Sri Amaresh Banerjee vs The State Of West Bengal

Criminal Proceeding Dropped as Dispute Relating to Trademark is Civil Dispute

Introduction:

The present legal article delves into the intricacies of a Criminal Revision filed against an order dated 16.01.2019 in Shyampukur P.S. E.B. case No. 28 of 2009 by the Learned Additional Chief Metropolitan Magistrate, Calcutta. The case involves allegations under Sections 120B/420 of the Indian Penal Code and Sections 103, 104 of the Trade Mark Act, 1999.

Factual Background:

The complainant, a manufacturer of coaltar using the trade name "Anchor" with specific color and artwork, conducts business in Kolkata. The trade mark was initially registered in the name of Aruna Banerjee, subsequently assigned to the complainant. On 3rd May 2008, the petitioner discovered that the opposite party began copying the identical trade mark with the intention of capturing the market.

Legal Proceedings:

The complainant initiated proceedings by filing an application under Section 156(3) Cr.P.C., alleging inadequacies in the investigation. Subsequently, on 11th April 2016, a petition for reinvestigation was filed, leading to its rejection and the subsequent filing of the Criminal Revision.

High Court Decision:

The Hon'ble High Court of Calcutta rejected the Criminal Revision, asserting that the dispute primarily relates to trademark/copyright and falls within the definition of a "commercial dispute" under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015. The court noted that a title suit had already been instituted by the petitioner against the opposite party, which is sub judice.

Legal Analysis:

The key legal question revolves around the characterization of the dispute. The High Court correctly identified it as a commercial dispute, emphasizing that it pertains to trademark and copyright issues. By invoking the Commercial Courts Act, the court clarified that such matters are inherently civil in nature.

Further, the court highlighted the existence of a pending title suit, indicating that the petitioner had sought legal recourse through the appropriate civil channels. The rejection of the Criminal Revision implies that the attempt to initiate criminal proceedings was viewed as an attempt to harass the opposite party, possibly for strategic reasons.

The Concluding Note:

The legal analysis underscores the importance of correctly categorizing disputes, particularly those involving intellectual property rights. In this case, the High Court's decision to classify the matter as a civil dispute aligns with the nature of the allegations. The rejection of the Criminal Revision reaffirms the significance of pursuing appropriate legal remedies and channels for dispute resolution in line with the nature of the dispute.

The Case Law Discussed:

Case Title: Sri Amaresh Banerjee vs The State Of West Bengal

Date of Judgement/Order:15.01.2024

Case No. CRR No.1005 of 2019

Neutral Citation: NA

Name of Hon'ble Court: Calcutta  High Court

Name of Hon'ble Judge: Shampa Dutt Paul, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Sai Chemicals Vs Jai Chemical Works

Part of registered Trademark, being common to trade

Introduction:

The recent legal dispute between the appellant and respondent delves into the complexities surrounding the use of common terms in trademarks and the consequent grant of exclusive rights. Central to the case is the appellant's argument that the term 'PATTA' is commonly used in trade, challenging the exclusive rights granted to the plaintiff's trademark 'HARA PATTA.' This article critically analyzes the court's rejection of this argument, highlighting the statutory considerations under Sections 9, 11, and 31(1) of the Trademarks Act 1999.

Background:

The subject matter at hand involves an appeal filed against the interim injunction granted to the plaintiff, who claims exclusive rights to the trademark 'HARA PATTA.' The plaintiff alleges that the defendant's use of the trademark 'TAZZA PATTA' infringes upon their registered trademark and raises issues related to common usage and the presumption of validity.

Trademark Background:

The plaintiff, engaged in the detergent powder business since 1996 under the 'HARA PATTA' trademark, holds registrations under the Trademarks Act 1999 since 2002 and the Copyright Act 1957. The defendant, involved in a similar business under the 'TAZZA PATTA' trademark registered since 2019, faces allegations of engaging in identical business activities.

Presumption of Validity:

The court acknowledges the statutory presumption of validity under Section 31(1) of the Act for registered marks. However, the court emphasizes that this presumption can be challenged if evidence suggests that the mark was not registrable ex-facie. The plaintiff's trademark, 'HARA PATTA,' was deemed valid under Section 31(1) despite the appellant's argument challenging the common usage of the term 'PATTA.'

Rejection of Common Usage Argument:

The appellant contends that the term 'PATTA' is commonly used in trade, and exclusive rights should not be granted. The court rejects this argument, emphasizing that the plaintiff's trademark, 'HARA PATTA,' does not suffer from any statutory handicaps outlined in Section 9 or Section 11. Consequently, the court rejects the characterization of 'HARA PATTA' as 'publici juris,' asserting that its validity is presumed at the prima facie stage under Section 31(1).

