Latest Trademark Cases in 2021 – Part 4

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Sun Pharmaceutical Industries Limited vs Cipla Limited

In this case, the Respondent/Plaintiff filed a suit for a permanent injunction before the Madras High Court against the Applicant/Defendant for infringement of its copyright and trademark. The Court herein, granted an interim injunction in favour of the Respondent/Plaintiff. Henceforth, the Applicant/Defendant filed three applications with a plea to vacate the interim relief granted on grounds of urgency. The plea was based on the fact that the drugs were of a huge amount, carried an expiry date of 1 year, and were in demand because of the ongoing pandemic as they helped in relieving the Covid-19 symptoms. The Court held that the Respondent/Plaintiff had made out a prima facie case for continuance of the interim order as the balance of convenience continued to be in their favour. While holding so, the Court pointed out that they cannot allow a party to violate another person’s IPR, notwithstanding the fact that the country was facing an unprecedented medical emergency. The Court upheld the interim order and held that it shall continue to remain in force subject to the final decision of the suit.

Citation: Sun Pharmaceutical Industries Limited vs. Cipla Limited …, Decided by Madras High Court in May, 2021, available at: IndianKanoon link to Sun Pharmaceuticals Industries Ltd. vs. Cipla Limited, visited on 1st July, 2021.

V Guard Industries Ltd vs Sukan Raj Jain & Anr.

In this case relating to allegations of “V Guard” trademark infringement, the defendants argued against the territorial jurisdiction of the Delhi High Court as plaintiff and defendants do not have their principal businesses in Delhi. The allegedly infringing products were being offered for sale, advertised, and sold through online portals. After reviewing the facts, the Court came to the conclusion that it had the territorial jurisdiction because the plaintiff has business in Delhi, and because the product bearing the mark was being advertised and sold in Delhi through online means.

The Court cited the following judgments pertaining to jurisdiction of copyright and trademark suits while arriving at its conclusion:

“34. The aforesaid contention raised on behalf of the Defendant is facile in view of the settled position of law. The Supreme Court in IPRS (SC) has settled the debate on choice of forums available to a plaintiff to file an action against infringement and passing off. It has been declared that by virtue of Section 134 of the Trade Marks Act, additional jurisdictions have been made available to plaintiff, over and above the jurisdictions available under Section 20 CPC. The Supreme Court, after considering its earlier decisions including Patel Roadways Limited, Bombay (Supra) and Dhodha House (Supra), held as follows:

“18. On a due and anxious consideration of the provisions contained in Section 20 of the Code of Civil Procedure, Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, and the object with which the latter provisions have been enacted, it is clear that if a cause of action has arisen wholly or in part, where the Plaintiff is residing or having its principal office/carries on business or personally works for gain, the suit can be filed at such place/s. Plaintiff (s) can also institute a suit at a place where he is residing, carrying on business or personally works for gain de hors the fact that the cause of action has not arisen at a place where he/they are residing or any one of them is residing, carries on business or personally works for gain. However, this right to institute suit at such a place has to be read subject to certain restrictions, such as in case Plaintiff is residing or carrying on business at a particular place/having its head office and at such place cause of action has also arisen wholly or in part, Plaintiff cannot ignore such a place under the guise that he is carrying on business at other far flung places also. The very intendment of the insertion of provision in the Copyright Act and Trade Marks Act is the convenience of the Plaintiff. The rule of convenience of the parties has been given a statutory expression in Section 20 of the Code of Civil Procedure as well. The interpretation of provisions has to be such which prevents the mischief of causing inconvenience to parties.
19. The intendment of the aforesaid provisions inserted in the Copyright Act and the Trade Marks Act is to provide a forum to the Plaintiff where he is residing, carrying on business or personally works for gain. The object is to ensure that the Plaintiff is not deterred from instituting infringement proceedings “because the court in which proceedings are to be instituted is at a considerable distance from the place of their ordinary residence…”
35. The decision in IPRS (SC) was later followed by a Division Bench of this Court in Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey & Ors. reported as 2016 SCC OnLine Del 376, wherein it was held as under:

