Dr. Reddy’s Laboratories Ltd. & Anr. Vs. The Controller of Patents

Effect of dynamic effect: Part-2 [Patent Revocation Petition  and Patent Appeal]

Introduction This case pertains to a revocation petitionfiled under Section 64 of the Patents Act, 1970, by Dr. Reddy’s Laboratories Limited and MSN Laboratories Pvt. Ltd. against the patent granted to Boehringer Ingelheim International GmbH as well as Patent Appeal. The case primarily examines jurisdictional aspects following the abolition of the Intellectual Property Appellate Board (IPAB) and the reallocation of patent disputes to High Courts.

Factual Background Boehringer Ingelheim applied for a patent for certain Benzenol derivatives and medicinal preparations containing these derivatives via the PCT route on August 23, 2006. The Indian patent application (No. 4844/DELNP/2006) was filed in the Patent Office, Delhi, and was subsequently granted as Patent No. IN 268846 on September 18, 2015.

On October 16, 2021, Dr. Reddy’s Laboratories Limited and MSN Laboratories Pvt. Ltd. filed a revocation petition before the Delhi High Court seeking revocation of the patent on grounds of invalidity under Section 64 of the Patents Act, 1970.

Three days later, Boehringer Ingelheim filed infringement suits against Dr. Reddy’s Laboratories in the High Court of Himachal Pradesh on October 19, 2021, obtaining an interim injunction against them. A similar infringement suit was filed against MSN Laboratories on October 25, 2021, and an interim injunction was granted.

Procedural Background The revocation petition was filed before the Delhi High Court. However, Boehringer raised a preliminary objection challenging the maintainability of the petition, arguing that since the infringement suit was already pending in the Himachal Pradesh High Court, the petitioners should file a counterclaim for revocation there instead of initiating a separate revocation proceeding in Delhi. Boehringer also sought a stay on the revocation proceedings under Section 10 of the Code of Civil Procedure (CPC), pending the disposal of the infringement suits.

Meanwhile, Elta Systems Ltd. filed a patent appeal under Section 117A of the Patents Act, challenging the refusal of its patent application by the Controller of Patents. The patent application was filed as an Indian national phase application under the PCT route at the Mumbai Patent Office. Due to internal administrative processes, the application was transferred for examination to the Delhi Patent Office, where the rejection order was issued. Elta Systems, considering that the rejection order was passed by the Delhi Patent Office, filed its appeal before the Delhi High Court.

Boehringer, in response, contended that since the original application was filed at the Mumbai Patent Office, the appeal should have been filed before the Bombay High Court, as per the territorial jurisdiction governing patent appeals under Section 117A. The issue before the Court was whether the appeal should be heard in Delhi based on the office that issued the rejection or in Mumbai based on the appropriate office at the time of filing.

Issues Involved:

Whether the revocation petition was maintainable before the Delhi High Court despite ongoing infringement suits in Himachal Pradesh?

Whether a revocation petition under Section 64 of the Patents Act could be filed independently, or whether it should only be filed as a counterclaim in the infringement suit?

Whether a patent appeal under Section 117A should be filed in the High Court with jurisdiction over the Patent Office that examined and rejected the application or the Patent Office where the application was initially filed?

Submissions of the Parties

Petitioners (Dr. Reddy’s Laboratories & MSN Laboratories) argued that Section 64 of the Patents Act provides an independent right to seek revocation, irrespective of whether an infringement suit is pending. They claimed that since the patent was granted by the Delhi Patent Office, the appropriate High Court for the revocation petition was Delhi. They asserted that the revocation petition was filed before the infringement suits, thus justifying its maintainability in Delhi.

Respondents (Boehringer Ingelheim) contended that the revocation petition should be filed as a counterclaim in the Himachal Pradesh High Court where the infringement suits were pending, to avoid multiplicity of proceedings. They cited jurisdictional concerns, arguing that once an infringement suit was filed, any revocation claim should be addressed within the same suit. They sought a stay of the revocation proceedings under Section 10 CPC.

In the patent appeal, Elta Systems argued that since the rejection order was issued by the Delhi Patent Office, the appeal should be maintainable before the Delhi High Court. The Controller of Patents, however, submitted that as per Rule 4 of the Patent Rules, the appropriate office for the application was Mumbai, and thus, the Bombay High Court should have jurisdiction over the appeal.

Discussion on Patent Revocation and Patent Appeal Proceedings:

The Court carefully examined the fundamental differences between patent revocation proceedings under Section 64 of the Patents Act and patent appeals under Section 117A. It acknowledged that while both proceedings pertain to the validity of a patent, their scope, legal basis, and jurisdictional implications differ significantly.

A patent appeal under Section 117A is a continuation of the examination process, where an applicant seeks a judicial review of the Controller of Patents' decision regarding the grant or refusal of a patent. The Court determined that an appeal primarily concerns the static effect of a patent decision, as it is restricted to reviewing the correctness of an administrative order. Given that patent appeals are limited to examining the legal and factual correctness of decisions made by the Patent Office, the Court held that they should be heard by the High Court exercising jurisdiction over the appropriate Patent Office at the time of filing, rather than where the final rejection order was issued. 

The Court negated the dynamic effect principle in the case of patent appeals, stating that these proceedings do not create widespread commercial implications but rather focus on the applicant’s specific grievance against the decision of the Patent Office.

In contrast, patent revocation under Section 64 is an independent legal action that any interested party can initiate to challenge the validity of a granted patent. The Court emphasized that revocation proceedings have a dynamic effect, as they do not merely review past administrative decisions but actively challenge the enforceability and legal standing of the patent across the country. The impact of a patent extends beyond the Patent Office and affects businesses, competitors, and researchers nationwide. Thus, revocation cannot be confined to the territorial jurisdiction of the Patent Office but should be determined based on where the commercial and legal consequences of the patent are significantly felt.

The Court drew upon the dynamic effect principle established in Girdhari Lal Gupta v. K. Gian Chand Jain & Co., 1977 SCC OnLine Del 146, which highlighted that intellectual property rights influence markets, industries, and research activities far beyond the place of registration. Applying this principle, the Court reasoned that while appeals must be geographically confined, revocation petitions should be entertained in jurisdictions where their effects are materially experienced.

Final Decision The Delhi High Court held that the revocation petition was maintainable and dismissed Boehringer’s application seeking a stay. In the patent appeal, the Court ruled that the appropriate High Court was the Bombay High Court, as the original filing took place in Mumbai, and transferred the case accordingly.

Law Settled in the Case:

A revocation petition under Section 64 of the Patents Act can be filed independently and is not necessarily required to be a counterclaim in an infringement suit. 

The dynamic effect principle applies differently to revocation petitions and patent appeals. Dynamic effect principle are applicable to patent revocation ensuring that jurisdiction is determined based on the actual legal and commercial impact. 

Patent appeals should be filed in the High Court governing the original Patent Office where the application was filed, rather than where the examination or rejection order was issued.

Case Title: Dr. Reddy’s Laboratories Ltd. & Anr. Vs. The Controller of Patents & Ors.

Date of Order: 10 November 2022

Case No.: C.O.(COMM.IPD-PAT) 3/2021

Neutral Citation: 2022/DHC/004746

Court: Delhi High Court

Judge: Hon'ble Justice Mrs. Prathiba M. Singh

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

Girdhari Lal Gupta Vs K. Gian Chand Jain

Effect of Dynamic Effect Part 1 Design cancellation can be filed at Delhi High Court because of its dynamic effect

Introduction:

This case, decided by the Delhi High Court on December 22, 1977, addressed the jurisdictional question of whether the High Court of Delhi had the authority to entertain applications under Section 51-A of the Designs Act, 1911, for cancellation of registered designs. 

The judgment analyzed the static and dynamic effects of design registration, emphasizing the impact of jurisdiction in intellectual property disputes.

Factual Background:

The appellant, Girdhari Lal Gupta, obtained registration for two designs (131357 and 131364) under the Designs Act, 1911, for laces. The respondents, K. Gian Chand Jain & Co., were also engaged in the same trade in Delhi. They contested the validity of these registered designs, claiming that the designs had been published in India before registration and that their business was being unfairly restricted by the appellant's monopoly over the designs. Consequently, they sought cancellation of these registrations under Section 51-A of the Act.

