Passing Off Action and the Pre-Launch Dilemma

Passing Off Action and the Pre-Launch Dilemma

Introduction:

A crucial question arises when a plaintiff seeks relief for passing off in relation to a product that has not yet been launched. Can a plaintiff establish a case for passing off without the existence of prior goodwill in such a scenario? This article will delve into this intricate issue and provide a legal analysis of the matter.

Understanding Passing Off:

Passing off is a legal doctrine primarily developed to protect the goodwill or reputation associated with a particular product or service. It prevents one party from misrepresenting their goods or services as those of another, leading to confusion among consumers. 

The key elements of a passing off action:

1.Goodwill:

The plaintiff must establish the existence of goodwill or reputation in connection with their product or service. Goodwill can be thought of as the valuable asset that a business builds through its marketing efforts and the satisfaction of its customers.

2.Misrepresentation:

The plaintiff must prove that the defendant has misrepresented their product or service in a way that is likely to cause confusion among consumers, making them believe it is connected with the plaintiff's product or service.

3.Damage: 

The plaintiff must show that they have suffered or are likely to suffer damage as a result of the defendant's misrepresentation.

The Pre-Launch Dilemma:

In the scenario described in scenario where the plaintiff is seeking relief for passing off in relation to a product that is yet to be launched, a critical issue arises concerning the element of goodwill. Since goodwill is a prerequisite for a passing off action, can the plaintiff establish this element when the product is still in development or not yet in the market?

The Plausible Solution:

Pre launch advertisement, Goodwill and mistepresentation:

1. Goodwill in Pre-Launch Stage: 

Goodwill typically develops over time as a result of a business's activities, quality of products, and the public's perception of the brand. In the context of a product that is still in development and not yet in the market, establishing goodwill can be challenging, but it is not impossible. If the plaintiff can show that they have taken concrete steps to develop the product, such as investing in research, development, and marketing, and these efforts have generated a positive reputation and expectation in the market, this can be considered goodwill in the making.

2.Pre-Launch Advertising and Goodwill:

Pre-launch advertising and promotional activities can play a crucial role in building goodwill even before the product is available to consumers. If the plaintiff can provide evidence that their pre-launch advertising efforts have created a positive reputation and anticipation among the relevant consumer base, this can be a strong indicator of goodwill. Consumer expectations, the quality of the product as presented in advertisements, and the reputation garnered through these promotions can all contribute to goodwill.

3.Misrepresentation and Likelihood of Harm: 

In a passing off claim, the plaintiff must also prove that the defendant's actions constitute misrepresentation. This could include actions that could potentially confuse consumers or mislead them into believing that the defendant's product or business is associated with the plaintiff's. If the plaintiff can demonstrate that the defendant's actions would likely harm their reputation and goodwill once the product enters the market, this can support a passing off cllaim, though this can be challenging, especially if the plaintiff's product is not yet in the market.

The Concluding Note: 

While the absence of prior goodwill can be a hurdle, it is not an insurmountable one. Plaintiffs may still have avenues to establish a passing off claim based on their prior reputation on the basis of pre launch advertisement and evidence of misrepresentation. 

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor

Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Ph no: 9990389539

Cross Fit LLC Vs Mr.Renjith Kunnumal and another

Order 39 Rule 2A CPC and Requirement of Willful Disobedience in Legal Proceedings

Introduction:

This article examines a recent case where the plaintiff sought to hold Defendant 1 accountable under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (CPC) for willfully disobeying a court order from July 8, 2021. Defendant 1's defense centers around their claim of not receiving any summons or notice related to the matter. This case also references the Supreme Court's judgment in Food Corporation of India v. Sukh Deo Prasad (2009) 5 SCC 665, which provides valuable insights into the principles governing willful disobedience in legal proceedings.

Order XXXIX Rule 2A of the CPC:

Order XXXIX Rule 2A of the CPC empowers the courts to deal with cases of willful disobedience of court orders. This provision serves as a crucial mechanism to ensure that parties involved in legal proceedings adhere to the orders issued by the court. The objective is to maintain the sanctity of court orders and uphold the rule of law.

The Plaintiff's Allegation:

In the case at hand, the plaintiff alleges that Defendant 1 has willfully disobeyed a court order issued on July 8, 2021. The plaintiff contends that Defendant 1's actions or lack thereof have made them liable to be proceeded against and punished under Order XXXIX Rule 2A of the CPC. To substantiate this claim, the plaintiff must demonstrate that Defendant 1's disobedience was willful and deliberate.

