Knit Pro International Vs Examiner of Trademark

DATE OF JUDGEMENT: 13.07.2022
CASE: CA Comm IPD TM 110 of 2022
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justices Prathiba M Singh
CASE TITLE: Knit Pro International Vs Examiner of Trademark

The Subject matter Appeal was filed by the Petitioner where by Shape Trademark application of the Petitioner in relation to Knitting Needle was refused.

The Hon'ble High Court of Delhi observed that a shape of product to qualify as a Trademark , it must be unique.

The Shape which are common in use and lacking distinctiveness, can not be appropriated by any body.

The Hon'ble High Court of Delhi also discussed one recent Judgement where Stitching Pattern was held to be protectable under the Trademark Act.

Normally a shape which is aesthetic in nature, can be protected under the Design Act 2000.

However for a shape to serve the function of trade mark, it must be used in course of trade , in order to associate with particular entity.

As in the present case, the Petitioner failed to point out any unique feature or acquired distinctiveness, the subject matter Shape Trademark was not regarded as capable enough to serve the function of Trademark.

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

Shivam Hardware Store Vs Century World

DATE OF JUDGEMENT: 14.07.2022
CASE: FAO (COMM) 102/2022
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justices Shri Vibhu Bkhru+ Amit Mahajan
CASE TITLE: Shivam Hardware Store Vs Century World

What is the effect of use of a registered Trademark by third party in a smaller font in addition with other words?

Or in other words , is it possible for third party to use registered Trademark of other party in smaller font in conjunction with other words?

One of such fact was there before the Hon'ble Division Bench, High Court in Appeal bearing No. FAO (COMM) 102/2022 titled as Shivam Hardware Store Vs Century World, which was dismissed vide Judgement dated 14.07.2022 passed therein.

Appellant was the Defendant and Plaintiff was the Respondent in the subject matter Suit.

Plaintiff's registered Trademark was CP CENTURY. Defendants Trademark was SHIVAM CENTURY.

Besides the registered Trademark, the Plaintiff was also having copyright registrations.

Word CENTURY was displayed in bigger font in the Plaintiff's Trademark while word SHIVAM was displayed in smaller font on the Defendant's Trademark.

Both the parties were in similar business.

The Plaintiff was engaged in manufacturing and marketing of Hardware Goods, Kitchen Hardware and Cabinet Hardware including Lock of Metal etc.

While the Defendant was engaged in manufacturing and marketing of modular kitchen accessories in the state of Delhi NCR.

In the subject matter Suit, interim injunction was passed in favour of the Plaintiff and against the Defendant. The subject matter Appeal was filed by the Defendant against grant of Injunction in favour of the Plaintiff and against the Defendant.

Though SHIVAM was written in larger font on the Defendant's Trademark, still court held that essential part of Plaintiff's and Defendants Trademark was CENTURY.

The Court rejected the argument of the Defendant that no exclusivity can be granted to the term CENTURY , being normal dictionary word, on the ground that the Defendant has miserably failed to establish that the Trademark CENTURY is common to Trademark.

Trademark of the Plaintiff CP CENTURY and Trademark of the Defendant was rightly held in suit as similar. The Defendant was unable to point out any glaring perversity in the order assailed.

The Hon'ble Division dismissed the Appeal following the principles of settled in Wander Ltd. and Another. Vs Antox India P. Ltd.: 1990 Supp SCC 727, as there was no apparent perversity in the order assailed, here no interference is called for.

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

Natco Pharma Vs Union of India

DATE OF JUDGEMENT: 12.07.2022
CASE: W.P.(C)-IPD 91/2021
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justices Prathiba M Singh
CASE TITLE: Natco Pharma Vs Union of India

The Petitioner namely NATCO was the Opponent while Respondent No.2 namely NOVARTIS was the applicant for Patent. NOVARTIS filed PCT application being PCT/US2006/043710 on 8th November, 2006 which had 85 claims.

Subsequently Indian application bearing no. 4412/DELNP/2007 titled “PHARMACEUTICAL COMBINATIONS OF AN ANGIOTENSIN RECEPTOR ANTAGONIST AND AN NEP INIBITOR” was filed on 8th June, 2007 with the Indian Patent Office.

During the pendency of pre grant opposition's filed by inter alia the Petitioner herein, the Respondent No.2 kept on filing applications seeking amendment of the claims. The Petitioner filed pre grant Oppositions against the impugned Patent of the Respondent No.2, which was at that time, containing 17 claims.

Subsequent there to the Applicant namely NOVARTIS filed amended sets of claims along with expert affidavit. This was the expert , which was sought to be cross examined by the Petitioner/Opponent namely NATCO.

The Opponent argued that the Patent Office ought to have first given a ruling as to whether the amendments filed by the Applicant were allowed and if allowed, which is the final set of claims being considered for grant. Though it was sought to be rebutted by the Applicant that the final set of amended claims which are on record are all claims which are included in Claim Set 3 consisting of claim 1 to 17 which has been supplied to the Opponent.

