Pawan Kumar Goel Vs. Dr. Dhan Singh

Fact of the Case

The appellant, Pawan Kumar Goel, filed a suit alleging that the respondents, Dr. Dhan Singh and another, were infringing his Indian Patent (IN 369150) related to the process for extracting "Alpha Yohimbine" from Rauwolfia Tetraphylla/Rauwolfia Canescens with a purity greater than 90%. He sought an injunction to restrain the respondents from using, making, selling, exporting, distributing, advertising, or manufacturing the said product.

Procedural Background in Brief

The appellant filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an interim injunction. The learned Single Judge, via order dated March 14, 2024, rejected the injunction application. The appellant filed an appeal before the Division Bench of the Delhi High Court but with a delay of 85 days beyond the statutory limit. The appellant sought condonation of delay, citing reasons such as frequent business travel, difficulty in obtaining documentary evidence, and delay in seeking legal advice.

Reasoning of the Court

The Court held that none of the grounds provided by the appellant constituted "sufficient cause" for condoning the delay. The fact that the appellant traveled frequently and was a sole proprietor could not justify the delay. The need to obtain documentary evidence should have been anticipated before filing the suit. The mere assertion that the appellant took time to seek legal advice was unpersuasive and lacked supporting material. The Court relied on the Supreme Court judgment in Government of Maharashtra (Water Resources Department) v. Borse Brothers Engineers & Contractors (P) Ltd. (2021) 6 SCC 460, which emphasized that the expression “sufficient cause” cannot be used as a broad excuse for condoning delays in commercial litigation. The Court also noted that the Commercial Courts Act, 2015, aims to ensure the speedy resolution of disputes and does not favor a lenient approach to delays in filing appeals.

Decision

The Court dismissed the application for condonation of delay. Consequently, the appeal was also dismissed along with the pending applications.

Case Details

Case Title: Pawan Kumar Goel Vs. Dr. Dhan Singh & Anr.

Date of Order: September 23, 2024

Case Number: FAO(OS) (COMM) 176/2024

Name of Court: Delhi High Court

Hon’ble Judges: Justice Vibhu Bakhru & Justice Sachin Datta

Bayer Corporation Vs. Union of India

BOLAR PROVISION:Section 107 A of Patent Act 1970:Section 107A permits the sale and export of patented drugs for regulatory approval in other countries and for research purpose only.

Introduction:

The case of Bayer Corporation vs. Union of India & Ors., decided by the Delhi High Court on April 22, 2019, concerns the interpretation of Section 107A of the Patents Act, 1970, commonly known as the "Bolar provision." 

The central issue in this case was whether the sale or export of a patented drug for the purpose of regulatory approval in another country constitutes patent infringement. 

Bayer Corporation, a multinational pharmaceutical company, filed legal proceedings against Natco Pharma and Alembic Pharmaceuticals, challenging their export of patented drugs under Section 107A. The case is significant for its impact on the pharmaceutical industry, particularly concerning the balance between patent rights and the promotion of generic medicines.

Factual Background:

Bayer Corporation held a patent for Sorafenib Tosylate, a drug used to treat kidney and liver cancer, under Patent No. 215758. In 2011, Natco Pharma applied for a compulsory license under Section 84 of the Patents Act, which was granted in 2012 by the Patent Controller. The license allowed Natco to manufacture and sell the drug in India at an affordable price. However, Bayer filed a writ petition when it discovered that Natco was also exporting Sorafenib Tosylate outside India, arguing that this was beyond the scope of the compulsory license.

Simultaneously, Alembic Pharmaceuticals was manufacturing and exporting Rivaroxaban, another patented drug, for regulatory purposes. Bayer filed a suit against Alembic, alleging that its export of Rivaroxaban infringed Bayer’s patent rights. Alembic contended that the exports were covered under Section 107A, which allows the sale of patented products solely for uses reasonably related to the development and submission of information required under any law.

Procedural Background:

Bayer initially filed a suit against Natco in 2011, seeking an injunction against the sale and export of Sorafenib Tosylate. The Patent Controller granted a compulsory license to Natco in 2012. Bayer then approached the Delhi High Court, seeking to prevent Natco from exporting the drug.

In parallel, Bayer filed a suit against Alembic in 2016, seeking an injunction against the export of Rivaroxaban. During the proceedings, Alembic argued that its exports were permissible under Section 107A.

The learned Single Judge ruled in favor of Natco and Alembic, holding that Section 107A permitted the sale and export of patented drugs for regulatory purposes. Bayer appealed the decision, leading to the present judgment by the Division Bench of the Delhi High Court.

Issues Involved in the Case:

The primary issue in this case was whether Section 107A of the Patents Act permits the export of patented drugs for the purpose of obtaining regulatory approvals in other countries?

Whether the word "sale" in Section 107A includes export or is limited to sales within India?

Whether the acts of Natco and Alembic constituted infringement under Section 48 of the Patents Act.

Whether the purpose of Section 107A was to facilitate only the Indian market or to allow global generic competition.

Whether the burden of proof lay on the patent holder (Bayer) or the generic manufacturers (Natco and Alembic) to prove the intended use of the patented product.

Submissions of the Parties:

Bayer argued that Section 107A is an exception to the patentee's rights under Section 48 and should be interpreted narrowly. Bayer contended that the provision does not explicitly mention "export," and therefore, sale under this section should be restricted to India. Bayer further relied on foreign precedents, including the U.S. Bolar exemption and German and Polish case law, to argue that the sale of a patented drug for regulatory purposes should be limited to the domestic market. Bayer emphasized that allowing exports under Section 107A would contravene the TRIPS Agreement and international patent norms.

Natco and Alembic countered that Section 107A allows the sale of patented products for the purpose of developing and submitting regulatory information in other countries. They argued that the plain language of the provision does not restrict sale to India. They also pointed out that regulatory authorities in many countries require local clinical trials, which necessitate the export of the drug. They cited WTO rulings and global practices to support their interpretation.

Discussion on Judgments and Citations:

The court examined the legislative intent behind Section 107A and compared it with similar provisions in other jurisdictions. The court relied on the WTO Dispute Settlement Panel's ruling in the Canada-Patent Protection of Pharmaceutical Products case (WTO/DS114/R), which upheld the Bolar exemption. The court also referred to the U.S. Supreme Court’s decision in Merck v. Integra Lifesciences (545 U.S. 193), which interpreted the American Bolar exemption broadly.

Additionally, the court considered the decision in Intermedics Inc. v. Ventritex (775 F. Supp. 1269), which allowed the export of patented products for regulatory approval. The court rejected Bayer’s reliance on German and Polish case law, holding that Indian law provides a broader exemption than those jurisdictions.

Reasoning and Analysis of the Judge:

The court held that the plain meaning of Section 107A does not restrict "sale" to India and that the term includes exports. 

It observed that the provision was intended to facilitate the development of generic medicines globally and that restricting sales to India would defeat this purpose. The court noted that requiring generic manufacturers to conduct separate trials in each country would be impractical and contrary to international trade practices.

The court also rejected Bayer’s argument that the burden of proof should be on the generic manufacturers. It held that placing the burden on the patentee to prove wrongful use was consistent with international norms and would prevent unnecessary litigation.

The court further reasoned that allowing exports under Section 107A was consistent with India’s obligations under the TRIPS Agreement, as it did not unreasonably prejudice the patent holder’s rights. The court emphasized that regulatory approvals are necessary for timely market entry and that a restrictive interpretation of Section 107A would hinder access to affordable medicines.

Final Decision:

The Delhi High Court upheld the Single Judge’s ruling and dismissed Bayer’s appeal. 

