Kaleesuwari Refinery Pvt. Ltd. Vs .Rathinasamy Gomathy and Ors

Use of Modified Label and Non-Use of Registered Trademark

Introduction:

In cases where registered trademarks are not used, interested parties may seek rectification on grounds of non-use. This article examines a recent case involving a petition for the rectification of a registered trademark, GOLD WINNER Label, on the basis of non-use in the context of use of modified version of registered Trademark and analyzes the court's decision in light of relevant legal principles.

Background of the Case:

The subject matter of the case pertains to a petition seeking the rectification of the registered trademark GOLD WINNER Label under Registration No. 1232740 in Class 30, specifically in relation to toor dal, dal varieties, and other goods in Class 30. The petitioner invoked the ground of non-use to challenge the validity of the registered trademark on this fact that the registered proprietor was not using the Label which was registered as Trademark, but instead it was using a modified version of the registered Trademark .

Petitioner's Argument:

The petitioner contended that the use of a substantially altered trademark is tantamount to non-use of the registered trademark. To support this argument, the petitioner relied on findings from a connected suit proceeding, where it was determined that the respondent had not proven the use of the registered label mark and had instead used a modified version of the trademark.

Court's Analysis and Decision:

The court rejected the petitioner's argument, emphasizing that the mere fact that the respondent used a modified version of the trademark does not automatically establish non-use of the registered trademark. The court's decision suggests a nuanced interpretation of the concept of non-use in trademark law.

Substantial Alteration Vs. Non-Use:

The court's rejection of the petitioner's argument underscores the distinction between substantial alteration of a trademark and non-use. While a substantial alteration may impact the distinctiveness of a mark, it does not necessarily equate to non-use. Trademark law recognizes that minor modifications to a mark may occur over time without necessarily constituting abandonment or non-use.

Conclusion:

Trademark rectification on grounds of non-use presents complex legal issues that require careful analysis of the factual circumstances and relevant legal principles. The court's decision in the case of GOLD WINNER Label highlights the importance of distinguishing between substantial alterations to a trademark and genuine non-use.

Case Title: Kaleesuwari Refinery Pvt. Ltd. Vs .Rathinasamy Gomathy and Ors

Order Date: 24.01.2024

Case No. (ORA/9/2018/TM/CHN)

Neutral Citation:2024:MHC:5931

Name of Court: Madras High Court

Name of Hon'ble Judge: Mr. Senthil Kumar Ramamoorthy, 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

Hogar Controls India Pvt. Ltd. Vs Anadasu Vijay Kumar and Ors

Primacy of Execution in Trademark Assignment Deeds over Recordation

Introduction:

The case at hand revolves around the dispute over the ownership of trademarks "HOGAR," "HOGAR CONTROLS," and "HOGAR DEVICE" between the Plaintiff and Defendants No. 1 to 3. The Plaintiff alleges unlawful usurpation of their intellectual property rights by the Defendants, who are former Directors of the Plaintiff.

Central to the controversy is the validity of the assignment deed through which the Plaintiff claims proprietary rights in the subject trademarks. The Defendants argue that the assignment deed fails to comply with prescribed conditions, particularly regarding the application to the Registrar of Trademarks for direction regarding advertisement within specified timelines.

However, the Delhi High Court rejected this argument, emphasizing the significance of the execution of the assignment deed over its recordation with the Trademark Registry. This legal analysis delves into the court's reasoning and the broader implications of this decision.

Legal Standing and the Role of Execution:

The crux of the Delhi High Court's decision lies in distinguishing between the legal effects of executing an assignment deed and the procedural step of registering it with the Trademark Registry. The court rightly observed that the assignee's legal standing is not compromised by the absence of official registration at the time of initiating a lawsuit. This distinction underscores the fundamental principle that the rights conferred upon the assignee originate directly from the execution of the assignment deed, irrespective of its subsequent recordation.

Preservation of Contractual Intent:

By prioritizing execution over recordation, the court upheld the sanctity of contractual agreements between parties. In the absence of any explicit statutory mandate requiring immediate recordation as a condition precedent to the validity of an assignment, the court rightly recognized the autonomy of parties to determine the timeline for recordation, provided that the execution of the assignment deed is valid.

Protecting Assignee's Rights:

Emphasizing the importance of execution safeguards the assignee's rights and interests in the assigned trademarks. Had the court ruled otherwise, it would have created unnecessary hurdles for assignees, potentially exposing them to the risk of third-party claims despite having a valid assignment deed in place. Such an outcome would undermine the certainty and predictability essential for the smooth functioning of trademark transactions.

Conclusion:

The Delhi High Court's ruling in this case reinforces the principle that the validity of a trademark assignment primarily derives from the execution of the assignment deed, rather than its subsequent recordation with the Trademark Registry. By recognizing the autonomy of parties to determine the timing of recordation, the court upholds the integrity of contractual agreements while safeguarding the rights of assignees.

