Recently, Manu Garg and Ratan Behari Agrawal (“Appellant”) filed an appeal at the Delhi High Court against an order passed by the Registrar of Trade Marks (“Respondent”), refusing their application, for the mark COCK, covering, inter alia, water and color pistols, water and colour guns, in Class 28. The Respondent refused the mark on the ground that it is identical to a prior registered mark, namely, COCK (Device), covering, amorces or paper caps for toy pistols, also in Class 28. The Appellant, in its reply to the Examination Report issued by the Respondent had submitted that the cited mark is a composite device, which clearly indicates that the mark is used in relation to amorces (a percussion cap for toy cracker pistols), which are used during the festival of Diwali, and that the Appellants’ COCK mark is used in relation to toy pistols to spray colours, which are popular during the festival of Holi. The Appellants also submitted that they have a registration for the mark COCK in relation to Holi colours going back to the year 1992, and that the registrant of the cited mark had expressed that it does not have any objection to the Appellant’s use in prior communication. The Respondent, on the other hand, argued that its order is well-reasoned, and stated that, in India, certain festivals are celebrated with spraying of colours, as well as firecrackers, and such goods are often sold through the same trade channels. The court, in its judgement stated that while one toy pistol emits fire, the other toy pistol emits its antithesis, water, and the rival goods are therefore, as alike as chalk and cheese. The court opined that even if both toy pistols are used during the same festival, it does not render them similar or allied in ordinary parlance. Further, the court pointed out that the cited mark is registered for paper caps for toy pistols, and not for toy pistols, per se. Accordingly, the court held that the Appellant’s COCK mark and the cited mark, cannot be held as being identical, on mere similarity between the marks without considering the nature of the goods and the class of their purchasers. Therefore, the court, while allowing the present appeal, quashed, and set aside the Respondent’s order. Manu Garg and Ratan Behari Agrawal v. Registrar of Trade Marks, C.A.(COMM.IPD-TM) 143/2021, Judgement dated February 1, 2023.

Recently, the Delhi High Court, while setting aside a refusal order of the Patent Office, held that, inter alia, the Patents Act, 1970 (“the Act”) does not bar amendment to patent claims at the appellate stage, as long as the amendment fulfils the requirement of Section 59 of the Act. Societe Des Produits Nestle SA (“Nestle”) had filed a patent application titled “Composition for use in the Prophylaxis of Allergic Disease”, which was objected on the ground that, inter alia, the claims in the application defined a method for “treatment of human body” and hence, was a non-patentable subject matter under section 3(i) of the Act. To overcome the objection, Nestle had sought to amend the claims, which in fact, broadened the scope of protection. Hence, the Patent Office rejected the amendment request, and consequently, refused the application as well. The Court, in the appeal filed by Nestle, considered the language of the originally filed as well as the amended claims, and noted that the subject claims are directed towards (defining) a composition and not towards of the process of treatment. The Court further noted that neither of the original or amended claims were towards the method of treatment. Since the amended claim broadened the scope of protection, the Court offered the appellant an opportunity to resort back to the originally filed claims prior to the proposed amendments, which Nestle was happy to oblige. While the Patent Office questioned the Court’s power to allow amendment at the appeal stage, the Court observed that since, firstly, the does not bar amendment to patent claims during appeal stage, if the amendment fulfils the requirement of Section 59 of the Act, secondly, the Court hearing appeal against an order of the Patent Office has all the power of the Patent Office, including power to direct amendment, and lastly, resorting to the original claim does not amount to amendment. The Court, accordingly, set aside the refusal order, and allowed the application to proceed further for grant. Judgment dt. February 3, 2023 in C.A.(COMM.IPD-PAT) 22/2022 titled Societe Des Produits Nestle SA vs. The Controller of Patents and Design & Anr