Procedural Background:

Filing of Petitions under Section 51-A of the Designs Act, 1911:

The respondents, K. Gian Chand Jain & Co., filed applications under Section 51-A before the Delhi High Court, seeking cancellation of the appellant’s registered designs (Nos. 131357 and 131364).Their contention was that these designs had been published in India before registration and that their business was being unfairly restricted by the appellant's monopoly over the designs.

Opposition by the Appellant:

The appellant, Girdhari Lal Gupta, contested the petitions, arguing that the High Court of Delhi lacked jurisdiction.He asserted that only the Calcutta High Court had the authority to entertain such applications since the Register of Designs was maintained in the Patent Office at Calcutta.

Amendment Application by the Appellant:

The appellant moved an application under Order VI, Rule 17 of the Civil Procedure Code, seeking amendment of his written statement to formally raise the jurisdictional plea.He argued that the jurisdiction for cancellation of design registrations was exclusively vested in the High Court of Calcutta, as the Controller of Designs was based there.

Rejection of the Amendment Application:

A learned single judge of the Delhi High Court rejected the appellant’s amendment application, reasoning that it was meritless and unnecessary.The judge held that jurisdiction under Section 51-A was not limited to Calcutta and that any High Court in India could entertain such applications.

Appeal to the Full Bench:

Dissatisfied with the single judge's ruling, the appellant filed an appeal before a Full Bench of the Delhi High Court for a more detailed consideration of the jurisdictional issue.The Full Bench was tasked with examining whether the Delhi High Court had jurisdiction over applications for cancellation of designs registered under the Designs Act.

Decision by the Full Bench:

The Full Bench concluded that an application under Section 51-A could be filed not only in the High Court of Calcutta but also in any other High Court where the dynamic effect of the design registration caused injury to a business.It ruled that the amendment sought by the appellant should have been allowed, but ultimately upheld the jurisdiction of the Delhi High Court to entertain the cancellation petitions.

Issues Involved:

Whether the Delhi High Court had jurisdiction to entertain applications under Section 51-A of the Designs Act, 1911, for cancellation of design registrations?

Whether the jurisdiction was confined to the Calcutta High Court, given that the Register of Designs was maintained at the Patent Office in Calcutta?

Whether the dynamic effect of registration, impacting businesses in various locations, could justify jurisdiction in multiple High Courts?

Submissions of the Parties

The appellant argued that:The High Court of Calcutta had exclusive jurisdiction to entertain applications under Section 51-A since the Register of Designs and the Controller of Designs were located in Calcutta.The cause of action arose only at the place of registration, which was Calcutta, and thus, any application for cancellation of registration should be made before the Calcutta High Court.

The respondents countered that:The registration of the design had a dynamic effect beyond Calcutta, affecting businesses across India, including Delhi.Since their business was suffering due to the wrongful monopoly granted by the registration, they had the right to seek cancellation in the jurisdiction where they conducted their business.Section 2(7) of the Designs Act defined ‘High Court’ in a broad manner, which did not restrict jurisdiction exclusively to Calcutta.

How the Court Reached the Conclusion that the Dynamic Effect of Design Was Felt at Delhi:

The Full Bench observed that the impact of a design registration extends beyond the place where it is registered. The registered proprietor enjoys an exclusive monopoly over the design, which prevents competitors from using it across the country. 

The court noted that:The respondents were conducting business in Delhi and alleged that their commercial activities were adversely affected by the appellant’s registered designs.The appellant had filed suits for infringement against the respondents in Delhi, which demonstrated that he was enforcing his monopoly rights in this jurisdiction.The effect of registration was not merely static (i.e., limited to the Register of Designs in Calcutta), but also dynamic—it restricted competitors in other locations, including Delhi.

Citing the Supreme Court judgment in Workmen of Shri Rangavilas Motors (P) Ltd. v. Shri Rangavilas Motors (P) Ltd. (AIR 1967 SC 1040), the Full Bench emphasized that jurisdiction must be determined based on where the legal injury occurs, rather than the mere location of the administrative authority.The injury to the respondents' trade occurred in Delhi, as they were unable to sell or manufacture laces with similar designs due to the appellant’s design registration.

Therefore, the court concluded that the dynamic effect of the design’s monopoly was directly felt in Delhi, thereby establishing jurisdiction for the Delhi High Court to entertain the cancellation petition under Section 51-A of the Designs Act.

Final Decision:

The Delhi High Court held that:The application for amendment made by the appellant should have been allowed since the jurisdictional plea was a substantial legal issue.

The Delhi High Court had jurisdiction to entertain the applications under Section 51-A because the respondents' business was affected by the design registration.

An application under Section 51-A could be filed either in the High Court of Calcutta (where the Register of Designs was maintained) or in a High Court where the dynamic effect of the registration caused legal injury.

The case was remanded for further proceedings before the learned single judge.

Law Settled in this Case:

A High Court other than Calcutta can entertain applications for cancellation of a design under Section 51-A if the applicant's business interests are affected within its territorial jurisdiction.

The dynamic effect of registration, which extends beyond the place of registration and impacts businesses nationwide, is a valid consideration for determining jurisdiction.

Case Title: Girdhari Lal Gupta Vs K. Gian Chand Jain & Co.

Date of Order: 22 December 1977

Neutral Citation: AIR 1978 DELHI 146, ILR (1978) 1 DELHI 472, 14(1978) DLT 132

Court: Delhi High Court

Judge(s): Hon'ble Justice V.S. Deshpande, H.L. Anand, S. Chadha

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

Apex Laboratories Private Limited Vs. The Registrar of Copyrights & Anr.

The Impugned Art of the second respondent's artistic work was a copy or a substantial reproduction of the petitioner’s work, hence the same was rectified

Facts of the Case:

The petitioner, Apex Laboratories Private Limited, filed a petition under Section 50 of the Copyright Act, 1957, seeking rectification of the Register of Copyrights by expunging the copyright registration No.A-90270/2011, dated 29.03.2011, granted to the second respondent for the artistic work “ZINCOVIT WITH FRUITS DEVICE LABEL.” The petitioner claimed prior use of the ZINCOVIT trademark since 1988 and copyright registration of its label since 1997. The second respondent had entered into an agreement with the petitioner in 2007 for manufacturing ZINCOVIT SYRUP, but after the agreement was terminated in 2009, the second respondent obtained a copyright registration for a substantially similar label.

Issues:

Whether the second respondent's artistic work was a copy or a substantial reproduction of the petitioner’s work? 

The Court examinedPrior Copyright and Trademark Rights:

The petitioner had registered the word mark ZINCOVIT on 16.03.1988 and obtained copyright registration for its ZINCOVIT SYRUP artistic label on 22.10.1997 (No.A-54243/1997).The petitioner’s label depicted fruits and vegetables in a distinctive manner, which was first published in 1990.

Unauthorized Registration by the Second Respondent:

The second respondent applied for copyright registration on 29.12.2009, long after the petitioner had secured its copyright.

The registration was granted on 29.03.2011 (No.A-90270/2011).

The petitioner argued that the second respondent was merely a contract manufacturer and had no independent rights over the ZINCOVIT label.

Substantial Copying and Judicial Precedents:

The Court compared both artistic works and found that the second respondent’s work was either a direct copy or a substantial reproduction of the petitioner’s copyrighted label.

A Division Bench of the Allahabad High Court (Judgment dated 11.07.2014) had already held that the petitioner was the prior user, and the second respondent's artistic work was similar to the petitioner’s.

The Court also noted that the second respondent’s trademark applications for ZINCOVIT in Classes 31 & 32 were dismissed as abandoned, and the trademark registration in Class 29 was directed to be rectified by order dated 14.06.2024 in (T)OP(TM) No.443 of 2023.

Decision:

The Court allowed the petition and directed the Registrar of Copyrights to rectify the Register by expunging the second respondent’s copyright registration No.A-90270/2011 for ZINCOVIT WITH FRUITS DEVICE LABEL. The order was to be implemented within four weeks.

Case Title: Apex Laboratories Private Limited Vs. The Registrar of Copyrights & Anr.

Date of Order: 13th February 2025

Case Number: (T)OP(CR)/6/2024

Court: High Court of Judicature at Madras

Hon'ble Judge: Justice Senthilkumar Ramamoorthy

Cellectis Vs. The Assistant Controller of Patents and Designs

Amendments to a patent specification and claims can be allowed at the appellate stage if they comply with Section 59 of the Patents Act.

