Elegance Services Pvt Ltd v/s Registrar of Trade Marks Before High Court of Delhi C.A. (COMM.IPD-TM) 16 / 2024
Elegance Services Pvt Ltd v/s Registrar of Trade Marks
Before High Court of Delhi C.A. (COMM.IPD-TM) 16 / 2024
The appeal challenges the order of Senior Examiner of Trade Marks which refused the Appellant’s Trademark Application No. 4847334 for the trademark- KGF (logo) in class 9. The Appellant challenged the said decision under Section 91 of the Trade Marks Act, 1999 before the Hon’ble High Court of Delhi.
The Appellant submitted before the Appellate Court that an opportunity was given to the Appellant by the Learned Senior Examiner of Trademark for the deletion of goods that were similar with the cited application, which, could not be filed in time due to continuous downtime of the Registry’s website. However, the Senior Examiner failed to consider the same and passed the impugned order.
The Appellant also highlighted the errors in the impugned order which recorded that the cited mark was being used for a long time but in fact, the cited mark was filed on ‘proposed to be basis’. Furthermore, the Appellant asserted its status as the registered proprietor of the said mark in class 11, claiming it was overlooked in the impugned order. Seeking a review on its merits and in compliance with the law, the appellant urged a de novo examination by the Examiner.
The Hon’ble Justice Anish Dayal presiding, over the court addressed the appellant’s appeal against the rejection of the Appellant’s trademark application in class 9. The court set aside the impugned order and directed a de novo examination by the Examiner. Emphasizing the importance of considering the Appellant’s submissions in the review process, the court refrained from making any assessment of the Appellant’s arguments. This order reflects a fair and procedural approach to trademark registration proceedings, ensuring the principles of fairness and procedural justice are upheld while addressing the Appellant’s grievances.
The Applicant was represented by Mark Shield before the High Court of Delhi.
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Judgment in the Case of Abhi Traders vs. Fashnear Technologies Private Limited
Before the High Court of Delhi at New Delhi
Date of Decision: February 29, 2024
Plaintiff: Abhi Traders
Defendant: Fashnear Technologies Private Limited (Defendant No. 1), along with Defendants No. 2 to 9 and Defendant No. 10 Ashok Kumar (John Doe)
Facts of the Case:
The case involved a dispute between Abhi Traders, operating under the brand name “
” and Fashnear Technologies Private Limited (Defendant No. 1), along with Defendants No. 2 to 9 and Defendant No. 10 Ashok Kumar (John Doe). Abhi Traders alleged copyright infringement and passing off against the Defendants.
Abhi Traders is the sole manufacturer, promoter, and seller of products listed under its copyrighted pictures and sold under the mark “Ibrana”. The Plaintiff alleged that Defendant Nos. 2 to 9 had been unlawfully using its copyrighted photographs and selling counterfeit garments on Defendant No. 1’s e-commerce platform- www.meesho.com . These products were alleged to be imitations of Plaintiff’s designs and were sold at lower prices, causing financial harm and consumer confusion.
Submission by Plaintiff:
1. The Plaintiff asserted its exclusive rights as the manufacturer, promoter, and seller of products listed under its copyrighted pictures. It argued that Defendants No. 2 to 9 were unlawfully using these copyrighted photographs to sell counterfeit garments on Defendant No. 1’s e-commerce platform- www.meesho.com. The Plaintiff contended that such actions constituted copyright infringement and passing off.
2. The Plaintiff claimed that the Defendants’ activities were causing financial harm and consumer confusion. By selling counterfeit products that mimicked the Plaintiff’s designs and images, Defendants No. 2 to 9 were allegedly misleading consumers and unfairly competing with the Plaintiff. The Plaintiff highlighted the adverse impact of these actions on its business and reputation.
3. The Plaintiff accused Defendant No. 1, Fashnear Technologies Private Limited, of complicity in the infringement activities of Defendants No. 2 to 9. It argued that Defendant No. 1’s failure to disclose complete seller details, as required by Rule 5(3) (a) of Consumer Protection (E-Commerce) Rules, 2020, facilitated the infringement. The Plaintiff contended that Defendant No. 1’s operations were aiding and abetting the infringement, thereby implicating it in the alleged wrongdoing.
Submission by Defendant No.1:
1. Defendant No. 1 argued that it acted as an intermediary in the transactions between sellers and buyers on its e-commerce platform. It contended that its responsibilities were limited to removing URLs of look-alike images and products from its platform, contingent upon receiving a court order to do so. Defendant No. 1 asserted its compliance with legal requirements for intermediaries under relevant statutes.
2. Defendant No. 1 disputed the Plaintiff’s allegations of complicity in the infringement activities of Defendants No. 2 to 9. It maintained that it was not directly involved in the infringement and asserted its willingness to comply with takedown orders issued by the Court.
3. Defendant No. 1 asserted that it had fulfilled its obligations as an intermediary under relevant statutes. It stated that it did not engage in any unlawful activities and had mechanisms in place to address copyright infringement issues on its platform.
Judgement
The Court, having considered the submissions presented and the comparative chart of look-alike products provided by the Plaintiff, found that a prima facie case had been established. It appeared that Defendants No. 2 to 9, along with the unidentified Defendant No. 10, were egregiously exploiting the Plaintiff’s product images, listing visuals, and product designs for their financial gain, leveraging the Plaintiff’s reputation.
Such sellers were unequivocally not entitled to replicate the Plaintiff’s photographs, images, or product designs in such a manner, thereby inflicting harm upon the Plaintiff. While the Court acknowledged the pivotal role of e-commerce platforms in offering new opportunities for small designers and enterprises, it was imperative that these platforms were not exploited to facilitate the imitation of products and the infringement of intellectual property rights. The production of look-alike products, misuse of product images that infringed upon the Plaintiff’s copyrights undermined the integrity of fair trade and competition, warranting intervention to protect the Plaintiff’s lawful interests.
