The Division Bench of the Delhi High Court, recently, upheld the injunction granted in favour of Sun Pharma Laboratories Ltd. (“Sun Pharma”) against Glenmark Pharmaceuticals’ (“Glenmark”) use of the mark INDAMET, owing to its deceptive similarity to Sun Pharma’s mark ISTAMET XR CP. Glenmark contented that the predecessor of Sun Pharma, had, in its reply to the Examination Report issued by the Trade Marks Registry, in relation to the ISTAMET XR CP mark, argued that its mark ISTAMET XR CP is not deceptively similar to the cited marks ASTAMET, INSTAMET and ESTIMET, and therefore, it cannot take a contrary stand before that court that the mark INDAMET is deceptively similar to ISTAMET XR CP. Glenmark further submitted that the marks are dissimilar and since the drugs bearing the rival marks are meant to treat different ailments and are also packaged differently, there is no possibility of confusion. Glenmark also submitted that Sun Pharma has failed to obtain a registration for the mark ISTAMET and the registration held by it is in respect of the ISTAMET XR CP mark. It also submitted that the term MET is common to trade. Sun Pharma, on the other hand, argued that it could not be held bound by the stand taken by its predecessor and this cannot operate as estoppel against it. It further submitted that the word ISTAMET has to be viewed as constituting the dominant feature of the ISTAMET XR CP mark, with XR and CP being merely generic nomenclatures widely used in the pharmaceutical industry. It also argued that notwithstanding the well-recognized rule of ‘anti-dissection’, the dominant feature of a mark is one which can be legally taken into consideration while answering an issue relating to deceptive similarity. As such, it is clear that the mark INDAMET is deceptively similar to the ISTAMET XR CP mark. The court was of the opinion that the adoption and use of the INDAMET mark by Glenmark, despite its application being opposed by Sun Pharma, was a strategic gamble. The court also took in consideration the fact that Sun Pharma was first in the marketplace. Accordingly, the court held that although Sun Pharma’s registration was for the composite mark ISTAMET XR CP, the dominant feature is clearly the word ISTAMET. The court stated that the differences in ingredients or salts which make up competing pharmaceutical products would not be aspects which could be said to be germane when it come to the question of likelihood of confusion. The court, therefore, upheld the decision of the single judge bench and concluded that the rival marks are structurally and phonetically similar.

Recently, the firm obtained an ex-parte ad interim injunction on behalf of its client, Glaxo Group Limited (“GSK”), before the Delhi High Court. The suit was based on GSK’s earlier rights in the T-BACT, CEFTOL, BETNESOL marks and the BETNESOL and BETNOVATE packaging. In the matter, the defendants were selling pharmaceutical and medicinal products with identical active ingredients bearing the TEEBACT, CEFTOL, and BETASOL marks and in packaging similar to GSK’s marks and packaging. In light of GSK’s prior statutory and common law rights, J. Anish Dayal restrained the defendants from manufacturing, marketing, selling, etc. pharmaceutical preparations bearing the infringing marks and packaging.

The Hon’ble Delhi High Court, has recently, in a suit for permanent injunctions and a plea seeking recognition of the mark HALDIRAM along with its other variation by Haldiram India Pvt Ltd (“Haldiram”), restrained Berachah Sales Corporation (“Berachah”), from using the mark HALDIRAM or any mark similar to the HALDIRAM trade mark and has also declared the mark HALDIRAM as “well-known” under Section 2(1) (zg) of the Trade Marks Act, 1999. The Court had initially issued an ex-parte ad-interim decree appointing a Local Commissioner, following which infringing products, including expired items from “Haldiram Inc”, one of Haldiram’s subsidiary, was uncovered from the premises under the control of Berachah. The Court in its permanent injunction order ruled that since the case in hand meets the triple identity test, Berachah’s actions have infringed Haldiram’s rights in its name and mark. The Court also ruled that exemplary damages fall within the category of punitive damages and are typically awarded in extraordinary cases, taking into account the severity of the misconduct such as this and Berachah has deliberately chosen to stay away from the proceedings merely to ensure that it is not required to produce its accounts. The Court, accordingly, decreed the suit in Haldiram’s favour for INR 50 Lakhs on account of damages and INR 2 Lakhs as costs. The Court also declared the HALDIRAM and HALDIRAM in oval-shaped device marks ‘well-known’ in respect of food items as well as in respect of restaurants and eateries across India, including West Bengal (where Haldiram does not exercise exclusive rights), based spill-over of HALDIRAM’s reputation on other parts of the country into West Bengal. The Court also directed the Registrar of Trade Marks to refuse all trade mark applications for marks containing HALDIRAM filed by Berachah.