The court held that Section 107A permits the sale and export of patented drugs for regulatory approval in other countries and for research purpose only.

It ruled that Bayer had failed to establish that Natco and Alembic’s actions amounted to infringement. 

The court also directed that Bayer’s patents could not be used to block exports of drugs intended solely for regulatory purposes.

Law Settled in This Case

The judgment clarified that Section 107A of the Patents Act includes the right to export patented drugs for regulatory approval. The decision reinforced that patent rights are subject to reasonable exceptions aimed at promoting public health and access to medicines. The ruling also established that the burden of proof lies on the patentee to prove infringement rather than on the generic manufacturer to justify its actions.

Case Details:

Case Title: Bayer Corporation Vs. Union of India & Ors.

Date of Order: April 22, 2019

Case No.: LPA No. 359/2017, RFA(OS)(COMM) 6/2017

Neutral Citation: AIRONLINE 2019 DEL 1712

Name of Court: Delhi High Court

Name of Judges: Hon'ble Justice Shri S. Ravindra Bhat and Shri Justice Sanjeev Sachdeva

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] ,High Court of Delhi

Bajaj Electricals Limited Vs Metals & Allied Products

The defense of using one’s surname INNOCENTLY in trade could not justify confusion among consumers

Introduction:

This case concerns a dispute between Bajaj Electricals Limited (plaintiff) and Metals & Allied Products and another (defendants) regarding the unauthorized use of the trademark "Bajaj." The core issue revolved around the alleged passing off of the defendant's products as those of the plaintiff, based on the similarity in trade name and branding. The plaintiff alleged that the defendant’s use of the term “Bajaj” created confusion among consumers, causing potential financial and reputational damage.

Factual Background:

Bajaj Electricals Limited, a company incorporated in 1938 (originally as Radio Lamp Works Limited), has been engaged in manufacturing electrical appliances, kitchen wares, and domestic appliances. In 1960, the company changed its name to Bajaj Electricals Limited and began extensively marketing its products under the trademark "Bajaj" since 1961. The mark "Bajaj" with the 'eye' device was registered in 1964 (Class 11) and subsequently under Class 7 and Class 11 in the 1970s.

The plaintiff's sales grew significantly, with revenues climbing to ₹73.94 crores by 1986. Bajaj's products were heavily advertised, gaining substantial market recognition.

The defendants, Metals & Allied Products, began manufacturing kitchen utensils in 1976-77 and allegedly used the "Bajaj" mark since then. In February 1977, they applied to register the mark for stainless steel utensils under Class 21, but this application was deemed abandoned. A subsequent application for registration was filed in 1984. Despite this, the defendants continued using the mark and claimed their surname "Bajaj" entitled them to do so.

Procedural Background:

The plaintiffs initiated a suit seeking to restrain the defendants from using the mark “Bajaj” to prevent consumer confusion and passing off. On February 24, 1987, an interim injunction was granted by the Single Judge in favor of the plaintiffs. The defendants filed an appeal, which was dismissed, and the motion was scheduled for an early hearing.

During this hearing, the defendants claimed their use of the mark since 1976, producing invoices, affidavits, and certificates from traders. The Single Judge eventually ruled against granting a full injunction but ordered the defendants to modify their branding to prominently display the manufacturer’s name along with the “Bajaj” mark.

Issues Involved in the Case:

• Whether the defendants' use of the mark "Bajaj" constituted passing off.
• Whether the defendants had established prior use of the mark dating back to 1977.
• Whether the defendants’ use of the mark, even if honest, was likely to cause deception or confusion.
• Whether the defendants' claim of using their family name in trade was legitimate.

Submissions of the Parties:

The plaintiffs argued that:

• They had established significant goodwill and reputation for their products under the "Bajaj" mark.
• The defendants had deliberately adopted the mark to take advantage of this reputation.
• The defendants' use of the mark, combined with misleading statements in their brochure, was evidence of bad faith.
• The invoices produced by the defendants were dubious and possibly fabricated.

The defendants contended that:

• They had been using the mark “Bajaj” since 1976 and had made applications for its registration.
• The mark was derived from the surname of the partners, which entitled them to use it in trade.
• Their products differed from those of the plaintiffs, reducing the likelihood of confusion.
• They had obtained certifications from traders and had been using stickers bearing the “Bajaj” name since 1979.

Discussion on Judgments and Citations:

The court referred to Parker-Knoll Ltd. v. Knoll International Ltd. [(1962) R.P.C. 265], wherein it was held that while individuals may trade under their own names, the use of such names must not cause confusion or deception. The court noted that the defendants were not merely using “Bajaj” as a family name but were employing it as a trade mark to pass off their goods as those of the plaintiffs.

The court also referred to Joseph Rodgers & Sons Ltd. v. W.N. Rodgers & Co. [(1924) 41 R.P.C. 277], which emphasized that even honest use of one’s name could be restrained if it resulted in consumer deception.

The court examined Kerly’s Law of Trade Marks and Trade Names, which highlights that once bad faith or intent to deceive is established, the user cannot claim a defense based on their right to use a family name.

The court found that the defendants’ brochure, which claimed “Bajaj quality is well accepted internationally,” was misleading since the defendants had no presence in international markets. This was considered evidence of deliberate misrepresentation.

Reasoning and Analysis of the Judge:

The court found that:

• The plaintiffs had established substantial goodwill and reputation in the "Bajaj" mark.
• The defendants’ claims of long-standing use were unsubstantiated; the invoices presented were suspicious and lacked credibility.
• The fact that the defendants had issued a misleading brochure in 1987 further evidenced bad faith.
• The defense of using one’s surname in trade could not justify conduct that created confusion among consumers.
• The defendants' attempt to differentiate their mark through changes in font and capital letters was insufficient to prevent consumer deception.

Final Decision:

The appellate court set aside the Single Judge’s order and granted a permanent injunction restraining the defendants from using the “Bajaj” mark in connection with domestic appliances and kitchen wares. The court held that the defendants’ continued use of the mark would cause irreparable damage to the plaintiffs' established reputation.

Law Settled in This Case:

This judgment reaffirmed the principle that a party cannot pass off its goods under a mark identical or similar to one associated with a competitor, even if the mark represents their own family name. The decision emphasized that in cases of established intent to deceive, the right to use a family name in business is not absolute and may be restricted to prevent consumer confusion.

Case Title: Bajaj Electricals Limited Vs Metals & Allied Products And Anr.

Date of Order: 4 August 1987

Neutral Citation: AIR 1988 BOM 167

Name of Court: Bombay High Court

Name of Judge: Hon'ble Justice Shri Pendse, 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] ,High Court of Delhi

B.L. And Co. And Others Vs. Pfizer Products Inc.

Ex parte injunctions must be granted only when justified by urgency, with reasons explicitly recorded under Order XXXIX Rule 3 CPC.

Introduction: The case of B.L. And Co. And Others vs. Pfizer Products Inc. revolves around the alleged passing off of the drug 'VIAGRA' by the defendants through their product 'PENEGRA'. The dispute primarily concerns the deceptive similarity in trade names, trade dress, and product appearance. Pfizer, the plaintiff, sought an injunction restraining the defendants from manufacturing and marketing 'PENEGRA', claiming that it infringed upon its global reputation and goodwill associated with 'VIAGRA'. The case was heard before the Delhi High Court, which passed an ex parte injunction against the defendants, leading to an appeal.

Factual Background:Pfizer, a global pharmaceutical company, introduced 'VIAGRA' (sildenafil citrate) in 1998 for the treatment of male erectile dysfunction. The trade mark 'VIAGRA' was registered in various jurisdictions and had pending registration in India. Pfizer contended that the brand had achieved international recognition and had been extensively advertised worldwide, including in India.

