Kamdhenu Limited Vs Aashiana Rolling Mills Ltd.

Order Date:05.08.2022

Case No. RFA (OS) (Comm) 4 of 2021

Delhi High Court

Vibhu Bakhru and Amit Mahajan H.J.

Kamdhenu Limited Vs Aashiana Rolling Mills Ltd.

 

The present Appeal was filed against dismissal of Suit for design Infringement on the application filed by the Defendant under Order 13-A of the Commercial Court Act. The Hon’ble Single Judge dismissed the suit by holding that the subject matter design of the Plaintiff is a prior published design in view of British Standard B500C. The Hon’ble Division Bench , High Court of Delhi was pleased to dismiss the Appeal by reiterating the finding of Single Judge that the subject matter design of the Plaintiff is a prior published design.

 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Victoria Foods Pvt. Ltd. Vs Rajdhani Masala Company

Order Date:02.08.2022

Suit No. CS(Comm) 108 of 2021

Delhi High Court

Prathiba M Singh, H.J.

Victoria Foods Pvt. Ltd. Vs Rajdhani Masala Company

 

The Defendant earlier made statement that they are willing to finally settle the matter by changing the Trademark. How ever on next day they resiled from the statement given. In spite of injunction order they keep on selling the impugned products. The cost of Rs. 30 Lakh was imposed on defendant for committing contempt of court.

 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor  #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news  #Design_infringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update

TV Today Network Vs News Laundry Media

DATE OF JUDGMENT: 29.07.2022

CASE: CS(Comm) 551 of 2021

NAME OF HON'BLE COURT:  High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon'ble Justice Asha Menon

CASE TITLE: TV Today Network Vs News Laundry Media

The Plaintiff namely INDIA TODAY GROUP is a well known Media News Company and owner and proprietor of Trademark AAJ TAK since the year 2009. It was the claim of Plaintiff that in the year 2021, the Plaintiff launched a new channel named „Good News Today‟ or „GNT‟, which was a 24x7 Hindi News Channel and was meant to broadcast true stories that foster goodwill and enrich the lives of the audiences.

The subject matter suit was filed by the Plaintiff against the ground inter alia that the same has not only published the copyrighted video contents of the Plaintiff thereby making themselves guilty for copyright infringement but also has lowered the goodwill of plaintiff there by guilty of defamation also.

The Hon'ble Court rejected the argument of the Defendant that the subject matter suit is not a commercial dispute by making reference to Section 2(1)(c) of commercial court Act which says that all disputes arising of various clauses mentioned therein, are commercial disputes. As the subject matter suit was arising out of copyright infringement and defamation , the same was held to be commercial dispute.

The Hon'ble High Court was pleased to reject this argument of the Defendant that their activities were protected under right to comment. The Court observed further that use of words by defendants such as, “shit standards”, “shit playing” on the channel, “shit reporters”, “shit show”, would show, that programmes/shows of the plaintiff are bad. There by their activities are not covered under the right of fair criticism , but rather they are defaming the Plaintiff.

The Hon'ble Court also found the Defendant prima facie guilty of infringement of copyright and defamation, however injunction in favour of the Plaintiff was declined as balance of convenience was titled in favour of the Defendant.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

A.O.Smith Corporation and Another Vs Star Smith Export Pvt. Ltd.

Order Date:03.08.2022
Suit No. CS(Comm) 532 of 2022
Delhi High Court
Prathiba M Singh, H.J.
A.O.Smith Corporation and Another Vs Star Smith Export Pvt. Ltd.

Plaintiff’s Trademark A.O.Smith and Blue Diamond

Plaintiff’s web site:www.aosmith.com

Plaintiff's Claimed Worldwide User:1874

Plaintiff's Claimed Indian User:2006

Plaintiff's Earliest Registration in India in class 07 and 11:Effective since 22.03.2008

Plaintiff's Product:Geysers, Purification Systems, Water Heater, Boilers and other related equipment.

Defendant's Incorporation: Star Smith Export Private Limited on 01.08.2020

Defendant’s Trademark :Star Smith

Defendant’s web site www.starsmith.com

Defendant's Product:for identical products such as Geysers, Purification System, Water Purifiers, RO System

The Explanation Given by Defendant for adoption of Trademark SMITH in its email Reply :The Defendant sought to justify the adoption of the mark ‘STARSMITH’ on the ground that the son of the Defendant is named Smith.

