TVS Motor Company Secures Patent Registration1
The Intellectual Property Appellate Board ('IPAB') directed the Controller of Patents and Designs ('Respondent') to grant a patent to TVS Motor Company Limited ('Appellant') for an invention related to anti-roll bar which helps in improving bending stiffness and enhances the safety and stability of vehicle without transferring shock forces to the chassis.
Previously, the Respondent passed an order refusing grant of the patent on the grounds of lack of novelty when compared with cited prior art. While passing the order the IPAB concluded that the cited prior art, though relating to anti-roll bar only, has differential features when compared with the invention of the Appellant, thereby making the Appellant's invention distinguishable.
Therefore, the cited prior art is similar but not an identical document. Moreover, the IPAB held that a prior art is considered as anticipatory if all the features of the invention under examination are present in the cited prior art document. In the present case, the same was held to be not true and accordingly the IPAB set aside the refusal order of the Respondent and directed the Respondent to grant the patent after the filing of the amended claim sets by the Appellant as directed by the IPAB.
STIMULIV vs. STIMULET – Bombay High Court Mulls Infringing Similarity between Two Registered Marks2
Franco Indian Pharmaceuticals Pvt. Ltd. ('Plaintiff') filed an infringement suit against Corona Remedies Pvt. Ltd. ('Defendant') for unauthorized passing-off of the Plaintiff's mark "STIMULIV" by open advertisement of the registered mark "STIMULET" by the Defendant.
The counsel for the Defendant argued that the products of the parties are different as the one sold by the Defendant is an allopathic preparation for the treatment of breast cancer or infertility, while the Plaintiff's formulation is Ayurvedic used as liver supplement. Additionally, while relying on Section 28 (3) of the Trade Marks Act, 1999, the Defendant argued that when there are two registered proprietors of trademarks which are identical, neither party shall have the exclusive right to use their mark against the other.
The Bombay High Court ('Court') applied two distinct approaches while assessing the deceptive similarity:
- One with respect to the common perception upon seeing the marks; and
- Second based on the Defendants conduct.
On the first account, the Court noted that because of the niche segregation in goods of the parties, even the slightest amount of confusion shall not be permitted.
On the second account, the Court noted that the moment the Defendant sought the registration of the mark "STIMULET" there was an implicit acceptance that the mark as a whole is distinctive and capable of being distinguished, therefore the Defendant could not have argued that the word "STIMUL" is common to the trade. Resultantly, the Court observed that the two marks are deceptively similar.
The Court observed that when there is a conflict between two registered proprietors, the evaluation of rights in common law was essential to enable the Court to determine whose rights were better and superior. In view of the same, the Court noted that the registration and the use of the Plaintiff's mark is greater by at least two decades coupled with the fact that its sales are incomparably higher than that of the Defendant. Thus, an injunction order was issued against the Defendant for usage in the mark 'STIMULET'.
Ex-parte interim injunction issued against the mark "CINEFONES"3
While issuing an ad-interim injunction against the use of the mark 'CINEFONES', the Bombay High Court ('Court') observed that Cinefones Systems ('Defendant') attempted to pass off the trademark of Cinefones ('Plaintiff') as a whole and also illicitly put to use the Plaintiff's label on which it has copyright protection. The Plaintiff has been using the mark 'CINEFONES' since 1947 for audio-visual equipment including projectors, screens, etc. which was subsequently registered in 1979 under Class 9 for cinematographic hardware products.
Peculiarly, the Plaintiff used to carry on its business from a rented premise till 1992 post which the landlord let the premise out to the Defendant. Thereafter, the Defendant began to advertise its goods basis the Plaintiff's billboard over the same premise. The Court observed that the Plaintiff had previously filed opposition and rectification proceedings against the marks of the Defendant and hence the Defendant not only had constructive but actual notice of the Plaintiff's prior registration. The Court issued an ex-parte ad-interim injunction against the Defendant restraining them from advertising the mark 'CINEFONES' in any manner.
Himalaya Drug Company Secures a Win for IP Protection4
The Himalaya Drug Company and others ('Plaintiff'), filed a suit before the High Court of Delhi ('Court') seeking injunction against the infringement by Ashok Kumar & others ('Defendant'). The Defendant was involved in infringement of the 150 registered trademarks "HIMALAYA" across multiple class and 82 domain names of the Plaintiff. Since 1930, the Plaintiff had registered rights in the trademark for Medicinal, Ayurvedic and Pharmaceutical preparations.
The Plaintiff claimed that their logo constituted original artistic work under the Copyright Act, 1957. The Plaintiff further contended that the Defendant is conducting fraudulent activities by offering 'Business Opportunities' and distributorship of the Plaintiff's products through its rogue websites like (www.himalayapharmaci.in). Despite operating over seven websites, the Court noted that the exact identity of the Defendant could not be ascertained. Notably the plaint also contained information regarding emails, pamphlets, franchisee application forms, fraudulent franchisee agreements, products lists, etc. of the Defendant, using the logo of the Plaintiff. The Court further observed that the total investment sought by the Defendant on its website for franchising, ranges from INR 10,00,000 to INR 20,00,000. Surprisingly, each of the fraudulent distributorship agreements executed by the Defendant were signed by Mr. Philipe Haydon, who was the retired Chief Executive Officer (CEO) of the Plaintiff. Though the registrant detail of the domain names of the Defendant were inaccessible even by the private investigator of the Plaintiff.
Accordingly, the Court was of the opinion that the Defendant illegally sought to capitalize the goodwill of the Plaintiff without any due authorization, and further issued an ad interim injunction restraining the Defendant from using the impugned trademarks or the domain names of the Plaintiff in any manner. The Court also ordered the bank(s) of the Defendant to not allow any withdrawals from their accounts(s) save and except with the leave of the Court.
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