Christian Louboutin Vs Nakul Bajaj

Background:

The plaintiff, Christian Louboutin SAS, is a manufacturer of luxury shoes and claims to enjoy goodwill and trademark protection over its brand name, founder's name and image, and the red sole mark.

The defendants operate the website www.darveys.com, which offers for sale various products bearing the plaintiff's trademarks, without authorization.

Intermediary Liability Under Section 79 of the IT Act

Section 79 of the IT Act provides exemption from liability to intermediaries for third-party information/data hosted on their platforms.

However, this exemption is not absolute and has certain conditions - the intermediary must not initiate the transmission, select the receiver, or modify the information.

The intermediary must also observe due diligence and comply with government guidelines.

The exemption is lost if the intermediary conspires, abets, aids, or induces the commission of an unlawful act.

Factors Determining Intermediary Status:

Mere self-identification as an intermediary does not automatically qualify a platform under Section 79.

Factors like actively identifying sellers, enabling them, promoting products, selling products, collecting payments, packaging and delivering goods, etc. indicate active participation beyond that of a neutral intermediary.

The platform's policies, agreements with sellers, enforcement of terms, and measures to protect intellectual property rights are also relevant.

Liability of Darveys.com:

Darveys.com's conduct, including promoting products, providing authenticity guarantees, controlling the sales process, etc. suggest that it is not a neutral intermediary.

Its use of the plaintiff's marks, founder's name and image without authorization amounts to trademark infringement, dilution and passing off.

Darveys.com cannot claim exemption under Section 79 of the IT Act.

Orders:

Darveys.com must disclose seller details, obtain certificates of genuineness, and notify the plaintiff before offering its products.

It must remove any infringing meta-tags and take down listings of counterfeit products upon notification.

Darveys.com is directed to comply with certain measures to ensure sale of genuine products and protection of the plaintiff's intellectual property rights.

Case Citation: Christian Louboutin Vs Nakul Bajaj: 02.11.2018: CS (COMM) 344/2018:2018:DHC:7106: Delhi High Court: Prathiba M Singh: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Bardhman Agro Vs Kirorimal Kashiram

The Suit filed by the Plaintiff and the cancellation petition filed by the Defendant against registered Trademark of the Defendant were listed together in Court.

The Plaintiff submitted that the rectification petition filed by Bardhaman Agro Products needs to be heard first, as per the judgment in the case of Mr. Amrish Aggarwal Trading as Mahalaxmi Product vs. Venus Home Applicances Pvt. Ltd. & Anr.

The defendant (Bardhaman Agro Products has submitted that the plaintiff ( Kirorimal Kashiram Mkt. and Agencies) has filed additional documents that are part of both the rectification petition and the suit, and hence evidence needs to be carried out for these documents. he plaintiff (Kirorimal Kashiram Mkt. and Agencies) has disputed this contention.

The main issue is whether the rectification petition filed by Bardhaman Agro Products should be heard first before the main suit, CS(COMM) 182/2018.

The court decided that the rectification petition needs to be heard first, based on the judgment in the case of Mr. Amrish Aggarwal Trading as Mahalaxmi Product Versus Venus Home Applicances Pvt. Ltd. & Anr.

Case Citation: Bardhman Agro Vs Kirorimal Kashiram: 22.07.2024: C.O. (COMM.IPD-TM) 16/2022:Delhi High Court: Mini Pushkarna H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Anupam Saxena Vs Shiv Verma

The plaintiff, Anupam Saxena, has filed a suit against the defendants, Shiv Verma Trading as Marksons Herbal Life & Ors., for infringement of copyright, trademarks, passing off, and unfair competition. The plaintiff's product, "ADIBASI Hair Oil," is a natural herbal hair oil with a unique and distinctive brand, trade dress, label, and packaging.

The plaintiff claims that the defendants have replicated the plaintiff's registered trademarks, trade dress, and overall look and feel of the products, leading to consumer confusion and potential harm to the plaintiff's brand reputation.

The plaintiff's trademark "ADIBASI Hair Oil" is registered in India and is valid and subsisting. The plaintiff has also applied for various other trademarks containing the "ADIBASI" brand, which are currently pending.

The defendants' product closely mirrors the plaintiff's established products, including the packaging, design elements, and overall presentation.

The defendants' use of the impugned products is likely to confuse consumers regarding the origin of the goods, leading to significant consumer confusion and potential harm to the plaintiff's brand reputation.

The court found that the plaintiff has established a prima facie case in its favor and that the balance of convenience is in favor of the plaintiff.

Accordingly the court restrained the defendants from using the impugned products under the mark, trade dress, and label that are identical or deceptively similar to the plaintiff's registered trademarks "ADIBASI HAIR OIL" and "ADIBASI."

Case Citation: Anupam Saxena Vs Shiv Verma: 26.07.2024: CS Comm 610 of 2024:Delhi High Court: Mini Pushkarna H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Alok Kumar Indurkhya Vs The State Of Madhya Pradesh

The Collector of Jabalpur issued directions to lodge FIRs against various entities, including school managements, book sellers, and publishers, based on complaints received from parents. The FIRs allege that the book sellers, in conspiracy with school managements and publishers, charged exorbitant prices for books and used forged International Standard Book Numbers (ISBNs). The book sellers are alleged to have been selling books with forged or duplicate ISBN codes.

The Book Sellers alleged that the same are innocent and have been falsely implicated. There are no allegations of forgery or cheating against the book sellers. Mentioning or not mentioning an ISBN on a book is irrelevant and does not attract any penal action.

