Elanco Tieresundheit AG Vs Assitant Controller of Patent

This is a judgment from the High Court of Delhi in the case of Elanco Tiergesundheit AG versus The Assistant Controller of Patents and Designs, dated July 30, 2024. The case involves an appeal by Elanco Tiergesundheit AG against the rejection of their patent application for a method of preparing live vaccines by the Assistant Controller of Patents and Designs. The patent application, originally filed by Lohmann Animal Health Gmbh and later assigned to Elanco, was rejected on grounds of lack of novelty, inventive step, and sufficiency of disclosure under the Patents Act, 1970.

The appellant argued that the impugned order was passed mechanically, without proper consideration of their submissions. They pointed out that the Assistant Controller's order was a verbatim copy of the hearing notice, indicating a lack of independent reasoning. The respondent defended the rejection, citing the same grounds mentioned in the order.

Justice Mini Pushkarna, after reviewing the documents, found that the impugned order was indeed passed without independent reasoning, merely reproducing the contents of the hearing notice. The court noted that the respondent had not applied their mind to the appellant's submissions and had not provided a reasoned order. The court also emphasized the importance of recording reasons in decision-making as a basic tenet of natural justice, citing Supreme Court judgments.

The court set aside the impugned order and restored the patent application to its original position. The matter was remanded back to the respondent for fresh consideration, with instructions to provide a reasoned order within four months. The court directed that the matter be heard by an officer other than the one who passed the impugned order.

Case Citation: Elanco Tieresundheit AG Vs Assitant Controller of Patent: 30.07.2024: C.A.(COMM.IPD-PAT) 479/2022: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dr. Reddy's Laboratories Limited Vs. Zentech Pharmaceuticals

Trademark Infringement Case: Dr. Reddy's Laboratories Limited Vs. Zentech Pharmaceuticals

Key Arguments and Insights:

Trademark Infringement:

The plaintiff, Dr. Reddy's Laboratories Limited, owns the registered trademark "ZEDEX" for its cough syrup product since 1983.

The defendant, Zentech Pharmaceuticals, has adopted a deceptively similar trademark "ZEEDUX" for its cough syrup product containing the same formulation.

The defendant's use of a phonetically similar trademark and copying the plaintiff's trade dress, packaging, color scheme, and layout is to impersonate the plaintiff's well-known "ZEDEX" brand and pass off its products as those of the plaintiff.

Copyright Infringement and Unfair Competition:

The plaintiff alleges that the defendant has copied the plaintiff's unique and distinctive trade dress, packaging, color scheme, get-up, and layout for its "ZEDEX" brand, which the defendant has adopted for its "ZEEDUX" product.

This is done with the malafide and dishonest intention to ride upon the goodwill and reputation of the plaintiff's well-known "ZEDEX" trademark.

Prima Facie Case and Balance of Convenience:

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

The court has granted an interim injunction restraining the defendant from manufacturing, selling, or using the trademark "ZEEDUX" or any other deceptively similar mark that may infringe the plaintiff's "ZEDEX" trademark.

Case Citation: Dr.Reddys Laboratories Vs Zentech Pharmaceuticals: 22.07.2024: CS(COMM) 588/2024: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dr.Reddys Laboratories Vs IKon Pharmachem Pvt. Ltd.

Copyright Infringement Lawsuit: Dr. Reddy's Laboratories Limited v. Ikon Pharmachem Pvt. Ltd.

Overview of the Case:

Dr. Reddy's Laboratories Limited (the plaintiff) has filed a lawsuit against Ikon Pharmachem Pvt. Ltd. (the defendants) for copyright infringement and passing off.

The plaintiff alleges that the defendants have copied the trade dress, packaging, color scheme, and layout of the plaintiff's 'PRACTIN' strip packaging for their product 'PACYPON'.

The plaintiff claims that the defendants have intentionally copied the distinctive elements of the plaintiff's packaging to ride on the goodwill and reputation of the 'PRACTIN' brand.

Key Arguments and Evidence:

Plaintiff's Arguments:

The trademark 'PRACTIN' is a coined word with no dictionary meaning, and the plaintiff has been using the distinctive packaging since 1986.

The plaintiff's 'PRACTIN' strip packaging features a distinctive orange color scheme, layout, and get-up.