The Delhi High Court, in a recent judgment, has held that counterclaims seeking cancellation and expunction of a design registration is maintainable even during the pendency of a civil suit basis the same registration. In a suit for piracy of a registered design filed by Novateur Electrical & Digital Systems Pvt. Ltd. (“Plaintiff”) against V-Guard Industries Ltd. (“Defendant”), the Defendant took the defense of invalidity of the Plaintiff’s registered design on the ground of prior publication. The Plaintiff submitted that the design statute does not provide for such a counter claim, and that petitions seeking revocation or cancellation of a design have to be filed with the Controller of Designs. The Plaintiff further submitted that the grounds of cancellation of a registered design can, instead, be sought as a defense to a plea of piracy, which the Defendant has rightfully done in its written statement. As such, per the Plaintiff, the Defendant cannot maintain a plea for revocation of the suit design even in the form of a counter claim. The Defendant, on the other hand, submitted that this issue has been settled by the Supreme Court in the case of S.D. Containers Indore v. Mold-Tek Packaging Ltd. [(2021) 3 SCC 289], in which it was held that cancellations and revocations are independent remedies. The Court, upon examining the S.D. Containers decision, held that the right to seek revocation of a registered design is independent of the right to raise a plea of invalidity of a registered design as a defense in a piracy suit. Accordingly, the objection raised by the Plaintiff to the maintainability of the Defendant’s counter claim was rejected. Novateur Electrical & Digital Systems Private Limited v. V-Guard Industries Limited, CS(COMM) 567/2021 & I.A. 2117/2023, Judgement dt. February 8, 2023.

Recently, the Delhi High Court dismissed a motion filed by Winzo Games Pvt. Ltd. (“Plaintiff”) seeking an interim injunction restraining Google, LLC & Ors. (“Defendants”) from infringing its rights in the WINZO marks by way of warnings displayed on their platforms. The Plaintiff provides a gaming platform/application on Android Operating Systems. As per the Plaintiff, it has registrations for the WINZO marks in various classes and enjoys considerable goodwill and reputation. It was the Plaintifff’s case that when a user attempts to download the Plaintiff’s mobile application on the Defendants’ search engine, it displays a warning stating as follows: “This type of file may harm your device. Do you want to keep WinZO.apk anyway?”. The Plaintiff argued that this was beyond the mandate of India’s information technology rules, and results in infringement/tarnishment of the Plaintiff’s WINZO marks. The Defendants, on the other hand, stated that the waring is an industry practice to protect consumers from malware. As per the Defendants, such use does not amount to use as a trade mark, which is necessary for trademark infringement/tarnishment. The court was of the opinion that the warning on the Defendants’ platform is only a caution, and a consumer can still download the Plaintiff’s application. The court also noted that such warnings are not unique to the Defendants’ platforms. As such, the court opined that such a warning falls within the purview of the information technology rules. Further, the court observed that use of the WINZO marks on the Defendants’ platform is only for the limited purpose of the warning, and this cannot be considered to be use as a trade mark so as to infringe the Plaintiff’s rights. In light of these prima facie observations, the court dismissed the Plaintiff’s motion for an interim injunction. Winzo Games Private Limited v. Google LLC & Ors., CS(COMM) 176/2022, Judgement dt. February 14, 2023.

Recently, the Delhi High Court, while setting aside the refusal order of the Trade Marks Registry (“Registry”), held that, when the word ZINGER is used in conjunction with CHICKEN, it does not draw an instant connection with chicken based foodstuffs. Kentucky Fried Chicken International Holdings LLC (“KFC”) had applied to register the trademark CHICKEN ZINGER in class 29 for ‘chicken burgers, meat burgers, vegetable burgers, cottage cheeseburgers; cheeseburgers, meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables’. The examiner objected to registration of the trademark CHICKEN ZINGER for the applied goods on the ground that CHICKEN ZINGER is descriptive of the goods for which it was applied, i.e., foodstuff of animal origin, namely, chicken. The Court, in the appeal filed by KFC, considered different dictionary meanings of the term ZINGER, such as ‘a thing outstandingly good of its kind’ or ‘a wisecrack; punch line’ or ‘a surprise question; an unexpected turn of events’, and ruled that the use of ZINGER in conjunction with CHICKEN does not draw an instant connection with the kind of goods and may at best, be considered suggestive. The Court also noted that KFC owns separate registrations for the marks ZINGER and PANEER ZINGER for class 29 goods, and it does not claim exclusivity over the word CHICKEN. The Court, accordingly, set aside the refusal order, and directed the Registry to advertise the trademark CHICKEN ZINGER in the Trade Marks Journal, along with the disclaimer that the KFC shall not have any exclusive rights over the word CHICKEN. Order dt. February 7, 2023 in C.A.(COMM.IPD-TM) 56/2022 titled Kentucky Fried Chicken International Holdings LLC v. The Registrar of Trade Marks.

