L. Prakasam Reddy Vs Paras Medical Publishers

Interplay of Prima Facie Case and Irreparable Loss in Interim Injunctions

Abstract:

This legal article delves into the intricate dynamics surrounding the significance of irreparable loss and damages at the interim injunction stage, drawing insights from a recent case before the Hon'ble High Court of Telangana. 

The case involves a dispute over copyright infringement, where the plaintiff, despite successfully establishing a prima facie case, stumbled in demonstrating irreparable loss. 

The subsequent decision by the High Court of Delhi to set aside the interim injunction order adds a layer of complexity to the discourse on the delicate balance between intellectual property protection and the necessity of irreparable harm for injunctive relief.

Introduction:

The granting of interim injunctions occupies a crucial space in legal proceedings, particularly in cases involving intellectual property rights. A nuanced interplay exists between establishing a prima facie case and demonstrating irreparable loss and damages, as exemplified by the case before the Hon'ble High Court of Telangana.

The Prima Facie Case:

The plaintiff's success in presenting a prima facie case hinged on the production of a deed of assignment, effectively showcasing the transfer of copyright in the disputed textbook from the appellants to the plaintiff. The trial court, recognizing the strength of this evidence, allowed the application for a temporary injunction, restraining the defendants from further printing, publishing, or distributing the copyrighted material.

The Quandary of Quantified Damages:

A pivotal moment arose when the plaintiff quantified the damages and loss at an ascertainable amount of Rupees one Crore. This self-assessment by the plaintiff raised a critical question regarding the existence of irreparable loss and injury. The court was now faced with a situation where the financial impact seemed quantifiable, potentially leading to a reevaluation of the necessity for injunctive relief.

The High Court's Decision:

In response to the plaintiff's own estimation of damages, the High Court of Delhi intervened by setting aside the interim injunction order. The court's rationale rested on the principle that, despite the establishment of a prima facie case, the plaintiff failed to fulfill the essential requirement of demonstrating irreparable injury. The court's decision reflects a cautious approach, underscoring that a mere prima facie case, no matter how robust, does not automatically warrant interim injunction if irreparable harm is not convincingly established.

The Concluding Note:

The case analysis highlights the intricate dance between establishing a prima facie case and demonstrating irreparable loss in the context of interim injunctions. It serves as a reminder that, even with a strong initial showing, the necessity of irreparable harm remains a pivotal factor in judicial considerations. This delicate equilibrium ensures that injunctive relief is reserved for situations where the potential harm transcends mere quantifiable damages, contributing to a judicious and balanced legal framework.

The Case Law Discussed:

Date of Judgement/Order:09/11/2023

Case No. Civil Misc Appeal No: 318 of 2023

Neutral Citation No: N.A. 

Name of Hon'ble Court: Telangana High Court

Name of Hon'ble Judge: ALOK ARADHE N.V.SHRAVAN KUMAR , HJ

Case Title: L. Prakasam Reddy Vs Paras Medical Publishers

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, 

Mob No: 9990389539

Globela Pharma Private Limited Vs Jigar Thakar

The Dynamics of Trademark User Amendment

Introduction:

The legal landscape surrounding trademark disputes often hinges on meticulous pleadings and the clarity of assertions made by parties involved. A recent case before the Hon'ble High Court of Gujarat has brought to light the intricate question of whether a party is entitled to modify the claimed trademark user through an amendment.

Background:

The Plaintiff in this case contended the use of the trademark "GLOBELA" since 2006 and asserted prior usage rights. The Defendant, without specific denial, also asserted the use of its trademark from the same year. However, a pivotal development occurred when the Defendant sought to amend its claimed user from 2006 to 2005 via a written statement.

Trial Court's Decision:

The Trial Court, in its order, allowed the Defendant's application for amendment, justifying it by stating that the amendment merely sought to specify the exact date of user. According to the Trial Court, this adjustment did not alter the substantive nature of the case.

High Court's Intervention:

Challenging the Trial Court's decision, the case was brought before the Hon'ble High Court of Gujarat. The High Court, in its wisdom, set aside the Trial Court's order, citing critical reasons for doing so.

High Court's Reasoning:

The High Court's foremost observation was rooted in the consistency of the Plaintiff's claim of using the trademark since 2006. The Defendant's initial response had aligned with this timeline. However, the sought amendment introduced a fundamental shift, alleging the user since 2005. The High Court deemed this as tantamount to presenting an entirely new case.

