March 1, 2023
LT OVERSEAS NORTH AMERICA INC & ANR VS KRBL LIMITED
CS (COMM) 347/2022
Court: The High Court of Delhi
This case was filed before the Hon’ble High Court of Delhi by the Plaintiff under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 for an order restraining Defendant from producing, selling, offering for sale or advertising, promoting its good or services, exporting or enabling advertising campaigns either directly or indirectly in any form any product bearing the impugned mark/ package which was deceptively similar to Plaintiffs’.
FACTS OF THE CASE
1. Plaintiffs are in the business inter alia of processing, marketing, and exporting rice.
2. It was the predecessor of the plaintiff that coined and conceived the plaintiffs’ mark ‘ROYAL’ in 1989 and then later assigned it to ‘M/s Kusha Inc.’ on 14.10.2000, who in turn assigned them to the plaintiff vide Assignment Deed dated 16.12.2008. An application for registration of the mark was filed and the mark was registered in the year 2003.
3. The plaintiffs are aggrieved by the adoption of the mark ‘ZABREEN ROYAL’ (the ‘impugned mark’) by Defendant for the manufacture, sale, and distribution of its Basmati Rice. Adoption of the same being identical/ deceptively similar to the Plaintiffs’ mark is bound to result in causing irreparable harm and injury to them.
ARGUMENTS OF THE PLAINTIFF
1. The contention of the defendant that the word/mark ‘ROYAL’ is descriptive in character, cannot be accepted. The mark can at best be stated to be suggestive. For the purposes of rice, it would be a completely arbitrary term. Furthermore, the reliance placed by Defendant on the reply of Plaintiff to the examination report is ill-founded because the marks that were cited by the Trade Marks Registry were for different goods.
2. Defendant having foregone its right in the mark cannot claim any right to use it as per notification Dt. 22.09.2017 issued by the Ministry of Finance under Section 11 (1) of the Central Goods and Services Tax Act, 2017.
3. Merely because there are other marks with the word ‘ROYAL’ registered in Class 30, would also not ensure the benefit of the defendant in absence of any evidence of usage of such marks.
ARGUMENTS OF THE DEFENDANT
1. ‘ROYAL’ is a laudatory term that is incapable of distinguishing the goods and services of one person from those of the other and thus is devoid of any distinctive character. Hence, the mere registration of the mark ‘ROYAL’ cannot grant the Plaintiffs exclusive right to the term.
2. As per Section 17 of the Trade Marks Act 1999 “the protection given is only to the trade mark as a whole and not parts of the same”. Therefore, since the registrations granted in favor of the plaintiffs are in device marks and not the word mark, the same cannot confer a right upon the plaintiffs to monopolize the mark ‘ROYAL’.
3. The overall trade dress/label of the defendant’s product is completely different from the plaintiffs’. Furthermore, the plaintiffs are using their own mark ‘ZABREEN’ which is highly distinguishable and thus there cannot be any confusion between the plaintiffs‟ products and the defendant’s product.
4. Placing reliance on the reply submitted by the plaintiff to the Examination Report, he submits that the plaintiffs have distinguished other marks with the word ‘ROYAL’, stating that there is a device mark. The plaintiffs are now estopped from claiming a separate right in the word ‘ROYAL’.
OBSERVATION OF THE COURT
The Court observed that it is essential to decide on the Application filed under Order 39 Rule 1 and 2 of the CPC and made the following observations:
=> The difference between descriptive and suggestive
The Court relied on the case of Bata India Limited v. Chawla Boot House & Ors. (MANU/DE/1368/2019), and the explanation of ‘McCarthy on Trademarks and Unfair Competition’ to lay down the following observations:
1. In ‘McCarthy on Trademarks and Unfair Competition’, the learned author explains the spectrum of the distinctiveness of marks as:
(i) “inherently distinctive”;
(ii) “non-inherently distinctive”; and
(iii) marks with “no distinctiveness”.
And further states that “suggestive” marks are to be placed in the category of “inherently distinctive marks”, while “descriptive marks” in “non-inherently distinctive marks”, for which secondary meaning is required. This does not end the inquiry as to the strength of a mark, rather it is only the first step; whereas the second step is to determine the strength of this mark in the marketplace.
2. The most popular test to determine whether the mark is “descriptive” or “suggestive” is the “Imagination Test”, which says: “the more imagination that is required on the customer’s part to get some direct description of the product from the term, the more likely the term is “suggestive”, and not “descriptive”.
