Matra Mobili Private Limited Vs Madanapalle Retail Pvt. Ltd.

Ex Parte Injunction: Requirement of detailed discussion of Prima Facie Case, Balance of Convenience, and Order 39 Rule 3 CPC

Abstract:

The matter at hand involves an appeal filed against the grant of an ex parte injunction in a trademark dispute. The key issues discussed in this article revolve around the necessity of detailed reasoning on prima facie case, the balance of convenience, and the application of Order 39 Rule 3 of the Code of Civil Procedure (CPC) in determining the validity of the ex parte injunction.

Introduction:

The legal landscape in India, like many other jurisdictions, provides remedies to parties who seek protection against potential harm to their rights during the pendency of a lawsuit. One such remedy is the ex parte injunction, which is granted without notice to the opposing party. However, the grant of such an injunction is not without stringent requirements and checks. This article aims to analyze the specific case mentioned and scrutinize the principles of a prima facie case, balance of convenience, and the relevance of Order 39 Rule 3 CPC.

Prima Facie Case:

In the context of ex parte injunctions, establishing a prima facie case is of paramount importance. The plaintiff must demonstrate that they have a valid claim that merits protection through an injunction. In the case discussed, the plaintiff asserted trademark registrations in their favor. To grant an ex parte injunction, the court must be convinced that the plaintiff's case is not only plausible but also substantial.

In the matter at hand, the plaintiff's assertion of trademark registrations in "Sunday" in various classes suggests the existence of a prima facie case. However, the court's role is not to definitively establish the rights of the parties at this stage but rather to determine if there is a serious question to be tried. The grant of the initial ex parte injunction seems justified based on the prima facie case.

Balance of Convenience:

The balance of convenience is a delicate aspect of ex parte injunctions. It entails an analysis of where the overall balance of justice lies, taking into account the interests of both parties. In this case, the defendant is engaged in the furniture business under the same brand name "Sunday" and offers products similar to those of the plaintiff.

To assess the balance of convenience, the court must consider factors such as the potential harm to the plaintiff if the injunction is not granted versus the harm to the defendant if it is. Additionally, the court should weigh the public interest and any financial consequences. Without a proper evaluation of the balance of convenience, an ex parte injunction may become arbitrary and unjust.

The appellate court's observation that the trial court failed to record any findings on the balance of convenience and irreparable injury is a significant one. In a trademark dispute where both parties claim rights to the same brand name, a thorough analysis of the balance of convenience is indispensable. It ensures that the injunction serves the interests of justice.

Order 39 Rule 3 CPC:

Order 39 Rule 3 of the CPC is a procedural rule that governs the grant of ex parte injunctions. It provides the framework within which the court must operate when considering such injunctions. One of the crucial requirements under this rule is the need for the court to record reasons for dispensing with the notice to the defendant.

In the case under discussion, the appellate court rightly pointed out that the trial court did not provide any reasons for dispensing with notice to the defendant. This omission is significant, as it goes to the heart of the ex parte injunction procedure. It is essential for the court to justify why notice was not served to the defendant, as this step has a substantial impact on the defendant's right to be heard.

The Concluding Note:

Ex parte injunctions are a powerful legal tool designed to protect the rights and interests of parties during litigation. However, they should be granted judiciously and in accordance with established legal principles. The case presented highlights the importance of establishing a prima facie case, evaluating the balance of convenience, and adhering to procedural requirements such as those outlined in Order 39 Rule 3 CPC. The appellate court's decision to remand the matter back to the trial court for fresh adjudication, with a specific focus on these aspects, is a commendable step toward ensuring that the principles of justice and fairness are upheld in the legal process.

Case Law Discussed:

Date of Judgement:11/09/2023

Case No.Commercial Appeal No. , 321of 2023

Neutral Citation No: 2023: KHC: 32601

Name of Court: Karnataka High Court

Name of Hon'ble Judge: G.Narender and Vijay Kumar S Patil, H.J.

Case Title: Matra Mobili Private Limited Vs Madanapalle Retail Pvt. Ltd.

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

F Hoffmann La Roche Limited Vs Drug Controller General of India.