The judgment delivered by the Court acknowledged the evidence presented by the Plaintiff, including a comparative chart of look-alike products, and concluded that a prima facie case of infringement had been established. The Court found that Defendants No. 2 to 9, along with Defendant No. 10, had exploited the Plaintiff’s product images and designs for their financial gain, thereby harming the Plaintiff’s reputation and infringing upon its intellectual property rights. The importance of protecting intellectual property rights in the context of e-commerce platforms and highlighted the need for intervention to safeguard the Plaintiff’s lawful interests.
Conclusion
An injunction was granted against Defendants No. 2 to 9 prohibiting them from reproducing, copying, or imitating the Plaintiff’s designs or images. Additionally, Defendant No. 1- Fashnear Technologies Private Limited, was directed to disclose complete seller details, enhancing transparency and accountability on its e-commerce platform-Meesho.
Such an order not only underscores the importance of protecting intellectual property rights in the digital marketplace and preventing the exploitation of e-commerce platforms for the infringement of such rights but also reflected a commitment to fair trade and competition while ensuring the integrity of creative and innovative endeavors.
While the Court acknowledged the pivotal role of e-commerce platforms in offering new opportunities for small designers and enterprises, it was imperative that these platforms were not exploited to facilitate the imitation of products and the infringement of intellectual property rights. The production of look-alike products, misuse of product images that infringed upon the Plaintiff’s copyrights undermined the integrity of fair trade and competition, warranting intervention to protect the Plaintiff’s lawful interests.
The Plaintiff was Represented by Mark Shield before Hon’ble High Court of Delhi.
Case Brief: Trademark Opposition Analysis Before The Registrar of Trade Marks, Delhi
Date of Decision: 21st February, 2024
Applicant: Amritsar Haveli Cuisines Private Limited
Opponent: Haveli Restaurants and Resorts Ltd.
Mark: AMRITSAR HAVELI
Issue:
The primary issue in this case is whether the mark “AMRITSAR HAVELI” applied for registration by Amritsar Haveli Cuisines Private Limited for services related to providing food and drinks in Class 43, is eligible to be registered on account of the Opposition filed by the Haveli Restaurants and Resorts Ltd where the Opponent claimed to be the owner, user and proprietor of the mark “HAVELI”. The Opponent claims that the Applicant’s mark infringes upon the Opponent’s rights and seeks to prevent its registration on various grounds including alleged intent to trade upon the Opponent’s reputation and goodwill. The key question is whether the Applicant’s mark can be registered despite the opposition’s claims of similarity and infringement.
Facts of the Case:
Amritsar Haveli Cuisines Private Limited applied a Trademark Application No. 4263978 for the mark “AMRITSAR HAVELI” in class 43 for food and drink services. The said application was published and later opposed by Haveli Restaurants and Resorts Ltd. The Opponent argued that the mark-“AMRITSAR HAVELI” was deceptively similar to its trademark- “HAVELI” which claimed to be adopted in 2001 for various services, including food and drinks, and asserted sole ownership of the mark across multiple classes, including Class 43.
Submission by Opponent:
The opponent asserted its sole and exclusive proprietorship over the word – “HAVELI” across various classes, including Class 43. The Opponent further contended that the Applicant’s addition of “AMRITSAR” as a prefix does not diminish the likelihood of confusion or deception among consumers. Furthermore, the Opponent tried to highlight the Applicant’s alleged attempt to trade upon the reputation and goodwill Opponent asserted to be associated with its mark.
In support of the opposition, the opponent presented various documents, including records from the Regional Provident Fund Commissioner, sales promotion expenses, newspaper clippings, invoices, and sales details spanning several years. These documents aim to establish the Opponent’s prior use and ownership of the “HAVELI” mark.
Additionally, the opponent relied upon an order passed by the Hon’ble Regional Director of the Ministry of Corporate Affairs, which ordered the Applicant to change its company name due to similarity with the Opponent’s name. The Opponent argued that this order demonstrates the Applicant’s history of attempting to capitalize on the Opponent’s reputation.
Submission by Applicant:
The Applicant- Amritsar Haveli Cuisines Private Limited denied the grounds of opposition put forth by Haveli Restaurants and Resorts Ltd. It asserted that the “AMRITSAR HAVELI” mark was adopted in good faith and legitimately, with no intention to infringe upon any existing trademarks. The Applicant argued that the term “HAVELI” is commonly used in the hospitality industry and is not unique to the opponent only.
The Applicant highlighted the instances where the Registrar of Trademarks issued adverse orders against the Opponent’s trademark applications containing the term “HAVELI.” These orders cited prior registered marks with similar words, indicating a lack of exclusivity over the term “HAVELI.” Not only that the Opponent has itself relied upon the phonetic, visual and structural difference between its marks and other “HAVELI” formative cited marks during the objections stage of its applications.
Additionally, the Applicant contended that the Opponent’s opposition is part of a pattern of baseless and malicious actions against honest adopters of “HAVELI” formative trademarks. The Applicant asserted that the Opponent’s actions are aimed at harassing the Applicant and misleading the registry.
Moreover, the Applicant argued that the Opponent’s reliance on certain documents, such as those from the Regional Provident Fund Commissioner, failed to establish specific use of the “HAVELI” mark for food services under Class 43. The lack of formal registration for the “HAVELI” mark further weakened the Opponent’s claims of exclusivity.
Observations
The primary issue of the opposition proceeding was whether the mark “AMRITSAR HAVELI” applied for registration by Amritsar Haveli Cuisines Private Limited can be registered or not on account of the Opposition filed by the Haveli Restaurants and Resorts Ltd where they claim to have right over the word “HAVELI”.
The Applicant’s arguments regarding the widespread use of the term “HAVELI” in the hospitality industry and instances where adverse orders were issued against the Opponent’s earlier trademark applications containing the term “HAVELI” were considered. It was noted that the Opponent has themselves opted for phonetic, visual and structural difference in its “HAVELI” marks to address the objections and therefore the Opponent cannot now rely upon similarity between marks.