3. A descriptive term directly and clearly conveys information about the ingredients, qualities or characteristics of the product or service, whereas the “suggestive” term only indirectly suggests these things. If the mental link between the word and the product‟s attributes is not almost instantaneous, this strongly indicates suggestive and not direct descriptiveness.
Therefore, in the present case- though, a laudatory word, ‘ROYAL’ is not immediately connectable to rice, it would require a large amount of imagination for the consumer to form a connection of the word ‘ROYAL’ to rice. It would require a reasoning process to determine the attributes of rice.
4. The second test suggested is the “Competitors’ Need Test”, which states that if the is positive to the question “is the word or words likely to be needed by the competitive sellers to describe their goods?” then the word/words are descriptive.
Applying this test against the word ‘ROYAL’, this term per se is not required by the competitors to be used to describe the product-rice or its quality. The word ‘ROYAL’ is neither a natural synonym for the product nor its attribute, unlike the case in Marino Ltd. v. Agro Tech Foods Limites (2010 SCC OnLine Del 3806), Soothe Healthcare Pvt. Ltd. v. Dabur India Limited (2022 SCC OnLine Del 2006), or Red Bull AG v. Pepsico India Holdings Pvt. Ltd. and Another (2022 SCC OnLine Del 969).
5. The Court also emphasized the case of Sime Darby Edible Products Ltd. v. Ngo Chew Hong Edible Oil Pts Ltd. ((2000) SGHC 145), where it was held that the word ‘ROYAL’ alone being laudatory, was descriptive in character and may not be registrable without proof of acquisition of a distinctive character as a result of the use made of it. In the present case, the mark of the plaintiffs herein already stands registered.
6. Hence, while in the prima facie view of the Court, the plea of the defendant that the word ‘ROYAL’ being a descriptive term is not entitled to any protection, was liable to be rejected. However, at the same time, the word ‘ROYAL’ being laudatory, the effect thereof would still have to be considered.
=>Effect of Device Mark Registration in the case
1. Apart from the device mark registered under application No.1175315, the Plaintiff no.1 also holds a registration under Application No.1548937 and 1339882 in the label mark of which the word ‘ROYAL’ is the only part, though in a stylized manner. Therefore, applying the test laid down in the case of M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. and Anr. ((2015) 61 PTC 231 (Del) (DB)) and Pidilite Industries Ltd. v. S.M. Associates & Ors. ((2004) 28 PTC 193), the word ‘ROYAL’ remains a dominant part of the trade mark of the plaintiffs and after removing it, the remaining is only an embellishment. Therefore, the word ‘ROYAL’ per se would also be entitled to protection, though while making a comparison with the complained mark, due deference would have to be laid to the fact that the plaintiff does not have a word mark registration.
=> The Commonality of the Mark to Trade
1. Only after the parties have led their evidence, a final decision can be made on this. Rest, as the Court held in Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744), the use of a similar mark by a third party in violation of the plaintiff‟s right is no defence.
=> Effect of Defendant’s claim under Notification dt. 22.09.2017
1. Since Defendant was not claiming any right in the word ‘ROYAL’ as a trademark, but only using the word in a descriptive sense, this claim was not acceptable by the learned Court.
=> Exception to the claim of infringement and also passing off as pleaded by the Defendant under Section 30(2)(a) and 35 of the Trade Marks Act, 1999.
1. The word ‘ROYAL’ is indeed a laudatory word. To claim the defense, it would have to be determined as to whether the use of the same by the defendant is merely to depict the quality of its rice.
2. Since the present packaging of the defendant, which was complained of in the present suit by Plaintiff, shows that the word ‘ROYAL’ has been used prominently, not merely to depict the quality of the rice, its use would lead to dilution of Plaintiff’s mark and, therefore, cannot be permitted in such manner.
The application was disposed of by the court. They restrained the defendant from using the packaging complained of by Plaintiff.
January 30, 2023
Prior Publication a valid defense in design infringement suits
Court: Delhi High court
Case: NOVAMAX INDUSTRIES LLP VS PREM APPLIANCES & ANR.
On 16th January 2023, the Hon’ble High Court of Delhi vacated the injunction granted in the favour of the Plaintiff, when it was brought forward by the Defendant that the suit design was published prior to its application date.
Novamax Industries LLP, is the registered proprietor of the design of the air cooler range out of which one of the design as they claimed was being infringed upon by Defendant who had launched their own range of coolers. The application of the suit design was made on 24th March 2019 and the registration was granted to the plaintiff on 9th October 2019.