Facts of the Case:

The appellant, Cellectis, filed Indian Patent Application No. 10437/DELNP/2015 for a method of engineering allogenic and highly active T-cells for immunotherapy. The application was published on 12th February 2016, and a request for examination was filed on 17th April 2017. The First Examination Report (FER) was issued on 13th December 2019, citing objections under Sections 2(1)(ja), 3(d), and 3(h) of the Patents Act. After hearings and claim amendments, the patent was ultimately rejected on 23rd November 2022 under Section 3(i) of the Patents Act, as the claims were deemed to involve a method of diagnosis/treatment of humans, which is non-patentable.

Issues:

Whether amendments to the complete specification and claims can be made at the appellate stage before the High Court? 

Reasoning of the Court:

The Court analyzed whether amendments to the complete specification and claims were permissible under Section 59 of the Patents Act, 1970. The following three requirements under Section 59 were examined:

Nature of the Amendment: The amendment must be in the form of a disclaimer, correction, or explanation. The appellant’s amendments removed references to "method of treating or preventing cancer or infections in the patients", which was considered a valid disclaimer. The inclusion of "derived from a healthy donor" in claims 1 and 2 was classified as a correction.

No Introduction of New Subject Matter: The amendment must not introduce any matter not originally disclosed in the specification. The Court found that the amendments did not add any new subject matter beyond what was already disclosed in the original specification.

Scope of Claims: The amended claims must remain within the scope of the original claims. The Court observed that the scope of the invention remained unchanged as the modifications were only clarificatory in nature and did not expand the original claims.

The Court relied on two judgments to support its conclusion:

Societe Des Produits Nestle SA v. Controller of Patents and Designs & Anr., 2023 SCC OnLine Del 582 – This judgment held that the High Court, while hearing an appeal against a refusal order passed by the Controller, has the same powers as the Controller under Section 15 of the Patents Act, which includes the power to require amendments.

Opentv Inc. v. Controller of Patents, 2023 SCC OnLine Del 2771 – This case confirmed that amendments at the appellate stage are permissible as long as they comply with Section 59. It also clarified that whether the amendment is directed by the Court or proposed by the applicant, it must remain within the original claim scope.

The appellant modified the claims to remove references to treatment and introduced disclaimers to ensure compliance with Section 59. Since the amendments did not introduce new subject matter or extend the scope of the original claims, they were considered valid.

Decision:

The Court allowed the amendment application, permitting the modified claims and amended specification to be taken on record. The matter was listed for further consideration regarding whether the amendments overcame the objections under Section 3(i) of the Patents Act.

Law Point Settled:

Amendments at the Appellate Stage: Amendments to a patent specification and claims can be allowed at the appellate stage if they comply with Section 59 of the Patents Act.

Case Title: Cellectis Vs. The Assistant Controller of Patents and Designs

Date of Order: 28th February 2025

Case Number: C.A.(COMM.IPD-PAT) 6/2023

Citation:2025:DHC:1466

Court: High Court of Delhi

Hon'ble Judge:Hon'ble Justice Shri 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

Rohit Sharma Vs A.M Market Place Pvt Ltd.

Rohit Sharma Vs A.M Market Place Pvt Ltd. : Failure to file a written statement within 120 days from the date of service results in an absolute forfeiture of this right

Introduction:The case of Rohit Sharma Vs A.M Market Place Pvt Ltd. was adjudicated by the High Court of Delhi concerning issues related to service of summons, procedural compliance, and forfeiture of the right to file a written statement under the Commercial Courts Act. The primary dispute revolved around whether the appellant, Rohit Sharma, was properly served and whether his right to file a written statement was rightly denied.

Detailed Factual Background:A.M Market Place Pvt Ltd., the plaintiff, operates an e-commerce platform under the brand name “LIMEROAD.” It alleged that Rohit Sharma and others were running a fraudulent scheme by setting up a website called www.limeroadwinner.in, falsely posing as representatives of the plaintiff’s prize department. The fraudulent website offered lotteries and lucky draws using the plaintiff’s brand name, deceiving individuals into depositing money in exchange for purported rewards such as LED televisions, cars, and laptops.

Summons were issued to the appellant-defendant No.1 (Rohit Sharma): by all modes on August 2, 2018. The trial court deemed him served after a postal remark indicated that the summons was refused by his mother. Since he did not appear, the trial court proceeded ex parte against him on December 19, 2018. Subsequently, Rohit Sharma filed an application to recall the ex parte order, contending that he had no knowledge of the proceedings and that the refusal of service by his mother was erroneous. The trial court allowed the recall of the ex parte order but denied him the right to file a written statement, as the 120-day period prescribed under the Commercial Courts Act had elapsed.

Detailed Procedural Background:The appellant filed an appeal against the order of the single judge denying him the right to file a written statement. His primary contention was that he was not properly served, and thus, the 120-day period should not be counted from an alleged improper service. The appeal also sought condonation of a 263-day delay in refiling.

Issues Involved in the Case:Whether service of summons through speed post with a remark of refusal by the appellant’s mother constituted valid service under the CPC and Delhi High Court (Original Side) Rules, 2018. Whether the appellant’s right to file a written statement could be denied due to non-filing within the statutory period under the Commercial Courts Act.

The respondent-plaintiff contended that:The order of the trial court was justified as service was deemed valid when the postal report stated that the appellant’s mother refused service.Under the Commercial Courts Act, failure to file a written statement within 120 days results in forfeiture, which cannot be relaxed.The delay in filing/re-filing the appeal was excessive and unjustified.

Detailed Discussion on Judgments Cited by Parties and Their Context The court referred to the following judgments:M/s. Print Pak Machinery Ltd. vs. M/s. Jay Kay Papers Converters, AIR 1979 Del 217 (F.B.) – It was held that in case of conflict between CPC and High Court Rules, the latter would prevail. This supported the view that service via speed post with refusal was deemed valid. Iridium India Telecom Ltd. vs. Motorola Inc., (2005) 2 SCC 145 – This case reaffirmed the precedence of special procedural rules over general CPC provisions. 

SCG Contracts (India) Private Limited vs. K.S. Chamankar Infrastructure Private Limited & Ors., (2019) 12 SCC 210 – It upheld that a defendant loses the right to file a written statement if it is not filed within 120 days of service under the Commercial Courts Act.

OKU Tech Pvt. Ltd. Vs. Sangeet Agarwal & Ors., 2016 SCC OnLine Del 6601 – This case confirmed that the 120-day limitation is mandatory, and no extension can be granted.

Detailed Reasoning and Analysis of the Judge:

The High Court analyzed the validity of the service of summons and whether the appellant was rightly deemed served. The court held that the trial court correctly proceeded ex parte as per the order dated September 25, 2018, deeming service complete based on the postal remark. The appellant’s argument that he was unaware of the proceedings lacked substantiation, especially since no affidavit from his mother was filed to refute the postal authority’s report.

Regarding the right to file a written statement, the court reaffirmed the mandatory nature of the 120-day limitation under the Commercial Courts Act. The court noted that procedural amendments aimed to ensure swift disposal of commercial cases, and allowing extensions beyond statutory limits would defeat the legislative intent. Since the appellant had failed to challenge the September 25, 2018 order deeming him served, the consequences of delayed filing were unavoidable.

Final Decision The High Court dismissed the appeal and held that the trial court’s decision was legally sound. It ruled that the appellant had been properly served and that his right to file a written statement was rightly forfeited. The delay in refiling the appeal was deemed excessive and unjustified.

Law Settled in This Case:Deemed Service: A refusal of service by a family member at the defendant’s residence constitutes valid service under procedural law. 

Strict Application of 120-Day Limitation: Under the Commercial Courts Act, failure to file a written statement within 120 days from the date of service results in an absolute forfeiture of this right.High Court (Original Side) Rules Prevail Over CPC:

In case of procedural conflict, the High Court Rules will govern the matter.Necessity of Challenging Foundational Orders: If a party does not challenge an initial procedural order (such as an order deeming service valid), it cannot later contest consequential orders based on that ruling.

Case Title: Rohit Sharma Vs A.M Market Place Pvt Ltd.

Date of Order: March 3, 2021

Case No.: FAO(OS)(COMM) 37/2021 & CM APPLs. 8493-8495/2021

Name of Court: High Court of Delhi

Name of Judges: Hon’ble Mr. Justice Manmohan and Hon’ble Ms. Justice Asha Menon

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

Automatic Electric Limited Vs R.K. Dgawan

Claiming a generic defense is not valid when the defendant itself seeks proprietary rights in a similar mark.

