Salik Mukhtar And 4 Others Vs M.M.I. Tobacco Pvt. Ltd

Trademark Infringement and Dissolution of Partnership

Introduction:

The present appeal centers around a dispute involving the usage of the trademark "Musa Ka Gul" in connection with tobacco products. The Plaintiff/Respondent and the Defendant/Appellant share a common familial lineage, but the former has obtained trademark registration for the said mark, while no such registration exists in favor of the Defendant. The issue at hand has previously been a subject of arbitration before the High Court of Kolkata, which led to an interim injunction against the Defendant's use of the trademark.

Factual Background:

The crux of this case lies in the dissolution of the firm "M S Industries." The Appellant contends that subsequent to issuance of the injunction against M.S.Indistries by the Kolkata High Court in the arbitration proceedings, M S Industries was dissolved, rendering the injunction inoperative against the individual Defendants.

Court's Decision:

However, the court has dismissed the Appeal, stating that there is no evidence on record to suggest that the partnership business was formally and entirely wound up. Mere dissolution of the partnership, even with approval from the proceedings in question, does not grant the Defendants the authority to produce and sell products with a name and identity deceptively similar to the registered trademark of the Plaintiff-Respondents.

Legal Analysis:

1. Trademark Registration:

The Plaintiff's registration of the trademark "Musa Ka Gul" is a pivotal point in this case. Trademark registration grants exclusive rights to the owner, providing protection against any unauthorized usage of the mark in connection with similar goods or services.

2. Injunction:

The interim injunction issued by the Kolkata High Court in arbitration proceeding, signifies the seriousness of the dispute and the potential harm to the Plaintiff's trademark rights. The court's prior decision underscores the importance of safeguarding registered trademarks from infringement.

3. Partnership Dissolution:

The dissolution of M S Industries raises the question of whether the individual Defendants can be held responsible for trademark infringement. The court's decision suggests that the dissolution alone does not absolve the Defendants of liability.

4. Authority to Use Trademark:

The court has stressed that the authority to use a trademark, especially in connection with deceptively similar products, is not automatically conferred upon the dissolution of a partnership. Other factors, such as trademark registration and previous legal proceedings, must be considered.

The Concluding Note:

This legal analysis highlights the complexities surrounding trademark infringement and the dissolution of a partnership. While the dissolution of M S Industries may have affected the corporate entity, it does not automatically grant the individual Defendants the right to infringe upon the Plaintiff's registered trademark. The court's decision underscores the significance of upholding trademark rights, even in cases involving familial or partnership disputes.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. First Appeal from Order 2170 of 2022

Neutral Citation No: 2023: AHC:197942

Name of Hon'ble Court: High Court of Allahabad

Name of Hon'ble Judge: Kshitij Shailendra, H.J.

Case Titled: Salik Mukhtar And 4 Others Vs M.M.I. Tobacco 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.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Ayur United Care Vs Union of India

The Court should not legislate, but has to abide by the statutory dictate

Introduction:

The recent abolition of the Intellectual Property Appellate Board (IPAB) and the establishment of the Delhi High Court Intellectual Property Division have given rise to a pressing legal question: Which judicial authority [Hon'ble Single Judge or Hon'ble Division Bench, High Court of Delhi ] should hear writ petitions challenging orders passed by the IPAB before its abolition on April 4, 2021? This complex issue has far-reaching implications and requires a thorough legal analysis.

The Vanishing Jurisdiction Dilemma:

One of the central issues that have emerged in this context is the practicality of remanding cases back to the court when the IPAB, the original adjudicatory body, no longer exists. The Delhi High Court Intellectual Property Division now grapples with the challenge of determining the appropriate judicial authority to handle these cases.

The Judicial Wisdom:

The Hon'ble Single Judge in the Intellectual Property Division of the Delhi High Court has provided an insightful perspective on this matter. The Judge underscores a fundamental principle of the judiciary – the court's role is not to legislate but to adhere to statutory provisions. The court is bound by the statutory dictate, and if the law designates a particular category of matters to be heard by Single Judges, the court must abide by this directive.

Rule 4 of the IPD Rules emerges as a crucial piece of the puzzle when read in conjunction with various clauses in Rule 1. It unequivocally dictates that writ petitions challenging IPAB orders must be heard by Single Judges. These orders fall under the category of "IPR subject matters" as defined in Rule 2(i) of the IPD Rules.