Defendant 1's Defense:

In response to the plaintiff's allegations, Defendant 1 asserts that they never received any summons or notice related to the matter. This defense raises questions about whether Defendant 1 had sufficient knowledge of the court order, making it essential to establish whether their disobedience was truly willful. If Defendant 1 did not receive proper notice, their actions might not constitute willful disobedience but rather a lack of awareness of the court's directives.

The Precedent: Food Corporation of India Vs. Sukh Deo Prasad:

The Supreme Court's judgment in Food Corporation of India v. Sukh Deo Prasad (2009) 5 SCC 665 provides a guiding precedent on the issue of willful disobedience in legal proceedings. This case emphasizes that the power exercised under Order XXXIX Rule 2A of the CPC is similar to the power of civil contempt under the Contempt of Courts Act, 1971. To establish willful disobedience, it must be proven beyond any doubt.

The court in this case stressed that the power to punish for disobedience should be exercised with great caution and responsibility. It explicitly noted that there is no room for "surmises, suspicions, and inferences" while exercising this power. This underscores the importance of clear and incontrovertible evidence in establishing willful disobedience.

The Lack of Conclusive Proof:

Returning to the present case, it appears that Defendant 1's defense revolves around the lack of conclusive proof that they were aware of and involved in the activity related to the court order after the dissolution of the partnership on May 28, 2019. Without clear and irrefutable evidence demonstrating their association with the gym, it becomes challenging to establish willful disobedience beyond a reasonable doubt.

The Concluding Note:

The case involving the plaintiff's allegations against Defendant 1 under Order XXXIX Rule 2A of the CPC highlights the complex nature of willful disobedience in legal proceedings. The principles laid down by the Supreme Court in Food Corporation of India v. Sukh Deo Prasad underscore the need for a high standard of proof to establish willful disobedience. In this context, Defendant 1's defense, based on their claim of not receiving summons or notice, adds a layer of complexity to the case, requiring a thorough examination of the evidence. Ultimately, a clear determination of whether Defendant 1's actions constitute willful disobedience will depend on the strength of the evidence presented and the application of legal principles to the specific facts of the case.

The Case Law Discussed:

Date of Judgement:09/10/2023

Case No. CS(COMM) 251/2021

Neutral Citation No:2023:DHC:7334

Name of Hon'ble Court: High Court of Delhi 

Name of Hon'ble Judge: C Hari Shankar

Case Title: Cross Fit LLC Vs Mr.Renjith Kunnumal and another

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

ITD Cementation India Limited Vs Indian Corporation Limited

Introduction:

In the realm of legal interpretation, one of the fundamental principles guiding the judicial process is the resolution of conflicts between special laws and general laws. It is a well-established doctrine that when a special law and a general law appear to be at odds, the special law must prevail. This principle holds true as a means of ensuring clarity, consistency, and specificity in legal matters. One such instance where this principle becomes pertinent is in the interplay between the Delhi High Court Rules (DHC Rules) and the Code of Civil Procedure (CPC) in India. This article aims to explore the precedence of the DHC Rules over the CPC in certain circumstances, with a focus on Rule 3 of Chapter VII of the DHC Rules, 2018, and its effect on the filing of written statements in civil litigation.

The Doctrine of Special Law Prevailing Over General Law:

The doctrine that a special law prevails over a general law is firmly rooted in the principles of legal interpretation. This doctrine ensures that when two laws seemingly conflict, the specific provisions of the special law take precedence over the general provisions of the overarching law. The rationale behind this principle is to provide clarity and precision in legal matters, preventing conflicts and ambiguities in the application of different laws.

Delhi High Court Rules Vs. CPC: An Overview:

In the context of India's legal landscape, the Delhi High Court Rules (DHC Rules) serve as specialized procedural guidelines for cases within the jurisdiction of the Delhi High Court. On the other hand, the Code of Civil Procedure (CPC) is a general law that governs civil proceedings across India.

Rule 3 of Chapter VII of the DHC Rules, 2018, deals with the procedure for filing an affidavit of admission/denial of documents along with the written statement. The rule stipulates that such an affidavit must be filed simultaneously with the written statement, failing which the written statement will not be accepted for recording.

