Kamal Kumar Hirawat Vs Maruti Poly Films

In this case of Kamal Kumar Hirawat vs Maruti Poly Films & Ors, heard before the Hon'ble Justice Krishna Rao at the High Court at Calcutta on July 5, 2024, the plaintiff, Kamal Kumar Hirawat, a sole proprietor trading as M/s. Hirawat Trading Co., sought an interim order against the defendants, Maruti Poly Films & Ors., a partnership firm.

Hirawat has been in the business of manufacturing and marketing adhesive tapes since 1995, using the trademark "FIGHTER" since that time. The trademark is registered under class 17 of the Trade Marks Act, 1999, with copyright protection obtained in 2023.

The defendants applied to register a similar trademark, "FITTER," for identical goods, leading Hirawat to file a Notice of Opposition. Despite this, the defendants began selling goods under the "FITTER" mark, which Hirawat argues is deceptively similar to "FIGHTER," causing confusion among customers.

The Court found that Hirawat had made a prima facie case and that the balance of convenience lay in his favor. It was established that Hirawat was the prior user of the "FIGHTER" mark and had been using it continuously since 1995. 

The Court ruled that the defendants' use of "FITTER" infringed on Hirawat's trademark rights, and granted an ad interim injunction restraining the defendants from using the impugned trademark or any deceptively similar mark. 

Case Citation: Kamal Kumar Hirawat Vs Maruti Poly Films:05.07.2024/IP-COM/15/2024:Calcutta High Court:Krishna Rao, H. J. 

[The information is shared in the public interest. Readers' Discretion is advised as it is subjective and may contain errors in perception, interpretation, and presentation.]

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

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Universitat Ulm Vs Assistant Controller Of Patents

The case Universitat Ulm vs Assistant Controller Of Patents And Designs was heard in the High Court of Judicature at Madras on July 3, 2024. Universitat Ulm, a German institution, filed an appeal under Section 117A of the Patents Act, 1970, against the Assistant Controller of Patents and Designs, Government of India, seeking to overturn an order from August 30, 2019, that rejected their patent application. 

The application, numbered 645/CHENP/2011, claimed a patent for the use of Opioids or Opioid Mimetics in treating resistant cancer patients. The grounds for rejection were not fully articulated in the document provided, but it was mentioned that the respondent found the patent to be obvious to a person skilled in the art based on the combined teachings of various prior art references (D1 to D5 and D7 to D10). 

Despite the appellant bringing to the respondent's attention that a US patent had been granted for a similar invention after considering the prior art (D6), the respondent did not discuss this in the impugned decision. Universitat Ulm has filed the appeal on the grounds that the Assistant Controller of Patents and Designs, Government of India, did not adequately discuss the prior art or the explanations provided by the appellant in their written submissions. They also pointed out that the respondent did not consider the fact that a US patent had been granted for a similar invention after taking into account the prior art, which was brought to the respondent's attention through Form-3. 

Additionally, the appellant's counsel argued that the respondent failed to discuss the synergistic effect of the treatment as mentioned in the appellant's written submissions. These omissions led to the appeal being filed under Section 117A of the Patents Act, 1970, with a prayer to set aside the order and allow the patent application to proceed to grant. 

The respondent's counsel, Mr. J. Madanagopal Rao, argued that the order was comprehensive and clearly stated that the patent was obvious to a person skilled in the art, based on the combination of teachings from multiple prior art references. He saw no need for a remand. 

Justice P.B. Balaji, after reviewing the arguments, found the rejection decision to be cryptic and lacking in discussion regarding the obviousness of the patent and the prior art. The appellant's submission about the synergistic effect of the treatment was also not considered by the Assistant Controller. The Court decided to remand the matter to a different Patent Controller for fresh consideration, ensuring a personal hearing for the appellant and a decision within three months. The appeal was allowed with these directions, and there was no order as to costs.

Case Citation: Universitat Ulm Vs Assistant Controller Of Patents/03.07.2024/CMA(PT) No.1 of 2024:Madras High Court:P.B.Balaji, H. J. 