The Court noted that the FIRs and the enquiry reports submitted by the committees prima facie implicate the book sellers in the alleged offenses.

The Court observed that the matter is at the investigation stage, and the allegations against the book sellers, including the seizure of books with forged or duplicate ISBNs, are serious in nature. Considering the nature of the allegations, the Court did not inclined to grant bail to the book sellers at this stage. Accordingly, the Court dismissed the bail applications filed by the book sellers.

Case Citation: Alok Kumar Indurkhya Vs The State Of Madhya Pradesh: 09.07.2024: Misc Crl.Case No. 24947 of 19.07.2024:Madhya Pradesh High Court: Maninder S Bhatti. H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Kunj Roller Flour M Ills Pvt. Ltd. Vs New Ristha Agro India

The case before the High Court at Calcutta involves a trademark dispute between Kunj Roller Flour Mills Pvt. Ltd. (the appellant) and New Ristha Agro India Ltd. (the respondent). The appellant, a manufacturer of various food products under the brand name "Rishta," filed a suit against the respondent for infringing its trademark and passing off its products as those of the appellant. The appellant has been using the trademark "Rishta" since 2000 and claims to have acquired significant goodwill and reputation in the market. The respondent, on the other hand, claims to have been using the trademark "Rishta" since 1995 and argues that it is the prior user of the mark. The respondent also claims to have obtained registration for the trademark in Class 30.

The trial court granted a temporary injunction restricting the respondent from using the trademark "Rishta" for edible vegetable oil only, pending the suit's disposal. The appellant appealed against this order, arguing that the injunction should not be limited to edible vegetable oil, as they are the prior user of the trademark across various food products. The respondent filed cross-objections, asserting that the injunction should not have been granted at all, as they are the prior user and registered owner of the trademark.

The High Court, after considering the arguments and evidence presented by both parties, found that the appellant had established a strong prima facie case for being the prior user of the trademark "Rishta." The court noted that the appellant had provided evidence of continuous and extensive use of the trademark since 2000, including sales volumes and promotional expenses. In contrast, the respondent's evidence of prior use since 1995 was not substantiated with reliable documents.

The High Court modified the trial court's order, extending the temporary injunction to restrain the respondent from passing off any food items and edible oils under the trademark "Rishta" until the suit is disposed of. The appeal was allowed to this extent, and the cross-objection filed by the respondent was dismissed. The court emphasized the importance of goodwill and reputation in the market in relation to a trademark and the rights of a prior user in a passing off action.

Case Citation: Kunj Roller Flour M Ills Pvt. Ltd. Vs New Ristha Agro India: 19.07.2024/FMAT No.403 of 2023 :Calcutta High Court: Harish Tandon and Madhurash Prasad. H.J.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

N.Ranga Rao & Sons Private Limited Vs Sujatha Match Works

The plaintiff claims to be a registered partnership firm engaged in manufacturing and selling incense sticks/Agarbathies and Dhoops since 1948. The plaintiff adopted and has been using the trade mark "Cycle Brand" with the device of a "Cycle" since July 1953. The plaintiff has obtained registrations for the "Cycle Brand" trade mark in various classes, including Class 34 for safety matches. The plaintiff's trade mark "Cycle Brand" has become a well-known mark and enjoys tremendous goodwill and reputation.

The defendant contended that the same has been manufacturing and marketing safety Matches under the name "Cycle" with the device of a "Cycle" since 1995. The defendant claims to be the prior user of the "Cycle" mark for safety matches. The defendant argues that Agarbathies and safety Matches are different products falling under different classes, and therefore, there is no infringement or passing off.

The court found that the defendant's use of the "CYCLE" mark with the device of a "Cycle" infringes the plaintiff's well-known registered trade mark under Section 29(4) of the Trade Marks Act. The plaintiff has established the extensive use and reputation of the "CYCLE" mark since 1954, which the defendant has dishonestly adopted.

The court held that the defendant's adoption of the "CYCLE" mark is dishonest and with the intention to ride on the plaintiff's reputation, constituting passing off. The court found that the defendant has not proved that he is the prior user of the "CYCLE" mark for safety matches, as compared to the plaintiff's prior use since 1954.

The court held that given the "well-known" status of the plaintiff's "CYCLE" mark and the allied/cognate nature of the goods, the plaintiff is entitled to claim exclusive monopoly over the "CYCLE" mark across all classes of goods and services. Based on the findings of infringement and passing off, the court granted the plaintiff's prayer for permanent injunction against the defendant.

Case Citation: N.Ranga Rao & Sons Private Limited Vs Sujatha Match Works: 12.07.2024/C.S. No.310 of 2014 :Madras High Court: P. Velmurugan H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Opella Healthcare Group Vs Pureca Laboratories Pvt. Ltd.

In the High Court of Delhi, Opella Healthcare Group (plaintiff) filed a suit against Pureca Laboratories Pvt. Ltd. (defendant) in relation to alleged infringement of the plaintiff's trademarks and copyright.

The plaintiff claimed to has been actively marketing and selling pharmaceutical products under the trademark 'PHENSEDYL' since 1954, which is registered in various classes. The defendant is accused of adopting and using the mark 'PHENSERYL' and a trade dress/packaging that is deceptively similar to the plaintiff's, leading to a claim of infringement, passing off etc.

The plaintiff has provided evidence of its extensive use and registration of the 'PHENSEDYL' trademark, including its registration in India with various registration numbers and renewal dates. The defendant's mark 'PHENSERYL' is alleged to be visually, structurally, and phonetically similar to the plaintiff's mark, leading to a likelihood of confusion in the market, especially given the nature of pharmaceutical products and their sale in India.