The defendants, B.L. & Co. and Others, introduced a similar product under the name 'PENEGRA' in January 2001. The plaintiff discovered the existence of 'PENEGRA' through an internet search and media reports, which referred to it as 'Indian VIAGRA'. Pfizer alleged that the defendants intentionally adopted a deceptively similar trade name and trade dress, including the distinctive blue diamond-shaped tablet. Further, the defendants had allegedly copied elements from Pfizer's website onto their own, thereby misleading consumers and capitalizing on Pfizer's goodwill.

Procedural Background:Pfizer filed a suit for injunction and damages for passing off before the Delhi High Court. On June 1, 2001, the Single Judge granted an ex parte injunction under Order XXXIX Rules 1 and 2 CPC, restraining the defendants from manufacturing, marketing, or selling 'PENEGRA' or any product deceptively similar to 'VIAGRA'. The appellants challenged this order before a Division Bench of the Delhi High Court on multiple grounds, including the alleged failure of the Single Judge to consider crucial legal principles governing the grant of ex parte injunctions.

Issues Involved in the Case:

• Whether the trade mark 'PENEGRA' was deceptively similar to 'VIAGRA'?

• Whether Pfizer, despite not selling 'VIAGRA' in India, could claim passing off based on trans-border reputation?

• Whether the Single Judge’s grant of an ex parte injunction was justified?

• Whether there was undue delay by Pfizer in filing the suit, and if so, whether it impacted its right to relief?

• Whether the balance of convenience favored the defendants, considering their established market presence?

Submissions of the Parties Plaintiff (Pfizer):

• 'VIAGRA' had acquired immense international goodwill and reputation, extending to India despite not being directly marketed.

• The defendants deliberately chose the name 'PENEGRA' to deceive consumers and exploit the reputation of 'VIAGRA'.

• The distinctive blue diamond-shaped tablet had been copied, further contributing to the likelihood of confusion.

• The copying of website content demonstrated mala fide intent.

• The principles of passing off allowed Pfizer to protect its brand even in jurisdictions where it had not commenced commercial operations.

Defendants (B.L. & Co. and Others):

• 'PENEGRA' was developed independently after extensive research and clinical trials.

• The product had been in the market for over five months before the suit was filed, indicating delay on Pfizer's part.

• The pronunciation and spelling of 'PENEGRA' were distinct from 'VIAGRA', and the packaging and branding were different.

• The balance of convenience lay in favor of the defendants, as they had invested significantly in product development and marketing.

• Pfizer’s product was not marketed in India, and hence, there was no possibility of deception or passing off.

Discussion on Judgments and Citations

• Wander Ltd. v. Antox India (P) Ltd., 1990 (Supp) SCC 727: The Supreme Court held that interlocutory injunctions should balance the need to protect the plaintiff's rights against the defendant’s legitimate business operations. The High Court referred to this case in assessing the necessity of the injunction.

• N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583 (SC): The Supreme Court upheld passing off claims based on trans-border reputation, which Pfizer relied upon.

• Daimler Benz Aktiegesellscaft v. Hybo Hindustan, 1994 PTC 287: The Delhi High Court protected the reputation of international brands, even in the absence of direct business operations in India.

• The Financial Times Ltd. v. Evening Standard Co. Ltd. (1991) FSR 7: A case concerning delay in seeking an injunction, which was used by the defendants to argue against Pfizer's claim.

Reasoning and Analysis of the Judge The Division Bench found that the Single Judge failed to consider critical factors before granting an ex parte injunction. These included:

• The defendants had been manufacturing and marketing 'PENEGRA' for over five months before Pfizer took action.

• Pfizer had knowledge of the defendants’ activities but delayed seeking legal recourse, indicating acquiescence.

• The lack of availability of 'VIAGRA' in India weakened Pfizer’s claim of passing off.

• The Single Judge did not record reasons justifying the urgency required for an ex parte injunction under Order XXXIX Rule 3 CPC.

The Bench noted that an interlocutory injunction should be granted only after hearing both parties unless the object of the injunction would be defeated by delay. In the absence of specific reasons recorded by the Single Judge, the ex parte order was deemed unsustainable.

Final Decision The Division Bench set aside the ex parte injunction granted by the Single Judge, allowing the defendants to continue manufacturing and marketing 'PENEGRA'. However, the defendants undertook to change the tablet’s color and refrain from using website content copied from Pfizer’s site. They were also directed to maintain records of production and sales.

Law Settled in This Case

• Ex parte injunctions must be granted only when justified by urgency, with reasons explicitly recorded under Order XXXIX Rule 3 CPC.

• Delay in seeking relief is a crucial factor against granting an interlocutory injunction in passing off cases.

• Trans-border reputation can be a valid basis for a passing off claim, but its application depends on the facts of each case.

• Balance of convenience must be weighed carefully, especially when the defendant has an established market presence.

Case Title: B.L. And Co. And Others Vs. Pfizer Products Inc. 

Date of Order: 30 June 2001 

Case No.: FAO(OS) 249/2001 

Citation: 93 (2001) DLT 346 

Name of Court: Delhi High Court 

Name of Judge: Hon'ble Justices Shri Manmohan Sarin and Shri J.D. Kapoor

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] ,High Court of Delhi

Astrazeneca AB & Anr. Vs. Westcoast Pharmaceutical Works Ltd.

There is no statutory bar on instituting Patent infringement suit while post-grant opposition is pending

Introduction: Astrazeneca AB & Anr. filed a suit against Westcoast Pharmaceutical Works Ltd. alleging patent infringement. The plaintiffs contended that the defendant was manufacturing and selling a pharmaceutical product that infringed upon their patented invention. The defendant, in response, filed an application under Order VII Rule 11 of the Code of Civil Procedure (CPC), 1908, seeking the rejection of the suit based on grounds of want of pecuniary jurisdiction, want of territorial jurisdiction, and applicability of the Supreme Court's judgment in Aloys Wobben v. Yogesh Mehra.

Detailed Factual Background: The plaintiffs, Astrazeneca AB and its Indian subsidiary, claimed to hold a valid patent for the compound Osimertinib under patent number IN 297581. The patent was granted on June 11, 2018. The plaintiffs contended that the defendant was attempting to manufacture and distribute a product that infringed on their patent rights.

Post-grant oppositions were filed against the patent by Sunshine Organics Pvt. Ltd. on May 14, 2019, and by Natco Pharma Ltd. on June 10, 2019. The plaintiffs argued that despite these oppositions being pending before the Controller General of Patents, they retained the right to file an infringement suit. The defendant, in contrast, argued that the plaintiffs' rights were not crystallized until the resolution of post-grant opposition proceedings.

Detailed Procedural Background: The plaintiffs filed a commercial intellectual property rights (IPR) suit before the Delhi High Court, seeking an injunction to restrain the defendant from manufacturing or selling the allegedly infringing product. In response, the defendant filed an application under Order VII Rule 11 CPC, seeking rejection of the plaint based on:

1. Lack of pecuniary jurisdiction

2. Lack of territorial jurisdiction

3. Applicability of the Supreme Court's judgment in Aloys Wobben, which the defendant claimed precluded the filing of an infringement suit while post-grant opposition proceedings were pending.

Issues Involved in the Case:

1. Whether the suit was maintainable despite the pending post-grant opposition proceedings?

2. Whether the decision in Aloys Wobben precluded the plaintiffs from filing an infringement suit while the post-grant opposition was pending?

