ITC Limited Vs Muralidharan Nair

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Order Date:24.08.2022
Case No. GA/1/2016 in CS No.272/2016
Calcutta High Court
Krishna Rao
ITC Limited Vs Muralidharan Nair

Joinder of Several causes of action is permissible in law provided that they are intimately connected so as to justify their being included in one suit.

Where there are two more causes pending in the Court and it appears that some question of law or fact arises in both or the suits or that the rights to relief claimed in the suits are in respect of or arise out of the same transaction or series of transaction or that for some other reason, it is desirable to make an order directing consolidation of suits.

The cause of action for infringement of Trademark and passing off are almost same.

In order to determine whether the defendants mark is similar to the
plaintiff’s mark or imitation of the plaintiff’s mark, the same tests would have
to be followed both in case of infringement and passing off.

Accordingly the Plaintiff was allowed to join together with its causes of action against the defendants in respect of infringement and passing off of its trademark “AKSHAYA” and “AASHIRVAAD” and to have the same tried and adjudicated upon joint in CS 272 of 2016.

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

Star India Private Limited Vs MHDTV.WORLD

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Order Date:22.08.2022
Case No.CS(COMM) 567/2022
Delhi High Court
Prathiba M Singh
Star India Private Limited Vs MHDTV.WORLD

The Subject matter Suit was filed against various rogue websites apprehending that these rogue websites are likely to illegally
stream and telecast the Asia Cup Cricketing events scheduled from 27th
August, 2022 onward.

The main problem with these websites are that these websites surface frequently, and on a periodic basis, as domain names can be registered with minor modifications, and the content of the website can be very easily moved from one website to the another one.

Accordingly 11 rogue websites were restrained from hosting, streaming, broadcasting, rebroadcasting, retransmitting or in any other manner communicating to the public, or disseminating to the public, any cricketing events, extracts, excerpts, highlights in relation to cricket matches relating to the Asia Cup 2022 commencing from 27th August, 2022 to 11th September, 2022.

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

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Dhani Aggarwal Vs Mahesh Yadav

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Order Date:22.08.2022
Case No.FAO-IPD 23/2021
Delhi High Court
Navin Chawla, H.J.
Dhani Aggarwal Vs Mahesh Yadav

In case a party itself has applied for obtaining Trade mark registration, can he take plea of the Trademark being common to Trade?

Or in other words, whether defence of publici juris is available to a party , who it self applied for obtaining Trade mark application?

This was one of the issue before the Hon'ble High Court of Delhi in Appeal bearing No.FAO-IPD 23/2021 titled as
Dhani Aggarwal Vs Mahesh Yadav.

This Appeal was filed by the Appellant whereby interim injunction application of the Appellant was allowed in part.

The subject matter Suit was filed by the Appellant on the basis of proprietary rights in the Trademark RAMU.

Suit was filed against use of Trademark RAMAA by the Respondent.

The Ld. Trial Court , after observing Trade Mark RAMU and RAMAA not to be similar, however was pleased to restrain the Respondent from using outer similar trade dress.

But the Ld. Trial Court also allowed the Respondent for using the inner packaging. It was this order, which was challenged by the Appellant/Plaintiff in the present Appeal.

The Court observed that though the Appellant's Label , but the dominant feature of the Appellant's Trademark/Label was RAMU , hence the word mark RAMU in the label is also equally worth of protection. Para 26.

Appellants goods were khurmani , munnakaa , but Respondents goods were Almod. Though the Appellant did not deal with Almond however competing products of the parties were held to be allied and cognate goods, being sold on the shape shop. Hence there was possibility of confusion. Para 29

Trademark of the Appellant i.e RAMU and Respondent's Trademark RTC RAMAA were held deceptively similar to each other. Para 38.

The Hon'ble Court rejected this argument of the Respondent that Appellant is not using the Trademark which is registered in its favour, hence is liable to be cancelled, on the ground that this ground has not been taken in the written statement. Para 49-50.

Word RAMU was held to be arbitrary in relation to Appellant's products i.e. dry products. Para 53

As the Respondent itself has applied for Trademark registration for trademark RAMAA hence the same is estopped from alleging the trade mark of Appellant i.e. RAMU to be publici juris. Para 53

The Court has reiterated this law in the ground that when a party itself asserts trade mark right by applying for Trademark , then he can not take contrary plea of the trademark being common to trade.