The plaintiff submitted that the NOVA range of coolers of the Defendant were identical to their own cooler design, for which they had a valid and active registration and they depicted the same through the visual comparison of the coolers. The court acknowledged the submissions made by the Plaintiff and issued an ex-parte ad interim order in favor of the plaintiff and against the defendants and restrained them from manufacturing, selling, or otherwise utilizing the allegedly infringing cooler design until the pendency of the suit.
Defendant moved the Application under Order 39 Rule 4 of CPC to vacate the injunction, relying on Section 19(1)(b) and 22(3) of the Designs Act. The Defendant stated that the impugned design is no doubt identical to the suit design but due to prior publication of the suit design, the same was vulnerable to cancellation as it was available via online purchase on their website prior to 24th March 2019 which was the application date. The Defendant also presented submitted that the Plaintiff themselves has through their documents produced invoice of prior date that the take of registration. The Plaintiff in this regard submitted that their “ZEPHYR” range included designs other than the suit design as well and the suit design was branded as “MIST”.
The court did not consider the submission of the Plaintiff as to various designs under the brand name “ZEPHYR” and stated that the document of internet advertisement available was prima facie fatal to the Plaintiff’s case as the same was a clear evidence of prior publication. The court also considered the fact that the counsel for the Plaintiff did not dispute the presence of the document that showed the presence of the suit design prior to the application date. It was further stated that the brand name of the subject design is of no relevance but the only question before the court now is if the subject design was published prior as per the provisions of section 19(1)(b) of the Act.
The court ultimately ruled that if the suit design was indeed vulnerable to cancellation, then the defendant’s plea of prior publication would be allowed as a defence against the infringement claim. The injunction order was vacated.
January 13, 2023
VINTAGE DISTILLERS LIMITED VERSUS RAMESH CHAND PAREKSH
Court: Delhi High court
Case: VINTAGE DISTILLERS LIMITED VS RAMESH CHAND PAREKSH
This case was filed before the Hon’ble High Court of Delhi by the Plaintiff for the infringement and passing off of the mark DHOLA MARU by the Defendants who started using the mark DHOLA THARU. The Plaintiff filed the suit along with an Application for Ad-interim Injunction under Order 39 Rule 1 & 2 whereasthe Defendant filed an Application under Order 7 Rule 10 for Rejection of plaint on the ground of lack of territorial jurisdiction.
Facts of the Case
The facts of this case are as such that the Plaintiff has been in the business of Alcohol since 1988, and amongst various brands DHOLA MARU is one of them. The Plaintiff’s mark was coined and adopted in 2004 for country liquor range and is inherently distinctive. The Plaintiff having its principal office in Delhi sells its products in the State of Rajasthan as per the excise license. The Plaintiff does have the registration of its label but for the word mark “DHOLA MARU” is still pending. The Plaintiff when got to know about the identical mark of the Defendant DHOLA THARU,moved forward the present suit.
Arguments of the Plaintiff
- That the Plaintiff is the registered proprietor of the label and the word “DHOLA MARU” is the dominant part of the mark. The label mark did undergo some changes which was done in compliance of the Excise notification but still the word “DHOLA MARU” was consistently used. The label is also protected under the Copyright Act, 1957, making the Plaintiff owner of both the statutory and common law rights. The plaintiff produced invoices and documents supporting sales turnover since the beginning of use of the mark thus it can be said that the Applicant has goodwill and reputation in this mark.
- The defendant is involved in the same business and is using an identical mark and label style of the Plaintiff. The Defendant also moved forward by applying for trademark registration which is filed on proposed to be use basis and excise license for Rajasthan.The Plaintiff has filed this suit as a qua timet action with the apprehension that the Defendant will start selling the impugned products in Delhi. The Plaintiff in their rejoinder submitted that the apprehension of threat is there as admitted by the defendant about its growing business in the reply to Application under Order 39 1& 2.
- The Plaintiff in the Rejoinder stated that the right to sue for infringement is there with the Applicant regardless whether the trademark has been in use or not. Though there is law for cancellation of trademark as per Section 47(2), the same cannot be used as a defense against infringement.
Arguments of the Defendant
- The Defendant submitted that even though the suit was filed in the Jurisdiction of Delhi on the ground that Plaintiff has its office in Delhi and that the Defendant’s Application was filed with an all-India effect or that there was apprehension of start of sale in Delhi, the Plaintiff has failed to prove such alleged intentions of Defendant to start selling the impugned products in Delhi.
- It was also submitted that the Plaintiff had only registration of a label and not of the word DHOLA MARU. The label also was not in use by the Plaintiff and therefore no reliance could be taken on that.Their main argument was that the Plaintiff holds registration only for the Label Mark that has to be considered as a whole. They also submitted that the mark was in compliance of the Excise Notification and therefore were in in the shade ofRed or Blue depending on the Alcohol concentration in the alcohol. But since it is a passing off action, there should be proof of same but the Plaintiff has failed to do so.
