Recently, the Delhi High Court passed an ex-parte ad interim injunction in favour of D.B. Engineering Pvt. Ltd. (“Plaintiff”) against multiple defendants, including an erstwhile employee of the Plaintiff. The Plaintiff claimed that it adopted the registered mark ATLAS KNIVES in 1986-87 in relation to its business of manufacturing industrial steel knives, cutters, etc. It also averred that it has a registration for the ATLAS KNIVES mark since 2014 and exports its products to more than sixty countries. As per the Plaintiff, one of the defendants, who was an ex-employee of the Plaintiff, started a firm called “Atlas Knives & Tools, Faridabad” in collusion with other defendants, and was using the ATLAS trade name for identical products. It also claimed that the defendants were using the ATLAS mark as part of the domain name, ATLASKNIVESTOOLS.COM, various email addresses and on product brochures showing the entire product line of the Plaintiff. While ruling that the Plaintiff had established a prima facie case for the grant of an ex parte ad interim injunction, the court noted that defendant who was the ex-employee of the Plaintiff was fully aware of the Plaintiff’s rights in the ATLAS name and mark and had a greater duty not to indulge in such illegal conduct. Accordingly, it restrained the defendants from using the mark/name ATLAS, ATLAS KNIVES and ATLAS KNIVES AND TOOLS either as a trademark, trade name, domain name or as a part of email addresses. D.B. Engineering Pvt. Ltd. v. Pawan Sharma & Ors., CS(COMM) 404/2022, Order dt. June 2, 2022

MERCURY mark and trade-dress. The Plaintiff claimed to be in the business of manufacturing cards since 1951 through its predecessor. The Plaintiff stated that it has been selling its products under the trademark MERCURY and a distinct trade dress since 1963. The Plaintiff also claimed copyright in its logo/packaging. The Plaintiff also stated that it had registrations for MERUCRY marks which were not renewed due to oversight. The Plaintiff also cited its fresh applications, advertising and promotion figures as well as turnover to establish its rights. As per the Plaintiff, the defendant has adopted the mark MERUCRY for playing cards in a similar trade dress. As per the Plaintiff, the defendant has also filed a trademark application claiming use since 2018. However, no documents have been filed in support of this claim. The Plaintiff stated that this is a clear attempt to pass-off the goods of the defendant as those belonging to the Plaintiff and cause consumer confusion and deception. In light of the above contentions, the Delhi High Court held that the Plaintiff had established a prima facie case and passed an order restraining the defendant from using the trade dress and MERCURY mark. A India Print House through its Partners Kunal Kapoor and Vibha Kapoor v. Pavan Bansal, trading as Bajrang Traders [CS(COMM) 358/2022]. DHC Order dt. May 25, 2022

The Polo/Lauren Company LP (“Polo”) recently filed a rectification petition before the IP Division of the Delhi High Court seeking removal of a copyright registration for the artwork titled ‘SPORTS POLO’, obtained by the respondent, Sandeep Arora, in 2021. Polo’s case was that it is the registered proprietor and user of the well-known trade mark, POLO SPORT, since 1967 along with a device mark of a “horse with a person riding it while flinging his club to hit a ball in the sport of polo”. It claimed that Mr. Arora’s copyright registration is an infringement of the copyright in its literary and artistic works, that Mr. Arora has misappropriated the words POLO and SPORT, with the only distinguishing feature being the number of horses featured in the parties’ rival logos, and that Mr. Arora’s work is not an “original” work under the copyright law. In his defense, Mr. Arora argued that his copyrighted work is substantially different from Polo’s marks, where the number of horses is different and the riders are not playing the game of polo. On a comparison of the rival logos, the Delhi High court was of the view that the difference between the logos was minor and not significant enough to make Mr. Arora’s logo an “original” artistic work eligible to be registered as a copyright under copyright law. It observed that Mr. Arora’s logo is an imitation of Polo’s registered marks and opined that, while comparing the two marks/logos, the qualitative differences (as opposed to quantitative differences) have to be examined. It also emphasized the need for the Registrar of Copyright (“Registrar”) to hold an inquiry/ search of the Trade Marks Register to ensure that a proposed artistic work is not identical with, or deceptively similar to, a prior trade mark. Moreover, it stated that a copyright registration for a work which is not an original work would be an entry wrongly made on the register. Thus, the court directed the Registrar to cancel the copyright registration for Mr. Arora’s artwork. The Polo/Lauren Company LP v. Sandeep Arora & Ors. Delhi High Court C.O. (COMM.IPD-CR) 4/2021 Order dated 01.02.2022

