Intellectual Property Rights and Law : Important Decisions and Principles

Intellectual Property Rights and Law : Important Decisions and Principles

Written by Vishal

Copying of a prominent part of a trademark leads to deceptive similarity especially when the product of both the parties is the same. A deer has no connection or co-relation with the product namely rice. Such arbitrary adoption of a word mark with respect to a product with which it has no co-relation, is entitled to a very high degree of protection.

[ Kirorimal Kashiram Marketing & Agencies Pvt Ltd v. Shree Sita Chawal Udyog Mill Tolly Vill [2010] GCtR 6541 (Delhi) ]

While action for passing off is a common law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the 'exclusive right to the use of the trade mark in relation to those goods'.

[ Amar Singh Chawal Wala v. Shree Vardhman Rice and Genl Mills [2009] GCtR 6542 (Delhi) ] 

It has been held that when a person has broadcasted the plaintiff's video songs without any license, then such action can be said to infringe the plaintiff's rights under Sections 14(a)(iii), 14a(iv), 14(d)(iii) and 14(e)(iii) read with Section 51 of the Copyright Act, 1957. The amount which plaintiff could have earned if such infringement had not occurred, was directed to be paid by such person to plaintiff.

[ Super Cassettes Industries Pvt Ltd v. Beeta Cable Network [2017] GCtR 6543 (Delhi) ]

It was held that due to extensive use over substantial period of time, a trade mark/ trade dress/label/packaging can acquire reputation and goodwill in India. In this case, it was apparent that without any explicit permission or authorization, the defendants have malafidely used the plaintiff's trade mark/trade dress/packaging/label as developed in respect of LIVON-DS liver tonic. The defence taken was that the word “liv” has become public juris and is generic to the trade in the field of pharmaceuticals. However, when no evidence was filed and no information was divulged so as to substantiates such claim about the said trade mark then such defence will be rejected. 

[ Antex Pharma Pvt Ltd v. Pureca Laboratories Pvt Ltd [2017] GCtR 6544 (Delhi) ] 

In one of the case where suit for permanent injunction restraining passing off of trademark, copyright etc. was filed, after noting the agency agreement which plaintiff had with the Company and also noting that there are omissions in the plaint and the filing of an application under S.9 of Arbitration and Conciliation Act, 1996, the suit was dismissed with costs of Rs. 2 lacs. 

Avantika Elcon Pvt Ltd v. Ajit Industries Pvt. Ltd [2018] GCtR 6539 (Delhi)

Dealing with a case of suit for infringement of trademark and damages with respect to a trademark registered under Class 30, it was held that a successful litigant is entitled to get actual costs and court-fees paid. Setting the right example to ensure purity of judicial process, it was rightly directed that the lawyers' fees and amount spent on purchasing court-fees will have to be paid by unsuccessful litigant to the successful litigant. 

Ved Prakash Garg Trading as Parul Food Products v. Gurudev Industries [2018] GCtR 6540 (Delhi)

The principle that emerges here is that a registered proprietor of the trademarks with valid and subsisting registration would have the exclusive right to use the trademarks in relation to the goods in respect of which they have registration as well as to obtain relief in respect of infringement by virtue of provisions of S.28 of the Trade Marks Act, 1999. It was also held that in a suit for infringement, the report of the Local Commissioner can be read in evidence in terms of Order XXVI Rule 10(2) of  Code of Civil Procedure, 1908.

[ Sandisk LLC v. Laxmi Mobiles [2023] GCtR 2520 (Delhi) ]

It has been held that once the infringing goods were available for sale, the tort of infringement, which predicates use of the infringed mark, or a mark which is deceptively similar thereto, for trade, stood committed. The suit, seeking relief thereagainst, could be filed before every Court having territorial jurisdiction over the situs of sale of such goods. Section 20(a) of the Code of Civil Procedure, 1908 permit a plaintiff to sue a defendant wherever the defendant carries on business.

[ Kohinoor Seed Fields India Ltd v. Veda Seed Sciences Pvt. Ltd [2025] GCtR 1892 (Delhi) ]

Before adoption of a Mark it is the duty of the proprietor of the Mark to carry out a search of the Register of Trade Marks. A stricter approach has to be adopted by courts while judging the likelihood of confusion between the two competing Marks in respect of pharmaceutical products. In public interest, there cannot be two medicinal preparations bearing the same name from different sources and with different compositions. 

[ Reckitt and Coleman Overseas Health Ltd v. Ind Swift Ltd [2025] GCtR 1893 (Delhi) ]

The registration of a patent per se does not entitle the plaintiffs to an injunction. The certificate does not establish a conclusive right. There is no presumption of validity of a patent, which is evident from the reading of Section 13(4) of Patents Act, 1970 as well as Sections 64 and 107 of the Patents Act. The claimed invention has to be tested and tried in the laboratory of Courts. The Courts lean against monopolies. The purpose of the legal regime in the area is to ensure that the inventions should benefit the public at large. The plaintiff is not entitled to an injunction if the defendant raises a credible challenge to the patent. The International Search Report issued by World Intellectual Property Organization in respect of PCT application is not binding in view of Article 33(1) of the Patent Cooperation Treaty, which provides that the object of the International Preliminary Examination is to formulate a preliminary and nonbinding opinion.

[ Ten XC Wireless INC v. Mobi Antenna Technologies (Shenzhen) Co. Ltd [2011] GCtR 6545 (Delhi) ]

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