Detailed Submission of Parties Plaintiffs' Arguments:

• The plaintiffs asserted that Section 11A(3) of the Patents Act allows an infringement suit to be filed once a patent is granted and does not mandate waiting for post-grant opposition proceedings to conclude.

• They relied on precedents such as Novartis AG v. Natco Ltd. and CDE Asia Ltd. v. Terex India Pvt. Ltd., which held that the right to sue for infringement exists immediately upon the grant of a patent.

• The plaintiffs argued that the judgment in Aloys Wobben was inapplicable to their case, as it dealt with the issue of whether a party could file both a revocation petition and a counterclaim in an infringement suit, not with the maintainability of an infringement suit pending post-grant opposition.

Defendant's Arguments:

• The defendant relied on para 19 of the Aloys Wobben judgment, arguing that the plaintiffs’ patent rights had not crystallized while post-grant opposition proceedings were pending.

• They claimed that as per the judgment in Toni & Guy Products Ltd. v. Shyam Sunder Nagpal, the suit should have been filed before a lower court due to lack of pecuniary jurisdiction.

• They further argued that the court lacked territorial jurisdiction under Section 20 CPC, as the defendant’s principal place of business was outside Delhi.

Detailed Discussion on Judgments Cited and Their Context:

• Aloys Wobben v. Yogesh Mehra (2014) 15 SCC 360: The Supreme Court held that once a party has filed a revocation petition, they cannot file a counterclaim in an infringement suit. The plaintiffs argued that this case was distinguishable as it did not discuss the maintainability of an infringement suit during post-grant opposition.

• Novartis AG v. Natco Ltd.: The Delhi High Court held that a patentee could sue for infringement even while a post-grant opposition was pending.

• CDE Asia Ltd. v. Terex India Pvt. Ltd.: The court reaffirmed that the pendency of a post-grant opposition does not preclude the filing of an infringement suit.

• Toni & Guy Products Ltd. v. Shyam Sunder Nagpal: The court found that the valuation of damages in a quia timet action does not establish pecuniary jurisdiction unless actual damages are demonstrable.

• Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. CTR Manufacturing Industries Ltd.: The Bombay High Court initially held that a post-grant opposition impacted an infringement suit, but the Supreme Court overturned this decision, allowing the suit to proceed.

Detailed Reasoning and Analysis of the Judge: The Delhi High Court, presided over by Justice C. Hari Shankar, rejected the defendant’s application under Order VII Rule 11 CPC, reasoning as follows:

• The court held that there is no statutory bar on instituting an infringement suit while post-grant opposition is pending. The only requirement under Section 11A(3) of the Patents Act is that a patent must be granted before an infringement suit can be filed.

• The court distinguished the case from Aloys Wobben, noting that the Supreme Court’s observations in para 19 were obiter dicta and not binding precedents.

• On pecuniary jurisdiction, the court found that the plaintiff had adequately pleaded damages exceeding the threshold for the Delhi High Court’s jurisdiction.

• On territorial jurisdiction, the court held that the plaintiffs had a subordinate office in Delhi, and the infringing products were likely to be sold in Delhi, satisfying jurisdictional requirements.

Final Decision The Delhi High Court dismissed the defendant’s application under Order VII Rule 11 CPC, allowing the suit to proceed. The court reaffirmed that a patentee can initiate an infringement suit immediately upon the grant of a patent, irrespective of pending post-grant oppositions.

Law Settled in This Case:

• The mere pendency of a post-grant opposition does not bar a patentee from filing an infringement suit.

• The right to sue for infringement crystallizes upon the grant of a patent under Section 11A(3) of the Patents Act.

• The Supreme Court’s observations in para 19 of Aloys Wobben are obiter dicta and do not constitute binding precedent.

• Pecuniary jurisdiction is established if damages are claimed in excess of the court’s threshold, even in a quia timet suit.

• Territorial jurisdiction exists where the infringing products are sold or likely to be sold, even if the defendant's principal place of business is elsewhere.

Case Title: Astrazeneca AB & Anr. Vs. Westcoast Pharmaceutical Works Ltd.

Date of Order: 15 May 2023

Case No.: CS(COMM) 101/2022

Neutral Citation: 2023:DHC:3337

Name of Court: Delhi High Court

Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

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] ,High Court of Delhi

Karan Johar Vs India Pride Advisory Pvt. Ltd. & Ors.

Fact of the Case:

Karan Johar, a well-known filmmaker and television personality, filed a lawsuit against India Pride Advisory Pvt. Ltd. and others for using his name, "Karan Johar," in the title of the cinematographic film “Shaadi Ke Director Karan Aur Johar.” He alleged that the use of his name without consent violated his personality and publicity rights, causing commercial and reputational harm.

Procedural Background (in Brief):

1. The plaintiff discovered the film's trailer on June 5, 2024, and issued a cease-and-desist notice on June 6, 2024.
2. As the defendants did not respond, the plaintiff urgently filed a commercial IPR suit and an interim application seeking an injunction.
3. The Bombay High Court granted an ad-interim injunction on June 13, 2024, preventing the release of the film.
4. The defendants later sought to vacate the injunction but agreed to modify the film's publicity and some content.

Reasoning of the Court:

1. Personality and Publicity Rights: The Court recognized that Karan Johar, being a highly reputed public figure, has an economic and legal right to control the use of his name.
2. Commercial Exploitation: The Court found that the defendants’ use of "Karan Johar" in the film’s title and dialogues directly associated the film with the plaintiff, attempting to commercially exploit his goodwill.
3. Irrelevance of Censor Board Certification: The Court ruled that a CBFC certification does not evaluate violations of personality or publicity rights, so it could not override Johar’s claim.
4. Inadequacy of Defendants' Modifications: The Court found that merely adding "Aur" between "Karan" and "Johar" did not remove the association with the plaintiff.

Decision:

The Bombay High Court upheld Karan Johar’s claim and granted an injunction preventing the defendants from using his name in the title and promotional materials of the film. The Court ruled in favor of Johar, confirming that his personality and publicity rights had been infringed.

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Case Details:

• Case Title: Karan Johar Vs India Pride Advisory Pvt. Ltd. & Ors.
• Date of Order: March 7, 2025
• Case Number: Comm IPR Suit (L) No. 17863 of 2024
• Name of Court: Bombay High Court
• Name of Hon’ble Judge: Justice R.I. Chagla

P. Pandian v. The Registrar of Trade Marks

Fact of the Case:

The petitioner, P. Pandian, sought renewal of the trademark WAHEED (TM No. 573302) in Class 24. The trademark was registered on 15.05.1992, and a registration certificate was issued on 12.09.2020 after a long procedural delay. However, upon checking the online registry, the petitioner found that the trademark was listed as expired on 15.05.2002. The petitioner was unable to file a renewal application online due to system inaccessibility and hence approached the High Court seeking a writ of mandamus to permit renewal.

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Procedural Background in Brief

1. Trademark application was filed on 15.05.1992.
2. After an examination report and a hearing, the petitioner awaited advertisement before acceptance.
3. The advertisement was published in the Trade Marks Journal on 03.02.2020.
4. The registration certificate was issued on 12.09.2020.
5. The trademark status on the online registry reflected an expiry date of 15.05.2002.
6. The petitioner did not receive a notice of expiry under Rule 58(1) of the Trade Marks Rules, 2017.
7. The petitioner was unable to file a renewal application due to online portal inaccessibility, leading to the filing of the writ petition.