Case Title: Hogar Controls India Pvt. Ltd. Vs Anadasu Vijay Kumar and Ors

Order Date: 29.02.2024

Case No. CS Comm 669 of 2022

Neutral Citation:2024:DHC:1644

Name of Court: Delhi High Court

Name of Hon'ble Judge: Mr. 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

Microsoft Technology Licensing LLC Vs Assistant Controller of Patents and Designs

Teaching in prior art must be enabling for PSITA [Person skilled in the art] to defeat a patent

Introduction:

In intellectual property law, the determination of patent validity often hinges on the concept of prior art. Prior art refers to any evidence that an invention is already known. When assessing the novelty of an invention, one crucial factor is whether the prior art teaches or enables a person skilled in the art (PSITA) to create the claimed invention. This article delves into the significance of enabling teaching within prior art as a means to invalidate a patent, with a focus on a recent case involving Indian Patent Application No.1783/CHENP/2012.

Background of the Case:

The case in question involves the rejection of an Indian patent application titled "Message Communication of Sensor and other Data" filed on 27 February 2012. The application claimed priority from a PCT Application dated 15 September 2010, with the original priority date being 23 September 2009. The rejection was challenged, leading to an appeal, wherein the Hon'ble High Court overturned the rejection order.

Analysis of the High Court's Observations:

The High Court's decision rested on a critical observation regarding the enabling teaching within the prior art. It was noted that while the cited prior art also dealt with the transmission of sensor data to subscribing applications, it failed to teach or enable the conversion of raw sensor data into easily readable messages, which was the essence of the claimed invention.

The court highlighted the distinction between merely transmitting sensor data and converting it into easily interpretable messages. Despite similarities in functionality, the prior art lacked explicit teachings or enabling disclosures regarding the conversion process. This crucial disparity indicated that the claimed invention addressed a unique problem not addressed by the prior art.

Importance of Enabling Teaching in Prior Art:

The case underscores the significance of enabling teaching within prior art as a determinant of patent validity. Patent law requires that prior art must sufficiently teach or enable a PSITA to create the claimed invention. Mere disclosure of similar functionalities or elements is insufficient if it does not provide explicit guidance or enablement for implementing the claimed invention.

The High Court's analysis reaffirms the principle that patent protection should not extend to inventions that are obvious or readily derivable from existing knowledge in the relevant field. Enabling teaching serves as a safeguard against the granting of patents for incremental innovations lacking inventive step.

Challenges in Establishing Enablement:

Proving lack of enabling teaching in prior art presents challenges in patent litigation. It requires a nuanced analysis of the disclosed content, coupled with an understanding of the knowledge and capabilities of a PSITA at the relevant time. Courts often rely on expert testimony and documentary evidence to evaluate the level of enablement provided by the prior art.

In the present case, the appellant successfully demonstrated the absence of enabling teaching in the cited prior art, thereby invalidating the rejection of the patent application. The court's scrutiny of the prior art's content and its comparison with the claimed invention played a pivotal role in reaching this conclusion.

Conclusion:

The case highlights the critical role of enabling teaching within prior art in determining patent validity. Patent protection should be reserved for inventions that offer solutions not obvious or readily available to a PSITA based on existing knowledge. The requirement of enabling teaching serves as a safeguard against the grant of patents for trivial or incremental innovations.

Moving forward, patent applicants and practitioners should emphasize the uniqueness and non-obviousness of their inventions, supported by clear and enabling disclosures. Likewise, patent examiners and courts must rigorously assess prior art to ensure that patent rights are granted only to deserving inventions that significantly contribute to technological advancement.

Case Title: Microsoft Technology Licensing LLC Vs Assistant Controller of Patents and Designs

Order Date: 28.02.2024

Case No. (OA/3/2021/PT/CHN)

Neutral Citation:2024:MHC:1009

Name of Court: Madras High Court

Name of Hon'ble Judge:Senthil Kumar Ramamoorthy, 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

Western Digital Technologies Vs Geonix International

Trademark Infringement and Reverse Passing Off

Introduction:

The case at hand revolves around allegations of trademark infringement and reverse passing off by the Plaintiff against Defendant No. 1. The Plaintiff contends that the Defendant is rebranding and reselling old discarded HDDs under the mark 'Geonix', misleading consumers into believing they are new and unused products. This legal analysis aims to delve into the intricacies of trademark law and consumer protection regulations in light of the facts presented in the case.

Trademark Infringement and Consumer Protection:

Trademark infringement occurs when a party uses a mark that is identical or confusingly similar to a registered trademark without authorization, leading to consumer confusion regarding the origin of the goods or services. In this case, the Plaintiff alleges that Defendant No. 1's actions violate their statutory rights and deceive consumers, constituting a breach of consumer protection laws aimed at preventing deceptive marketing practices.