The plaintiff has also filed a Cancellation/Rectification Petition against the defendant's registration of the mark 'PHENSERYL', challenging its validity. The defendant's use of the impugned mark and trade dress has been discovered through market enquiries and perusal of the defendant's brochure.

The Court has found a prima facie case in favor of the plaintiff and has granted an interim injunction restraining the defendant from using the mark 'PHENSERYL' or any deceptively similar marks.

Case Citation: Opella Healthcare Group Vs Pureca Laboratories Pvt. Ltd: 09.07.2024/COpella Healthcare Group Vs Pureca Laboratories Pvt. Ltd :Delhi High Court: Mini Pushkarna. H.J.

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

Adidas AG Vs Keshav H Tulsiani

The case revolves around the trademark "Adidas," which was coined by Adolf Dassler in 1948 by combining his nickname 'Adi' and the first three letters of his surname 'Das'. The mark was first used commercially in 1949. Adidas registered its mark in India in 1971 and formally entered the Indian market in 1989 through a licensing agreement with Bata India Pvt. Ltd.

Defendant No. 1 claimed his adoption of the "ADIDAS" mark was in good faith, motivated by personal affection for his elder sister, who was called 'ADI' in the Sindhi community. This defense of personal significance aims to suggest that the adoption was not intended to infringe on the established Adidas brand. However, the court's primary focus is not on the personal reasons behind adopting the mark but on the legal implications of its use in commerce.

The Defendants challenged the court's jurisdiction, arguing they neither reside nor conduct business within the court's jurisdiction, and thus, the cause of action did not arise there. This argument aimed to dismiss the case on procedural grounds. Nonetheless, the court found that it had territorial jurisdiction under Section 134(2) of the Trademarks Act and Section 20 of the Code of Civil Procedure. This decision was based on the fact that Adidas conducts business in Delhi through its subsidiary, establishing a sufficient nexus for the court to exercise jurisdiction.

The Defendants also claimed they had applied for and secured registration of the "ADIDAS" mark in class 24 in 1987, predating the Plaintiff's commercial use in India. This assertion was crucial, as prior registration and use could potentially negate claims of infringement. However, the court determined that Adidas was the prior adopter and registered proprietor of the "ADIDAS" mark in India. The Defendants failed to substantiate their claim of prior use, which weakened their defense.

The court concluded that the Defendants' use of the identical "ADIDAS" mark on textile goods constituted trademark infringement under Section 29(2)(a) of the Trademarks Act. This decision was based on the similarity of goods and the likelihood of consumer confusion. The identical nature of the mark used by the Defendants and the established reputation of the Adidas brand likely led to consumer confusion, fulfilling the criteria for trademark infringement.

The court's ruling granted a permanent injunction restraining the Defendants from using the "ADIDAS" mark or any deceptively similar mark. This injunction aimed to prevent further consumer confusion and protect the integrity of the Adidas brand. The case underscores the importance of prior use and registration in trademark disputes and highlights the court's role in maintaining fair competition and protecting established trademarks from infringement.

Case Citation: Adidas AG Vs Keshav H Tulsiani: 19.07.2024/CS(COMM) 582/2018 :2024:DHC:5361: Delhi High Court: Sanjeev Narula. H.J.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Hassad Food Company Q.S.C. Vs Bank Of India

The Additional Documents Sought to put on record by the Plaintiffs were  Monthly inventory statements submitted by Bush Foods to the banks (April 2011 - October 2013). Emails and attachments from the plaintiffs' independent professional agency (GPW) providing details of the correspondence between Bush Foods and the defendant banks.SWIFT statements to prove the payments made by the plaintiffs to the defendant banks.Court orders in the FIR registered against Bush Foods and others.Minutes of the Board of Directors' meeting of Bush Foods held on July 4, 2013.

The main contention of the defendant is that the court's decision to allow the plaintiffs to place additional documents on record in a commercial suit alleging fraud and misrepresentation by the defendant banks, subject to the payment of costs, noting that the plaintiffs have made out a reasonable cause for the non-disclosure of the documents with the plaint, is wrong. 

The court distinguished between the terms 'good cause' and 'reasonable cause', noting that 'reasonable cause' requires a lower degree of proof compared to 'good cause'. The court held that under Order XI Rule 1(5) of the Commercial Courts Act, which uses the phrase 'reasonable cause', the plaintiffs' explanation of administrative oversight leading to the non-filing of the documents with the plaint was sufficient to allow the filing of the additional documents. 

The court addressed the defendants' objections by noting that the defendants did not dispute the relevance of the documents, and the only objection was that the plaintiffs could not file the documents at this stage. However, the court observed that the pleadings were not complete yet, as the plaintiffs' replications had not been taken on record. The court also noted that the plaintiffs were neither setting up a new case nor withdrawing any admission, and that in similar situations, courts have permitted the filing of additional documents.

The court allowed the plaintiffs to file the additional documents on the basis that the plaintiffs had made out a 'reasonable cause' for not filing the documents with the plaint, as required under Order XI Rule 1(5) of the Commercial Courts Act. The court noted that the plaintiffs had filed a voluminous number of documents with the plaint, and the non-filing of these additional documents was due to an 'administrative oversight', rather than the plaintiffs trying to set up a new case.

