Hatsun Agro Products Ltd. Vs Arokya Foods

====================
01.08.2022
Civil Suit No. 34 of 2015
Hon'ble High Court of Judicature at Madras
Senthil Kumar Ramamoorthy H J
Hatsun Agro Products Ltd. Vs Arokiya Foods

The subject matter suit for infringement and Passing off was filed by the Plaintiff against the Defendant from using the offending trademark 'AROKYA' written in Tamil or any other trademark or marks which are in any way identical or deceptively similar or colourable imitation of the plaintiff's trademark.

The Plaintiff claimed to have been using the Trademark AROKYA in relation to Dairy product since the year 1995. Para 2

The Plaintiff was also having Trademark registration for the Trademark AROKYA in class 29 and 32.

The Defendant was using the Trademark AROKYA in relation to Idly and Dosa since the year 2001. Para 3

Defendant also claimed to be registered proprietor of Trademark AROKYA.

The Plaintiff was aware of Defendant since the year 2009 as notice was issued in the year 2009 itself. However suit was filed in the yea r 2015, after gap of 6 years.

There has been delay of more than 5 years in filing the suit by the Plaintiff after becoming aware of Defendants registration. Defendant was entitled to benefit of Section 33 of the Act. Para 20-24.

Goods of the Plaintiff , i.e. Dairy product is different from Goods of the Defendant , i.e. Idly and Dosa. Para 32

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Janssen Pharma Vs MSN Laboratory

====================
24.08.2022
COMS No. 18 of 2022
Hon'ble High Court of Himachal Pradesh
Vivek Singh Thakur
Janssen Pharma Vs MSN Laboratory

The subject matter suit for infringement of Patent was filed by the Plaintiff against the Defendant No.1 for infringement of Indian Patent under No.232231 dated 30.07.2024.

It was claimed that Plaintiff No.1 and 3 were exclusive licensee of proforma Defendant No.2. The suit was filed against the Defendant No.1,  as according to the expert report filed by the Plaintiff, the products of the Defendant No.1 were infringing the registered Indian Patent of the Plaintiffs.

The Defendant No.1 made reference to Section 107 of the Patent Act 1970 and relied upon all the grounds which were available seeking revocation of the Patent.

The Defendant No.1 also alleged that the present suit is misconceived as the Plaintiffs are not the owner of the subject matter Patent and that the same are merely licensee.

However the ex parte injunction was granted as the subject matter Patent has remained unchallenged for almost 18 years after its grant and that the same was sufficiently old.

More over neither any objection was raised under Section 13(4) of the Patent Act 1970 at the examination stage nor any objection under Section 25 of the Indian Patent Act 1970.

As the patented product remained commercially successful for sufficiently long time, the Hon'ble High Court of Himachal Pradesh was pleased to grant ex parte injunction in favour of the Plaintiffs.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Novartis AG Vs Controller of Patents and Designs

====================
Order Date:23.08.2022
Case No. CA (Comm.IPD-PAT) 12 of 2022
Hon'ble High Court of Delhi
Prathiba M Singh
Novartis AG Vs Controller of Patents and Designs

What is significance of efficacy test in devisional Patent Application? Can Test of enhanced therapeutic efficacy may be applied to evaluate patentability of Divisional Patent Application?

This issue has been addressed by Hon'ble High Court of Delhi in its Judgement dated  23.08.2022 passed in Appeal bearing No. CA (Comm.IPD-PAT) 12 of 2022 titled as Novartis AG Vs Controller of Patents and Designs.

Let us first of all understand as to what is the devisional application? When specification of Single Patent Application contains multiple inventions, then devisional Patent Application can be filed in relation to each single invention out of those multiple inventions disclosed in the Patent Patent Application. This is but natural that Divisional Patent Application can only be filed after filing of Parent Patent Application.

Section 16 of the Patent Act 1970 provides for filing of Divisional Patent Application. The same is reproduced as under:

16 (1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

(2). The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

From bare perusal of the afore mentioned provision, i.e. Section 16 of the Patent Act 1970 ,it is clear that for a Divisional Patent Application to succeed, following criterion has to be satisfied.

The First one is that it has to be in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

Another requirement for divisional Patent Application is that there should not be duplication of claims in the two specifications i.e., the parent specification and the divisional specification.