- The Defendant relied on Section 17 of the Act which states that the mark should be considered as a whole and not in dissected parts.The defendant supported their claims by saying that they operated the Thar Group of Companies, and the reason for the adoption impugned trademark was that THARU community enjoyed liquor, Dhola is a common word for drum and THARU is also derived from their corporate name. It was also contended that the Plaintiff’s mark is incapable of protection as it is common among the people of Rajasthan and various 3rd parties have registered similar marks prior to Applicant’s mark.
- The Defendant contended that the suit shouldbe dismissedas Plaintiff suppressed material facts of Excise notification regarding labeling. The Defendant also stated that Plaintiff’s Mark is liable to be cancelled due to non-use of the mark since it has lost its distinctiveness and is merely squatting on the mark.
- The defendant stated that the Plaintiff has wrongly claimed Qua Timet action when plaintiff only mentioned about finding Defendant’s products in the market.
Observations by the Court
- The Court observed that it is essential to decide on the Application filed under Order 7 Rule 10 before moving forward with the application for interim injunction. The question of jurisdiction in this suit is two-fold:
a. No evidence shown to support the contention of apprehension & threat.
b. The Plaintiff manufactures and sells in Rajasthan and has no proof of sale within Delhi’s jurisdiction.
The court relied on Teva Pharmaceutical Industries Ltd. &Ors. and Pfizer Products, Inc. v. Rajesh Chopra & Othersto establish that pleading apprehension of sale/marketing at a certain place is sufficient to establish jurisdiction. It was also cited from one of the precedents that where issue of territorial jurisdiction is raised, only the plaint needs to be seen on plain demurrer and the allegations or averments are to be taken as correct. In order to succeed in the objection to the jurisdiction, Defendant must demonstrate that granted the averments made in plaint, Court does not have territorial jurisdiction, as a matter of law. It was also stated that since it is a case of trademark as well as copyright, the plaintiff has additional places through the provisions of their respective acts as well. It was stated that by applying the provisions of Section 134 (2) of Trademark Act and Section 62(2) of the Copyrights Act as pleaded by the Plaintiff and even Sections 19 and 20 CPC, it is clear that the court has territorial jurisdiction to file the suit as it is a qua timet action, the trademark applications are filed with all-India effect, the head office of the Plaintiff is in Delhi and there is no branch of the Plaintiff.
- The Court on the second question which was on the merits of the suit, discussed the provisions under Section 28 & 29 of the Act. The court stated that there is no dispute that Applicant is the registered proprietor of the Label Mark and not the word mark DHOLA MARU separately. While discussing various precedents, the court stated that though the mark has to be seen as a whole as per the anti-dissection principle, but that can go hand in hand with identifying the dominant mark. The concept of essential feature was also discussed which when simply put means that every mark has a prominent or a dominant feature which has to be seen while adjudicating the question of infringement or passing off. The Court decided by stating that DHOLA MARU is the essential/dominant feature of the label mark, and therefore the Defendant’s plea that Plaintiff doesn’t have a right over DHOLA MARU is unfounded.
- ……that even in case of a label/device marks, it is possible for the Court to follow the ‘dominant’ mark test and in case it is found that Defendant’s mark appropriates the essential features of the Plaintiff’s mark, albeit it is a component of a whole mark (label ordevice), Court can compare the essential features of the rival marks todetermine if there is any identity/deceptive similarity to determine ifthere is infringement….
- The Court also stated that the marks are not identical, but the deceptive similarity has to be seen. The Court cited Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.,(2001) 5 SCC 73,stating that the Supreme Court emphasized the principle ofphonetic similarity cannot be jettisoned, even if the manner in whichthe two competing marks are written is different. And from the perspective of a man with average intelligence, the competing marks are phonetically, visually and structurally similar to each other. Even the goods of both the marks are identical.
(a) Strength of the mark;
(b) Degree of similarity between the rival marks; (c) proximity of products;
(d) Likelihood that prior owner will bridge the gap;
(e) Actual confusion;
(f) Reciprocal of defendant’s good faith in adopting its own mark (bad faith);
(g) Quality of Defendant’s product;
(h) Marketing channels; and
(i) Defendant’s intention in reflecting the mark.(Para 36)
- The triple identity test was also satisfied in this case, thus making a prima facie suit of infringement. The court stated that if a common word is used for goods which has no correlation, the mark becomes Arbitrary.
