Judge Profile

Bench:Sanjay Kishan Kaul

39 IP cases indexed. Covers patent, trademark, copyright, design matters.

Cases Presided Over

39 cases indexed | Page 1 of 2

patent defendant favorable · Sep 1, 2016

R. Muralidharan v.The Secretary, Ministry of Law and Justice; The Secretary, Ministry of Commerce and Industry; The Secretary, Ministry of External Affairs; The Controller General of Patent and Designs and Trademark

Madras High Court · W.P.No.13840 of 2015

This writ petition challenged a public notice issued by the Controller General of Patents regarding PCT National Phase Applications in India. The petitioner argued that this notice restricted applicants from amending their specifications before entering the national phase, thereby denying rights granted under Sections 57 and 59 of the Patents Act. The core dispute centered on whether procedural restrictions related to filing fees should be subject to judicial review. The High Court ultimately dismissed the petition, holding that the matter was a procedural issue best left to the experts and the Central Government's power regarding fee determination.

patent defendant favorable · Aug 18, 2016

Controller Of Patents & Designs v.Deputy Registrar, Intellectual Property Appellate Board

Madras High Court · W.P. No.21392 of 2013 and M.P.No.1 of 2013

The Controller of Patents & Designs challenged an order by the Intellectual Property Appellate Board (IPAB) which had allowed the appeal of respondents against the rejection of a patent application. The dispute centered on whether the Controller failed to exercise proper discretion, specifically concerning the insufficient fee paid for all claims in the application.

patent plaintiff favorable · Aug 16, 2016

Mankind Pharma Limited v.Sun Pharma Laboratories Limited

Madras High Court · O.S.A.Nos.228 and 229 of 2015

Mankind Pharma Limited challenged an order regarding territorial jurisdiction in its trademark infringement suit against Sun Pharma Laboratories Limited. The core dispute centered on whether the plaintiff could file the suit in Chennai, given that the defendant claimed no sales or office presence there. The Madras High Court ultimately dismissed the appeals, finding that the appellant's actions and disclosures indicated a sufficient connection to the local jurisdiction.

trademark settled · Mar 30, 2016

Sun Pharma Laboratories Limited v.Psycoremedies Ltd.

Madras High Court · C.S.No.609 of 2014

The civil suit was filed regarding the alleged infringement of a trademark. The parties subsequently entered into a Memo of Compromise, resolving all disputes between them.

patent mixed · Mar 18, 2016

S.K.Janimiya (M/s.Crescent Therapeutics Ltd.) v.Mr.Narender Pal; Deputy Registrar of Trade Marks; Intellectual Property Appellate Board

Madras High Court · W.P.No.2760 of 2010

The Madras High Court allowed the writ petition filed by S.K.Janimiya challenging an adverse order from the Intellectual Property Appellate Board (IPAB) regarding the trademark OLAPIN. While noting the petitioner's lackadaisical conduct and delay in presenting evidence, the court ultimately set aside the IPAB's finding that no documents were filed. The matter was remitted back to the IPAB for a fresh examination, allowing them to consider the records and take further evidence.

patent settled · Jan 27, 2016

Wipro Enterprises Limited v.Heinz India Pvt., Ltd.

Madras High Court · O.S.A.NoS.111 to 113 of 2015

Wipro Enterprises Limited filed appeals against an order concerning the alleged infringement of its trademark rights. The dispute centered around Heinz India Pvt. Ltd.'s use of labels incorporating 'GLUCON-D VOLT' for their tangy orange flavoured glucose-based energy bites. The parties ultimately reached a compromise, leading to the disposal of the Original Side Appeals.

trademark plaintiff favorable · Nov 5, 2015

Rhizome Distilleries Pvt.Ltd. v.Union Of India

Madras High Court · Writ Petition No.8681 of 2011

The Madras High Court ruled in favor of Rhizome Distilleries, quashing an Intellectual Property Appellate Board (IPAB) order that sought to remove its 'IMPERIAL GOLD' trademark. The court held that the IPAB erred by applying grounds for refusal—which should have been raised at the time of initial registration—to a rectification application filed much later. Given that the petitioner had used the mark and faced prior objections which were withdrawn, the High Court found the subsequent attempt to cancel the mark was legally unsustainable.