Introduction:The case involves a trademark dispute between Automatic Electric Limited (plaintiff) and R.K. Dgawan & Anr. (defendants) regarding the alleged infringement and passing off of the plaintiff’s registered trademark “DIMMERSTAT.” The plaintiff sought a permanent injunction against the defendants from using the allegedly deceptively similar mark “DIMMER DOT” for variable voltage auto transformers. The case highlights key issues related to trademark exclusivity, genericness, and deceptive similarity under the Trade and Merchandise Marks Act.

Factual Background: The plaintiff, Automatic Electric Limited, adopted the trademark “DIMMERSTAT” in 1945 for its variable voltage auto transformers. The mark was registered under Trade Mark Registration No. 178464 dated 14.02.1957 in Class 9. The plaintiff extensively advertised its product and claimed to have built substantial goodwill. It produced sales invoices from 1976-1982 and 1985-1994 as proof of continuous usage.

The defendants, R.K. Dgawan & Anr., adopted the mark “DIMMER DOT” for their variable voltage auto transformers, which the plaintiff alleged was deceptively similar and likely to cause confusion. The plaintiff argued that such use amounted to trademark infringement and passing off. Consequently, the plaintiff filed a suit seeking an injunction to restrain the defendants from manufacturing, selling, or advertising under the mark “DIMMER DOT” or any other mark identical or similar to “DIMMERSTAT.”

Procedural Background:The plaintiff filed an application under Order 39 Rules 1 & 2 of the Code of Civil Procedure, seeking an interim injunction against the defendants. On 9.11.1994, the Delhi High Court granted an ad-interim ex parte injunction, restraining the defendants from using the mark “DIMMER DOT.” The defendants entered their appearance and filed an application under Order 39 Rule 4, seeking to vacate the injunction. The case was heard on the interim reliefs sought by both parties.

Issues Involved in the Case:Whether the use of the mark “DIMMER DOT” by the defendants constitutes trademark infringement under Section 28 and 29 of the Trade and Merchandise Marks Act? Whether the mark “DIMMERSTAT” is distinctive and entitled to exclusive protection? Whether “DIMMER” is a generic or descriptive term, and if so, whether the plaintiff can claim monopoly over it? Whether there was honest concurrent use by the defendants? Whether the plaintiff’s delay in taking legal action amounted to acquiescence? 

Submissions of the Parties:The plaintiff argued that its registered trademark “DIMMERSTAT” conferred exclusive rights under Section 28 of the Trade and Merchandise Marks Act. Section 29(1) provides that the use of an identical or deceptively similar mark constitutes infringement. “DIMMERSTAT” and “DIMMER DOT” share the identical prefix “DIMMER,” leading to confusion among consumers. The mark “DIMMERSTAT” was registered without a disclaimer, meaning the plaintiff had the exclusive right to use the mark, including the word “DIMMER.” The defendants falsely represented their mark as a registered trademark, which amounted to an offense under Section 81 of the Act. There was no delay or acquiescence as the plaintiff learned about the defendant’s use in April 1994.

The defendants argued that “DIMMER” is a generic term referring to variable voltage transformers and cannot serve as a trademark. Under Section 9(1)(d), generic and descriptive words are not eligible for trademark protection. The plaintiff could not monopolize the term “DIMMER” as it is commonly used in the industry. The plaintiff was aware of the defendant’s use for over a decade and failed to act earlier, amounting to acquiescence. The defendants had been using “DIMMER DOT” since 1980 and had developed independent goodwill. The plaintiff’s customers were technically knowledgeable and unlikely to be confused. The product packaging of both parties was different, reducing the likelihood of confusion.

Discussion on Judgments Cited by Parties:The plaintiff relied on the judgment in Kaviraj Pandit Durga Dutt Sharma vs. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980, which held that an identical prefix in trademarks can cause deception. The decision in Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449, established that similarity in the dominant part of a mark is sufficient for confusion. The case Accurist vs. Accutron, (1966) RPC 152, stated that similarity in the initial part of a mark is significant. The judgment in Turbo Torch vs. Turbogaz, (1978) RPC 206, confirmed that prefix similarity can lead to deceptive similarity. Additional judgments supporting the plaintiff’s case included Alka Seltzer vs. Alka Vescent, (1950) 67 RPC 113, 209, Pill Bond vs. Plyopher, (1951) 69 RPC 40, Star Mist vs. Stardust, (1951) 69 RPC 40, Marie Elizabeth vs. Maria Lisette, (1937) 54 RPC 193, and Univocal vs. Unimac, (1979) RPC 469.

The defendants relied on the case Abercrombie & Fitch Company vs. Hunting World, Inc., 189 USPQ 759, which held that generic words cannot be monopolized. The decision in J.R. Kapoor vs. M/s. Micronix India, 1994(3) SCALE 732, held that if a mark is generic for the product, no one can claim exclusive rights.

Reasoning and Analysis of the Judge:The court held that the plaintiff’s mark “DIMMERSTAT” was registered without a disclaimer, meaning the word “DIMMER” formed part of the plaintiff’s exclusive rights. While “DIMMER” may have some descriptive use, “DIMMERSTAT” as a whole was a distinctive mark for auto transformers. The defendants’ mark “DIMMER DOT” was deceptively similar, particularly because “DIMMER” was the dominant prefix in both marks. The defendants themselves registered “DIMMER DOT” in Australia, contradicting their claim that “DIMMER” was generic. The plaintiff’s delay in filing the suit was not inordinate and did not amount to acquiescence. Honest concurrent use was not established as the defendants falsely claimed registration of their mark.

Final Decision: The court made the ad-interim injunction absolute, restraining the defendants from using “DIMMER DOT” or any other deceptively similar mark. The plaintiff’s application for injunction (I.A. No. 8609/1994) was allowed, and the defendants’ application to vacate the injunction (I.A. No. 10285/1994) was dismissed.

Law Settled in this Case:A registered trademark without a disclaimer covers the entire mark, including individual components. The first syllable of a trademark is often the most significant in assessing deceptive similarity. A mark that is not purely descriptive and has acquired distinctiveness is entitled to protection. The use of a deceptively similar mark constitutes infringement even if part of the mark has descriptive elements. Delay in bringing a suit does not necessarily amount to acquiescence unless the delay is inordinate and prejudices the defendant. Claiming a generic defense is not valid when the defendant itself seeks proprietary rights in a similar mark.

Case Title: Automatic Electric Limited vs R.K. Dgawan & Anr.

Date of Order: 6 January 1999

Case No.: Suit No. 2136/1994

Neutral Citation: 1999 IAD (Delhi) 603, 77 (1999) DLT 292

Court: Delhi High Court

Judge:Hon'ble Judge Shri Dr. M.K. Sharma

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

Remedi Healthcare Vs. Neurosynaptic Communications

Orders Passed by Indian Court are effective within Territory of India 

Facts of the Case:

Remedi Healthcare India Pvt. Ltd. and Remedi, Inc., a South Korean company, appealed against an order passed by the X Additional District and Sessions Judge (Commercial Court), Bengaluru Rural District, in Com O.S. No. 111/2024. The dispute arose over the use of the trademark "Remedi." Neurosynaptic Communications Pvt. Ltd., the respondent, had obtained registration for the trademark "Remedi" in respect of medical diagnostic apparatus on April 2, 2019. The appellant argued that it had a global presence and had been using the trademark "Remedi" since 2012. The respondent, however, contended that the appellant had incorporated in India only in September 2023 and was informed that using the trademark "Remedi" would infringe on its registered trademark. The Commercial Court granted an interim injunction against the appellant, restraining it from using the "Remedi" trademark for medical and diagnostic products. The appellant's application under Section 124 of the Trade Marks Act, seeking a stay of the suit pending rectification proceedings, was rejected.

Issues:

Whether the grant of an injunction against the appellant was justified and whether the application under Section 124 of the Trade Marks Act for a stay of the proceedings was wrongly rejected.