Extended Passing Off in Relation to Expired Patent: 

Introduction:

The intersection of intellectual property rights, pharmaceuticals, and competition in the Indian legal landscape has been a subject of significant litigation and jurisprudential development. One such intricate legal issue recently addressed by the Hon'ble High Court of Delhi in the case of F Hoffmann La Roche Limited vs. Cadila is whether a suit filed on the basis of passing off in relation to an expired patent can be maintained. This article analyzes the key aspects of this case, focusing on the doctrine of extended passing off in the context of an expired patent.

Background of the Case:

In the case at hand, F Hoffmann La Roche Limited ("Plaintiff") filed a suit seeking a declaration that the approval granted to Cadila Healthcare Limited ("Cadila") by the Drugs Controller General of India ("DCGI") for manufacturing authorization under the Drugs and Cosmetics Act, 1940, was invalid. The suit was specifically filed invoking the action for extended passing off, pertaining to the characteristic, composition, and quality of a product named 'Trastuzumab'.

Cadila, in response, filed an application under Order 7 Rule 11 of the Civil Procedure Code (CPC) seeking the rejection of the plaint. Cadila's main contention was that the drug 'Trastuzumab' had lost patent protection since May 3, 2013, when the plaintiff's patent had expired, and therefore, no monopoly could be claimed by the plaintiff over it. Cadila also argued that the suit was barred by law due to the availability of an alternative remedy under Rule 122DC of the Drugs Rules, which allows an appeal to the Central Government against the DCGI's approval.

Key Legal Analysis:

Expired Patent and Passing Off:

The central issue before the court was whether the doctrine of passing off could be extended to cover a situation where the underlying patent had expired. The plaintiff, in this case, did not assert rights under the expired patent and expressed no objection to the manufacture and sale of the drug by Cadila as long as it was not claimed to be biosimilar. The court examined whether the cause of action disclosed in the plaintiff's plaint was sufficient to proceed with the case.

Doctrine of Extended Passing Off:

The court recognized the doctrine of extended passing off in relation to an expired patent. Passing off, in intellectual property law, typically deals with the misrepresentation of goods or services as those of another. Extended passing off is a legal concept that extends protection beyond trademarked goods to protect other aspects such as the composition, characteristics, and quality of a product. In this case, the plaintiff sought to protect the reputation and goodwill associated with 'Trastuzumab' beyond the scope of the expired patent.

Alternative Remedy:

Cadila argued that the suit was barred due to the availability of an alternative remedy under Rule 122DC of the Drugs Rules, which provided for an appeal to the Central Government against DCGI's approval. However, the court observed that the mere availability of an alternative remedy does not automatically lead to the rejection of a suit. The court's role at the stage of Order 7 Rule 11 CPC is to determine whether a cause of action is disclosed in the plaintiff's pleadings, and the availability of an alternative remedy is not a conclusive factor for rejection.

The Concluding Note:

In the F Hoffmann La Roche Limited vs. Cadila case, the Hon'ble High Court of Delhi recognized the doctrine of extended passing off in relation to an expired patent. The court held that the cause of action disclosed in the plaintiff's pleadings was sufficient to proceed with the case, even in the absence of patent protection. This decision highlights the evolving nature of intellectual property jurisprudence in India, where courts are willing to protect the reputation and goodwill associated with a product even after the expiration of its patent. 

Case Law Discussed:

Date of Judgement:11/09/2023
Case No.CS Comm 540 of 2016
Neutral Citation No: 2023: DHC: 6522
Name of Court: Delhi High Court
Name of Hon'ble Judge: Jyoti Singh, H.J.
Case Title: F Hoffmann La Roche Limited Vs Drug Controller General of India.

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,
IP Adjutor:Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com,
Mob No: 9990389539

Nadeem Majid Oomerbhoy Vs Sh.Gautam Tank

Examining the Validity of Registered Trademarks in Indian Courts: Section 57(4) Vs. Section 124 of the Trademarks Act 1999

Introduction:

The case at hand revolves around the dispute between the plaintiff, who holds a registered trademark for "POSTMAN" in relation to edible groundnut oil, and the defendant, who sought and obtained registration for the mark "SUPER POSTMAN" for the same category of goods. The plaintiff alleges trademark infringement by the defendant, which raises critical questions about the validity of the registered trademark.

This article delves into the legal complexities surrounding the examination of the validity of registered trademarks in India, focusing on the interplay between Section 57(4) and Section 124 of the Trademarks Act 1999.