[The information is shared in the public interest. Readers' Discretion is advised as it is subjective and may contain errors in perception, interpretation, and presentation.]

Advocate Ajay Amitabh SumanI

P Adjutor [Patent and Trademark Attorney]

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Deepak Pranjivandas Shah Vs Intellectual Property Appellate Board and Ors

Factual Background:

The petitioner sought remand of the case to the Tribunal, arguing that the Tribunal considered several US court judgments that were not brought to their attention during the proceedings. Additionally, these judgments were not cited before the Controller by any involved party. The petitioner's central argument was based on the principle of natural justice, which mandates that all parties must be informed of any material or judgments that the court refers to in its decision-making process.

Legal Principles and Precedents:

The court observed that the petitioner's submissions had merit. It emphasized a well-established legal principle: any judgment or material considered by the court must be disclosed to all parties involved in the case.

This principle is rooted in the doctrine of natural justice, which ensures that parties have the opportunity to address and respond to all relevant information before a decision is made. In legal precedent, the principle of natural justice is fundamental to ensuring fair trials and hearings. The right to be heard, or "audi alteram partem," is a cornerstone of this doctrine. It requires that all parties be given a fair opportunity to present their case and respond to any material or judgments that may influence the court's decision.

Court's Findings and Decision:

The court found substance in the petitioner's arguments. It noted that the Tribunal's failure to provide the parties with the US court judgments it considered was a clear violation of the principle of natural justice. The court held that it is imperative for the Tribunal to bring any judgments or material it refers to the notice of all parties involved.

Consequently, the court set aside the impugned order on these grounds. The decision to remand the matter back to the Appellate Tribunal was based on the need to rectify the procedural unfairness caused by the Tribunal's actions.

Implications:

In practice, this decision underscores the need for judicial and quasi-judicial bodies to adhere strictly to the principles of natural justice. Failure to do so can result in decisions being set aside and matters being remanded for reconsideration, causing delays and additional costs for the parties involved.

Conclusion:

The court's decision to remand the matter to the Tribunal due to the non-disclosure of US court judgments considered by the Tribunal is a crucial affirmation of the principles of natural justice. It emphasizes the need for transparency and fairness in judicial processes and ensures that all parties have the opportunity to address and respond to relevant information.

Case Citation: Deepak Pranjivandas Shah Vs Intellectual Property Appellate Board and Ors/13.04.2016/WP 7384 of 2013/2016:BHC-AS:9782-DB/Bombay HC/V M Kanade and M.S.Karnik.

Modi Paints and Varish Works Vs Sanjay Gupta

Non Renewed Registered Trademark are no more in existence

Introduction:

Trademark registration is a crucial aspect of intellectual property law, providing businesses with the exclusive rights to use distinctive signs to identify their products or services. However, the continued protection of a trademark depends on timely renewals. Failure to renew a trademark results in its expiration, leading to the loss of exclusive rights. This article explores the legal implications of non-renewed registered trademarks, with a focus on the case C.O. (COMM.IPD-TM) 324/2021 concerning the trademark 'MODI CRYL'.

Case Background:

Parties Involved:

The petitioner in this case was Modi Paints and Varnish Works, who sought the removal of the trademark 'MODI CRYL' under Registration No. 1689069 in Class 2. The respondents were Sanjay Gupta and Anr., with Sanjay Gupta being the proprietor of the trademark in question.

Trademark Status:

The trademark 'MODI CRYL' was registered in the name of Sanjay Gupta, but its validity expired on May 21, 2018, due to non-renewal. As of July 8, 2024, the online status report indicated that the trademark was still listed as "Registered," although its non-renewal pointed to an inevitable removal.

Legal Analysis:

Trademark Renewal and Expiration:

Under trademark law, a registered trademark must be renewed periodically to maintain its validity. The failure to renew a trademark results in its expiration, effectively removing the exclusive rights previously granted to the trademark holder. This principle was at the heart of the case involving 'MODI CRYL'.