The Principle of Protection of Consumer Interest:

The principle concerning the protection of consumer interest is paramount in cases involving deceptive marketing practices. Consumers rely on trademarks to make informed purchasing decisions, expecting goods to be of a certain quality and origin. By misrepresenting old HDDs as new under the 'Geonix' mark, Defendant No. 1 undermines consumer trust and compromises their interests, thus warranting legal intervention to safeguard consumer rights.

Reverse Passing Off:

Reverse passing off occurs when a party sells another's product under its own name, falsely designating the origin and source of the goods. In this case, Defendant No. 1's act of rebranding and reselling old HDDs as 'Geonix' products constitutes reverse passing off, as they are altering the origin and source of the goods, leading to potential harm to the Plaintiff's reputation and goodwill.

Legal Analysis of the Court's Decision:

The Court, upon prima facie examination, found merit in the Plaintiff's allegations and granted an interim injunction against the Defendants. The Court's decision reflects a recognition of the potential detrimental effects on the Plaintiff's reputation and the deceptive nature of Defendant No. 1's actions. By invoking Sections 30(3) and 30(4) of the relevant Act, the Court acknowledges the legal basis for granting injunction relief to protect the Plaintiff's trademarks and consumer interests.

Case Title: Western Digital Technologies Vs Geonix International

Order Date: 26.02.2024

Case No. CS Comm 168 of 2024

Neutral Citation:N.A.

Name of 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

Kudos Pharmaceuticals Limited Vs Natco Pharma Limited

Credible Challenge to Plaintiff's Patent in a Patent Infringement Suit

In a recent legal proceeding, the court granted an interlocutory injunction in a patent infringement case involving the defendant's manufacturing and selling of Olaparib, a product covered by the plaintiff's patent. This article provides a detailed analysis of the legal principles involved and the rationale behind the court's decision.

Background:

The plaintiff, holding a valid patent for Olaparib, alleged that the defendant was infringing upon their patent by manufacturing and selling the same product under the brand name BRACANAT. The plaintiff sought an interlocutory injunction to restrain the defendant from continuing such activities until the final disposal of the patent infringement suit.

Validity of the Suit Patent:

The court noted that the suit patent was in its 19th year of validity and that no credible challenge to its validity had been made by the defendant. Despite the defendant's arguments, no substantial case of vulnerability to invalidity under Section 64 of the Patents Act was established. Therefore, the court found no reason to doubt the validity of the suit patent.

Granting of Interlocutory Injunction:

Based on the absence of a credible challenge to the validity of the suit patent and the defendant's clear exploitation of the patented product, the court determined that the plaintiff was entitled to an interlocutory injunction. The purpose of such an injunction is to maintain the status quo until the final resolution of the dispute. In this case, granting the injunction was necessary to prevent further infringement and protect the plaintiff's rights pending the outcome of the lawsuit.

Scope of the Injunction:

The court's order restrained the defendant from manufacturing, selling, or otherwise dealing with Olaparib, whether under the brand name BRACANAT or any other brand name, for the duration of the patent's validity and until the final disposal of the patent infringement suit. This broad scope ensures comprehensive protection of the plaintiff's rights and prevents potential circumvention of the injunction.

Case Title: Kudos Pharmaceuticals Limited Vs Natco Pharma Limited

Order Date: 01.03.2024

Case No. CS Comm 29 of 2023

Neutral Citation:2024: DHC:1716

Name of Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, 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

Abhi Traders Vs Fashnear Technologies Pvt. Ltd. and Ors

Misuse of Plaintiff's Product images by Defendants in listing of impugned products on E Commerce Websites

In a recent ruling, the court addressed the issue of infringement of intellectual property rights in the context of e-commerce platforms. The case underscores the significance of safeguarding the rights of creators and businesses against unauthorized use of their intellectual property in product images. This article provides a detailed analysis of the legal principles involved and the implications of the court's decision.

Background:

The case involved allegations of infringement by Defendants No. 2 to 9, along with an unidentified Defendant No. 10, who were accused of exploiting the Plaintiff's product images, listing visuals, and product designs for financial gain on e-commerce platforms. The Plaintiff presented a comparative chart of look-alike products, highlighting the unauthorized replication of their copyrighted materials.

Establishment of Prima Facie Case:

The court, upon considering the submissions and evidence presented by the Plaintiff, found that a prima facie case of infringement had been established. The unauthorized replication of the Plaintiff's photographs, images, and product designs by the Defendants was deemed to be an exploitation of the Plaintiff's reputation and intellectual property rights.