The Delhi High Court recently dismissed an appeal filed by Google LLC (“Google”) against the Controller of Patent (“Controller”) order refusing Google’s patent application on the grounds that the invention lacks novelty and inventive step. The Controller examined Google’s application for grant of a patent on ‘Managing Instant Messaging Sessions on Multiple Devices’, had raised an objection to its patentability in the First Examination Report on the grounds that, the invention, being a computer programme per se, lacks novelty and inventive step. Google made amendments to the claims to address the objections and further claimed that none of the cited prior arts disclosed the invention and its technical effects. Additionally, Google stated that corresponding foreign patent applications have been granted in the US and Canada. A hearing was then scheduled in this matter and the Controller disagreed with Google’s submissions, and eventually refused the application on the grounds raised in the FER. The Court, in the appeal filed by Google, applied the settled tests for inventiveness and upheld the Controller’s refusal order. The Court also noted that, while, during the appeal proceedings, Google submitted that, a corresponding application for the subject patent in Europe had been abandoned, the Court’s own finding revealed that, the corresponding application was in fact, refused on the grounds of lack of inventive step. The Court ruled that the Appellant in the present appeal not only presented wrong facts to the Court, but also failed to disclose the information regarding the refusal of the European patent applications, and accordingly, the appeal was dismissed with INR 1 lakh costs for presenting wrong facts. Google LLC vs. The Controller of Patents, [C.A.(COMM.IPD-PAT) 395/2022, Delhi High Court judgment dated, 2nd April, 2024] Click here to access the judgment copy

Recently, a division bench of the Delhi High Court set-aside the decision of the single judge in Sana Herbals Pvt. Ltd. v. Mohsin Dehlvi [2022 SCC On Line Del 4482] (Sana Herbals) and held that the obligation to stay the proceedings in a suit for infringement, pending the outcome of a rectification petition, is mandatory and does not change post the abolition of the Intellectual Property Appellate Board (IPAB). In our earlier post on Mr. Amrish Aggarwal, trading as M/s Mahalaxi Product v. M/s Venus Home Appliances Pvt. Ltd. & Anr., we had reported that a judge of the Delhi High Court, sitting singly, had referred the issue for consideration to a two-judge bench as to whether the view taken in Sana Herbals that post the abolition of the IPAB, there is no requirement of staying a civil suit during the pendency of the rectification petition, can sustain. Counsels, including the Petitioner/Defendant (“Mahalaxmi”) and the Respondent/Defendant (“Venus”) and other members of the bar assisting the court made substantial submissions on this legal issue. The court also extensively perused all past and present provisions relating to the stay of civil suits, pending a rectification petition and framing of issues, after being prima facie satisfied as to tenability of the challenge to a registered mark. Placing reliance on the decision of a two-judge bench in Puma Stationer P. Ltd. v. Hindustan Pencil Ltd [(2010) 43 PTC 479] and the seminal decision of the Supreme Court in Patel Field Marshal v. P.M. Diesels [(2018) 2 SCC 112], the court held that the law necessities the stay of suit proceedings pending the outcome of a rectification proceeding. The court observed that this position further finds strength by the binding nature of the outcome of such rectification petition on the suit court. Additionally, the assumption that a suit as well as the rectification petition would necessarily be come to be filed before the same High Court and can always be clubbed and tried together is incorrect and misses several other circumstances, obviating any option to club the proceedings together. For the above said reasons, the court answered the reference in negative and set aside the decision of Sana Herbals as being incorrect to the extent it held that there is no need to stay proceedings in a civil suit pending outcome of a rectification petition owing to the abolition of IPAB. Mr. Amrish Aggarwal, trading as M/s Mahalaxmi Product v. M/s Venus Home Appliances Pvt.Ltd. & Anr. [C.O.(COMM.IPD-TM) – 258/2022], Order dt. 17 May 2024.