Upon examination of the evidence, it was found that the Opponent’s claim of prior adoption and use of the “HAVELI” mark since 2001 was not adequately supported. The documents presented by the opponent failed to demonstrate specific use of the mark for food services falling under Class 43. Furthermore, the opponent lacked formal registration for the “HAVELI” mark. The sale details provided were not signed and certified by chartered accountant, the newspaper cuttings could not be relied upon as the same had hand written dates and only showed the use of Opponent’s composite marks. It was also observed that though the Opponent claims to have been using the mark “Haveli” since 2001, the Opponent has failed to secured registration over the word “Haveli”.
It was also observed that the order of the Regional Director of the Ministry of Corporate Affairs on which the Opponent have relied upon was misleading as a stay was operational against the impugned order by the Hon’ble High Court of Punjab and Haryana after the Applicant had moved an appeal against the impugned order.
The objection with regards to use and rights over the word “AMRITSAR” by the Opponent was also unsustainable as the same did not in any way indicated to the geographical origin of the goods/services. The Learned Registrar of Trademark further observed that the Opponent had failed to prove the averments of dishonestly as alleged by them in the Opposition.
It was therefore determined that there was no likelihood of confusion or deception in the public regarding the Applicant’s mark, and deemed it distinctive as a whole. In light of these findings, the Learned Registrar of Trademark ruled in favor of the Applicant-Amritsar Haveli Cuisines Private Limited. The registration of its mark “AMRITSAR HAVELI” in Class 43 was allowed, and the opposition by Haveli Restaurants and Resorts Ltd. was dismissed.
The Applicant was Represented by Mark Shield before Registrar of Trademarks.
HARTEK INDIA PVT LTD v. HARTEK DESIGN AND SOFTWARE SOLUTIONS PRIVATE LIMITED
CS(COMM) 739/2023
Introduction
An application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) was made by the Plaintiff seeking interlocutory injunctive reliefs. The Plaintiff alleged that the defendant was providing software design and development services similar to those of the plaintiff, having borrowed their mark. Taking cognizance of the matter, the High Court of Delhi made some noteworthy observations and passed an ex-parte order.
Facts of the case
Facts in brief for the case are mentioned below for better understanding:
1. The Plaintiff has been engaged in the business of high-voltage electrical products since 1994. It is the proprietor of the various registrations under the Trade Marks Act, 1999 for marks like HARTEK, etc.
2. The Defendant is a software design and development company that runs the website hartekdss.com.
3. The plaintiff alleges that the defendant is providing software design and development services similar to those of the plaintiff, having borrowed the “HARTEK” mark of the plaintiff.
Arguments of Plaintiff
1. That the Defendant is providing software design and development services, having borrowed the mark “HARTEK” mark from them.
2. That the defendant has also applied for registration of the marks “HARTEKDSS” and its logo on a “proposed to be used” basis on 3rd August, 2023 and 4th August, 2023 respectively.
3. That despite Plaintiff’s cease and desist notice issued on 2nd August, 2023, the Defendant failed to acknowledge and correct the similarities between the marks in their response.
4. That, further on, the Defendant had, in fact, changed its logo to “HARTEKDSS”.
Here, the addition of the suffix “DSS” makes no difference in rectifying the aspect of infringement caused by the Defendant. The mark “HARTEKDSS” continues to be deceptively similar to the plaintiff’s mark “HARTEK”, especially as “DSS” merely stands for “Development and Software Services” so that the prominent part of the mark “HARTEKDSS” mark continues to be “HARTEK”.
Arguments of Defendant
1. There was no appearance on behalf of the Defendant.
Observations of the Court
After carefully hearing the arguments and examining the evidence presented, the Hon’ble High Court of Delhi made some acute observations that are mentioned below:
There’s a prima facie case of infringement and passing off
- The facts stated hereinabove and the submissions advanced by the Plaintiff make out a prima facie case of infringement and passing off. The Defendant is apparently yet to start commercial operations as is apparent from the fact that, even in August 2023, it applied for registration of this mark on a proposed to-be-used basis.
- Taking inspiration from the precedent Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], the Hon’ble Bench quoted some paragraphs in furtherance of their observation.
- An action for passing-off will then lie wherever the defendant company’s name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion confusion between the two businesses. If this is not made out there is no case.
- “The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients to believe that the goods or services belonging to someone else are his or are associated therewith.”
- “Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belong to someone else it results in confusion and has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”
Where there lies a prima facie case, grant of injunction becomes necessary
- By taking note of the precedents Laxmikant V. Patel v. Chetanbhai Shah [(2002) 3 SCC 65], and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia [(2004) 3 SCC 90], the Hon’ble Bench recognized that the grant of injunction in this case also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
Directions given by the court
Post-hearing the carefully drafted arguments of the Plaintiff, and acknowledging the absence of Defendant, the Hon’ble Court gave the directions summarized below:
1. Given the facts of the case and the fact that the Defendant, despite advanced service, chose not to appear, the case deserves a grant of ex parte ad interim relief.
2. Till the next date of hearing, the Defendant, as well as all others acting on its behalf, shall stand restrained from using the mark “HARTEK”/ “HARTEKDSS” either by itself or with or without any prefix or suffix including “HARTEKDSS” or any other mark which is confusingly or deceptively similar to “HARTEK” for providing software solutions services or for other goods or services which may be allied or cognate thereto.
3. Compliance with Order XXXIX Rule 3 of the CPC be effected within a period of one week should be established.
Conclusion
The Hon’ble High Court of Delhi acknowledged the prima facie establishment of infringement of the rights of the Plaintiff and passed ex-parte directions to that restrain the Defendant from using impugned mark, or any other mark that stands deceptively similar to Plaintiff’s for providing services similar to Plaintiff’s. Mark Shield was pleased to assist the Plaintiff in the matter.
Tibra Collection v. Fashnear Technologies Private Limited & Ors.
CS (COMM) 678/2023
Court: The High Court of Delhi
INTRODUCTION
This case was filed before the Hon’ble High Court of Delhi by the Plaintiff for copyright infringement, passing off, delivery up, and other reliefs including damages against the known Defendant no. 2 and 6 and the unknown Defendant no. 7- john doe who are allegedly advertising, publishing and offering for sale the garments, which are a complete copy of the Plaintiff’s garments, and are misusing the photographs and images in which the Plaintiff owns rights.