Deciphering the Statutory Framework:

The significance of this legal analysis lies in the clarity of the IPD Rules. These rules provide a structured framework for dealing with intellectual property matters in the post-IPAB era. Writ petitions directed against IPAB orders unmistakably fall within the definition of "original proceedings, appellate, and other proceedings related to IPR subject matter(s) as defined in Rule 2(i)."

Furthermore, the subject matter writ petitions are encompassed within the broader definition of "IPR subject matters or cases or proceedings or disputes" by virtue of the opening words of Rule 2(l). Hence, the conclusion is that such writ petitions are maintainable before the Hon'ble Single Judge of the High Court of Delhi.

The Concluding Note:

In the wake of the IPAB's abolition and the establishment of the Delhi High Court Intellectual Property Division, the jurisdictional dilemma posed by writ petitions challenging IPAB orders has been met with legal wisdom and a strict adherence to the statutory dictate. The Hon'ble Single Judge's stance on this matter is clear: the court's role is not to legislate but to follow the law.

By interpreting Rule 4 of the IPD Rules in conjunction with other relevant clauses, the court has established a robust framework for addressing intellectual property matters post-IPAB. This legal analysis underscores the importance of maintaining legal consistency and adherence to established rules in the evolving landscape of intellectual property rights in India. The clarity of the statutory framework ensures that the law is not only followed but also that justice is served effectively.

The Case Law Discussed:

Date of Judgement/Order:16/10/2023

Case No. W.P.(C)-IPD 61/2021 

Neutral Citation No: 2023: DHC:7556

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Ayur United Care Vs Union 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.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Humans of Bombay Stories Pvt. Ltd. Vs POI Social Media Pvt. Ltd.

The Idea-Expression Dichotomy in Copyright Infringement

Introduction:

The recent legal dispute between Humans of Bombay Stories Pvt. Ltd. ("the Plaintiff") and an opposing party ("the Defendants") before the High Court of Delhi has brought to the forefront the intricacies of the idea-expression dichotomy in copyright law. This article delves into the details of this case, examining the fundamental principles of copyright law and their application in the context of protecting creative works.

The Plaintiff's Allegations:

The Plaintiff's case revolves around the alleged infringement of various forms of content, including photographs, literary works forming the basis of stories, videos, and the distinctive manner of presenting these stories. The core of their argument is that the Defendants have imitated and copied a significant portion of their content, even replicating several images. The Plaintiff contends that this unauthorized reproduction constitutes copyright infringement.

The Defendant's Defense:

Conversely, the Defendants argue that the commonality of images between the two websites may stem from the subjects of the stories providing these images. Furthermore, the Defendants assert that the Plaintiff has also engaged in copying, pointing to instances where the Plaintiff allegedly replicated images from the Defendant's website.

The Idea-Expression Dichotomy:

Central to this legal battle is the idea-expression dichotomy inherent in copyright law. This doctrine distinguishes between the protection of ideas and the protection of the expression of those ideas. Copyright law recognizes that ideas, concepts, or themes themselves cannot be copyrighted. It is only the unique expression, the creative embodiment of these ideas, that warrants protection.

The Copyright Act of 1957:

Under Section 51 of the Copyright Act, 1957, the unauthorized copying or imitation of the expression of an idea amounts to copyright infringement. This provision safeguards the rights of creators by granting them the exclusive authority to control the reproduction and distribution of their original and creative expressions.

Court's Ruling:

In this specific case, the court has carefully examined the arguments of both parties. It observed that neither party is entitled to replicate or imitate each other's content and images. Moreover, the ruling emphasizes that this protection extends to literary content as well. As a result, the court issued an order that both parties, namely Humans of Bombay and People of India, should refrain from using each other's copyrighted works.

The Concluding Note:

The Humans of Bombay Stories Pvt. Ltd. v. People of India legal dispute provides a significant illustration of the idea-expression dichotomy in copyright law. It underscores the principle that copyright protection is not extended to abstract ideas or themes but rather to the creative expressions of those ideas. Copyright holders are granted exclusive rights to their original works, and any unauthorized replication can lead to infringement claims. The court's decision in this case reaffirms these principles, highlighting the importance of respecting the idea-expression dichotomy in copyright law and upholding the rights of creators and copyright holders.