- The Defendant’s contention of “DHOLA MARU” being a generic word was also rejected as the court found no reference to character or quality of the goods applied for.
- The court cited Shree Nath Heritage Liquor Pvt. Ltd. to demerit the Defendant’s contention that the mark is common to trade by stating that just because a mark is common to register doesn’t mean it is common to the trade.
- Since there is no proof that abandonment or non-use of the label mark is deliberate, it cannot be used as a defense against infringement.The court stated that non-use of a registered mark doesn’t deny the protection it is entitled to. The Act does provide a remedy to apply for removal of a mark because of its non- use but such a defense cannot be taken in a case of infringement. But the provision of Section 47(2) cannot apply if a non-use is because of special circumstance such as restriction because of a law or rule/regulation such as in this case.The only variation in the mark is due to the regulation of Excise law but the prominent feature of the mark “DHOLA MARU” is still the same.
- Both parties are well-knownCompanies in their respective fields and it cannot be said thatthe Defendant was unaware of Plaintiff’s business or trademarks. Defendant’s explanation for adoption of mark was also not believed. The effort by the Defendant to come as close aspossible to “DHOLA MARU” is evident by juxtaposing the two words DHOLA and THARU in their impugned mark. The Court also stated that it is clear that such adoption of mark was done to ride on the reputation of the Plaintiff.
- For the question of Passing Off, the remedy is that of common law and based on the idea that no one is allowed to pass off their goods as someone else even if such an act is non-fraudulent. Since the class of people who purchase the goods for which the trademarks are applied may not be literate and may not be able to find the difference there is a prima facie case of infringement and passing-off.
The Application for ad-interim injunction was allowed and the matter was listed for next date to hear the suit.
December 12, 2022
Relaxo Footwears VS Aqualite Industries Pvt Limited
Court: Delhi High court
Case: Relaxo footwears VS Aqualite industries PVT Limited
The case is a dispute between two footwear manufacturing companies Relaxo and Aqualite. Relaxo filed a lawsuit against Aqualite for infringing their footwear design.
In 2018, the Plaintiff came to know about a look-alike footwear product being traded in the market and was astonished to witness that the product sold in the market was an identical replication of one of the products the plaintiff registered in June 2017 under the Designs Act, 2000. According to the plaintiff, the product was originally designed by its in-house design team and a design agency based in the UK. The plaintiff immediately filed a lawsuit against the defendant in the Delhi High Court, seeking relief in this matter. To this, ad-interim injunction was granted against the defendant.
Defendant aggrieved by this order moved an appeal where the Defendant was given the liberty to file application for vacating the injunction.
The single judge was of an opinion that the design in question lacked novelty and originality because:
- That third-party product, similar to that of the Plaintiff was available in the market.
- That Relaxo claimed novelty in respect of the combination of colours and the placement of MRP label, but the application for the design didn’t have such a claim.
- That the strap of the footwear was in use for almost 7-8 years and therefore was not new, as stated by a Chinese manufacturer in its letter.
Averments of Relaxo in Appeal
- Plaintiff submitted that the market survey was not asked by any party but was a procedure devised by the Learned Single Judge. The mere presence of third party products is no proof of lack of novelty and originality in Plaintiff’s designs.
- It was also contended that concept of common to trade is not applicable in the design infringement suits.
- The letter by the Chinese manufacturer is self-serving and doesn’t have any evidentiary value.
- Defendant failed to explain the adoption of the infringing design, whereas the Plaintiff had in detailed documentation submitted the process of designing and conceptualizing and that Aqualitewas a habitual infringer.
Averments of Aqualite
- It was averred that the Plaintiff had failed to show the novel feature of the design in question. The judgement of Crocs IncUsa v. Bata India Ltd &Ors.: (2019) 78 PTC 1was relied on to stated that there is limited area to work with in the footwear industry.
- It was also submitted that similar designs were available on online marketplace since 25.05.2017.
- The affidavit of the Chinese Manufacturer was also relied upon.
Observations of the Court
- The court stated that at the beginning it is important to see the subject application and also a comparison of the competing designs is relevant in such proceedings. After going through the images it was evident that the designs are identical. The question was whether it would be covered under 4(a) or 4(c) of the Act.
2. It was observed that the Court could not suomoto order for market survey, who’s result at best suggests the availability of products and nowhereis of a view that Plaintiff’s design lack novelty. It was also stated that it is upto the Plaintiff, against whom they want to take an action as there are various small players copying designs of popular products and a design holder is not required to pursue action against all of them.