Reasoning of the Court:

The Karnataka High Court examined whether the Commercial Court had properly assessed the validity of the registered trademark and the appellant’s claim of prior use. The Court found that the respondent had been using the trademark since 2004 and had obtained registration in 2017 and 2019 for medical diagnostic apparatus under Class 10. The appellant, although using "Remedi" globally since 2012, failed to provide evidence of use in India before 2023. Since the respondent held a valid registered trademark and the appellant could not establish prior usage in India, the Commercial Court was justified in granting an injunction. The High Court also ruled that under Section 124(5) of the Trade Marks Act, a court can grant an injunction even if the validity of the trademark is under challenge. It further held that the Commercial Court's order did not specify territorial limits, and therefore, the injunction would only apply within India, as Indian courts do not have extraterritorial jurisdiction.

Decision:

The Karnataka High Court upheld the injunction granted by the Commercial Court, limiting its applicability to within India. The appeal was dismissed, affirming that the respondent’s registered trademark should be protected. However, the Court clarified that the injunction would not extend beyond Indian jurisdiction.

Law Point Settled:

A registered trademark holder has the right to seek an injunction against an infringer, even if the infringer claims prior use outside India but fails to establish use within the country. A stay under Section 124 of the Trade Marks Act is not automatic and does not prevent a court from granting an injunction while rectification proceedings are pending. Indian courts lack jurisdiction to enforce trademark injunctions outside the country.

Case Details:

Case Title: Remedi Healthcare vs. Neurosynaptic Communications

Date of Order: August 31, 2024

Case Number: Commercial Appeal No. 264 of 2024

Court: High Court of Karnataka, Bengaluru

Judges: Hon'ble Mrs. Justice Anu Sivaram and Hon'ble Mr. Justice G Basavaraja

Sri Laxmi Balaji Industries vs. Lakshmi Venkateshwar Rice Industries

Sri Laxmi Balaji Industries Vs. Lakshmi Venkateshwar Rice Industries

Facts of the Case:

Sri Laxmi Balaji Industries and Sri Laxmi Vinayaka Rice Industries, both registered partnership firms, were engaged in the rice manufacturing business. They applied for the registration of the trademark "Swamy Ayyappa Gold" and the image of Lord Ayyappa in 2010. Lakshmi Venkateshwar Rice Industries, the respondent, filed a suit (O.S. No. 3/2012) before the Principal District Judge at Ballari, seeking a permanent injunction to restrain the petitioners from using the "Swamy Ayyappa Gold" trademark. The Trial Court granted an interim injunction in favor of the respondent. The petitioners later filed a rectification application before the Registrar of Trademarks, Chennai, challenging the respondent’s trademark. Subsequently, they filed an application under Section 124 of the Trade Marks Act, 1999, seeking a stay of the civil suit proceedings until the rectification application was decided. The Trial Court dismissed the application, prompting the petitioners to file this writ petition before the Karnataka High Court.

Issues:

Whether the Trial Court erred in dismissing the application filed under Section 124 of the Trade Marks Act, 1999, and whether the civil suit should be stayed pending the rectification proceedings before the Registrar of Trademarks, Chennai.

Reasoning of the Court:

The Karnataka High Court analyzed Section 124 of the Trade Marks Act, which mandates the stay of proceedings when the validity of a trademark is challenged and rectification proceedings are pending. The Court referred to Patel Field Marshal Agencies v. P.M. Diesels Ltd. (2018) 2 SCC 112, which clarified that once an issue of invalidity is framed, the matter must be decided by the appropriate tribunal before the civil suit proceeds. The Court observed that the petitioners had challenged the validity of the respondent’s trademark in their written statement and had initiated rectification proceedings. The Trial Court's reasoning that rectification must be pending before filing the suit was incorrect, as Section 124 allows a stay even if rectification proceedings are initiated later. The Court concluded that the Trial Court failed to properly interpret Section 124 and had wrongly dismissed the petitioners’ application.

Decision:

The Karnataka High Court allowed the writ petition and quashed the Trial Court’s order dated March 30, 2013. The Court stayed all further proceedings in O.S. No. 3/2012 until the disposal of the rectification application before the Madras High Court. The petitioners were also directed to expedite the rectification proceedings since the suit had been pending for over a decade.

Law Point Settled:

Section 124 of the Trade Marks Act, 1999, mandates a stay of civil proceedings if a rectification application challenging the validity of a trademark is pending. The pendency of a rectification application is not a prerequisite at the time of filing the suit; it can be filed later, and the court must still consider granting a stay. Once an issue of invalidity is raised, the civil court must defer to the appropriate tribunal for adjudication before proceeding with the case. The Trial Court must examine the prima facie tenability of a challenge to a trademark’s validity before rejecting a stay application under Section 124.

Case Title: Sri Laxmi Balaji Industries vs. Lakshmi Venkateshwar Rice Industries

Date of Order: September 13, 2024

Case Number: WP No. 77807 of 2013

Neutral Citation: 2024:KHC-D:13121

Court: High Court of Karnataka, Dharwad Bench

Judge: Hon'ble Mr. Justice H.P. Sandesh

Veekesy Rubber Industries Pvt Ltd. vs Kamal Bansal

Trademark VKG was held deceptively similar to Trademark VKC

Facts of the Case:

Veekesy Rubber Industries Pvt Ltd., the petitioner, is part of the VKC Group, engaged in footwear manufacturing since 1984. The petitioner owns the registered trademark 'VKC' (Reg. No. 1574632) under Class 25 and has continuously used it since 1985. The respondent, Kamal Bansal, obtained registration of the trademark 'VKG' (Reg. No. 2092681) under Class 25, claiming use since January 7, 2011. The petitioner filed a rectification petition under Sections 47, 57, and 125 of the Trade Marks Act, 1999, seeking the removal of 'VKG' from the Trade Marks Register.

Issues:

The primary issue was whether the registration of 'VKG' by the respondent was deceptive and created confusion with the prior mark 'VKC.' Another question was whether the respondent had genuinely used the trademark 'VKG' in commerce. The case also examined whether the registration of 'VKG' violated Sections 9, 11, and 18 of the Trade Marks Act, 1999.

Reasoning of the Court:

The court noted that the petitioner had prior use of the 'VKC' mark since 1985, whereas the respondent applied for 'VKG' in 2011. The respondent failed to appear in court or submit any evidence proving the actual use of the 'VKG' trademark. Relying on H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd. (2018 DHC 3620), the court held that mere registration does not establish use. The respondent’s failure to prove genuine use of the mark warranted cancellation under Section 47(1)(b) of the Trade Marks Act. The similarity in structure, phonetics, and goods (footwear) between 'VKC' and 'VKG' created a likelihood of confusion in the market.

Decision:

The court ordered the removal of the trademark 'VKG' (Reg. No. 2092681) from the Trade Marks Register. The Registry was directed to notify the Trade Marks Office for compliance.

Law Point Settled:

A trademark can be removed if there is non-use for a continuous period under Section 47(1)(b) of the Trade Marks Act, 1999. Mere registration does not confer trademark rights unless there is genuine commercial use. If a later mark is deceptively similar to a prior mark and causes likelihood of confusion, it can be removed under Sections 9 and 11 of the Act.

Case Details:

:Case Title: Veekesy Rubber Industries Pvt Ltd. vs Kamal Bansal

Date of Order: February 27, 2025

Case Number: C.O. (COMM.IPD-TM) 542/2022

Neutral Citation: 2025:DHC:1451

Court: High Court of Delhi

Judge: Hon'ble Mr. Justice Amit Bansal

The Libman Company Vs. Shankarlal Talsaram

Facts of the Case:

The plaintiff, The Libman Company, a U.S.-based manufacturer of cleaning supplies, owns the trademark "LIBMAN." It has used the mark since 1971 and sells products globally, including in India. The defendant, Libman Technologies Private Limited, was found selling similar cleaning products under the "LIBMAN" mark and using the plaintiff’s corporate name and logo. Upon discovering this, the plaintiff sent a legal notice, which was ignored, leading to the filing of the present suit seeking a permanent injunction for passing off.

Issues:

The primary issue was whether the defendants' use of the "LIBMAN" mark amounted to passing off. The court also considered whether the plaintiff was entitled to a permanent injunction against the defendants and whether damages and costs should be awarded to the plaintiff.

Reasoning of the Court:

The court found that the defendants adopted an identical trademark for identical goods, which was deemed dishonest and intended to deceive consumers. Since the defendants failed to file a written statement or respond, they effectively admitted the plaintiff’s allegations. The court also noted that the plaintiff had established goodwill and reputation in India through continuous use and online sales. The defendants had no real defense, making this case suitable for a summary judgment under Order XIII-A CPC.