FACTS OF THE CASE
1. The Plaintiff is a manufacturer and retailer of clothing items for men and women and specializes in ethnic wear designed by its in-house designers.
2. It claims to have a sufficient presence even on social media platforms and with a gross turnover of over Rs. 10 Crores for the year 2022-23. It also offers for sale and advertises its goods on various E-Commerce platforms, such as Amazon, Flipkart, and Meesho, with expenditure incurred for the same Rs. 10 Lakh and more.
3. The present suit has been filed against various known and unknown sellers, who are offering to sell garments and ethnic wear by misusing the Plaintiff’s photographs.
ARGUMENTS OF THE PLAINTIFF
1. The Plaintiff alleges that the Defendants are imitating the products as also copying the identical photographs.
2. That the Defendant is under-pricing the goods so as to cause monetary damage to the Plaintiff. Due to this, the sales of the Plaintiff took a complete nose dive when such similar-looking products with identical photographs started surfacing on the Meesho
3. That the product of the Defendants is claimed to be of lower quality, though it is completely imitative in appearance, to the Plaintiff’s product, hence, putting the Plaintiff’s image under the knife.
4. That also, the Defendants do not disclose the complete address on the invoice, which is generated, making it difficult to trace them because the addresses on the invoice, on the GST platform, and on other E-Commerce platforms such as Amazon, Flipkart, and Meesho are all different. Additionally, listings in the JustDial also reflect different addresses and most of the addresses are incomplete.
ARGUMENTS OF THE DEFENDANTS
1. Defendant No.1, Meesho, submits that as an intermediary its obligation is to ensure that whenever any URLs are communicated to it of look-alike images and products, the same be taken down upon the order being passed by the Court.
2. Contrary to Petitioner’s submissions, the details of the Defendant sellers are available whenever the products are delivered and also can be verified from the GST platform.
OBSERVATIONS OF THE COURT
After hearing the arguments of both sides the Hon’ble Court made the following observations:
1. There is a clear misuse of Plaintiff’s product images, listing images, and product design
A mere perusal of the comparative chart establishes a case where the known Defendant Nos. 2 – 6 and unknown Defendant No. 7 are completely misusing the Plaintiff’s product images, listing images, and product design in order to monetarily ride on the reputation of the Plaintiff.
Additionally, the lack of visibility of the complete images, in some cases, in the Defendants’ listings, is nothing but an attempt to conceal the copying.
- The sellers do not possess the right to copy Plaintiff’s photographs, images, and product designs.
The Hon’ble Court was of the opinion that the sellers were violating the intellectual property rights of the Plaintiff. The sellers do not have any right to copy the photographs, images, or product design of the Plaintiff in this manner and, hence, cause damage to the Plaintiff.
While E-Commerce provides new platforms for small designers and businesses, the same ought not to be misused for the purposes of imitating and producing look-alike.
- There is an obligation upon E-Commerce platforms to ensure complete details of the sellers and to maintain consistency in the name of the sellers.
For the sake of consumer safety and awareness, there is also an obligation upon the E-Commerce platform to ensure that the complete details of the sellers are available on the platform. This is important so as to ensure that the consumer is aware of the sellers from whom the product has been purchased and the entity, who is listing the product.
As per Section 5 of the Consumer Protection (E-Commerce) Rules, 2020, notified on 23rd July 2020, there’s an obligation imposed on the e-commerce platform to “give the full geographic address, customer care number, rating, and other feedback about the seller for enabling consumers to make an informed decision at the pre-purchase stage”.
DIRECTIONS GIVEN BY THE HON’BLE COURT
Keeping in mind the observations made above, the Hon’ble Court was of the opinion that under these circumstances and considering the complete imitation, which has been indulged by the Defendant Nos. 2 – 6, and unknown Defendants, a case for grant of an ex-parte interim injunction has been made out by the Plaintiff.
It is in the interest of consumers that such look-alike products are not permitted to be sold, and since, the balance of convenience is also in favor of the Plaintiff, irreparable harm would be caused if the injunction is not granted.
The following directions were issued in the matter accordingly:
1. The Defendants, and other sellers, who are listing their products on the com platform, are restrained from reproducing, copying, publishing, and imitating any of the designs of the Plaintiff’s clothes, or even reproducing the images including the photographs of the Plaintiff, and also from copying the Plaintiff’s designs, which are extracted above for a comparative illustration as also any other designs/images of the Plaintiff, in respect of its clothing.
2. The Defendant No.1 shall reveal all the available details of the said sellers including the address, mobile numbers, email addresses, total sales made by the sellers, GST details, and payments made to the sellers since the time listings have been put up. Additionally, it shall also ensure that the geographic address of all the sellers is clearly generated with the invoice, which is published on the platform.
3. Interestingly, the Hon’ble court also directed the Defendant No.1- meesho to block the payments (which are to be made to Defendants for sale counterfeit products) till further orders.
CONCLUSION
Post rightly acknowledging the grievances of the Plaintiff the Hon’ble High Court of Delhi made a successful attempt at preventing any further irreparable harm to the Plaintiff, and also passed directions to correct the wrongs already committed.
Mark Shield was pleased to assist the Plaintiff in this matter.
read judgment of Tibra Collection v. Fashnear Technologies Private Limited & Ors.
Impresario Entertainment & Hospitality PVT. LTD. v. S & D Hospitality
The Delhi High Court unequivocally elucidated the matter of jurisdiction concerning the infringement of trademarks stemming from acts perpetrated on the Internet in the eminent case of Impresario Entertainment & Hospitality Pvt Ltd v S & D Hospitality. With utmost conviction, the Court reaffirmed its prior ruling in Banyan Tree Holding (P) Limited v A Murali Krishna Reddy & Anr, 2009, thereby efficaciously settling the discordant outcomes surrounding the aforementioned subject matter.
Introduction:
The Delhi High Court has emerged as the focal point for intellectual property (IP) litigation cases, a testament to its expertise in this field.