Significance of the Amendment:

Crucially, the High Court emphasized that the amendment wasn't a mere clarification or specification of details; rather, it sought to predate the Defendant's claimed user. This temporal adjustment, according to the High Court, altered the substance of the Defendant's case significantly.

Broader Context:

The High Court's decision was also influenced by the broader context of the dispute. The Court considered the Plaintiff's assertion that the Defendant had been in their employment, mirroring the Plaintiff's narrative. The proposed amendment, viewed in this context, was seen as a not just a change in stance but the introduction of a new case that went beyond the scope of a permissible amendment.

The Concluding Note:

This case underscores the nuanced nature of amendments in trademark disputes. While amendments are generally permitted to refine details, introducing a substantially different case, especially in light of the overall context, may face judicial scrutiny. The decision by the Hon'ble High Court of Gujarat serves as a noteworthy precedent, emphasizing the importance of consistency and the potential consequences of amendments that alter the core fabric of a party's case.

The Case Law Discussed:

Date of Judgement/Order:09/11/2023

Case No. R/SPECIAL CIVIL APPLICATION NO. 6595 of 2023

Neutral Citation No: N A 

Name of Hon'ble Court: Gujarat High Court

Name of Hon'ble Judge: N.V.Anjaria and.Nisha M Thokore , HJ

Case Title: Globela Pharma Private Limited Vs Jigar Thakar

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, 

Mob No: 9990389539

Mahle Gmbh Vs Parag Kirnkumar Tatariya

Non-Use and Rectification of Registered Trademark: 

Introduction:

This article delves into a recent legal case involving the cancellation of the registration of the trademark "MAHLE" under Registration No. 2897507 in Class-04, focusing on the grounds of non-use by the registered proprietor, the Respondent.

Background:

The Petitioner, claiming usage of the trademark "MAHLE" since 1938 abroad and having obtained trademark registration in Class 07 in India since 1961, filed a petition seeking cancellation of the Respondent's registration in Class-04. The Respondent had filed the trademark application on 01.02.2015, leading to the legal challenge.

Allegations of Non-Use:

The crux of the Petitioner's argument rested on the assertion that, despite obtaining registration for the mark, the Respondent was not actively using it. The Petitioner's inquiries purportedly revealed the non-use of the trademark by the Respondent.

Legal Proceedings:

The court, upon evaluating the case, observed that the Respondent became a registered proprietor of the trademark "MAHLE" on 20.8.2016. However, critical to the decision was the finding that the Respondent did not use the trademark between 2016 and 2021, a period of five years.

Analysis of Section 47(1)(b) of the Act:

The court's decision to order cancellation was grounded in Section 47(1)(b) of the Trademarks Act. This provision stipulates that a registered trademark may be taken off the register if it has not been used for a continuous period of five years. In this case, the court found that the Respondent's non-use of the mark during the specified period rendered it liable for cancellation.

The Concluding Note:

This case underscores the importance of actively using a registered trademark to maintain its validity. The court's decision to cancel the registration of "MAHLE" emphasizes the statutory requirement of continuous use within the prescribed timeframe. Trademark holders are thus reminded of the need to engage in genuine commercial use to safeguard their registered rights and prevent challenges based on non-use.

The Case Law Discussed:

Date of Judgement/Order:09/11/2023

Case No. R/SPECIAL CIVIL APPLICATION NO. 11855 of 2021

Neutral Citation No: N A 

Name of Hon'ble Court: Gujarat High Court

Name of Hon'ble Judge: Vaibhavi D Nanavati, HJ

Case Title: Mahle Gmbh Vs Parag Kirnkumar Tatariya

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, 

Mob No: 9990389539

The Chocolate Spoon Company Pvt.Ltd Vs Oceanleaf Hospitality

Jurisdictional Challenges with Respect to Leave under Clause XII of Letters Patent

Introduction:

The intricacies of jurisdiction often come to the forefront in legal battles, and a recent case before the Hon'ble High Court of Mumbai has brought the interplay between jurisdiction, leave under Clause XII of the Letters Patent, and the prevention of multiplicity of litigation into sharp focus. 

The Defendant's challenge to the granted leave, hinging on the absence of services within Mumbai's jurisdiction, sets the stage for a nuanced exploration of legal principles.

Defendant's Challenge and Jurisdictional Landscape:

The crux of the Defendant's challenge lies in the absence of provided services within Mumbai, with exclusive outlets in Noida, Uttar Pradesh, and the assertion that no cause of action transpired within the Mumbai jurisdiction. This prompts a careful examination of the jurisdictional scope outlined under Clause XII of the Letters Patent.