Section 124: A Specific Protocol for Challenging Trademark Validity:

Section 124 of the Trademarks Act 1999 is a specific provision that governs the protocol for challenging the validity of a registered trademark. This section primarily applies when there is a pending suit for trademark infringement. Subsection 124(1)(b) comes into play when the defendant raises a defense under Section 30(2)(e) of the Act. If the defendant asserts such a defense, and the plaintiff subsequently pleads the invalidity of the defendant's trademark, the court is mandated by Section 124(1)(ii) to examine the tenability of the plaintiff's challenge.

Notably, the process under Section 124 initiates with the defendant raising a defense under Section 30(2)(e), which pertains to the non-registration of the trademark in question. If this defense is not raised by the defendant, the application under Section 124 is deemed not maintainable, as was the case in the present scenario.

Section 124 and Its Inapplicability in the Present Case:

In the case at hand, the defendant did not raise a defense under Section 30(2)(e) of the Trademarks Act 1999. Therefore, the plaintiff's application under Section 124 challenging the validity of the defendant's registration was deemed not maintainable by the Hon'ble Court.

Section 57(4) as an Alternative Avenue for Challenging Trademark Validity:

Despite the dismissal of the plaintiff's application under Section 124, the Hon'ble Court acknowledged its jurisdiction to adjudge the validity of the defendant's trademark under Section 57(4) of the Trademarks Act 1999. This provision grants the court suo moto powers to examine trademark validity.

Section 57(4) states: "The Registrar or the Appellate Board or the court, as the case may be, shall, while dealing with a proceeding under this Act, have the power of the civil court trying a suit, and in particular in respect of the following matters, namely... (4) that the registration of the trade mark is wrongly remaining on the register."

The Significance of Section 57(4) in Post-IPAB Era:

This observation by the Hon'ble Court assumes greater significance in the context of the abolition of the Intellectual Property Appellate Board (IPAB). Previously, IPAB held authority over trademark disputes. However, post-IPAB abolition, the jurisdiction to adjudicate trademark matters, including challenges to trademark validity, now rests with the court.

The Concluding Note:

In conclusion, the case at hand sheds light on the nuances of challenging the validity of registered trademarks under Indian trademark law. While Section 124 provides a specific protocol for such challenges, its applicability is contingent upon the defendant raising certain defenses under Section 30(2)(e). When this condition is not met, Section 124 is not maintainable.

However, Section 57(4) emerges as an alternative avenue for challenging trademark validity, allowing the court to exercise suo moto powers to examine the validity of a registered trademark, particularly in the post-IPAB era.

Case Law Discussed:

Date of Judgement:11/09/2023

Case No.CS Comm 361 of 2018

Neutral Citation No: 2023: DHC: 6555

Name of Court: Delhi High Court

Name of Hon'ble Judge: C Harishankar, H.J.

Case Title: Nadeem Majid Oomerbhoy Vs Sh.Gautam Tank

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Techlegal Solutions Pvt. Ltd Vs Genelia Ritesh Deshmukh

The Evidentiary Value of Wikipedia Articles in a Legal Proceeding

Introduction:

In recent years, the use of Wikipedia as a source of information in legal proceedings has become a subject of debate and contention. This article aims to analyse the evidentiary value of Wikipedia articles in a legal context, using a specific case as an illustration. The case in question involves a plaintiff seeking to restrain the defendants from releasing a Marathi film titled "Lai Bhaari," claiming trademark rights over the phrase. The plaintiff's reliance on a Wikipedia entry as evidence was rejected by the Hon'ble High Court of Bombay, which raised valid concerns about the credibility of Wikipedia as a source of information in legal proceedings.

The Case at Hand:

In the case before the Hon'ble High Court of Bombay, the plaintiff alleged that they were the prior user and registered trademark holder of the phrase "Lai Bhaari." The plaintiff asserted that they had launched a Marathi social network with the domain name "laibhaari.com" in 2010, and they relied on a Wikipedia article about their website to support their claim.

The Court's Refusal to Rely on Wikipedia:

The central issue in this case was whether the Wikipedia article could be considered as credible evidence to establish the plaintiff's prior use of the trademark "Lai Bhaari." The Hon'ble High Court of Bombay, in its wisdom, decided not to accord evidentiary value to the Wikipedia article. This decision was grounded in several valid reasons that are worth exploring.