The Conflict: Rule 3 of DHC Rules vs. CPC:

The conflict arises when the provisions of Rule 3 of Chapter VII of the DHC Rules, 2018, come into apparent contradiction with the provisions of Order XI of the CPC as amended by the Commercial Courts Act. Order XI of the CPC deals with the discovery and inspection of documents in civil suits. The Commercial Courts Act amended Order XI of the CPC, introducing certain changes to the procedure for disclosure of documents.

Resolution: Special Law Prevails:

In the specific context of Rule 3 of DHC Rules, 2018, and Order XI of the CPC as amended, it is imperative to apply the doctrine of special law prevailing over general law. This means that the provisions of Rule 3 of DHC Rules, which explicitly require the filing of an affidavit of admission/denial of documents along with the written statement, must be given precedence over the amended provisions of Order XI of the CPC.

The Effect on filing of Written Statements without affidavit of admission denial:

As a direct consequence of this prioritization of the DHC Rules, it becomes evident that the affidavit of admission/denial of documents is a mandatory requirement for filing a written statement in cases under the jurisdiction of the Delhi High Court. Failure to comply with this requirement would result in the written statement not being accepted for recording.

The Concluding Note:

In the realm of legal interpretation and conflict resolution between special laws and general laws, the principle of the special law prevailing holds true. Delhi High Court Rules, being a specialized set of procedural guidelines, must take precedence over the general provisions of the Code of Civil Procedure. This principle finds application in Rule 3 of Chapter VII of the DHC Rules, 2018, which requires the filing of an affidavit of admission/denial of documents along with the written statement. 

The Case Law Discussed:

Date of Judgement:06/10/2023

Case No. CS (COMM) 844/2017

Neutral Citation No:N.A.

Name of Hon'ble Court: High Court of Delhi 

Name of Hon'ble Judge: Mini Pushkarna, JJ

Case Title: ITD Cementation India Limited Vs Indian Corporation Limited

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

Hindustan Pencils Private Limited Vs Universal Trading Company

The Defence of Honest and Concurrent User in a Trademark Rectification Petition

Introduction:

In the case at hand, we analyze a dispute involving the defense of honest and concurrent user in a trademark rectification petition. The case revolves around the use of the trademark "NATRAJ" with the Natraj device by two parties, the appellant and the respondent.

Background:

The case originated from a ruling by the Hon'ble Single Judge in 1984, which denied the appellant's request to cancel Trade Mark No. 324345 held by the respondent. The appellant, a manufacturer of various stationary products, claimed to have been operating under the trademark "NATRAJ" with the Natraj device since 1957. On the other hand, the respondent contended that they had been using the same trademark in connection with geometrical instruments since 1974, and their mark had been registered in 1981.

Honest and Concurrent Use:

The crux of this case lies in the concept of honest and concurrent use of a trademark. The Hon'ble Division Bench of the High Court of Delhi examined the case and found that neither the appellants nor the respondent used the phrase "Natraj" with the Natraj device exclusively in relation to stationary items. This observation was crucial in granting the respondent the benefit of an honest and concurrent user.

The court's reasoning was that multiple other users had registered similar trademarks. This indicated that the respondent genuinely believed they were using the mark for items distinct from those for which the appellants had already registered the trademark. In other words, the respondent's use of the mark for mathematical instruments was in good faith, believing it did not infringe upon the appellant's registered mark.

Abandonment of Objection:

One critical aspect that worked against the appellants in this case was their failure to provide evidence to support their notice of opposition against the respondent's registration. Despite contesting the respondent's application, the appellants did not produce any substantial proof when given multiple opportunities to do so. Consequently, their objection was abandoned.

The appellants did not take the recourse of filing a review under Section 97(C) or an appeal under Section 109(2) against the abandoned ruling. This omission played a significant role in the dismissal of their appeal.

The Concluding Note:

In trademark disputes, the principle of honest and concurrent use is vital, allowing parties to coexist peacefully when they genuinely use similar marks without infringing on each other's rights. This case serves as a reminder of the importance of providing substantial evidence in trademark objections and the consequences of failing to pursue legal avenues available for appeal or review.

The Hon'ble Division Bench's decision in favor of the respondent underscores the need for a well-documented and legally sound defense in trademark disputes. In this instance, the appellant's failure to substantiate their claims and appeal the abandoned ruling ultimately led to the dismissal of their case, reaffirming the principle of honest and concurrent use in trademark law.

Date of Judgement:31/10/2000

Case No. FAO(OS). 6 of 1985

Neutral Citation No:N.A.

