Jurisdiction of High Court in IPR Litigation : High Court Answers the Legal Position
If the relevant Patent Office is not located within the jurisdiction of the High Court, the Writ Petition under Article 226 of the Constitution is not maintainable due to lack of territorial jurisdiction. When the Patent Office is not located in Delhi, Delhi High Court cannot entertain and decide the writ Petition.
Zydus Healthcare Ltd v. Assistant Controller of Patents and Designs [2025] GCtR 1904 (Delhi)
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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Intellectual Property Rights and Law : Leading Decisions
Written by Vishal
If a word is publici juris and a person gives good justification as to how he appropriated a word as a trade mark, relating to the state of mind of the person, unless the testimony of the person is discredited, a Court would have no option but to accept the statement made on oath because the fact is of a kind which a person can prove by stating the truthfulness thereof on oath. Mandatory injunction was set aside.
Prius Auto Industries ltd v Toyota Jidosha Kabushiki Kaisha [2016] GCtR 6536 (Delhi)
In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act, 1957 in respect of the original artistic work per se. If the design is registered under the Designs Act, 2000 the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act, 2000 but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act.
Microfibres Inc v. Girdhar & Co [2009] GCtR 6096 (Delhi)
Sections 79 and 81 of the Information Technology Act, 2000 and Section 51(a)(ii) of the Copyright Act, 1957 have to be read harmoniously. Accordingly, it is held that proviso to Section 81 of IT Act does not preclude the affirmative defence of safe harbor for an intermediary in case of copyright actions. Section 51(a)(ii) of Copyright Act, in the case of internet intermediaries contemplates actual knowledge and not general awareness. Additionally, to impose liability on an intermediary, conditions under Section 79 of the IT Act have to be fulfilled.
Myspace Inc v. Super Cassettes Industries Ltd [2016] GCtR 6535 (Delhi)
Section 52(1)(c) of the Copyright Act, 1957 exempts from liability, any transient or incidental storage of a work for the purpose of providing access to content where such access has not been expressly prohibited by the copyright. Thus, ISPs are exempt from liability of copyright infringement under Section 52(1)(c) for any transient or incidental storage of a film. However, the proviso to this section mandates that if a complaint is received, an ISP shall restrain access to content for a period of twenty-one days or upon receiving a competent court order. It was commented that the majority of piracy websites are in it not for any ideological reason but for one reason: to make money.
UTV Software Communication Ltd v. 1337X.to [2019] GCtR 6534 (Delhi)
Section 48 of the Patents Act, 1970 specifically confers on a patentee, the right to prevent third parties from infringing the patent. The provision is not made subject to any condition whatsoever. The grant of a patent, ipso facto, entitles a patentee to take action against its infringement. The only statutory embargo to institution of an infringement suit is that the suit must relate to a granted patent is to be found in the proviso to Section 11(A) of Patents Act, 1970, which stipulates that an infringement suit could be instituted only against a granted patent. This proviso, too, therefore, manifests the statutory intent to confer on the holder of every granted patent, the right to proceed legally against infringement.
ASTRAZENECA AB & ANR v WESTCOAST PHARMACEUTICAL WORKS LIMITED [2023] GCtR 2519 (Delhi)
Broadcast reproduction right in respect of telecast of live event like a Cricket match are separate and distinct right as from the copyright and as such S.61 of Copyright Act, 1957 is not applicable to broadcast reproduction right. Even assuming that a copyright includes broadcast reproduction right and Section 61 applied, the eventual telecast by a person being different and distinct from the telecast of the host broadcaster, the independent copyright owner of the eventual product is that person itself.
ESPN STAR SPORTS v GLOBAL BROADCAST NEWS LTD. & ORS [2008] GCtR 6531 (Delhi)
Dealing with a suit for infringement of patent in this case it was held that if the Court is satisfied that on account of certain false averments or concealment of facts a party has been able to obtain restraint order then a duty is cast on the Court to vacate the said order unless and until the Court for the reasons recorded in writing finds to the contrary.
TENXC WIRELESS INC. & ANR v Andrewcomm.scope Inc [2010] GCtR 6528 (Delhi)
The owner of a well known trademark may (i) seek cancellation or (ii) prevent registration of a trademark which is same or similar to the well known mark irrespective of whether the impugned mark is in relation to identical or similar goods or services or in relation to other categories of goods or services. He may also prevent others from incorporating the well known trademark as a part of their corporate name/business name. Even if a well known trademark is not registered in India, its owner may avail these rights in respect of the trademark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India.