The Case Law Discussed:

Date of Judgement/Order:11/10/2023

Case No. CS(COMM) 646/2023

Neutral Citation No: 2023: DHC:7524

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Humans of Bombay Stories Pvt. Ltd. Vs POI Social Media 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.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Kross S.A. Vs Vijay Munjal

The Crucial Role of Due Diligence in Post-Trial Amendments

Introduction:

One critical aspect of litigation is the ability to make amendments to pleadings as new information or strategies emerge. However, as a recent case before the Hon'ble Delhi High Court demonstrates, such post trial amendments require due diligence to be considered admissible and effective. In this case, the plaintiff sought to amend their complaint post-trial, but the court rejected the application on the grounds of a lack of due diligence.

Background of the Case:

The lawsuit in question aimed to secure a permanent injunction against the defendants, preventing them from using the mark "KROSS" for any product or service. Initially, the suit was brought against three defendants: Hero Eco Group (Defendant 1), Mr. Vijay Munjal (Defendant 2), and Hero Eco Tech Limited (Defendant 3). However, by an order dated 20 February 2014, Hero Eco Group was removed from the list of parties, leaving only Mr. Vijay Munjal and Hero Eco Tech Limited as the defendants.

In a surprising turn of events, the plaintiff, around 15 February 2021, filed an application to amend the complaint by adding VR Holdings, Ms. Rekha Munjal, Mr. Naveen Munjal, and Mr. Gaurav Munjal as Defendants 3A to 3D. Notably, the application for amendment occurred after the trial had commenced.

The Court's Observations:

During the trial, the Hon'ble Delhi High Court made a significant observation. The Hon'ble Single Judge noted that the plaintiff had only sued the user of the "KROSS" mark and not the proprietor. Consequently, the proprietor of the mark, VR Holdings, remained free to continue using the mark. In light of this, the plaintiff filed an application under Order 6 Rule 17 of the Code of Civil Procedure (CPC) seeking to add VR Holdings and others as additional defendants, an application that was clearly made after the trial stage.

The Court's Decision:

The court, however, rejected the plaintiff's application for amendment. The rejection was primarily based on the absence of due diligence exhibited by the plaintiff. The court highlighted that the application failed to plead that the plaintiff had exercised due diligence before the trial began. It did not establish that, despite diligent efforts, it was impossible to include the proposed defendants, Defendants 3A to 3D, or to introduce the arguments now sought to be raised through the amendment before the trial commenced.

The court also considered the plaintiff's replication, which asserted that the suit was not flawed due to misjoinder of parties or the non-joinder of a necessary party. The plaintiff maintained that Mr. Vijay Munjal had already been included as Defendant No. 2, as he was both the chairman of Hero Eco Group and a partner in VR Holdings, which filed the "KROSS" mark. Therefore, there was no misjoinder of parties.

However, it became apparent that the plaintiff was aware of the trademark's ownership by VR Holdings when filing the replication. Yet, VR Holdings had not been included as a defendant until the final argument stage. This lack of diligence on the part of the plaintiff in filing the application under Order 6 Rule 17 CPC played a significant role in the court's decision to dismiss the application.

The Concluding Note:

This case serves as a reminder of the importance of due diligence in the legal process, particularly when seeking to make post-trial amendments. In litigation, parties must actively investigate and address relevant issues promptly. In the absence of diligence, courts may be hesitant to entertain late-stage amendments that could disrupt the proceedings. The decision underscores the necessity of careful and proactive legal strategy throughout the litigation process.

The Case Law Discussed:

Date of Judgement/Order:10/10/2023

Case No. CO Comm IPD TM 358 of 2021

Neutral Citation No: 2023: DHC:7461

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Kross S.A. Vs Vijay Munjal

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.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Syngeta Limited Vs Controller of Patents and Designs

Plurality of Invention in Divisional Patent Applications under Section 16 of the Patent Act 1970

Introduction:

The concept of plurality of invention in the context of Divisional Patent Applications under Section 16 of the Patent Act 1970 has been a subject of legal interpretation and debate. "The issue that has arisen is whether the plurality of inventions must be reflected in the claims of the parent application or if it is sufficient for them to be disclosed in the complete specifications accompanying the claims." This article delves into the legal nuances and the evolution of this issue, focusing on a case before the Hon'ble Division Bench of the High Court of Delhi.