Name of Hon'ble Court: High Court of Delhi 

Name of Hon'ble Judge: Arun Kumar and A.K. Sikri,  JJ

Case Title: Hindustan Pencils Private Limited Vs Universal Trading Company

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

Novozymes Vs Assistant Controller of Patents & Designs

Test of enhanced efficacy in relation to Phytase under Section 3(d) of the Patent Act 1970

Introduction:

This article delves into the case of Patent Application No. 5326/CHENP/2008, titled "Phytase Variants with Improved Thermostability," which raised pertinent questions regarding the scope of Section 3(d) and the assessment of enhanced efficacy in patent applications.

Background:

The appellant in this case sought a patent for "Phytase Variants with Improved Thermostability." The patent application was initially rejected by the Controller of Patents on November 15, 2016. The rejection was based on two key sections of the Patent Act of 1970: Section 3(e) for certain claims (Claim Nos. 8 to 11) and Section 3(d) for the main claims of the application.

Section 3(e) and Claim Nos. 8 to 11:

Claim Nos. 8 to 11 were rejected under Section 3(e) of the Patent Act, which deals with inventions dealing with composition lacking synergism. The court upheld this rejection since the appellant failed to demonstrate that the composition claimed was more than the sum of its parts, essentially finding that the patent lacked synergism.

Section 3(d) and Enhanced Efficacy:

The primary focus of this case rested on the rejection of the main claims under Section 3(d) of the Patent Act of 1970. Section 3(d) is a crucial provision that restricts the patenting of new forms of known substances unless they exhibit significantly enhanced efficacy. This provision has been the subject of numerous legal disputes and has raised questions about what constitutes "enhanced efficacy."

The appellant contended that their invention's improved thermostability should be construed as an enhancement of a known substance, phytase. To support this claim, the appellant relied on Example 8 and Table 5 of the specification, which demonstrated improved thermostability of the phytase variants.

The respondent did not contest the improved thermostability but argued that thermostability was a natural or desirable property of phytase and that increased thermostability alone did not signify increased efficacy.

Analysis of Enhanced Efficacy:

The critical issue before the court was whether improved thermostability amounted to enhanced efficacy under Section 3(d). The court's decision rested on the understanding that phytase primarily acts as a catalyst to expedite digestion, and improved phytate hydrolysis leading to the enhanced conversion of indigestible phosphorus to digestible form was not a mandatory requirement to establish improved phytase efficacy.

The court's reasoning was based on the premise that if a phytase variant could withstand and remain functional at higher temperatures due to increased thermostability, it inherently contributed to the improved efficacy of the enzyme in real-world applications. As the patent application demonstrated increased thermostability, which was not contested by the respondent, the court concluded that the Ld. Controller's decision to invalidate the patent under Section 3(d) was unwarranted.

The Concluding Note:

This case provides valuable insights into the interpretation and application of Section 3(d) of the Patent Act of 1970. It underscores the importance of a nuanced analysis of enhanced efficacy in relation to subject matter biochemical product namely Phytase and highlights that improvements in properties relevant to an invention's function, such as thermostability in this case, can indeed constitute enhanced efficacy.

Date of Judgement:20/09/2023

Case No. (T) CMA (PT) No.33 of 2023 (OA/6/2017/PT/CHN)

Neutral Citation No:N.A.

Name of Hon'ble Court: High Court of Madras

Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, JJ

Case Title: Novozymes Vs Assistant Controller of Patents & Designs

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

B.K. Engineering Co. Vs Ubhi Enterprises and Anr.

The Protection of Goodwill in Passing Off Actions

Introduction:

Passing off is a legal remedy designed to protect a trader's goodwill and prevent unfair competition by preventing others from misrepresenting their goods or services as those of another. In the case at hand, the Plaintiff and Defendant are both engaged in the business of cycle bells, with similar marks - BK for the Plaintiff and BK 81 for the Defendant. This article analyzes the nature and scope of passing off actions, as exemplified by the case before the Hon'ble Division Bench of the High Court of Delhi.

Goodwill as the Protected Interest:

Passing off actions primarily aim to safeguard a trader's property in their business goodwill. Goodwill is the valuable asset arising from the reputation and customer loyalty that a business has built over time. It represents the intangible value attached to a business and its products or services. The invasion of this goodwill through misrepresentation is the crux of passing off actions.