TATA SONS LTD. v MANOJ DODIA & ORS. [2011] GCtR 6529 (Delhi)
A defendant can rely upon the gateways carved in Section 52 or 39 of the Copyright Act, 1957 only if he is able to demonstrate that the copyrighted work is used for purposes indicated therein. If the defendant has an arguable defence the court will refuse an injunction. There is a complete convergence on the issue as to what constitutes “substantial takings”. The law in India on this issue does not seem to be any different from that in England or in USA. Therefore, while the extent of extract, that is, the “quantitative” test has its part to play in determining infringement of a copyrighted work the “quality” is equally important. This is especially so, in the case of a musical work.
SUPER CASSETTES INDUSTRIES LTD. v HAMAR TELEVISION NETWORK PVT. LTD. & ANR. [2010] GCtR 6530 (Delhi)
Dealing with the law prevailing at that time (before the year 2009), it was held that an application for rectification has to be made in the prescribed manner as indicated in Section 57 of the Trade Marks Act, 1999. The prescribed manner has been indicated in Rule 92 which requires such an application to be in Form TM-26. Section 57 of TM Act gave liberty to an aggrieved party to apply either to the Registrar or to the Appellate Board. When the TM Act itself gives a definitive meaning to rectification and a procedure is prescribed under the rules, which procedure has to be followed in terms of the Act, then any other proceeding which incidentally or ultimately may result in the rectification of the register, cannot be regarded as a proceeding for rectification of the register in the context of Section 124 (1) (i) of the TM Act.
BDA Pvt Ltd v. Paul P. John [2008] GCtR 6532 (Delhi)
If “any person interested” has filed proceedings under Section 25(2) of the Patents Act, 1970 the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act. This would include the right to file a “revocation petition” in the capacity of “any person interested” (under Section 64(1) of the Patents Act), as also, the right to seek the revocation of a patent in the capacity of a defendant through a “counter-claim” (also under Section 64(1) of the Patents Act). If a “revocation petition” is filed by “any person interested” in exercise of the liberty vested in him under Section 64(1) of the Patents Act, prior to the institution of an “infringement suit” against him, he would be disentitled in law from seeking the revocation of the patent (on the basis whereof an “infringement suit” has been filed against him) through a “counter-claim”.
Dr. Aloys Wobben and another v. Yogesh Mehra [2014] GCtR 5098 (SC)
This case was related to allegations of drug and infringement of patent. It was argued that the Controller of Patents examines the post grant opposition before issuing notice thereof to the patentee. It was held that even if it be so, unless frivolous post grant opposition filed, intended only to freeze the rights of the patentee are dismissed in limine, such a procedure or such an interpretation would cause immense hardship for a patentee.
PHARMACOSMOS HOLDING A/S v LA RENON HEALTHCARE PRIVATE LIMITED [2019] GCtR 6533 (Delhi)
Advertisement of the application by the Registrar of Trademarks is not a purely ministerial act. The Registrar is required to apply his mind as to whether any rival marks are in existence and to issue an appropriate FER in a case where such rival marks exist before advertising the application. The decision to advertise the application is a decision against which a writ petition under Article 226 of the Constitution is maintainable.
[Ashiana Ispat Ltd v. Kamdhenu Ltd [2025] GCtR 1873 (Delhi)]
Squatting on a trade mark, after getting it registered, without using it, is, no doubt, unwholesome and to be deprecated. The sequelae must, however, be those which the statutory envisages. It would be open to any party, including one who desires to use an identical mark, to apply to the Registrar of Trade Marks for invalidation of the mark on the ground of non-user, under Section 47 of Trade Marks Act, 1999.
[Oxygun Health Pvt. Ltd v. Pneumo Care Health Pvt Ltd [2025] GCtR 1874 (Delhi)]
While interpreting the term “use” as employed for the alleged infringer in Section 29(1) to (5) of Trade Marks Act, 1999 one has to seek recourse to Section 2(2)(b) and (c). Section 2(2)(b) clarifies that any reference, in the Trade Marks Act, to the “use” of a mark is to be construed as a reference to the use of the mark in printed or visual form. Section 33(1)(b) of the Trade Marks Act disentitles the proprietor of a registered trade mark from opposing the use of a later registered trade mark by another, if he has acquiesced “for a continuous period of five years” to the use of the latter trade mark.
