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Extensive IPR Practice across India

THE SUPREME COURT OF INDIA
screenshot-docs.google.com-2016-08-23-02-20-58
THE HIGH COURT OF GUJARAT
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THE HIGH COURT OF JAMMU AND KASHMIR
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THE COPYRIGHT BOARD
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THE HIGH COURT OF RAJASTHAN
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THE HIGH COURT OF UTTARAKHAND AT NAINITAL
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INTELLECTUAL PROPERTY APPELATE BOARD, CIRCUIT BENCH MUMBAI
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INTELLECTUAL PROPERTY APPELATE BOARD, CHENNAI
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INTELLECTUAL PROPERTY APPELATE BOARD, CIRCUIT BENCH - DELHI
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INTELLECTUAL PROPERTY APPELATE BOARD, CIRCUIT BENCH KOLKATA
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DELHI HIGH COURT
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DISTRICT COURT, DELHI- TIS HAZARI
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DISTRICT COURT, DELHI- SAKET
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DISTRICT COURT, DELHI - ROHINI
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DISTRICT COURT, DELHI - PATIALA HOUSE
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Reported Judgments

S No. Case Citation Case Brief
 1 RSPL health Pvt. Ltd. Vs. Rajesh M nahta and ors. MANU/DE/3633/2015 Plaintiff had filed the suit seeking a decree for permanent and mandatory injunction for infringement of their registered Trade Mark ‘XPERT’ by the Defendants and for claiming all rights in their registered Trade Marks. Court held that Plaintiff is right in suing the defendant restraining them against using the trademark which is deceptively similar to the plaintiff’s trademark XPERT in relation to the impugned goods.
2 M/s. S. Oliver Bernd Freier Gmbh & Co. Kg. Vs. M/s. Rasul Exports & Anr. 2014VIAD(Delhi)135, 208(2014)DLT84, MIPR2014(1)336, 2014(57)PTC475(Del), 2014(58)PTC630(Del) Plaintiff a German company has used the trademark of S. OLIVER since 1979 which is duly registered in India also in 1989. The defendant used the same trademark without ‘S’. Case was filed by plaintiff for the relief of permanent injunction to restrain passing off and infringement of its trade mark S. OLIVER.

Issue was whether the defendants’ trademark was deceptive? Who among the parties had prior registration and prior use of the trademark? It was evident from the documents on record that the registration of the trademark by the plaintiff in 1989 precedes the adoption by the defendant of its trademark in 1992. Further, plaintiff had also established the presence of its goods in India vide the bills/invoices. Injunction was granted.