“14. It is evident from the above observations that the interpretation given to the expression “carries on business” in the context of a defendant under section 20 of the Code has also been employed in the context of a plaintiff under the said sections 134(2) and 62(2). Thus, in addition to the places where suits could be filed under section 20 of the Code, the plaintiff can also institute a suit under the Trade Marks Act, 1999 and the Copyright Act, 1957, as the case may be, by taking advantage of the provisions of section 134(2) or section 62(2), respectively. Both the latter provisions are in pari materia. Under these provisions four situations can be contemplated in the context of the plaintiff being a corporation (which includes a company). First of all, is the case where the plaintiff has a sole office. In such a case, even if the cause of action has arisen at a different place, the plaintiff can institute a suit at the place of the sole office. Next is the case where the plaintiff has a principal office at one place and a subordinate or branch office at another place and the cause of action has arisen at the place of the principal office. In such a case, the plaintiff may sue at the place of the principal office but cannot sue at the place of the subordinate office. The third case is where the plaintiff has a principal office at one place and the cause of action has arisen at the place where its subordinate office is located. In this eventuality, the plaintiff would be deemed to carry on business at the place of his subordinate office and not at the place of the principal office. Thus, the plaintiff could sue at the place of the subordinate office and cannot sue (under the scheme of the provisions of section 134(2) and 62(2)) at the place of the principal office. The fourth case is where the cause of action neither arises at the place of the principal office nor at the place of the subordinate office but at some other place. In this case, the plaintiff would be deemed to carry on business at the place of its principal office and not at the place of the subordinate office. And, consequently, it could institute a suit at the place of its principal office but not at the place of its subordinate office. All these four cases are set out in the table below for greater clarity:
36. If under Section 20 CPC, jurisdiction of the Court is attracted by virtue of location of the defendant‟s place of business or from where the defendant is carrying on its business or working for gain, under Section 134 of the Trade Marks Act, it is the plaintiff‟s office location or from where he is carrying on business, is a material factor. However, in IPRS (SC) (Supra), the occurrence of cause of action has been read into Section 134 of the Trade Marks Act, as a determining factor, even though not spelt out in the language, on the lines of Section 20 CPC. Therefore, if some part of cause of action has arisen at a place where the plaintiff has its branch/subordinate office, Courts at that place will have jurisdiction to entertain a suit against infringement and passing off. In other words, the occurrence of cause of action or any part thereof, at a place, is held to be a determining factor, both under Section 20 CPC, and Section 134 of the Trade Marks Act, to attract jurisdiction of the court at such place. ”

Citation: V Guard Industries Ltd vs Sukan Raj Jain & Anr., Decided by Delhi High Court on 5 July, 2021, available at: IndianKanoon link to V Guard Industries Ltd vs Sukan Raj Jain & Anr, visited on 8th July, 2021.

Frankfinn Aviation vs Fly High Institute & Ors.

 

In this case the trademark involved was “Fly High”, the Delhi High Court granted an Ex-parte injunction in favour of the plaintiff, and restrained the defendant from using the mark on its websites, social media platforms or otherwise. The Court in a short observation pointed out that there is a prima facie case because the plaintiff was using the trademark from 2007 while the defendant was using only from 2018. It pointed out that irreparable harm would be caused if interim relief was not granted, and therefore proceeded with its order.

Citation: Frankfinn Aviation … vs Fly High Institute & Ors, Decided by Delhi High Court on 5 July, 2021, available at:
Frankfinn Aviation vs Fly High Institute and Ors., visited on 9th July, 2021.

 

Read Latest Trademark Cases in 2021 – Part 1 here

Read Latest Trademark Cases in 2021 – Part 2 here

Read Latest Trademark Cases in 2021 – Part 3 here


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