By its order dated March 15, 2018 in the matter of Ashoka Distillers & Chemicals Pvt. Ltd. v. ADS Spirits Pvt. Ltd. [CS (Comm.) 566/2016], the Delhi High Court directed the plaint as returned (with refund of court fees) for want of territorial jurisdiction, with liberty to (re)file it in another Court having territorial jurisdiction.

The suit was for permanent injunction, infringement of trademark and copyright, and passing off.

The Court found the plaint as failing to disclose the impugned product MATWALA as being sold in Delhi for the cause of action to arise in Delhi. Instead, from the suit evidence accompanying the plaint, the Court noted the impugned product labelled as being for sale only outside Delhi, explicitly only in Haryana. Even the Plaintiff’s product was noted by the Court as being similarly labelled.

While the suit averred the Plaintiff as carrying on business in Delhi, the Court noted that the suit disclosed the Plaintiff having its registered address in Haryana.

The Court also declined to entertain Plaintiff’s Counsel’s quia timet argument of apprehended use in Delhi for invoking territorial jurisdiction in Delhi for lack of such a written pleading in the plaint itself.

In the matter of E.I. Du Pont De Nemours and Company and Ors. v. P. Srinivasa Rao & Ors. [CS (Comm.) 401/2016], the Plaintiffs relied on their registrations of the marks CORAGEN and DUPONT in respect of insecticides to seek a permanent injunction against the Defendants’ insecticides. The Plaintiffs alleged that the Defendants have been selling insecticides under the identical marks CORAGEN and DUPONT and with a very similar style of packaging. The Defendants did not file any Written Statement to contest the suit despite having been served.

The Court, by its decision dated February 21, 2018 took the view that “…the defendant(s)…have no justification for the adoption and use of virtually identical trade mark/dress and label as that of the plaintiff.”

The Court’s decision was a summary decision (without referring the matter to trial) under Order XXIII-A of the CPC, 1908. The Defendants failed to contest the adoption of the summary procedure by the Court despite being served. The Court also granted costs to the Plaintiff.

In its order dated February 8, 2018 in the matter of Crocs Inc. USA v Liberty Shoes Ltd. and Ors., the Delhi High Court rejected Crocs’ interim injunction applications against the Defendants’ manufacture and sale of footwear that allegedly infringed Crocs’ footwear designs.

Crocs had filed infringement suits relying on their registered designs for their footwear. The Defendants contested, asserting invalidity of Crocs’ design registration on account of prior publication as well as lack of originality.

The Court took the prima facie view that the design had already been disclosed on third party websites, as well as Crocs’ own website, which rendered Crocs’ subsequent design registration liable to be cancelled. The Court further took the prima facie view that Crocs’ registered footwear design was a trade variation that was neither new nor original enough for it to be capable of protection under the Designs Act. In light of the above findings, the Court dismissed the interim injunction applications filed by the Plaintiff.

 

 

In a design piracy/infringement suit, the Delhi High Court vacated its interim injunction order, with a finding that Plaintiff’s registered design is neither new nor original.

In Pentel Kabushiki Kaisha & Anr. v M/s Arora Stationers & Ors., Plaintiff relied upon registered design (no. 263172) in respect of a ball-point pen to seek injunction against Defendants. Plaintiff listed out features of shape and configuration under its registered design for ball-point pen which it sells under the brand ENERGEL. Plaintiff alleged that the design of Defendant’s pens (under the brand MONTEX) is a copy of Plaintiff’s registered design. Defendant contested by stating that Plaintiff’s registered design is neither new or original, and is itself copied from prior existing/known designs (of Defendants as well as other third parties). Defendant produced examples of pre-existing/known designs against each listed feature of Plaintiff’s registered design. The Court, while vacating the injunction, held that Plaintiff’s registered design does not qualify to be new or original, for which, the court stated, the design must be significantly distinguishable from existing designs and combination of designs, and should not be a mere trade variant.

In a patent infringement suit filed in apprehension of launch of an infringing product (a quiat time action), the Delhi High court relied upon certificate of validity of suit patent to decide permanent injunction.

In the matter of Merck Sharp & Dohme Corporation & Anr. v Aprica Pharmaceuticals Pvt. Ltd. [CS(OS) 1236/2013], the Plaintiff relied upon its patent for ‘Sitagliptin’ drug as well as certificate of validity in respect thereof (granted by Delhi High Court in a different suit) to seek permanent injunction against the Defendant’s apprehended launch of ‘Ecoglipt’ (a generic version of ‘Sitagliptin’). Reliance was placed on the text of two SMSes (which Defendant had released) for apprehending launch of infringing product by the Defendant. The Court, vide its decision dated November 14, 2017, granted permanent injunction in the suit. The decision was a summary decision (viz. without referring the matter to trial), as pressed upon by the Plaintiff.