Background of the case:

Section 16 of the Patent Act 1970 governs the filing of Divisional Patent Applications in India. A Divisional Application is a separate application that can be filed based on a pending parent application. The primary question that has sparked controversy is whether the parent application must contain claims related to multiple distinct inventions for a Divisional Application to be filed.

Initial Interpretation by the Controller:

The Controller initially held that a Divisional Application could only be filed if the parent application contained claims related to multiple distinct inventions. Additionally, the Controller suggested that a Divisional Application could not be based solely on disclosures in the specification accompanying the parent application.

Single Judge's Interpretation:

This interpretation was further clarified by a Single Judge of the High Court of Delhi. The Single Judge opined that, to file a Divisional Application, the parent application should include claims related to multiple distinct inventions. This restrictive view seemingly necessitated the presence of such claims in the parent application and discouraged the reliance on disclosures in the specification alone.

Divisional Bench's Clarification:

However, a Divisional Bench of the High Court of Delhi later provided a more expansive interpretation. It emphasized that Section 16(1) of the Patent Act 1970 permits the filing of a further application for an invention as long as it is disclosed in the provisional or complete specification previously submitted in connection with the parent application. This interpretation opened the door to the possibility of filing a Divisional Application even if the claims in the parent application did not explicitly address multiple distinct inventions.

Key Determining Factors:

The pivotal question in the case revolved around whether the specification accompanying the parent application, be it provisional or complete, contained disclosures of multiple inventions. The Divisional Bench clarified that the viability of a Divisional Application hinges on the contents of the provisional or complete specification. This crucial determination has clarified the prevailing ambiguity, and it is no longer essential for the claims in the parent application to explicitly cover multiple distinct inventions.

"In other words, the Hon'ble Division Bench has dispelled the confusion by affirming that a Divisional Application is maintainable not only on the basis of claims but also based on the disclosure made in the provisional or complete specification of the patent." This interpretation aligns more closely with the legislative intent and accommodates situations where multiple inventions may not be claimed in the parent application but are nonetheless disclosed in the accompanying specifications.

Uniformity in Filing Divisional Applications:

In addition to clarifying the approach to plurality of invention, the Hon'ble Division Bench of the High Court of Delhi emphasized that whether a Divisional Application is filed suo moto by the applicant or in response to an objection raised by the Controller, the criteria for determining the presence of multiple inventions in the provisional or complete specification remain the same. This directive ensures consistency in the assessment of Divisional Applications, irrespective of the circumstances under which they are filed.

The Concluding Note:

The legal interpretation of the plurality of invention in the context of Divisional Patent Applications under Section 16 of the Patent Act 1970 has evolved from a restrictive stance to a more inclusive and accommodative perspective. The critical factor in determining the viability of a Divisional Application is whether the provisional or complete specification contains disclosures of multiple inventions, irrespective of the explicit claims in the parent application.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. C.A.(Comm.IPD-PAT) 471 of 2022

Neutral Citation No: 2023:DHC:7473-DB

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma, H.J.

Case Titled: Syngeta Limited Vs Controller of Patents and Designs

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.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

The Chinese University of Hong Kong Knowledge Transfer office Vs The Assistant Controller of Patent and Design

Analysis of Section 3(i) of the Patent Act and the Distinction Between Diagnosis and Diagnostic

Introduction:

The recent case before the Hon'ble High Court of Madras concerning Section 3(i) of the Patent Act brought to light a crucial distinction between "diagnosis" and "diagnostic." The case revolved around whether an invention that involved testing nucleic acid molecules in a biological sample from a pregnant woman to identify the fetal fraction could be considered diagnostic and therefore barred under Section 3(i). This article provides an analytical perspective on the case and the court's decision.

Section 3(i) of the Patent Act:

Section 3(i) of the Indian Patent Act is a significant provision that excludes certain inventions from being patented. "It states that "a method of diagnosis practiced on human beings or animals" is not patentable. The key issue in this case was whether the invention, despite being related to diagnosis, was inherently "diagnostic" in nature?"