However in reply to Legal Notice they have give। Just different Reason for adoption that that the word ‘SMITH’ is a dictionary word which means ‘a worker in a factory.

Accordingly the Hon'ble High Court of Delhi was pleased to grant Ex-parte Injunction in favour of the Plaintiff and against the Defendant holding adoption of impugned Trademark by the Defendant prima facie appears to be dishonest.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539

Satyanarain Khandelwal Vs Prem Arora

DATE OF JUDGMENT: 18.07.2022

CASE:TR.P.(C) No.47 of 2021 

NAME OF HON'BLE COURT:  High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon’ble Chief Justice and Mr. Subramonium Prasad

CASE TITLE: Satyanarain Khandelwal Vs Prem Arora

The Hon’ble High Court of Delhi, in a recent Judgment, has cleared the doubt as to whether the provisions of commercial court act are applicable retrospectively.

 

This Judgment has come in multiple Transfer Petitions filed by the Petitioner seeking transfer of Suit from the Court of Ld. Additional District Judge to the Commercial Courts.

The Hon'ble High Court of Delhi was pleased to dismiss the Transfer Petitions of the Petitioners after observing that provisions of Commercial Courts Act are not applicable retrospectively. 

The basic idea behind this Judgment is that the Hon'ble High Court of Delhi simply reiterated the well settled principle of law that any Act, until specifically made effective retrospectively , is effect since the day it was made applicable. 

This was also applicable to the Commercial Court Act 2015 , which was subsequently amended in the year 2018. In view of amending act 2018, the provisions of this act was made applicable only since 03.05.2018.

In view of the above, the provisions of this Act can not be made applicable to the matters instituted prior to the 03.05.2018.

Since the subject matter Transfer Petitions were filed pertaining to the Civil Suits, instituted prior to the year 03.05.2018, hence the provisions of commercial court act could not be made applicable thereto.

Resultantly the provisions of Commercial Court Act 2015 were held inapplicable to the subject matter suits which were filed prior to the relevant date i.e. 03.05.2022.

Similar issues on the scope of maintainability of Commercial Suits valued less than Rs. 3 lakh,before the Commercial Court came up before the Hon'ble Single Judge in Appeal bearing FAOIPD 1/2022 titled as Vishal Pipe Vs  Bhavya Pipes, which was disposed of vide Judgment dated 03.06.2022.

The Hon'ble Singh Judge, High Court of Delhi , in the said matter observed that  usually, in all IPR cases, the valuation ought to be Rs.3 lakhs and above and proper Court fee would have to be paid accordingly. All IPR suits to be instituted before District Courts, would therefore, first be instituted before the District Judge (Commercial). 

However the Hon'ble Single Judge, while making afore mentioned observation also indicated that in order to however maintain consistency and clarify in adjudication , even such suits which may be valued below Rs.3 lakhs may continue to be listed before Commercial Court , however provisions of Commercial Court Act shall not apply. 

The cumulative effect of the present Judgment passed by Hon'ble High Court of Delhi and the afore mentioned Judgement dated 03.08.2022 passed in the FAO IPD No.1 of 2022 would be that all commercial suits filed prior to 03.05.2018 would be listed before the Commercial Judges, however the provisions Commercial Court Act would not apply in those Suits.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Sarabpreet Singh Vs State of Jharkhand

DATE OF JUDGMENT: 22.07.2022

CASE:CR.M.P. 1514 of 2019

NAME OF HON'BLE COURT:  High Court of Jharkhand 

NAME OF HON'BLE JUDGE: The Hon'ble Justice Sanjay Kuamar Dwivedi 

CASE TITLE: Sarabpreet Singh Vs State of Jharkhand

Petitioner filed the subject matter Petition seeking quashing of Criminal proceeding initiated by Cyber Crime Cell bearing No.  Cyber Crime P.S. Case No.04/201 and FIR lodged subsequent thereto.

This criminal proceeding was initiated on the basis of complainant who alleged that Petitioner , by circulating the alleged video, not only defaming the Hon'ble Chief Minister but also infringing the Trademark and copyright of the Complainant.

The Hon'ble High Court of Jharkhand was pleased to allow the subject matter Petition on the grounds inter alia that provisions of the Trademarks Act 1999 has not been followed in the present case.

The Hon'ble High Court of Jharkhand observed that as per Sub-section (4) of Section 115 of the Trade Marks Act, opinion of the Registrar is required to be obtained before making search and seizure, which has not been followed in the case in hand.  

Even the matter was initiated by a Police inspector, which is not the mandate of Section 115 of Trademarks Act 1999.