This impetus has led litigants to initiate legal actions specifically pertaining to IP laws in the esteemed Delhi High Court, consequently giving rise to inquiries concerning the court’s jurisdiction, particularly in matters involving online transactions, throughout the course of several decades. The jurisdictional quandary in question has been thoroughly examined and addressed by the esteemed Justice Mukta Gupta in the present case.
Fact of case:
The plaintiff, an esteemed company engaged in the provision of gastronomic services, maintains its registered office in Mumbai and conducts its operations in Hauz Khas Village, New Delhi. It operates a renowned restaurant, trademarked as ‘SOCIAL,’ along with various coffee shops. In 2017, the plaintiff became aware of the defendant’s two restaurants in Hyderabad operating under the name ‘SOCIAL MONKEY.’ Additionally, the defendant offers a widely recognized beverage named ‘A GAME OF SLING,’ which closely resembles and/or imitates the plaintiff’s beverage, titled ‘HYDERABAD SLING.’
Consequently, the plaintiff filed a petition seeking a perpetual injunction against the defendant, restraining them from manufacturing, selling, marketing, advertising, or offering services under the trademarks ‘SOCIAL‘ and ‘STONE WATER,’ or any other similar marks that could potentially lead to the infringement of the plaintiff’s trademark within the defendant’s establishments.
Both the plaintiff’s and defendant’s establishments have entered into contractual agreements with prominent online platforms such as Zomato and Dine Out, thereby making their menus, contact information, and other relevant details accessible through these platforms.
Jurisdictional Issue:
Before delving into the merits of the case, the court must first ascertain whether it possesses the jurisdiction to entertain the matter. Thus, the key issue before the court is whether it has the requisite jurisdiction to adjudicate on the present case.
Arguments:
The defendant primarily contends that the court lacks jurisdiction to hear the suit, given that neither the defendant’s listed office nor its business operations are situated in Delhi. Furthermore, the plaintiff’s registered office in Mumbai is also beyond the territorial jurisdiction of the Delhi High Court. Another contention raised by the defendant is the plaintiff’s failure to establish the location of its principal office in Delhi.
In response, the plaintiff vehemently opposes these contentions, asserting that it does not maintain any office or branch in Hyderabad. It further clarifies that its principal office responsible for funding and licensing all its brands is exclusively situated in Delhi.
The plaintiff also argues that due to the defendant’s presence on popular platforms like Zomato and Dine Out, it has the capability to divert the plaintiff’s customers to its outlet in Hyderabad. The defendant refutes this notion, deeming it ill-conceived, as the mere act of booking or placing an order online does not suffice to establish the occurrence of a transaction.
Furthermore, the plaintiff contends that the defendant has plans to expand its operations pan India, supported by its filing of trademark applications. Conversely, the defendant contests this assertion, contending that the plaintiff’s actions lack the essential elements to demonstrate any imminent threat.
The plaintiff further claims that at least one customer from Delhi has reserved a table at the defendant’s outlet in Hyderabad, thus establishing the cause of action in Delhi.
Judgment:
Justice Gupta dismissed the case on grounds of jurisdictional inadequacy.
In reaching this decision, the court heavily relied on the jurisdictional principles established by the Delhi High Court, as exemplified in the case of Banyan Tree Pvt. Ltd. v. A. Murali Krishna Reddy. In the Banyan Tree case, the court held that “the mere accessibility of the defendant’s website in Delhi does not confer jurisdiction upon this court.
A passive website, lacking the intention to specifically target audiences beyond the state where the website host is located, cannot vest the forum court with jurisdiction.”
The court drew a necessary distinction between the “purposeful availment” and “purposeful avoidance” tests. It opined that for the plaintiff to establish a case, it must demonstrate that the defendant intentionally sought to target customers within the jurisdiction of the forum state. Once established, it falls upon the defendant to demonstrate that they intended to avoid the jurisdiction of the forum state. Regarding the websites in question, the court concluded that the mere interactivity of the websites within the forum state does not confer jurisdiction.
Considering the burden of proof on the plaintiff to establish that the defendant purposefully availed the jurisdiction of the forum state, the court determined that the defendant must engage in some commercial transaction with customers within the forum state, intending to pass off their goods as those of the plaintiff. The onus lies on the plaintiff to present evidence supporting this claim rather than mere conjecture.
The court further held that even if the defendant succeeded in attracting customers from other jurisdictions through platforms like Zomato and Dine Out, these customers would still need to physically visit the defendant’s outlet in Hyderabad to avail themselves of the services. The court emphasized that the most that customers from other jurisdictions could do was reserve a table at the defendant’s restaurant, which ultimately resulted in the completion of the transaction in Hyderabad, where the cause of action would primarily lie.
Although the judgment is well-reasoned, it associates the cause of action with the finalization of the transaction, leaving some uncertainty regarding situations involving the transportation of goods to the forum state or the involvement of intermediaries. Additionally, when defendants are absent, as in the previous case of Impresario Entertainment & Hospitality Pvt. Ltd. v. Urban Masala, where an ex parte injunction was granted without proper consideration of jurisdictional claims, the issue becomes less clear.
Related Cases:
- Indian Performing Rights Society Ltd. v. Sanjay Dalia & Anr. – The Supreme Court of India interpreted section 62 of the Copyright Act, 1957, and section 134(2) of the Trade Marks Act, 1999, concerning the appropriate venue for the plaintiff to file a lawsuit. It emphasized that “The very intention behind the insertion of provisions in the Copyright Act and Trade Marks Act is to facilitate the convenience of the plaintiff. The convenience of the parties has also been given statutory expression in section 20 of the CPC. The interpretation of these provisions should prevent causing inconvenience to the parties.”
- Banyan Tree Holding (P) Limited vs. A. Murali Krishna Reddy & Anr. on 23 November 2009 – The division bench of the Delhi High Court held that “Under clauses (a) to (c) of section 20 CPC, a plaintiff has a choice of forum and cannot be compelled to go to a place of business or residence of the defendant and can file a suit where the cause of action arises.”