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Reasoning of the Court

1. Failure to Provide Notice: The Trade Marks Rules require that a notice be issued to the trademark holder before the expiration of the registration. Since no such notice was issued, the petitioner was entitled to apply for renewal.
2. Precedents Considered: The Court relied on the Bombay High Court's decision in Motwane Private Ltd. v. Registrar of Trade Marks and the Madras High Court’s own decision in Jaisuryas Retail Ventures Pvt. Ltd. v. The Registrar of Trade Marks, which held that failure to issue an expiry notice allows the proprietor to seek renewal.
3. No Removal from Register: Since the trademark had not been officially removed from the register, the petitioner still had the right to apply for renewal.

---

Decision

The Madras High Court allowed the writ petition and directed the Registrar of Trade Marks to:

1. Provide access to the online portal for the petitioner to file the renewal application.
2. Alternatively, permit the petitioner to submit the renewal application and required documents in physical form.
3. There was no order as to costs.

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Case Details

• Case Title: P. Pandian v. The Registrar of Trade Marks
• Date of Order: 13.02.2025
• Case Number: W.P.(IPD) No.36 of 2024
• Court: High Court of Judicature at Madras
• Hon’ble Judge: Justice Senthilkumar Ramamoorthy

Tahoe Research Ltd. Vs. The Controller of Patents

Brief Fact:

Tahoe Research Ltd., an Irish company, filed an Indian patent application (No. 201647014734) for an invention titled "Method for training a control signal based on a stroke signal in a memory module." The Patent Office issued a First Examination Report (FER) on 27.09.2019, raising objections on novelty and inventive step. The applicant responded, and a hearing notice was issued on 23.02.2022, primarily objecting to a lack of clarity (Section 10(4) of the Patents Act, 1970) and novelty, particularly in light of prior art document D3. The Controller rejected the application on 19.01.2024.

Procedural Background in Brief

FER Issued (27.09.2019): Raised objections on novelty and inventive step.Response by Appellant (26.03.2020): Addressed objections.Hearing Notice (23.02.2022): Raised objections on clarity and novelty.Submission of Written Arguments & Amended Claims (28.03.2022): Incorporated features of original claims 2 and 4 into independent claim 1.

Order Rejecting Patent Application (19.01.2024): 

Cited lack of clarity and novelty, referencing European Patent Office (EPO) proceedings.Appeal Before the Madras High Court under Section 117A of the Patents Act, 1970.

Reasoning of the Court

Violation of Natural Justice: The rejection was based on objections to claims that were not originally objected to in the hearing notice, depriving the appellant of an opportunity to respond.Flawed Novelty Analysis: The Controller adopted the European Patent Office's (EPO) reasoning without recognizing material differences between the independent claim before the Indian Patent Office and the one before the EPO.Remand for Reconsideration: The Court found the rejection procedurally flawed and remanded the case for fresh consideration.

Decision:

The Madras High Court set aside the rejection order dated 19.01.2024 and remanded the matter for reconsideration under the following terms:

Case Title: Tahoe Research Ltd. Vs. The Controller of Patents

Date of Order: 18.02.2025

Case Number: CMA(PT)/35/2024

Neutral Citation: Not mentioned in the judgment.

Court: High Court of Judicature at Madras

Hon’ble Judge: Justice Senthilkumar Ramamoorthy

Havells India Limited Vs. Cab-Rio Industries

Fact of the Case:

Havells India Limited, the plaintiff, is a well-established company engaged in the business of electrical and power distribution equipment, including cables, wires, and other industrial and domestic circuit protection devices. The plaintiff has been using the brand name "REO" since 2012 and claims that it is a well-known trademark. The plaintiff obtained trademark registration for "REO" under classes 7, 9, and 11 and was granted copyright registration for its packaging. The plaintiff alleged that Cab-Rio Industries, the defendants, were manufacturing and selling electrical cables and wires under the name "CAB-RIO," which was deceptively similar to the plaintiff’s mark. The plaintiff contended that the defendants adopted the mark dishonestly to mislead consumers and pass off their products as those of the plaintiff. The plaintiff filed a suit seeking a permanent injunction against the defendants for trademark infringement and passing off.

The defendants argued that they had been using the mark "CAB-RIO" since 2017 and had a valid trademark registration for the same under Class 9. They contended that their mark was distinct and that the term "CAB" referred to cables, which was a descriptive term. The defendants further claimed that the plaintiff’s trademark registration was invalid as a third-party rectification petition was pending against it. The defendants also argued that the plaintiff’s brand "REO" was often used along with the "Havells" brand, and thus, there was no likelihood of confusion among consumers.

Procedural Background in Brief:

The plaintiff filed the suit for a permanent injunction against the defendants in the Delhi High Court, along with an application for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. On November 11, 2024, the Court issued summons and appointed a Local Commissioner to inspect the defendants' premises. The Local Commissioner conducted an inspection on November 18, 2024, and prepared an inventory of the defendants’ products. After hearing both parties, the Court reserved judgment on January 27, 2025, and delivered its decision on February 17, 2025.

Reasoning of the Court:

The Court analyzed the plaintiff’s claim of prior use and found that the plaintiff had produced invoices showing use of the mark "REO" since 2012, while the defendants' earliest invoice under the mark "CAB-RIO" was from 2019. Based on this, the Court held that the plaintiff was the prior user of the mark. The Court compared the marks "REO" and "CAB-RIO" and observed that the dominant and prominent part of the defendants’ mark was "RIO," which was phonetically and structurally similar to "REO." The Court relied on the principles laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) and S. Syed Mohideen v. P. Sulochana Bai (2016) to determine deceptive similarity. The Court emphasized that consumers, particularly electricians, contractors, and builders, were of average intelligence and imperfect recollection, making them susceptible to confusion between the two marks.

The Court rejected the defendants' contention that "CAB-RIO" should be considered as a whole and found that the defendants’ use of the mark was not bona fide. It noted that the defendants had failed to provide any reasonable explanation for adopting the mark "RIO." The Court also found that the defendants' website and advertisements used "CAB" as an acronym for cables, reinforcing the likelihood of confusion. The Court concluded that the adoption of the mark "CAB-RIO" was intended to ride on the goodwill of the plaintiff’s mark "REO."

Decision:

The Court granted an interim injunction in favor of the plaintiff, restraining the defendants from using, selling, soliciting, exporting, advertising, or dealing in electrical cables and wires under the mark "CAB-RIO" or any other mark deceptively similar to "REO" until the final adjudication of the suit. The Court also directed the defendants to change their corporate name within one month.

Case Ttitle: Havells India Limited Vs. Cab-Rio Industries & Ors.
Date of Order: February 17, 2025
Case Number: CS(COMM) 995/2024 & I.A. 44613/2024
Neutral Citation: Not provided in the document
Court: High Court of Delhi
Hon’ble Judge: Hon'ble Justice Shri Amit Bansal

Tapton Tea Company Vs. The Liptons Ltd.

Fact of the Case:

Tapton Tea Company, a firm based in Amritsar, applied for the registration of the trade mark "Tapton Tea". The application was opposed by Lipton Ltd., a company registered in England with its head office in India at Calcutta. The Deputy Registrar of Trade Marks at Bombay refused the application for registration based on the opposition filed by Lipton Ltd. The appellant, Tapton Tea Company, filed an appeal before the Punjab High Court challenging the refusal of registration. The key issue in the case was whether the Punjab High Court had jurisdiction to entertain the appeal, given that the order was passed by the Deputy Registrar at Bombay.

Procedural Background in Brief:

The Deputy Registrar of Trade Marks at Bombay rejected the trade mark application of Tapton Tea Company upon opposition from Lipton Ltd. The appellant, instead of filing an appeal before the Bombay High Court, filed it before the Punjab High Court, citing its place of business in Amritsar as the basis for jurisdiction. The respondents objected, arguing that under Section 76(1) of the Trade Marks Act, 1940, appeals against the Registrar’s decisions must be filed in the High Court having jurisdiction, which, in this case, was the Bombay High Court.