The Delhi High Court recently restrained KK and Company Delhi Pvt. Ltd. (“Defendant”) from using the PRESTIGE mark to offer gas stoves, kitchenware or any related goods following a trademark infringement suit filed by TTK Prestige Ltd. (“Plaintiff’). The suit was based on the Plaintiff’s earlier rights in the PRESTIGE mark used in relation to ‘pressure cookers’, ‘gas stoves’ and other kitchenware. The court observed that the Plaintiff has prior statutory rights as well as common law over the PRESTIGE mark for ‘pressure cookers’, ‘gas stoves’ and other kitchenware. Further, the court, while rejecting the Defendant’s user claim since the year 1981 due to the lack of sufficient evidence to substantiate its claim, reiterated that continuous use, and not merely sporadic use, must be established to take the defence of Section 34 of the Trade Marks Act. The court also rejected the Defendant’s claim that, since the Plaintiff obtained statutory rights over the PRESTIGE mark for ‘gas stoves’ only in 1999, Defendant should be allowed to continue using the PRESTIGE mark to offer ‘gas stoves’. In this regard, the Court noted that all the rival goods being kitchen appliances, are allied and cognate in nature, and hence, if the Defendant is permitted to use the PRESTIGE mark to offer ‘gas stoves’, it is likely to cause confusion in the market. Accordingly, the court granted an ad interim injunction in favour of the Plaintiff and restrained the Defendant from using the PRESIGE mark in relation to any kitchen appliances. TTK Prestige Ltd. v. K K and Company Delhi Pvt. Ltd. and Ors., Judgment dated February 20, 2023.

Recently, the Delhi High Court set aside an order of the Registrar of Trade Marks (“Registrar”) refusing registration of Ticona Polymers, Inc.’s (“Appellant”) mark COOLPOLY on, inter alia, the ground that the mark is a mere combination of two English words COOL and POLY, and is, as such, devoid of any distinctive character. The court, while arriving at its decision, observed that it is well settled that a mark cannot be dissected into its individual parts, and therefore, examiners are required to examine marks as a whole. The Court further noted that Indian trade mark law embodies the anti-dissection principle in the context of infringement of a trade mark, and the principle would apply, mutatis mutandis, even at the stage of registration of a mark. As regards the mark in question, the court observed that neither does the word COOLPOLY have any meaning in the English language, nor is it a word of common usage such that it would be rendered incapable of distinguishing the goods of one person from those of another, if used as a trade mark. The court also noted that the Registrar’s order was silent on why the mark is not distinctive. Further, the court held that, had the examiner raised an objection of descriptiveness, even that would not hold water given that COOLPOLY is a coined word, and even if the words COOL and POLY are taken individually, they cannot be held to be descriptive of the goods covered by the Appellant’s application, namely, plastic and carbon moulding materials, etc. In light of the above, the court while setting aside the Registrar’s order, held that the examiner’s reasoning for refusing the mark is unsustainable in law, and directed the Registrar to ensure that the application for the mark COOLPOLY is advertised in the Journal of Trade Marks. Ticona Polymers, Inc. v. Registrar of Trade Marks, C.A. (COMM.IPD-TM) 89/2022, order dt. February 28, 2023.