- Icon Health And Fitness, Inc vs. Sheriff Usman And Anr. – The Delhi High Court established jurisdiction under Clauses (a) and (b), ruling that the defendants were “carrying on business” in Delhi. The Court’s reasoning was succinct, stating that “Though the defendants do not physically exist in Delhi, they are promoting their fitness apps and brands through App Store, Google Play Store, and e-commerce platforms like www.amazon, which can be accessed and used from all over the country, including Delhi. Thus, the defendants are conducting business or working for gain in Delhi, and this Court has territorial jurisdiction to try and entertain the present suit under section 20 of the CPC, 1908.”
Conclusion
This case has addressed the issue of the court’s ability to exercise jurisdiction over cases involving online transactions. Mere accessibility of the defendant’s website in the forum state can no longer serve as sufficient grounds for the court to assert jurisdiction.
Furthermore, the court has reaffirmed the legal principles established in the Banyan Tree case and provided further elucidation. The judgment in this case establishes a more stringent and consistent standard for determining the court’s authority to entertain cases involving online transactions.
BPI Sports LLC v. Saurabh Gulati & Anr
Trademark Squatting and ‘Bad Faith’ under Section 11(10)(ii) of The Trademarks Act
[C.O. (COMM.IPD-TM) 16/2021]
The Delhi High Court recently noted that even though the term “trademark squatting” does not specifically appear in the law, it would undoubtedly constitute “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Act when it directed the removal of a word mark from the register of trademarks. Trademark squatting is an internationally recognized intellectual property crime.
The court further determined that Section 11(10)(ii)’s true intent and purpose is to prevent the registration of a mark whose registration request has been compromised by ill faith. Please read further to know more…
Delhi High Court’s Stand on Trademark Squatting (BPI Sports LLC v. Saurabh Gulati & Anr. [C.O. (COMM.IPD-TM) 16/2021])
A petition was filed at the Delhi High Court under Section 57 of the Trade Marks Act, 1999. The petitioner was seeking rectification of the register of trademarks by removal, therefrom, of the trademark “BPI SPORTS” registered as a word mark in favor of Respondent 1 in Class 5 of the NICE classification, for “health food supplements, dietary supplements, and nutritional supplements”.
=> Brief Facts of The Case
1. The Petitioner is a company incorporated in Florida, USA. It claims to be a leading player in the dietary and nutritional supplements sector.
2. The wordmark “BPI SPORTS” and the device mark stands registered in favor of the Petitioner on 15th July 2014 and 28th November 2017 respectively in the US, in Class 5 in respect of dietary and nutritional supplements.
3. The petitioner claims to have been using the said mark “BPI SPORTS” for dietary and nutritional supplements since 28th January 2009. As per the averments in the petition, the petitioner commenced using the mark “BPI SPORTS” in India in January 2019. As such, even as of date, the Petitioner has, to its credit, only four years experience of use of the asserted mark “BPI SPORTS” in India.
4. Respondent 1 was one of the persons who was importing the goods of the petitioner in India, under the mark.
5. Respondent 1 surreptitiously applied and obtained registration, in its favor, of the word mark BPI SPORTS in Class 5 for health food supplements, dietary supplements, and nutritional supplements. Application No. 4422891 was submitted by Respondent 1, for the said registration on 28th January 2020, on a “proposed to be used” basis, and the word mark BPI SPORTS was registered in favor of Respondent 1 with effect from the said date vide certificate dated 26th September 2020.
Hence, the grievance as stated by the Petitioner is that the Respondent has fraudulently obtained registration of the impugned mark BPI SPORTS, which belongs to the Petitioner and stands registered in its favor, albeit in the US.
The petitioner alleges that the Respondent is resorting to trademark squatting, as it has no intention of using the mark BPI SPORTS and has merely got the mark registered in its favor, so as to avoid the mark being registered in favor of the Petitioner.
=> Observations of The Court
After hearing both sides, the Hon’ble Court made some significant observations as mentioned below:
1. The bench observed that Gulati was aware that the mark was registered in the name of BPI Sports in the USA and that the company enjoyed global repute in the said mark. Hence, this shows the clear intention of the Respondent to steal the Petitioner’s mark so as to block the company’s attempt at registering its name in India. This is a classic example of Trademark Squatting.
2. The Bench refused to recognize a relief to the Petitioner under sub-section (1) to (3) and Section 11 of the Act but did hold that the aggrieved was indeed entitled to relief under Section 11 (10)(ii) which requires the Registrar, while registering the mark, to take into consideration the bad faith involved either of the applicant or the opponent.
While acknowledging a fair attempt at Trademark Squatting made by the Respondent, the Court recognized bad faith and discussed relief for the Petitioner.
3. Additionally, The Court did clarify the contention of the Petitioner regarding infringement of its mark “as the prior adopter and user of the mark which was registered in its favor in the US”.
Since the Petitioner does not hold any registration in its favor in India of the mark BPI SPORTS either as a word mark or as a device mark, infringement under Section 29 of the Act cannot be entertained.
CONCLUSION
With the recent pronouncement of the High Court of Delhi, fresh clarity has been acknowledged on Trademark Squatting and the bad faith that it brings under Section 11(10)(ii) of the Act. this has opened the gates to a new horizon and has left promising room for relief to those aggrieved by the acts of such squatters.
To read The Judgment Click here
- Apoorva Sharma
- May 26, 2023
Astral Ltd. vs. Ashirvad Pipes Pvt. Ltd.
FAO(OS) (COMM) 63/2023
Overview of the Case
The Plaintiff-Astral Ltd. is a renowned manufacturing company popularly known for itspipes and other allied products. In the present matter, the Defendant- Ashirvad Pipes Pvt. Ltd was claimed to be infringing the Plaintiff’s registered Trademark “CPVC PRO” to which the Hon’ble Delhi High Court directed the Respondent to undertake amends in the representation of its trademark so as to obviate chances of confusion amongst the consuming public.