Petition for Removal:

Modi Paints and Varnish Works filed a petition seeking the removal of the trademark 'MODI CRYL' on the grounds of non-renewal. The legal basis for this petition was straightforward: the trademark had not been renewed after its validity expired on May 21, 2018. This non-renewal rendered the trademark non-existent in the eyes of the law, and therefore, the petitioners sought formal recognition of this fact.

Court's Decision:

On July 9, 2024, the court disposed of the petition. The court noted that the trademark 'MODI CRYL' was valid only until May 21, 2018, and had not been renewed thereafter. As a result, the trademark was no longer subsisting. The court concluded that the prayer sought by the petitioners had already been satisfied by the expiration of the trademark due to non-renewal, thus rendering the petition moot.

Implications of the Decision:

Confirmation of Legal Principles:

This case reaffirms the fundamental legal principle that trademarks must be renewed to remain in force. Non-renewed trademarks lose their legal protection and are effectively considered non-existent. This outcome underscores the importance for trademark holders to diligently monitor and renew their trademarks to avoid the loss of rights.

Practical Considerations for Trademark Holders:

Trademark holders must be vigilant in managing their trademark portfolios. Regular monitoring of renewal deadlines and ensuring timely renewals are essential practices to maintain trademark protection. The failure to do so not only results in the loss of exclusive rights but also exposes the brand to potential misuse by others.

Author's Ending Note:

The case of C.O. (COMM.IPD-TM) 324/2021 serves as a clear reminder of the critical importance of trademark renewals in maintaining the legal protection of a brand. The court's decision underscores that non-renewed trademarks are effectively removed from the register, confirming their non-existence in the eyes of the law. Trademark holders must take proactive steps to ensure their trademarks are renewed in a timely manner to preserve their exclusive rights and avoid legal complications.

Case Citation: Modi Paints and Varish Works Vs Sanjay Gupta:09.07.2024: C.O. (COMM.IPD-TM) 324/2021:2024:DHC:5061: Delhi High Court, Minipushkarna, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Hoffmann-La Roche AG & Anr. Versus Zydus Lifesciences Limited

Lack of Necessary Regulatory Approval and Patent Infringement

Introduction:

The intersection of patent law and regulatory compliance forms a critical backdrop in disputes involving pharmaceutical products. This article examines the legal complexities arising from the case of Hoffmann-La Roche AG & Anr. versus Zydus Lifesciences Limited, particularly focusing on allegations of patent infringement and the defendant's launch of "Sigrima" without necessary regulatory approvals.

The Dispute:

The plaintiffs, Hoffmann-La Roche AG & Anr., holders of patents IN 268632 and IN 464646 related to "Perjeta®" (Pertuzumab), allege that the defendant, Zydus Lifesciences Limited, infringed upon these patents with their biosimilar product "Sigrima." The plaintiffs sought an interim injunction to prevent the defendant from marketing "Sigrima" in India, citing potential irreparable harm to their market position and asserting a balance of convenience in their favor.

Regulatory and Launch Issues:

Despite ongoing legal proceedings and assurances from the defendant about the lengthy regulatory approval process, "Sigrima" was launched without prior disclosure to the court. This launch occurred without providing accurate timelines for regulatory approvals, raising concerns about procedural fairness and transparency in the litigation process.

Court's Response:

Justice Sanjeev Narula, presiding over the High Court of Delhi, expressed serious reservations about the defendant's conduct. The court viewed the defendant's failure to disclose regulatory approvals and the subsequent product launch as potentially undermining the equitable handling of the case. This lack of transparency was seen as overreaching the court's process and potentially gaining an unfair advantage in the legal proceedings.

Legal Analysis:

Importance of Regulatory Compliance:

In pharmaceutical patent disputes, compliance with regulatory approvals is crucial. Launching a product without obtaining necessary regulatory clearances not only violates statutory requirements but also complicates the legal landscape. It raises questions about the defendant's adherence to regulatory norms and fair play in litigation.

Impact on Patent Infringement Claims:

The defendant's preemptive launch of "Sigrima" complicates the patent infringement claims. The plaintiffs argue that this launch undermines their exclusive rights to "Perjeta®" and could lead to substantial market competition that affects their market share and revenue.