trademark plaintiff favorable · Nov 2, 2015

M/s.Mahavir Home Appliances v.The Intellectual Property Appellate Board; The Registrar of Trade Marks; Rallifan Limited

Madras High Court · W.P.No.12827 of 2012

The Madras High Court allowed a writ petition filed by M/s.Mahavir Home Appliances, setting aside an adverse order passed by the Intellectual Property Appellate Board (IPAB). The core issue revolved around the validity of associated trademarks related to the 'RALLY' mark. A new affidavit submitted by the Registrar of Trade Marks contradicted the IPAB's finding that the marks had lapsed, thereby supporting the petitioner's claim. Consequently, the High Court remitted the matter back to the IPAB for fresh consideration based on the corrected factual position.

patent defendant favorable · Jul 28, 2015

Novartis AG v.Union of India

Madras High Court · W.P. No. 15736 of 2015

Novartis AG challenged an order passed by the Intellectual Property Appellate Board (IPAB) which allowed a Miscellaneous Petition filed by Wockhardt Limited. Novartis argued that the IPAB exceeded its jurisdiction and violated procedural rules by permitting additional grounds and documents in the patent revocation case. The Madras High Court upheld the IPAB's decision, finding it within its powers to regulate procedure based on principles of natural justice.

patent settled · Jun 5, 2015

Bharat Balar v.Rajendra Distributors

Madras High Court · O.S.A.Nos.96 and 97 of 2015

The appeal concerned a suit filed by Bharat Balar alleging infringement of their registered design and passing off against Rajendra Distributors. The court facilitated an agreement between both parties to expedite the trial process and set aside certain adverse observations made in a previous common order.

trademark settled · Apr 1, 2015

M/s.Varsha Productions v.Shivaji Rao Gaikwad

Madras High Court · O.S.A.No.71 of 2015

The appeal arose from an interlocutory order concerning a suit filed by the respondent, Shivaji Rao Gaikwad (Rajinikanth), seeking to restrain M/s.Varsha Productions from using his name, image, or style in their film project 'Main Hoon Rajinikanth'. The parties subsequently reached a settlement.

patent plaintiff favorable · Feb 2, 2015

Dr. Aloys Wobben v.Intellectual Property Appellate Board

Madras High Court · W.P. Nos. 17539 to 17541 of 2011; W.P. Nos. 31133 to 31135 of 2013 and WP. No. 31137 of 2013

Dr. Aloys Wobben challenged an order passed by the IPAB granting a plea of revocation made by private respondents. The dispute involved multiple patent infringement suits and corresponding revocation petitions/counter claims. The High Court addressed whether the Supreme Court's ruling on electing one remedy was affected by ongoing proceedings in the Delhi High Court.

copyright dismissed · Jan 22, 2015

M/s. Innovativ Dezines v.M/s. Wooltop Design Private Limited

Madras High Court · O.S.A. No.113 of 2014

M/s. Innovativ Dezines appealed a previous order and decree regarding a suit against M/s. Wooltop Design Private Limited. The appellant sought to set aside the earlier judgment. Ultimately, the senior counsel for the appellant agreed to withdraw the appeal with liberty to raise all pleas on merits in the written statement.

patent plaintiff favorable · Nov 6, 2014

Fdc Ltd. v.Union Of India

Madras High Court · Writ Petition No. 17241 of 2014

FDC Ltd. challenged an order passed by the Intellectual Property Appellate Board (IPAB) which had set aside the Assistant Controller's initial ruling against the petitioner regarding the revocation of Indian Patent No.197822. The core dispute centered on whether IPAB should have decided the merits or remanded the matter, and specifically, whether directing a fresh Opposition Board was legally sound.

patent settled · Oct 10, 2014

M/S.Grp Dairy Food Pvt. Ltd. v.S.Sudhakar

Madras High Court · W.P.Nos.12963 and 12964 of 2014

The Madras High Court resolved a dispute between M/S.Grp Dairy Food Pvt. Ltd. and S.Sudhakar concerning the trademarks 'Udhayam' and 'GRB Udhayam'. The parties reached an amicable settlement through mediation, resulting in a Memorandum of Compromise. Consequently, the court disposed of the writ petitions by allowing the trademark registrations to continue, provided certain conditions outlined in the compromise are incorporated into the registry.

patent mixed · May 15, 2013

Mohan Lal Proprietor Of Mourya Industries v.Sona Paint & Hardwares

Delhi High Court · CS(OS) 384/2008

This judgment addresses complex legal questions arising from two suits concerning intellectual property rights. Specifically, it examines whether a holder of a registered design can sue for infringement against another party who also holds a registered design. The court also deliberated on the interplay between statutory remedies under the Designs Act and common law actions like passing off, particularly when the design is used as a trademark.

patent mixed · May 15, 2013

Micolube India Limited v.Rakesh Kumar Trading As Saurabh Industries & Ors.

