Macleods Pharmaceuticals Limited Vs Union of India and Others

Judgment date: 15.02.2023
Case No: Writ Petition No. 1517 of 2022
Neutral Citation No.
Name of Court: High Court of Judicature at Mumbai
Name of Hon'ble Justice: S.V. Gangapurwala and Madhav V Jamdar HJ
Case Title: Macleods Pharmaceuticals Limited Vs Union of India and Others

The Party: Petitioner namely Macleods Pharma was the registered Proprietor of Trademark OFLOMAC under No.838726 in class 05, while Respondent No.4 namely Sun Pharma is the party who has filed rectification Petition before Intellectual Property Appellate Board bearing ORA/66/2014/ TM/MUM seeking cancellation of Petitioner's afore mentioned registered Trademark.

The Judgement Assailed:
The Subject Matter Writ Petition was filed against impugned Judgement dated 15.02.2023 of IPAB where by registered Trademark of the Petitioner namely OFLOMAC was cancelled at the behest of cancellation Petition filed by the Respondent No.4 claiming to be prior registered proprietor and prior user of the Trademark OFRAMAX.

The Relevant Registration of Parties:
Petitioner's Registered Trademark: OFLOMAC under No.838726 in class 05 is dated 28.01.1999.

Registration of Respondent No.4: OFRAMAX in class 05 dated 30.08.1989.

Trade Mark was cancelled on the ground of deceptive similarity.

The Judgement of Hon'ble Division Bench:

The Hon'ble Division Bench, High Court of Judicature at Mumbai was pleased to reject the subject matter Writ Petition. While doing so, few important observation made by the Hon'ble Division Bench are as follows:

1. Even Doctors are not immune to confusion.

2.While Comparing two trade marks, the test of English People would not apply in India as unlike English People, in India , there are various languages and people in India are not that much educated as In England.

3.The Point of similarities of trademarks has to be weighed with respect to man of average intelligence having imperfect recollection.

4.While dealing with medicinal preparation, the test is not that doctors who prescribed medicine, but the test is the patients who are going to purchase the medicine.

5. Confusion and deception may also occur in relation to prescription drug.

6.The decisions given in interlocutory applications do not decide cases conclusively.Hence tha same is not binding.

7.Limitation Act is not applicable to the cancellation petitions.

8.The substance of Application has to be seen and not the provisions mentioned therein. Though Section 151 CPC was mentioned in the Application, however it was in fact meant to be application under Section 124 of Trade Marks Act 1999.

9.The cancellation Petition was filed prior to filing of Application under Section 124 of TM Act. The Rectification Petition was still held to be maintainable.

10.Under Section 124 of Trade Marks Act, only prima facie tenability of issue of invalidity has to be seen.

11. In writ jurisdiction , jurisdiction of court is very limited. It interferes with the order assailed, where it can be seen that there has improper excercise of jurisdiction by the lower authority.


DISCLAIMER:
This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein.

Ajay Amitabh Suman
Patent and Trademark Attorney
Hon'ble High Court of Delhi.
Email: ajayamitabh7@gmail.com,
Ph No: 9990389539

M M Kariappa Vs Advance Magazine Publishers Inc

Judgment date:10.11.2022

Case No. Regular First Appeal No. 106 of 2015

Name of Court: High Court of Karnataka at Bengaluru

Name of Hon'ble Justice: M I Arun, H.J.

Case Title: M M Kariappa Vs Advance Magazine Publishers Inc

Respondent’s Trademark: VOGUE

Respondent’s Product: Magazine Publications

Respondent’s Registration is in class 16.

Respondent’s claimed user: Since 1892

Appellant’s Trademark: VOGUE

Appellant’s Product: Running a training Institute under the name of VOGUE Institute of Fashion Technology.

Appellant is the Defendant and Respondent is the Plaintiff in the subject matter Suit. The Appellant has filed the subject matter Suit against the Appellant seeking the relief of permanent injunction against use of Trademark VOGUE in relation to Fashion Training Institute. This Suit was decreed in favour of the Respondent and against the Appellant. It is against this decree, the subject matter Appeal has been preferred by the Appellant.

