVA" is deceptively similar to the petitioner’s registered mark "METRAVI", amounting to passing off.

Reasoning of the Court

The court examined the phonetic and visual similarity between the marks. It held that "METERIVA" and "METRAVI" have only an interchange of letters, creating a high likelihood of confusion. A consumer may mispronounce or misread the marks due to their resemblance.

On the issue of misrepresentation and passing off, the court observed that the respondent had prior knowledge of the petitioner’s mark and still chose to use a similar name. The similar trade dress and same business field increased the likelihood of confusion. The respondent’s choice of the mark was intentional and deceptive, aiming to ride on the goodwill of the petitioner.

The court further analyzed the risk of consumer confusion. Relying on Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, the court emphasized that even slight phonetic and visual similarity can lead to confusion in the minds of consumers.

On the balance of convenience, the court held that the petitioner, as the prior user, had a stronger case. The respondent’s justification for choosing "METERIVA" was unconvincing.

Decision of the Court

The court confirmed the interim order of 8 April 2024 and allowed the petitioner’s request for an injunction. The respondent was restrained from using the mark "METERIVA". The respondent’s application to vacate the injunction was dismissed.

Law Points Settled

The case reaffirmed the phonetic and visual similarity test, emphasizing that even minor alterations in a trademark do not remove the deceptive similarity if consumer confusion is likely. It reinforced the doctrine of passing off, stating that if a new mark is adopted in bad faith and causes confusion, injunction relief can be granted without the need for further evidence of actual deception.

The court upheld the protection of prior users, establishing that a prior user’s goodwill and reputation must be safeguarded from misrepresentation by later entrants in the market.

C. Cunniah And Co. Vs. Balraj And Co.

C. Cunniah And Co. Vs. Balraj And Co.:Test for copyright infringement is substantial reproduction or a colorable imitation 

Case Title: C. Cunniah And Co. Vs. Balraj And Co.

Date of Order: February 4, 1959

Citation: AIR 1961 MAD 111

Name of Court: Madras High Court

Name of Judge: Hon'ble Justice Ganapatia Pillai

Introduction:

This case is a landmark decision in Indian copyright law concerning artistic works. It deals with the issue of copyright infringement in relation to the pictorial representation of a deity. The case primarily revolves around whether the respondents' picture, "Bala Murugan," was a copy or a colorable imitation of the appellants' picture, "Mayura Priya," in which they claimed copyright. The High Court of Madras analyzed the originality of artistic works, the elements required for copyright protection, and the standard for determining whether a work constitutes an infringement of copyright.

Factual Background:

The appellants, C. Cunniah And Co., were engaged in the business of selling pictures and picture frames in Madras City. In 1932, an artist named T. M. Subramaniam created a picture titled "Mayura Priya," which depicted Lord Balasubramanya. On July 13, 1938, he assigned the copyright of this picture to the appellant firm. The appellants began producing and selling printed copies of the picture from 1940. However, sales were temporarily halted between 1946 and 1950 due to wartime scarcity of printing materials, but resumed in 1950. In 1952, the appellants registered the picture under the Trade Marks Act.

The dispute arose when the appellants discovered that the respondents, Balraj And Co., were selling a similar picture titled "Bala Murugan." The appellants alleged that "Bala Murugan" was a colorable imitation of "Mayura Priya" and issued a legal notice to the respondents to cease production and sale of the picture. The respondents refused to comply, leading the appellants to file a suit seeking an injunction to restrain the respondents from printing and selling "Bala Murugan," damages for copyright infringement, an account of profits, and seizure of unsold copies of the infringing work.

Procedural Background:

The appellants initiated a suit for injunction, damages, and an account of profits on the grounds of copyright infringement. The respondents contended that their picture was an independent creation by an artist named D.W.1 and was not copied from "Mayura Priya." They also argued that the appellants could not claim copyright over "Mayura Priya" because it depicted a commonly known religious subject. During the trial, the appellants dropped their claim of trademark infringement since "Mayura Priya" was not used as a trademark for any class of goods.