Decision:

The court granted a permanent injunction restraining the defendants from using the "LIBMAN" mark or any deceptively similar mark. The defendants were directed to pay damages and costs of ₹5,00,000 to the plaintiff. The court concluded that the defendants’ conduct warranted aggravated damages for their deliberate infringement and evasion of proceedings.

Law Point Settled:

Use of an identical or deceptively similar mark without authorization constitutes passing off. Failure to contest a case and ignoring legal notices can lead to summary judgment under Order XIII-A CPC. Courts can award aggravated damages and costs against infringers who act dishonestly and evade legal proceedings.

Case Details:

Case Title: The Libman Company vs. Shankarlal Talsaram & Others

Date of Order: 27th February, 2025

Case Number: CS(COMM) 290/2023

Neutral Citation: 2025:DHC:1404

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

Chotiwala Food and Hotels Pvt. Ltd. Vs Chotiwala

Facts of the Case: The plaintiffs, Chotiwala Food and Hotels Pvt. Ltd., are the proprietors of the well-known restaurant "Chotiwala" in Rishikesh, Uttarakhand, which was established in 1958. Over the years, the plaintiffs have obtained copyright and trademark registrations for the name "Chotiwala" and its artistic depictions, including a Brahmin mascot with a bodhi.

The plaintiffs alleged that several restaurants in Delhi were unauthorizedly using the "Chotiwala" name, creating confusion among customers. Complaints from customers about substandard food led the plaintiffs to investigate, revealing multiple restaurants misleadingly incorporating "Chotiwala" into their trade names to exploit the goodwill associated with the plaintiffs' brand. The plaintiffs filed a suit seeking a permanent injunction to restrain the defendants from using their trademark and copyright-protected artistic works.

Issues before the Court:Whether the defendants' use of the "Chotiwala" name and artistic representations constitutes trademark and copyright infringement.

Reasoning of the Court:The court noted that the plaintiffs have been using the name "Chotiwala" for over 65 years, making it a well-known mark that has acquired secondary meaning. The plaintiffs provided sales figures, trademark registrations, and previous court orders recognizing their rights.The defendants had adopted the "Chotiwala" name to mislead customers and benefit from the goodwill of the plaintiffs. Evidence showed that online food delivery platforms listed multiple restaurants with similar names, creating substantial confusion. The court found that the unauthorized use was deliberate and intended to deceive the public.As the defendants failed to contest the suit despite service of summons, the court proceeded ex parte, holding that the plaintiffs' claims stood uncontested. Under Order VIII Rule 10 of the CPC, the court deemed the allegations in the plaint as admitted.

Decision of the Court:The court granted a permanent injunction restraining the defendants from using the name "Chotiwala" or any similar mark. The court awarded damages of Rs. 1,00,000/- against each defendant for their mala fide infringement of the plaintiffs’ trademarks and artistic works.A decree of mandatory injunction was passed, directing defendant no. 4 to remove all businesses from its online platform that were using "Chotiwala" or similar names.The plaintiffs were awarded actual litigation costs, with instructions to submit a bill of costs for assessment.

Case Title: Chotiwala Food and Hotels Pvt. Ltd. Vs Chotiwala & Ors.

Date of Order: 27th February 2025

Case Number: CS(COMM) 33/2023

Neutral Citation: Not Provided

Court: High Court of Delhi

Hon'ble Judge: Justice Amit Bansal

Ashok Kumar Gupta Vs Arif Khan

Facts of the Case:The plaintiff, Ashok Kumar Gupta, proprietor of Jai Durga Plaster Industries, along with Sakarni Plaster (India) Pvt. Ltd., has been engaged in manufacturing and marketing Plaster of Paris (P.O.P.) under the brand name "SAKARNI" since 2004. The plaintiff holds trademark and copyright registrations for the mark "SAKARNI" in Class 19 and has extensively promoted the brand.In February 2023, the plaintiff discovered that the defendant, Arif Khan, was selling identical products under the deceptively similar brand name "SIKARNI". The defendant had applied for trademark registration for "SIKARNI" on a "proposed to be used" basis in March 2022. The plaintiff sent a cease and desist notice on 23rdFebruary 2023, which the defendant contested on 2nd June 2023, denying similarity.The plaintiff filed a suit for trademark infringement, copyright infringement, passing off, dilution, and unfair competition.

Issues before the Court:Whether the defendant’s use of the mark "SIKARNI" constitutes trademark and copyright infringement of the plaintiff's "SAKARNI" mark?

Reasoning of the Court:The defendant did not appear in court despite receiving summons and an ex-parte interim injunction was granted on 26th September 2023, restraining the defendant from using the infringing mark. The court noted that the marks "SAKARNI" and "SIKARNI" were phonetically and visually similar, with only minor alterations in spelling.The plaintiff’s brand "SAKARNI" was a well-established trademark with a significant market presence and goodwill since 2004. The defendant’s act of replacing "A" with "I" and adding a small "No.1" to the mark did not create sufficient distinction, leading to a likelihood of consumer confusion.As per prior use doctrine, the plaintiff was the prior user and registrant of the trademark "SAKARNI", whereas the defendant had only applied for registration in 2022 without prior use. The defendant failed to defend the case, and as per Order VIII Rule 10 of CPC, all allegations in the plaint were deemed admitted.

The court cited Satya Infrastructure Ltd. v. Satya Infra & Estates Pvt. Ltd. (2013), stating that ex-parte evidence was not required when the defendant had already failed to contest the suit. The court relied on Inter Ikea Systems BV v. Imtiaz Ahamed (2016 SCC OnLine Del 6717), holding that defendants who evade court proceedings should not be allowed to benefit from their inaction.

Decision of the Court:A decree of permanent injunction was granted against the defendant, restraining him from using the mark "SIKARNI" or any similar mark for wall putty and allied products. The court awarded damages and costs of INR 1,00,000 to the plaintiff due to the defendant’s willful infringement and failure to contest the suit.

Case Title: Ashok Kumar Gupta Vs Arif Khan

Date of Order: 28th February 2025

Case Number: CS(COMM) 608/2023

Neutral Citation: 2025:DHC:1414

Court: High Court of Delhi

Hon'ble Judge: Justice Amit Bansal

Lotus Organic Care Vs. Aadhar Products Pvt. Ltd.

Lotus Organic Care Vs. Aadhar Products Pvt. Ltd.: Under Section 124 of Trademark Act 1999, passing off action can not be stayed.

Introduction:This case involves a dispute between M/S. Lotus Organic Care and M/S. Aadhar Products Pvt. Ltd. concerning trademark infringement and passing off. The primary contention revolves around the validity of the plaintiff's registered trademarks and the application filed by the defendant under Section 124 of the Trademarks Act, 1999, for staying the suit proceedings pending rectification of the trademarks in question.

Detailed Factual Background: The respondent-plaintiff, M/S. Aadhar Products Pvt. Ltd., filed a suit against the petitioner-defendant, M/S. Lotus Organic Care, for infringement and passing off of its registered label trademarks numbered 1961814 and 2551769. The suit was initiated before the Additional District and Sessions Judge, Mawli, District Udaipur. The plaintiff alleged that its trademarks had been unlawfully used by the defendant, leading to consumer confusion and potential loss of business.

The petitioner-defendant, in response, contested the suit, asserting that the plaintiff’s trademark registration was obtained in violation of the Trademarks Act. The defendant claimed prior usage of the disputed marks and argued that the plaintiff’s registration was invalid. Subsequently, the petitioner sought a stay on the suit proceedings under Section 124 of the Act on the grounds that it intended to file a rectification application against the plaintiff’s trademarks.

Detailed Procedural Background:The trial court issued summons upon the filing of the suit by the respondent-plaintiff. The petitioner-defendant filed a written statement, and the trial court framed issues on October 9, 2022. Additional issues were framed on February 23, 2023, based on applications moved by both parties.

The petitioner-defendant later filed an application under Section 124 of the Trademarks Act, 1999, requesting a stay of the suit proceedings, arguing that it proposed to file a rectification application against the plaintiff’s trademarks. After considering the arguments, the trial court rejected the application via an order dated October 19, 2023. Aggrieved by this decision, the petitioner-defendant filed the present writ petition before the Rajasthan High Court, Jodhpur.