The Rejected Patent Application:

The case arose from the rejection of an Indian patent application (No. 4812/CHENP/2012) dated 01.06.2012. The application was denied on the grounds that it fell within the scope of Section 3(i) of the Patents Act. The Assistant Controller contended that the invention was essentially a diagnostic method, making it ineligible for a patent.

The Appellant's Argument:

The appellant argued that the invention did not diagnose a disease but rather focused on identifying the fetal fraction in a biological sample. According to the appellant, this identification was a critical step for subsequent diagnostic testing. The argument revolved around the distinction between the identification of the fetal fraction and the actual diagnosis of diseases, disorders, or conditions.

Court's Decision:

The court's decision was pivotal in this case. It allowed the appeal, emphasizing that the invention involved testing nucleic acid molecules in a biological sample to identify the fetal fraction. This fraction was crucial for further testing to diagnose chromosomal aberrations. However, the court made a critical distinction: the invention itself did not diagnose diseases, disorders, or conditions. Instead, it provided an indicator (the fetal fraction) that was relevant for subsequent diagnostic testing.

Defining "Diagnosis" and "Diagnostic":

The court delved into the meaning of "diagnosis" in the context of medical science. It defined diagnosis as a method of identifying the existence or non-existence of a disease or disorder and its various attributes. However, the court noted that such identification, by itself, cannot be construed as a form of treatment.

The term "diagnostic" in Section 3(i) was juxtaposed with words like "medicinal" and "surgical," which are unquestionably forms of treatment. The court agreed with the appellants that "diagnostic" should not be considered in isolation but rather in conjunction with the accompanying words of Section 3(i) as a whole. The court concluded that "diagnostic" should be limited to processes that reveal pathology for the treatment of human beings.

Determining "Diagnostic" Processes:

The court provided guidance on how to determine whether a test is diagnostic. It posed the question of whether the test is inherently and per se capable of identifying a disease, disorder, or condition for treatment. This determination should be made by assuming that persons skilled in the relevant field, including medical professionals, examine the results. If these individuals would not be able to diagnose the disease or condition based on the process because it is not designed for that purpose, such a process, whether labeled as screening or otherwise, should not qualify as diagnostic under Section 3(i).

Analyzing the Invention:

The court's analysis of the patent application revealed that the invention, as described in claims 1 and 9, involved testing nucleic acid molecules in a biological sample from a pregnant woman to identify the fetal fraction. Medical literature indicated that a fetal fraction of not less than 4% was necessary for further testing to identify chromosomal aberrations. Until this stage was reached, pathology remained undisclosed, and treatment was not possible. Therefore, the invention was inherently incapable of identifying the existence or non-existence of a disease, disorder, or condition. The determination of the fetal fraction related to diagnosis but was not inherently "diagnostic" in nature.

The Concluding Note:

The case presented a complex and nuanced interpretation of Section 3(i) of the Patent Act, highlighting the distinction between diagnosis and diagnostic. The court's ruling clarified that a process should only be considered "diagnostic" if it inherently identifies diseases or conditions, not if it merely provides a step in a diagnostic process. This decision has significant implications for patent law and the boundaries of what can be patented in the field of medical diagnostics. It sets a precedent for future cases where the distinction between diagnosis and diagnostic is in question, emphasizing the importance of an inherent capability to identify diseases or conditions for an invention to be barred under Section 3(i).

The Case Law Discussed:

Date of Judgement/Order:12/10/2023

Case No. CMA (PT) No.14 of 2023 & CMP No.16669 of 2023

Neutral Citation No: 2023:MHC:4617

Name of Hon'ble Court: High Court of Madras at Chennai

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, H.J.

Case Titled:The Chinese University of Hong Kong Knowledge Transfer office Vs The Assistant Controller of Patent and Design

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.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Ph no: 9990389539

Passing Off Action and the Pre-Launch Dilemma

Passing Off Action and the Pre-Launch Dilemma

Introduction:

A crucial question arises when a plaintiff seeks relief for passing off in relation to a product that has not yet been launched. Can a plaintiff establish a case for passing off without the existence of prior goodwill in such a scenario? This article will delve into this intricate issue and provide a legal analysis of the matter.

Understanding Passing Off:

Passing off is a legal doctrine primarily developed to protect the goodwill or reputation associated with a particular product or service. It prevents one party from misrepresenting their goods or services as those of another, leading to confusion among consumers. 

