Puma SE Vs Ashok Kumar

Decree of Damages and the Role of the Local Commissioner's Report in Trademark Infringement Cases

Introduction:

This article discusses the significance of the Local Commissioner's report in assessing damages in a trademark infringement case, with reference to a recent judgment by the Hon'ble High Court of Delhi.

The PUMA Trademark Infringement Lawsuit:

The Plaintiff in this case filed a lawsuit against the Defendants, alleging trademark infringement and passing off. The Plaintiff asserted proprietor rights in the well-known PUMA trademark, as well as the iconic leaping cat device. The Defendants were found to be selling counterfeit PUMA products, leading to the infringement suit. The Defendants were initially restrained ex-parte, and as they failed to file a written statement, the suit was decreed in favor of the Plaintiff.

Assessing Damages:

In the aftermath of the decree in favor of the Plaintiff, a key question emerged: how should damages be evaluated based on the evidence available? This is where the role of the Local Commissioner's report becomes crucial.

The Hon'ble High Court of Delhi relied on a recent judgment in "M L Brother LLP v. Mahesh Kumar Bhrualal Tanna [CS(COMM) 126/2022]". The judgment cited Order 26, Rule 10(2) of the Civil Procedure Code (CPC), which stipulates that the report of the Commissioner and the evidence taken by the Commissioner shall be evidence in the suit and shall form part of the record. This provision establishes the evidentiary value of the Local Commissioner's report.

"In light of this legal provision, the Hon'ble High Court of Delhi confirmed that the Local Commissioner's report can be considered as evidence in the case, thereby enabling the court to rely on it for the purpose of assessing damages."

The Local Commissioner's Report:

The court turned to the Local Commissioner's report to evaluate the damages suffered by the Plaintiff due to the Defendants' infringing activities. The report revealed critical information, including the Defendant's average weekly sales and the duration of their involvement in the infringing business.

According to the report, the Defendant's average weekly sale amounted to 200 pairs of shoes, resulting in a weekly revenue of Rs. 40,000 and a monthly revenue of Rs. 1,60,000. The Defendant informed the Local Commissioner that they had been engaged in this infringing business for the last two years. Accordingly, the report estimated that the unauthorized 'PUMA' marked shoes had been sold for a total of 24 months, with a total revenue of Rs. 38,40,000.

The Hon'ble Court observed that considering the costs of raw materials and other expenses were approximately 50% of the revenue, the Defendant was found to have made a profit of approximately Rs. 18 to Rs. 19 lakhs.

Decree of Damages:

Based on the information provided in the Local Commissioner's report, the Hon'ble High Court of Delhi awarded a decree of damages. The court ordered the Defendants to pay Rs. 10 lakhs as damages, in addition to an extra cost of Rs. 2 lakhs.

The Concluding Note:

The recent judgment in this case, emphasizing the evidentiary value of the Local Commissioner's report, demonstrates the importance of reliable evidence in calculating damages in such cases. It underlines the courts' ability to use comprehensive reports to assess the financial harm incurred by the plaintiff and, in doing so, ensures that justice is served in trademark infringement disputes.

The Case Law Discussed:

Date of Judgement/Order:20/10/2023

Case No. CS(COMM) 703/2017

Neutral Citation No: 2023:DHC:7696

Name of Hon'ble Court: High Court of Delhi

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

Case Title: Puma SE Vs Ashok Kumar

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

Dharampal Satpal Limited Vs Basant Kumar Makhija

Section 124 of Trademarks Act 1999 and Contents of Replication

Introduction:

Section 124 of the Trademarks Act 1999 plays a crucial role in determination of prima facie invalidity of trademark registration. This article explores the legal intricacies of Section 124 and delves into the question of whether the contents of a replication can be considered in adjudicating an application under this section.

Section 124 of the Trademarks Act 1999:

Section 124 of the Trademarks Act 1999 provides the framework for addressing the issue of trademark invalidity raised by a plaintiff in response to a defendant's assertion of rights based on the registration of their trademark. When a defendant raises the Defense of Section 30(2)(e) of the Trademarks Act 1999, they are essentially claiming the right to use their registered mark as a defense against charges of infringement and injunction.

The Legal Conundrum:

A critical question arises regarding the procedural steps a plaintiff must take to invoke Section 124 when a defendant utilizes Section 30(2)(e) as their defense strategy. The key debate revolves around whether a plaintiff can raise the issue of invalidity in the replication or if they are required to amend the initial plaint.

The Defendant's Argument:

In a specific case before the Hon'ble High Court of Delhi, the defendant argued that the plea concerning the invalidity of their registered trademark should be incorporated into the original plaint. They contended that the averments contained in the replication could not constitute "pleadings" regarding the registration's invalidity. To support their stance, the defendant relied on the judgment of Travellers Exchange Corporation Ltd. v. Celebrities Management Pvt. Ltd. (2023) 93 PTC 425.