Deceptive Similarity:

The court further dismisses the appellant's claim that the entire 'HARA PATTA' mark is 'publici juris,' limiting this characterization to the term 'PATTA' alone. Consequently, the court finds the defendant's 'TAZZA PATTA' mark deceptively similar to the plaintiff's 'HARA PATTA' mark, leading to the dismissal of the appeal.

The Concluding Note:

This case underscores the futility of argument that only part of registered Trademark being common to Trade. The appellant's contention rests on the assertion that the term 'PATTA' is a common element in trade and, therefore, exclusive rights should not be conferred. The court finds that the plaintiff's mark 'HARA PATTA' does not suffer from any statutory handicaps mentioned in these sections.

The Case Law Discussed:

Case Title: Sai Chemicals Vs Jai Chemical Works

Date of Judgement/Order:17.01.2024

Case No. First Appeal from Order No.1623 of 2023

Neutral Citation: 2024:AHC:7630

Name of Hon'ble Court: Allahabad  High Court

Name of Hon'ble Judge: Rohit Ranjan Agarwal, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Allied Blenders Distillers Pvt. Ltd. Vs Hermes Distillery Private Limited

Trademark Infringement and the Perils of "Smart Copying"

Introduction:

The recent case before the Hon'ble High Court of Delhi sheds light on the nuances of trademark infringement and the concept of "smart copying." In this matter, the court restrained the defendants, emphasizing that even when adopting a strategy of intelligent imitation, it does not serve as a defense in cases of trademark infringement. This article delves into the legal intricacies of the case, drawing parallels with earlier judicial observations and analyzing the implications of "smart copying."

Judicial Precedent: The Balancing Act:

The judgment at hand resonates with the wisdom shared by Hon'ble Justice Shri Manmohan in the case of Marico Limited Vs. Mr. Mukesh Kumar (Judgement dated 27.08.2018 passed in CS(COMM) 1569/2016, reported as AIR Online 2018 Del 1322). Justice Shri Manmohan, in his 2018 judgment, aptly noted, "The most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts." This observation, borrowed from Baker v. Master Printers Union of New Jersey,[47 USPQ 69 (D.N.J.1940)] sets the tone for understanding the delicate balance between imitation and differentiation.

Factual Matrix: OFFICER'S CHOICE vs. PEACE MAKER

In the recent case, the plaintiff's trademark was OFFICER'S CHOICE, characterized by a red and white color trade dress. On the other hand, the defendant's trademark was PEACE MAKER, also featuring a red and white color trade dress. The defendant argued that red and white color trade dress was commonly used by various parties and contended that the competing trademarks, OFFICER'S CHOICE and PEACE MAKER, were distinct.

Court's Analysis: Unraveling the Threads of "Smart Copying"

Despite the defendant's assertions, the Hon'ble High Court of Delhi exercised restraint, discerning a clear attempt at "smart copying." The court acknowledged that while the defendant highlighted the use of red and white color trade dress by various parties, the prima facie analysis revealed a conspicuous effort to engage in intelligent imitation. The court observed that the differences, as illustrated in the chart, were overshadowed by the broad similarities at first glance, pushing the distinctions into obscurity.

Conclusion: The Limits of Intelligent Imitation:

In trademark infringement cases, the judgment highlights the court's skepticism towards strategies of "smart copying." The decision underscores that merely pointing out differences in a meticulous chart may not absolve a defendant if the overarching similarities are glaring. This raises important questions about the boundaries of intelligent imitation and the extent to which courts will scrutinize attempts to confuse the public while simultaneously attempting to navigate legal defenses.

The Case Law Discussed:

Case Title: Allied Blenders Distillers Pvt. Ltd. Vs Hermes Distillery Private Limited

Date of Judgement/Order:15.01.2024

Case No. CS Comm 274 of 2021

Neutral Citation: 2024:DHC:288

Name of Hon'ble Court: Delhi High Court

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

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Rectification of a Registered Trademark Based on Non-Use

Introduction:

The cancellation of a registered trademark on the grounds of non-use is a significant aspect of trademark law, as outlined in Section 47 of the Trademarks Act 1999. This article delves into a specific case heard by the Hon'ble High Court of Delhi, involving the registered trademark 'BAOJI,' registered under No. 1530274 in Class 25.

Scope of Section 47 and Necessary Conditions:

Section 47 of the Trademarks Act 1999 allows for the cancellation of a registered trademark based on non-use. However, the Hon'ble High Court emphasized that a successful challenge under this section necessitates demonstrating a continuous non-use for a minimum of five years from the date of entry into the register up to three months before the application for removal.

Case Analysis:

In the case under consideration, the registration certificate for the 'BAOJI' mark was issued on December 26, 2013, officially entering the register. The rectification application was filed on August 10, 2020. Accordingly, the critical date for assessing the use of the mark was set as May 10, 2020, three months before the rectification application.