Lack of Authoritative Nature:

The Court noted that Wikipedia articles are hardly authoritative, regardless of their popularity or widespread use. Wikipedia is a collaborative, web-based, free-content encyclopedia-style service. It allows anyone with internet access to write and edit its articles, and contributors often remain anonymous. This inherent open-editing nature of Wikipedia makes it susceptible to inaccuracies, bias, and misinformation. Legal proceedings demand a high standard of accuracy and reliability in evidence, which Wikipedia may not consistently provide.

Potential for Self-Promotion:

Another concern raised by the Court was the potential for self-promotion on Wikipedia. As Wikipedia itself acknowledges, individuals or entities with vested interests can create or edit entries about themselves, their products, or services. This raises questions about the objectivity and impartiality of information presented in Wikipedia articles. In a legal context, where impartiality and truthfulness are paramount, relying on potentially self-serving information can be risky.

Reliability and Credibility:

In a legal proceeding, evidence is evaluated based on its reliability and credibility. Wikipedia's collaborative and open-editing nature means that it may not meet the rigorous standards required in a court of law. The Court rightly pointed out that Wikipedia articles can be edited by individuals with varying levels of expertise and may not undergo the same scrutiny and verification process as traditional sources of information.

The Concluding Note:

The case of the plaintiff seeking to restrain the release of the Marathi film "Lai Bhaari" highlights the challenges and limitations of relying on Wikipedia articles as evidence in legal proceedings. While Wikipedia is a valuable resource for general knowledge and research, its inherent shortcomings, such as lack of authoritative status, potential for self-promotion, and issues of reliability and credibility, make it a less-than-ideal source for establishing legal claims.This case serves as a reminder to legal practitioners and litigants to exercise caution when considering Wikipedia as a source of evidence in legal disputes, and to seek more authoritative and reliable sources to substantiate their claims.

Case Law Discussed:

Date of Judgement:03/07/2014

Case No.Notice of Motion (L) No. 1503 of 2014 in Suit (L) No. 629 of 2014

Neutral Citation No: (2014) 59 PTC 510

Name of Court: Bombay High Court

Name of Hon'ble Judge: G S Patel, H.J.

Case Title: Techlegal Solutions Pvt. Ltd Vs Genelia Ritesh Deshmukh,

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Appolo Burn Hospital Vs Apollo Hospitals Enterprises Ltd.

The Relevant Date for Trademark Infringement and Passing Off is the date when defendant entered into the market.

Introduction:

In the realm of intellectual property law, the determination of the relevant date for proving trademark infringement and passing off claims holds paramount importance. The recent case of Appolo Burn Hospital vs. Apollo Hospitals Enterprises Ltd. provides a pertinent context for discussing this issue.

Background of the Case:

The dispute in question arises from a lawsuit filed by the Plaintiff, who is the owner and operator of the renowned Apollo Hospitals group of medical establishments. The Plaintiff initiated legal action, alleging trademark infringement by the Defendant. Central to the case was the Plaintiff's contention that they had registered various trademarks and trade names, all containing the term "Apollo," with the Trademark Registry. These registrations occurred over the period from 2007 to 2020, with the Plaintiff claiming to have used the mark since as early as 1979.

Crucially, the Plaintiff received an email from a patient of the Defendant's establishment, Appolo Burn Hospital, on August 30, 2022. This email prompted the Plaintiff to take legal action. The court's analysis primarily revolved around the question of when the relevant date for determining trademark infringement and passing off claims should be.

Determining the Relevant Date:

The cornerstone of this case lies in the determination of the relevant date. The Court observed that the relevant date should be the one on which the Defendant entered the market with their business.

It held that, to establish trademark infringement, the Plaintiff must prove that, on the date when the Defendant commenced its business, the Plaintiff had a registered trademark. In this instance, the Defendant had been using the name "Appolo" since 1992 when they operated as an Orthopedic Nursing Home. At that time, the Plaintiff did not possess a registered trademark for "Apollo." Therefore, the court concluded that infringement had not occurred.

The court also rejected the allegation of passing off. To establish passing off, it is crucial for the Plaintiff to demonstrate that, at the time the Defendant established their hospital, the Plaintiff had already carved a niche for itself and had gained significant recognition and reputation. In this case, the Plaintiff failed to provide sufficient evidence of their widespread recognition and goodwill. Therefore, the court dismissed the passing off claim.

