Year

IP Cases — 1999

27 decisions across all jurisdictions

By jurisdiction: India 27 European UPC 0 US PTAB 0
By type: patent 12 trademark 10 design 4 copyright 1

Page 1 of 1 · 27 total

trademark defendant favorable · Feb 16, 1999

Mahesh Jayalal Dadhia & Another v.M/S. Thio Pharma & Others

Bombay High Court

The plaintiffs, members of the Dadhia family, sought an injunction restraining the defendants from manufacturing or trading pharmaceutical products bearing specific trademarks (BROSMIN, ACTIZYME, etc.). The dispute centered on ownership rights following a family arrangement and subsequent agreements regarding the joint business. The court found no merit in the Notice of Motion seeking injunction.

trademark plaintiff favorable · Mar 5, 1999

Wockherdt Ltd. v.Collector Of Central Excise

Customs, Excise and Gold Tribunal - Delhi

Wockherdt Ltd. appealed against an order classifying their product, Mannitol Injection B.P. 20% W/V, as a patent or proprietary medicine based on the design of its label. The company argued that simple labeling features like bars and color schemes do not automatically confer proprietary status unless they are registered trademarks or establish exclusive rights. The Tribunal sided with the appellant.

patent defendant favorable · May 26, 1999

Standipack Private Limited v.M/S. Oswal Trading Co. Ltd.

Delhi High Court · Suit No. 2391/1998 (and others)

The plaintiff sought a temporary injunction against the defendants for manufacturing and selling pouches that allegedly infringed upon the plaintiff's patented design. The defendants contended that the patent was illegally granted, subject to ongoing revocation proceedings, and that the plaintiff had suppressed material facts. The court ultimately found that the plaintiff failed to establish a prima facie case for the injunction.

patent defendant favorable · Mar 23, 1999

M/S. Arte Indiana v.M/S. P. Mittulaul Lalah & Sons

Bombay High Court · 1999(4)BOMCR233

The plaintiffs sought leave from the Bombay High Court to join causes of action related to copyright and trademark infringement, arguing that Section 62(2) of the Copyright Act allowed them to sue where they resided. The defendants argued that since the right to sue was conferred by a special statute (the Copyright Act), it did not fall under the Ordinary Original Jurisdiction of the Court. The court ultimately rejected the application for leave.

patent defendant favorable · Mar 23, 1999

Arte Indiana v.P. Mittulaul Lalah And Sons

Bombay High Court · null

The plaintiffs sought leave from the Bombay High Court to join causes of action related to copyright infringement and trademark violation, arguing that Section 62(2) of the Copyright Act allowed them to sue where they resided or conducted business. The defendants contended that since the right to sue was conferred by a special statute (the Copyright Act), it did not fall under the Ordinary Original Jurisdiction of the court.

patent mixed · May 25, 1999

P.L. Lamba & Ors. v.Avtar Kishan Ghai & Ors.

Delhi High Court · IA No. 3227/96 (in Suit No. 633/94)

The Delhi High Court allowed an application seeking the substitution of trademark proprietors in a passing off and infringement suit concerning the mark 'KWALITY'. The court clarified that while pending rectification proceedings could be raised by defendants, they would not automatically bar the substitution itself. Furthermore, the court permitted the impleadment of the licensed user, M/s. Brooke Bond Lipton India Ltd., under Order I Rule X CPC, recognizing their accruing rights during the suit's pendency. This decision allows the litigation to proceed with updated parties while preserving the defendants' right to raise objections regarding trademark trafficking.

patent defendant favorable · Apr 29, 1999

Deputy Commissioner Of Income-Tax v.Chander Mohan

Income Tax Appellate Tribunal - Chandigarh · null

The dispute concerned whether royalties received by Chander Mohan for his patented invention (a hydraulic system for tractors) constituted taxable income. The assessee claimed the receipts were capital in nature because he had irrevocably assigned the patent rights to his employer, CMERI. The Tribunal ultimately ruled that since the assignment was irrevocable and the organization bore the R&D costs, the receipts were not revenue income.

design interim order · Jul 20, 1999

Hello Mineral Water Pvt. Ltd. v.Thermoking California Pure

Delhi High Court

The petitioner claimed that the respondent was infringing their registered design for water coolers. The defendant argued that the design lacked novelty as it was prevalent globally and that damages would be a sufficient remedy, thus opposing the injunction. The court allowed the use of the cylindrical shape but imposed strict conditions on the defendant to prevent consumer confusion.

trademark plaintiff favorable · Sep 17, 1999

Frito-Lay India & Another v.Amit Goswamy & Another

Delhi High Court · null

The plaintiffs, Frito-Lay India (Pepsico subsidiary), launched a successful promotional campaign in India using collectible round discs (TAZO) with their Lays & Cheetos chips. The defendants started distributing similar discs (AMAZZO) with their Uncle Chipps product, leading to allegations of copyright infringement and passing off. The court examined the similarity between the packaging and the discs.

trademark dismissed · Aug 11, 1999

Eby J. Jose v.Union Of India (Uoi) And Ors.