Role of E-Commerce Platforms:

While acknowledging the transformative role of e-commerce platforms in facilitating business growth, the court emphasized the importance of ensuring that these platforms are not misused to facilitate the imitation of products and infringement of intellectual property rights. The proliferation of look-alike products and misuse of product images undermines fair trade and competition, necessitating intervention to protect the lawful interests of creators and businesses.

Conclusion:

The ruling in this case highlights the need for robust enforcement mechanisms to combat intellectual property infringement in the e-commerce landscape. By affirming the importance of protecting creators and businesses against unauthorized exploitation of their intellectual property, the court has reaffirmed the principles of fairness, equity, and respect for intellectual property rights in the digital economy.

Case Title: Abhi Traders Vs Fashnear Technologies Pvt. Ltd. and Ors

Order Date: 29.02.2024

Case No. CS Comm 180 of 2024

Neutral Citation:N.A.

Name of 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

Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Interpretation of Section 12 of the Companies Act, 2013 in Mandatory Name Change Cases

In a recent ruling by the Hon'ble High Court of Delhi, the interpretation of Section 12 of the Companies Act, 2013, regarding the display of old company names came under scrutiny in a case where the court had directed a defendant to change its name. This article provides a detailed analysis of the legal implications of the court's clarification and its impact on mandatory name change cases.

Background:

The case in question involved a directive from the Hon'ble High Court of Delhi for the defendant to change its corporate name. In compliance with the court's direction, the defendant applied to the Registrar of Companies for a change of name. However, confusion arose regarding the applicability of Section 12 of the Companies Act, 2013, which mandates the display of old company names for a period of two years in cases of voluntary name changes.

Interpretation of Section 12 of the Companies Act, 2013:

Section 12 of the Companies Act, 2013, stipulates that when a company voluntarily changes its name, it must continue to display its old name along with its new name for a period of two years from the date of change. The objective behind this provision is to ensure transparency and inform stakeholders about the transition to a new corporate identity.

Clarification by the Hon'ble High Court of Delhi:

In the case before the Hon'ble High Court of Delhi, the defendant argued that it was required to comply with the provisions of Section 12 despite the name change being mandated by the court. However, the court clarified that Section 12 applies specifically to cases of voluntary name changes initiated by the company itself. In instances where the court directs a company to change its name as part of a judicial order, the provisions of Section 12 do not apply.

Conclusion:

The interpretation of Section 12 of the Companies Act, 2013, by the Hon'ble High Court of Delhi in mandatory name change cases underscores the nuanced approach required in legal proceedings involving corporate governance matters. By providing clarity on the applicability of statutory provisions, courts play a pivotal role in ensuring compliance with the law while balancing the practical realities faced by businesses.

Case Title: Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Order Date: 23.02.2024

Case No. CS Comm 881 of 2023

Neutral Citation:N.A.

Name of 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

F-Hoffmann -La Roche AG Vs Zydus Life Sciences Limited

Invocation of Section 104 (a) of Patent Act 1970 in relation to Quia Timet Action for Patent Infringement

Background:

In the subject matter suit, the plaintiff, a patent holder in the biologic field, initiated a quia timet action against the defendant, alleging an imminent threat of patent infringement. Despite the defendant's application for approval for clinical trials of their biologic product, the product had not yet been launched in the market. Consequently, the plaintiff faced challenges in mapping their patent claims to the defendant's impugned product, as the specifics of the defendant's manufacturing process were unknown.

Quia Timet Action:

A quia timet action, derived from the Latin phrase meaning "because he fears," is a legal remedy sought by a plaintiff to prevent an anticipated harm or infringement before it occurs. In patent law, quia timet actions are commonly employed when a patent holder has reasonable grounds to believe that their patent rights will be violated in the future, even if infringement has not yet taken place. Such actions serve as a proactive measure to protect intellectual property rights and prevent potential damages.

:Invoking Section 104A of the Patents Act, 1970:

Section 104A of the Patents Act, 1970, empowers the court to direct the defendant to furnish information related to the process used for the manufacture of a patented product. This provision is particularly relevant in cases where the plaintiff lacks sufficient information about the defendant's product or process but seeks to assess the potential infringement of their patent rights. By invoking Section 104A, the court can compel the defendant to disclose crucial details about their manufacturing process, enabling the plaintiff to evaluate the extent of infringement and seek appropriate legal remedies.

Significance of the Court's Decision:

In the case before the Hon'ble High Court of Delhi, the court's decision to invoke Section 104A to direct the defendant to disclose their process holds significant implications for both patent holders and potential infringers in the biologic field. By mandating the disclosure of the defendant's manufacturing process, the court has facilitated transparency and fairness in adjudicating patent disputes.

Case Title: F-Hoffmann -La Roche AG Vs Zydus Life Sciences Limited

Order Date: 23.02.2024

Case No. CS Comm 159 of 2024

Neutral Citation:N.A.

Name of 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