Section 115 of Trademarks Act 1999 provides as under:

Section 115 in The Trade Marks Act, 1999

115. Cognizance of certain offences and the powers of police officer for search and seizure.

(1) No court shall take cognizance of an offence under section 107 or section 108 or section 109 except on complaint in writing made by the Registrar or any officer authorised by him in writing: 

Provided that in relation to clause (c) of sub-section (1) of section 107, 

a court shall take cognizance of an offence on the basis of a certificate issued by the Registrar to the effect that a registered trade mark has been represented as registered in respect of any goods or services in respect of which it is not in fact registered.

(2) No court inferior to that of a Metropolitan Magistrate or Judicial Magistrate of the first class shall try an offence under this Act.

(3) The offences under section 103 or section 104 or section 105 shall be cognizable.

(4) Any police officer not below the rank of deputy superintendent of police or equivalent, may, if he is satisfied that any of the offenses referred to in sub-section (3) has been, 

is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, 

wherever found, and all the articles so seized shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be: Provided that the police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trade mark and shall abide by the opinion so obtained.

Section 115(4) of Trademarks Act 1999 takes care of situation where criminal proceeding in relation to violation of Trademarks Act 1999 can be imitated.

But there are two conditions , which must be fulfilled. 

First condition is that before initiating any criminal proceeding under the Trade Marks Act 1999, the Opinion of Registrar of Trademark is must.

The second condition is that any police officer not below the rank of deputy superintendent of police or equivalent thereof is entitled to entertain such request.

In a case like the present one , as the procedure laid down in Section 115(4) of the Trade Marks was not followed , the criminal proceeding initiated in violation of Section 115 of Trademarks Act 1999 was rightly quashed.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

Boehringer Ingelheim Vs The Controller of Patents

DATE OF JUDGMENT: 12.07.2022 CASE:C.A. (COMM.IPD-PAT) 295/2022 NAME OF HON'BLE COURT: High Court of Delhi NAME OF HON'BLE JUDGE: The Hon'ble Justice Prathiba M Singh CASE TITLE: Boehringer Ingelheim Vs The Controller of Patents

What is scope of divisional application in a Patent? What are the criterion for evaluating, where an applicant for Patent can be said to be entitled to a divisional application?  What are basic requisites for a parent application, on the basis of which amendment of the same can be filed resulting into divisional Patent Application?

This Appeal dealt with similar issue. The Appeal was filed against order dated 25.03.2022 by the Ld. Controller of Patent where the request for the Petitioner in relation to divisional application bearing no.20178031279 dated 04.09.2017, titled ‘A medicament of a DPP inhibitor was rejected by the Controller of Patent on the grounds inter alia that the divisional application was having similar claims.

Background of this case was that the Petitioner filed National phase application on 14.11.2008 with 18 claims , in which the Petitioner filed first amendment application in reply to first examination report and proposed to delete all claims except claim no.14,15 and 15A.

Subsequently in the year 2016, 2 more amendment applications were filed, which were there after sought to be converted into divisional application in the 2017. The controller of Patent rejected this application on the ground that the same are beyond the scope of originally filed claims.

Reasons for rejecting the divisional application was mainly on the grounds that since the original amendment applications have already been disallowed by the controller, the divisional application could not have been allowed, which were filed on the basis of amendment applications earlier filed.

Question before the Hon'ble Court was that whether the divisional applications can contain the claims which were not there in the parent application?

The Relevant Section which takes care for the situation, where divisional application may be filed, is Section 16 of the Patent Act 1970. The relevant portion of the same is extracted as under:

"Section 16 Power of Controller to make orders respecting division of application

(1) A person who has made an application for a patent under this Act may, at any time before the grant of Resultantly the provisions of Commercial Court Act 2015 were held inapplicable to the subject matter suits. the patent, if he so desires, or with a view to remedy the objection raised by the Controller on

the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first

mentioned application.

(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application."

Sub section 2 of Section 16 of the Patent Act 1970 provides that complete specification of such divisional Patent Application  shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

Thus the Divisional Application can not contains any claims which were not disclosed in the Patent Application, on the basis of which the same was filed.

The other two conditions for filing such amendment application for divisional application is that the amendment must be by way of disclaimer or correction and that the same must be made in order to include facts. Other amendment can not be allowed while filing divisional Application.

As in the Divisional Application, the Plaintiff claimed products patent , which were not in the original patent specification, the same was rightly rejected.