Implications of the Court's Decision:

The decision in the Appolo Burn Hospital case holds several significant implications for trademark law and intellectual property protection:

Importance of Timely Registration:

The case underscores the necessity of timely trademark registration. Trademark owners must register their marks before competitors enter the market to ensure robust protection against infringement claims.

Evidentiary Burden:

To establish infringement, trademark owners must provide clear evidence of their registered trademark's existence at the time the alleged infringing activity commenced.

Recognition and Reputation:

In passing off cases, it is imperative for the Plaintiff to demonstrate substantial recognition and goodwill associated with their mark. Mere registration may not suffice.

Vigilance in Protection:

Delay in initiating legal action can weaken a trademark owner's case. Courts may view undue delay as acquiescence, which may adversely affect the outcome of the case.

The Concluding Note:

The Appolo Burn Hospital vs. Apollo Hospitals Enterprises Ltd. case highlights the critical role of the relevant date in determining trademark infringement and passing off claims. It emphasizes the necessity of timely trademark registration, the burden of evidence on the trademark owner, and the requirement to demonstrate recognition and reputation in passing off cases.

Case Law Discussed:

Date of Judgement:07/09/2023

Case No. O.A.Nos. 183 & 184 of 2023 in C.S.(Comm Div). No. 54 of 2023

Neutral Citation No: N.A.

Name of Court: Madras High Court

Name of Hon'ble Judge: P.T.Asha, H.J.

Case Title: Appolo Burn Hospital Vs Apollo Hospitals Enterprises Ltd.,

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

R X Infotech Vs Jalpa Rajesh Kumar Jain

Evaluating Territorial Jurisdiction: The Significance of Plaint Content

Introduction:

This article delves into the intricacies of evaluating territorial jurisdiction, with a specific focus on the importance of the content of the plaint (the legal document that initiates a lawsuit) in this determination. The case under consideration involves an application by the defendant, under Order VII Rule 11 of the Code of Civil Procedure, 1908 (CPC), for the rejection of the plaint based on the ground of want of territorial jurisdiction.

The Defendant's Argument:

The defendant's primary argument in this case centered around the assertion that the plaintiff had invoked the territorial jurisdiction of the court solely on the basis of Section 134 of the Trade Marks Act, 1999, without any reference to Section 20 of the CPC. According to the defendant, this reliance on Section 134 was insufficient to establish jurisdiction, particularly because the case seemed to fall within the third category of cases, as described in the judgment of the Division Bench of the court in Ultra Home Construction Pvt Ltd Vs. Purushottam Kumar Chaubey (2016 SCC OnLine Del 376). 

The defendant's argument was based on the premise that the case could not be brought before the court under Section 134 alone. They contended that the absence of a reference to Section 20 of the CPC in the plaint indicated that the court's territorial jurisdiction was not properly invoked.

The Court's Interpretation:

However, the court adopted a more comprehensive approach to evaluating territorial jurisdiction. The court emphasized the importance of reading the plaint as a whole and in a meaningful fashion. This approach is in line with the principle that jurisdiction should not be determined by a narrow, technical interpretation, but rather by considering the entire context of the case.

The court's ruling highlighted that even if there was no specific reference to Section 20 of the CPC in the plaint, the suit could still be considered maintainable before the court if any part of the facts pleaded in the plaint disclosed a cause of action that had arisen within the jurisdiction of the court. In other words, the court emphasized that the mere absence of a specific reference to Section 20 CPC in the plaint should not automatically disqualify the case from the court's territorial jurisdiction.

In this particular case, the court invoked Section 20 of the CPC to assert its territorial jurisdiction based on the content of the plaint. This decision underscores the court's commitment to ensuring that justice is not denied due to technicalities in pleadings and that the essence of the case is taken into account when determining territorial jurisdiction.

The Concluding Note:

In summary, the evaluation of territorial jurisdiction is a critical aspect of legal proceedings, and it should not be overly constrained by technicalities. The content of the plaint plays a vital role in this determination, as demonstrated in the case under discussion. Courts should adopt a holistic approach and consider all relevant facts and circumstances when deciding on territorial jurisdiction, ensuring that the principles of justice are upheld. 

Case Law Discussed:

Date of Judgement:29/08/2023

Case No. CS(COMM) 75/2021

Neutral Citation No: 2023:DHC:6263

Name of Court: Delhi High Court

Name of Hon'ble Judge:C Hari Shankar, H.J.