3 M/s. Jagdamba Impex
Vs. M/s. Tristar Products Private Ltd.
2014(143)DRJ298, MIPR2014(2)164, 2014(59)PTC149(Del) Plaintiff was engaged in business of manufacturing and marketing of cosmetic products. Impugned Teeth Cutting Machine of the defendant was identical in each and every aspect including the shape, measurement, artistic features as to that of the plaintiffs. Plaintiff claimed that action of the defendant amounts to infringement of copyright of the plaintiff in industrial drawings and in such equipment. It was held that “A drawing/design which is an artistic work under Copyright Act, as also under Designs Act, if not registered under Designs Act, will have protection under Copyright Act only till design is used not more than fifty times by an industrial process to produce an article by means of application of drawing/design”.
4 Nippon Soda Co. Ltd. Vs V.P. Goyal and Anr. 2014(58)PTC386(Del) The plaintiff sued for permanent injunction to restrain the defendants from infringing the trademark TOPSIN of the plaintiff and passing off their goods as that of the plaintiff seeks stay under Section 124(1)(i) of the Trade Marks Act, 1999. Court allowed the petition.
5 Amit Jain Vs. Ayurveda Herbal and Ors. MIPR2015(2)1, 2015(63)PTC121(Del) Plaintiff was engaged in the business activity of manufacturing and marketing of cosmetic products. Defendants had started to use in relation to its impugned business and goods, the identical Designs of the impugned plastic bottles and tubes similar to plaintiff. Plaintiff had filed the suit for permanent injunction restraining infringement of designs, passing off, delivery up, rendition of accounts etc. against the defendants. Court observed that prima facie, designs in question were not novel, prior-published. Same were otherwise also not protectable under Section 30 of Act. Moreover Plaintiff’s name had not been entered in register after assignment. Therefore, on date of filing of suit by Plaintiff for infringement of same very designs was not maintainable. Court said “Plaintiff will not be entitled to injunction since the case for infringement of design has not been made out”.
6 Raj Kumar Saraf
Vs. M/s. Vaidya Nandram Gigraj Chamaria
2013(55)PTC354(Del) Copyright Board had cancelled registration of Appellant by expunging entry made in favor of Appellant related to art work of Appellant in Copyright Register. The issue was whether the act of the CB is justified or not. Appellant in application filed by it for registration of its art work, had claimed year of first publication as 1995 but there was no primary evidence placed on record by Appellant to substantiate his authorship of that art work. Further Respondent on other hand had proved through overwhelming evidence that his art work was published as far back as in year 1996 and started marketing said product in pouches in 1991. Court held that “Copyrights shall not allow unless party proves his authorship of work and publication of his work being prior to work of other party relation to same product titled.”
7 Babu Lal Data
Vs Intellectual Property Appellate Board
2014(60)PTC547(Guj) Petition was filed by the petitioners under Articles 14, 19(1)(g) and 226 of the Constitution of India as well as under the provisions of the Trade Marks Act, 1999 for the prayers, inter alia, that appropriate writ, may be issued quashing and setting aside the impugned order passed by Intellectual Property Appellate Board.
8 RSPL Health Private Limited
Vs. Deep Industry
2015(61)PTC438(Del) Present application filed for challenging ex parte order whereby, defendant had been restrained from using labels which were similar to plaintiff’s labels. The issue was whether injunction was rightly granted against defendant for not using labels. It was held that layout design, color scheme, get up, arrangement of artistic features, lettering style in two label were almost similar except brand names of parties. Admittedly, both parties were engaged in same business. Therefore, no grounds had been made by Defendant for vacation of ex-parte order. Hence, order of injunction was confirmed.
9 Bhatia Enterprises
Vs. Subhash Arora
MANU/DE/0136/2016 This suit is filed for pendente lite injunction by the plaintiff in its suit alleging infringement of the registered design. The design which has been registered is a design for a water jug. The court held that it is clear that the defendant is manufacturing its products being water jugs which are more or less identical to the registered design of the plaintiff and which is clearly a grossly dishonest act on the part of the defendant and hence infringement of copyright of design.
10 Mohan Lal, Proprietor of Mourya Industries Vs. Sona Paint & Hardwares

AND Micolube India Limited Vs. Rakesh Kumar Trading as Saurabh Industries & Ors.

AIR2013Delhi143, 200(2013)DLT322, MIPR2013(2)156,

2013(55)PTC61(Del)