The Hon’ble High Court of Karnataka , has allowed the Appeal on the following main grounds:

i. The Appellant admitted that VOGUE is an internationally reputed fashion Magazine. Even trademark VOGUE used by the parties were same. Still relief of Infringement and passing off declined for the reasons mentioned herein below.

ii. The Court further observed that the Respondent does have trademark registration in class 16, which does not cover the services of Appellant. Hence infringement of Trademark can not be granted.

iii. The claim of passing off was also declined and VOGUE magazine is not subscribed by large number of people and that too that limited section of society are generally aware about the fashion.

iv.The class of purchasers who purchases the magazine are well informed about the Respondent and hence there can not be possibility of confusion and deception in the market.

v.The Persons who join the Appellant’s institute are in fact informed persons and it is highly unlikely that they would get confused.

vii. Thus relief of infringement as well as passing off both was denied and resultantly the Appeal was allowed. 

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors in perception , and presentation of the case, including clerical errors.

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HS Sahni Vs Mukul Singhal

Judgment date: 10.11.2022

Case No. FAO (COMM) 88/2021

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Vibhu Bakhru and Amit Mahajan H.J.

Case Title: HS Sahni Vs Mukul Singhal

 

Appellant's Trademark:  M.G. and MGI

Appellant's business and Services: manufacture and trade of wide range of automobile fittings, control cables and spare parts and other allied goods

Appellant's Claimed user: Since 1989

Respondent’s  Trademark: MG CABLE

Defendant's business:

manufacture and trade of automobile components such as clutch cables, front brake cables, rear brake cables, choke / starters etc.

 

Respondent's claimed user: 1996

HS Sahni is referred to as the Appellant and Mukul Singhal is referred to as the Respondent.

The Hon’ble Division Bench was pleased to grant injunction in favour of the Respondent/Cross Appellant and against the Appellant on the following grounds:

i. Though Appellant claimed to be prior user of the Trademark since 1989 and filed invoice since 1989, still on the said invoices, several other brands namely RONAK, ATOMAX , WIREPOOL , DATSUN etc were mentioned.

ii. The invoice of actual use of MG and MGI was since the year 2017.

iii. Appellant’s Trademark application was subsequent to that of the Respondent.

iv. Respondent produced invoice since 2001.

v. In the year 2013, the Respondent obtained copyright registration. In the year 2019, the Appellant also for obtaining identical label.

vi. Thought Appellant was registered proprietor in class 12 and Respondent was registered proprietor in class 06.

vi. Court held that classification of goods are not criteria for deciding the similarity of the products.

vii. This registration granted to the Respondent in class 06 would inure to the benefit of the Respondent.

viii. The Appellant has failed to prove any use prior to 2017. While Respondent has established user since 2001.   

 

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared  in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Dr. Reddy Laboratory Vs Controller of Patent & Ors

Judgment date:10.11.2022

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

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Pratibha M Singh, H.J.

Case Title: Dr. Reddy Laboratory Vs Controller of Patent & Ors

After enactment of the Tribunal Reforms Act 2021, the Intellectual Property Appellate Board has been abolished. All the cancellation petitions and other proceedings have been transferred to the Hon’ble High Court of Delhi.

Prior to enactment of the Tribunal Reforms Act 2021, Jurisdiction of the Intellectual Property Appellate Board used to be decided in accordance of jurisdiction of Respective Tribunal.

Now the question which arose , as to which court would be jurisdiction to entertain the Appeal and cancellation petitions, after abolition of the Tribunal Reforms Act 2021.

This question was addressed by the Hon’ble High Court of Delhi, as under:

Once orders are passed by the Patent Office on an application, any challenge to such order or direction would, therefore, ordinarily lie before the High Court in whose jurisdiction such appropriate office is located. This is because of the following reasons:

i. The appeal is a continuation of the original proceeding;

ii. The entire record of the patent application is readily available at the appropriate office;

iii. As per the scheme of the Rules, the concerned applicant would be domiciled, carrying on business or normally residing within the said territorial jurisdiction;

iv. The invention may have originally originated from the said territory;

v. The address of service in India in case of a foreign applicant would be in the territory where the appropriate office is located.