The False Suggestion and Reputation Damage:

In the case under consideration, the Defendant's use of the mark BK 81 alongside the Plaintiff's well-established BK mark created a false suggestion that their businesses were connected. This misrepresentation had the potential to damage the reputation and, consequently, the goodwill of the Plaintiff's business. Customers could be misled into believing that the Defendant's products were associated with the Plaintiff's, which could lead to confusion and loss of trust.

The Significance of house mark B.K.:

The Plaintiff's use of B.K. as their house name and in connection with their business is significant. These two letters had become associated with their products, serving as a symbol of the quality and reliability of their cycle bells. The fact that the Plaintiff had been in the manufacturing line since 1971 and had used the B.K. mark underscores its importance to their business.

Defendant's Claim of Adopting the Trademark:

The Defendant attempted to defend against the passing off action by claiming that they adopted the trademark BK from their mother's name. However, the Hon'ble Division Bench of the High Court rejected this argument. The court assessed the likelihood of injury to the Plaintiff's business and found that the Defendant's use of BK 81 was likely to cause confusion and harm the Plaintiff's goodwill.

The Concluding Note:

In this passing off action, the High Court of Delhi recognized the fundamental principle that passing off actions protect a trader's property in their business or goodwill. The false suggestion that the Defendant's business was connected to the Plaintiff's posed a genuine threat to the Plaintiff's reputation and goodwill. As a result, the court granted interim relief in the form of an injunction to prevent further harm to the Plaintiff's business. This case serves as a valuable illustration of the legal principles underlying passing off actions and the importance of safeguarding a trader's goodwill in the realm of business and commerce.

Case Law Discussed:

Date of Judgement:12/11/1984

Case No. First Appeal No. 99 of 1984

Neutral Citation No:N.A.

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: A.B. Rohtagi and Gian Chand Jain , H J.

Case Title:  B.K. Engineering Co. Vs  Ubhi Enterprises and Anr.

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

Dominos Ip Holder Llc & Anr. vs Ms Dominick Pizza

The Court's Role in Determining confusion and deception with respect to Trademarks

Introduction:

The case at hand revolves around a critical legal question: whether competing trademarks, specifically those of the plaintiff, Domino's Pizza, and the defendant, DomiNick's Pizza, are misleadingly similar. This article provides a detailed analysis of the case, exploring the plaintiff's claims, the defendant's actions, and the court's decision, while also examining the role of the court in making such determinations.

Background:

The plaintiff, Domino's Pizza, asserts ownership rights over the Domino's Pizza trademark, dating back to 1965. This lawsuit was initiated by the plaintiff against the defendants for their use of the DomiNick's Pizza trademark. Moreover, the defendants have imitated the plaintiff's registered trademarks, "CHEESE BURST" and "PASTA ITLAIANO," for other culinary items they offer. Both parties operate in the pizza and fast food industries, adding complexity to the case.

The factual Context:

The plaintiff claims to have registered several trademarks in India as early as 1986. Domino's Pizza entered the Indian market in 1996, opening its inaugural restaurant in New Delhi. According to the plaintiff's assertions, they commenced business operations in India at that time and expanded rapidly, reaching 1,567 locations across more than 337 cities in the country by the time the lawsuit was filed.

The Court's eye is determinative of confusion Test:

The core issue before the honorable court is whether the trademarks employed by both parties, Domino's Pizza and DomiNick's Pizza, are likely to mislead consumers. Notably, the court articulated a significant observation in response to this question: the determination of whether the defendant's mark causes confusion rests within the subjective discretion of the court and should not rely on customer evidence.

Intent to Replicate:

The plaintiff argued that the defendant's use of their trademarks for "CHEESE BURST" and "PASTA ITLAIANO" serves as evidence of an intent to replicate the plaintiff's branding. In support of this argument, the court referred to a well-established legal principle articulated by Lord Justice Lindley in the case of Slazenger & Sons vs. Feltham & Co (1889) 6 RPC 531, which is as under:

“One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?”

This principle emphasizes the importance of exercising common sense and recognizing an intent to deceive, even if success is not guaranteed. Essentially, if a party is actively attempting to deceive, it should not be assumed incapable of achieving its goal.

The Court's Verdict:

Relying on the aforementioned established legal principle and the clear evidence of the defendant's intent to copy the plaintiff's trademarks, the court ruled in favor of the plaintiff, Domino's Pizza. The court found the defendant, DomiNick's Pizza, guilty of violating the plaintiff's registered trademarks.