Elucidating Clause XII:

The Hon'ble High Court of Mumbai, in response to the Defendant's challenge, offered a comprehensive elucidation of the jurisdictional scope prescribed by Clause XII of the Letters Patent. Emphasizing the pivotal consideration of preventing multiplicity of litigation, the Court underscored the need for a unified legal forum to address related issues efficiently.

Post-Leave Jurisdictional Challenges:

An intriguing aspect of the Court's response is the clarification that Defendants are not barred from raising jurisdictional issues even after the grant of leave under Clause XIV of the Letters Patent. This underscores the flexible nature of jurisdictional considerations and ensures that parties retain the right to contest jurisdiction at various stages of the legal proceedings.

Discretionary Nature of Leave under Clause XIV:

The Court, in emphasizing the discretionary nature of granting leave under Clause XIV, pointed to its prior affirmation of jurisdiction in the trademark infringement suit. This discretionary power was wielded judiciously, as the Court granted Leave to the Plaintiff under Clause XII of the Letters Patent, thereby preserving all rights and contentions, including the Defendants' jurisdictional concerns.

The Concluding Note:

This case before the Hon'ble High Court of Mumbai offers a compelling study of the interplay between jurisdiction, leave under Clause XII of the Letters Patent, and the prevention of multiplicity of litigation. The Hon'ble High Court's nuanced approach in granting leave seeks to strike a delicate balance between preventing the redundancy of litigation and affording the Defendants a fair opportunity to contest jurisdiction.

The Case Law Discussed:

Date of Judgement/Order:08/11/2023

Case No. LEAVE PETITION (L) NO. 25563 OF 2023 IN COMMERCIAL IPR SUIT (L) NO. 24959 OF 2023

Neutral Citation No: N A 

Name of Hon'ble Court: Bombay High Court

Name of Hon'ble Judge: R.I.Chagla, HJ

Case Title: The Chocolate Spoon Company Pvt.Ltd Vs Oceanleaf Hospitality

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, 

Mob No: 9990389539

Polo Lauren Vs Home Needs

The Significance attached to a Well-Known Trademark

Introduction:

In the recent case before the Hon'ble Division Bench of the High Court of Delhi, the issue at hand was whether a court could decline an injunction to a party, despite its trademark being declared well-known, on the grounds of failure to prove local use and reputation. The case involved a dispute between the Plaintiff, holder of the well-known trademark "POLO," and the Defendant using "POLOLIFETIME."

Background:

The Plaintiff had initially secured an ex-parte injunction on 26.11.2020, which was later vacated on 14.07.2023 by the Trial Court. The basis for the vacation was the Plaintiff's purported failure to demonstrate use and reputation in India. Notably, the Plaintiff's trademark had already been declared a well-known trademark by the High Court of Delhi.

Legal Framework:

The Appellant relied on the earlier judgment of the Single Judge of the Delhi High Court in The Polo/Lauren Company L.P. vs. Rohit S. Bajaj & Ors. In that case, the court had already recognized the trademark "POLO" as a 'well-known' mark under Section 2(1)(zg) of the Trade Marks Act, 1999. The Appellant argued that this acknowledgment settled the issue of cross-border reputation in their favor, making subsequent local use irrelevant.

Analysis:

The critical question before the Division Bench was the weight given to the well-known status of a trademark when considering an injunction. The Appellant contended that once a trademark is declared well-known, the presumption of cross-border reputation arises, rendering subsequent local use immaterial.

Significance of Well-Known Trademarks:

The Division Bench, in staying the operation of the Trial Court's order, indicated its inclination towards the Appellant's argument. The implication is that the declaration of a trademark as well-known carries significant weight. In such cases, the burden on the Plaintiff to prove local use may be relaxed, given that the mark has achieved well-known status.

Presumed Cross-Border Reputation:

The key takeaway from this case is the presumption of cross-border reputation attached to well-known trademarks. The Appellant successfully argued that the mere fact that the sale of merchandise commenced later should be irrelevant in the face of a well-established and well-known mark.

The Concluding Note:

The decision of the Hon'ble Division Bench underscores the significance of a well-known trademark in legal proceedings. While local use are traditionally vital elements in obtaining an injunction, the declaration of a trademark as well-known can alter the dynamics. "This case sets a precedent suggesting that once a mark achieves well-known status, the burden on the Plaintiff to prove subsequent local use may be alleviated, emphasizing the global recognition and reputation inherent in well-known trademarks."