Reasoning of the Court:

The court analyzed Section 76(1) of the Trade Marks Act, 1940, which provides that an appeal against a decision of the Registrar of Trade Marks must be filed in the High Court having jurisdiction. The court relied on the precedent set in Abdul Ghani Ahmad vs. Registrar of Trade Marks, AIR 1947 Lah 171, where it was held that an appeal against an order of the Registrar at Bombay must be filed in the Bombay High Court, even if the appellant's business was located elsewhere.

The court rejected the appellant’s argument that Section 76 did not explicitly state that appeals must be filed in the High Court of the Registrar's location. It held that the phrase "High Court having jurisdiction" was intended to refer to the High Court within whose territorial limits the office of the Registrar passing the order was situated. The court also noted that in James Chadwick & Bros. Ltd. vs. National Sewing Thread Co. Ltd., AIR 1951 Bom 147, a Madras firm had appealed against an order of the Registrar at Bombay before the Bombay High Court, which further established that jurisdiction lay with the Registrar’s location, not the appellant’s business location.

The court concluded that allowing appeals to be filed in different High Courts based on the appellant’s place of business would create confusion and lead to conflicting decisions. It also found that the proviso to Section 76(1), which allows an appeal to be filed in a different High Court only if a related suit or proceeding is already pending there, did not apply to the present case.

Decision:

The Punjab High Court dismissed the appeal for lack of jurisdiction and directed that the memorandum of appeal be returned to the appellants for presentation before the proper court, i.e., the Bombay High Court. No order as to costs was made.

Case Title: Tapton Tea Company Vs. The Liptons Ltd.

Date of Order: July 26, 1954

Case Number: F.A.F.O. No. 93 of 1953

Neutral Citation: AIR 1954 P&H 270

Name of Court: Punjab High Court

Name of Hon’ble Judges: Hon’ble Justice G.D. Khosla and Hon’ble Justice D. Falshaw

Priya Enterprises vs. Prestige Housewares (India) Ltd.

Fact of the Case:

Priya Enterprises, a sole proprietorship engaged in manufacturing rubber gaskets for pressure cookers, filed a petition for rectification of the trade mark "Prestige," registered under Trade Mark No. 141602 in Class 21. The trade mark was originally registered in 1949 in the name of an English company, later transferred to Prestige Housewares (India) Ltd., Bangalore, with effect from October 4, 1985. Priya Enterprises claimed that Prestige Housewares had not used the trade mark for over five years and sought its removal for non-use.

The respondent, Prestige Housewares (India) Ltd., issued a cease-and-desist notice to Priya Enterprises, restraining it from using the word "Prestige" in relation to its products. Fearing legal consequences, Priya Enterprises filed a petition for rectification, arguing that the respondent’s trade mark should be removed from the register. The respondent challenged the jurisdiction of the Madras High Court, asserting that the trade mark was registered at the Trade Marks Registry in Calcutta, and therefore, any rectification proceedings should be filed before the Calcutta High Court.

Procedural Background in Brief:

Priya Enterprises filed a rectification petition before the Madras High Court, seeking the removal of the respondent’s trade mark for non-use. Prestige Housewares (India) Ltd. filed an application challenging the jurisdiction of the Madras High Court, arguing that, under Section 3 of the Trade and Merchandise Marks Act, 1958, only the High Court within whose jurisdiction the Trade Marks Registry was located had authority over rectification matters. Since the trade mark was registered in Calcutta, the respondent contended that only the Calcutta High Court had jurisdiction.

The petitioner countered this argument by stating that the respondent’s principal place of business was in Bangalore, which fell under the jurisdiction of the Trade Marks Registry in Madras. The petitioner relied on Section 3(e) of the Act, which applies where the registered proprietor had no place of business in India at the time of registration. The matter was heard before Justice B. Akbar Basha Kadiri of the Madras High Court.

Reasoning of the Court:

The court examined Section 3 of the Trade and Merchandise Marks Act, 1958, which determines the jurisdiction of High Courts in trade mark matters. It found that the appropriate forum for rectification applications is the High Court within whose jurisdiction the Trade Marks Registry where the mark was registered is located. Since the trade mark "Prestige" was registered in the Calcutta Trade Marks Registry, only the Calcutta High Court had jurisdiction over rectification proceedings.

The court rejected the petitioner’s argument under Section 3(e), which applies when the registered proprietor had no place of business in India at the time of registration. The respondent’s trade mark registration explicitly mentioned an address for service in India at the time of registration, which was in Calcutta. The court held that this fact conferred jurisdiction on the Calcutta High Court and not the Madras High Court.

The court relied on previous judgments, including Chunulal Seetaram vs. G.S. Muthiah & Bros. (AIR 1959 Mad 359), Vikas Manufacturing Co. vs. Bharaj Manufacturing Co. (1980 (1) PLR 16), and a decision in O.P. No. 803 of 1994, which established that trade mark rectification proceedings must be filed before the High Court with jurisdiction over the Trade Marks Registry where the mark is registered.

Decision:

The Madras High Court held that it lacked jurisdiction to entertain the rectification petition. It directed that the petition be returned to the petitioner for presentation before the Calcutta High Court. The application challenging jurisdiction was allowed, and the main petition for rectification was ordered to be filed in the proper court.

Case Title: Priya Enterprises vs. Prestige Housewares (India) Ltd.

Date of Order: April 3, 1998

Case Number: O.P. No. 474 of 1995, Application No. 3670 of 1997

Neutral Citation: 1998(Suppl.) ARBLR 624 (Madras), 1998(18) PTC 539 (Mad)

Name of Court: Madras High Court

Name of Hon’ble Judge: Hon’ble Justice B. Akbar Basha Kadiri

Lakha Ram Sharma Vs. Balar Marketing Pvt. Ltd

Fact of the Case:

Lakha Ram Sharma filed an application under Sections 46 and 56 of the Trade and Merchandise Marks Act, 1958, seeking rectification of Trade Mark No. 507445, which was registered on March 23, 1989, under Class 9 for electrical accessories and fittings, including switches, fuse units, wires, and electrical irons. The registered owner of the trade mark was Balar Marketing Pvt. Ltd., the first respondent in the case. The petitioner claimed prior use of the trade mark "KUNDAN/KUNDAN CAB/KUNDAN CABLES INDIA" since 1980 and filed a suit for permanent injunction before the District Court, Delhi, upon discovering the respondent’s trade mark registration.

During the proceedings in the District Court, the respondent disclosed that it held a registered trade mark, prompting the petitioner to file the rectification application, seeking the cancellation of the mark from the Trade Marks Register. The primary issue was territorial jurisdiction, as the trade mark was registered at the Trade Marks Registry in Chennai, but the petitioner had filed the rectification application before the Delhi High Court.

Procedural Background in Brief:

The petitioner initially filed a suit for permanent injunction before the District Judge, Delhi. Upon learning that the trade mark "KUNDAN/KUNDAN CAB" was already registered in favor of the respondent, the petitioner sought rectification before the Delhi High Court. The respondent objected, arguing that under Section 3 of the Trade and Merchandise Marks Act, the rectification application could only be filed in the Madras High Court, as the trade mark was registered at the Trade Marks Registry in Chennai.

The petitioner contended that since Balar Marketing Pvt. Ltd. was based in Delhi, the Delhi High Court had jurisdiction under Section 3(a) of the Act. However, the respondents relied on Section 3(b) of the Act, arguing that jurisdiction lay with the High Court within whose territorial limits the Trade Marks Registry was located—in this case, Chennai. The matter was heard before Justice A.K. Sikri of the Delhi High Court.