Case Citation: Hassad Food Company Q.S.C. Vs Bank Of India: 15.10.2019/CS(COMM) 9/2018 :2019:DHC:5253: Delhi High Court:Mukta Gupta. H.J.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

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G.M.Modular Pvt. Ltd. Vs Registrar of Copyright:

The appeal was filed by M/S G.M. Modular Pvt Ltd (the Appellant) against the order of the Registrar of Copyright (the Respondent) rejecting the Appellant's application for registration of an artistic work titled "CASABLANCA PLATE WITH SWITCH ASSEMBLY-3M PLATE".

The Registrar of Copyright had rejected the application on the grounds that the work was an industrial design within the scope of Section 15 of the Copyright Act, 1957, and the required affidavit stating that the work was neither registered nor capable of being registered under the Designs Act and had not been reproduced more than 50 times was not submitted.

The Appellant contended that it was not afforded an opportunity of hearing before the impugned order was passed. The hearing notices dated 14th February, 2020 and 25th February, 2020 were inadvertently sent to the Appellant's junk email box, and due to this oversight, the Appellant could not attend the hearing scheduled on 25th February, 2020. Immediately upon realizing this, the Appellant sent an intimation on 3rd March, 2020 to the Respondent requesting a fresh hearing, but the Respondent proceeded to pass the impugned order on 6th March, 2020.

Respondent contended that sufficient opportunity was granted to the Appellant to attend the hearing, and the Appellant's absence was due to its own negligence. The impugned order examined the merits of the case and rejected the application as it did not fall within the scope of Section 15 of the Copyright Act. The Appellant's absence on the date of hearing was not the sole basis for the impugned order, as the Registrar had considered the affidavit on record and decided the application on its merits.

The Court noted that the Appellant had sent replies to the earlier examination letters, categorically placing on record its stance regarding the affidavit. However, it appears that at the stage of the final hearing, although the Registrar took note of the affidavit, no opportunity was given to the Appellant to make oral submissions prior to the decision on its application. The Appellant had immediately sent an intimation on 3rd March, 2020, admitting its mistake and requesting a fresh hearing. Accordingly the impugned order was set aside and matter was remanded back to Registrar of copyright for fresh adjudication after granting petition the opportunity of being heard. 

Case Citation: G.M.Modular Pvt. Ltd. Vs Registrar of Copyright: 10.02.2023/CA (COMM.IPD-CR) 7/2022: Delhi High Court:Sanjeev Narula. H.J.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

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Paras Natural Spring Water Vs Registrar of Trademark:

The petitioners filed writ petitions (WP(C) No.7084, WP(C) No.7085, and WP(C) No.7087 of 2010) seeking correction of the status of their trademark applications, which were wrongly shown as "abandoned" by the Trade Marks Registry. The respondents were represented by Mr. M. Dutta, Adv.

The petitioners had applied for the registration of the trademarks "PARAS PREMIUM" and "PARAS LABEL" in English and Hindi, respectively. The Trade Marks Registry raised objections, and despite the petitioners' compliance and correspondence, the applications were treated as abandoned due to procedural defaults or non-appearance at hearings. The petitioners sought restoration of their applications and a direction to correct the status to "pending."

The court found that the Act does not specifically provide for abandonment of applications due to non-response to objections, but the Rules do provide for such abandonment if the applicant fails to amend the application or submit observations within three months.

The court ruled that the Rules are not contrary to the Act and serve a purpose by requiring prompt responses to the Registrar's communications. The court also held that the Registrar has the discretion to extend the time for response in appropriate cases, making the provisions of the Rules directory rather than mandatory.

The court emphasized the importance of natural justice and the need for the Registrar to provide a show cause notice or opportunity of hearing before treating an application as abandoned. The court quashed the impugned orders treating the applications as abandoned and directed the Registrar to provide notice to the petitioners to show cause why their applications should not be deemed abandoned. The petitioners are entitled to seek an extension of time, and the Registrar must pass a speaking order after considering the applicant's plea.

Case Citation: Paras Natural Spring Water Vs Registrar of Trademark: 28.11.2023/WP(C) No.7084 of 2010 /2024:DHC:6132: Delhi High Court:V.K.Jain H.J.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dish Tv India Ltd Vs Gulf Dth Fz Llc

The appeal was filed against an order dated August 30, 2016, which dismissed the appellant's application for recall/review of an earlier order that closed the appellant's right to file a written statement due to a delay beyond the 120-day period mandated by the Code of Civil Procedure, 1908 (CPC), as amended by the Commercial Courts Act, 2015.

The appellant, Dish TV India Ltd., is an Indian DTH service provider, while the respondent, Gulf DTH FZ LLC, is a DTH platform operator in the Middle East and North African region, claiming exclusive rights to transmit television channels in that territory. The respondent filed a suit seeking a permanent injunction against the appellant's activities in the OSN territory and damages for copyright infringement.

The appellant argued that the suit was not a commercial suit initially and that the 120-day period for filing a written statement should not apply until the suit was converted into a commercial suit. They relied on the Supreme Court's judgment in Shah Babulal Khimji v. Jayaben D. Kania & Anr., which states that an interlocutory order affecting a valuable right to defend can be treated as a 'judgment' and is appealable.

The respondents contended that the suit was a commercial dispute under the Commercial Courts Act and that the appellant had forfeited the right to file a written statement due to the expiration of the 120-day period. They argued that the Commercial Courts Act's provisions override other laws, and thus the appeal is not maintainable.

The High Court, after analyzing the facts and the law, found that the suit was initially filed as an ordinary civil suit and was converted into a commercial suit only after the impugned order. Therefore, the appeal is maintainable under the Delhi High Court Act, 1966, and the appellant's right to file a written statement was wrongly closed. The court relied on the Supreme Court's

judgment in Raj Process Equipments and Systems Pvt. Ltd. v. Honest Derivatives Pvt. Ltd., which states that the time limit for filing a written statement in an ordinary civil suit is not mandatory until the suit is transferred to a commercial court.