The Case Law Discussed:

Date of Judgement/Order:07/11/2023

Case No. FAO (COMM) 213/2023

Neutral Citation No: N A

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, HJ

Case Title: Polo Lauren Vs Home Needs

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,

Mob No: 9990389539

Chandrapal Singh Vs State of U.P

The Quandary of Automatic Stay Vacation in Indian Courts

I. Introduction:

The judicial landscape in India has been significantly shaped by landmark judgments that have not only interpreted the law but also sought to bring about essential reforms in the administration of justice. One such case is Asian Resurfacing of Road Agency (P) Ltd. Vs. CBI, decided by the Hon'ble Supreme Court of India.

In this case, the apex court observed that when applications for injunctions are not decided within six months from the passing of the order, such injunctions would automatically stand vacated, unless reasons are recorded. This directive was later brought under scrutiny in a Full Bench judgment of the Allahabad High Court. This article will analyze the legal implications and practical consequences of this directive in the Indian legal system.

II. (2018) 16 SCC 299 Asian Resurfacing of Road Agency (P) Ltd. Vs. CBI case by Hon'ble Supreme Court of India:

In the Asian Resurfacing of Road Agency case, the Supreme Court found it necessary to address the issue of inordinate delays in the disposal of applications for injunctions. It was observed that such delays could lead to a miscarriage of justice and hinder the efficient functioning of the legal system.

To remedy this situation, the Court formulated a novel approach by invoking its inherent powers under Article 142 of the Constitution, directing that if an application for injunction is not decided within six months from the date of passing of the order, the injunction shall automatically stand vacated, unless reasons are recorded.

III. The Dilemma:

The Allahabad High Court's Full Bench, in its referral, has expressed concerns about the practicality of implementing these directives. Their apprehensions are twofold. First, the automatic vacation of stay orders might lead to adverse consequences for litigants who may not be at fault for the delay in the trial. Second, trial courts are allegedly disregarding interim orders passed by the High Court, which, when combined with the High Court's inability to provide adequate redress to litigants, severely impacts the administration of justice.

IV. Adverse Consequences for Litigants:

The automatic vacation of stay orders after six months, as directed by the Supreme Court, raises the question of whether this is always fair to the litigants. While the intent behind such a directive is to expedite trials, there can be situations where litigants are caught in a Catch-22.

a. Procedural delays:

In India, the legal system often grapples with procedural delays that are beyond the control of litigants. These delays can result from backlog, lack of infrastructure, or administrative issues. b. Complex cases:

Some cases are inherently complex, requiring more time for proper examination and presentation of evidence. The automatic vacation of stay orders might not consider the case's intricacies. c. Unforeseen circumstances:

Litigants may also face unforeseen personal or health issues that make it difficult for them to adhere to the six-month timeline.

d. Disregard of Interim Orders:

The another aspect of this pertains to trial courts disregarding interim orders passed by the High Court. This raises issues related to judicial hierarchy and the importance of adherence to superior court orders. In cases where trial courts deviate from the High Court's directives, it undermines the principle of judicial discipline.

f.Impact on the Administration of Justice: The combined impact of these issues has broader implications for the administration of justice by the High Courts in India. The High Court, as the highest authority in the state for judicial matters, plays a pivotal role in ensuring justice is served efficiently. However, if it is unable to protect the rights of litigants and its orders are not followed by lower courts, the administration of justice is adversely affected.

The Concluding Note:

The reference by Full Bench, Hon'ble High Court of Allahabad. of Asian Resurfacing of Road Agency (P) Ltd. Judgment for reconsideration to Hon'ble Supreme Court of India offers an opportunity for a deeper analysis of its implications and a potential recalibration of the approach. This case highlights the ever-evolving nature of Indian jurisprudence and the constant quest for a balanced and just legal system that serves the interests of all stakeholders, including litigants, lawyers, and the judiciary itself. 

The Case Law Discussed:

Date of Judgement/Order:03/11/2023

Case No. Application U/S 482 No. - 28574 of 2019

Neutral Citation No: N A

Name of Hon'ble Court: Allahabad High Court

Name of Hon'ble Judge: Pritinker Diwaker, Ashwani Kumar Mishra, Ajay Bhanot, H.J.

Case Title: Chandrapal Singh Vs State of U.P

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,

Mob No: 9990389539

Pernod Ricard India Pvt. Ltd. Vs Karanveer Singh Chhabra

Educated Customer and Trademark Confusion

Introduction:

The case at hand involves an appeal filed by the plaintiffs/appellants under Order 43 Rule 1(r) of the Code of Civil Procedure, read with Section 13 of the Commercial Courts Act, 2015. 