Thus it is apparent that jurisdiction of the revocation petition or appeal would be dependent upon the locus of relevant office of the Tribunals or in other words only that High Court would be having Jurisdiction to entertain the Appeal or cancellation petition in whose jurisdiction such appropriate office of the tribunal is located.

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Adhar Products Pvt. Ltd. Vs Lotus Organics Care

Judgment date:10.11.2022

Appeal No. S.B. Appeal No. 3417 of 2018

Name of Court: High Court of Judicature for Rajasthan at Jodhpur

Name of Hon'ble Justice: Pushpendra Singh Bhati, H.J.

Case Title: Adhar Products Pvt. Ltd. Vs Lotus Organics Care

Plaintiff's/Appellant's Trademark:  DECIDE

Plaintiff's/Appellant's business and Services: Manufacturing, Marketing and Sale of

Detergents Products, Bath Soaps, Soap Sticks, bathing and laundry products.

Plaintiff's/Appellant's  Claimed user: Since 2006.

Defendant's/Respondents  Trademark: DELITE

Defendant's/Respondent's business: Washing and  Detergent Powder.

Defendant's/Respondents  claimed user: 2007

Appellant was the Plaintiff and Defendant was the Respondent.

Appellant filed subject matter Suit against the Respondent seeking relief of permanent injunction against use of trademark DELITE by the Respondent. The Appellant also filed application under Order 39 Rule 1 and 2 CPC seeking the relief of interim injunction.

The Injunction was declined by the LD. Trial Court. Against this order of declining the Injunction by the Ld.  in favor of the Appellant the subject matter Appeal was filed. The Hon'ble High Court of Delhi rejected the grounds  taken by the Appellant and dismissed the Appeal.

The Appeal was dismissed on the ground inter alia that the Appellant has failed to point out any perverse exercise of jurisdiction by the Trial Court. Another reason was that Appellant's Claimed user was since 2006 while claimed user of the Respondent was since the year 2007. In such a situation it can not be said that Order of Trial Court suffered from any glaring perversity

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Konkan Agro Marine Industries Pvt. Ltd. Vs 7 Star Distilleries

Judgment date:02.11.2022

Appeal  No.Appeal from the order No.22 of 2022

Name of Court: High Court of Bombay , Nagpur Bench

Name of Hon'ble Justice: M S Jawalkar H.J.

Case Title: Konkan Agro Marine Industries Pvt. Ltd. Vs 7 Star Distilleries

 

Plaintiff's Trademark: PREMIUM No.1

Plaintiff's business and Services: Manufacturing, Marketing and Sale of liquor

Plaintiff's Claimed user: Since 1995

Defendant's  Trademark: PREMIUM DELUX SANTRA

Defendant's business: Manufacturing, Marketing and Sale of liquor

 

The Trial court refused to grant interim injunction order in favor of the Appellant and against the Respondent after holding both the trademarks of parties to be dissimilar. This was the order which was under challenge in the subject matter Appeal.

The Hon'ble High Court of Bombay at Nagpur Bench was pleased to grant interim injunction in favor of the Appellant and against the Respondent after observing both the competing trademarks of the parties to be similar.

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Future Bath Products Private Limited Vs Corza International & Or

Judgment date:02.11.2022

Suit No. CS Comm No. 461 of 2020 

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Navin Chawla H.J.

Case Title: Future Bath Products Private Limited Vs Corza International & Or

 

Plaintiff's Trademark:  CORSA

Plaintiff's business and Services: Manufacturing, Marketing and Sale of „apparatus for lighting, heating, steam generating, cooling, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Plaintiff's Claimed user: Since 1998

Plaintiff's Actual documents of user: 2009

Plaintiff's Trademark Registration: Class 06,07,08,11,17,35

Defendant's  Trademark: CORZA

Defendant's business:Hollow Bricks, InterLock, Floor, Pavement, Roofing, Ceramic Cement.