Kerala High Court · null

The petitioner raised concerns about the lack of public awareness regarding the proper use and misuse of the Indian National Flag. The court discussed various provisions of the Emblems and Names (Prevention of Improper Use) Act, 1950, and the Flag Code.

trademark plaintiff favorable · Apr 6, 1999

M/s.Star Plastics v.Sajeev Antony

Madras High Court · (T) OP (TM) No.458 of 2023

The Madras High Court allowed the petition filed by M/s. Star Plastics seeking the cancellation and rectification of a conflicting trademark registration held by Sajeev Antony's firm. The court found that despite 'STAR' being a common term, the Petitioner had established extensive reputation and prior use of the mark in Class 11 goods long before the Respondent commenced business. Given the high likelihood of consumer confusion when viewing the marks side-by-side, the Court ruled that the Respondent's adoption was neither honest nor concurrent, leading to the cancellation of the impugned registration.

trademark defendant favorable · Sep 9, 1999

Cadila Healthcare Ltd. v.Union Of India (Uoi) And Ors.

Gujarat High Court · null

Cadila Healthcare Ltd. challenged an order that rejected its plea to treat opposition proceedings against its 'CONAZOLE' trademark application as abandoned. The respondent (Uoi) argued that the opposing party had filed evidence, and Cadila failed to file its counter-evidence within the stipulated time. The court ultimately upheld the Registrar's decision to grant an extension of time, finding no infirmity in the order.

trademark plaintiff favorable · Apr 19, 1999

Reckitt & Colman Of India Ltd. v.Jyothi Laboratories Ltd.

Calcutta High Court · null

Reckitt & Colman (appellant) challenged advertisements by Jyothi Laboratories (respondent) that allegedly disparaged its whitening agent, 'Robin Blue', in favor of the respondent's product, 'Ujala'. The appeal concerned a third advertisement, leading to a dispute over whether the court should interfere with interim orders.

patent defendant favorable · Jun 28, 1999

Danieli A C Officine Maccaniche Spa v.Controller Of Patents & Designs

Calcutta High Court · null

The petitioner filed a patent application claiming priority based on an earlier basic application made in Italy. The Controller refused to process the application because, at the time of the basic application (1994), Italy had not been declared a convention country under Section 133 of the Patents Act, 1970. The High Court upheld the Controller's decision.

design remanded · Dec 10, 1999

Metro Plastic Industries (Regd) v.M/S. Galaxy Footwear New Delhi

Delhi High Court · null

The Full Bench addressed the legal question of whether a registered design owner can obtain an injunction for infringement when a concurrent application challenging the validity of that registration under Section 51-A is pending. The court reviewed various precedents, noting conflicting views on the matter.

design defendant favorable · Nov 26, 1999

Smithkline Beecham Plc. v.Hindustan Lever Limited

Delhi High Court

The plaintiffs sought a declaration of exclusive ownership and permanent/temporary injunction against the defendants for infringing their distinctive tooth brush designs ('ACQUA FLEX' and 'ACQUAFRESH FLEX N' DIRECT) and for passing off. The court ultimately dismissed the application for temporary injunction, finding that the plaintiffs failed to establish trans-border goodwill or reputation.

trademark defendant favorable · Jul 28, 1999

Haji Latif Gani Kachhi v.Sangishetty Ramulu

Madras High Court · null

The appeal was filed by the appellant (registered proprietor of marks related to Goddess Lakshmi) challenging the Assistant Registrar's decision allowing the registration of a new trade mark ('Laxmi Ganesh Beedi') for beedies. The appellant argued that the new mark was deceptively similar and infringed upon their existing rights. However, the court found that the composite nature and different postures (standing vs sitting) made the marks easily distinguishable.

patent plaintiff favorable · Jun 14, 1999

M/S. Arte Indiana v.M/S. P. Mittulaul Lalah And Sons

Bombay High Court · AIR1999BOM369

This appeal before the Bombay High Court addressed a dispute involving allegations of copyright violation, trademark infringement, and passing off. The core legal issue was whether the court could grant leave to combine these diverse causes of action into a single suit, despite some actions occurring outside the court's immediate territorial jurisdiction. The court ultimately ruled in favor of the appellant, emphasizing that Clause 14 is intended to prevent multiplicity of litigation.

copyright defendant favorable · Feb 12, 1999

Banwarilal H. Khaitan v.P.L.A. Exports Pvt. Ltd.