The appeal challenges the order of the Commercial Court, Indore, dated 26.11.2020, which rejected the appellants' application for a temporary injunction under Order 39 Rule 1 and 2 of the CPC. 

The core issue in this case revolves around trademark confusion and the question of whether an "educated customer" is less likely to be confused by similar trademarks in the premium and ultra-premium whisky market.

Background:

The appellants are engaged in the business of manufacturing and distributing wines, liquors, and spirits. They market and sell whisky under the trademarks 'Blenders Pride' and 'Imperial Blue'. Additionally, they have been using the 'Imperial Blue' mark since 1997, with distinctive packaging and trade dress.

The dispute arises from the alleged imitation of the appellants' trademarks by the respondents, who have been manufacturing and selling whisky under the trademark 'London Pride.' This situation led to a trademark clash between 'Blenders Pride' and 'London Pride'.

Key Arguments and the Court's Decision:

The appellants argued that the respondents' product, 'London Pride,' created confusion with their trademarks, 'Blenders Pride' and 'Imperial Blue.' However, the Hon'ble High Court rejected the appeal, citing several reasons to support its decision.

1. Distinct Packaging and Trade Dress: 

The Court noted that the bottles of 'Blenders Pride' and 'London Pride' were significantly different. 'Blenders Pride' is round in shape, while 'London Pride' is cylindrical. The labels on the bottles had entirely different patterns.

2. No Confusion for an Average Consumer: 

The Court emphasized that the real test for trademark comparison was an "average consumer with imperfect recollection." Even such a consumer, according to the Court, would not be confused by the two products. A quick glance would reveal their dissimilarity.

3. Different Packaging: 

The boxes in which the bottles were sold also exhibited differences. The box of 'Blenders Pride' was broader than that of 'London Pride.' The writings on the boxes were dissimilar, as were other features such as holograms and the manner in which words were written on the boxes.

4. Educated Customer: 

The Court considered the nature of the products, both being 'premium' or 'ultra-premium' whisky. It presumed that consumers of such products would be educated and possess reasonable intelligence to differentiate between 'Blenders Pride/Imperial Blue' and 'London Pride'.

The decision of the Hon'ble High Court in this case underscores several important principles in trademark law. It emphasizes the significance of a holistic examination of trademarks, including bottle shape, label design, and packaging. Furthermore, the judgment highlights the "average consumer with imperfect recollection" as the standard for assessing trademark confusion, rather than a highly discerning or expert consumer.

The Court's consideration of the education and intelligence of the target market also plays a crucial role. In the context of premium and ultra-premium whisky, the presumption is that consumers are capable of distinguishing between similar trademarks, thus reducing the possibility of confusion.

The Concluding Note:

The case of 'Blenders Pride' versus 'London Pride' exemplifies the meticulous analysis that courts undertake when assessing trademark confusion. It reinforces the principle that even in competitive markets, trademark disputes are resolved based on the perception of the average consumer. In this instance, the educated and discerning nature of the consumers in the premium whisky market played a significant role in the court's decision to reject the appeal.

The Case Law Discussed:

Date of Judgement/Order:03/11/2023

Case No. MISC. APPEAL No. 232 of 2021

Neutral Citation No: N A 

Name of Hon'ble Court:High Court of Madras

Name of Hon'ble Judge: Pranay Verma, H.J.

Case Title: Pernod Ricard India Pvt. Ltd. Vs Karanveer Singh Chhabra

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, 

Mob No: 9990389539

Fullstack Education Pvt.Ltd. Vs Institut Europeen D Administration Des

Inordinate Delay in Pronouncement of Judgment on Interim Application

Introduction:

The subject matter of this analysis revolves around a Letters Patent Appeal filed against a judgment dated 17 May 2023. In that judgment, a learned Single Judge allowed the petition filed by respondent no. 1 under Section 57 of the Trade Marks Act, 1999. The core issue in this case was the similarity between the registered trademark "INSAID" owned by the appellant and the trademark "INSEAD" held by respondent no. 1.

The Case and the Delay:

One of the pivotal grounds on which this order was challenged pertains to the inordinate delay in pronouncing a judgment on an interim application. This delay raised questions about the principles of justice and expeditious disposal of cases in the legal system.