The key elements of a passing off action:

1.Goodwill:

The plaintiff must establish the existence of goodwill or reputation in connection with their product or service. Goodwill can be thought of as the valuable asset that a business builds through its marketing efforts and the satisfaction of its customers.

2.Misrepresentation:

The plaintiff must prove that the defendant has misrepresented their product or service in a way that is likely to cause confusion among consumers, making them believe it is connected with the plaintiff's product or service.

3.Damage: 

The plaintiff must show that they have suffered or are likely to suffer damage as a result of the defendant's misrepresentation.

The Pre-Launch Dilemma:

In the scenario described in scenario where the plaintiff is seeking relief for passing off in relation to a product that is yet to be launched, a critical issue arises concerning the element of goodwill. Since goodwill is a prerequisite for a passing off action, can the plaintiff establish this element when the product is still in development or not yet in the market?

The Plausible Solution:

Pre launch advertisement, Goodwill and mistepresentation:

1. Goodwill in Pre-Launch Stage: 

Goodwill typically develops over time as a result of a business's activities, quality of products, and the public's perception of the brand. In the context of a product that is still in development and not yet in the market, establishing goodwill can be challenging, but it is not impossible. If the plaintiff can show that they have taken concrete steps to develop the product, such as investing in research, development, and marketing, and these efforts have generated a positive reputation and expectation in the market, this can be considered goodwill in the making.

2.Pre-Launch Advertising and Goodwill:

Pre-launch advertising and promotional activities can play a crucial role in building goodwill even before the product is available to consumers. If the plaintiff can provide evidence that their pre-launch advertising efforts have created a positive reputation and anticipation among the relevant consumer base, this can be a strong indicator of goodwill. Consumer expectations, the quality of the product as presented in advertisements, and the reputation garnered through these promotions can all contribute to goodwill.

3.Misrepresentation and Likelihood of Harm: 

In a passing off claim, the plaintiff must also prove that the defendant's actions constitute misrepresentation. This could include actions that could potentially confuse consumers or mislead them into believing that the defendant's product or business is associated with the plaintiff's. If the plaintiff can demonstrate that the defendant's actions would likely harm their reputation and goodwill once the product enters the market, this can support a passing off cllaim, though this can be challenging, especially if the plaintiff's product is not yet in the market.

The Concluding Note: 

While the absence of prior goodwill can be a hurdle, it is not an insurmountable one. Plaintiffs may still have avenues to establish a passing off claim based on their prior reputation on the basis of pre launch advertisement and evidence of misrepresentation. 

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.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor

Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Ph no: 9990389539

Cross Fit LLC Vs Mr.Renjith Kunnumal and another

Order 39 Rule 2A CPC and Requirement of Willful Disobedience in Legal Proceedings

Introduction:

This article examines a recent case where the plaintiff sought to hold Defendant 1 accountable under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC) for willfully disobeying a court order from July 8, 2021. Defendant 1's defense centers around their claim of not receiving any summons or notice related to the matter. This case also references the Supreme Court's judgment in Food Corporation of India v. Sukh Deo Prasad (2009) 5 SCC 665, which provides valuable insights into the principles governing willful disobedience in legal proceedings.

Order XXXIX Rule 2A of the CPC:

Order XXXIX Rule 2A of the CPC empowers the courts to deal with cases of willful disobedience of court orders. This provision serves as a crucial mechanism to ensure that parties involved in legal proceedings adhere to the orders issued by the court. The objective is to maintain the sanctity of court orders and uphold the rule of law.

The Plaintiff's Allegation:

In the case at hand, the plaintiff alleges that Defendant 1 has willfully disobeyed a court order issued on July 8, 2021. The plaintiff contends that Defendant 1's actions or lack thereof have made them liable to be proceeded against and punished under Order XXXIX Rule 2A of the CPC. To substantiate this claim, the plaintiff must demonstrate that Defendant 1's disobedience was willful and deliberate.

Defendant 1's Defense:

In response to the plaintiff's allegations, Defendant 1 asserts that they never received any summons or notice related to the matter. This defense raises questions about whether Defendant 1 had sufficient knowledge of the court order, making it essential to establish whether their disobedience was truly willful. If Defendant 1 did not receive proper notice, their actions might not constitute willful disobedience but rather a lack of awareness of the court's directives.