Delhi High Court · CS(OS) 1446/2011 (Reference)

This judgment addresses complex questions regarding the interplay between statutory design rights and common law remedies like passing off. The court ruled that a suit for infringement of a registered design is not maintainable against another registered proprietor if the registration covers the same features. Furthermore, while the remedy of passing off cannot be joined with the design infringement suit concerning the shape itself, it remains available in alternative to prevent consumer confusion arising from trade dress or trademarks.

patent defendant favorable · Jan 20, 2012

Dr. Aloys Wobben v.Yogesh Mehra & Ors.

Delhi High Court · FAO(OS) No. 7/2011

Dr. Aloys Wobben appealed a judgment regarding whether the respondents, who were defendants in infringement suits, could pursue their own counter claims for revocation of Dr. Wobben's patents before the IPAB while those infringement suits were ongoing. The court examined the distinction between the current situation and previous legal precedents involving simultaneous remedies.

patent defendant favorable · Nov 1, 2010

Marico Limited v.Agro Tech Foods Limited

Delhi High Court · FAO(OS) No. 352/2010

The Delhi High Court dismissed Marico Limited's appeal against an order that rejected its injunction application regarding trademark infringement and passing off. The court held that the respondent's use of 'LOW ABSORB TECHNOLOGY' did not constitute deceptive similarity or passing off, primarily because the expression is descriptive in nature. This ruling emphasizes that registration alone does not guarantee a prima facie case for infringement if statutory defenses are validly raised.

design remanded · Oct 8, 2010

Reckitt Benckiser (India) Ltd. v.Wyeth Limited

Delhi High Court · FAO(OS) No. 458/2009

The appeal challenged the Single Judge's order which vacated the interim injunction granted to Reckitt Benckiser, allowing Wyeth Limited to proceed despite allegations of infringement of a registered S-shaped spatula design. The core dispute revolved around whether prior registration and publication of the design in foreign countries (UK, USA, Australia) could serve as a valid defense against the infringement claim under Indian law.

patent mixed · Sep 29, 2010

Cadila Healthcare Ltd. v.Diat Foods (India)

Delhi High Court · FAO (OS) No. 385 / 2008

The Delhi High Court addressed a dispute over the use of the descriptive term 'Sugar Free' in packaging. While acknowledging Cadila Healthcare's distinctiveness, the court found that an absolute ban on using 'Sugar Free' would be overly restrictive, especially if used descriptively by the respondent. The judgment ultimately modified the injunction, allowing Diat Foods to use 'SUGAR FREE,' provided it is not given greater prominence or a larger font size than competing marks like 'SUGARLESS Bliss' or 'Splenda Brand.'

patent defendant favorable · Feb 5, 2010

Pramod Kumar Garg v.M/S Punjab Tractor Limited

Delhi High Court · OCJA No.3/2000

The Delhi High Court dismissed the appeal filed by Pramod Kumar Garg against M/S Punjab Tractor Limited regarding the registration of the trade mark 'SWARAJ'. The court found that despite the goods being registered in different classes, the similarity in their commercial use (agricultural sector) and the common consumer base created a grave possibility of confusion. Furthermore, the appellant's claim of honest concurrent user was rejected due to doubts about the evidence provided regarding the timing and nature of its usage.

patent plaintiff favorable · Nov 6, 2008

Mr.Kiran Jogani & Anr. v.George V.Records, Sarl

Delhi High Court · FAO (OS) No.48/2004

The Delhi High Court upheld the grant of an interim injunction in a trademark dispute concerning the mark BUDDHA-BAR. The respondent, George V.Records, Sarl, successfully argued that the mark had acquired trans-border reputation and was being infringed upon by the appellants/defendants who adopted an identical name for music albums. Despite the defendants raising several defenses regarding prior use and lack of evidence, the court found sufficient prima facie material to protect the respondent's goodwill until the final trial.