Defendant's Registration: Class 19

Defendant's claimed user: 2014

 

Injunction was granted in favor of the Plaintiff and against the Defendant. The Hon'ble High Court of Delhi rejected the defenses taken by the Defendant as under:

i. The argument of defendant that the suit is not filed by properly authorized person, was held not to be maintainable as even though the Authorization letters have been signed by directors of the plaintiff , even though one of the directors was authorized signatory.

ii. Non production of Legal Proceeding certificate of Plaintiff's registered Trademark was also held not to be material one as the Defendant it self has not challenged the validity of registered Trademark of the Plaintiff by filing any cancellation petition.

iii. The Plaintiff valued the property of their Trademark only to the tune of Rs.4000 in the deed of assignment. However this factum was also not considered to be relevant one for grating the relief for Infringement or passing off as factors for granting or non granting these relief as dependent upon other factors.

iv. Trademark of the Plaintiff namely  CORSA and Trademark of the Defendant namely CORZA are similar. Hence the Defendant was restrained from using the impugned Trademark CORZA in relation to the product the Plaintiff deals in.

v. However Defendant was allowed to use trademark CORZA in relation to the products in class 19 as the Defendant was also registered Proprietor of the Trademark CORZA in class 19 and that the Plaintiff also has not filed cancellation petition against the same.

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Silver maple Healthcare Services Pvt.Ltd. Vs Dr.Tajinder Bhatti

Judgement date:02.11.2022

Suitl No. :CS Comm No.430  of 2022

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Jyoti Singh H.J.

Case Title: Silver maple Healthcare Services Pvt.Ltd. Vs Dr.Tajinder Bhatti

The Hon'ble High Court of Delhi was pleased to adjudicate application of the Defendant under Order 7 Rule 11 CPC. The Plaintiff has given up the claim of Infringement for Trademark DHI. However the Plaintiff insisted for the claim  of disparagement. 

The Defendant basic argument was that the suit is liable to be rejected under the provision of Order 7

Rule 11 CPC as the same suffer from mis-joinder of parties.

The Hon'ble High Court of Delhi reiterated the well settled proposition of law that while adjudicating

application under Order 7 Rule 11 CPC, only averment made in the plaint has to be seen.

The defenses raised by the Defendant in the written statement is not required to be seen while

deciding application under Order 7 Rule 11 CPC.

The Court rejected application of the Defendant under Order 7 Rule 11 CPC by

observing that mis joinder of necessary party can not be a ground for rejection of Plaint under the

provision of Order 7 Rule 11 CPC.

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Avery Dennison Corporation Vs Controller of Patent and Design

Judgement date:04.11.2022

IPD Commercial Patent Appeal No. :C.A. (COMM.IPD-PAT) 29 of 2021

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Prathiba M Singh H.J.

Case Title: Avery Dennison Corporation Vs Controller of Patent and Design

 

The subject matter IPD Commercial Patent Appeal No. :C.A. (COMM.IPD-PAT) 29 of 2021 was filed by the Appellant against Order dated 12.08.2021 passed by the Controller of Patent where by the application for grant of a patent titled 'Notched Fastener' bearing Application No. 5160/DELNP/2013, filed on 10th June, 2013  under Section 15 of the Patents Act, 1970 was refused  on the ground that the claimed subject matter of the subject patent does not constitute an invention under Section 2(1)(j) of the Act. The reason for rejection was that the subject matter application lacks inventive steps in view of prior arts D 2 and D3.