The Precedent: Food Corporation of India Vs. Sukh Deo Prasad:

The Supreme Court's judgment in Food Corporation of India v. Sukh Deo Prasad (2009) 5 SCC 665 provides a guiding precedent on the issue of willful disobedience in legal proceedings. This case emphasizes that the power exercised under Order XXXIX Rule 2A of the CPC is similar to the power of civil contempt under the Contempt of Courts Act, 1971. To establish willful disobedience, it must be proven beyond any doubt.

The court in this case stressed that the power to punish for disobedience should be exercised with great caution and responsibility. It explicitly noted that there is no room for "surmises, suspicions, and inferences" while exercising this power. This underscores the importance of clear and incontrovertible evidence in establishing willful disobedience.

The Lack of Conclusive Proof:

Returning to the present case, it appears that Defendant 1's defense revolves around the lack of conclusive proof that they were aware of and involved in the activity related to the court order after the dissolution of the partnership on May 28, 2019. Without clear and irrefutable evidence demonstrating their association with the gym, it becomes challenging to establish willful disobedience beyond a reasonable doubt.

The Concluding Note:

The case involving the plaintiff's allegations against Defendant 1 under Order XXXIX Rule 2A of the CPC highlights the complex nature of willful disobedience in legal proceedings. The principles laid down by the Supreme Court in Food Corporation of India v. Sukh Deo Prasad underscore the need for a high standard of proof to establish willful disobedience. In this context, Defendant 1's defense, based on their claim of not receiving summons or notice, adds a layer of complexity to the case, requiring a thorough examination of the evidence. Ultimately, a clear determination of whether Defendant 1's actions constitute willful disobedience will depend on the strength of the evidence presented and the application of legal principles to the specific facts of the case.

The Case Law Discussed:

Date of Judgement:09/10/2023

Case No. CS(COMM) 251/2021

Neutral Citation No:2023:DHC:7334

Name of Hon'ble Court: High Court of Delhi 

Name of Hon'ble Judge: C Hari Shankar

Case Title: Cross Fit LLC Vs Mr.Renjith Kunnumal and another

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 

ITD Cementation India Limited Vs Indian Corporation Limited

Introduction:

In the realm of legal interpretation, one of the fundamental principles guiding the judicial process is the resolution of conflicts between special laws and general laws. It is a well-established doctrine that when a special law and a general law appear to be at odds, the special law must prevail. This principle holds true as a means of ensuring clarity, consistency, and specificity in legal matters. One such instance where this principle becomes pertinent is in the interplay between the Delhi High Court Rules (DHC Rules) and the Code of Civil Procedure (CPC) in India. This article aims to explore the precedence of the DHC Rules over the CPC in certain circumstances, with a focus on Rule 3 of Chapter VII of the DHC Rules, 2018, and its effect on the filing of written statements in civil litigation.

The Doctrine of Special Law Prevailing Over General Law:

The doctrine that a special law prevails over a general law is firmly rooted in the principles of legal interpretation. This doctrine ensures that when two laws seemingly conflict, the specific provisions of the special law take precedence over the general provisions of the overarching law. The rationale behind this principle is to provide clarity and precision in legal matters, preventing conflicts and ambiguities in the application of different laws.

Delhi High Court Rules Vs. CPC: An Overview:

In the context of India's legal landscape, the Delhi High Court Rules (DHC Rules) serve as specialized procedural guidelines for cases within the jurisdiction of the Delhi High Court. On the other hand, the Code of Civil Procedure (CPC) is a general law that governs civil proceedings across India.

Rule 3 of Chapter VII of the DHC Rules, 2018, deals with the procedure for filing an affidavit of admission/denial of documents along with the written statement. The rule stipulates that such an affidavit must be filed simultaneously with the written statement, failing which the written statement will not be accepted for recording.

The Conflict: Rule 3 of DHC Rules vs. CPC:

The conflict arises when the provisions of Rule 3 of Chapter VII of the DHC Rules, 2018, come into apparent contradiction with the provisions of Order XI of the CPC as amended by the Commercial Courts Act. Order XI of the CPC deals with the discovery and inspection of documents in civil suits. The Commercial Courts Act amended Order XI of the CPC, introducing certain changes to the procedure for disclosure of documents.