Bombay High Court

The plaintiff filed a suit seeking a declaration that he was the exclusive copyright holder of the film 'SARPHIRA' and an injunction against the defendants for infringing this copyright through telecasting. The dispute centered on contractual agreements regarding rights assignment, non-payment of consideration, and subsequent unauthorized exploitation by satellite channels.

trademark plaintiff favorable · Apr 6, 1999

M/s.Star Plastics v.Sajeev Antony

Madras High Court · (T) OP (TM) No.458 of 2023

The Madras High Court allowed the petition filed by M/s. Star Plastics seeking the cancellation and rectification of a conflicting trademark registration held by Sajeev Antony's firm. The court found that despite 'STAR' being a common term, the Petitioner had established extensive reputation and prior use of the mark in Class 11 goods long before the Respondent commenced business. Given the high likelihood of consumer confusion when viewing the marks side-by-side, the Court ruled that the Respondent's adoption was neither honest nor concurrent, leading to the cancellation of the impugned registration.

patent defendant favorable · May 6, 1999

Baldev Singh v.M/S Godran Rubber Plastic Industries

Delhi High Court

This case involved a suit for infringement under the Designs Act, 1911, where the plaintiff sought perpetual injunctions against the defendant for pirating their registered footwear design. The core legal dispute revolved around whether the plaintiff had a valid right to protection when evidence suggested that a prior entity (Liberty Footwear Company) possessed an identical or similar design registration dating back earlier than the plaintiff's. The court ultimately ruled that one 'pirator cannot injunct another pirator,' leading to the vacation of the interim injunction granted to the plaintiff.

patent plaintiff favorable · Jan 30, 1999

Wockhardt Limited v.Aristo Pharmaceuticals Limited

Madras High Court · (1999)2MLJ467

The Madras High Court ruled in favor of Wockhardt Limited, upholding the original ex parte injunction against Aristo Pharmaceuticals. The court found that despite the respondent's arguments regarding industry practice and generic terms, there was a likelihood of deception or confusion among unwary consumers due to the phonetic and visual similarity between the marks 'SPASMO-PROXYVON' and 'SPASMO-FLEXON'. This decision reinforces the principle that overall similarity is the key factor when assessing trademark infringement in the pharmaceutical sector.

patent dismissed · Jun 22, 1999

Jagdish Gandhi And Another v.Satish B. Vaidya And Others

Bombay High Court

The plaintiffs sought a declaration that they were the sole inventors and owners of an Ayurvedic formula (PV-150896) and claimed that the defendants had defrauded them. The court, while acknowledging the importance of the medicine for AIDS patients, dismissed the Notice of Motion at the interim stage due to the specialized nature of the dispute requiring extensive expert evidence.

patent plaintiff favorable · Feb 19, 1999

Yahoo!, Inc. v.Akash Arora & Anr.

Delhi High Court · 1999IIAD(DELHI)229

The Delhi High Court granted an ad interim injunction in favor of Yahoo!, Inc., preventing the defendants from operating under the domain name 'Yahooindia.Com'. The court recognized that despite 'Yahoo!' being a dictionary word, its extensive use and reputation had acquired distinctiveness and goodwill in the internet services sector. This ruling affirmed that passing off actions can be maintained even if the mark is not registered, provided it has achieved sufficient repute.

patent defendant favorable · May 1, 1999

Brawn Laboratories Ltd. v.Rhone Poulenc Rorer S.A.

Delhi High Court · null

The petitioner sought arbitration and an interim injunction under Section 9 of the Arbitration and Conciliation Act, 1996, to restrain the respondents from marketing products like CLEXANE. The dispute centered on the termination of an exclusive license agreement and alleged breach of negative covenants.

design interim order · Apr 26, 1999

Polar Industries Ltd. v.Usha International Ltd.

Calcutta High Court

Polar Industries Ltd. sought an injunction against Usha International Ltd. for infringing its registered design (No. 173791) on portable table fans and passing off. The court examined both designs and found them dissimilar in shape, configuration, and ornamentation.

trademark plaintiff favorable · Mar 1, 1999

Alfred Dunhill Limited v.Kartar Singh Makkar & Ors.

Delhi High Court · 1999IIAD(DELHI)789

The Delhi High Court granted an interim injunction to Alfred Dunhill Limited against Kartar Singh Makkar & Ors. in a passing off suit concerning the 'DUNHILL' trademark. The court ruled that global reputation and awareness, disseminated through media like advertisements, are sufficient to establish goodwill even if products are restricted from local import. This decision protects consumers from potential deception and upholds the rights of established international brands.

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