It means all the claims of the divisional application must be present in the original patent application.

Another requirement is that there should not be any repetition of claim in the provisional application, which were already present in the Parent Application.

Now coming on the facts of the case, this Appeal was filed against the order dated 28.09.2020 passed by  Controller of Patent where by  divisional application for Patent Application filed by the Appellant under No. 7863/DELNP/2014 was refused.

The finding of Controller for rejecting the divisional application was that subject matter of the said divisional application under No. 7863/DELNP/2014 was that it belongs to the same broad class and group as the subject matter of granted claims 1 to 3 of the parent application under No. 8114/DELNP/2007.

The objection of controller of Patent was that replacement of benzofuran of the parent compound by indazole moiety in claim 1 of the divisional application did not bring about any increase in therapeutic efficacy and showed same therapeutic behaviour.

The Hon'ble High Court of Delhi , however observed that the question of therapeutic efficacy under Section 3(d) of the Act would arise only if the application in question was a completely independent application and did not originate from a parent application.

The Hon'ble High Court of Delhi was pleased to set aside the finding of the controller of Patent and observed that since the divisional application traces its origin to the parent application, the test of therapeutic efficacy would not apply while judging as to whether the compound claimed in the divisional application is a valid claim in a divisional application or not.

Thus it is apparent that test of therapeutic efficacy can not be a criteria for evaluating a divisional Patent Application.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

ITC Limited Vs Muralidharan Nair

====================
Order Date:24.08.2022
Case No. GA/1/2016 in CS No.272/2016
Calcutta High Court
Krishna Rao
ITC Limited Vs Muralidharan Nair

Joinder of Several causes of action is permissible in law provided that they are intimately connected so as to justify their being included in one suit.

Where there are two more causes pending in the Court and it appears that some question of law or fact arises in both or the suits or that the rights to relief claimed in the suits are in respect of or arise out of the same transaction or series of transaction or that for some other reason, it is desirable to make an order directing consolidation of suits.

The cause of action for infringement of Trademark and passing off are almost same.

In order to determine whether the defendants mark is similar to the
plaintiff’s mark or imitation of the plaintiff’s mark, the same tests would have
to be followed both in case of infringement and passing off.

Accordingly the Plaintiff was allowed to join together with its causes of action against the defendants in respect of infringement and passing off of its trademark “AKSHAYA” and “AASHIRVAAD” and to have the same tried and adjudicated upon joint in CS 272 of 2016.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539

Star India Private Limited Vs MHDTV.WORLD

====================
Order Date:22.08.2022
Case No.CS(COMM) 567/2022
Delhi High Court
Prathiba M Singh
Star India Private Limited Vs MHDTV.WORLD

The Subject matter Suit was filed against various rogue websites apprehending that these rogue websites are likely to illegally
stream and telecast the Asia Cup Cricketing events scheduled from 27th
August, 2022 onward.

The main problem with these websites are that these websites surface frequently, and on a periodic basis, as domain names can be registered with minor modifications, and the content of the website can be very easily moved from one website to the another one.

Accordingly 11 rogue websites were restrained from hosting, streaming, broadcasting, rebroadcasting, retransmitting or in any other manner communicating to the public, or disseminating to the public, any cricketing events, extracts, excerpts, highlights in relation to cricket matches relating to the Asia Cup 2022 commencing from 27th August, 2022 to 11th September, 2022.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

===============

Dhani Aggarwal Vs Mahesh Yadav

====================
Order Date:22.08.2022
Case No.FAO-IPD 23/2021
Delhi High Court
Navin Chawla, H.J.
Dhani Aggarwal Vs Mahesh Yadav

In case a party itself has applied for obtaining Trade mark registration, can he take plea of the Trademark being common to Trade?

Or in other words, whether defence of publici juris is available to a party , who it self applied for obtaining Trade mark application?

This was one of the issue before the Hon'ble High Court of Delhi in Appeal bearing No.FAO-IPD 23/2021 titled as
Dhani Aggarwal Vs Mahesh Yadav.

This Appeal was filed by the Appellant whereby interim injunction application of the Appellant was allowed in part.

The subject matter Suit was filed by the Appellant on the basis of proprietary rights in the Trademark RAMU.

Suit was filed against use of Trademark RAMAA by the Respondent.