Resolution: Special Law Prevails:

In the specific context of Rule 3 of DHC Rules, 2018, and Order XI of the CPC as amended, it is imperative to apply the doctrine of special law prevailing over general law. This means that the provisions of Rule 3 of DHC Rules, which explicitly require the filing of an affidavit of admission/denial of documents along with the written statement, must be given precedence over the amended provisions of Order XI of the CPC.

The Effect on filing of Written Statements without affidavit of admission denial:

As a direct consequence of this prioritization of the DHC Rules, it becomes evident that the affidavit of admission/denial of documents is a mandatory requirement for filing a written statement in cases under the jurisdiction of the Delhi High Court. Failure to comply with this requirement would result in the written statement not being accepted for recording.

The Concluding Note:

In the realm of legal interpretation and conflict resolution between special laws and general laws, the principle of the special law prevailing holds true. Delhi High Court Rules, being a specialized set of procedural guidelines, must take precedence over the general provisions of the Code of Civil Procedure. This principle finds application in Rule 3 of Chapter VII of the DHC Rules, 2018, which requires the filing of an affidavit of admission/denial of documents along with the written statement. 

The Case Law Discussed:

Date of Judgement:06/10/2023

Case No. CS (COMM) 844/2017

Neutral Citation No:N.A.

Name of Hon'ble Court: High Court of Delhi 

Name of Hon'ble Judge: Mini Pushkarna, JJ

Case Title: ITD Cementation India Limited Vs Indian Corporation 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 

Hindustan Pencils Private Limited Vs Universal Trading Company

The Defence of Honest and Concurrent User in a Trademark Rectification Petition

Introduction:

In the case at hand, we analyze a dispute involving the defense of honest and concurrent user in a trademark rectification petition. The case revolves around the use of the trademark "NATRAJ" with the Natraj device by two parties, the appellant and the respondent.

Background:

The case originated from a ruling by the Hon'ble Single Judge in 1984, which denied the appellant's request to cancel Trade Mark No. 324345 held by the respondent. The appellant, a manufacturer of various stationary products, claimed to have been operating under the trademark "NATRAJ" with the Natraj device since 1957. On the other hand, the respondent contended that they had been using the same trademark in connection with geometrical instruments since 1974, and their mark had been registered in 1981.

Honest and Concurrent Use:

The crux of this case lies in the concept of honest and concurrent use of a trademark. The Hon'ble Division Bench of the High Court of Delhi examined the case and found that neither the appellants nor the respondent used the phrase "Natraj" with the Natraj device exclusively in relation to stationary items. This observation was crucial in granting the respondent the benefit of an honest and concurrent user.

The court's reasoning was that multiple other users had registered similar trademarks. This indicated that the respondent genuinely believed they were using the mark for items distinct from those for which the appellants had already registered the trademark. In other words, the respondent's use of the mark for mathematical instruments was in good faith, believing it did not infringe upon the appellant's registered mark.

Abandonment of Objection:

One critical aspect that worked against the appellants in this case was their failure to provide evidence to support their notice of opposition against the respondent's registration. Despite contesting the respondent's application, the appellants did not produce any substantial proof when given multiple opportunities to do so. Consequently, their objection was abandoned.

The appellants did not take the recourse of filing a review under Section 97(C) or an appeal under Section 109(2) against the abandoned ruling. This omission played a significant role in the dismissal of their appeal.

The Concluding Note:

In trademark disputes, the principle of honest and concurrent use is vital, allowing parties to coexist peacefully when they genuinely use similar marks without infringing on each other's rights. This case serves as a reminder of the importance of providing substantial evidence in trademark objections and the consequences of failing to pursue legal avenues available for appeal or review.

The Hon'ble Division Bench's decision in favor of the respondent underscores the need for a well-documented and legally sound defense in trademark disputes. In this instance, the appellant's failure to substantiate their claims and appeal the abandoned ruling ultimately led to the dismissal of their case, reaffirming the principle of honest and concurrent use in trademark law.

Date of Judgement:31/10/2000

Case No. FAO(OS). 6 of 1985

Neutral Citation No:N.A.

Name of Hon'ble Court: High Court of Delhi 

Name of Hon'ble Judge: Arun Kumar and A.K. Sikri,  JJ

Case Title: Hindustan Pencils Private Limited Vs Universal 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