Issues Involved in the Case:

1. Whether the petitioner-defendant’s plea for invalidity of the plaintiff’s trademarks was prima facie tenable.

2. Whether the trial court erred in rejecting the application under Section 124 of the Trademarks Act, 1999.

3. Whether the suit proceedings should have been stayed pending rectification of the plaintiff’s trademarks.

Detailed Submission of Parties : The petitioner-defendant contended that the trial court had failed to consider the prima facie validity of its claim under Section 124(1)(ii) of the Trademarks Act. It argued that the trial court was required to be satisfied only to a prima facie extent regarding the invalidity of the plaintiff’s trademark, rather than fully adjudicating the matter.

On the other hand, the respondent-plaintiff submitted that the trial court had rightly rejected the application, as the petitioner had not established a prima facie case for invalidity. The plaintiff asserted that the petitioner’s allegations lacked sufficient legal and factual grounding, and thus, the request for staying the proceedings was unfounded.

Detailed Discussion on Judgments: The Rajasthan High Court, while analyzing the matter, relied upon Section 124(1)(ii) of the Trademarks Act, which states that a suit for infringement should be stayed if the court is prima facie satisfied regarding the invalidity of the plaintiff’s trademark registration. The court examined the pleadings and found that the trial court had improperly rejected the petitioner’s application by failing to recognize the prima facie tenability of the petitioner’s claims.

The court observed that Section 124 mandates the court to prima facie assess the validity of a trademark when a rectification plea is proposed. The court determined that the petitioner had provided sufficient pleadings to warrant prima facie satisfaction regarding the invalidity of the plaintiff’s trademarks. The judge emphasized that the trial court’s role was not to adjudicate the merits of rectification but merely to ascertain whether the allegations had prima facie merit.

Final Decision The High Court allowed the writ petition and quashed the trial court’s order dated October 19, 2023. It directed that the suit proceedings concerning trademark infringement be stayed to allow the petitioner to file a rectification application. However, the court clarified that the suit proceedings concerning passing off would continue independently.

Law Settled: In This Case This judgment reiterates that under Section 124 of the Trademarks Act, the trial court must stay suit proceedings if it finds prima facie tenability in a rectification plea. The decision establishes that the trial court need not adjudicate the full merits of invalidity but must ensure that sufficient grounds exist to warrant rectification proceedings.

Case Title: M/S. Lotus Organic Care Vs M/S. Aadhar Products Pvt. Ltd.
Date of Order: May 16, 2024
Case No.: CW-18461/2023
Neutral Citation: [2024:RJ-JD:22234]
Name of Court: Rajasthan High Court, Jodhpur
Name of Judge: Hon’ble Mr. Justice Vinit Kumar Mathur

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

Daikin Industries Ltd Vs Union of India

Patent examination must follow the "why" and "what" standard, ensuring proper justification for rejection

Brief Facts of the Case:

The case involved an appeal against an order dated 22nd October 2021, wherein Daikin Industries Ltd's patent application 1481/KOLNP/2014, titled "Air Conditioning Apparatus", was rejected. The rejection was based on the ground that the invention lacked inventive step under Section 2(1)(ja) of the Patents Act, 1970.

Daikin argued that: 1. The impugned order was unreasoned and unsustainable.2. The order mechanically relied on prior art documents (D1-D5) without explaining their relevance.3. The Controller introduced D5 in the hearing notice dated 14th June 2021, which was absent in the First Examination Report (FER).4. The procedure followed was contrary to natural justice principles.

Brief Issue:Whether the rejection of Daikin’s patent application on the ground of lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970, was justified, considering the procedural lapses and the absence of proper reasoning in the impugned order.

Reasoning of the Court:The Court found that the Controller's order lacked proper reasoning and merely reproduced prior art documents without independent analysis.The order failed to satisfy the "why" and "what" test, as laid down in the case of Toyo Engineering Corporation & Anr. vs. The Controller General of Patents.The absence of an analysis on how the cited prior arts invalidated Daikin’s invention rendered the order unsustainable.The Court held that the rejection violated principles of natural justice since one of the prior art documents (D5) was introduced at a later stage without giving the applicant sufficient opportunity to counter it.

Decision:The Court set aside the impugned order.It remanded the matter back to the Controller for a fresh hearing within four months.The Court clarified that no adjudication on merits was made and all questions remained open.

Law Point Settled:Patent rejection orders must contain clear reasoning explaining why an invention lacks inventive step, rather than merely reproducing prior art references.Introduction of new prior art documents at later stages without due process violates natural justice principles.Patent examination must follow the "why" and "what" standard, ensuring proper justification for rejection.This judgment reinforces transparency and fairness in patent rejection decisions, particularly in cases involving inventive step analysis under Section 2(1)(ja) of the Patents Act, 1970.

Case Title: Daikin Industries Ltd Vs Union of India

Date of Order: 26th February 2025

Case Number: IPDAID/38/2024 [OLD NO AID/19/2022]

Court: High Court at Calcutta 

Hon'ble Judge: 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

Allied Blenders And Distillers Limited Vs Boutique Spirit Brands Private Limited

Phonetic similarity between two marks can constitute trademark infringement, even if the marks have minor visual differences.

Introduction:

The case involves a trademark rectification dispute between Allied Blenders And Distillers Limited and Boutique Spirit Brands Private Limited over the trademarks "KYRON" and "BSB MYRON" in relation to alcoholic beverages. The petitioner sought cancellation of the respondent’s registered trademarks on the grounds of deceptive similarity and dishonest adoption. The court had previously granted an interim injunction restraining the respondent from using the mark "MYRON", which was later made absolute.

Detailed Factual Background:

The petitioner, Allied Blenders And Distillers Limited, is a well-known manufacturer of Indian Made Foreign Liquor (IMFL), selling beverages under various trademarks, including "KYRON", since 2012. The "KYRON" mark was registered under Classes 9, 32, and 33, signifying its distinctiveness in the alcoholic beverages industry. The respondent, Boutique Spirit Brands Private Limited, applied for registration of the trademark "BSB MYRON" on a proposed-to-be-used basis in 2020 under Classes 32 and 33.

The petitioner alleged that the respondent's mark "BSB MYRON" was deceptively similar to "KYRON" both phonetically and visually. The petitioner claimed that the respondent deliberately emphasized the word "MYRON" while rendering the prefix "BSB" inconspicuous to cause confusion among consumers.

Detailed Procedural Background:

The petitioner filed a suit bearing CS (COMM) 395/2023 for trademark infringement and passing off before the Delhi High Court. An interim injunction was granted on 1 June 2023, restraining the respondent from using the marks "MYRON" or "BSB MYRON" for IMFL products. The injunction was later made absolute on 18 December 2023. The petitioner subsequently filed rectification petitions seeking cancellation of the respondent's trademark registrations under Section 57 of the Trade Marks Act, 1999.Despite service of notice by publication and email, the respondent failed to appear before the court, resulting in the closure of its right to file a reply on 1 March 2024. The court proceeded to hear the matter ex parte.

Issues Involved in the Case:

Whether the respondent's trademark "BSB MYRON" is deceptively similar to the petitioner's trademark "KYRON" and liable to be cancelled under Section 57 of the Trade Marks Act, 1999.

Petitioner submitted that:The mark "KYRON" has been in continuous use since 2012 and has gained substantial goodwill in India and abroad.The respondent’s mark "BSB MYRON" is deceptively similar to "KYRON", both visually and phonetically, and is likely to cause confusion among consumers.The respondent's dishonest intention was evident from its use of "MYRON" in large font size while rendering "BSB" in smaller and less prominent letters.The petitioner’s products under the "KYRON" brand had received international awards, including the Superior Taste Award 2021 and the Monde Selection Award 2022, further establishing their reputation.

Detailed Discussion on Judgments Cited by Parties:

The court relied on several judgments regarding phonetic similarity and deceptive similarity:K.R. Chinna Krishna Chettiar vs Sri Ambal & Co., (1969) 2 SCC 131 – Holding that resemblance between marks must be considered with reference to both the eye and the ear.Ruston v. Zamindara Engineering Co., (1970) 2 SCC 134 – Holding that phonetic similarity between two marks may lead to likelihood of confusion.Heifer Project International vs Heifer Project India Trust, 2024 SCC OnLine Del 2847 – Holding that marks operating in the same business segment with nearly identical phonetic characteristics are likely to cause deception.Kia Wang vs Registrar of Trademarks, 2023 SCC OnLine Del 5844 – Recognizing the superior rights of a prior user over a subsequent registrant.