Accordingly the subject matter Appeal was allowed and the Respondents were restrained from using the impugned Trademark RAMAA.

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

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Astral Poly Technik Vs Astralglee

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Order Date:22.08.2022
Case No.CS (Comm) 440 of 2020
Delhi High Court
Navin Chawla, H.J.
Astral Poly Technik Vs Astralglee

Plaintiff filed the subject matter Suit on the basis of proprietary right in the Trademark ASTRAL in relation to their goods and business of  manufacturing, distributing and selling of high-quality pipes, parts and fittings for use in plumbing, sewage and drainage, agriculture, surface drainage, industrial use, fire protection, cable protection, urban infrastructure, insulation; adhesives and ancillary products such as clams, hangers, pipe flanges and connectors; surface and glass cleaners, sanitizers, stain removers and surface protectants.

Plaintiff was also having Trademark registration for the Trademark ASTRAL in class 03 in relation to Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The subject matter Suit was filed against the Defendant for their impugned  user of Trademark ASTRALGLEE in relation to retail, wholesale, import, export, trading, marketing and advertising of essential oils, cosmetic products.

The Hon'ble High Court of Delhi , vide afore mentioned Judgement dated 22.08.2022 , was pleased to restrain  the defendant from using the trademark ASTRALGLEE after holding that Trademark ASTRALGLEE of the Defendant is similar to ASTRAL trademark of the Plaintiff.

While doing so, the Hon'ble Court refuted the argument of the Defendant regarding non user of registered Trademark of the Plaintiff after observing that no step has been taken by the Defendant to seek cancellation of Plaintiff's registered Trademark.

The Hon'ble High Court of Delhi also observed that once the court reached this conclusion that there is possibility of confusion vis a vis user of the Defendant, then this fact become immaterial whether the adoption of the Defendant is honest or not? After observing that the Defendant itself has applied for obtaining registration for trademark ASTRALGLEE the same can not take the plea to be common to trade, rightly interim injunction application of the plaintiff.

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

G M Modular Vs Syska Led

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Order Date:22.08.2022
Case No.CS (Comm) 329 of 2021
Delhi High Court
Navin Chawla, H.J.
G.M.Modular Vs Syska Led 

The Subject matter Suit for Design Infringement was filed by the Plaintiff on the basis of its registered design of the ‘LED Surface Light’, duly registered with the Controller of Design, under Design No. 282812, dated 22.04.2016, in Class 26-03. 

The Suit was filed before the Ld.District Court Delhi where in initially ex parte injunction was granted. However the matter got transferred to Hon'ble High Court of Delhi as plea of invalidity was taken by the Defendant.

The Defendant alleged that the Plaintiff has also obtained Trade Mark registration in relation to same design. Hence by virtue of Section 2 (d )of the Design Act 2000, the Plaintiff is estopped from claiming design right in the same.

Thought plaintiff sought to clarify that the afore mentioned Design and Tradeamrk Registrations were obtained as per law laid down by the Hon'bke High Court of Delhi in Mohan Lal Case, during the relevant time. As of now the Plaintiff has already sought withdrawal of the afore mentioned Design, in view of Carlsberg Judgement.

However the Hon'ble High Court of Delhi rejected this argument of the Plaintiff by observing that filing of the application seeking registration in the shape of the product as a trade mark simultaneously with the application for registration of the same as a design under the Act, would render the registration of the design suspect and disentitle the plaintiff to an ad interim relief. 

The Court further observed that filing of an application seeking cancellation of the registration as a trade mark subsequently will be insufficient to wipe out the disability of such shape being registered as a design. 

Another reason for vacating the ex parte injunction was that the Plaintiff was getting subject matter Design product manufactured from China. Though the Plaintiff argued that the same was getting the subject matter Design product manufactured from China on Job Work basis, however no document substantiating this claim was filed by the Plaintiff. In view of above the Hon'ble High Court of Delhi was pleased to vacate the ex parte injunction granted in its favour.

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

Devarpan Foods Pvt.Ltd. Vs Sukhwant Singh and others

Order Date:17.08.2022
Case No. FAO (Comm) 116 of 2022
Delhi High Court
Vibhu Bakhru and Amit Mahajan, H.J.
Devarpan Foods Pvt. Ltd. Vs Sukhwant Singh and others

The issue of territorial jurisdiction was there in the subject matter Appeal. The Appellant filed subject matter Suit seeking infringement of copyright and passing off.