The defendants' 'PACYPON' strip packaging is a blatant copy of the plaintiff's 'PRACTIN' packaging, including the color scheme, layout, and overall get-up.

The defendants have admitted in an email that they will withdraw and not use the impugned packaging for their business anymore.

Court's Observations:

The Division Bench of the High Court of Delhi, in a previous order, recognized the plaintiff's packaging and trade dress as a source identifier and protected as an artistic work under the Copyright Act.

The Court found that the similarities in the packaging of the two products are likely to cause confusion for an average consumer with imperfect recollection, even upon closer examination.

Court's Order:

The Court is satisfied that the plaintiff has made out a prima facie case for the grant of ex-parte ad-interim injunction.

The defendants are restrained from manufacturing, marketing, selling, or offering for sale the 'PACYPON' product using the identical or substantially similar strip packaging, trade dress, get-up, and layout as the plaintiff's 'PRACTIN' product.

Case Citation: Dr.Reddys Laboratories Vs IKon Pharmachem Pvt. Ltd: 15.07.2024: CS(COMM) 571/2024: Delhi High Court: Mini Pushkarna: H.J.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dabur India Vs Kuldeep Gupta

Trademark Infringement Case: Dabur India Ltd. vs. Mr. Kuldeep Gupta

Plaintiff's (Dabur India Ltd.) Contentions:

Trademark and Copyright Rights:

Dabur India Ltd. is the owner of the registered trademark "DABUR RED" for its toothpaste product, which has acquired significant goodwill and reputation over the years.

The packaging, trade dress, and get-up of the "DABUR RED" toothpaste are original artistic works protected under the Copyright Act, 1957.

Dabur India Ltd. has valid and subsisting trademark registrations for the "DABUR RED" mark, which it has periodically renewed.

Defendant's (Mr. Kuldeep Gupta) Alleged Infringement:

The defendant, who is the sole-proprietor of Real Herbal Cosmetics, has registered the mark "Devson Care Red" in Class 3.

The defendant's "Devson Care Red" toothpaste product has a label/carton/packaging/get-up that is deceptively similar to Dabur India Ltd.'s "DABUR RED" toothpaste.

The defendant has cleverly imitated and substantially reproduced the plaintiff's trademark, packaging, and trade dress, causing irreparable loss, injury, damage, and prejudice to Dabur India Ltd.

Plaintiff's Claim and Relief Sought:

Dabur India Ltd. has established a prima facie case, and the balance of convenience is in its favor. Dabur India Ltd. will suffer irreparable injury unless the defendant is restrained from carrying out its activities.

Dabur India Ltd. seeks a permanent injunction restraining the defendant from selling, offering for sale, exporting, or advertising its "Devson Care Red" toothpaste under the infringing label/carton/packaging/get-up.

Court's Observations and Order:

The court granted an interim injunction restraining the defendant and its associates from selling, offering for sale, exporting, or advertising the "Devson Care Red" toothpaste under the infringing label/carton/packaging/get-up.

Case Citation: Dabur India Vs Kuldeep Gupta: 18.07.2024: CS(COMM) 579/2024: Delhi High Court: Mini Pushkarna: H.J.

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

Christian Louboutin Vs Nakul Bajaj

Background:

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

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

Intermediary Liability Under Section 79 of the IT Act

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

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

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

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

Factors Determining Intermediary Status:

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

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

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

Liability of Darveys.com:

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

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

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

Orders:

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

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

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

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

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Bardhman Agro Vs Kirorimal Kashiram

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

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

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

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

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

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

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Anupam Saxena Vs Shiv Verma

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

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

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

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

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

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

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

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

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Alok Kumar Indurkhya Vs The State Of Madhya Pradesh

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

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

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

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

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

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Opella Healthcare Group Vs Pureca Laboratories Pvt. Ltd.

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

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

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

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

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

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

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

Adidas AG Vs Keshav H Tulsiani

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

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

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

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

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

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

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

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

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

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

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

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

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

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

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

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

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

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

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

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

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

#IPAdjutor #Legalupdate #IPUpdate #Indiaip #IPlaw #Iplawyer #Ipadvocate #LegalNews

Paras Natural Spring Water Vs Registrar of Trademark:

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

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

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

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

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

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Dish Tv India Ltd Vs Gulf Dth Fz Llc

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

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

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

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

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

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

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

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

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]