Court's Intervention: Interim Injunction:

The court's decision to grant an interim injunction restraining the defendant from marketing "Sigrima" reflects its acknowledgment of the potential harm to the plaintiffs. This preventive measure aims to preserve the status quo until the court resolves the substantive issues of patent infringement and evaluates the defendant's conduct in light of regulatory non-compliance.

Implications for Stakeholders:

Plaintiffs:

Protection of Intellectual Property: The interim injunction safeguards the plaintiffs' patent rights and prevents potential financial losses.

Legal Strategy: The case highlights the importance of strategic legal maneuvers to protect market exclusivity amid competitive challenges.

Defendants:

Legal and Commercial Risks: Non-disclosure of regulatory approvals and premature product launch may lead to adverse legal consequences and reputational risks.

Litigation Strategy: The defendant's actions underscore the necessity of transparent and compliant conduct in litigation to maintain credibility before the court.

Conclusion:

The case of Hoffmann-La Roche AG & Anr. vs. Zydus Lifesciences Limited illustrates the intricate balance between patent protection, regulatory compliance, and procedural fairness in pharmaceutical disputes. The court's interim injunction underscores the gravity of regulatory non-compliance and its potential impact on patent litigation outcomes. It serves as a cautionary tale for stakeholders to adhere rigorously to legal and regulatory norms while navigating complex patent infringement disputes.

Author's Ending Note:

The legal landscape surrounding patent infringement and regulatory compliance demands meticulous adherence to procedural fairness and transparency. Intersection of patent law and regulatory compliance is pivotal in shaping the outcomes of intellectual property disputes. The Hoffmann-La Roche AG & Anr. vs. Zydus Lifesciences Limited case serves as a critical reminder of the implications of regulatory non-compliance on patent infringement claims and underscores the courts' vigilance in safeguarding the interests of all parties involved.

Case Citation: Hoffmann-La Roche AG & Anr. versus Zydus Lifesciences Limited:09.07.2024: CS(COMM) 159/2024:Delhi High Court, Sanjeev Narula, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

MMI Tabacco Pvt Ltd And Another Vs Iftikhar Alam

Status Quo in Trademark disputes pertaining to conflict between family members

Introduction:

The High Court of Judicature at Allahabad adjudicated the case of *M/S Mmi Tabacco Pvt Ltd And Another vs Iftikhar Alam* on July 5, 2024. This case involves a complex dispute over the trade mark "Musa-Ka-Gul," used for a tooth powder product. The appellants, M/S Mmi Tabacco Pvt Ltd and Mohd. Nazish, assert their exclusive rights to the trade mark, alleging its usage since 1974 and registration in 1994. The respondent, Iftikhar Alam, challenges this claim, contending the validity of the appellants' trade mark and asserting his right to use it based on an assignment from a previous authorized user. The procedural journey of the case, marked by temporary injunctions and remands, highlights significant aspects of trade mark law, especially in the context of family disputes and conflicting claims.

Background and Parties' Claims:

Appellants' Position:

Mmi Tabacco Pvt Ltd and Mohd. Nazish claim exclusive rights to the trade mark "Musa-Ka-Gul." They assert continuous use of the trade mark since 1974, with formal registration obtained in 1994. The appellants seek an injunction to restrain the respondent from using the trade mark.

Respondent's Position: Iftikhar Alam argues against the injunction, citing the pending rectification of the registered trade mark. Alam claims his right to use the trade mark stems from an assignment from Ishrat Jahan, who was authorized by Mohd. Islam. He contends that the appellants' trade mark differs from his and that they lack a prima facie case.

Procedural History:

The trial court initially granted a temporary injunction in favor of the appellants. However, this decision was set aside by the High Court, which remanded the matter for reconsideration. Upon remand, the trial court rejected the appellants' application for injunction, prompting further appeals and legal scrutiny.

High Court's Analysis:

The High Court's analysis reveals the complexity of the dispute, characterized by family conflicts and competing claims over the trade mark. Key points include:

Interim Injunction and Status Quo:

The High Court emphasizes that the purpose of an interim injunction is to maintain the status quo until the final resolution of the matter. The court refrains from making conclusive findings that could influence the trial court's ultimate decision.

