DELHI COURT GRANTS RELIEF TO BESTO CHEM IN TRADEMARK INFRINGEMENT CASE
In the present case, the plaintiff is a manufacturer and seller of tablets, capsules, injections and so on; and are the proprietors of several trademarks. The plaintiffs allege that the defendants have been infringing their trademarks of BIGVIN, 7AM, ASTA Q, ASTA4, CSORA, MIKABEST and BIGTUM by using BIGMIN, 10PM, ASTACOF, VSORA, MIKAVA, and VAL TUM for their products. It is alleged that the defendant’s marks are structurally, phonetically and visually almost identical to the plaintiff’s registered marks. Further, one of the defendants is the ex-employee of the plaintiff who had significant business knowledge of the plaintiff’s work, thus, acting with the other defendants purposely started using deceptively similar marks. The defendants claimed that they discontinued the use of the infringed trademarks after the order of the court, and after this did not appear in court. Thus, they proceeded against the ex-parte. The plaintiff submitted that they do not want relief for the rendition of accounts, damages, and delivery of the infringing material, and they are only seeking the relief of permanent injunction against the defendants. The matter was decided in favour of the plaintiff.
(2) Besto Chem Formulations (India) vs Valfrid Pharmaceuticals Pvt. Ltd & Ors. (9 Dec 22), CS (Comm) No. 412/2019
DELHI HIGH COURT GRANTS INTERIM INJUNCTION IN CROMA TRADEMARK INFRINGEMENT CASE
Here, the plaintiff alleges that the defendant has been running several infringing websites, which are defrauding individuals by pretending to recruit them for work and taking monetary payment from them after promising them a job. For such nefarious purposes, the defendants have utilized the plaintiff’s registered trademarks of “CROMA”. The plaintiff claims that they shall face irreparable loss if no ex-parte interim injunction is granted for the same. The court held that the defendants were restrained from advertising or selling the products of the plaintiff, and were further restrained from misrepresenting the services of the plaintiff, which have resulted in a loss of reputation, passing off, and the use of the plaintiff’s registered mark.
(2) Infiniti Retail Limited vs M/S Croma -Share & Ors. (5 Dec 22), MANU/DEOR/15198/2022
REMEDIES UNDER THE COMPANIES ACT ARE NOT BARRED MERELY DUE TO NON-GRANT OF RELIEF UNDER THE TRADE MARKS ACT
The petitioner is a manufacturer and trader of pharmaceutical products and had been operating under a registered trade name since 2003. They were carrying out their business uninterrupted, until they received a notice in 2005 from the 3rd respondent that their use of “Raymond” creates an association between the products of the petitioner and the 3rd respondent, and thus, to cease and desist from using the same. The Bombay High Court dismissed the notice of motion and on appeal, the same was also dismissed. Even on special leave to appeal before the Supreme court, the decision of the High court was not interfered with. The 3rd respondent thus, filed an application under S. 20 and 22 of the Companies Act seeking rectification of the petitioner company’s name by removing “Raymond” from the same, and an order was passed directing the petitioner to change their name within 3 months. The petitioner submits that this order is not maintainable. The order of the High court was on the grounds that the petitioner’s use of “Raymond” was not in relation to the goods and services of the 3rd respondent. However, the court opines that merely because the injunction was not given to the 3rd respondent, it does not mean that remedies under the Companies Act will be barred. Thus, since the application filed under the Companies Act was within the stipulated time period, the order passed in relation to the same cannot be faulted.
(2) M/S.Raymond Pharmaceuticals vs Union of India (2 Dec 22), W.P.No.28593 of 2012 and M.P.Nos.1 & 2 of 2012
DELHI COURT RESTRAINS ZEN FLOWER FROM USING “KAMAAKSHI” MARK AND GIVES RELIEF IN COPYRIGHT INFRINGEMENT CASE
This case involved a suit alleging infringement of copyright, trademark and passing off. The plaintiff, Kama Ayurveda, sold, manufactured and distributed hair care, skincare and other wellness products, within India and abroad as well. The packaging for the same was unique and distinct and had been created by Director Vivek Sahni. The plaintiff holds several copyright registrations in this regard. The plaintiff filed an opposition to the registration of the defendant’s pending trademark Kamaakshi. The plaintiff claims that the defendant’s mark is structurally, visually and phonetically similar to that of the plaintiff. Further, the design and layout of the website is also similar in regards to the floral patterns used and the products which likely causes confusion for the consumers and infringes upon the copyright and trademark of the plaintiff. The defendant claims that their mark “Kamaakshi” was developed after adequate due diligence, the same being derived from the name of a goddess “Kamaakshi”, consisting of three words “ka”, “ma” and “akshi”. Further, it would not be possible to confuse the same since they are phonetically different. The allegations regarding copyright and trademark infringement were denied. Here, the court held, that the first syllable of the two words was “kama”, which is extremely significant since consumers have a tendency to refer to the products by their first name. Thus, the defendant is restrained from using the same.
(2) Kama Ayurveda Private Limited vs Zen Flower (9 Dec 2022), MANU/DEOR/171635/2022
TRADEMARK / COPYRIGHT
DELHI COURT GIVES EX-PARTE DECISION IN “NAMASTE INDIA” TRADEMARK AND COPYRIGHT CASE
In the present case, the plaintiff is in the business of procuring, processing and selling milk and milk-based products, and uses the registered trademark “Namaste India” for the same. Further, they use specially designed and created artwork, trade dress and packaging for their products, the same being registered under the Copyright Act. The plaintiffs gained knowledge that the defendant, who operates in the same business, had been using the same trademark and packaging as theirs in a malafide attempt to pass off its products as those of the plaintiff. An ex parte temporary injunction was granted and the products/materials bearing the infringed mark were seized. The court did not find any reason to repudiate the plaintiff’s claims. Further, the defendant had stopped appearing in court as well, and the matter has proceeded ex-parte. Thus, the suit was decreed with costs in favour of the plaintiff.
(2) M/S Nif Private Limited vs M/S Prashant Dairy (1 Dec 22), CS (Comm) No. 254/2019
DELHI HIGH COURT UPHOLDS DECISION IN FMC-NATCO CASE
The present suit was filed seeking a decree restraining the respondent from infringing upon the appellants patented process/method to manufacture CTPR. The appellants were granted the suit patent via a confirmatory assignment agreement with Du Pont De Nemours and Co. The major contention here is that the appellants allege that NATCO disclosed the synthesis of CTPR and the said process is equivalent to the process in their patent and thus, infringes their patent. The impugned judgment found that thionyl chloride has a different role in the patented process of the appellants and that the use of the same in NATCO’s process uses a different sequence of reactions. Thus, prima facie, the difference between the two was not minor or insubstantial. Presently, the appellants are claiming the doctrine of equivalence, and hence the question is confined to whether the NATCO process can be considered as infringing the suit patent based on the doctrine of equivalence. The doctrine of equivalence allows for the protection of patent rights from infringers who utilize colourable methods of making minor, insignificant, or insubstantial changes to defeat the purpose of a patent and bypass the protections provided by it. Here, the court rejected the contention that the doctrine is only applicable in cases of product patents. Further, the triple test would also function similarly, with relevant changes to adapt the use of the same to processes. In the present case, it was found, prima facie, that the use of the different chemicals for the same process could not be considered equivalents and the impugned judgment is upheld.
(2) FMC Corporation & Ors. vs Natco Pharma Limited ( 05 Dec 22), MANU/DE/3556/2022