The Delhi High Court recently heard a case based on “groundless threats of legal proceedings” seeking declaration of non-infringement. Under Indian trademark law, where a person threatens someone with an action for trademark infringement, the person aggrieved may bring a suit against the first-mentioned person and obtain a declaration that the threats are unjustifiable and an injunction against their continuance, unless the first-mentioned person satisfies the court that the acts in question constitute infringement. In the suit filed, the plaintiff submitted that he is running a very popular online platform called “COOK STUDIO” engaged in the activity of blogging, production of video films, training, etc., particularly related to cooking. He claimed to have received legal notices from The Coca Cola Company, the registered proprietor of the mark “COKE STUDIO”, calling upon him to desist from using the COOK STUDIO mark for his culinary related blog. Coca Cola argued that the suit was not a fit case of groundless threats since use of the mark COOK STUDIO would constitute infringement of its COKE STUDIO mark. The plaintiff, in turn, submitted that there is complete disparity between the logos and colour combination of the rival marks and also that the words ‘COOK’ and ‘STUDIO’ are generic. The Delhi High Court admitted the suit and was of the view that an attempt ought to be made to amicably resolve the dispute through mediation in the first place. Accordingly, the court referred the parties to mediation and simultaneously ordered the completion of pleadings as per the timelines set out under the commercial courts law. Nikhil Chawla v. The Coca Cola Company CS (COMM) 313/2022 Delhi High Court Order dated May 12, 2022

Recently, Culver Max Entertainment Private Limited, filed a suit before the Delhi High Court against various rouge websites seeking protection of its exclusive broadcasting rights in the forthcoming India-England International Cricket Series 2022. It was the case of the plaintiff that these parties who are engaged in the business of uploading pirated and unlicensed content, are habitual defaulters and have, in the past also infringed the plaintiff’s exclusive broadcasting rights of such matches. The Delhi High Court noting the plaintiff’s exclusive media rights to broadcast and communicate to public the upcoming cricket series in the territories of India, Pakistan, Afghanistan, Sri Lanka, Nepal, Bangladesh, Bhutan, Myanmar and the Maldives, passed an interim order and restrained various rouge websites from illegally transmitting, broadcasting, communicating, telecasting to public etc. any event or match to the public. The court further directed the concerned impleaded authorities to block access of the websites from where the infringing content is communicated. The court also ordered appointment of a local commissioner to visit the premises of the distribution platform operators and ascertain whether they are in fact unauthorized distributors and inspect further. Culver Max Entertainment Private Limited formerly known as Sony Pictures Networks India Pvt Ltd v. F1.mylivecricket.live & Ors., CS (COMM) 439/2022, Order dated June 29, 2022

Recently, the Delhi High Court, held that amendments to claims or patent specification shall not be rejected solely on account of the claims being converted from “product by process” claims to “process only” claims or method claims. The Court held that amendments to claims are permissible so long as they only narrow the scope of the originally filed claims and the invention under the amended claims/ specification is restricted to the scope of the disclosures already made in the originally drafted claims/ specification. The Appellant filed an application seeking patent protection for “copolymer latex” product obtained by the process of “emulsion polymerization”, defining the scope of its claims to be for ‘product by process’. However, in order to overcome the Indian Patent Office’s objection that the claims in the original patent application were improperly drafted and the scope of whether protection was sought for a product or process was not clear, the Appellant ultimately amended its “product by process” claims to “process only” claims. The Indian Patent Office rejected the patent application under Section 59(1) of the Patent Act, 1970 (the “Act”) on the ground that the original claims were ‘products claims’ and that the amendments rendered it to be ‘process claims’ and therefore beyond the scope of the original claims. The Court, while allowing the appeal observed that the purport of Section 59(1) of the Act makes it clear that amendments to a patent specification or claims at the stage of examination prior to grant ought to be construed more liberally than narrowly. The Court, relying on the decision of the European Technical Board of Appeals in the case of Konica/Sensitizing [1994] EPOR 142, held that since the Appellant-Applicant had only narrowed the scope of its claims through the amendments to its claims, and since the ‘process’ sought to be claimed in the amended claims had been clearly disclosed in the original patent specification, the amendments effectively made the claims clearer and more definite. The Court further noted that the Indian Patent Office had itself sought clarification as to whether protection was sought for a product or process and could not therefore hold the view that process was originally disclaimed. Thus, the objections under Section 59(1) of the Act were held not sustainable. Nippon A&L Inc. v. The Controller of Patents CS (COMM).IPD-PAT) 11/2022, Order dated July 5, 2022