The rectification petition had been initiated back in 2021. Orders for ad interim relief were reserved on 10 September 2021, but after a considerable lapse of time, the matter was reopened. This delay in adjudicating the interim relief application caused frustration for the parties involved. The parties  urged the court to intervene and issue appropriate directions for the petition to be expeditiously considered by the learned Single Judge.

Judicial Intervention and Its Implications:

Considering the compelling circumstances surrounding the delay, the Hon'ble Division Bench allowed the appeal and set aside the judgment dated 17 May 2023. They made a significant decision to remit the matter to the learned Single Judge for a fresh consideration and emphasized the need for expeditious resolution.

This judicial intervention sends a strong message about the importance of timely adjudication in legal proceedings. Inordinate delays in pronouncing judgments, especially on interim applications, can have adverse consequences. It not only prolongs the litigation process but also hampers the rights and interests of parties involved.

The Role of Courts in Ensuring Timely Justice:

This case highlights the role of the judiciary in ensuring that justice is not only done but is also seen to be done promptly. Delay in the legal process can result in severe hardships for the litigants, as they often need quick resolutions to protect their rights or businesses. By remitting the matter for expeditious disposal, the Division Bench has underlined the importance of judicial efficiency.

The Concluding Note:

In conclusion, the case concerning the inordinate delay in pronouncing judgment on an interim application underscores the significance of timely justice in the legal system. It exemplifies the need for courts to actively address delays in the adjudication process and uphold the principles of fairness and efficiency.

The Case Law Discussed:

Date of Judgement/Order:30/10/2023

Case No. LPA 536/2023

Neutral Citation No: N A 

Name of Hon'ble Court:High Court of Delhi

Name of Hon'ble Judge: Yashwant Varma and Ravinder Dudeja, H.J.

Case Title: Fullstack Education Pvt.Ltd. Vs Institut Europeen D Administration Des

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, 

Mob No: 9990389539

ITW GSE APS Vs Dabico Airport Solutions Pvt.Ltd.

The Role of Local Commissioners in Patent Infringement Cases Introduction: The role of Local Commissioners in legal proceedings has been a subject of debate and contention in various cases, and their scope and purpose have been closely examined. In the context of a suit for Patent Infringement, the question arises: can a local Commissioner be appointed at the instance of the Plaintiff to search the premises of the Defendant and inspect the Defendant's products for mapping against the claims of the Plaintiff's patent? This article delves into a case where the Hon'ble High Court of Delhi rejected such a prayer, emphasizing the primary function of Local Commissioners to assist the Court rather than the parties involved. The Case at Hand: In the case under consideration, the Plaintiff filed an application under Order 26 Rule 4, 9, and 10A seeking the appointment of a local Commissioner to visit the Defendant's premises and inspect their PCA units. The purpose was to prepare a technical report mapping the Plaintiff's patent claims with the features of the Defendant's products, thereby demonstrating infringement of the Plaintiff's patent (referred to as IN '145). The Plaintiff's application asserted that, through an analysis of the Defendant's product details, they had confirmed that their patent IN '145 was being infringed by the PCA units manufactured and sold by the Defendant. The applicant argued that an inspection by a local Commissioner would provide the best evidence of infringement to the Court. The Defendant countered this request, contending that the Plaintiff had already claimed to possess sufficient evidence to establish infringement and that the mapping had been done using documents and materials that were not denied by the Defendant. They argued that there was no justification for the Plaintiff's application. The Court's Decision: The Hon'ble High Court of Delhi, in its judgment, supported the Defendant's contention. It emphasized that Order XXVI Rule 10A should not be employed by a party who asserts that they possess ample evidence to support their case and only seeks to gather better evidence. The Court clarified that the provision is intended to assist the Court itself, not to assist any particular party. Analysis: The case discussed highlights an important principle in legal proceedings, particularly in matters of intellectual property and patent infringement. "It reinforces the notion that local Commissioners are primarily appointed to assist the Court in the pursuit of justice rather than to aid one party over the other." In patent infringement cases, where the key question often revolves around the similarity or disparity between the claims of the patent and the defendant's product, it is crucial to appreciate the Court's role in the appointment of local Commissioners.

The Court's function is to ensure that justice is served and that evidence is obtained in a fair and unbiased manner. If a party claims to have enough evidence to support their case, the Court may be hesitant to appoint a local Commissioner, as this could be seen as an attempt to supplement their case rather than to serve the Court's purpose. The Concluding Note: The case under discussion underscores the importance of understanding the fundamental purpose of local Commissioners in legal proceedings, particularly in patent infringement cases. The primary objective is to aid the Court in its quest for impartial justice. Parties must be diligent in their presentation of evidence and should not attempt to misuse the provision of local Commissioners for their own benefit.

