7 October, 2017
Issuance of certified copies by the Trade Marks Registry
Delhi High Court has recently issued directions to the Registrars of the Indian Trade Marks Registry qua issuance of certified copies of records of the Trade Marks Registry. The directions include appointment of Nodal Officers at each branch of the Registry, to receive and process applications for certified copies, setting up mechanism for disclosure of status of such applications as well as timely issuance of the certified copies within one month of receipt of the duly completed application, inter alia.
Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001
In an appeal filed against an order of Division bench of the Delhi High Court in the matter of Prabhat Agri Biotech Ltd. And Anr. v. Registrar Of Plant Varieties And Farmer’s Rights Act, striking down Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act (“PPVFRA”), the Supreme Court recently granted a stay on the impugned order.
Section 24(5) of the PPVFRA, empowers the Registrar to pass an interim order “to protect the interests of a breeder against any abusive act committed by any third party” during the period between the filing of an application for registration of a variety and the Authority making its decision on such an application.
The appeal is now scheduled for hearing in November 2017.
Kelwyn Door Cares (India) and Anr. v. Janson Enterprises and Anr. [CS(OS) 2377/2015]
The Delhi High Court, in Kelwyn Door Cares (India) & Anr. v Janson Enterprises & Anr. vacated the earlier ex-parte ad interim injunction granted against the defendants, observing that the plaintiffs had not approached the court with clean hands and suppressed material facts.
In the present case, Plaintiff No. 1 and 2, registered proprietors of trademarks CLOSMA and KELWYN respectively, initiated infringement proceedings alleging that defendants were using deceptively similar marks, namely KLAZMA, KLAZMAX and KLAZVYN. Plaintiffs further claimed that not only was defendants’ mark phonetically similar to that of the Plaintiffs’ but the defendants had also copied plaintiffs’ slogan and product code and were therefore liable for trademark infringement as well as passing off.
Defendants pointed out to the court that, plaintiffs had actively concealed the fact that impugned trademark KLAZMA was registered in name of a third person against which plaintiffs had already filed rectification application. Furthermore, defendants while defending their other impugned marks, KLAZMAX ARCHITECTURAL HARDWARE and KLAZVYN, stated that they had been using the mark since five years, without any objection from the plaintiffs.
Delhi High Court, relying on the principle laid down in S.P. Chengalvaraya Naidu v. Jagannath, observed that where there is unexplained delay in approaching the Court, the conduct of the parties is a relevant factor while exercising its discretion of granting ad interim injunction and if a person's case is based on falsehood, he has no right to approach the court. Accordingly, the court held that the plaintiffs were not entitled to equitable relief as they are guilty of concealing material facts and misleading the Court.
Apollo Tyres Ltd. vs. Pioneer Trading Corporation and Ors. [CS(OS) 2802/2015]
Observing that a unique tread pattern on a tyre has trademark significance, the Delhi High Court in Apollo Tyres Ltd. v. Pioneer Trading Corporation and Anr, granted interim injunction against the defendants restraining them from using a tread pattern identical to and/or similar with that of the plaintiff’s unique tread pattern of one of its truck tyres, claimed to be its proprietary.
Rejecting the defendants’ submissions that the tread pattern on tyre were merely functional /utilitarian in nature, provided to give better grip on the road, and stability to the vehicle during movement and therefore, the same would not even be entitled to protection as design under the Design Act, 2000 or against passing off, the Delhi High Court observed that if the same function can be achieved through numerous different forms of tread patterns, then the defense of functionality must fail.
The Court further noted that tread pattern was so prominently advertised and displayed that it served as the “face” of the tyre, aiding in identification of tyres manufactured by a particular manufacturer, essentially serving as a source identifier in the relevant market. In doing so, the court placed reliance on the Madras High Court decision in MRF Limited v. Metro Tyres Limited, [1990 (10) PTC 101 (Mad)] stating that tread patterns have trade mark significance, and similarity of tread pattern may raise a presumption of common origin or close business association between the two manufacturers.
For further information, please contact:
Vineet Aneja, Partner, Clasis Law
vineet.aneja@clasislaw.com