Brief Facts of the Case
The Plaintiff company is engaged in the business of manufacturing, distributing, and selling high-quality pipes, parts, and fittings for use in plumbing, sewage, drainage, fire protection, and the like. In the year 2004, the plaintiff company became the first entity to launch Chlorinated Polyvinyl Chloride (CPVC) piping systems in India. The plaintiff has filed and obtained various registrations in respect of the mark ‘CPVC PRO’ and ‘CPVC PRO’ formative trademarks. On account of its superior quality, continuous and extensive use, and large-scale publicity, the plaintiff’s trademark ‘CPVC PRO’ has acquired an immense reputation and goodwill in the market. Accordingly, the plaintiff claims both statutory as well as common law rights in the trademark ‘CPVC PRO’. The Defendant has also filed various trademark applications in respect of similar products which are pending as of date. The grievance of the plaintiff is with regard to the impugned mark ‘CPVC FLOWPRO’, wherein ‘CPVC’ and ‘PRO’ are being used together and the same is similar to the trademark of the plaintiff, ‘CPVC PRO’. The trademark application of the defendant was filed in January 2021, on a “proposed to be used basis”, whereas the Plaintiff has been using the ‘CPVC PRO’ marks since 2016.
The Impugned Order
Under the Impugned Order dated 03.02.23, the following observations were made:
1. The mark of the Defendant, CPVC FLOWPRO, and the mark of the Plaintiff, CPVC PRO, do not hold any visually, structurally, phonetically, or conceptually similar elements. Hence, the test of deceptive similarity does not hold up to the two.
2. The exercise of the Plaintiff to file multiple registrations suggests mala fide intentions.
3. Generic, laudatory, and descriptive marks cannot be monopolized by anyone. Therefore, the Plaintiff is wrong in claiming a right in the words ‘CPVC’ or ‘PRO’ either individually or in conjunction with each other.
Observations of the Hon’ble Division Bench
The Hon’ble Division Bench directed the Defendant to never use the words ‘CPVC FLOWPRO’ in the standalone form without using its house mark ‘Ashirvad’ and also to represent the said house mark in bigger fonts. These changes were made applicable not only to the products but also to the trade literature.
Mark Shield was pleased to assist the Plaintiff-Astral Limited in the Appeal.
Apoorva Sharma
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi.
Intercontinental Great Brands Vs. Parle Product Private Limited
CS (COMM) 64/2021
The High Court of Delhi at New Delhi
INTRODUCTION
The 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 the Defendant from using the impugned mark for manufacturing, packing, or selling their vanilla cream filled chocolate sandwich biscuits in the impugned pack or trade dress.
FACTS OF THE CASE
1. Cream-filled sandwich cookies were introduced in the worldwide market by National Biscuit Corporation in the year 1912, as stated, under the brand name OREO.
2. Today the Plaintiff owns ownership and proprietorship of the OREO brand of biscuits.
3. As alleged by Plaintiff, prior to 2020 the defendant was using the brand FAB and FAB! For its biscuits. In or after January 2020, it introduced its own range of vanilla cream-filled chocolate biscuits under the brand “FAB!O” which were identical to biscuits manufactured and sold by the plaintiff under the OREO trademark.
4. The trade dress of the package under which the defendant is manufacturing and selling its FAB!O biscuits is also deceptively similar to that of the Plaintiff.
ARGUMENTS OF THE PLAINTIFF
1. Plaintiff alleges that the impugned mark ‘FAB!O’ is phonetically similar to Plaintiff’s mark “OREO”. Even a small child is highly unlikely to slur the word “FAB!O” to “OREO”.
2. OREO being a purely invented word is entitled to enhanced protection under the Trade Marks Act, 1999.
3. Defendant’s cookie copies all the essential features like the (i) outer ridge, (ii) inside dashes just inside the circumference, and (iii) florets-shaped embossing. It was submitted that Plaintiff’s OREO cookie holds a subsisting trademark registration and the defendant has infringed it. Plus both are in the form of black circular biscuits with white vanilla cream in the middle.
4. The packaging of Defendant is deceptively similar to that of Plaintiff. Elements like the blue and white colour scheme, slanted placement of “OREO” and “FAB!O” that is written in white letters, similar size of the package, and the placement of the biscuit indicate so. Using the principle of “initial interest confusion”, shall lead to confusion between the competing marks.
5. Defendant has established their intent to imitate by using the said mark “FAB!O” only for their vanilla-filled chocolate sandwich cookies that are similar to Plaintiff’s OREO. Defendant uses the mark “FAB!O” only for these chocolate sandwich cookies and uses the ‘FAB!’ mark for the rest of their cookies.
ARGUMENTS OF THE DEFENDANT
1. Defendant’s mark is structurally, visually, and phonetically dissimilar to Plaintiff’s. In fact, the only common word between the words is the letter “O”.
2. Even though both the cookies have an embossing on the surface, there is no similarity between the two. Plus, the elements of design mentioned by Plaintiff are common to the trade. Furthermore, since neither of the biscuits is sold open or loose, as such, the similarity in design, even if it were to be assumed to exist, is inconsequential. A buyer never purchases the biscuits on the basis of the pattern on the surface of the biscuit.
3. The aspects regarding packaging raised by Plaintiff are all common to the trade, hence, there can be no deceptivity. Additionally, the manner in which Defendant promotes its product is very different and unique. Therefore, no case for confusion as claimed.
4. Defendant’s packing has the ‘PARLE’ logo prominently displayed, erasing any possibility of confusion in the mind of the purchaser as claimed. This establishes the bona fide intentions of Defendant.
5. The FAB!O mark is nothing but an amalgam of the FAB! And FABO marks of Defendant. Furthermore, as already mentioned, the PARLE logo eliminates any chance of deception or confusion.
OBSERVATION OF THE COURT
The Hon’ble Court observed that it is essential to decide on the Application filed under Order XXXIX Rule 1 and 2 of the CPC. It first deconstructed Section 29 of the Act and cleared the air on the concept of “confusion”. Furthermore, they made the following observations:
=> Infringement and passing off
1. It would be facile to suggest that a customer could be deceived into mistaking “FAB!O” for “OREO” and precedents in which the plaintiff’s and defendant’s marks were held to be phonetically similar do not apply here. However, even though the defendant has stylistically written its mark as ‘FAB!O’, based on their own Facebook page promotional advertisements and more, it can be established that the ‘!’ is merely an ‘I’ in disguise.