The Case Law Discussed:

Date of Judgement/Order:31/10/2023

Case No.CS(COMM) 628/2023

Neutral Citation No: 2023:DHC:7900

Name of Hon'ble Court:High Court of Delhi

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

Case Title: ITW GSE APS Vs Dabico Airport Solutions Pvt.Ltd.

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,

Mob No: 9990389539

Pernod Ricard India Private Limited Vs A B Sugars Limited

Trademark Infringement in Export from India

Introduction:

The case of ROYAL STAG with Device of Stag (hereafter referred to as "Plaintiff") Vs. INDIAN STAG with Device of Stag (hereafter referred to as "Defendant") is a significant legal battle that delves into the complexities of trademark infringement, export, and the use of trademarks in India. 

Both parties are involved in the alcoholic beverages industry, and the Plaintiff had been using its trademark since 1995, with the earliest trademark registration dating back to 1996. 

In contrast, the Defendant was exclusively selling its products for export purposes with bills produced since 2015. The Hon'ble High Court of Delhi granted an interim injunction in favor of the Plaintiff after thoroughly examining the Defendant's defenses.

Trademark Infringement:

The heart of this case lies in the trademark infringement issue. The court invoked Section 29(2)(b) of the Trade Marks Act to analyze the situation. According to this section, if the essential features of the Plaintiff's mark are replicated in the Defendant's mark, infringement is deemed to have occurred. 

In this case, all criteria set forth in the provision were met. The marks were similar, used for the same product, and consequently, there was a likelihood of confusion or association in the minds of consumers with average intelligence and imperfect recollection. Thus, the Defendant was found to have infringed the Plaintiff's mark.

Disclaimer on Trademark Registration:

The Defendant's defense based on the disclaimer attached to the word "ROYAL" was dismissed by the court. The Plaintiff emphasized that the "DEVICE OF STAG" was the essential feature, which had been copied by the Defendant. Consequently, the disclaimer concerning the "ROYAL" part of the Plaintiff's mark, which was granted during the registration of the "ROYAL STAG" mark, was considered irrelevant.

Section 17 of Trademark Act 1999 and Trademark Infringement:

Section 17 of the Trademark Act 1999 was also invoked by the Defendant, but the court found it not relevant to the case. The court concluded that the Plaintiff's "ROYAL STAG with Device of Stag" and the Defendant's "INDIAN STAG with Device of Stag" were similar as a whole, and there was a possibility of confusion. Therefore, Section 17 did not provide a valid defense.

Export from India as Use in India:

One of the critical aspects of this case is the Defendant's claim that their product was exclusively exported from India and that the "Device of Stag" was common to trade. The court, however, found in favor of the Plaintiff, stating that, within the meaning of Section 56 of the Trademarks Act 1999, export from India also constitutes use in India. This interpretation is significant because it reinforces the protection of trademarks even when products are primarily intended for export.

Publici Juris and Third Party Use:

The Defendants argued that the "ROYAL STAG" mark was not publici juris, and the publici juris character was attributed only to the "STAG" part of the Plaintiff's mark. However, the court ruled that this distinction became irrelevant as the Defendant's "INDIAN STAG" mark, as used for Indian Made Foreign Liquor (IMFL), was deceptively similar to the Plaintiff's "ROYAL STAG" mark.

Third Party use:

The Defendant also relied on third-party use as a defense. They claimed that the Plaintiff was aware of the use of the "SCOTTISH STAG" mark but remained silent. However, the court found this argument lacking evidential support, as mere coexistence of the "SCOTTISH STAG" and "ROYAL STAG" in the same outlets in Dubai did not constitute evidence of the Plaintiff's knowledge of the "SCOTTISH STAG" mark.

The Concluding Note:

The case of ROYAL STAG Vs. INDIAN STAG exemplifies the intricacies involved in trademark infringement cases, particularly when export from India is a significant element. 

The court's rulings on trademark similarity, the significance of disclaimers, and the interpretation of export as use in India underscore the importance of protecting intellectual property rights in a globalized world. 

Additionally, the court's dismissal of the publici juris and third-party use defenses highlights the need for substantial evidence in legal proceedings involving trademark disputes. This case sets a precedent for the safeguarding of trademarks in export-oriented industries in India and provides valuable insights into the nuanced world of intellectual property law. 