[Modi-Mundipharma Pvt Ltd v. Speciality Meditech Pvt Ltd [2025] GCtR 1876 (Delhi)]
Passing off is a sui generis common law remedy, aimed at protecting one’s hard-earned goodwill and reputation from others who may deceitfully seek to capitalize on it. It resides pristinely in its own universe, and is one of the very few non-statutory remedies, available in law, which is accorded statutory recognition in Section 27(1) of the Trade Marks Act, 1999. Indeed, there are very few other such common law remedy which is granted statutory protection in our country.
[Crocs Inc USA v. Bata India [2025] GCtR 1877 (Delhi)]
The principle of international exhaustion is duly recognized under Section 30(3) of the Trade Marks Act, 1999. Any person in India has the right to legally import goods from abroad bearing the trademarks of an entity and sell the same in India. Such sale of original goods by an authorized reseller/importer would not amount to trademark infringement.
[ Products and Ideas (India) Pvt Ltd v. Nilkamal Limited [2025] GCtR 1878 (Delhi) ]
The existence of goodwill and reputation has to be shown to exist in India and worldwide or global goodwill and reputation, sans any evidence of territorial goodwill and reputation, will be insufficient to succeed in a claim of passing off and thus yardstick to judge the claim of passing off will be “prior user” in India”. Of course, mere priority of user in India may not be sufficient to sustain a claim of passing off unless the plaintiff ascertaining the claim is able to establish that such prior user has resulted in accumulation of goodwill and reputation in the mark that it seeks to assert.
[ VIP Industries Ltd v. Carlton Shoes [2025] GCtR 1879 (Delhi) ]
A combined reading of S.2(1) (m) and S.2(1)(zb) of Trade Marks Act, 1999 would show that even a name, which is capable of distinguishing the goods or services of one person from those of others, qualifies to be considered as a trademark. The "use of a mark" in relation to goods is the use of the same upon, or in any physical or in any other relation whatsoever, to such goods. It is, therefore, not necessary that the mark must only be used in a physical form in relation to such goods, but may be used in any other relation whatsoever to such goods.
[ KRB Enterprises v. M/s KRBL Ltd [2025] GCtR 1880 (Delhi) ]
It is a settled principle of law that though the trademark should ideally be considered as a whole, there can be a predominant mark of the same which would attract the attention of the customer and have a recall value. The said predominant part of the trademark would, therefore, be entitled to an equivalent protection from misuse and violation.
[ Newgen IT Technologies Ltd v. Newgen Software Technologies Ltd [2025] GCtR 1881 (Delhi) ]
In this case it was seen that there is no dispute that the appellant is using its Subject Mark for goods like sanitary napkins, sanitary towels, pads etc., while the respondents are using their Impugned Mark for medicine claimed to be giving relief against constipation. The two goods are neither allied nor cognate. So it was held that the nature of goods, their trade channel, their purpose, and the intended consumers are distinct, and there is no likelihood of confusion being caused by the use of the marks for such goods.
[ RSPL Health Pvt. Ltd v Sun Pharma Laboratories Ltd [2025] GCtR 1882 (Delhi) ]
Under Section 2(2) (b) of the Trademark Act, 1999, use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark. Further Section 2(2)(c) appliesthis in relation to goods and services. Dealing with a case involving Indian Express it was held that the wide and expansive understanding of use of a mark as defined by the statute in prima facie view would include usage by the Defendant for promotion and advertising, which stands restricted to the five southern states and UTs by the IPAB Order. It was also held that there cannot be an acquiescence or waiver of rights accrued under a consent decree.
[ Indian Express (P) Ltd v. Express Publications (Madurai) Pvt. Ltd [2025] GCtR 1883 (Bombay) ]
Any invention having been published in India or elsewhere, before the priority date of the claim, can be considered for the purposes of assessing obviousness. Merely because US'568, as relied by the defendant, is "abandoned" does not preclude its use as prior art against the suit patent, as prior art is to be pivoted on the "publication" of the same either in "India or elsewhere". Thus, any document, including, an abandoned patent application that is published and publicly available, qualifies as relevant prior art for the purposes of Section 64(1)(f) of the Patents Act, 1970 regardless of whether it proceeds to grant or is ultimately abandoned.