The Concluding Note:

The case of Domino's Pizza vs. DomiNick's Pizza highlights the vital role of the court in determining trademark similarity and protecting intellectual property rights. The court's decision, grounded in well-established legal principles and an acknowledgment of the intent to deceive, reinforces the significance of safeguarding trademarks in the realm of commerce. This case serves as a testament to the court's responsibility in adjudicating complex intellectual property disputes and upholding the integrity of trademarks in the business world.

The Hon'ble Court decreed the suit after observing the aforementioned well-established legal principle and finding the defendants guilty of violating the plaintiff's registered trademarks.

Case Law Discussed:

Date of Judgement:26/09/2023

Case No. CS. No.587 of 2022

Neutral Citation No:2023:DHC:7126

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar , H J.

Case Title: Dominos Ip Holder Llc & Anr. vs Ms Dominick Pizza

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Fox & Mandal and Ors Vs Somabrata Mandal and Ors

Goodwill of a Partnership Firm Vests with the Firm Only

Introduction

The case at hand involves a complex legal dispute surrounding the trademark "FOX & MANDAL" and a passing-off lawsuit filed by Petitioner No. 1, a partnership company, against Respondents No. 1 and 2. This article delves into the key legal arguments and decisions made by the Honorable Court in this matter.

Background:

The Respondents claimed  to presented themselves to been providing legal services since 1896, and associated with Petitioner No 1 firm  Both parties hold trademark registrations for it. The crux of the issue lies in the alleged attempt by Respondents No. 1 and 2 to pass off their services as those of Petitioner No. 1, emphasizing a 125-year legacy.

A crucial aspect of this case is the involvement of Respondent No. 1, who is the son of one of the partners of Petitioner No. 1 firm. Furthermore, Respondent No. 2 was formed by one of the  former partners of Petitioner No. 1 and father of Respondent No 1 .These intricate relationships add layers of complexity to the dispute.

The Grievance and Arguments:

The crux of the Petitioners' grievance stems from articles published on October 15, 2022, in various newspapers and online portals, which referred to Respondents No. 1 and 2 as India's oldest law firm since 1896. This led to the passing-off lawsuit filed by Petitioner No. 1.

In response, the Respondents argued that Petitioner No. 1 lacked the exclusive ownership to possess the "Fox & Mandal" trademarks. They contended that, since the passing of father of Respondent No 1,  the Mandal family has retained ownership of the family marks, including variations like "Fox and Mondal" or "F & M." Additionally, Respondent No. 1 claimed ownership of a portion of late Dinabandhu Mandal's goodwill associated with Petitioner No. 1 firm.

The Legal Analysis:

The Honorable Court's analysis hinged on the fundamental principle that any goodwill generated by a partnership is considered an asset of the partnership itself. Although each partner may have an interest in the partnership's assets, this does not translate into individual ownership of those assets.

In this context, the Court established that Petitioner firm unequivocally owns the goodwill associated with the trademark "Fox & Mandal." Consequently, the Court's decision affirmed that Respondents No. 1 and 2 are not entitled, under any circumstances, to use Petitioner No. 1's trademarks or business name.

The Concluding Note:

The Court clarified that Respondent No. 1, as the successor of the late Dinabandhu Mandal, is solely entitled to monetary compensation for any claim related to the goodwill but not to the use of the trademarks or business name. As a temporary remedy, an injunction was issued against the Respondents to prevent further infringement. This case serves as a significant legal precedent emphasizing the principle that goodwill of a partnership firm is an asset belonging to the firm itself. 

Case Law Discussed:

Date of Judgement:27/09/2023

Case No. CS. No.269 of 2022

Neutral Citation No: N.A.

Name of Hon'ble Court: High Court of Calcutta

Name of Hon'ble Judge: Ravi Krishan Kapur , H J.

Case Title:Fox & Mandal and Ors Vs Somabrata Mandal and Ors

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

Amrish Aggarwal Vs Venus Home Appliances

Leave of Court under Section 124 of Trademarks Act 1999, Post Filing of Rectification Petition

Introduction:

The interplay between the Trademarks Act of 1999 and the legal procedures governing trademark disputes often raises complex questions. One such question, which came before the Hon'ble High Court of Delhi, pertains to the timing of filing a rectification petition and the necessity of obtaining leave of court under Section 124(1)(ii) of the Trademarks Act. This article delves into the recent judgment of the Delhi High Court in the context of TM 1111/2016 and examines the implications of filing a rectification petition before the court addresses the validity of the defendant's mark.