The Case Law Discussed:

Date of Judgement/Order:31/10/2023

Case No.CS(COMM) 371/2019 

Neutral Citation No: 2023:DHC:7842

Name of Hon'ble Court:High Court of Delhi

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

Case Title:  Pernod Ricard India Private Limited Vs A B Sugars 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.

Written By: Advocate Ajay Amitabh Suman, 

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com, 

Mob No: 9990389539

Pankaj Rajiv Bhai Patel trading as Rakesh Pharmaceuticals Vs SSS Pharmachem Pvt. Ltd.

The Twin Requirement of Commercial Dispute

Introduction:

The Hon'ble Division Bench, High Court of Delhi recently grappled with an important issue related to the valuation and classification of commercial disputes. In the case of Vishal Pipes Limited Vs. Bhavya Pipe Industry, the Hon'ble Single Judge had the opportunity to review the directives issued by a Hon'ble Single Judge of the High Court in 2022 SCC OnLine Del 1730. This article examines the critical issues discussed in this judgment, focusing on the twin requirements of commercial disputes and specified value as laid down by the Commercial Court Act 2015 and the Court Fees and Suits Valuation Acts.

Background:

The Hon'ble Single Judge's directive in Vishal Pipes Limited Vs. Bhavya Pipe Industry emphasized that intellectual property rights (IPR) cases should typically be valued at Rs. 3 lakhs or more, with court fees paid accordingly. The directive further indicated that even if the commercial court were valued below Rs. 3 lakhs, it would be tried before Coomercial Court even if provision of Commercial Court Act 2015 would not apply. The Hon'ble Division Bench, however, did not concur with the directions contained in Paragraph 66 (iv) and (v) of the Vishal Pipes case.

The Twin Requirement: Commercial Dispute and Specified Value

"The Hon'ble Division Bench's decision in this matter underscores the importance of satisfying two essential conditions for a dispute to be tried by a commercial court: the presence of a commercial dispute and the specific valuation. It found that it would be erroneous to assume that all IPR-related cases would inherently warrant a valuation of Rs. 3 lakhs or more." This distinction is crucial in determining whether a case should be heard in a commercial court.

First, the requirement of a commercial dispute is paramount. A dispute qualifies as a commercial dispute when it involves matters that are inherently commercial in nature as defined in Commercial Court Act 2015. The Commercial Court Act 2015 was enacted to provide a specialized forum for the resolution of such disputes, promoting expeditious and efficient adjudication.

Second, the specified value is equally significant. The specified value refers to the monetary threshold above which a case falls under the jurisdiction of a commercial court. In the context of IPR cases, this valuation must not be presumed to be automatically above Rs. 3 lakhs. The valuation of Suit must be above 3 Lakhs in order to be tried by a Commercial Court.

Legal Framework:

The Commercial Court Act 2015 was enacted to streamline and expedite the adjudication of commercial disputes. Section 12 of the Act is particularly relevant in this context. It emphasizes the need to respect the principles enshrined in the Court Fees and Suits Valuation Acts. This provision ensures that the valuation of cases aligns with established legal norms, preventing the creation of commercial court jurisdiction contrary to the statutory criteria laid down by the Commercial Court Act 2015.

The Diversion of Matters: A Distorted Scenario

The Hon'ble Division Bench in its judgment contended that the directives formulated in Vishal Pipes and embodied in Paragraph 66 (iv) and (v) of the case have the potential to distort the distribution of cases between commercial and non-commercial courts. If these directions were upheld, they could lead to the conferment of jurisdiction on commercial courts contrary to the qualifying criteria mandated by the Commercial Court Act 2015.

The Concluding Note:

This Hon'ble Division Bench's judgment serves as a significant reminder of the importance of adhering to the twin requirements of commercial disputes and specified value for cases to be tried by commercial courts. It underscores the necessity of assessing each case individually, rather than imposing a uniform valuation threshold for IPR cases. Moreover, it reinforces the need to respect the legal framework provided by the Commercial Court Act 2015, preventing any distortion of jurisdictional boundaries between commercial and non-commercial courts.

The Case Law Discussed:

Date of Judgement/Order:02/11/2023

Case No.FAO (COMM) 98/2023

Neutral Citation No: 2023:DHC:7925-DB

Name of Hon'ble Court: Hon'ble High Court of Delhi

Name of Hon'ble Judge: Yashwant Varma and Dharmesh Sharma

Case Title: Pankaj Rajiv Bhai Patel trading as Rakesh Pharmaceuticals Vs SSS Pharmachem Pvt. Ltd.

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,

Mob No: 9990389539