Withdrawal Applications and Trade Mark Assignment:

The court scrutinizes the withdrawal applications of 2016, noting that they were not recognized by the Trade Marks Department. Subsequent developments, including an assignment deed dated March 28, 2019, recognize the appellants as the proprietors of the trade mark. The court concludes that the withdrawal applications cannot solely justify the dismissal of the appellants' claim for an injunction.

Conclusion and Remand:

The High Court remands the matter to the trial court for further consideration, highlighting the need to preserve the status quo. The court underlines that the trial court must fully adjudicate the claims and defenses of both parties before reaching a final determination on the merits of the trade mark dispute.

Author's Note:

The case of Mmi Tabacco Pvt Ltd And Another vs Iftikhar Alam underscores the intricate nature of trade mark disputes, particularly when intertwined with family conflicts and historical claims. The High Court's decision to maintain the status quo and avoid premature conclusions reflects a prudent approach, ensuring that the trial court can thoroughly evaluate the evidence and arguments presented by both sides.

Case Citation: MMI Tabacco Pvt Ltd And Another Vs Iftikhar Alam:05.07.2024: FAO 411 of :2024:AHC:109131:Allahabad High Court, Kshitij Shailendra, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Jaikishan Kakubjai alis Jackie Shroff Vs The Peppy Store

Protection of Personality Right

In the digital age, the intersection of personality rights, publicity rights, and trademark infringement has become increasingly complex. This case involves Mr. Jaikishan Kakubhai Shroff, popularly known as Jackie Shroff, who is suing multiple defendants for the unauthorized use of his name, image, and likeness on the internet. Mr. Shroff asserts his personality rights, publicity rights, and claims trademark infringement against the defendants.

Personality and Publicity Rights:

Personality rights protect an individual's persona from unauthorized commercial exploitation. Publicity rights are a subset, focusing on the commercial use of one's identity. Mr. Shroff asserts these rights against the defendants, emphasizing that unauthorized use of his name, image, and likeness dilutes his brand equity and infringes on his rights.

Trademark Infringement:

Mr. Shroff owns registered trademarks for 'BHIDU' under numbers 3227968 in Class 25 and 3227969 in Class 41. He also holds the mark "Bhidu ka khopcha" under number 4362494 in Class 41. These trademarks are integral to his brand identity. Unauthorized use of these trademarks by the defendants for merchandise, videos, AI chatbots, and wallpapers constitutes trademark infringement.

Personality Rights in Jurisprudence:

The case draws on precedents such as Zacchini v. Scripps-Howard Broadcasting Co, which recognized the right of individuals to control the commercial use of their persona. Indian courts have similarly upheld these rights, recognizing the commercial value of celebrity personas.

Balance with Artistic Expression:

The court balanced Mr. Shroff’s rights with the defendants' rights to artistic expression. The case explores this balance, considering the economic interests of content creators while protecting Mr. Shroff's rights.

Grant of Injunction:

The court granted injunctions against specific defendants based on a prima facie case established by Mr. Shroff. This decision prevents further unauthorized use of his persona, protecting his rights until a final judgment is reached.

Conclusion:

This is a seminal case that addresses the protection of celebrity rights in the digital era. It underscores the importance of personality and publicity rights, emphasizing the need for legal frameworks that balance these rights with artistic expression. As the digital landscape evolves, such cases will play a crucial role in shaping the legal standards for protecting celebrity personas.

Author’s Note:

This case is a pivotal moment in the legal landscape of personality and publicity rights. It serves as a reminder of the evolving nature of intellectual property rights in the digital age. Legal practitioners must navigate these complexities, ensuring that celebrities' rights are protected while fostering an environment that encourages creative expression. The decision in this case will likely influence future litigation involving personality rights and trademark infringement, setting important precedents for the protection of celebrity personas in the digital world.

Case Citation: Jaikishan Kakubjai alis Jackie Shroff Vs The Peppy Store:15.05.2024: CS(COMM) 389/2024 :2024:DHC:4046:Sanjeev Narula, H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539