Case Title: R X Infotech Vs  Jalpa Rajesh Kumar Jain

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Dinesh Kumar Mittal Vs Pragya Trading Company

Rectification of a Registered Trademark due to Non-Renewal 

Introduction:

The case at hand revolves around the rectification of a registered trademark based on the non-renewal of the said trademark within the specified time frame. 

The petitioner asserted that the subject trademark's registration was initially granted until 21st February 2022, with the one-year renewal deadline expiring on 20th February 2023.

However, no application for the renewal of the mark's registration had been filed, and online records confirmed this fact. Consequently, the registration of the impugned mark had lapsed, but a one-year restoration period was available under Section 25(4) of the Trade Marks Act, 1999.

Ultimately, the Hon'ble High Court of Delhi directed the Registrar of Trademarks to remove the entry of the impugned mark from the Register of Trademarks. This article delves into the legal aspects of trademark rectification due to non-renewal.

I. Background:

Trademark registration is crucial for protecting intellectual property and ensuring that the owner has exclusive rights to use the mark in connection with specific goods or services. However, this protection comes with the responsibility of timely renewing the trademark to maintain its validity.

II. Non-Renewal and Lapse of Trademark Registration:

The crux of this case lies in the failure to renew the trademark registration within the stipulated timeframe. Under trademark law, registrations are typically granted for a specific period, after which they must be renewed to remain in force. In this instance, the petitioner's mark was registered until 21st February 2022. Failure to renew by 20th February 2023 led to the automatic lapse of the registration.

III. Restoration of Lapsed Trademarks:

Section 25(4) of the Trade Marks Act, 1999, plays a pivotal role in this matter. It provides a lifeline for trademark owners whose registrations have lapsed due to non-renewal. This section allows for the restoration of a lapsed mark within one year from the date of expiry. However, restoration is subject to certain conditions and payment of prescribed fees.

IV. The Role of the Court:

In this case, the Hon'ble High Court of Delhi played a decisive role by directing the Registrar of Trademarks to remove the entry of the impugned mark from the Register of Trademarks. This action was likely taken to uphold the principle that a trademark registration should not endure indefinitely without active renewal by its owner. By removing the mark from the register, it signals that the mark is no longer valid unless successfully restored within the one-year grace period.

The Concluding Note:

The case under discussion highlights the importance of diligently renewing trademark registrations within the specified time frame to maintain their legal status and exclusivity. While trademark owners are granted a one-year restoration window after the expiry date, failure to take advantage of this opportunity can result in the removal of the mark from the Register of Trademarks. 

Case Law Discussed:

Date of Judgement:27/03/2023

Case No. C.O. (COMM.IPD-TM) 487/2022

Neutral Citation No: N. A. 

Name of Court: Delhi High Court

Name of Hon'ble Judge: Amit Bansal, H.J.

Case Title: Dinesh Kumar Mittal Vs Pragya Trading Company

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

DGT Global Inc Vs DLT Labs Technology

Service Through the Learned Local Commissioner and Its Implications on Order VIII Rule 1 of the CPC

Introduction:

The matter at hand revolves around the interpretation and application of Order VIII Rule 10 of the Code of Civil Procedure (CPC), specifically in relation to the service of summons through a learned Local Commissioner. 

The plaintiff in this case sought a judgment in their favor against the defendants under Order VIII Rule 10 of CPC, as amended by the Commercial Courts Act, 2015. The central question is whether service through the learned Local Commissioner can be equated with the service of summons for the purposes of Order VIII Rule 1 of the CPC.

Order VIII Rule 10 of CPC: 

Order VIII Rule 10 of the CPC, as amended by the Commercial Courts Act, 2015, provides a legal mechanism for a party to obtain a judgment in their favor when the opposing party fails to present a written statement within the prescribed time or as fixed by the court. It is essential to understand that this rule applies specifically in cases where a written statement is required under Order VIII Rule 12 or Order VIII Rule 93.

The Plaintiff's Assertion:

The plaintiff argued that the Local Commissioner, appointed by the court to visit the premises of the defendants and execute the commission, had served copies of the relevant papers on the defendants by hand. Therefore, according to the plaintiff, the time for the defendants to file their written statement commenced from the day of this service by the Local Commissioner.