The court also considered the discretion given to the Commercial Division under the Commercial Courts Act to prescribe new timelines for transferred suits. The court held that the appellant's written statement should be taken on record, and the suit should proceed from that stage.

Case Citation: Dish Tv India Ltd Vs Gulf Dth Fz Llc: 18.07.2024/FAO(OS) 26/2019 /2024:DHC:5268 DB: Delhi High Court/Rajiv Sikdher and Amit Bansal. H.J.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Sri. Manjunatha M. S Vs State By Arsikere Town Police

The case involves Sri Manjunatha M.S., proprietor of Sri Sathya Sai Baba Oil Mill, who filed a petition under Section 482 of the Criminal Procedure Code seeking to set aside orders from previous proceedings related to trademark infringement.

The petitioner claims that the initial complaint against him was wrongly registered under the Copyright Act, 1967, for offenses that should have been under the Trade Mark Act, 1999. He argues that this misregistration was intentional, to bypass the requirements of the Trade Mark Act, which mandates obtaining the Registrar of Trade Marks' opinion before conducting a search and seizure. The petitioner contends that the entire criminal process was an abuse of law and should be quashed.

The respondents, represented by the State and Sri K.R. Nagendra, proprietor of Shankar Industries, argue that the complaint was correctly filed to protect against trademark infringement and that any irregularities in the process do not warrant quashing the proceedings. They rely on precedents that suggest non-compliance with the Trade Mark Act's proviso is an irregularity that does not lead to a miscarriage of justice.

The court found that there is no embargo on laying a charge sheet for offenses under the Trade Mark Act, even if the initial complaint was registered under the Copyright Act. However, the court noted that if the initial registration was malafide, it could intervene under Section 482 of the Cr.P.C.

The court also addressed the non-compliance with the proviso to Subsection (4) of Section 115 of the Trade Mark Act, which requires obtaining the Registrar's opinion before a search and seizure. The court, citing various high court decisions, concluded that such non-compliance is an irregularity that does not go to the root of the investigation and can be addressed during the trial if it causes a failure of justice. In light of these findings, the court dismissed the petition, stating that it is not required to exercise its powers under Section 482 of the Cr.P.C

Case Citation: Sri. Manjunatha M. S Vs State By Arsikere Town Police: 08.07.2024/CRL.P. 1620 of 2017 /2024:KHC:25896: Karnataka High Court/Suraj Govind Raj. 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.]

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

Unisn Health Check Up Vs Unison Pharmaceuticals

This is a judgment from the High Court of Gujarat at Ahmedabad, dated July 16, 2024, in a civil appeal filed by UNISN HEALTH CHECK UP AND DIAGNOSTICS LLP against UNISON PHARMACEUTICALS PVT. LTD. The appeal challenges an interim injunction granted by the Commercial Court, Ahmedabad, which restrained the appellant from using the trade mark 'UniSN' on the grounds of alleged infringement of the respondent's registered trade mark 'UNISON'.

The respondent, UNISON PHARMACEUTICALS, has been using the trade mark 'UNISON' since 1980 and registered it in 2003 and 2012 for goods in Class 5 and Class 10. The appellant, UNISN HEALTH CHECK UP AND DIAGNOSTICS LLP, started using the trade mark 'UniSN' in 2021 for health check-up and diagnostic services. The trial court granted the injunction based on the plaintiff's long-standing use and registration of the 'UNISON' mark, the phonetic and visual similarities between 'UNISON' and 'UniSN', and the likelihood of confusion among the public.

The appellant argued that the trade marks are not deceptively similar, as 'UNISON' is registered in Class 5 and Class 10 for pharmaceutical goods, while 'UniSN' is used in Class 44 for health services. The appellant also pointed out that the plaintiff's trade mark is a device mark with additional elements, and the word 'UNISON' cannot be claimed exclusively.

The High Court, however, found that the trial court erred in granting the injunction. The court noted that the plaintiff's mark is a composite device mark, and the word 'UNISON' is part of a larger design. The court applied both visual and phonetic tests and found no convincing similarity between the two marks. The court also considered the nature of the goods and services provided by both parties and the class of customers likely to purchase them, concluding that there is no likelihood of confusion.

The High Court dismissed the interim injunction application and set aside the trial court's judgment, finding that the plaintiff failed to make a prima facie case for the injunction.

Case Citation: Unisn Health Check Up Vs Unison Pharmaceuticals: 16.07.2024/AO 98 of 2024/GHC/Sunita Aggarwal and Pranav Trivedi 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.]

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]

Husenali Anwarali Charaniya vs Hasmukhbhai Bhagvanbhai Patel

The case of Husenali Anwarali Charaniya Vs. Hasmukhbhai Bhagvanbhai Patel, heard on 24 June 2024 in the High Court of Gujarat at Ahmedabad, involves a dispute over the use of a trademark and copyrighted label for betel nut products. Charaniya, the plaintiff, alleges that Patel, the defendant, is using a deceptively similar mark and label, "Kranti Kaka," which infringes on Charaniya's trademark "Kanti Kaka" and copyrighted label.