The Delhi High Court in its recent decision in a design infringement and passing off suit declined interim injunction to the plaintiffs owing to the presence of similar prior registered designs. The plaintiffs asserted that the novelty of its designs reside in the T-Shape and Plug and Play format their electric bulbs. The plaintiffs further asserted that the look and feel of the defendants’ designs are similar to their designs. The plaintiffs supplemented their assertions by a comparative report highlighting the similarities of the rival designs. The defendants in response contented that their designs were different from the plaintiffs’ designs. The defendants further contended that plaintiffs’ designs are liable to be cancelled since similar designs have been previously registered in India and put on record several design registrations for the same products. After going through the submissions of the parties, the court despite finding the contrasting designs to be similar, held that the design of the plaintiffs’ bulbs to be merely a trade-variant of already existing registered designs and not capable of registration. The court also declined the prayer of passing off the plaintiffs holding that the plaintiff is also the original equipment manufacturer of various lighting products including the suit designs for various companies and thus the design of the bulbs cannot attribute a connection of the product to the plaintiffs. Philips Holding B.V. v. Jaiprakash Agarwal & Anr, CS (Comm) 46/2019 & Signify Holding B.V. v. Syska LED Lights Pvt. Ltd., CS (Comm) 76/2019, Order dated 05-07-2022

This past week, the Delhi High Court, issued directions for effective disposal of domain name disputes. In the case, one of major issues was whether the intervention of the Court would be required in every case which involves registration of infringing domain names. The Court opined that in order to tackle this issue, Domain Name Registrars should create a mechanism by which any trademark owner, objecting to the registration of a domain name, can approach the Domain Name Registrar and seek cancellation/transfer of the domain name. These requests should be fairly evaluated through an independent Ombudsman. The IP owners would be free to avail the remedies in accordance with the law if they do not agree with decision of Ombudsman. The Court, further, stated that the abuse policy implemented by Domain Name Registrars should not merely deal with suspension but also cancel/transfer of the infringing domain names. The Court also emphasized that the abuse policy should be implemented by Domain Name Registrars through specified officials who must be based out of India. Snapdeal Pvt. Ltd. v Godaddycom LLC and Ors CS (COMM) 176/2021

Recently, Excitel Private Limited (“Appellant”) filed an appeal before the IP Division of the Delhi High Court against an order passed by the Registrar of Trade Marks refusing its application, for the mark REELTIME, in Class 42. One of the grounds for refusal was that the Appellant had only submitted Internet extracts to show use of its mark in India. The Registry’s stand was that such extracts are only “secondary evidence” and cannot be relied on solely to show use in India. The court opined that rejecting extracts from websites on the ground that they are not “primary evidence” is an incorrect approach since the genuineness of these extracts can be checked by the Registrar by accessing the websites at the time of hearing. If, despite this verification, however, the Registrar has doubts regarding the evidence, he/she can, at best, ask the applicant to support such evidence with an affidavit under the Information Technology law of the country, which allows reliance on website printouts. Accordingly, the court set aside the refusal order passed by the Registrar and allowed the application to be published in three months. EXCITEL PRIVATE LIMITED v. REGISTRAR OF TRADEMARKS, C.A.(COMM.IPD-TM) 5/2021, Decision dated July 18, 2022

Recently, Dominos IP Holder LLC & Anr. (“Plaintiffs”) filed a trademark infringement suit against M/s Dominick Pizza & Anr. (“Defendants”) before the Delhi High Court, aggrieved by their use of a deceptively similar mark, logo and trade name ‘DOMINICK PIZZA’ and the marks ‘CHEESE BURST’ and ‘PASTA ITALIANO’. The Defendants were supplying pizza through online food portals. Interestingly, the name ‘DOMINICK PIZZA’, was also the identical historical name of the Plaintiffs’ store, established in the year 1969, by its founder Mr. Dominick DiVarti, therefore having an integral association with the Plaintiffs. Further, while relying on customer reviews posted on online food portals, the Delhi High Court established tarnishment and dilution of the Plaintiffs’ mark and business, and recorded the amplification of scope of confusion between the name and business of the Defendants’ with that of the Plaintiffs’ outlets. Accordingly, the Delhi High Court restrained the Defendants from advertising, selling or marketing any product or documentation using or displaying ‘Dominick Pizza’ and the flavour variants. Additionally, the Delhi High Court ordered suspension of the domain names <dominickpizza.com> and <dominickpizzas.com>. DOMINOS IP HOLDER LLC & ANR. v. M/S DOMINICK PIZZA & ANR., Decision dated August 29, 2022.