Reasoning of the Court:

The court analyzed Section 3 of the Trade and Merchandise Marks Act, 1958, which governs the jurisdiction of High Courts in trade mark matters. It found that the relevant provision for determining jurisdiction in rectification applications was Section 3(b), which states that the appropriate High Court for trade mark matters is the one within whose jurisdiction the Trade Marks Registry where the mark is registered is located. Since the trade mark "KUNDAN/KUNDAN CAB" was registered at the Trade Marks Registry in Chennai, the appropriate forum for appeals was the Madras High Court.

The court rejected the petitioner’s reliance on Section 3(a), which applies only to trade marks that were already on the register at the time of the Act’s commencement. In this case, the trade mark was registered after the Act came into force. The court also clarified that subsequent assignment of the trade mark to a party located in Delhi did not change the jurisdiction, as jurisdiction is determined based on where the original application for trade mark registration was filed and registered.

The court relied on previous judgments, including Priya Enterprises v. Prestige Housewares (India) Ltd., 1998 PTC (18) 539, Satya Narayan Khub Chand v. Rama Chandra Laxmi Narayan, AIR 1977 AP 360, and Vikas Manufacturing Company v. Maharaj Manufacturing Company, 1981 PTC 87. These cases reaffirmed that the jurisdiction for rectification applications remains with the High Court where the trade mark is registered, regardless of subsequent assignments or changes in business location.

Decision:

The Delhi High Court dismissed the petition for lack of jurisdiction and directed that the rectification application be returned to the petitioner for presentation before the appropriate court, i.e., the Madras High Court. The court emphasized that confining rectification proceedings to a single jurisdiction ensures uniformity and prevents forum shopping.

Case Title: Lakha Ram Sharma Vs. Balar Marketing Pvt. Ltd. & Ors.

Date of Order: October 10, 2001

Case Number: C.O. No. 19 of 1995

Neutral Citation: 2001 SCC OnLine Del 1142, (2002) 97 DLT 342, PLR 2002 131 Del 36, (2002) 24 PTC 115, (2001) 4 RAJ 276

Name of Court: Delhi High Court

Name of Hon’ble Judge: Hon’ble Justice A.K. Sikri

Chunulal Seetaram vs. G.S. Muthiah and Brothers & Ors.

Trademark Rectification has to be filed before the High Court under which Trademark Registry, granting Trademark Registration is situated

Fact of the Case:

Chunulal Seetaram filed an appeal under Section 76 of the Trade Marks Act, 1940, against the decisions of the Registrar of Trade Marks regarding the rectification of the Trade Marks Register. 

The main issue in the case revolved around the determination of the High Court having jurisdiction over appeals related to trade mark rectification. 

The appellant approached the Madras High Court, challenging the decisions of the Registrar of Trade Marks regarding rectification matters. The respondents objected, arguing that the proper jurisdiction for such appeals was the Bombay High Court, as the office of the Registrar of Trade Marks was situated in Bombay, and the Trade Marks Register was maintained there.

Procedural Background in Brief:

The appellant filed appeals against the Registrar's decision on trade mark rectification before the Madras High Court under Section 76(1) of the Trade Marks Act, 1940. The respondents raised an objection, contending that since the Registrar’s Office and the Trade Marks Register were in Bombay, any appeal against the Registrar’s decisions should be filed before the Bombay High Court. The case was heard by Chief Justice P.V. Rajamannar and Justice Ganapatia Pillai of the Madras High Court. The court had to determine whether the Madras High Court had jurisdiction to hear these appeals or whether the proper forum was the Bombay High Court.

Reasoning of the Court:

The court ruled that under Section 76(1) of the Trade Marks Act, 1940, an appeal against the Registrar’s decision must be filed in the High Court having jurisdiction. Since the Registrar of Trade Marks’ office was located in Bombay and the rectification of the trade mark register was made there, the appropriate forum for appeals was the Bombay High Court. 

The court relied on previous judgments, including Abdul Ghani v. Registrar of Trade Marks, AIR 1947 Lah 171, Tapton Tea Co. v. Liptons Ltd., MANU/PH/0131/1954, and Satyadeo v. Amrit Dhara Pharmacy, AIR 1958 All 823, all of which held that appeals related to trade mark rectification must be filed before the High Court where the Registrar’s Office is located.

The Madras High Court concluded that accepting appeals in different High Courts based on the applicant’s location would lead to jurisdictional confusion and contradictory rulings, which was not the intention of the legislature.

Decision:

The Madras High Court held that the appeals were incompetent and directed the memoranda of appeals to be returned to the appellants for presentation before the proper court, i.e., the Bombay High Court, within two months. The appellants were also directed to pay half the costs of the appeal to the respondents.

Case Title: Chunulal Seetaram Vs. G.S. Muthiah and Brothers & Ors.

Date of Order: February 17, 1959

Case Number: A.A.O. Nos. 74 of 1955 and 363 of 1956

Neutral Citation: AIR 1959 Mad 359, (1959) ILR Madras 823, 1959-72 LW 298, (1959) IMLJ 304

Name of Court: Madras High Court

Name of Hon’ble Judges: Hon’ble Chief Justice P.V. Rajamannar and Hon’ble Justice Ganapatia Pillai

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] ,High Court of Delhi

Alpha Foundation for Education and Research Vs. Akara Education Private Limited

Rule 45(2) of the Trade Marks Rules, 2017 is procedural and directory in nature

Fact of the Case:

Alpha Foundation for Education and Research, a charitable educational trust established in 1993, had been using the trademarks "AKARA," "AKARA STAR KIDS," and its associated logo for its educational institutions since 2011. The plaintiff was the registered proprietor of these trademarks under Classes 41 and 16. Akara Education Private Limited applied for the registration of the trademark "AKARA" in Classes 9, 37, and 41. The appellant opposed these applications, claiming that the impugned trademark was identical to or deceptively similar to its own, leading to confusion among the public.

The opposition notices were filed by the appellant on various dates in 2017, challenging the respondent's trademark applications. However, the Assistant Registrar of Trade Marks rejected the opposition, treating it as abandoned on procedural grounds due to a delay in filing evidence. The appellant challenged this order, arguing that it was not given a fair opportunity to present its case.

Procedural Background in Brief:

The appellant filed opposition notices in 2017, objecting to the respondent's trademark applications. The Assistant Registrar of Trade Marks fixed different hearing dates for the cases. The appellant submitted its evidence under Rule 45(1) of the Trade Marks Rules but filed it after the stipulated two-month period. The Assistant Registrar rejected the evidence for being belated and held that the opposition was abandoned.

The appellant challenged these orders before the Intellectual Property Appellate Board (IPAB), but due to the dissolution of IPAB, the cases were transferred to the Madras High Court. The matter was heard by Justice N. Seshasayee, who examined whether the rejection of the opposition on procedural grounds was justified.

Reasoning of the Court:

The court observed that the Assistant Registrar failed to comply with Section 21(3) read with Rule 44(1) of the Trade Marks Rules, 2017 and Rule 49(1) of the Trade Marks Rules, 2022, which require the Registrar to serve a copy of the counter-statement on the opponent. The court found that there was no proof that the counter-statement was duly served on the appellant, which was a crucial procedural requirement before evidence could be demanded from the opponent.