The Court's Observations:

The Hon'ble High Court scrutinized the evidence and observed that sale invoices submitted into the record indicated consistent transactions by Respondent No. 1 using the 'BAOJI' mark from 2012 through 2022. This unbroken chain of evidence unequivocally established a continuous and uninterrupted use of the trademark over a significant period.

The concluding Note:

In light of the court's analysis and interpretation of Section 47, the cancellation petition was dismissed. This case underscores the importance of providing concrete evidence of continuous non-use within the specified timeframe to succeed in challenging a registered trademark on grounds of non-use.

The Case Law Discussed:

Case Title: Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Date of Judgement/Order:05.01.2024

Case No. C.O. (COMM.IPD-TM) 100/2021  

Neutral Citation: 2024:DHC:112

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Sanjeev Narula, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Novartis Ag Vs Natco Pharma Limited and another

The Locus of Pre-Grant Patent Opponent in Patent Examination Process

Introduction:

The realm of patent law is characterized by a delicate balance between fostering innovation and ensuring that patents are granted on meritorious grounds. Central to this balance is the mechanism of pre-grant opposition, designed to facilitate a rigorous examination of patent applications. This article delves into the nuanced legal principles governing pre-grant opposition, emphasizing its facilitation role in the examination process and delineating its limitations.

The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to answer this issue while passing the Judgement dated 09.01.2024 in Appeal bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and another, delved into the critical examination of the order dated 14.12.2022 passed by controller of Patent , which allowed certain amendments and ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent to Novartis subsequently led to litigation. The Hon'ble Division Bench, High Court of Delhi rejected the argument of the pre grant Opponent that the same had any right to be heard in Patent Examination process. Thereby  affirmed the order of controller , granting the subject matter Patent.

Background:

Novartis AG was the Applicant of the subject matter patent IN‘518, originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which was filed as Indian national phase application bearing no. 4412/DELNP/2007 on 08.06.2007 before the Controller of Patents. Natco and few other entities were pre grant opponent. The subject matter order dated 14.12.2022 passed by the controller which resulted in filing of the subject matter writ and subsequent thereto the present Letters Patent Appeal , whereby certain amendments in Indian Patent Application No. IN4145 were allowed without granting any opportunity to pre grant opponent , to be heard. 

The crux of the controversy lies in the alleged violation of the principles of natural justice. The opponent contended that the order permitting amendments to the patent application was issued without granting them a fair hearing. Specifically, all five pre-grant opposition hearings had concluded on 03 November 2022. Despite this, the Controller of Patents directed the applicant to carry out amendments, which were eventually allowed on 14.12.2022.

The Core Legal Question:

The pivotal issue at hand is whether an opponent possesses the right to participate in the patent examination process, especially when amendments are under consideration. Stated differently, does the opponent have a stake in the examination process, mandating their participation when modifications to the patent application are being evaluated? 

Judicial Interpretation:

The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.

Furthermore, the court elucidated that while pre-grant opposition undoubtedly aids the Controller in decision-making, it does not ipso facto grant opponents an inherent right to participation or an audience during the Patent examination process. This interpretation upholds the procedural autonomy of the Controller in conducting examinations while balancing the interests of both applicants and opponents.

 Implications:

it is imperative to understand that the representation for opposition is not inherently adversarial or contentious. Instead, its primary objective is to aid and facilitate the examination of the patent application. This facilitative role underscores the constructive intent behind pre-grant opposition, which aims to ensure that patents are granted based on valid and meritorious grounds.

 The scope and limitations of pre-grant opposition are circumscribed by Section 25(1) of the relevant statute. This provision specifies the grounds on which opposition can be raised, thereby confining the opposition's ambit to statutory parameters. Consequently, any challenge raised by an opponent must align with the grounds delineated in Section 25(1), ensuring that the opposition remains tethered to statutory constraints.

The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.

The Concluding Note:

Pre-grant opposition serves a pivotal yet circumscribed role in the patent examination landscape. Its facilitative nature aims to aid the Controller in conducting a holistic examination of patent applications, ensuring adherence to statutory criteria and principles of natural justice. However, this role is not without limitations, as evidenced by the Court's observations emphasizing the pre grant opponent's restricted right to intervene in the process of grant of Patent only by way of pre grant opposition , however the same has no right to be heard in examination process of the Patent, which is solely the domain between Controller of Patent and the Applicant for Patent. 

The Case Law Discussed:

Case Title: Novartis Ag Vs Natco Pharma Limited and another 

Date of Judgement/Order:09.01.2024

Case No. LPA 50/2023 

Neutral Citation: 2023:DHC:84:DB

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J. 