3. Also, the letter from the Chinese manufacturer does not testify to anything concerned with the novelty or the originality of the subject design. As the letter states about the strap, which was present earlier that the subject design but the Relaxo has claimed novelty over the patterns and design of the product, not the strap. The letter of the Chinese manufacturer was of no meritas there was lack of other important documents, so the letter only cannot be considered concrete evidence for the same.
4. The Defendant’s contention with regards to products being available on E-commerce was disregarded stating that on a plain view it was clear that there was no similarity between the products.
5. The contention of common to trade was also responded to stating that it is a principle for trademarks as the idea behind a trademark fails if it is used by a large number of traders in market but such a concept is of no use in Designs as when a design is available, i.e. published prior to application for registration.The application for such a design is rendered incapable of registration.
6. The Section 4 of the Design Act, 2000 was referred to, specifically 4(c), which states that a design cannot be registered if a design is not significantly distinguishable froma known design or combination of designs. But a simple market survey cannot answer this question.
7. The reliance on the Crocs judgement was not accepted stating that the mere fact that there is constraint in footwear industry for designing doesn’t mean that no design is capable of registration. It the designs creators find a way to express themselves in a novel idea, it cannot be disregarded.
The appeal was allowed and the impugned judgment was set aside, the Defendant was restrained from manufacturing, selling, offering for sale, advertising, importing, and exporting or in any manner dealing with products infringing the Subject Design till the disposal of suit.
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Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights, To know more Apoorva click here
November 24, 2022
Pre-institution mediation Mandatory Or Not
CHANDRA KISHORE CHAURASIA vs R.A PERFUMERY WORKS PRIVATE LTD
In a recent case,a Division Bench of the Delhi High Court ruled that pre-institution mediation is only required when the plaintiff does not seek urgent relief. The Court heard the Appeal filed against an order passed by the District Judge returning the plaint citing the lack of territorial jurisdiction.
The factual background of the case:
Asuit was filed by one Mr. Chandra Kishore Chaurasiya, a resident of Uttar Pradesh who is in the business of selling chewing tobacco under his registered trademarks “1192” and “JAGMAG 1192”, he also held copyright registrations as well. When he found out that a company R.A. Perfumery Works Private Ltd was using an identical mark “SIGNAL 1191”and was also imitating the packaging, artistic format and colour combination of his registered trademark, he filed a case against the Defendant company for all egedly copying the artistic work and colour combination of its packaging and intentionally choosing a similar trademark to that the Plaintiff Mr. Chaurasiya was the owner of. The plaintiff also accused the defendant of manufacturing a similar kind of product and the same packaging for the sole purpose of making easy money as the plaintiff had an established enterprise in the tobacco industry.
Decision of District Court (Impugned Order)
The defendant as a counter to the suit filed an application under Order 7 Rule 10 and 11 for return of the plaint on two grounds, firstly that the Plaintiff has failed to establish the territorial jurisdiction and secondly, that the Plaintiffdid not comply with the requirements of Section 12A of the Commercial Courts Act.2015, so the plaint is liable to be returned if the remedy of pre- institution mediation is not exhausted.
With regards to the first objection, holding that Plaintiff has prima facie failed to show any concrete evidence, the Plaint was returned by the Court. The District Court however, for the second objection observed that since the Plaintiff was seeking urgent relief, there was no need of undergoing pre-institution mediation.
Appeal against the Order
The Plaintiff filed an appeal against the order of the District Court for his return of Plaint. TheRespondent/Defendant again raised a cross-objection before the Appellate Court by contending that as per section 12 A of the Commercial Courts Act, 2015, the Appellant/Plaintiff is required to indulge in pre-institution mediation with the defendant or otherwise an application of exemption has to be moved for the same. It was contended by the Respondent that they are not questioning the provision with regards to urgent relief but stated that the classifying of a case as seeking urgent relief cannot be solely decided by the Plaintiff and therefore an Application for exemption had to be moved by the Appellant/Plaintiff.
Question before the Court?
- Extent of Rejecting a Plaint under Order 7 Rule 10 of CPC.
- Whether the provisions of Section 12A of the Commercial Courts Act, 2015 are mandatory?
With regards to the rejection of plaint, the court observed that the examination for the purpose of an application under Order VII Rule 10 of the CPC is limited to the averments made in the plaint and the documents filed by the plaintiff. The High Court while relying on various judgments stated that what has to be seen is if prima facie from the plaint a cause of action has been established or not. It also stated that for Application for Order VII Rule 10, the Plaint has to be seen in demurrer and what has to be seen is that if the case is proved, the relief could be granted or not. So in conclusion, the court observed that since, the averments made by the Plaintiff with regards to the advertising, selling or soliciting to sell infringing goods within the territorial jurisdiction of the Court are clearly made out in the Plaint; the Application of the Defendant/Respondent is liable to be rejected.
