Designs Act, 2000
Sections 4 & 7
Suit filed for infringement of a registered design, for decision of applications for vacation of injunction and grant of the same court formulated the following questions to be answered:
Question 1. Whether the design registration in UK, USA or Australia could amount to prior publication or disclosure to public as contemplated in Section 4(b)ofthe said Act?
Answer : it can be safely concluded that while a previous registration in India would be a ground for cancellation without looking into the aspect of disclosure to the public or publication in general, a design registered in any other country prior to the date of registration in India, would also be required to have been disclosed to the public by publication in tangible form or by use or in any other way for it to qualify as a ground for cancellation of the subsequent registration in India. In the present case, I find that the designs registered in the UK and consequently in USA and Australia, are certainly not secret and are open to the public. Therefore, the defendant has been able to show, prima facie, that the design had been disclosed to the public in the UK, Australia and USA by publication in tangible form. The expression 'in any other way' would also be wide enough to include registration as a mode of disclosure to the public. Therefore, prima faice, I am of the view that the prior registration in the UK, USA and Australia amounted to disclosure to the public as stipulated in Section 4(b) of the said Act. This, in turn, means that it is a ground which is available to the defendant to seek cancellation of the plaintiffs registration and consequently, it is also a ground of defence in view of the provisions of Section 22(3) of the said Act.
Question 2. Whether there is material on record to indicate, prima facie, that the plaintiffs design had been published in India or in any other country prior to the date of registration, i.e., 05.12.2003?
Answer: De hors the question of registration, I find that the defendant has been able to show that the design had been published prior to the date of registration. Coupled with this, is the fact that the plaintiff did not file any reply to IA 3694/2008 despite opportunities having been given to it to do so. The prima facie conclusion, therefore, is that the design in question was published abroad prior to the date of registration in India.
Question 3. Can it be said, prima facie, as to whether the design of the defendant's spatula is a fraudulent or obvious imitation of the plaintiffs registered design as applied on its spatula?
Answer : An overall view has to be taken and it has to be discerned with the eye as to whether the defendant's design is a fraudulent or obvious imitation of the plaintiffs design. I find that observing the two designs side by side one cannot conclusively say that the one is an imitation of the other. This is, of course, only a prima facie view and is actually not necessary because of the decision on question Nos. 1 and 2 above.
The defendant's application, being IA 2819/2007, under Order 39 Rule 4 CPC is allowed and the interim order dated 08.01.2007 passed in IA 189/2007 is vacated.
Saturday, February 13, 2010
Thursday, February 4, 2010
Trade Marks Act, 1999
Section 45
Trade & Merchandise Marks Act, 1958
Section 44
Validity of assignment deed . Interpretation of Section 45.
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
Writ petition dismissed.
Section 45
Trade & Merchandise Marks Act, 1958
Section 44
Validity of assignment deed . Interpretation of Section 45.
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
When there is no apparent defect on the face of the Deed of Assignment and petitioner having failed to prove that any dispute was pending in any court of law relating to the cancellation or validity of the assignment Deed then when once an assignment Deed has been executed, the assignor ceases to have any right, title or interest in the property assigned . It is not open to the assignor to cancel the assignment by means of a communication therefore no infirmity in the impugned order.
Writ petition dismissed.
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Trade Marks Act, 1999
Sections 27 & 29
Suit for declaration that the use of mark 'champion' as suffix to the mark 'Mach 3 Turbo' by the defendant is identical and deceptively similar to the registered trade-mark champion of the plaintiff
HELD In an action for infringement of trade-mark or of passing off, in order to obtain an order of temporary injunction, it is incumbent upon the plaintiff to show that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of general public as goods of the plaintiff and that the user of the said trade-mark or the trade-name by the defendant is likely to deceive and cause confusion in the public mind and cause injury to the business reputation of the plaintiff.
Sections 27 & 29
Suit for declaration that the use of mark 'champion' as suffix to the mark 'Mach 3 Turbo' by the defendant is identical and deceptively similar to the registered trade-mark champion of the plaintiff
HELD In an action for infringement of trade-mark or of passing off, in order to obtain an order of temporary injunction, it is incumbent upon the plaintiff to show that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of general public as goods of the plaintiff and that the user of the said trade-mark or the trade-name by the defendant is likely to deceive and cause confusion in the public mind and cause injury to the business reputation of the plaintiff.
Although the plaintiff is the proprietor of the trade-mark champion in relation to safety razor blades and safety razors, but the plaintiff never manufactured nor marketed safety razor under the said brand name. Therefore, the apprehension of the plaintiff that an unwary customer will be deceived or confused or mislead is misplaced. Prima facie, it appears the mark/expression champion is; used alongwith the trade-mark Gillette Much 3 Turbo, which is in conformity with the trade practice.
mark/expression commonly used by the members of the trade for brand imagery and as a laudatory epithet. There is no likelihood of any confusion or deception between the two marks. Therefore Application for temporary injunction dismissed. However defendant should keep the accounts in respect of manufacture and sale of its product bearing the mark/expression champion during the pendency of the suit.
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Trade Marks Act, 1999
Sections 27 & 29
Trade Mark "ketpod" of the plaaaintif against defendants' mark "zetpod"
Interim injunction made absolute.
Sections 27 & 29
Trade Mark "ketpod" of the plaaaintif against defendants' mark "zetpod"
HELD it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words "ket pod" used by the plaintiff and the word "zet pod" are in my view phonetically similar. While pronouncing both, these words the assent and stress is naturally on the syllable "et". It one replace the letter "k" in word "ket pod" with letter "t", the word "tet pod" would still have pronounced use of syllable "et". I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark at the plaintiff. It is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark, admittedly came to market recently in 2008. The defendants action smacks of this dishonesty.
Interim injunction made absolute.
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Trade Marks Act, 1999
Section 2(1)(zb)
Trademark 'TUFF' and 'TUFF LABEL'.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants
Interim injunction granted.
Appeal accepted with cost of Rs 30,000/-.
Section 2(1)(zb)
Trademark 'TUFF' and 'TUFF LABEL'.
HELD Definition of 'trade mark' under the Act means a mark "which is capable of distinguishing the goods or services of one person from those of others Use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the Act the Defendant has been unable to show that its goods bearing the mark TUFF were at any point of time since 1991 and prior to 1996 available in the market. There is absolutely no evidence placed on record by the Defendant to show that it has actually sold its goods using the mark 'TUFF' or 'TUFF & TUFF' even thereafter. For proving prior user, the Defendant repeatedly referred to the two newspaper advertisements inserted by it in 1993, the six trade enquiries between 1994 and 1995 emanating from these advertisements. Between 1993 and 1995, there were seven indents of John and John Traders and one indent of Bolt House. There is also a letter from John and John Traders asking the Defendant to send goods from outside. Then we have the grant by the Postal Department of the telegraphic address 'TUFF' to the Defendant.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants
Interim injunction granted.
Appeal accepted with cost of Rs 30,000/-.
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Trade Marks Act, 1999
Sections 9, 30 and 35
'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
Appeal dismissed
Sections 9, 30 and 35
'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.
We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
Appeal dismissed
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Trade Marks Act, 1999
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark
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Code of Civil Procedure, 1908
Order 7 Rule 11 read with Trade Marks Act, 1999 Sections 134 and 135
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
Order 7 Rule 11 read with Trade Marks Act, 1999 Sections 134 and 135
Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.
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