The Hon'ble High Court of Delhi highlighted the 4 approaches to evaluate inventive steps. These are as under:

 i.Obvious to try approach:

This approach involves an analysis of whether in view of the teachings/solutions proposed in the prior art, it was obvious to try and arrive at the subject invention. 

ii. Problem/solution approach:

This approach considers whether in the light of the closest prior art and the objective technical problem, the solution claimed in the invention would be obvious to the skilled person. If the skilled person can decipher the solution being claimed, then the subject matter is held to be obvious. 

iii. Could-Would Approach

In this approach the question that is raised is whether there is any teaching in the prior art as a whole that would and not simply could have prompted a skilled person, with the knowledge of the objective technical problem, to either modify or adapt the closest prior art to arrive at the subject matter of the claims. 

iv. Teaching Suggestion Motivation (TSM test)

This test originated in the USA as per which, if by the Teaching, Suggestion or Motivation from the prior art, an ordinary skilled person can modify the prior art reference or combine prior art references to arrive at the claimed invention, then the subject matter being claimed is obvious.

After discussing the afore mentioned approaches, the Hon'ble High Court of Delhi was pleased to observed that the subject matter Patent Application does not lack inventive step as the subject patent, thus, tries to address inconsistencies while cutting or severing of the fastener from the fastener stock, reduction in the size of the side members, variation in the cuts and the locations thereof. Accordingly the order passed by the controller of Patent was set aside.

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice

as it may contain errors of understanding and presentation, including clerical errors.

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Aman Engineering Works Vs Registrar of Trademarks

Judgement date:04.11.2022

IPD Civil Revision :CM M IPD No. 5 of 2021

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Navin Chawla H.J.

Case Title: Aman Engineering Works Vs Registrar of Trademarks 

The subject matter Civil Revision Petition was filed against Order dated 07.01.2020 passed by the

Senior Examiner of Trade Marks , Delhi in TM-M review Petition in relation to Trademark application

under No. 631248 for the Trademark RITE KRANTI where by the said review petition was allowed.

The fact of the case was that the Respondent No.2 filed review petition on the ground that

though Examination Report has been received, however no hearing notice was received.

Because of the same , the Respondent No.2 could not attend the hearing , resulting in

abandonment of the subject matter Trademark.

It was this order of abandonment, which was allowed by the Respondent No.1 in the review 

petition filed by the Respondent No.2 beyond the prescribed period.

The Hon'ble High Court of Delhi was pleased to set aside the order passed by the Registrar of

Trademark by observing that Section 131 of Trade Marks 1999 can not be invoked to extend

the time limit of one month prescribed for filing the review petition.

Section 127(c) of the Trade Marks Act 1999 and Rule 119 of Trade Marks Rule prescribed

one month of time, which time has been held to be mandatory by the Hon'ble High Court Delhi.

As in the present case, the review petition was filed after inordinate delay, the allowance of the

review petition by the Respondent No.2 was held to be wrong and accordingly set aside.

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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Visage Beauty and Healthcare Vs Registrar of Trademarks

Judgement date:03.11.2022

IPD Trademark Appeal :C.A.(COMM.IPD-TM) 65 of 2022

Name of Court: High Court of Delhi

Name of Hon'ble Justice: Prathiba M Singh H.J.

Case Title:Visage Beauty and Healthcare Vs Registrar of Trademarks

 

The subject matter Appeal was filed by the Appellant under Section 91 of the Trade Marks Act, 1999

challenging the order dated 27.10.2020  passed by the Trade Marks Registry where by the trademark

application of the Appellant  GLOW GETTER in relation to cosmetics, beauty care products, skin

care products, hair care products  has been rejected under Section 9(1)(b) of the Trade marks Act,

1999 , on the ground that  said mark consists of words that may be used in trade to designate 

the kind, quality of goods etc.

However, the Hon'ble High Court of Delhi was pleased to set aside the subject matter order on

the ground that the word ‘GLOW’ be a word which may be used by various third parties in respect of

cosmetics. However, the combination GLOW-GLITTER as a composite mark cannot be rejected

in Sections 9 and 11 of the same does not directly describe the kind, quality etc of  products

concerned.

 

Ajay Amitabh Suman, [IP ADJUTOR]

IPR Advocate, Hon'ble High Court of Delhi.

ajayamitabh7@gmail.com, 9990389539

D/1027/2002

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Note: Information is shared in the public interest. It should not be taken as a substitute for legal advice as it may contain errors of understanding and presentation, including clerical errors.

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