In the matter of Christian Louboutin SAS v. Abubaker and Ors. [CS (Comm.) No. 890/2018], the Plaintiff sought a permanent injunction against the Defendants’ sale of red-soled shoes (notwithstanding the Defendant’s use also of its own trademark VERONICA for the shoes). The Plaintiff relied on its registered trademark for the colour red for the soles of women’s shoes. The suit as filed was taken up on the question of admission.

The Court examined (vide its May 25, 2018 decision) whether the suit plaint set out a presentable cause of action that could be tried: “…taking the contents of the plaint as correct, whether there exists a legal entitlement in the plaintiff to claim the reliefs as prayed in the suit.”

The Court observed that it is clear from the definitions of ‘mark’ and ‘trademark’ in the Trade Marks Act, 1999 (each of which uses the expression ‘a combination of colours’), that a single colour does not qualify as either.

The Plaintiff argued that a single colour is capable of acquiring distinctiveness through use, and once distinctiveness is acquired the single colour can become a valid trademark. The Court, however, rejected this argument, holding that “…this argument ignores the first basic sine qua non of a thing becoming a trademark i.e. of whatever is sought to be claimed as a trademark must first also be a mark.”

The Court accordingly dismissed the suit at the threshold itself, holding that even if the facts as set out in the plaint were to be taken as entirely true, there is simply no cause of action presented thereby that can possibly be taken up for trial.

The Delhi High Court has held that the .In Domain Name Dispute Resolution Policy (INDRP) does not permit an Arbitrator to confiscate the domain name.

Lens.com, Inc. had filed a complaint under the INDRP against the respondent, seeking transfer of the domain name <lens.in> registered in favour of the respondent, to itself. The Arbitrator held that since the Complainant had failed to prove its rights in the disputed domain name and the Respondent claimed to be unrelated to the domain named, the disputed domain name be cancelled, and be confiscated by the Registry. Aggrieved with this Award, the Petitioner approached the Delhi High Court [Lens.com, Inc. v. Ju J Friend International [OMP (Comm.) 223/2016], alleging that (1) the Arbitrator does not have the power to confiscate the domain name; and (2) upon cancelling the domain name, its transfer to the Petitioner was mandatory.

The Delhi High Court observed that the INDRP does not make transfer of a domain name mandatory upon its cancellation; and that the complainant would independently have to establish its right to such a domain name for it to be transferred. The Delhi High Court set aside the Arbitrator’s direction that the domain name be confiscated, observing that such a direction could not be sustained.

In the matter of Monsanto Technology LLC and Ors. v Nuziveedu Seeds Ltd. and Ors. [CS (COMM) 132/2016], Defendants (ex-licensees of Monsanto), in response to Monsanto’s claim of infringement of its patent, filed a counter-claim of invalidity of patent.

A Division Bench of the Delhi High Court invalidated Monsanto’s patent [claiming nucleotide sequence (of Cry2Ab gene) and method of transforming plant cells therewith] under section 3(j) of Patents Act, proceeding thus to reject the claim of infringement of the patent.

The court found that since nucleotide sequence has no existence of its own, it is not a “microorganism”, and thus unpatentable under section 3(j).

The Court held “Monsanto cannot assert patent rights over the gene that has thus been integrated into…transgenic plants…[T]he reason why this court concludes that Section 3 (j) prohibits grant of patents to Bt. trait induced varieties is that they are parts of “seed””.

With respect to the method of transformation, the Court held that “the process of creation of such seeds/plants are also excluded from patentability as they squarely fall within the meaning of an “essentially biological process” that is exempted from patentability within the meaning of section 3(j)”. The court observed: “the moment the DNA containing the nucleotide sequence (subject patent) is hybridized to produce the transgenic seeds/plants; the seeds/plants fall within the purview of the PV Act”.

The Court granted Monsanto a 3 month grace period to seek registration under The Plant Varieties Act.

In its order dated January 16, 2018 in the matter of Telemart Shopping Network Pvt Ltd v. Tvc Life Sciences Ltd & Anr., the Delhi High Court granted an interim injunction against the Defendant’s use of the mark SANDHEE SUDHAM for its joint-pain relief oil.

The Plaintiff, proprietor and user of the mark SANDHI SUDHA, an Ayurvedic joint pain relief oil, had filed this suit for passing off, seeking an injunction against the Defendant’s use of the mark ‘SANDHEE SUDDHAM’ in respect of a similar product. While the Defendant conceded to the Plaintiff’s prior use, it pleaded that SANDHI SUDHA was publici juris, the word ‘SANDHI’ being Sanskrit for ‘joint’ and being used by multiple persons in the relevant trade.

The Court observed that even if ‘SANDHI’ was being used commonly in the trade, this by itself is insufficient to not render the composite mark SANDHI SUDHA generic. It further observed that “Even otherwise, the defendant himself has applied for registration of the trade mark SANDHEE SUDDHAM and hence, cannot claim that SANDHI is a generic mark.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

The Supreme Court of India has affirmed the order of the Division Bench of the Delhi High Court, permitting use of the mark PRIUS by Prius Auto Industries Ltd in its December 17, 2017 judgement.

In 2009, Plaintiff (‘Toyota’ Jidosha Kabushiki Kaisha) sought an injunction against Defendant’s (Prius Auto Industries Ltd. – ‘PAI’) use of the marks TOYOTA, TOYOTA INNOVA, TOYOTA Device and PRIUS. The Delhi High Court granted Toyota an injunction with respect to TOYOTA, TOYOTA INNOVA, TOYOTA Device, but not PRIUS, and Toyota consequently appealed to the Supreme Court.

PAI had been using the mark PRIUS since April 2001 for its automobile parts and accessories, and owned a trademark registration for   as of 2002.

Toyota had launched its hybrid car under the name PRIUS in multiple countries from 1997 onwards, and in India it launched in 2009. Toyota did not own any trademark registration for PRIUS in India, nor had it applied for registration of PRIUS in 2009 at the time the suit was instituted.

The Supreme Court dismissed Toyota’s appeal, observing that “Positive evidence of spill over of reputation and goodwill of the Plaintiff’s mark ‘Prius’ to the Indian market, prior to April, 2001, is absent…Indeed, the trade mark ‘Prius’ had undoubtedly acquired a great deal of goodwill in several other jurisdictions in the world…but…there must be adequate evidence to show that the plaintiff had acquired a substantial goodwill for its car under the brand name ‘Prius’ in the Indian market also…” 

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