Background:

In TM 1111/2016, the plaintiff alleged trademark infringement by the defendant with respect to the VENUS trademark. The defendant responded by questioning the validity of the VENUS mark in a written statement. As per Section 124(1)(ii), proceedings must be delayed for three months to allow the court to determine the validity of the trademark in question.

The Controversy:

However, in an interesting turn of events, the defendant filed a rectification petition before it obtained the leave of Court under Section 124 of Trademarks Act 1999. This action prompted a legal debate on whether such a rectification petition, filed prior to the court framing any issues related to the trademark's validity, should be deemed maintainable.

The Precedent:

The petitioner relied on a Division Bench decision of the Delhi High Court in (2010) 43 PTC 479, titled "Puma Stationer P. Ltd. Vs. Hindustan Pencil Ltd." In this case, the court approved the earlier decision in AIR 1985 Del 258, "Elofic Industries (India) Vs. Steel Bird Industries." Notably, in these cases, the rectification petition was filed simultaneously with a written statement before any issue regarding trademark validity was framed.

The Delhi High Court's Ruling:

The Hon'ble High Court of Delhi, in light of the Puma Stationer Division Bench judgment, held that the rectification petition cannot be dismissed as not maintainable solely because it was filed before the court framed any issues regarding the validity of the VENUS mark. 

The Concluding Note:

The court there fore, by necessary implication, ruled that leave under Section 124 of the Trademarks Act 1999 can be obtained after filing a rectification petition as well, and a rectification petition cannot be denied solely on the basis that such leave was not obtained prior to filing.

Case Law Discussed:

Date of Judgement:27/09/2023

Case No. C.O. (COMM.IPD-TM) 258/2022

Neutral Citation No: 2023:DHC:7127

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: C Hari Shankar , H J.

Case Title:Amrish Aggarwal Vs Venus Home Appliances

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

Star India Pvt. Ltd. Vs Jio Live TV

Rogue Websites and Dynamic Injunction

Introduction:

The recent lawsuit concerning the ICC Men's Cricket World Cup 2023 has raised critical legal issues surrounding the protection of exclusive media rights in the digital age. The Plaintiffs, who hold exclusive global media rights for various ICC events, including the World Cup 2023, have sought legal recourse against the unlawful dissemination and broadcast of matches by rogue websites. This article delves into the legal implications of this case, focusing on the application of dynamic injunctions to safeguard intellectual property rights in the ever-evolving landscape of online piracy.

Background:

The Plaintiffs' claim to exclusive global media rights, which encompass broadcast and digital rights, stems from an agreement dated November 20, 2014, spanning an eight-year period from 2015 to 2023. With the ICC World Cup 2023 on the horizon, concerns have arisen regarding the rampant proliferation of rogue websites that may illegally transmit and broadcast matches or parts thereof to the public. Given the event's global popularity, the likelihood of such unauthorized dissemination is substantial.

Dynamic Injunctions and Their Application:

In the lawsuit, the Plaintiffs invoked a recent ruling in Universal City Studios LLC Vs. Dotmovies.baby 2023:DHC:5842, where the court granted a Dynamic injunction. This innovative legal remedy provides protection not only for existing works but also for future works that may be created during the pendency of the suit. The primary aim is to prevent infringement of intellectual property rights while content is generated, bridging the gap until judicial intervention occurs.

The Court's Interim Injunction:

Recognizing the imminent threat posed by rogue websites engaged in copyright infringement, the Court issued an interim injunction to protect the Plaintiffs' rights during the ICC World Cup 2023. This injunction aimed to prevent unauthorized dissemination of cricket match content and any related information without the Plaintiffs' consent. Importantly, the Court's decision acknowledged the persistent nature of online piracy, with rogue websites likely to persistently distribute protected content to the public.

The Dynamic Injunction:

Underpinning the Court's decision was the concept of dynamic injunctions. The Court authorized the Plaintiffs to notify the Department of Telecommunications (DoT) and the Ministry of Electronics and Information Technology (MeitY) regarding any rogue websites illegally streaming or communicating content during the ongoing World Cup matches. In response to such notifications, Internet Service Providers (ISPs) were obligated to promptly block the infringing websites.

This dynamic injunction mechanism recognizes the evolving nature of online piracy. It empowers copyright holders to swiftly address emerging threats by identifying and blocking rogue websites that may attempt to evade enforcement through the creation of mirror websites or similar tactics. By involving government agencies and ISPs, this approach ensures that intellectual property rights are upheld even in the face of rapidly changing online environments.