Detailed Reasoning and Analysis of Judge:

The court found that the essential feature of the respondent's mark was "MYRON", which was deceptively similar to the petitioner’s mark "KYRON" both phonetically and visually. The manner in which the respondent displayed "MYRON" prominently while downplaying "BSB" indicated a dishonest intention to cause confusion.

The court observed that the petitioner was the prior user of the mark since 2012, while the respondent's applications were filed only in 2020 on a proposed-to-be-used basis. The respondent failed to place any evidence of actual use on record, reinforcing the petitioner’s claim of dishonest adoption.

The court held that the respondent's mark was likely to deceive consumers, especially considering that both parties operated in the same industry and targeted the same customer base.

Final Decision:

The court directed the Registrar of Trade Marks to cancel the respondent's trademark registrations numbered 4544212 (Class 32) and 4544211 (Class 33) and rectify the Trade Marks Register accordingly. The petitioner's request for costs was waived.

Law Settled in This Case:

A trademark that is deceptively similar to a prior registered mark is liable to be cancelled under Section 57 of the Trade Marks Act, 1999.The phonetic similarity between two marks can constitute trademark infringement, even if the marks have minor visual differences.The prior user rule confers superior rights over a subsequent registrant, regardless of the latter’s registration status.The manner of use of a trademark, including highlighting certain components over others, can indicate dishonest intention.Failure to place evidence of actual commercial use on record weakens the case of a subsequent registrant.

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

Date of Order: 22 February 2025

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

Name of Court:Delhi High Court

Neutral Citation:2025:DHC:1152

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

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

Nippon Paint Holdings Co. Ltd Vs Suraj Sharma

Nippon Paint Holdings Co. Ltd Vs Suraj Sharma: Madras High Court has jurisdiction to transfer the rectification proceedings from the Trade Marks Registry, New Delhi, to itself

Introduction:

The case involves a trademark dispute between Nippon Paint Holdings Co. Ltd and Suraj Sharma, where the plaintiffs sought transfer of a rectification petition pending before the Trade Marks Registry, New Delhi, to the Madras High Court. The primary contention was whether the Madras High Court had territorial jurisdiction to consolidate the rectification petition with an infringement suit already pending before it.

Detailed Factual Background:

The plaintiffs, Nippon Paint Holdings Co. Ltd and Nippon Paint (India) Pvt. Ltd., had obtained trademark registration for "NIPPON PAINT" from the Trade Marks Registry, Chennai. They alleged that the defendants, Suraj Sharma and M/S Nippon Paints & Chemicals, had copied their trademark and wrongfully obtained registration from the Trade Marks Registry, New Delhi.

Before filing the infringement suit, the plaintiffs filed a rectification petition before the Trade Marks Registry, New Delhi, challenging the defendants' trademark. However, since the plaintiffs had already initiated an infringement suit before the Madras High Court, they sought transfer of the rectification proceedings to the Madras High Court to ensure a comprehensive adjudication.

The defendants contested this application, arguing that the Madras High Court lacked territorial jurisdiction over a rectification petition pending before the New Delhi Trade Marks Registry. They also claimed that the plaintiffs should have pursued rectification before the Delhi High Court, which has appellate jurisdiction over the New Delhi Trade Marks Registry.

Detailed Procedural Background:

1. The plaintiffs obtained registration for "NIPPON PAINT" from the Chennai Trade Marks Registry.

2. The defendants obtained a separate trademark registration from the New Delhi Trade Marks Registry.

3. The plaintiffs discovered the defendants' registration and filed a rectification petition before the New Delhi Trade Marks Registry.

4. The plaintiffs then filed an infringement suit before the Madras High Court, alleging that the defendants were selling infringing products in Chennai.

5. The plaintiffs subsequently filed an application before the Madras High Court, seeking transfer of the rectification proceedings to its jurisdiction.

6. The defendants opposed this transfer, arguing that the rectification petition should be decided by the Delhi High Court, as per jurisdictional norms under the Trade Marks Act, 1999.

Issues Involved in the Case:

1. Whether the Madras High Court had jurisdiction to transfer the rectification proceedings from the Trade Marks Registry, New Delhi, to itself.

2. Whether Rule 14 of the Madras High Court Intellectual Property Rights Division Rules, 2022, allowed consolidation of proceedings.

3. Whether the defendants’ objection based on territorial jurisdiction was valid.

4. Whether Section 124 of the Trade Marks Act, 1999, required the infringement suit to be stayed pending rectification.

5. Whether transferring the rectification petition would prevent conflicting judgments.

Detailed Submission of Parties:

Plaintiffs (Nippon Paint Holdings Co. Ltd) argued that:The Madras High Court had jurisdiction to hear the rectification petition because the defendants were infringing their trademark in Chennai.Rule 14 of the Madras High Court Intellectual Property Rights Division Rules, 2022, allowed the court to consolidate related proceedings.Since the defendants' trademark registration affected the plaintiffs' rights in Chennai, the dynamic effect of the impugned registration was felt within the Madras High Court’s jurisdiction.The plaintiffs cited the Supreme Court’s judgment in Shah Newaz Khan v. State of Nagaland (2023 SCC Online SC 203) to argue that restrictive interpretations of jurisdiction should be avoided when access to justice is at stake.

Defendants (Suraj Sharma) argued that:The rectification petition was pending before the New Delhi Trade Marks Registry, meaning that only the Delhi High Court had appellate jurisdiction over it.Section 124 of the Trade Marks Act, 1999, required that the infringement suit be stayed until the rectification proceedings were concluded.Allowing the transfer would deprive them of their statutory right to appeal before the Delhi High Court.The Delhi High Court, in The Hershey Company v. Dilip Kumar Bacha (2024 MANU/DE/0904/2024), had referred the issue of jurisdiction to a Larger Bench, indicating that the matter was unsettled.

Detailed Discussion on Judgments Cited by Parties:

The court examined several precedents:Dr. Reddy's Laboratories Ltd. v. Fast Cure Pharma (2023 SCC Online Del 5409) – Held that if the dynamic effect of a trademark registration is felt within a High Court’s jurisdiction, that High Court has jurisdiction over rectification petitions.Asia Match Co. Pvt. Ltd. v. Deputy Registrar of Trademarks (2023:MHC:5361, W.P.(IPD)/30/2023, Madras High Court) – Held that the Registrar of Trade Marks should exercise discretion in transferring rectification petitions where infringement suits are pending.Jumeirah Beach Resort LLC v. Designarch Infrastructure Pvt. Ltd. (2022 MANU/DEOR/194894/2022, Delhi High Court) – Held that if the Registrar can refer a matter to the High Court, the High Court can also direct the transfer of the matter to itself.

Detailed Reasoning and Analysis of Judge:

The court ruled in favor of the plaintiffs, holding that:There was no statutory bar under the Trade Marks Act, 1999, preventing the Madras High Court from hearing a rectification petition.The dynamic effect of the defendants’ trademark registration was felt in Chennai, where the plaintiffs were facing infringement.The Registrar of Trade Marks had the power under Section 125(2) of the Trade Marks Act to transfer rectification proceedings to the High Court.Consolidating the rectification petition and the infringement suit would prevent conflicting decisions.

Final Decision:The Madras High Court allowed the transfer application and directed the Trade Marks Registry, New Delhi, to transfer the rectification petition to the Madras High Court within four weeks.

Law Settled in This Case:A High Court hearing a trademark infringement suit can also entertain a related rectification petition, even if it was originally filed before a different Trade Marks Registry.The "dynamic effect" principle allows a High Court to assert jurisdiction over a rectification petition if the registration affects businesses within its territorial limits.Consolidating related trademark proceedings in a single court prevents conflicting judgments and ensures comprehensive adjudication.The Registrar of Trade Marks has the power under Section 125(2) to transfer rectification proceedings to a High Court.Restrictive interpretations of jurisdiction should be avoided when access to justice is at stake.

Case Title: Nippon Paint Holdings Co. Ltd Vs Suraj Sharma

Date of Order: 21 March 2024

Case No.: A.No.556 of 2024 in C.S.(Comm.Div.) No.7 of 2024

Name of Court:High Court of Madras

Name of Judge: Hon’ble Mr. Justice Abdul Quddhose

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