- At the stage of considering an application under Order VII Rule 10 of the CPC, the court is not required to examine the merits of the averments made and to evaluate whether the plaintiff would be able to prove or establish the same. As noted above, for the purpose of an application under Order VII Rule 10 of the CPC, the averments made in the plaint are required to be considered as correct
With regards to the Respondent’s cross-objection, the Court observed that the plain reading of the Section 12A states that the category of suits that require urgent relief aren’t in question nor is there an ambiguity as to which suit requires such relief. But it is clear that any suit that requires urgent relief is exempted from the remedy of pre-institution mediation. It was also observed that there is no requirement of moving an application in case an exception is applied. The court stated that firstly there is no provision for moving an application for exemption to be made in a suit which requires urgent relief and secondly if any suit doesn’t require such relief, it cannot be instituted without exhausting the remedy of Pre-Institution Mediation.The Court has no discretion to exempt a plaintiff from the applicability of Section 12A(1). The seeking of urgent relief is solely based of the Plaintiff only and cannot be decided by the court.
The court disposed off the appeal and the cross objections raised by the Respondent by reversing the order of the District Court holding that the Appellant/Plaintiff had clearly made out territorial jurisdiction of the Court and reiterated that Pre-Institution Mediation is not mandatory in cases where the Plaintiff seeks urgent relief. The Court made it clear that no application for exemption from Pre-institution mediation is required under the Law, it is sufficient if the Plaintiff has made out explicit prayers for seeking urgent relief in the Plaint.
November 19, 2022
Extent of Registrar’s power in condonation of delay
Aman Engineering Works vs. Registrar Trademark, New Delhi & Anr.
This case came up before the Hon’ble High Court of Delhi challenging the Order dated 07.01.2020 of the Registrar of Trademarks which allowed the review applications for the marks that were abandoned almost 16-17 years ago.
The facts of the case are that the Petitioner is a Partnership Firm since 01.07.1980 and filed a Trademark Application for the mark “KRANTI” in 17.09.1990. The Respondent No. 2 is B.M. Meters Pvt. Ltd. Who filed an application for the Trademark “RITE KRANTI” on 16.06.1994 but when sent a notice for hearing, failed to attend the same. The Respondent No. 2 filed another application for the mark “B&M KRANTI” but again failed to attend the Show Cause Hearing. Both of the marks were declared abandoned after some time. Almost 25 years after the filing of Application, the Respondent No. 2 filed an Application for the Review of Registrar’s Decision which when heard was allowed by the Registrar. The Petitioneris aggrieved with this order thus moving with this present petition.
Question before the Court
- Whether the registrar has the power to condone delay or take into consideration such delayed application for review?
Stance of Petitioner
The Petitioner stated that the Respondent No. 2 first contended that its Attorney did respond to the Examination Report but they did not receive any notice of hearing or the notice of adverse order but the impugned order by the Registrar of Trademarks stated that the Respondent No. 2 also did not receive the Examination report and therefore there was contradiction between the statements.
It was further contended that even if there was no such error in the impugned order, the review application under Rule 119 of the Trademark Rules, 2017 can only be filed within 1 month from the date of the order aggrieved from. Therefore such an application was barred by limitation and no condonation of delay could be granted.
The Petitioner relied on New India Assurance Company Limited. v. Hilli Multipurpose Cold Storage Private Limited, (2020) 5 SCC 757 which stated that a quasi-judicial/ tribunal cannot exceed the outer limit set by law for condonation of delay.
The Petitioner in its rejoinder contended that the Affidavit of the Respondent No. 2 could not be taken into consideration and also that the period prescribed in the Rules for filing of an application seeking for review or for seeking condonation of the delay is to be treated as being prescribed by the Act only.
Stance of Respondent
The Respondent No. 1 stated that since there was non-compliance of the service of Examination Report; they had allowed the Review Application.
Respondent No. 2 on the other side stated that though they had mentioned in their review application that the Examination Report was sent and replied to by the Respondent No. 2 and its Attorney but in the Affidavit submitted it was stated that the Examination Report was also not received by them and relying on the same, the Registrar of Trademarks passed the impugned order. The Respondent relied on cases which held that service of the notice of hearing as well as the order is mandatory. It was further contended that the general power of condonation of delay given to the Registrar under Section 131 of the Act, cannot be curtailed by Rule 119. It was also contended that since Section 127(c) does not prescribe any limitation the Registrar was well within the rights for condonation of delay. The respondent also questioned the Locus Standi of the Petitioner and that the Petitioner should wait till the time their Applications are advertised to move forward with objection/oppositions.