patent plaintiff favorable · Feb 22, 2008

J. Mitra And Co. Pvt. Ltd. v.Kesar Medicaments And Anr.

Delhi High Court · FAO 292-293/2006 (Implied)

J. Mitra And Co. Pvt. Ltd. filed an application seeking a temporary injunction against Kesar Medicaments and others, alleging that their product, SIGNAL HCV, infringed on the plaintiff's Patent No. 194638. The patent covers a 'fourth generation' diagnostic device for detecting Hepatitis C Virus antibodies in human serum. The court examined the technical specifications of both devices, noting similarities in core components and identical sensitivity/specificity reports. Finding that the plaintiff had made out a prima facie case, the Delhi High Court granted the temporary injunction to protect the plaintiff's patent rights.

patent defendant favorable · Nov 28, 2007

Super Seals India Limited v.Sos Automotive Components Private Limited

Delhi High Court · CS (OS) No. 750/2004

The Delhi High Court dismissed Super Seals India Limited's application for a permanent injunction, finding that the plaintiff had no valid intellectual property rights over its part numbers and 'SS logo.' The court heavily relied on a prior family settlement agreement which divested the plaintiff of most of its business and trademark rights. Since the limited period granted to the plaintiff had expired, the court ruled that the defendant had acquired legitimate rights as an assignee from the original controlling group (Anil Group), thus favoring the defendant.

patent plaintiff favorable · Sep 17, 2007

The Federal Bank Ltd. v.Matt Hiller And Anr.

Delhi High Court · MIPR2007(3)380

The Delhi High Court ruled in favor of The Federal Bank Ltd., granting a permanent injunction against the defendants for infringing its brand identity. The bank successfully argued that the defendants' use of the deceptively similar domain name 'www.federalbank.co.in' was an attempt to capitalize on the bank's long-standing goodwill and reputation. The court affirmed that such actions constitute unfair competition, causing irreparable dilution and damage to the plaintiff's brand.

patent mixed · Jul 10, 2007

Independent News Service Pvt Ltd (India Tv) v.India Broadcast Live Llc

Delhi High Court · CCPO 22/2007

This case involved a dispute where India Tv, a prominent Hindi news channel, alleged that defendants were infringing its well-known mark 'INDIA TV' by using it prominently on their website indiatvlive.com. The plaintiff claimed the domain name constituted unfair competition and dilution of its brand. After initial injunctions, the court modified the orders, allowing the defendant to continue using the domain name provided they displayed a prominent disclaimer clarifying no affiliation with India Tv.

patent defendant favorable · Mar 20, 2007

Bilcare Limited v.Amartara Private Limited

Delhi High Court · MIPR2007(2)42

Bilcare Limited filed a patent infringement suit against Amartara Private Limited regarding a metallized packaging film protected by Indian Patent No. 197823. The plaintiff sought to continue an interim ex parte injunction, but the court found that the balance of convenience favored the defendant. Given that the patent was recently granted and faced pending post-grant opposition proceedings, the court vacated the initial injunction. Instead, it mandated the defendant to maintain sales accounts for the duration of the suit.

patent defendant favorable · Mar 1, 2007

National Research And Development v.Chrome International

Delhi High Court · IA No. 3629/1998 (Under Sections 30 and 33 of the Arbitration Act, 1940)

This case involved an appeal challenging an arbitration award concerning non-payment of royalties by Chrome International to National Research And Development Corporation. The core dispute centered on whether the claim for unpaid royalty was time-barred, given that payments were due twice yearly.

trademark defendant favorable · Feb 8, 2007

M/S Alkem Laboratories Ltd. v.Mega International (P) Ltd.

Delhi High Court · RFA (OS) No.31/2007

The Delhi High Court dismissed M/S Alkem Laboratories Ltd.'s appeal against a judgment that rejected its claim of passing off regarding the trademark 'GEMCAL'. The court found insufficient evidence to establish Alkem as the proprietor or prior user, noting that both parties were concurrent users. Furthermore, the court observed no instances of consumer confusion and noted significant differences in sales figures, concluding that Alkem's claims were unsubstantiated.

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