a) A suit by the registered proprietor of Design for infringement of the registered design is not maintainable against another registered proprietor under the Designs Act, 2000 in so far as the registration covers the same features of the shape and configuration of the same article under the Design.
b) The remedy of passing off in so far as it relates to claim of protection for shape of articles is not available for the purposes of enforcement of rights and remedies under the Design Act. The said remedy is clearly absent under the Designs Act considering the avowed objective of the Act of 2000 which is to provide limited protection with no unnecessary extension.
c) The remedy of passing off in so far as it relates to claim of protection for shape of articles cannot be joined with the suit for infringement of the registered Design. The said remedy of passing off is available in alternative to the statutory protection conferred by the Design Right. For the purposes of the same, the suitor has to elect between the two inconsistent rights and remedies having distinct objects and policies.
d) Notwithstanding the above said conclusion in (b) and (c), the remedy of passing off would continue to be available along with the infringement of registered designs and can be joined with the same in order to prevent consumer confusion which may be caused by the use of trade mark, get up, trade dress or in any other manner excepting the shape of the goods which is or was forming the subject matter of the registration of the Design.
e) The remedy of the passing off in so far as the shape of the article is concerned shall also be available even during currency of the design monopoly or even after the expiry of same to the extent that the claim of the feature of the shape is not covered within the novelty claim under the Design monopoly rights and the said claim of the protection qualifies all the necessary ingredients of the Trade Mark.
f) A remedy of passing off in so far as the shape of the article is concerned shall not be available even after the expiry of the Design to the extent the said feature of the shape of the article is covered within the novelty claim as made under the Design Right as after expiration of the Design, the novel shape claimed under the Design Act goes in public domain.
11 M/s. GM Modular Pvt. Ltd. Vs. M/s. Havells India Ltd. MIPR2014(2)229, 2014(59)PTC628(Del) Plaintiff had filed the suit for permanent injunction and damages for disparagement and unfair trade practices. The plaintiff was engaged in the business of manufacture and trade of wide range of electrical goods. Plaintiff in the course of trade adopted the trade mark GM. Havells company released advertisement Havells Shock Laga which was being aired/broadcasted during the IPL Cricket Matches display on the Television. Court held that disparaging advertisement was a deliberate act on the part of the defendant aimed at reducing the sales of the plaintiff’s product and thereby increasing its own sale, through the device of slander of goods/disparaging and/or denigrating advertising, the plaintiff would be entitled to punitive damages.
12 Laverana Gmbh & Co. KG Vs. Mac Personal Care Pvt. Ltd. and Ors. MIPR2015(1)0246 Suit was filed for permanent injunction for restraining passing off, damages, delivery up against Defendants with regard to Trade name/Trade mark LAVERA in relation to natural cosmetics and other body care products. Plaintiff was the first adopter of Trade mark which was being used by Plaintiff in overseas countries prior to Defendants and Trade mark was being advertised through various modern media definitely prior to Defendant. Even though the trademark not being registered in India has a global character and the court while determine the importance and prior use, look at the global scenario rather than local.
13 KRBL Ltd. Vs. P.K. Overseas Pvt. Ltd. 2014vAD(Delhi)1, 210(2014)DLT325, MIPR2014(2)37, 2014(58)PTC521(Del) Respondent had substantially copied essential features of artistic work of Applicant’s label, prominent being two white line border in a blue temple like shape, yellow Diya shown in a circle with a red background, attached with a rectangular kind of box with brand name ‘AARTI’ inside. Artistic features as adopted by Respondent were very similar to Applicant’s label/trade dress that, there was every likelihood of same deceiving unwary purchasers that, goods acts which they were purchasing were those of Plaintiff. Therefore Applicant had made out a prima facie case against Respondent entitling it to grant of interlocutory injunction. The court held that error on account of some mistake or error apparent on face of record is permissible to be rectified and 
14 Dandi Salt Pvt. Ltd. Vs. UOI MIPR2014(3)1, 2014(59)PTC501(Del) The Petitioners (Dandi Salt Pvt Ltd) had filed an objection with the Registrar of Copyrights against the registration of the respondent’s copyright. The Registrar rejected the objection which was appealed against by the petitioners. The appeal was also rejected by the Copyright Board- on grounds of delay. The issue was whether the Registrar of Copyright has the jurisdiction to reject an application of review preferred by the Copyright Board? The court said that the Court refused to express an opinion on whether condonation of delay would qualify as a procedural matter or be evaluated on the merits before the copyright board.
15 Capital Meters Limited and Ors.
Vs. S. Johnflex Industries and Ors.
2015XAD(Delhi)70, 221(2015)DLT606 Suit was filed in the year 2004. Initially, a written statement was filed by the defendants who were subsequently amended in the year 2008. Issues were framed in the year 2009 and the plaintiff’s evidence was concluded in the year 2012. Three years later, in the current year, i.e., 2015, the said application was filed to bring on record the documents which were, at all times, available with the defendants. A flimsy explanation had been attempted to be given for the non-production of the said documents at an earlier stage. Hence court held that no plausible explanation had been given for not producing the documents despite the suit having been filed in 2004 and even the written statement having been amended in 2008, particularly, when the documents were all along said to be available with the appellants.
16 KRBL Ltd. Vs. Lal Mahal Ltd. and Ors

 