The plaintiff, Charaniya, has been in the business of manufacturing and marketing betel nut products since 2016 and has established goodwill and reputation in the market. He has a registered copyright for the label and has applied for a trademark. The defendant, Patel, is also in the same business and has been using a mark and label that the plaintiff claims is confusingly similar to his own. The District Court, in an order dated 09.05.2024, granted an interim injunction against Patel, restraining him from using the deceptively similar mark and label until the final disposal of the suit. Patel appealed this decision, arguing that the plaintiff had not established exclusive rights to the mark and that there was a delay in filing the suit.

The High Court, in its oral order, upheld the District Court's decision. It found that the plaintiff had established a prima facie case of passing off, as the defendant's mark and label were deceptively similar to the plaintiff's, which could lead to confusion among consumers. The court also noted that the plaintiff had demonstrated goodwill and reputation in the market, and the defendant had not shown prior use of the mark or label. The High Court relied on Supreme Court decisions that established the principles for granting injunctions in cases of passing off, stating that the appellate court should not interfere with the trial court's discretion unless it was exercised arbitrarily or capriciously.

The High Court found that the District Court had reasonably exercised its discretion and that no interference was necessary. The High Court also addressed the issue of delay in filing the suit, stating that mere delay does not defeat the grant of an injunction, especially if the adoption of the mark appears dishonest. The High Court dismissed the appeal and upheld the interim injunction in favor of Charaniya. In summary, the High Court of Gujarat at Ahmedabad, in its order dated 24/06/2024, dismissed the appeal by Hasmukhbhai Bhagvanbhai Patel against the interim injunction granted by the District Court.

The court found that the plaintiff, Husenali Anwarali Charaniya, had established a prima facie case of passing off and that the defendant's use of a deceptively similar mark and label could lead to confusion in the market. The High Court upheld the District Court's decision to grant an interim injunction, finding that the District Court had exercised its discretion reasonably and judiciously.

Case Citation: Husenali Anwarali Charaniya vs Hasmukhbhai Bhagvanbhai Patel:24.06.2024:[Appeal from Order 94 of 2024]: 2024 GUJHC 33167:Gujarat High Court: Nikhil S Kariel.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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A.P. Møller Mærsk A/S & Anr Vs Maersk Pharma Private Limited

In this case of A.P. Møller Mærsk A/S & Anr v. Maersk Pharma Private Limited, the plaintiffs, A.P. Møller Mærsk A/S, and its associated entities, brought a legal action before the High Court of Delhi, asserting claims of trademark infringement and passing off against the defendant, Maersk Pharma Private Limited. The plaintiffs argued that the defendant's use of the trade name and trademark 'Maersk' was unauthorized and amounted to an infringement of their established and well-known trademark 'MAERSK'. They contended that this unauthorized use by the defendant led to a likelihood of confusion among the public, causing people to mistakenly associate the defendant's products with the plaintiffs' reputable brand.

The court examined the matter thoroughly, focusing on the similarity between the trade names and trademarks of the parties involved. It was observed that the defendant's trade name and trademark bore a significant resemblance to the plaintiffs' trademark 'MAERSK'. The court noted that 'MAERSK' is a well-known and distinctive trademark associated with the plaintiffs' long-standing and reputable business in the shipping and logistics industry. The court found that the use of an identical or deceptively similar trade name and trademark by the defendant in the pharmaceutical sector was likely to cause confusion and mislead consumers into believing that there was a connection or association with the plaintiffs.

Given the plaintiffs' strong prima facie case and the potential for irreparable harm to their business and reputation, the court granted an ad interim ex-parte injunction in favor of the plaintiffs. This injunction restrained the defendant from using the impugned trade name and trademark 'Maersk' in any form, including on products, packaging, promotional materials, and business communications. The court also directed the defendant to cease all activities related to the manufacture, sale, distribution, and promotion of products bearing the disputed trade name and trademark. 

Case Citation: A.P. Møller Mærsk A/S & Anr Vs Maersk Pharma Private Limited :09.07.2024:[CS(COMM) 555/2024]:Delhi High Court:Saurabh Banerjee.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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Jupiter Life Line Hospitals Limited Vs Jupiter Hospital

Jupiter Life Line Hospitals Limited filed an Interim Application for ex-parte ad-interim relief against Jupiter Hospital & Institute of Vascular Surgery. The plaintiff claimed to have secured registrations for the trademark "JUPITER" and accused the defendant of using similar trademarks and websites. The court granted an ex-parte ad-interim order, restraining the defendant from infringing the plaintiff's trademark. 

The plaintiff alleged that the defendant's use of the trademark "JUPITER" and related websites caused confusion and deception among the public, leading to infringement of the plaintiff's registered trademarks. The court found merit in the plaintiff's contention and granted the injunction, considering the likelihood of confusion and the plaintiff's potential irreparable loss if the relief was refused. The court ordered the plaintiff to serve notice of the order and the next hearing date to the defendant within a week.

In its application, Jupiter Life Line Hospitals asserted that it holds registrations for the "JUPITER" trademark, a mark integral to its brand identity and reputation in the healthcare sector. The plaintiff accused the defendant, Jupiter Hospital & Institute of Vascular Surgery, of using a similar trademark and related websites, which it argued created confusion and deception among the public. Such actions, the plaintiff contended, amounted to trademark infringement, diluting its brand value and misleading consumers.

In trademark law, the concept of "likelihood of confusion" is pivotal. It refers to the probability that consumers might mistakenly believe that there is a connection between the two parties' goods or services due to the similarity in their trademarks. In this case, the court was convinced that such a likelihood of confusion existed, given the identical nature of the trademarks in question and the overlapping business domains of the two parties. This confusion, the court noted, could lead to significant damage to the plaintiff's brand and goodwill, emphasizing the need for immediate relief.