The Delhi High Court recently awarded INR 217 Crores (USD 26.1 Million) in lost profit damages in a patent infringement case between Communication Components Antenna Inc. (“Plaintiff”) vs. Mobi Antenna Technologies (“Defendants”) for the Plaintiff’s suit patent i.e., ‘Asymmetrical Beams for Spectrum Efficiency’. The Plaintiff claims that the rival products are similar and marketed using the same terminology, indicating similarity. To estimate damages, the plaintiff presented a Total Addressable Market (TAM) Analysis, evaluating Indian operators, site numbers, subscriber growth, spectrum allocation, and Bi-Sector Array Antennas types. The analysis projected potential sales of at least 94,710 Bi-sector Antennas in India by the end of 2015, based on sales data before the patent grant and trial completions. Plaintiff calculated an average sale price of USD 1,200 per antenna from 2007 to 2011, adding a profit margin of USD 150 per antenna, totalling USD 1,350 profit per unit. However, an estimated market loss of 94,710 units from 2011 to 2014, the total lost profits of USD 96,874,870 (INR 216 crores). The defendant argued that they were unfairly involved in this lawsuit as a means to limit market competition. Additionally, the defendant claimed that the plaintiff’s method of comparing the defendant’s antenna patterns with beam patterns from the suit patent using Adobe PDF Editor to prove infringement was flawed and unreliable. The defendant also challenged the suit patent’s validity, claiming that it lacked novelty and inventive step and it relates to mere use and mere arrangement or re-arrangement of known devices, which is a non-patentable subject matter. The court ruled in favour of the plaintiff, rejecting the defendant’s patent revocation case. The court also issued a permanent injunction, preventing the Defendant from manufacturing, using, distributing, selling, offering for sale, or importing any product infringing the plaintiff’s patent until 2027. The court found the plaintiff’s damages reasonable, awarding USD 26,045,250 for 2011-14, with 5% interest per annum from the judgment date until payment. Communication Components Antenna Inc. vs. Mobi Antenna Technologies (Shenzhen) Co. Ltd. & Ors, [CS(COMM) 977/2016, Delhi High Court judgment dated, 16h May 2024]

The High Court of Delhi has recently, in a suit for injunction filed by Relaxo Footwears Limited (“Plaintiff”), refused to restrain XS Brands Consultancy Private Limited & Ors (“Defendants”) from using the device mark X on footwear. The suit was based on the Plaintiff’s earlier rights in its registered device mark “X” used under its SPARX brand. It was the Plaintiff’s case that the Defendants adopted the mark with sole purpose of identifying source or origin of the Defendants’ footwear under the mark X with the Plaintiff and the Defendants use of the mark X on footwear in a similar stylization infringed on the Plaintiff’s rights in its X mark, erodes the distinctiveness of its X mark, leads to confusion, misrepresentation, and tarnishes their goodwill. The Defendants argued that the Plaintiff does not have exclusive rights over the letter and the stylization claimed, and that the rival marks are different. The Defendants also argued that the Plaintiff had at the prosecution stage of the application to register the mark X argued dissimilarity of its mark from other third-party X marks and the Plaintiff cannot now claim that the rival marks are similar. The Plaintiff rebutted the Defendants claims and clarified that they do not claim exclusive rights on the letter ‘X’ per se but on the stylization and representation in their footwear. The court agreed with Defendants and rules that since the Plaintiff has acknowledged the presence on of other “X” device marks in the market, it is now estopped from taking a contradictory stand. The court also ruled that Defendants’ substantial investment in brand development makes it unlikely that they have dishonestly adopted “X” device mark. The court established the principle of “added matter”, under which, when two marks share a common element found in multiple other marks in the same market, consumers tend to focus more on the unique features of their respective brands. The court, applying this principle to the case, ruled that, since the rival marks are not being used in isolation but in conjunction their respective brands “SPARX” and “HRX”, a case for likelihood of confusion is not made out. Relaxo Footwears Limited vs. XS Brands Consultancy Private Limited & Ors, CS (COMM) 917/2018, Judgement dt. on May 03, 2024. Click here to access the judgement copy.

The Bombay High Court, recently, granted an ad-interim injunction in favor of the famous Bollywood producer and director, Karan Johar (“Plaintiff”), restraining the Indian Pride Advisory Pvt. Ltd. and others (“Defendants”) from using his name or attributes in the title, promotion, endorsement and/or publicity of the film, “Shadi Ke Director Karan Aur Johar”/ ”Shadi Ke Director Karan Johar”, as well as from releasing the film. The Plaintiff argued that he is aggrieved by the subject film, and that the Defendants are using his name with a mala fide intention to mislead the public into believing that the subject film is associated with the Plaintiff.  It was further argued that the trailer indicates that the film is in respect of two individuals named “Karan” and “Johar” who collaborate to become Bollywood directors, which further makes it evident that the Defendants are using the personality of the Plaintiff. The Plaintiff also submitted that since the Defendants are in same line of business, they ought to have been aware of the brand name of the Plaintiff. The Plaintiff also claimed that it is a well-settled position of law that a person who has obtained celebrity status has personality rights, rights of publicity and privacy rights and unless his consent is taken for using his personal attributes such as his name and profession, such use would constitute violation of his rights. The court noted that despite being served notice, the Defendants chose not to appear. The court observed that the Plaintiff has made out a strong prima facie case against the Defendants as they are unlawfully using the Plaintiff’s name, and it is evident from the use of the words “Director” along with “Karan Johar” that the Defendants are using the personality of the Plaintiff and intend to create confusion in the minds of the public at large. Accordingly, the court, while recognizing the personality rights of the Plaintiff, passed an ad-interim injunction restraining release of the subject film. 