The Hon'ble High Court of Delhi was pleased to dispose of the said Writ Petition.The Hon'ble Court relied upon the Judgement namely UCB Farchim SA v. M/s Cipla Ltd. [W.P.(C) No. 332/2010 order dated 08th February, 2010] to the effect that a pre-grant opposition proceeding is in aid of the examination of the patent application.

The proceeding in a pre-grant opposition and simultaneous examination of a patent application, however, cannot also result in a situation where the pre grant opponent is kept in dark about the developments taking place in the examination process.

This Judgement will off course pave way for bringing out the transparency in adjudication of examination of patent process as well as pre grant Opposition proceeding. The Opponent can not be put in dark. This order ensures that while hearing the Pre grant Opposition proceeding, the Opponent must be aware of as to what is the final claims, the same is going to meet at the time of hearing. Other wise whole process of pre grant opposition proceeding will become otiose.

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

Marico Limited Vs Dabur India Limited.

DATE OF JUDGEMENT: 19.07.2022

CASE: GA No.1 of 2021 & GA No.2 of 2022 In CS No. 264 of 2021

NAME OF HON'BLE COURT: High Court of Kolkata

NAME OF HON'BLE JUDGE: The Honourable Justice Ravi Krishan Kapur

CASE TITLE: Marico Limited Vs Dabur India Limited.

The subject matter Suit seeking relief of disparagement and infringement was filed on the ground inter alia that the pictorial impact of the impugned advertisements demeans and disparages the petitioner’s product.

The Hon'ble Court grant the relief in favour of Plaintiff on the ground The impugned advertisements give an impression that the petitioner’s product is inferior and bad in impression to the respondent’s product.

This order is in line of well settled proposition of law that one can advertised its product to be best, but in this process can not say others product are bad.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539

Excitel Private Limited Vs The Registrar of Trademark

DATE OF JUDGEMENT: 18.07.2022

CASE: CA Comm IPD TM 5 of 2021

NAME OF HON'BLE COURT: High Court of Delhi

NAME OF HON'BLE JUDGE: The Honourable Justice Prathiba M Singh

CASE TITLE: Excitel Private Limited Vs The Registrar of Trademark

Every moment many gigabytes of information are feeded on the internet. Products are being shared , marketed through internet. It has become strong source of marketing the products too. That's why the world has seen emergence of Amzon, Indiamart , ebays etc.

By passage of time every thing changes, ways of communication and knowledge sharing mode too. Present days are days of Technology, days of internet. Advent of internet has introduced many things in life, way of marketing also.

The Judiciary has been posed with task of ease out the tension which emerges from the society. When the world has changes, then judiciary should also change its approach and so has been done in a recent case by the Hon'ble High Court of Delhi.

When on the basis of information available on the internet, if products can be marketed , then why information available on the internet , should not be considered as evidence by the court or Tribunal?

This question was addressed by the Hon'ble High Court of Delhi in Appeal bearing C.A. (COMM.IPD-TM) 5/2021, titled as Excitel Pvt. Ltd. Vs Registrar of Trademark. The Hon'ble High Court of Delhi has disposed off this Appeal vide Judgement dated 18.07.2022, where by it has recognized the value of internet extracts in a judicial proceedings.

The present Appeal was filed against order dated 28.10.2020 where application of the Petitioner namely REELTIME in relation to scientific and technological services was rejected by the Registrar of Trademark.

The Registrar of Trademark, while doing so, observed that Internet extracts do not constitute primary evidence and can only be considered as secondary evidence. Hence, the mark does not have any user. Question is this, whether the quasi judicial authorities , like Registrar of Trademarks can reject the documents downloaded from the internet in such a manner?

The Hon'ble High Court of Delhi , while setting aside the Order of Registrar of Trademarks, observed that rejecting the evidence extracted hereinabove, on the ground that it does not constitute primary evidence would be an incorrect approach inasmuch as the genuineness of the printout can be easily checked by the examiner by accessing the internet at the time of hearing.

The court further indicated that if there is any doubt in respect of printouts that have been filed by the Appellant, at best, the examiner can call for an affidavit under Section 65B of the Information Technology Act, 2000, (hereinafter “IT Act”).

Thus it is clear that internet extracts filed by a party can not be rejected only on the ground that the same do not constitute primary evidence and can only be considered as secondary evidence. Be it a judicial proceeding before a court or a quasi judicial authority, like registrar of Trademark.

There is always an option to direct a party to file requisite affidavit in support of internet extracts under Section 65 B of the Evidence Act. Thus the Hon'ble Court taken cognizance of internet extracts also. That can be considered in a judicial or quasi judicial proceeding both , provided requisite affidavit under Section 65 B of the evidence Act.

Ajay Amitabh Suman, IPR Advocate

Hon'ble High Court of Delhi

ajayamitabh7@gmail.com

9990389539

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