The Ld. Trial Court , after observing Trade Mark RAMU and RAMAA not to be similar, however was pleased to restrain the Respondent from using outer similar trade dress.

But the Ld. Trial Court also allowed the Respondent for using the inner packaging. It was this order, which was challenged by the Appellant/Plaintiff in the present Appeal.

The Court observed that though the Appellant's Label , but the dominant feature of the Appellant's Trademark/Label was RAMU , hence the word mark RAMU in the label is also equally worth of protection. Para 26.

Appellants goods were khurmani , munnakaa , but Respondents goods were Almod. Though the Appellant did not deal with Almond however competing products of the parties were held to be allied and cognate goods, being sold on the shape shop. Hence there was possibility of confusion. Para 29

Trademark of the Appellant i.e RAMU and Respondent's Trademark RTC RAMAA were held deceptively similar to each other. Para 38.

The Hon'ble Court rejected this argument of the Respondent that Appellant is not using the Trademark which is registered in its favour, hence is liable to be cancelled, on the ground that this ground has not been taken in the written statement. Para 49-50.

Word RAMU was held to be arbitrary in relation to Appellant's products i.e. dry products. Para 53

As the Respondent itself has applied for Trademark registration for trademark RAMAA hence the same is estopped from alleging the trade mark of Appellant i.e. RAMU to be publici juris. Para 53

The Court has reiterated this law in the ground that when a party itself asserts trade mark right by applying for Trademark , then he can not take contrary plea of the trademark being common to trade.

Accordingly the subject matter Appeal was allowed and the Respondents were restrained from using the impugned Trademark RAMAA.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

===============

Astral Poly Technik Vs Astralglee

====================
Order Date:22.08.2022
Case No.CS (Comm) 440 of 2020
Delhi High Court
Navin Chawla, H.J.
Astral Poly Technik Vs Astralglee

Plaintiff filed the subject matter Suit on the basis of proprietary right in the Trademark ASTRAL in relation to their goods and business of  manufacturing, distributing and selling of high-quality pipes, parts and fittings for use in plumbing, sewage and drainage, agriculture, surface drainage, industrial use, fire protection, cable protection, urban infrastructure, insulation; adhesives and ancillary products such as clams, hangers, pipe flanges and connectors; surface and glass cleaners, sanitizers, stain removers and surface protectants.

Plaintiff was also having Trademark registration for the Trademark ASTRAL in class 03 in relation to Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The subject matter Suit was filed against the Defendant for their impugned  user of Trademark ASTRALGLEE in relation to retail, wholesale, import, export, trading, marketing and advertising of essential oils, cosmetic products.

The Hon'ble High Court of Delhi , vide afore mentioned Judgement dated 22.08.2022 , was pleased to restrain  the defendant from using the trademark ASTRALGLEE after holding that Trademark ASTRALGLEE of the Defendant is similar to ASTRAL trademark of the Plaintiff.

While doing so, the Hon'ble Court refuted the argument of the Defendant regarding non user of registered Trademark of the Plaintiff after observing that no step has been taken by the Defendant to seek cancellation of Plaintiff's registered Trademark.

The Hon'ble High Court of Delhi also observed that once the court reached this conclusion that there is possibility of confusion vis a vis user of the Defendant, then this fact become immaterial whether the adoption of the Defendant is honest or not? After observing that the Defendant itself has applied for obtaining registration for trademark ASTRALGLEE the same can not take the plea to be common to trade, rightly interim injunction application of the plaintiff.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

G M Modular Vs Syska Led

====================
Order Date:22.08.2022
Case No.CS (Comm) 329 of 2021
Delhi High Court
Navin Chawla, H.J.
G.M.Modular Vs Syska Led 

The Subject matter Suit for Design Infringement was filed by the Plaintiff on the basis of its registered design of the ‘LED Surface Light’, duly registered with the Controller of Design, under Design No. 282812, dated 22.04.2016, in Class 26-03. 

The Suit was filed before the Ld.District Court Delhi where in initially ex parte injunction was granted. However the matter got transferred to Hon'ble High Court of Delhi as plea of invalidity was taken by the Defendant.

The Defendant alleged that the Plaintiff has also obtained Trade Mark registration in relation to same design. Hence by virtue of Section 2 (d )of the Design Act 2000, the Plaintiff is estopped from claiming design right in the same.