The Concluding Note:

The case involving the ICC Men's Cricket World Cup 2023 highlights the significance of dynamic injunctions in safeguarding intellectual property rights, particularly in the context of online piracy. By granting interim protection and enabling swift action against rogue websites, the Court has taken a proactive stance in preserving the exclusivity of media rights.

Case Law Discussed:

Date of Judgement:27/09/2023

Case No. CS Comm 688 of 2023

Neutral Citation No: 2023:DHC:7112

Name of Hon'ble Court: High Court of Delhi

Name of Hon'ble Judge: Prathiba M Singh , H J.

Case Title:Star India Pvt. Ltd. Vs Jio Live TV

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539 

M Bank S.A Vs European Union Intellectual Property office

The Figurative Element of a Trademark and Its Dominance

Introduction:

 In the case of MBank S.A. Vs. European Merchant Bank UAB (EMBANK), the central issue revolved around the figurative element of a trademark and its dominance in determining the likelihood of confusion. This article provides a detailed analysis of the case and its implications for trademark law within the European Union.

Background:

The case at hand pertains to a trademark dispute between MBank S.A. (hereafter referred to as the petitioner) and European Merchant Bank UAB (hereafter referred to as the intervener). The dispute arises from the registration of the mark "EMBANK" with a figure element by the intervener on April 9, 2019. Subsequently, the petitioner filed a request for the invalidity of this mark with the European Union Intellectual Property Office (EUIPO) on October 23, 2019, based on the existence of an earlier EU figurative mark, "MBANK," registered on October 3, 2018.

The Case Proceedings:

On July 16, 2020, the Cancellation Division initially upheld the petitioner's request for a declaration of invalidity, primarily based on the existence of the earlier MBANK word mark registered in Poland. However, this decision was later set aside by the Board of Appeal, and the plea for a complete declaration of invalidity was denied, a decision subsequently affirmed by the Fifth Board. The case then progressed to the Eighth Board.

The Dominance of Figurative Elements:

The pivotal aspect of the Eighth Board's decision lay in its consideration of the dominance of the figurative element in trademarks when assessing the likelihood of confusion. The board emphasized that the overall impression given by the signs, specifically their distinctive and dominant elements, must be taken into account in this assessment, encompassing visual, phonetic, and conceptual similarities.

In this particular case, both the petitioner's earlier MBANK mark and the intervener's EMBANK mark contained both a letter element (the word "BANK") and a figure element (the figurative part of the mark). However, the Eighth Board made a noteworthy determination. It held that the figurative feature of the intervener's mark was the most distinctive aspect of the challenged mark.

This decision was significant because it effectively eliminated any chance of confusion between the two marks. The figurative element of the contested EMBANK mark was described as unrelated to the services it represented, making it the dominant feature. Consequently, the figurative element's lack of relevance to the services rendered the marks distinct from each other.

Implications for Trademark Law:

The MBank S.A. case highlights the importance of considering the dominance of figurative elements within trademarks when assessing the likelihood of confusion. Trademark law, particularly in the European Union, emphasizes a holistic evaluation of marks, encompassing visual, phonetic, and conceptual aspects. This approach ensures that trademarks are protected not only in their letter element but also it's figurative element in terms of their most distinctive and dominant features.

Furthermore, this decision underscores the principle that trademark distinctiveness can be influenced by factors such as the relevance of figurative elements to the goods or services in question. In cases where a figurative element lacks significance and is unrelated to the core business activities, it may emerge as the dominant element, ultimately preserving the distinctiveness of the mark.

The concluding Note:

The MBank S.A. Vs. European Merchant Bank UAB case serves as a valuable precedent in trademark law, shedding light on the significance of the figurative element's dominance when assessing the likelihood of confusion. By emphasizing the relevance of the dominant features and their impact on distinctiveness, this decision contributes to the evolving landscape of trademark protection within the European Union.

Case Law Discussed:

Date of Judgement:12/07/2023

Case No. T-261/22

Neutral Citation No: NA

Name of Hon'ble Court: THE GENERAL COURT (Eighth Chamber)

Name of Hon'ble Judge: Kornezov, President, G. De Baere (Rapporteur) and S. Kingston, Judges,

Case Title:M Bank S.A Vs European Union Intellectual Property office

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Advocate Ajay Amitabh Suman,

IP Adjutor: Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539