[ Amitoje India Pvt. Ltd v. Classic Display Systems Pvt Ltd [2025] GCtR 1884 (Delhi) ]
Section 3(d) of the Patents Act, 1970 separates the expressions “results in a new product” and “employees at least one new reactant”, with the conjunction “or”. In other words, even if it were to be assumed that a later process, which is sought to be patented, is a mere use of an earlier known process, it would nonetheless be patentable if it either results in a new product or employees at least one new reactant. Satisfaction of one, or the other, requirement. Either would suffice.
[ Tapas Chatterjee v. Assistant Controller of Patents and Designs [2025] GCtR 1885 (Delhi) ]
The Dynamic+ injunction would apply under the following circumstances: (i) Wherever the brand/trademark appears as it is in the domain name; (ii) Wherever brand/trademark appears with a prefix or suffix which could lead to confusion; (iii) Wherever the brand/trademark appears as an alphanumeric variation. It was also held that any misuse of domain names by registration of fraudulent domain names and creation of fake websites results in erosion of the integrity and goodwill of the business house and name, as also leads to consumer deception.
[ Colgate Palmolive Company v. NIXI [2025] GCtR 1889 (Delhi) ]
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High Court Answers the Legal Issue of Novelty under Patents Act, 1970
There is, per se, no inherent contradiction between a finding that an invention is novel, and yet that, in its creation, no inventive step, within the meaning of Section 2(1)(ja) of Patents Act, 1970 is involved. The first aspect pertains to the realm of anticipation, whereas the second pertains to the realm of obviousness. Novelty resides in an invention if it cannot be said to be disclosed in any earlier prior art and cannot, therefore, be said to be anticipated from the prior art.
Tapas Chatterjee v Assistant Controller of Patents and Designs [2025] GCtR 1885 (Delhi)
Writ Jurisdiction and Efficacious Remedy : The Legal Aspects
A.226 (1) of Constitution of India says that notwithstanding anything in article 32 every High Court shall have powers, throughout the territories in relation to which it exercise jurisdiction, to issue to any person or authority, including in appropriate cases, any Government, within those territories directions, orders or writs, including writs in the nature of habeas corpus, mandamus, prohibition, quo warrantor and certiorari, or any of them, for the enforcement of any of the rights conferred by Part III and for any other purpose.
In Glochem Industries Ltd. v. Cadila Healthcare Ltd. & Ors. [2009] GCtR 5165 (Bombay) , the Bombay High Court had rejected the contention that the petitioner had an equally efficacious remedy against rejection of its pre-grant opposition in the given facts of that case in context of Patents Act, 1970. Hon'ble J. Khanwilkar [who later on became Judge of Hon'ble Supreme Court] observed as under:
"Having considered the rival submissions, we would deal with the last objection first. Although the Petitioners may have remedy of post grant opposition or of seeking suo moto revocation as well as filing of a counter claim as is suggested by the Respondents that by itself can be no basis to non-suit the Petitioners, if the Petitioners were right in their grievance that the authority has committed manifest or jurisdictional error while considering the representation by way of opposition or for that matter decided the objections on palpable misreading and misapplication of the relevant provisions of law. This is so because the law provides for remedy of pre-grant opposition by virtue of Section 25(1) of the Act. If such a remedy is provided, the authority is obliged to consider the representation by way of pre-grant opposition under Section 25(1) keeping in mind the parameters of law by observing principles of natural justice. It is not necessary for us to examine the argument of the Petitioners that the remedy of pre-grant opposition is qualitatively different than the remedy of post-grant opposition. According to the Petitioners, in the pre-grant opposition, the onus is on the patent applicant to show that the alleged invention would result in enhancement of the known efficacy of the stated substance; whereas in the post-grant opposition, the onus will be on the objector to show that the alleged invention does not result in enhancement of the known efficacy of the stated substance. Suffice it to observe that the preliminary objection raised by the Respondent No.1 does not mean that this Court has no jurisdiction to entertain writ petition under Article 226 of the Constitution of India against the decision of the authority on the opposition under Section 25(1) of the Act. It is a matter of prudence and discretion as to whether the Court should entertain the writ petition or not. In the facts of the present case, we think that it would not be proper to non-suit the Petitioners at the threshold on this count."
Written by
Vishal
Delhi
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