The court further held that Rule 45(2) of the Trade Marks Rules, 2017, was procedural and directory in nature and could not override the substantive right of the opponent to contest the registration of a trademark. The Registrar's decision to reject the opposition merely on the ground of delay in submitting evidence was found to be arbitrary and inconsistent with the purpose of maintaining the purity of the trademark register.

The court reasoned that the Registrar could not insist on the submission of evidence unless the counter-statement had been properly served on the opponent. Since the Registrar failed to prove that the counter-statement was duly served, the rejection of the opposition as abandoned was unsustainable. The benefit of doubt had to be given to the opponent, as what was at stake was the statutory right to oppose the registration of a potentially conflicting trademark.

Decision:

The Madras High Court set aside the impugned orders of the Assistant Registrar of Trade Marks. It directed the Registrar to restore the opposition along with the appellant’s evidence and pass a fresh order on merits within four months. The appeals were allowed with no order as to costs.

Case Title: Alpha Foundation for Education and Research Vs. Akara Education Private Limited & Anr.
Date of Order: March 13, 2024
Case Number: (T)CMA(TM) No.82 of 2023 and other connected appeals
Neutral Citation: Not specified
Name of Court: Madras High Court
Name of Hon’ble Judge: Hon’ble Justice N. Seshasayee

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] ,High Court of Delhi

Abdul Ghani Ahmad Vs. Registrar of Trade Marks

The cause of action for filing appeal against Order passed by Registrar of Trademark arise in that High Court where the decision was made by the Registrar of Trademarks

Introduction: 

The case of Abdul Ghani Ahmad vs. Registrar of Trade Marks addressed a significant issue concerning the interpretation of “the High Court having jurisdiction” under Section 76(1) of the Trade Marks Act, 1940. The primary legal question was whether the Lahore High Court had jurisdiction to entertain appeals against the Registrar of Trade Marks, whose office was situated in Bombay. The decision settled the principle that appeals against orders of the Registrar must be filed in the High Court within whose territorial jurisdiction the Registrar's office is located unless an exception applies under the proviso to Section 76(1).

Detailed Factual Background:

The appellants, including Messrs. Abdul Ghani, Haji Ahmad, and Mohammad Sidik, applied for the registration of the trademark “Bombay Cloth House” with the Registrar of Trade Marks in Bombay. Separately, another appellant, Gowardhan Das, proprietor of Punjab Pharmaceutical Works, applied for the registration of the trademarks “Chinol” and “Grippe Wassar.” The Registrar of Trade Marks rejected these applications on different dates, specifically March 31, 1945, January 11, 1945, and March 23, 1945.

Following these rejections, the applicants requested the Registrar to provide written reasons for the refusals, as per Section 14(2) of the Trade Marks Act. Upon receiving these reasons, they decided to challenge the Registrar's decisions by filing appeals before the Lahore High Court under Section 76(1) of the Trade Marks Act.

Detailed Procedural Background:

The appeals were filed before the Lahore High Court, raising a preliminary jurisdictional question: whether the Lahore High Court had the authority to entertain appeals against the decisions of the Registrar of Trade Marks, whose office was located in Bombay. The appellants contended that their applications for trademark registration had been sent from Lahore, and therefore, the Lahore High Court should have jurisdiction. The Registrar of Trade Marks opposed this claim, arguing that the appeals could only be filed in the High Court within whose jurisdiction the Registrar’s Office was situated, i.e., the Bombay High Court.

The Lahore High Court examined the statutory framework of the Trade Marks Act and considered the impact of territorial jurisdiction on appeals against the Registrar’s decisions. The matter was heard by Justice Abdur Rahman, who had to determine the proper forum for such appeals.

Issues Involved in the Case:

Whether the Lahore High Court had jurisdiction under Section 76(1) of the Trade Marks Act, 1940, to entertain appeals against the decisions of the Registrar of Trade Marks, whose office was located in Bombay?

Detailed Submission of Parties:

The appellants argued that the Trade Marks Act does not expressly exclude the jurisdiction of the High Court within whose territory the application was filed. Since the applications for trademark registration were sent from Lahore, the Lahore High Court should have jurisdiction over the appeals. Section 20 of the Civil Procedure Code (CPC), which governs territorial jurisdiction, should be applied by analogy to grant jurisdiction to the Lahore High Court. The appellants had no control over where the Registrar’s Office was located, and therefore, jurisdiction should be determined based on the applicants’ residence or place of business.

The respondent argued that jurisdiction under Section 76(1) of the Trade Marks Act was tied to the location of the Registrar’s Office, which was in Bombay. Allowing multiple High Courts to entertain appeals would lead to conflicting decisions and jurisdictional chaos. The Trade Marks Act was a special law, and general principles of civil jurisdiction under the CPC did not apply. The proviso to Section 76(1) of the Trade Marks Act explicitly provided for exceptions where jurisdiction could be determined based on pending litigation concerning the disputed trademark, but this proviso did not apply in the present case.

Detailed Discussion on Judgments Cited by the Parties:

The respondents relied on the legal principles and cases. In Rangoon Botatouing Co. Ltd. v. Collector of Rangoon (40 Cal 21 (27)), the case emphasized that in matters governed by special statutes, jurisdiction should be strictly interpreted based on the language of the statute. In Special Officer Salsette Building Sites v. Dorabhai Bezonji Motivalla (20 IC 763 (PC)), the Privy Council held that when a statute provides a specific appellate forum, appeals must be filed before the designated authority and not any other court. In Nur Mahomed v. S.M. Solaiman (49 CWN 10 (17)), the Calcutta High Court ruled that jurisdiction cannot be inferred from the plaintiff’s or petitioner’s place of residence unless expressly provided by statute.

Detailed Reasoning and Analysis of Judge:

Justice Abdur Rahman ruled that the Lahore High Court lacked jurisdiction to entertain the appeals for the following reasons. 

The phrase "High Court having jurisdiction" in Section 76(1) of the Trade Marks Act must be interpreted based on the location of the Registrar’s Office. 

Jurisdiction in such matters does not arise from where the application was sent or where the applicant resides. The cause of action for the appeal arose where the decision was made, i.e., in Bombay.

Applying general principles of civil jurisdiction under the CPC was inappropriate because the Trade Marks Act was a special statute with its own jurisdictional framework. The proviso to Section 76(1) allowed an appeal to be filed in a different High Court only if a trademark-related suit was already pending there. Since no such suit was pending in Lahore, this proviso was inapplicable. Allowing multiple High Courts to hear appeals against the Registrar’s decisions would create a risk of contradictory judgments, which would be against legislative intent.

Final Decision

The Lahore High Court dismissed the appeals on the ground of lack of jurisdiction and directed the appellants to file the appeals in the proper High Court, i.e., the Bombay High Court. However, since the issue was one of first impression, the court ordered that each party should bear its own costs.

Law Settled in This Case:

Appeals against decisions of the Registrar of Trade Marks under Section 76(1) of the Trade Marks Act, 1940, must be filed in the High Court within whose jurisdiction the Registrar’s Office is located. The place from which a trademark application was sent or the residence of the applicant is irrelevant in determining appellate jurisdiction. The Trade Marks Act is a special statute, and its appellate jurisdiction must be determined based on its own provisions, not by analogy to general civil procedure principles. The proviso to Section 76(1) applies only when a trademark-related suit is already pending in a High Court or District Court and does not otherwise alter the jurisdiction of appeals.

Case Title: Abdul Ghani Ahmad Vs. Registrar of Trade Marks

Date of Order: May 29, 1946

Case Number: First Appeal Nos. 170 to 172 of 1945

Citation: AIR 1947 Lah 171

Name of Court: Lahore High Court

Name of Judge: Hon’ble Justice Abdur Rahman

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] ,High Court of Delhi