The Delhi High Court recently dismissed an application for interim injunction by Bolt Technology OU (“Plaintiff”) against Ujoy Technology Pvt Ltd (“Defendant”), from using the BOLT Mark in relation to EV charging station for its alleged identity with that of the Plaintiff’s BOLT Mark. It was the Plaintiff’s case that the Defendant’s adoption and use of the BOLT Mark in relation to EV charging station amounts to passing-off of the Defendant’s services as the services originating from the Plaintiff. The Plaintiff relied on global goodwill and reputation earned through worldwide presence, online presence, revenues, articles from India media houses, downloads of its mobile applications by Indian consumers to support its case. The Court disagreed with the Plaintiff and held that, while the Marks are similar, the Plaintiff’s taxi services and the Defendant’s EV charging stations are neither similar nor allied or cognate, and hence, the Plaintiff’s worldwide goodwill and reputation in taxi services is not sufficient to make claims in India related to EV Charging. The Court further held that the mere fact that Indian consumers have availed the Plaintiff’s taxi services abroad is not enough to show reputation in India. It must be shown that such services were booked in India to be used in the Plaintiff’s country. The Court also considered the article relied on by the Plaintiff which does not mention anything about EV Charging station or even the Plaintiff’s expansion to India. The Court, lastly, noted that since the Plaintiff does not have a spill over reputation in India and probably has a mere intention to enter Indian market in the foreseeable future, the Plaintiff has not established the likelihood of consumer confusion and hence, a case of passing-off cannot be made. Therefore, the application was dismissed in favour of the Defendant. Bolt Technology OU Vs. Ujoy Technology Pvt Ltd & Anr. CS (Comm) 582/2022.

The Delhi High Court recently dismissed an application for interim injunction by Bolt Technology OU (“Plaintiff”) against Ujoy Technology Pvt Ltd (“Defendant”), from using the BOLT Mark in relation to EV charging station for its alleged identity with that of the Plaintiff’s BOLT Mark. It was the Plaintiff’s case that the Defendant’s adoption and use of the BOLT Mark in relation to EV charging station amounts to passing-off of the Defendant’s services as the services originating from the Plaintiff. The Plaintiff relied on global goodwill and reputation earned through worldwide presence, online presence, revenues, articles from India media houses, downloads of its mobile applications by Indian consumers to support its case. The Court disagreed with the Plaintiff and held that, while the Marks are similar, the Plaintiff’s taxi services and the Defendant’s EV charging stations are neither similar nor allied or cognate, and hence, the Plaintiff’s worldwide goodwill and reputation in taxi services is not sufficient to make claims in India related to EV Charging. The Court further held that the mere fact that Indian consumers have availed the Plaintiff’s taxi services abroad is not enough to show reputation in India. It must be shown that such services were booked in India to be used in the Plaintiff’s country. The Court also considered the article relied on by the Plaintiff which does not mention anything about EV Charging station or even the Plaintiff’s expansion to India. The Court, lastly, noted that since the Plaintiff does not have a spill over reputation in India and probably has a mere intention to enter Indian market in the foreseeable future, the Plaintiff has not established the likelihood of consumer confusion and hence, a case of passing-off cannot be made. Therefore, the application was dismissed in favour of the Defendant. Bolt Technology OU Vs. Ujoy Technology Pvt Ltd & Anr. CS (Comm) 582/2022.

Recently Delhi High Court, quashed and set aside the order of the Assistant controller of Patents and Designs refusing application for registration of patent of Dolby International AB. Hon’ble C. Harishankar J. came very heavily on the Assistant Controller of Patents and observed that the impugned order, to say the least, most unsatisfactorily drawn up, it is hardly possible to treat it as written or drafted. The Hon’ble judge has pasted the impugned order in his order to show his anguish about the impugned order. Further, the court has deconstructed the order to understand the reasoning given behind the refusal of patent application. However, the Hon’ble court was not in a position to decipher the order. Further, the Hon’ble court opined that “it would well for the officers in the office of the Controller of Patents and Designs, who are discharging such functions, to bear in mind the fact that grant or rejection of a patent is a serious matter. A patent is meant to be a recognition of the innovative step that has been put into a crafting of an invention. Inventions increment the state of existing scientific knowledge and, thereafter, are of inestimable public interest. Any decision, whether to grant or refuse a patent has, therefore, to be informed by due application of mind, which must be reflected in the decision. Orders refusing applications for grant of a patent cannot be mechanically passed, as has been done in the present case”.