The court, after considering the plaintiff's arguments and evidence, found sufficient merit in the claims to warrant immediate judicial intervention. An ex-parte ad-interim order was granted, restraining the defendant from using the "JUPITER" trademark and any related websites that could further propagate the confusion. The court acknowledged that monetary compensation alone might not suffice to address these damages, thereby justifying the need for an immediate injunction to prevent further harm.

Case Citation: Jupiter Life Line Hospitals Limited Vs Jupiter Hospital :09.07.2024:[COM IPR SUIT (L) NO.20025 OF 2024]:Bombay High Court:R.I.Chagla.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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The Zero Brand Zone Pvt. Ltd. Vs Controller of Patent:

The Civil Miscellaneous Appeal under Section 117-A of the Patents Act, 1970, sought to overturn the rejection of a patent application for an "Eco-friendly lamp made up of composition based on panchagavya with the combination of leaves used in traditional herbal medicine."

 The appellant's counsel argued that the invention met the requirements of Section 2(1)(j) of the Patents Act and that the prior art cited was not relevant, as it pertained to mosquito repellents and not lamps. 

The respondents argued that the invention was liable to rejection due to prior art documents D1 to D3, which they claimed contained most of the ingredients used in the invention. The appellant's counsel countered by emphasizing the uniqueness of their invention's composition and process, and its use of specific proportions of ingredients. 

The prior art documents D1 to D3 played a crucial role in the court's decision to reject the patent application. These documents are referenced to establish whether the claimed invention would be obvious to a person skilled in the art, a key consideration in determining the patentability of an invention under Section 2(1)(j) and Section 2(1)(ja) of the Patents Act, 1970. D1, published on 10.06.2017, disclosed a composition for a herbal mosquito repellent made from cow dung, cow milk, cow ghee, neem, and peepal tree barks. Although it did not directly relate to a lamp, the court considered the commonality of some of the ingredients used in D1 with those in the claimed invention. The court found that D1 alone did not provide a coherent thread leading to the claimed invention, but it is part of the body of knowledge that a person skilled in the art would consider. D2, authored by Mandavgane and published on 11.04.2005, also related to a herbal mosquito repellent composition. It contained cow dung and neem, which are ingredients in the claimed invention. 

However, D2 did not include all the ingredients of the claimed invention. The court considered D2 as part of the prior art that a person skilled in the art would be aware of. D3 disclosed the production of eco-friendly lamps/diyas from cow dung, ghee, and essential oils. It was the most relevant prior art as it directly related to the production of lamps using natural ingredients. The court found that D3, combined with the knowledge from D1 and D2, would make the claimed invention obvious to a person skilled in the art. The court reasoned that once the ingredients are part of traditional knowledge, working out the optimum ranges and proportions is a matter of routine experimentation and cannot be construed as inventive.

The court concluded that the invention was not patentable under Section 3(p) and that it would be obvious to a person skilled in the art based on the cited prior art and common general knowledge. Therefore, the appeal was dismissed without any order as to costs, and the patent application remained rejected.

Case Citation: The Zero Brand Zone Pvt. Ltd. Vs Controller of Patent:05.07.2024:([OA/32/2020/PT/CHN]:Madras High Court:Senthilkumar Ramamoorthy, 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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Quality Services And Solutions Private Ltd. Vs Qss Inspection AndTesting Private Limited

The case before the High Court of Judicature at Bombay involves a dispute between Quality Services & Solutions Private Limited and QSS Inspection and Testing Private Limited over alleged infringement of trademark and copyright, as well as passing off. 

The plaintiffs, Quality Services & Solutions Private Limited, claim that they have used the trademark "Quality Services and Solutions" (QSS) since 1999 for their inspection, testing, and certification services across India. They allege that the defendants, who were initially franchisees, have unlawfully registered a similar trademark and have been using it in a manner that could cause confusion among consumers. 

The plaintiffs, QSS, and the defendants, QSS Inspection and Testing Private Limited, have a history and relationship marked by an initial franchise agreement. The plaintiffs, QSS, are a leading multinational company in inspection, testing, and certification, while the defendants were initially franchisees operating under the name Quality Services and Solutions (Gujarat). 

A Memorandum of Understanding (MoU) was executed between the plaintiff and the defendant franchisee on March 10, 2004, granting limited rights to the franchisee to use the plaintiff's trademark in relation to their services, operating on a commission basis. Over time, changes occurred in the management and ownership of both parties. Defendant No. 2, who started as an employee of QSS, became the Managing Director of QSS in 2019. However, after a change in the management of QSS, following the acquisition of a majority shareholding by Plaintiff Nos. 2 and 3, Defendant No. 2 ceased to be a Director of QSS.

 The plaintiffs allege that the defendants, while still franchisees, filed and registered a similar trademark to that of QSS, which was discovered when QSS attempted to register their logo, leading to a legal notice being sent to the defendants to cease and desist from using the QSS mark.

 The defendants argue that the MoU between the parties was abandoned, and they have been using the trademark with the plaintiffs' knowledge and consent. They contend that the plaintiffs have not objected to their use of the trademark until recently, and thus, the plaintiffs' claims are barred by acquiescence and waiver. 

The court finds that the plaintiffs have a strong prima facie case for urgent interim relief, noting that the defendants' use of the trademark was permissive under the MoU and that the defendants have not established acquiescence or abandonment of the MoU. 

The court is particularly concerned about the actions of Defendant No. 2, who was the Managing Director of the plaintiff company when the allegedly infringing trademark was registered. The court grants ad-interim relief to the plaintiffs, restraining the defendants from using the plaintiffs' trademark and copyright.