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

Pespsico India Holding Vs Kavitha Kuruganti

Mistake of Styling a Candidate Variety as 'New': A Remediable Oversight

Abstract:

The issue surrounding the mis classification of a candidate variety as 'New' instead of extant variety, within the agricultural or botanical realm often invokes questions of procedural correctness, legal implications, and administrative flexibility. This article delves into the analytical assessment of the consequences of such an error, particularly in light of the Registrar's discretion to process it under the Extant category.

Introduction:

The nomenclature and classification of agricultural varieties play a pivotal role in ensuring systematic cataloging, research, and development within the agricultural sector. An inadvertent mistake in such categorization can lead to various administrative and legal repercussions. However, the key question remains: Is the mistake of styling a candidate variety as 'New' an irreparable error, or can it be remedied without fatal consequences?

Understanding the 'New' Category:

In agricultural contexts, designating a variety as 'New' implies a set of criteria and implications. Such a classification often denotes that the variety has unique characteristics or distinctions that differentiate it from existing or 'Extant' varieties. This categorization influences licensing, rights, and commercial implications associated with the said variety.

Implications of Misclassification:

Registrar's Discretion and Administrative Flexibility**

It's pivotal to consider the Registrar's role and discretion in such matters. The Registrar, as an administrative entity, possesses the authority and flexibility to interpret, rectify, or reconsider classifications based on the merits of the case.

In the given scenario, the Registrar's decision to process the candidate variety as an 'Extant' category indicates an exercise of this discretion. Such a decision underscores the administrative flexibility inherent in regulatory processes, enabling corrections to genuine errors without compromising overarching objectives.

Remediable Oversight: Legal and Practical Considerations:

The decision to treat the misclassified variety as 'Extant' aligns with pragmatic and equitable principles. It rectifies the inadvertent error, ensuring that the variety is subject to appropriate regulations, research, and commercial dynamics without the disproportionate implications of the 'New' categorization.

The concluding note:

The inadvertent mistake of styling a candidate variety as 'New' underscores the complexities and nuances inherent in agricultural classifications. While such errors demand scrutiny and rectification, they need not result in fatal consequences, especially when administrative entities like the Registrar exhibit flexibility, discretion, and a commitment to equitable resolutions. The decision to process the variety as 'Extant' exemplifies a balanced approach, prioritizing fairness, practicality, and the overarching objectives of agricultural regulation and development.

Case Title: Pespsico India Holding Vs Kavitha Kuruganti

Date of Judgement/Order:09.01.2024

Case No. LPA 590/2023

Neutral Citation: 2023:DHC:83:DB

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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

JRPL Riceland Vs Neeraj Mittal

Analysis of Trademark Infringement: ‘Biryani King’ Vs. ‘Biryani King XXXL

Introduction:

The case at hand involves a dispute between a plaintiff claiming ownership over the registered mark ‘Biryani King’ and a defendant using a deceptively similar mark, ‘Biryani King XXXL’. The central issue revolves around whether the defendant's use of the mark infringes upon the plaintiff's established rights.

Legal Framework:

Under trademark law, the proprietor of a registered trademark enjoys exclusive rights to use the mark in relation to the goods or services for which it is registered. The primary objective is to prevent consumer confusion and protect the reputation and distinctiveness of established brands.

Comparison of Marks:

Upon a visual and phonetic comparison, it is evident that the marks 'Biryani King' and 'Biryani King XXXL' share substantial similarities. The addition of 'XXXL' does not sufficiently distinguish the defendant's mark from the plaintiff's registered mark. Such similarity is likely to cause confusion among consumers, leading them to believe that the goods originate from the same source or are affiliated in some manner.

Similarity of Goods:

Another critical aspect is the similarity of goods for which the marks are used. Both parties are involved in the sale of rice. The overlapping nature of the goods amplifies the likelihood of confusion among consumers. Courts often consider the relatedness of goods or services when determining the likelihood of confusion, and in this instance, the similarity in goods strengthens the plaintiff's case.

Ex Parte Ad Interim Injunction:

An ex parte ad interim injunction is a provisional remedy granted to a party before a full trial on the merits. In the present case, the court found that the plaintiff had demonstrated a prima facie case of trademark infringement. The nearly identical marks used in relation to similar goods created a strong presumption of likelihood of confusion, warranting immediate injunctive relief to prevent further harm to the plaintiff's rights and potential damage to consumers.

The Concluding Note:

In light of the foregoing analysis, the court's decision to grant an ex parte ad interim injunction in favor of the plaintiff appears to be well-founded. The substantial similarities between the marks and the relatedness of goods establish a compelling case for trademark infringement. This case underscores the significance of protecting intellectual property rights and preventing consumer deception in the marketplace.

The Case Law Discussed:

Case Title: JRPL Riceland Vs Neeraj Mittal

Date of Judgement/Order:04.01.2024

Case No. CS(COMM) 943/2023

Neutral Citation: NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal, H.J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are 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