The Court's Observation:

The Court, in its evaluation, scrutinized the order dated 14 March 2023, which had appointed local commissioners to visit the defendants' premises and execute commissions therein. The court noted that this order did not explicitly direct the service of either the summons or the case papers by the learned local commissioners on the defendants. This omission was a pivotal point in the court's decision.

Service through a Local Commissioner: Not Envisaged in CPC:

The court emphasized that the CPC and the Original Side Rules of the court do not contemplate service through a learned Local Commissioner as a valid method of serving summons in a lawsuit. This lack of specific provision in the CPC or the court's rules leads to the conclusion that service through a Local Commissioner cannot be equated with the service of summons for the purpose of Order VIII Rule 1 of the CPC.

The Concluding Note:

In light of the court's observation and interpretation of the law, the application filed by the plaintiff under Order VIII Rule 10 of CPC was dismissed. The central argument hinged on whether service through the learned Local Commissioner could be considered valid service of summons, and the court ruled against it, citing the absence of statutory provision for such service.

This case underscores the importance of adhering to the prescribed methods of service as outlined in the CPC and local court rules. It serves as a reminder to litigants and legal practitioners that the rules and procedures laid down by law must be strictly followed to ensure that justice is served and due process is upheld.

Case Law Discussed:

Date of Judgement:29/08/2023

Case No. C.S Comm 143 of 2023

Neutral Citation No: 2023:DHC:6260

Name of Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title: DGT Global Inc Vs DLT Labs Technology

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Central Park Estates Pvt. Ltd. Vs Provident Housing Limited

Requirement of Plea of invalidity for applicability of Section of the Trade Marks Act 1999: 

Introduction:

Section 124(1)(ii), allows a defendant to seek an adjournment of proceedings to file a rectification petition for the cancellation of a registered trademark. This article delves into a specific legal case where the defendant invoked Section 124(1)(ii) in an attempt to adjourn the proceedings and highlights the importance of specific pleading in such cases.

Section 124(1)(ii) of the Trade Marks Act 1999:

Section 124(1)(ii) of the Trade Marks Act 1999 grants the defendant the right to request an adjournment of a trademark infringement suit in order to file a rectification petition to challenge the validity of the plaintiff's registered trademark. However, it is crucial to understand the conditions that must be met for this provision to apply.

1. Condition of Invalidity Plea:

The fundamental condition for Section 124(1)(ii) to come into play is the defendant's plea that the registration of the plaintiff's trademark is invalid. This means that the defendant must assert, in clear terms, that the trademark in question lacks the legal standing for protection. In the case at hand, the defendant's application under Section 124(1)(ii) was based on this specific condition.

The Court's Observations:

In the case under consideration, the Court closely examined whether the defendant had satisfied the conditions mandated by Section 124(1)(ii). The Court's assessment focused on the defendant's pleadings leading up to the application.

The defendant's assertion in paragraph 11 of the application, stating that it had consistently argued the invalidity of the plaintiff's trademark, was noted. However, the Court found a significant deficiency – there was no prior pleading in the defendant's submissions asserting the invalidity of the plaintiff's trademark.

The Court's Decision:

The critical point of contention in this case was the absence of a clear and prior plea by the defendant regarding the invalidity of the plaintiff's trademark. Section 124(1)(a) merely requires the defendant to plead that the plaintiff's trademark is invalid. However, the Court determined that this essential plea was conspicuously missing from the defendant's pleadings I. e. written statement, prior to the application under Section 124(1)(ii).

Such pleading was obviously missing in prior pleading as no written statement was filed by the Defemdant. As a result, the Court ruled that the conditions for invoking Section 124(1)(ii) had not been met. The defendant's application was dismissed, and the proceedings continued without adjournment.

The Concluding Note:

The case involving the defendant's application under Section 124(1)(ii) of the Trade Marks Act 1999 serves as a reminder of the importance of specific and clear pleadings in legal proceedings. To utilize the provisions of Section 124(1)(ii), a defendant must not only assert the invalidity of the plaintiff's trademark but also ensure that this plea is reflected in written statement. 

Case Law Discussed:

Date of Judgement:29/08/2023

Case No. C.S Comm 194 of 2019

Neutral Citation No: 2023:DHC:6262

Name of Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, H.J.

Case Title: Central Park Estates Pvt. Ltd. Vs Provident Housing Limited 

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor:Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

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