Case Citation: Quality Services And Solutions Private Ltd. Vs Qss Inspection And

Testing Private Limited :09.07.2024:[COMM IP (L) NO. 13174 OF 2024:Bombay High Court:N.J.Jamadar 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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Dr. Reddys Laboratories Limited Versus Rebanta Healthcare Pvt Ltd And Anr:

In this case involving trademark rights and potential public health implications, Dr. Reddys Laboratories Limited, a leading pharmaceutical company, asserted its ownership of the registered trademark "REBAHEAL." This trademark is specifically used for pharmaceutical products aimed at treating peptic and mouth ulcers. Since its introduction in June 2023, the 'REBAHEAL' trademark has garnered significant goodwill and reputation within the market. The brand has become widely recognized by consumers, doctors, and other healthcare professionals, firmly establishing itself as exclusively linked to Dr. Reddys Laboratories' products.

The 'REBAHEAL' trademark is a coined term, meaning it was created specifically for branding purposes and lacks any pre-existing meaning. This characteristic renders the trademark inherently distinctive, allowing it to serve as a unique identifier for the company's products. The distinctiveness of the 'REBAHEAL' mark underscores its value and the importance of protecting it from potential infringement.

The conflict arose when the defendants began using the identical mark 'REBAHEAL' for their products, which, although intended for different medical conditions, posed a significant threat to the plaintiff's trademark rights. Dr. Reddys Laboratories alleged that the defendants' use of the identical mark constituted trademark infringement and passing off. Passing off occurs when one party misrepresents its goods or services as being those of another, thereby causing confusion or deception among consumers.

Recognizing the potential for confusion and the serious health risks involved, the court took decisive action to protect the public and uphold the plaintiff's trademark rights. The court restrained the defendants from using the mark "REBAHEAL" or any deceptively similar mark that could cause confusion or deception among the public, doctors, and chemists. This legal injunction served not only to protect Dr. Reddys Laboratories' established goodwill and market reputation but also to safeguard public health by ensuring that pharmaceutical products are correctly identified and used as intended.

Case Citation: Dr. Reddys Laboratories Limited Versus Rebanta Healthcare Pvt Ltd And Anr:09.07.2024:(CS(COMM) 553/2024:Delhi High Court:Mini Pushkarna, 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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Loreal Vs Rajesh Kumar Taneja

The High Court of Delhi delivered a judgment on 15.07.2024 in the case of Loreal India Pvt Ltd versus Rajesh Kumar Taneja Trading as Innovative Derma Care & Anr. The appellant sought cancellation of the trademark 'CLARIWASH' registered in favor of respondent no.1, claiming its predecessor had adopted 'CLARI' formative trademarks. The court dismissed the application, stating the impugned trademark was not deceptively similar to the appellant's trademarks and that the registration was not required to be cancelled due to procedural errors.

The court found that the impugned trademark was not deceptively similar to the appellant's trademarks and that the registration was not required to be cancelled due to procedural errors. The court also noted that the appellant's predecessor had full opportunity to oppose the registration of the impugned trademark at the material time but had taken no steps to do so. The court dismissed the appeal and pending applications.

The High Court of Delhi dismissed the appellant's application seeking cancellation of the impugned trademark, stating that the registration was not required to be cancelled due to procedural errors and that the impugned trademark was not deceptively similar to the appellant's trademarks. The court found no grounds to interfere with the impugned judgment and dismissed the appeal and pending applications.

Case Citation: Loreal Vs Rajesh Kumar Taneja :15.07.2024/RFA(OS)(IPD) 2/2023 :Delhi High Court: Vibhu Bakhru and Tara Vitasta Ganju, 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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Zuventus Healthcare Limited Vs Zaventis Health Care Private Limited

In the case of Zuventus Healthcare Limited vs. Zaventis Health Care Private Limited, Zuventus Healthcare Limited initiated legal proceedings seeking a permanent injunction against Zaventis Health Care Private Limited. The plaintiff, Zuventus Healthcare, asserted its exclusive rights to the trademark and corporate name "ZUVENTUS" and "ZUVENTUS HEALTHCARE LIMITED," respectively. These rights, they argued, were established through extensive use and recognition in both domestic and international markets, bolstered by significant manufacturing capabilities and a well-established brand reputation.

Zuventus Healthcare contended that the defendant's use of the mark "ZAVENTIS HEALTH CARE" was a clear case of infringement, as it bore a strong visual, structural, and phonetic resemblance to their own trademark. This similarity, they argued, was likely to cause confusion among consumers, leading to potential damage to their brand and reputation. The plaintiff further alleged that the defendant's adoption of the mark was not only an infringement of their trademark rights but also a violation of their copyright, considering the distinctiveness and originality associated with the "ZUVENTUS" brand.

The court, upon examining the arguments and evidence presented by Zuventus Healthcare, found merit in the plaintiff's claims. It acknowledged the strong likelihood of consumer confusion due to the similarities between the two marks. This confusion could detrimentally affect the plaintiff's business and erode the distinctiveness of their well-known trademark. 

Recognizing the potential for irreparable harm, the court deemed it appropriate to grant the injunction sought by Zuventus Healthcare. As a result, the court issued an order restraining Zaventis Health Care from using the "ZAVENTIS" trademark and any related trade names or domain names that could be construed as similar to "ZUVENTUS." 

Case Citation: Zuventus Healthcare Limited Vs Zaventis Health Care Private Limited :05.07.2024/CS(COMM) 545/2024:Delhi High Court: Mini Pushkarna, 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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