The Court's Interpretation:

The Hon'ble High Court of Delhi interpreted the provision of Section 124(1)(b) differently in response to this argument of defendant. "The court emphasized that a Section 30(2)(e) defense involves the defendant's assertion of rights derived from the registration of their trademark. The latter half of Section 124(1)(b) specifies that the plaintiff can plead the invalidity of the defendant's trademark registration. It became evident that the provision was designed to address a challenge by the plaintiff only when the defendant asserts rights stemming from the registration."

Consequently, the court ruled that the plaintiff's occasion to plead the invalidity of the defendant's trademark, as per Section 124(1)(b), arises exclusively when the defendant raises a Section 30(2)(e) defense. This interpretation allowed the Hon'ble High Court of Delhi to consider the contents of the replication and enabled the plaintiff to proceed with their application under Section 124 of the Trademarks Act 1999 by framing an additional issue of the invalidity of the defendant's registered trademark.

The Concluding Note:

The case before the Hon'ble High Court of Delhi underscores the significance of a meticulous interpretation of trademark laws, especially in situations where a defendant raises the Defense of Section 30(2)(e). Section 124 of the Trademarks Act 1999 clarifies that a plaintiff can indeed raise the issue of trademark invalidity in the replication, provided that the defendant has asserted rights deriving from the registration.

The Case Law Discussed:

Date of Judgement/Order:17/10/2023

Case No. CS(COMM) 806/2017

Neutral Citation No: 2023:DHC:7667

Name of Hon'ble Court: High Court of Delhi

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

Case Title: Dharampal Satpal Limited Vs Basant Kumar Makhija

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

Himalaya Wellness Company Vs Abony Healthcare

In case of Dishonest adoption, similarity of trademark has to be seen , even if it is less

Introduction:

Trademark infringement cases often hinge on the balance between the similarity of trademarks and the element of dishonesty by the alleged infringer. In a recent case involving the trademarks "LIV.52" and "LIV.55 DS, LIV 999" the court's decision shed light on the significance of dishonesty and how it can tilt the scales in favor of the plaintiff, even if the similarity between the trademarks is not substantial.

The Case Overview:

The case at hand involves a dispute between the plaintiffs and the defendants regarding the use of the mark "LIV.52." Plaintiff 2 had obtained registration of this trademark with registration number 180564 dating back to July 10, 1957. The plaintiffs alleged that the defendants infringed upon their trademark by using the mark "LIV.55 DS and LIV 999" for a similar liver tonic. Furthermore, the defendants' packaging bore a trade dress strikingly similar to that of the plaintiffs.

The Court's Observations:

The court began by scrutinizing the trade dress of both parties. A mere glance at the packaging of the plaintiffs and the defendants revealed that the latter had intentionally replicated the trade dress of the former. This included the thin orange border at the top, the central white strip, and the green lower half of the bottle/package. The lettering, written in white with similar fonts, also resembled that of the plaintiffs. Even when analyzing the wordmarks in isolation, "LIV.52" and "LIV.55 DS and LIV 999" were unmistakably deceptively similar.

The Importance of Dishonesty:

In trademark infringement cases, the element of dishonesty plays a pivotal role. When the court is prima facie convinced that the defendant has intentionally copied or imitated the plaintiff, the presumption arises that the Defendant has successfully confused consumers. This presumption stems from the belief that the defendant's actions were driven by dishonesty. "When dishonesty on the part of the defendant is evident, the court's focus shifts towards the similarities between the trademarks, even if these similarities are not extensive."

In the case under consideration, the court observed that the defendant's trademarks, "LIV.55" and "LIV.999," were deceptively similar to the plaintiff's trademark "LIV.52." The court's ruling was influenced by the apparent dishonesty of the defendant in replicating the plaintiff's trade dress and trademark. Consequently, the suit was decreed in favor of the plaintiff.

The Concluding Note:

This case serves as a pertinent illustration of the legal principles governing trademark infringement cases. Dishonesty on the part of the alleged infringer can weigh heavily in favor of the plaintiff. When the court discerns that the defendant has deliberately copied or imitated the plaintiff, it presumes that consumer confusion is inevitable. In such instances, the court's attention is directed towards the similarities between the trademarks, even if they are not overwhelmingly alike.

The Case Law Discussed:

Date of Judgement/Order:17/10/2023

Case No. CS(COMM) 476/2021

Neutral Citation No: 2023:DHC:7668

Name of Hon'ble Court: High Court of Delhi

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

Case Title: Himalaya Wellness Company Vs Abony Healthcare

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

Hulm Entertainment Pvt. Ltd. Vs Fantasy Sports MYFAB11 Pvt. Ltd.