The Bombay High Court, recently, granted an ad interim temporary injunction in favor of Glenmark Pharmaceuticals Ltd. (“Applicant/Plaintiff”), restraining Gleck Pharma Pvt Ltd. & Ors. (“Respondents/Defendants”) from using the impugned trademark XIGAMET in relation to medicinal or pharmaceutical preparations as it is deceptively similar to the Plaintiff’s trademark ZITA-MET. The Plaintiff argued that it is the registered proprietor of the trademark ZITA-MET and ZITA-MET formative marks which is being used in relation to an anti-diabetic drug. It was argued by the Plaintiff that the Defendant’s use of the impugned trademark XIGAMET amounts to infringement of the Plaintiff’s mark owing to its phonetic, aural and visual similarity with the Plaintiff’s mark. Defendant, on the other hand, argued that the suffix MET is commonly used in the industry, across the globe. Furthermore, the Defendant argued that there is another registered trademark which is similar to the Plaintiff’s mark and is operating in the same market without causing confusion to the consumers and therefore, the objection raised by the Plaintiff with regards to the confusion amongst the consumers does not sustain. The main issue for consideration before the court was whether the impugned mark was deceptively similar to the Plaintiff’s mark. The court said that a stricter approach has to be adopted while applying the test of deceptive similarity in the case of medicinal products since any confusion in this regard may have disastrous effect on the health of the consumers. The court opined that a lesser quantum of proof of confusion is required in the case of medicinal products and the court is not to speculate regarding the probability of confusion between the marks. Accordingly, the court granted an ad interim injunction in favor of the Plaintiff.

The Delhi High Court recently rejected a plea filed by Pocket FM Private Limited (“Plaintiff”) seeking temporary injunction against Novi Digital Entertainment Private Limited (“Defendant”) from publishing/making available, the alleged video adaptation of its audio series “Yakshini” on their website or other third-party media websites. The Plaintiff provides an online platform for audio series and audiobooks by the name Pocket FM. As per the Plaintiff, its primary focus long format audio content. The Plaintiff claimed that it adapted and published the work “Yakshini” as an audio series in 2021. As per the Plaintiff, the Defendant operates the streaming platform, Disney+ Hotstar, and in the first week of June 2024, the Plaintiff came across a trailer for a television series “Yakshini”, set to release on June 14, 2024. The Plaintiff submitted that, it is evident, from the trailer, as well the comment section to this video, that the Defendant has unauthorizedly adapted the Plaintiff’s series since there are stark similarities in the storyline and characters. The Plaintiff further stated that while it had, in 2022, approached the Defendant regarding adaption of various works, and shared proprietary information, the discussions were not fruitful. The Plaintiff also highlighted that the parties had not signed a non-disclosure agreement despite the Plaintiff insisting on it, and instead the Plaintiff signed a release form absolving the Defendant of any liability with respect to any content shared during negotiations. The Defendant stated that it had advertised release of the series in May, and the Plaintiff had chosen to sit till the eleventh hour to file the suit. The Defendant further stated that Yakshini is an old mythological character about whom there is abundant literature available, and the idea has not been picked up from the Plaintiff’s audio series, let alone the expression. It was submitted that the Plaintiff has not approached the court with clean hands since it has already signed a release form stating that it will not claim proprietary rights in the works that have been submitted to the Defendant. The court observed that, despite the Defendant advertising the television series over a month ago, the Plaintiff approached the court the day before its release, and it would not be equitable for an injunction to be granted. The court held that while the idea maybe similar, it finds roots in mythological stories, and the similarity of name cannot be the sole criteria for making out a case of infringement. Accordingly, the court, while observing that if the Plaintiff makes out a case at a later stage, it can be compensated monetarily, rejected the application for an ad-interim injunction. Pocket FM Private Limited v. Novi Digital Entertainment Private Limited & Anr., CS (COMM) 524/2024, Judgement dt. June 13, 2024.