- The court found the Respondent No. 2’s stance that the Petitioner should wait till the advertisement of the marks as ill-founded as the revival of the mark will cause prejudice to the Petitioners.
- The Court stated that the Section 127 which gives powers to the Registrar, mainly Section 127(c) which gave power to the Registrar to review his own decision has to be read in consonance with Rule 119 which states that “An application to the Registrar for the review of his decision under sub-section (c) of section 127 shall be made in Form TM-M within one month from the date of such decision or within such further period not exceeding one month thereafter as the Registrar may on request allow”.
- The section 131 gives power for extension of time is to be read with Section 157 of the Act which gives power to the Central Government to make rules. It was stated that section 131 though gives power for extension of time for any activity but such power cannot override the provisions for deadlines and limits when specifically mentioned.Therefore, the Registrar was not in the power to condone the delay.
- Since the Application for review was itself infectious as it was filed way beyond the time period allowed, the order relating to the same will not hold any value.
- The Respondent No. 2 stance of the affidavit could not accepted as the contradiction to the same could be seen from the fact, that the reply to the Examination Report was filed by the Respondent No. 2 and therefore the burden of proof of non-service of the Examination Report could not be shifted on the Registrar after such a long time.
The Petition filed by Aman Engineering Works was allowed and the impugned order was set aside.
August 15, 2022
Azadi ka Amrit Mahotsav and TradeMark￼
Azadi ka Amrit Mahotsav and TradeMark
What is ‘Azadi Ka Amrit Mahotsav’?
Owing to the celebration of the country’s people, vast culture and associated achievements on the occasion of the country’s 75th anniversary of independence, the government of India has launched a new program known as “Azadi Ka Amrit Mahotsav”. It is dedicated to the Indian people, who have been essential in bringing India thus far in its evolutionary path and possess the power and capacity to realize the vision of activating India 2.0, fueled by the energy of Aatmanirbhar Bharat (Self-dependent India).
Azadi Ka Amrit Mahotsav had begun on March 12, 2021, and will conclude a year later on 15 August 2023. This is a 75-week countdown owing to the 75 years of independence.
Aim of Azadi ka Amrit Mahotsav
The ‘Azadi Ka Amrit Mahotsav’ has been initiated by the government of India with the sole purpose of creating a vision for India and its citizens in 2047. The Mahotsav is being commemorated on the basis of its five pillars: the 75-year struggle for independence, 75-year thoughts, 75-year successes, 75-year deeds, and 75-year goals. These pillars are intended to educate the next generation about the history and battle for freedom.
It would also motivate people to take action and accomplish their goal of an independent India. Amrit Mahotsav has been categorized as a celebration of our independence soldiers and for the occasion of the Indian liberation movement.
Azadi ka Amrit Mahotsav and IPR
We are well aware about the current situation with the Indian IPR matters and a huge backlog pending for processing.
Due to large number of pendency of Trademark Applications before Trademark Registry, the Trademark Office is taking initiative to run a special drive for disposal of IP disputes wherein the office has directed the parties to dispose the pending opposition and rectification cases and also the parties who have already settled their cases amicably should notify the Trademark Registry vide a formal settlement of the dispute.
Pursuant to this, the registry has launched a link in order to report such settled cases as https://ipindiaonline.gov.in/trademarkefiling/OppositionSettlementRequest.aspx and this link is available from August 02, 2022 to October 02, 2022.
This is very beneficial for the trademark applicants because now they can submit the documents online without any further hassle of going to the trademark registry. Moreover, the disputes that have not been solved yet are required to be resolved using alternate mechanisms.
What is trademark opposition? How to settle Trademark Opposition?
A trademark opposition arises at the level when the registrar has approved or accepted the application for the following trademark and then the mark is advertised seeking public opposition and when a third party makes an objection to the application of the trademark which is similar to the existing trademark for the purpose of preserving the rights of the already registered trademark.
The ‘Azadi Ka Amrit Mahotsav’ event commemorates India’s tremendous progress during the last 75 years. This festival inspires us to rediscover our hidden capabilities and to take honest, collaborative action to reclaim our rightful place in the community of nations. We at MarkShield encourage parties under dispute to settle the matter amicably as this will not only help in reduction cost to the applicant’s spent on such disputes but also will corroborate in declination of pendency of trademark processing.