2.In reference to the principle of “first syllable dissimilarity” raised by the defendant which eliminates the chances of the two marks being phonetically similar because the syllable is different (“O” and “Fa”) the Court relied on Amritdhara Pharmacy v. Satya Deo Gupta (1963) 2 SCR 484 and Pankaj Goel v. Dabur India Ltd. (2008) 38 PTC 49. It was held that since the defendant has declared that the “FAB!O” mark is required to be pronounced as “fab-ee-yo”, it can hardly be contended that “FAB!O” and “OREO” are not phonetically similar.
3. Names that end in “O”, let alone “IO”, are not commonplace in biscuits. By adding an “O” to its earlier “FAB!” mark, the defendant has made identical intonation to the plaintiff’s mark. Additionally, the “eo” sound in “OREO” is conceivably one of the striking features of the plaintiff’s product. This when seen in conjunction with the fact that the FAB!O mark is used only in respect of cream-filled chocolate sandwich biscuits, and the blue package is only for the vanilla cream ones, makes it abundantly clear that the defendant has consciously sought to approach as close to “OREO” as possible. A customer of average intelligence and imperfect recollection, who is aware of Plaintiff’s OREO and its packaging may legitimately be expected to draw an association of FAB!O with OREO. Here, the point of “initial interest confusion” along with the establishment of confusion as identified in the case of Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd. (2015) 63 PTC 551 that relied on Mc Carthy on Trademarks and Unfair Competition was also recognized.
4. The intent to capitalize on the goodwill earned by the plaintiff in respect of similar biscuits by adding the terminal “O” is strengthened by the difference in the packs that the defendant is using. A blue and white packing using a strikingly similar shade of blue as used by the plaintiff for their vanilla cream-filled chocolate sandwich biscuits leaves no room for doubt. The difference in the design on the surface of the sandwich biscuits can hardly be made out by a glance at the packs.
5. In assessing infringement a comparison of the registered trademarks to assess whether they are so similar as to lead to confusion or deception, as envisaged by Section 29 has to be done. Infringement is a purely intellectual property right independent of the intent of the alleged infringer. The right to act against infringement is, therefore, protective in nature. Therefore, there is no distinction between deliberate and innocent infringement, though deliberate copying might, in a given case, justify the invocation of the Slazenger & Sons v. Fletham & Co. (1889) 6 RPC 531 principle.
6. The contention that the trade dress employed by the plaintiff for its OREO cookies is common to the trade remains inconclusive. It is not a defense against infringement statutorily.
7. The reliance on the Britannia Industries Ltd. v. ITC Ltd. (2021) 86 PTC 61 case by the defendant to contend mere intention to confuse could not make out a case of infringement would not apply here. The impugned mark or trade dress has to be examined vis-a-vis the asserted mark and the surrounding circumstances of the case. The prima facie intent of the defendant to confuse or deceive the plaintiff’s customers has to be established. Only if the distinctive character is found, the said defense shall prevail.
=> Infringement or passing off based on the similarity of cookie designs
1. Contrary to Plaintiff’s claims, the Court could not establish a prima facie infringement of the cookie design. Infringement could be alleged only if the design on the surface of FAB!O biscuits were identical or confusingly or deceptively similar to OREO but it was found to be almost totally dissimilar.
2. Infringement has to be assessed by comparing the marks feature for feature. The same was not convinced here.
CONCLUSION
The application was disposed of by the Court. They restrained the defendant from using the impugned FABIO or FAB!O marks for any purpose whatsoever. It also restrained the defendant from manufacturing, packing, or selling their vanilla cream-filled chocolate sandwich biscuits in the impugned pack.
LT OVERSEAS NORTH AMERICA INC & ANR VS KRBL LIMITED
CS (COMM) 347/2022 Court: The High Court of Delhi
INTRODUCTION
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.
CONCLUSION
The application was disposed of by the court. They restrained the defendant from using the packaging complained of by Plaintiff.
Click here to read the order
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
Prior Publication a valid defense in design infringement suits
Court: Delhi High court
Case: NOVAMAX INDUSTRIES LLP VS PREM APPLIANCES & ANR.
INTRODUCTION
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.
PLAINTIFF’S POSITION
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’S POSITION
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”.
COURT OBSERVATION
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.
CONCLUSION
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.
Click here to read the order
Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights.
VINTAGE DISTILLERS LIMITED VERSUS RAMESH CHAND PAREKSH
Court: Delhi High court
Case: VINTAGE DISTILLERS LIMITED VS RAMESH CHAND PAREKSH
Introduction
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.
Conclusion
The Application for ad-interim injunction was allowed and the matter was listed for next date to hear the suit.
click here to read order
Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights.
Relaxo Footwears VS Aqualite Industries Pvt Limited
Court: Delhi High court
Case: Relaxo footwears VS Aqualite industries PVT Limited
Overview
The case is a dispute between two footwear manufacturing companies Relaxo and Aqualite. Relaxo filed a lawsuit against Aqualite for infringing their footwear design.
Facts
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.
Impugned Judgement
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.
Decision
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.
click here to view Order
Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights, To know more Apoorva click here
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?
Observations:
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.
Decision:
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.
Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights, Apoorva has gained work experience in IP Prosecution by mainly focusing on Trademark Applications and Opposition proceedings.
Extent of Registrar’s power in condonation of delay
Aman Engineering Works vs. Registrar Trademark, New Delhi & Anr.
Introduction
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.
Facts
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.
Observation
- 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.
Conclusion
The Petition filed by Aman Engineering Works was allowed and the impugned order was set aside.
Apoorva Sharma is a 2022 Law Graduate from GGSIPU. With interest in Intellectual Property and related rights, Apoorva has gained work experience in IP Prosecution by mainly focusing on Trademark Applications and Opposition proceedings.
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.
Final words
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.
Nagma Kacchi
IPR/Trademark Consultant