Copyright Infringement in Fantasy Games Leagues Mobile App

Introduction:

Let us delve into a recent legal case pending before Hon'ble Justice Ms. Jyoti Singh, Hon'ble High Court of Delhi, in which a plaintiff filed a suit against the defendant, alleging copyright infringement regarding a Fantasy Sports Mobile App. The lawsuit revolves around the introduction of a new feature by the defendant in their MYFAB11 app and the alleged copying of the plaintiff's concept, working, features, and execution. This article provides an analytical assessment of the case, examining the core arguments presented by both parties and the court's observations.

The Plaintiff's Allegations:

The plaintiff, in this case, claimed that they had developed a unique Fantasy Sports Mobile App, registered under the Copyright Act, 1957, as a literary and dramatic work. The app differentiated itself from conventional Fantasy Games Leagues. The subject matter suit was filed to prevent the defendant from making the plaintiff's copyrighted work available for download through their MYFAB11 app, or any similar app using the same application or computer program, thereby allegedly infringing the plaintiff's copyrighted works. The defendant had introduced a new feature, 'STOCKS,' in their Fantasy Sports League Mobile App MYFAB11, which the plaintiff asserted not only copied the concept but also its working, features, and execution of the plaintiff's buy/sell interface.

The Defendant's Defense:

The defendants contested the plaintiff's claims by arguing that the plaintiff had concealed the fact that they were not the first to combine the features of Fantasy Sports Leagues with the stock market. They pointed out the existence of numerous third-party applications with similar concepts. The defendant further contended that the plaintiff's assertion of copyright infringement in the Graphical User Interface (GUI) of their app was misconceived, as no copyright was claimed in any artistic work.

Court's Observations:

The Hon'ble High Court of Delhi, while refusing to grant interim injunction relief, made several critical observations. The court noted that although the plaintiff claimed to have introduced the unique idea of integrating Fantasy Sports Leagues with the stock market in 2010, no material evidence was provided to substantiate this claim. The absence of concrete evidence raised questions about the originality and uniqueness of the plaintiff's concept.

The Court's Analysis:

The central question addressed by the court was whether the plaintiff had merely adopted a pre-existing idea or reproduced it in a different form, tone, or tenor to give it a new expression and infuse new life into the concept. In examining the plaintiff's mobile app, the court found that the plaintiff had failed to meet the burden of proof. The court's decision rested on the principle that copyright protection is not granted to ideas but to the expression of those ideas.

The Concluding Note:

This case highlights the importance of concrete evidence and a strong legal basis in copyright infringement suits, particularly in the dynamic world of mobile applications. It underscores the need for plaintiffs to provide substantial proof of originality and uniqueness when claiming copyright infringement in the face of similar concepts.

The Case Law Discussed:

Date of Judgement/Order:17/10/2023

Case No. CS(COMM) 244/2022

Neutral Citation No: 2023:DHC:7593

Name of Hon'ble Court: High Court of Delhi

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

Case Title: Hulm Entertainment Pvt. Ltd. Vs Fantasy Sports MYFAB11 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

Nishita Design And Anr Vs Clay Craft India Pvt.Ltd.

Scope and Implications of class of Design Registration in Infringement Cases

Introduction:

This article delves into a recent legal case wherein the issue of the scope of design registration class was raised. The case involves the plaintiff, a manufacturer of crockery products, who sought to protect their registered designs, "DEVANAGIRI" and "BANARAS," against alleged infringement by the defendant, who manufactured cups. The central question before the court was whether the plaintiff's design registration for plates extended to cover the defendant's cups, as both products fell within the same class.

Design Registration and Scope:

Design registration is a legal mechanism that provides exclusive rights to the creator of a novel and original design. In India, the Designs Act, 2000 governs the registration and protection of designs. Section 2(d) of the Act defines "design" as features of shape, configuration, pattern, or ornament applied to an article by any industrial process.

The case under discussion revolved around the interpretation of Section 22(1)(a) of the Designs Act, which states that a registered design cannot be applied by any third person to any article in the class of designs for which registration is granted. This provision is essential in determining the extent of protection that a design registration offers.

Applicability of Section 22(1)(a):

In this case, the plaintiff registered two designs: "DEVANAGIRI" and "BANARAS," which were applied to the surface of plates. However, the defendant produced cups, not plates, and both products were classified under class 07-01. The critical question was whether the protection extended to the defendant's cups based on the same class classification.