 

In the Original Patent Application there were Claims 1 to 18 claims. These claims were wither use claims or method claims. There was  not even a single product claim in the entire set of claims filed originally.

By introducing amendment for divisional application, the Applicant introduced 25claims.The same were Claims 1-11, 14-18, 20-25 .These subsequently amended divisional patent application, these product patent claims were introduced in the divisional patent application.

Another  important aspect regarding filing of Divisional Application is unity of invention. Section 10(5) of Patent Application provides for this. The same is reproduced as under:

10(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

It means if specification of the parent application only shows single invention or multiple invention resulting in single inventive concept, in that case also divisional application can not succeed.

For a divisional application, there must has to be plurality of invention. Meaning there by the specification of the parent application must contains multiple inventions. Only in that case divisional application can succeed.

The Hon'ble High court of Delhi in the present case observed that divisional application for Patent can not succeed as in the parent application only original 'DPP IV inhibitor' arising out of a Markush formula, in various permutations and combinations describing its use and method for treatment were disclosed, which can not be said to be plurality of invention.

Hence it can be said that for divisional application to succeed, the first criteria is that the amendment should only be by way of correction, disclaimer , incorporation of facts. The second criteria is that the divisional application should not contain any claims which were not disclosed in the Parent application. And the last one is that specification of the parent application must qualify for the test of plurality of invention disclosed in it. If a divisional Patent Application qualify for all these tests, it may qualify to be allowed.

 

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.comm 9990389539

Marico Limited Vs Dabur India Limited

DATE OF JUDGMENT: 19.07.2022

CASE: CS No. 264 of 2021 

NAME OF HON'BLE COURT:  High Court of Kolkata

NAME OF HON'BLE JUDGE: The Hon'ble Justice Ravi Krishan Kapoor

CASE TITLE: Marico Limited Vs Dabur India Limited

The Subject matter Suit was filed by the Petitioner seeking relief of permanent injunction for disparagement against the impugned Advertisement namely DABUR AMLA DE SHANTI KE MUKABLE (up to) 50% ZYADA MAZBOOT BAAL”

In fact in this advertisement campaign , the Respondent namely Dabur projected it's product to be 50% better than product  of the Petitioner.

At the impugned Advertisement, there was disclaimer attached that UTPAD NIHAR SHANTI AMLA KE SHABD, DEVICE/LABEL MEIN TRADEMARK KE ADHIKAR ‘MARICO LIMITED’ KE PASS HAIN. Thus the Respondent was making categorical averment against the product of the Petitioner.

The Hon'ble High Court of Kolkata reiterated the settled principle of law  regarding comparative advertisement as laid down in Reckitt & Colman of India Ltd. Vs. M.P. Ramchandran reported in (1999) 19 PTC 741 , which is as under:

"I).A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue. 

II) He can also say that his goods are better than his  competitors', even though such statement is untrue. 

III) For the purpose of saying that his goods are the best in the world or his goods are better than his competitors' he can even compare the advantages of his goods over the goods of others. 

IV) He however, cannot, while saying that his goods are better than his competitors', say that his competitors' goods are bad. If he says so, he really slanders the goods of his competitors. In other words he defames his competitors and their goods, which is not permissible. 

In the present case, the Hon'ble High Court of Kolkata was pleased to grant interim relief to the Petitioner by observing that the impugned Advertisement does not amount to be mere puffery. 

The Hon'ble observed that impugned advertisement of the Respondent presents the  petitioner’s product is inferior and bad in comparison to the respondent’s product. 

The court further observed that the overall message which the respondent has tried to convey through the impugned advertisements is that the petitioner’s product does not serve the purpose which it is intended to serve. Thus it is apparent that while doing the comparative advertisement, it is necessary that one should avoid to put competitors product in bad light.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi

ajayamitabh7@gmail.com, 9990389539

#IP_Adjutor  #Legal #Law #Legalblog #Trademark_infringement #Ipr_update #Copyright_infringement #Ipr_news  #Designin_fringement #Patent_infringement #IPR #Intellectual_property_right #Iplaw #Ip_update #Legal_update #Comparative_advertisement #defamation 

============

TV Today Network Vs News Laundry Media

DATE OF JUDGEMENT: 29.07.2022
CASE: CS(Comm) 551 of 2021
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Hon'ble Justice Asha Menon
CASE TITLE: TV Today Network Vs News Laundry Media

The Plaintiff namely INDIA TODAY GROUP is a well known Media News Company and owner and proprietor of Trademark AAJ TAK since the year 2009. It was the claim of Plaintiff that in the year 2021, the Plaintiff launched a new channel named „Good News Today‟ or „GNT‟, which was a 24x7 Hindi News Channel and was meant to broadcast true stories that foster goodwill and enrich the lives of the audiences.

