Text & Context: Edition 61 – Your Weekly IP Legal Lens

Hello and welcome to the 61st edition of Text & Context - The IP Legal Lens, presented by BananaIP. This week, we have an engaging collection of legal developments and case summaries that span the intricate world of Intellectual Property. From the latest rulings in Trademark and Patent law to key insights in the realm of Designs, this edition aims to provide you with a comprehensive understanding of what's happening in the IP landscape. Sit back and join us as we decode the legal nuances shaping the world of Intellectual Property today.

RECENT TRADEMARK CASES

1.      User evidence date mismatch not fatal to trademark application, says Delhi High Court.   The Registrar of Trademarks refused a trademark application on the ground that false user date was claimed by the applicant. The trademark applicant in the case claimed a user date of 1st January 1984 but produced evidence showing use only from 15th May 1984. The Delhi High Court set aside the refusal order and remanded the application for immediate hearing and decision. The Court asked the Registrar to consider 15th May 1984 as the user date and rejected the false use reasoning.

Citation: Dhariwal Wooltex Vs. British India Corporation Ltd. and Ors. [C.A. (COMM.IPD-TM) 17/2022]

2.   Trademark Registrar may enter a mark as a well-known mark only if a Court has declared so.   In writ petition filed by Kent Cables, the Delhi High Court observed as follows:   "8. ... on the legal position in respect of declaration of well known trademarks, it is clarified that the usual course of when an application is made to the Registrar would be to invite objections from the general public. However, in case, any applicant is relying on Court orders for determination as a well-known mark, the Registrar ought to examine as to whether the said Court order has given a specific declaration of a particular mark as a well-known mark or is the reliance by the applicant merely on observations in the passing, especially, in prima facie observations or any ex parte injunction orders. In addition, applicants ought to be also asked to disclose any relevant pending litigations where there is a contest over the legality, validity or ownership of the mark. This shall be borne in mind prior to declaring any mark as a well-known mark under Section 124(5) of the Trade Marks Act, 1999."

Citation: Kent Cables Private Limited & Ors Vs. Union Of India Through Its Secretary Department For Promotion Of Industry And Internal Trade & Ors. [W.P.(C)-IPD 30/2023 & CM 80/2023]

3.   Costs and punitive damages of 5 Lakh Rupees imposed against counterfeiters.   In a case involving the mark, Motul, for engine oil, the Court imposed punitive damages of 5 Lakh Rupees and costs to be paid equally by the defendants. This was a case of counterfeiting that involved copying the mark, trade dress, and packaging of the product. About 190 thousand pouches were supplied by one defendant to another in the case.

Citation: Motul Vs. Chawla Packaging Private Limited [CS (COMM) 163/2021, I.A. 5058/2021, I.A. 5059/2021, I.A. 5963/2021 and I.A. 13582/2021]

4.   Delhi High Court removes bad faith registration of the popular football brand 'Sherrin' from the Register of Trademarks.   Following a rectification petition filed by Russell Corp Australia, the Delhi High Court has removed the trademark Sherrin from the Register. The Sherrin trademark for football and related products has been in use for more than 140 years. The footballs under the brand are very well-known In Australia. The trademark was removed by the Court on the grounds of non-use by the defendant, a trademark squatter, and also based on bad faith registration, passing off, and copyright infringement.

Citation: Russell Corp Australia Pty Ltd. 5 Lakeview Drive, Scoresby Victoria 3179, Australia Vs. Shri. Ashok Mahajan B-10 Sports And Surgical Complex Jalandhar- 144021 (Punjab) And Anr. [C.O. (COMM.IPD-TM) 164/2022]

5.   Peeling Hands and Rubber Module trademarks may go for rectification filing, says Delhi High Court.   In a Section 124 application to file for cancellation/rectification of Roxtec's trademarks, the Delhi High Court permitted two marks for rectification filing. Finding that there was a prima facie case of vulnerability, the Court permitted the defendant to file for rectification of the 'Rubber Module' and 'Peeling Hands' device/logo marks. It however did not find a prima facie case with respect to the 'We Seal Your World' mark and marks having the prefix Roxtec.