Thought plaintiff sought to clarify that the afore mentioned Design and Tradeamrk Registrations were obtained as per law laid down by the Hon'bke High Court of Delhi in Mohan Lal Case, during the relevant time. As of now the Plaintiff has already sought withdrawal of the afore mentioned Design, in view of Carlsberg Judgement.

However the Hon'ble High Court of Delhi rejected this argument of the Plaintiff by observing that filing of the application seeking registration in the shape of the product as a trade mark simultaneously with the application for registration of the same as a design under the Act, would render the registration of the design suspect and disentitle the plaintiff to an ad interim relief. 

The Court further observed that filing of an application seeking cancellation of the registration as a trade mark subsequently will be insufficient to wipe out the disability of such shape being registered as a design. 

Another reason for vacating the ex parte injunction was that the Plaintiff was getting subject matter Design product manufactured from China. Though the Plaintiff argued that the same was getting the subject matter Design product manufactured from China on Job Work basis, however no document substantiating this claim was filed by the Plaintiff. In view of above the Hon'ble High Court of Delhi was pleased to vacate the ex parte injunction granted in its favour.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

Devarpan Foods Pvt.Ltd. Vs Sukhwant Singh and others

Order Date:17.08.2022
Case No. FAO (Comm) 116 of 2022
Delhi High Court
Vibhu Bakhru and Amit Mahajan, H.J.
Devarpan Foods Pvt. Ltd. Vs Sukhwant Singh and others

The issue of territorial jurisdiction was there in the subject matter Appeal. The Appellant filed subject matter Suit seeking infringement of copyright and passing off.

The Ld. Trial Court allowed the Application of Respondent under Order 7 Rule 10 CPC in part.

The Ld. Trial Court held that the same has jurisdiction to entertain the subject matter suit, in so far infringement of copyright.

However , with respect to passing off, the Ld. Trial Court held that the Plaintiff has failed to substantiate the claim of accrual of cause of action in part within the jurisdiction.

Accordingly, the Plaint was directed to be amended in order to giving up the relief pertaining to passing off.

This was the order, which was under challenge by the Appellant before the Hon'ble Division Bench, High Court of Delhi.

The Hon'ble Division Bench allowed the Appeal on the ground that while deciding the issue of territorial jurisdiction, only averment made in the plaint has to be seen.

As the Plaintiff has made categorical averment in the plaint regarding availability of Respondents product within the territorial jurisdiction, it was held that the Ld. Trial Court does have territorial Jurisdiction to entertain the matter even in relation to passing off action also.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

Mr. L.V.Degao Vs HTC Corporation

Order Date:04.08.2022
Case No. FAO OS (Comm) 169 of 2022
Delhi High Court
Vibhu Bakhru and Amit Mahajan, H.J.
Mr. L.V.Degao Vs HTC Corporation

Respondent's Trademark: The subject matter Trademark of the Appellant involved was HTC.

Respondent's Goods: Smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head mounted displays, etc.

Appellant's Trade mark: The subject matter impugned Trademark of the Appellant was HTC

Goods of Appellant: Electric hair trimmers, hair clippers and hair dryers

Appellant was the Defendant and Respondent was the Plaintiff in the subject matter suit.

The present Appeal was filed against grant of injunction by the Hon'ble Single Judge against the Appellant.

The Appellant applied for trademark HTC in different font. But using in the identical lettering style as that of the Respondent.

Appellant has no explanation for this.

The Appellant changed the lettering style of Trademark HTC and started to use the Trademark, as applied for by them.

However , no relief was granted by the Hon'ble Division Bench as the explanation given by the Appellant for adoption of impugned Trademark was held not to be plausible.

The Appellant was held to be dishonest adopter of the Trademark HTC.

More over the Hon'ble Division Bench was also of the view that because of impugned Trademark HTC by the Appellant in relation to Electric hair trimmers, hair clippers and hair dryers would also create confusion and deception in the minds of customer and product of Appellant and product of Respondent namely Smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head mounted displays, etc. are sold under the same shop.

The Hon'ble Division Bench observed that the Hon'ble Single Judge rightly restrained the Respondent from using the impugned Trademark HTC in relation to  Electric hair trimmers, hair clippers and hair dryers. 

Accordingly Appeal was Dismissed.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539