MANU/DE/3935/2015 The appellant, who is the plaintiff, filed the suit for permanent injunction, restraining, infringement, passing off of the appellant’s mark “India Gate” by the respondent who is using the mark “Church Gate”. Court stated that there is delay on the part of the appellant of over 9 years in bringing the action against the respondents. The appellant has failed to sufficiently explain the delay on its part and on the other hand, the learned single judge has prima facie found that the explanation for the delay is not true and there is active concealment on the part of the appellant. The balance of convenience is in favour of the respondents as they have sales running into hundreds of crores. The court had not discussed upon the deceptive similarity of the product.
17 Inter Ikea Systems BV Vs. Ikea Furniture Pvt. Ltd. MANU/DE/3872/2014 Plaintiff was the worldwide owner of the IKEA trademarks. Plaintiff has filed the present suit for permanent injunction restraining infringement of trade mark, passing off, delivery up, damages etc against Ikea Furniture Pvt. Ltd. Court stated that IKEA furniture has deceptively similar name as of plaintiff and hence they were held liable to pay damages caused to the plaintiff.
18 Lamboda Eastern Telecommunication and Ors. vs. Acme Tele-power Pvt. Ltd. and Anr. (AIR 2010 UTR 79) The Plaintiff filed suit for patent infringement against the defendants claiming infringement of two of its granted patents before Rudrapur District Court, Uttrakhand and got interim injunction there. The defendant through us challenged the order of interim injunction and also filed counter claim against both the patents for their revocation. The matter was then shifted to H.C of Uttarakhand further to which, the interim injunction was vacated.  The matter was further contested High Court of Uttarakhand as well as Delhi High Court on technical grounds and finally the injunction was vacated.
19 Escorts Construction Equipment Limited vs. Gautem Engineering Company and Anr. (AIR 2010 J&K 13) The petitioner filed a suit for infringement against the defendant before the High Court of Jammu & Kashmir.  The petitioner filed the suit on the basis of the patents granted and registered copyright of industrial drawings relating to manufacture of construction equipments .i.e., Cranes.

The defendant was injuncted from using an of the technologies covered under said patent and the registered copyright upon which suit was filed, however the defendant contested the matter before the High Court of Jammu & Kashmir and Faridabad District Court, Haryana and after a long proceeding both the parties settled the matter out of the court in favour of mutual interest.

20 M/s Escorts Ltd.  vs.  M/s Action Construction Ltd. (CS (OS) 1669/2013) The plaintiff filed a suit for infringement of their design before Delhi High court against the respondents wherein the said design was already registered in the name of Escorts. The defendant was manufacturing a particular crane using several technologies protected under number of patents in the name of the plaintiff; therefore the plaintiff initiated and filed three patent suits (CS (OS) 1669/2013, TR.P. (C.) 72/2013, CO. APPL. (M) 5/2012) against the defendant that are currently pending before the Delhi High Court.  
21 Deepak Pranjeevan Das vs. Safex Chemicals (CS (OS) 3348/2012) The plaintiff filed a suit for ex-parte injunction against the defendants before Delhi High Court to restrain the defendants from infringing their granted patent.  Our firm represented the defendants in the matter; the defendants challenged the authenticity of the granted patent by filing the patent revocation by way of counter claim. The Delhi High Court recognized the grounds along with the facts of our patent revocation and decided to check the authenticity of the patent first, further to which no relief was given to the plaintiff.  The matter is pending before Hon’ble High Court.
Looking into the progress of the matter, the other defendant namely, VIJAYALAKSHMI INSECTICIDES & PESTICIDES delegated their suit matter (CA 1918/2004) to our firm and the case is pending before the Delhi High Court.
22. Monica Gupta vs. Neoperl GMBH (C.S. (OS) No. 455/2012) The plaintiff filed a suit for injunction before Delhi high court against the defendants to restrain them from infringing their respective patents. Our firm represented the defendants; the defendants filed their respective submissions alongwith the revocation against all respective patents by way of counter claim. Based on the submissions, evidences and arguments, the technical submissions of the defendants and grounds of oppositions taken in the counter claims, court did not give any relief to the plaintiff and decided to cross-check the authenticity of the patents first.  The plaintiff finally decided to settle the matter out of the court in favour of the defendant.