The Ld. Trial Court allowed the Application of Respondent under Order 7 Rule 10 CPC in part.

The Ld. Trial Court held that the same has jurisdiction to entertain the subject matter suit, in so far infringement of copyright.

However , with respect to passing off, the Ld. Trial Court held that the Plaintiff has failed to substantiate the claim of accrual of cause of action in part within the jurisdiction.

Accordingly, the Plaint was directed to be amended in order to giving up the relief pertaining to passing off.

This was the order, which was under challenge by the Appellant before the Hon'ble Division Bench, High Court of Delhi.

The Hon'ble Division Bench allowed the Appeal on the ground that while deciding the issue of territorial jurisdiction, only averment made in the plaint has to be seen.

As the Plaintiff has made categorical averment in the plaint regarding availability of Respondents product within the territorial jurisdiction, it was held that the Ld. Trial Court does have territorial Jurisdiction to entertain the matter even in relation to passing off action also.

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

Mr. L.V.Degao Vs HTC Corporation

Order Date:04.08.2022
Case No. FAO OS (Comm) 169 of 2022
Delhi High Court
Vibhu Bakhru and Amit Mahajan, H.J.
Mr. L.V.Degao Vs HTC Corporation

Respondent's Trademark: The subject matter Trademark of the Appellant involved was HTC.

Respondent's Goods: Smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head mounted displays, etc.

Appellant's Trade mark: The subject matter impugned Trademark of the Appellant was HTC

Goods of Appellant: Electric hair trimmers, hair clippers and hair dryers

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

The present Appeal was filed against grant of injunction by the Hon'ble Single Judge against the Appellant.

The Appellant applied for trademark HTC in different font. But using in the identical lettering style as that of the Respondent.

Appellant has no explanation for this.

The Appellant changed the lettering style of Trademark HTC and started to use the Trademark, as applied for by them.

However , no relief was granted by the Hon'ble Division Bench as the explanation given by the Appellant for adoption of impugned Trademark was held not to be plausible.

The Appellant was held to be dishonest adopter of the Trademark HTC.

More over the Hon'ble Division Bench was also of the view that because of impugned Trademark HTC by the Appellant in relation to Electric hair trimmers, hair clippers and hair dryers would also create confusion and deception in the minds of customer and product of Appellant and product of Respondent namely Smartphones, mobile phones, personal digital assistant (PDA) devices, virtual reality head mounted displays, etc. are sold under the same shop.

The Hon'ble Division Bench observed that the Hon'ble Single Judge rightly restrained the Respondent from using the impugned Trademark HTC in relation to  Electric hair trimmers, hair clippers and hair dryers. 

Accordingly Appeal was Dismissed.

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

ajayamitabh7@gmail.com, 9990389539

Metis Learning Solutions Pvt.Ltd. Vs Flipkart India Pvt.Ltd.

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Order Date:08.08.2022
Case No.CS (Comm) 393 of 2022
Delhi High Court
Jyoti Singh, H.J.
Metis Learning Solutions Pvt. Ltd. Vs Flipkart India Pvt. Ltd.

Plaintiff's Trademark/Label: EINSTEIN BOX

Plaintiff's Product: Science Kit Tools for kids and boys

Defendant's Trademark/Label: NEWTON BOX

Defendant's Product: Science Kit Tools for kids and boys

Defendant has changed the trademark/name of the 4 products from ‘Newton Box’ to ‘Newton’s Learning Kit.

The Plaintiff sought to raise the argument that EINSTEIN BOX is based on the name of the world renowned and widely known Physicist Albert Einstein while Newton Box is based on the globally known Scientist Sir Isaac Newton and therefore, there is a semantic similarity between the two trademarks.

The Plaintiff also submitted that applying the Mill’s Theory of Associative Memory, in the human mind, when both marks ‘Einstein’ and ‘Newton’ would be regularly presented in relation to a ‘world renowned genius/scientist’, a habit would form where thinking of Einstein shall bring to the mind the word Newton.