Citation: Roxtec AB and Ors. Vs. Sukant Chakravarty and Ors. [CS (Comm.) 1045/2016, I.A. 14363/2015, 550/2017, CS (Comm.) 1046/2016 and I.A. 9180/2017]

6.   Service of trademark notice is complete only when the email is received, and not when it is sent, says Madras High Court.   In a recent case involving service of notice, the Madras High Court held that service of email notice by Registrar of Trademark is complete only if the email is received. Proof showing that an email has been sent is not sufficient.   In this case, 2 trademark applications were abandoned because the applicant failed to file a counter to the opposition notice. Interpreting Section 21(2) of the Trademarks Act with respect to service of notice, and Rule 18(2) of the Trademark Rules, the Court stated that a notice of opposition must be served to the trademark applicant, and the deadline to file a counterstatement will begin only after it is served. If the notice of opposition does not reach the email box of the applicant, the notice is deemed as not served.

Citation: Ramya S. Moorthy Vs. Registrar of Trade Marks [W.P.(IPD).Nos.3 & 4 of 2023]

7.   Delhi High Court: Use of the HTA trademark for oil seals, gaskets, and allied products injuncted.   The Delhi High Court has passed an interim injunction against the use of the HTA trademark for automotive accessories. The suit was filed by Paul Components against Hi-Tech Arai for the use of HTA with respect to oil seals, gaskets, and so on. Paul Components had registered the trademark and was using it since 1977. The Court found that Paul Components had made out a strong prima facie case of infringement and passing off, and granted an injunction without looking at other factors such as balance of convenience and irreparable harm.

Citation: Paul Components Private Limited Vs. Hi Tech Arai Private Limited [CS(COMM) 374/2023 and I.A. 10831/2023]

RECENT PATENT CASES

8.   Opposition Proceedings: If prescribed procedure is not followed to submit evidence in opposition proceedings, prejudice will inherently exist, says Delhi High Court.   In a writ petition, the Delhi High Court quashed the recommendations of the opposition board as the prescribed procedure was not followed. The opponent in the case did not file evidence through an affidavit as per the prescribed procedure, but the Controller of Patents ignored the same and forwarded the documents to the opposition board. Later, based on recommendations of the opposition board, a hearing notice was issued. The Court quashed the opposition board's recommendations and remedied the procedural non-compliance by accepting only evidence by affidavit, and by giving time to the patent holder to file evidence.

Citation: Akebia Therapeutics Inc. Vs. Controller General of Patents, Design, Trademark and Geographical Indications and Ors. [W.P. (C) IPD 32/2023, CM 92/2023 and CM 93/2023]

9.   Delhi High Court sets aside patent refusal as prior art references are wrongly cited in the order.   The Delhi High Court has set aside an order refusing a patent application filed by Dow relating to agricultural oils. The Court set aside the order because the order had cited paras in prior art references that were wrong, or did not exist. One of the prior art references was in German, and the text cited did not exist in the document.

Citation: Dow Agrosciences LLC Vs. The Controller of Patents [C.A. (COMM. IPD-PAT) 170/2022]

RECENT DESIGN CASES

10. Hero's motorcycle front fender design is prima facie not valid, says Delhi High Court.   In a design infringement case involving the front fenders of Hero HF Deluxe motorcycle, the Delhi High Court did not grant an interim injunction because the defendant was able to make a credible challenge to the validity of the design. The Court did not find Hero's v-shaped front fenders with elongated sides to be novel and original based on prior art submitted by the defendant. The Court also stated in the case that front fenders formed an integral part of the overall look and feel of the motorcycle, and therefore, they did not merit design registration because they are not parts capable of being made and sold independently.

Citation: Hero Motocorp Limited Vs. Shree Amba Industries [CS (Comm.) 1078/2018 and I.A. 11007/2018]

Thank you for joining us in this week’s exploration of Intellectual Property through Text & Context - The IP Legal Lens. We hope these updates prove invaluable to you, whether you are an IP professional, business leader, or simply someone interested in the field. As the legal framework around IP continues to evolve, it is more crucial than ever to stay informed. Join us again next week as we continue to delve into the multifaceted world of IP, bringing you the most relevant cases and insights.

Until then, stay informed and continue to innovate.