The subject matter suit was filed by the Plaintiff against the ground inter alia that the same has not only published the copyrighted video contents of the Plaintiff thereby making themselves guilty for copyright infringement but also has lowered the goodwill of plaintiff there by guilty of defamation also.

The Hon'ble Court rejected the argument of the Defendant that the subject matter suit is not a commercial dispute by making reference to Section 2(1)(c) of commercial court Act which says that all disputes arising of various clauses mentioned therein, are commercial disputes.

The Hon'ble High Court was pleased to reject this argument of the Defendant that their activities were protected under right to comment. The Court observed further that use of words by defendants such as, “shit standards”, “shit playing” on the channel, “shit reporters”, “shit show”, would show, that programmes/shows of the plaintiff are bad. There by their activities are not covered under the right of fair criticism , but rather they are defaming the Plaintiff.

The Hon'ble Court also found the Defendant prima facie guilty of infringement of copyright and defamation, however injunction in favour of the Plaintiff was declined as balance of convenience was titled in favour of the Defendant.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539

Simpson and Company Limited Vs Rythm Agrawal

DATE OF JUDGEMENT: 15.07.2022
CASE:O.S.A.(CAD) No.122 of 2021 and C.M.P.No.19646 of 2021
NAME OF HON'BLE COURT: High Court of Judicature at Madras
NAME OF HON'BLE JUDGE: The Hon'ble Justice M Duraiswamy and Sunder Mohan
CASE TITLE: Simpson and Company Limited Vs Rythm Agrawal

The Appellant was the Defendant and Respondent was the Plaintiff in the matter.

After conclusion of the trial, when the matter was listed for final argument, the Appellant filed application under Order 7 Rule 10 CPC seeking return of the plaint.

The Appellant based their argument on the basis of Judgement namely (2015) 10 SCC 161 (Indian Performing Rights Society Limited vs Sanjay Dalia and another) wherein it was held that if the plaintiff is carrying on business at a place where the cause of action has arisen, he can only file the suit at that place and not in any other place where he may be carrying on business.

The same was based of limited interpretation of Provisions of Section 134 (2) of Trademarks Act 1999. As per the interpretation given by the Appellant, the Suit was liable to be returned as Plaintiff and Defendant both were carrying on business in similar place in UP. It was not the case of the Appellant that those were the same places.

The Hon'ble Division Bench that in the fact of case, the Respondent was carrying on business at Ghaziabad, U.P. while the Appellant was based in Agra, which were not the same place.

It is submitted that things would have been different , had the relevant places of the Appellant and the Respondent been identical, i.e. either Ghaziabad or Agra, which was not true in the present case.

In view of the above, the Appellant's application based on interpretation of Section 134 of Trademarks Act 1999 under Order 7 Rule 10 CPC could not have been allowed.

The Hon'ble Court was pleased to reject the argument of the Appellant that the Suit was liable to be returned within the provisions of Order 7 Rule 10 CPC.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539

Infiniti Retail Limited Vs Croma Wholeseller and Others

DATE OF JUDGEMENT: 25.07.2022

CASE: CS(COMM) 490/2022

NAME OF HON'BLE COURT: High Court of Delhi

NAME OF HON'BLE JUDGE: The Hon'ble Justice Navin Chawla

CASE TITLE: Infiniti Retail Limited Vs Croma Wholeseller and Others

The subject matter Suit was filed on the basis of proprietary rights in the Trademark CROMA.

The Plaintiff also asserted that its trademark CROMA has been declared as well known trade mark under Rule 124 of the Trade Mark Rules,

2017 vide notification dated 24.02.2020.

The Plaintiff was not only having Trademark registration for CROMA but also was having domain name www.croma.com registered in its favour.

The Plaintiff was aggrieved as the Defendants were using domains names, in which Plaintiff's Trademark was essential feature.

The alleged domain names of the Defendants were as under:

www.cromawholeseller.in.,

www.cromawholesellers.in.,

www.cromawholesellers.com,

www.cromawholesale.in.

The Hon'ble High Court of Delhi was pleased to grant ex-parte injunction in favour of the Plaintiff and against the Defendant.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539