However the Hon'ble High Court of Delhi rejected this argument of Plaintiff by observing that Examining the competing marks in the present case, in my prima facie opinion, it cannot be argued by the Plaintiff that the name ‘Newton Box’ has a semantic similarity with ‘Einstein Box’. It needs no reiteration that Sir Isaac Newton was an English Mathematician, Physicist, Astronomer, Alchemist, Theologian and an Author and is well-known for his discoveries in optics (white light composition) and mathematics (calculus) as also for his formulation of the three laws of motion. Elbert Einstein was a German born, Theoretical Physicist, best known for developing the theory of Relativity. Both the geniuses had their own respective contributions and it can hardly be even suggested that anyone would confuse one with the other.

According to the Hon'ble High Court of Delhi , there was no any possibility of confusion and Trade Mark and Trade Dress of the competing parties were apparently different. Accordingly Injunction was vacated subject to few condition.

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

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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

Many times, a party gives a statement in court. What is the sanctity of such a statement given by a party in a court proceeding? Can a party be allowed to act in contravention of a statement given in a judicial proceeding? If the answer is no, then what the court is required to do in the case of such a contravention?

The Hon'ble High Court of Delhi was having an occasion to deal with such a situation in a commercial suit bearing CS (Comm) No.108 of 2021 titled as H.J.
Victoria Foods Pvt. Ltd. vs. Rajdhani Masala Company.

This suit was filed by the plaintiff claiming proprietary rights in trademark RAJDHANI in relation to products such as cereals, grains, basmati rice, atta, spices etc. since the year 1966.

In addition to holding various international trademark registrations, the Plaintiff was the registered proprietor of the trademark RAJDHANI in relation to spices and other products in classes 29, 31, and 32 in India.

The subject matter suit was filed by the Plaintiff against the Defendants seeking relief of infringement and passing off against the use of RAJDHANI Coriander Powder, RAJDHANI Chilli Powder, RAJDHANI Turmeric Powder, etc.

Despite the fact that the Defendants claimed to have used the trade mark RAJDHANI since 1965, no documents were filed to support their claim.

Accordingly, the Plaintiff was held to be a prior adopter and prior user of the subject matter trademark RAJDHANI and an order was passed restraining the Defendants from using RAJDHANI Coriander Powder, RAJDHANI Chilli Powder, RAJDHANI Turmeric Powder, etc.

The defendants filed an appeal against this order, which was pending adjudication. The Plaintiff filed an application under Order 39 2A CPC as, in spite of the injunction order, the defendants' products were available on the market. Accordingly, a Local Commissioner was appointed to investigate the matter.

The Local Commissioner visited the premise of the defendant and submitted a report according to which the defendants were still found to be indulged in the infringing activities in spite of the passing of the restraint order.

When the matter was listed before the Hon'ble High Court of Delhi, they made a statement that they were willing to resolve the matter finally and were also willing to change their trademark from RAJDHANI to RMC.

However, on the next day, they resiled from the statement made to the court and insisted on pursuing the appeal already filed before the Hon'ble Division Bench ,High Court of Delhi. Para 15, 16

On June 2, 2021, when the matter was listed before the Hon’ble High Court of Delhi, the same observed as under:

"8. After having heard detailed submissions for the last three hearings, in view of the conduct of the defendant as recorded previously and in view of the manner in which the Defendants have sought to resile from the submissions made yesterday, i.e., on June 1, 2022, by Ld. Sr. counsel appearing for the Defendants, this Court is, prima facie, of the opinion that the Defendants have brazenly violated the orders passed by this Court by manufacturing, selling, and offering for sale products branded as' Rajdhani’ spices and masalas, post the injunction order dated September 1, 2021."

Thus, we have seen that the Hon'ble High Court of Delhi sought to initiate contempt of court proceedings against the Defendants and gave opportunities to file a reply.

Another important aspect of this case was that the defendants were also found to be in possession of expired products of various other famous trademarks, e.g., Tata, Catch, etc.

When the contempt proceeding was scheduled for hearing, the Defendants tendered unconditional apology by filing an affidavit.

Given the fact that they had earlier resiled from the statement given in court and, in spite of the injunction order, they kept on selling the impugned products, the cost of Rs. 30 lakhs was imposed on the defendant for committing contempt of court. Para 18 (8).

Thus, it is apparent that the Hon’ble Courts do not take withdrawal of a statement given by a party before the court lightly.

The Hon’ble Courts do have a mechanism to punish such parties for contempt of court. Though in the present case, only monetary costs are imposed, the courts can equally send such parties for civil imprisonment as well.

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