The Court's Ruling:

The court's decision hinged on the interpretation of Section 22(1)(a) and the classification system under the Designs Act. The court noted that Class 07-01 covered both plates and cups, among other articles. The plaintiff's design registration explicitly related to plates, but since the defendant's product, cups, fell within the same class, the court found that the protection could extend to them. The defendant was temporarily restrained from using the "DEVANAGIRI" design on their cups until the matter was resolved. However the Defendant was granted time to file reply in so far as "BANARAS," was concern.

Implications:

This case raises several important legal and practical implications:

Interpretation of Design Registration Class:

The case highlights the significance of the classification of designs under the Designs Act. While registration is specific to the design's application to a particular article, it can also encompass other articles within the same class, as seen in this case.

Protection Beyond the Registered Article:

Design registration not only protects the exact article to which the design is applied but also extends to other articles in the same class. This interpretation reinforces the comprehensive protection provided by design registration.

Importance of Clarity in Registration:

Designers and businesses must be meticulous in specifying the class and the article to which their design applies during the registration process to avoid ambiguity.

Exclusivity of Design Rights:

The ruling reaffirms the exclusive rights granted to design registrants and underscores the importance of vigilance in monitoring potential infringements within the same class.

The concluding Note:

The case discussed in this article serves as a notable example of the complexity of design registration and its implications for the protection of intellectual property rights. The court's interpretation of Section 22(1)(a) reinforces the principle that design protection extends not only to the registered article but also to any article within the same class.

The Case Law Discussed:

Date of Judgement/Order:13/10/2023

Case No. CS(COMM) 737/2023

Neutral Citation No: NA

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Nishita Design And Anr Vs Clay Craft India 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

Fsn E-Commerce Ventures Ltd Vs Nykaa E-Retail Pvt. Ltd.

Trademark Infringement and Triple Identity Case: 

Introduction:

TThe case of NYKAA vs. OYKAA revolves around a dispute concerning the use of a similar trademark, which has raised concerns about the protection of established brand identities. In this analytical legal article, we will delve into the details of the case, examining the key elements of trademark infringement and the application of the "triple identity" test, as seen in the judgment by the Hon'ble High Court of Delhi.

Background of the case:

The Plaintiff, NYKAA, has been engaged in the manufacturing, sale, and distribution of a wide range of cosmetic and wellness products under the trademark 'NYKAA' since 2012. They have secured trademark registrations for 'NYKAA' in various classes, not only in India but also in several other countries, including Singapore, UAE, United Kingdom, Bangladesh, Kuwait, and Qatar. The Plaintiff's extensive presence in the cosmetics industry, both in terms of products and geographic reach, highlights the significance of their brand identity.

On the other hand, the Defendants filed an application for the trademark 'OYKAA' for a substantial array of cosmetic products in class 3. Furthermore, the Defendants are actively marketing these products and maintain an online presence through the website www.oykaa.com. This situation gave rise to concerns regarding trademark infringement, necessitating a legal intervention to protect the Plaintiff's rights.

Application of the "Triple Identity" Test:

The Hon'ble High Court of Delhi relied upon the precedent set in the case of Ahmed Oomerbhoy Vs. Gautam Tank (2007 SCC OnLine Del 1685) to assess the case. In the aforementioned case, the word 'Postman' and the device mark 'Postman' were registered trademarks. The Court in that case held that since the impugned mark, 'Super Postman,' was similar, the goods were the same, and the area in trade was common, the test of "triple identity" was satisfied, establishing a case for infringement and passing off.

In the NYKAA vs. OYKAA case, the Court made a similar observation. It was determined that the services and goods offered by both parties were identical. The trade channels and the customer base also overlapped significantly. The Defendant's mark, 'OYKAA,' was found to be not just similar but almost imitative and identical to that of the Plaintiff's mark, 'NYKAA.' These observations collectively indicated the fulfillment of the "triple identity test" in favor of the Plaintiffs.

Relief Granted:

With the "triple identity" test satisfied, the Hon'ble High Court of Delhi granted interim injunctive relief in favor of the Plaintiff and against the Defendant. This relief effectively prevents the Defendant from using the infringing mark, 'OYKAA,' for their cosmetic products. This decision underscores the court's commitment to protecting the Plaintiff's established brand identity and preventing consumer confusion in the marketplace.

The Concluding Note:

Trademark infringement cases such as NYKAA vs. OYKAA serve as crucial legal mechanisms for protecting brand identities and ensuring fair competition in the marketplace. The application of the "triple identity" test, as established in legal precedents, provides a clear framework for assessing infringement cases. 

The Case Law Discussed:

Date of Judgement/Order:12/10/2023

Case No. CS(COMM) 726/2023,

Neutral Citation No: NA

Name of Hon'ble Court: High Court of Delhi

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

Case Titled: Fsn E-Commerce Ventures Ltd Vs Nykaa E-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.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

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