The learned Single Judge, Ramaswami J., ruled that while the appellants held copyright in "Mayura Priya," the respondents had not infringed upon it. The suit was dismissed, prompting the appellants to file an appeal before the Division Bench of the Madras High Court.

Issues Involved in the Case:

The main issue before the court was whether the respondents’ picture "Bala Murugan" was a reproduction or colorable imitation of the appellants' picture "Mayura Priya," thereby constituting copyright infringement. Another issue was whether an artistic work depicting a common religious subject could be granted copyright protection.

Submission of Parties:

The appellants argued that their picture "Mayura Priya" was an original artistic work that involved skill and labor in its execution. They asserted that "Bala Murugan" was not an independent creation but a reversed copy of "Mayura Priya," incorporating nearly identical facial features, ornaments, and background elements. The appellants presented expert photographic evidence demonstrating the similarity between the two pictures, contending that the respondents had merely altered minor details to disguise their copying.

The respondents maintained that their picture was an independent work created by an artist based on conventional ideas of Lord Balasubramanya. They highlighted certain differences between the two pictures, such as variations in posture, orientation of the peacock, facial expressions, and background elements. They contended that similarities were inevitable given the common religious theme, and thus, their work did not amount to infringement.

Discussion on Judgments and Citations:

The court referred to several precedents on copyright law. In Hanfsataengl v. W. H. Smith & Sons (1905) 1 Ch. 519, Kekewich J. defined a "copy" as something that comes so close to the original that it suggests the original work to any person viewing it. Applying this test, the court examined the visual resemblance between "Mayura Priya" and "Bala Murugan."

The court also cited Corelli v. Gray (1913) 29 T.L.R. 570, which laid down four hypotheses under which similarities between two works could arise: mere chance, both works being derived from a common source, the plaintiff’s work being copied from the defendant’s, or vice versa. The court found that the only reasonable inference in this case was that the respondents' picture was derived from the appellants' work.

The court relied on Hanfstaengl v. Baines and Co. (1895) A.C. 20, where the House of Lords observed that intelligent copying often involves minor alterations to disguise infringement. The court noted that the respondents had made slight modifications, such as changing the deity’s hand gestures and reversing the image, but these changes were not sufficient to constitute an independent creation.

Reasoning and Analysis of the Judge:

The court found that the respondents’ picture "Bala Murugan" was a substantial reproduction of "Mayura Priya." While acknowledging some differences in details, the court emphasized that copyright law protects the original expression of an idea rather than the idea itself. The most distinctive and prominent elements of "Mayura Priya," including the facial features of the deity, the ornaments, the posture, and the overall composition, had been directly copied in "Bala Murugan."

The court rejected the respondents' argument that a common religious theme precludes copyright protection, clarifying that while the subject matter itself may not be protected, an artist’s original expression of that subject is eligible for copyright. The photographic evidence provided by the appellants demonstrated that "Bala Murugan" was a reversed copy of "Mayura Priya," created by mechanically reproducing significant portions of the original image.

Based on these findings, the court held that "Bala Murugan" constituted a colorable imitation of "Mayura Priya," amounting to copyright infringement.

Final Decision:

The High Court of Madras overturned the decision of the Single Judge and ruled in favor of the appellants. The court granted a permanent injunction restraining the respondents from printing and selling "Bala Murugan." The appellants were also awarded damages of Rs. 500, as agreed upon by both parties, in lieu of an account of profits.

Law Settled in the Case:

Copyright protection extends to artistic works even if they depict common religious subjects, provided that the work is an original expression requiring skill and labor. The test for copyright infringement is whether a work is a substantial reproduction or a colorable imitation of the original. Minor alterations and changes in details do not absolve a work from being an infringing copy if substantial similarities exist. Visual resemblance and overall impression play a crucial role in determining infringement. Copyright law protects the manner in which an idea is expressed rather than the idea itself. An infringing work does not need to be an exact copy; it is sufficient if a substantial part of the original work has been copied.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi