Year

IP Cases — 2012

77 decisions across all jurisdictions

By jurisdiction: India 77 European UPC 0 US PTAB 0
By type: patent 52 trademark 13 copyright 7 design 5

Page 1 of 3 · 77 total

patent defendant favorable · Mar 15, 2012

M/S Fastrack Communications Pvt. Ltd. v.Manish Singhal

Delhi High Court · CS(OS) 2484/2010

The Delhi High Court dismissed a trademark infringement suit filed by Fastrack Communications against Manish Singhal regarding the use of the mark 'LEMON'. Although the plaintiff argued for an injunction based on prior usage and apprehension of passing off (a qua timet action), the court noted that the defendant had categorically stated he would not launch or use the trademark until his own registration application was decided. Given this stand, the court found no further basis to sustain the suit, despite acknowledging the plaintiff's right to file such an action.

patent defendant favorable · Aug 6, 2012

Tarun Sethi v.Vikas Budhiraja

Delhi High Court · CS(OS) 1841/2008

This case involved a dispute over the registered design of a door spring, which the plaintiffs claimed was infringed by the defendants. The plaintiffs asserted that their capsule-shaped door spring, protected under Design Registration No. 202794, was being copied. However, the court examined the core issue of novelty and originality. Ultimately, the court found that the design lacked sufficient distinction from existing market products, leading to the dismissal of the suit.

patent plaintiff favorable · Sep 25, 2012

The Indian Performing Right Society v.Ad Venture Communication India Private Limited

Delhi High Court · CS(OS) 2132/2010

The Indian Performing Right Society (IPRS) filed a suit against Ad Venture Communication India Private Limited for infringing its copyrights. The plaintiff, representing authors and composers, alleged that the defendant organized a live concert where their musical works were communicated to the public without obtaining the requisite license. The court found that the commercial exploitation of copyrighted material without permission constitutes infringement.

trademark plaintiff favorable · Dec 3, 2012

Bourjois Limited v.Mr. Naunihal Singh & Ors.

Delhi High Court · CS(OS) 258/2012

Bourjois Limited successfully sued defendants for passing off their spa and salon services under the name 'BOURJOIS'. The Delhi High Court found that the defendants were leveraging the plaintiff's established goodwill and reputation, particularly since 'BOURJOIS' is a coined word. The court granted a perpetual injunction, preventing the defendant from using the mark in connection with similar services.

patent defendant favorable · Jul 17, 2012

M/S South Thindis (Now known as South Veg Thindis) v.M/S Billion Smiles Hospitality Pvt Ltd

Karnataka High Court · WP No.24093/2012 (IPR)

The Karnataka High Court dismissed a writ petition filed by M/S South Thindis, which sought to stay an ongoing trademark infringement suit based on its pending application for rectification. The court held that since the petitioner raised the plea of invalidity for the first time in the written statement and not before the suit was instituted, the mandate of Section 124(1)(b)(i) did not apply. Furthermore, the court noted the belated nature of the stay request, citing precedent against staying proceedings at a late stage.

patent dismissed · Aug 22, 2012

J. Sai Deepak v.Central Board Of Excise & Customs And Anr.

Delhi High Court · WP(C) No. 3165 of 2012

The petitioner filed a Public Interest Litigation challenging the vires of certain provisions of the Patents Act, 1970, and an associated Customs Circular. The petition sought to declare that Section 107A(b) does not permit unauthorized parallel imports and to quash the impugned circular. The court dismissed the petition, stating it was misconceived as a PIL.

patent defendant favorable · Nov 30, 2012

M/s. United Spirits Limited v.Henkel India Limited

Madras High Court · O.S.A.Nos.211 of 213 of 2012

M/s. United Spirits Limited appealed against the denial of an interlocutory injunction concerning the trademark 'ARAMUSK'. The dispute arose from a complex chain of assignments and transfers related to the original business agreement between Shaw Wallace & Company (predecessor-in-interest) and Henkel India Limited. The court examined the three pillars required for granting temporary relief: prima facie case, balance of convenience, and irreparable injury. Ultimately, the appeals were dismissed as the appellant was found not to have a strong enough case or demonstrated irreparable harm.

design plaintiff favorable · Oct 31, 2012

M/s Rana Sugars Limited v.State Of Punjab And Others

Punjab-Haryana High Court · CWP No. 7335 of 2012

The petitioner, M/s Rana Sugars Limited, challenged a notification issued by the State of Punjab that amended distillery rules to mandate 'Superior-Grade quality and round in shape' for bottles. The petitioner argued that its innovative use of non-round shapes (kidney and rectangular) was commercially successful and protected by design registration. The court quashed the restriction on bottle shape, holding that the state lacked jurisdiction to specify this detail.

patent mixed · Oct 5, 2012

Enercon (India) Ltd. v.Enercon GmbH

Bombay High Court · wps-7804.09 & 7636.09

This case involved disputes between Enercon (India) Ltd. and Enercon GmbH concerning a joint venture business manufacturing Wind Turbine Generators (WTG's). The core dispute revolved around the interpretation of their Intellectual Property License Agreement (IPLA), which covered technical know-how for producing these generators. The petitions challenged previous court orders regarding arbitration and an anti-suit injunction, leading the Bombay High Court to clarify jurisdictional issues.

copyright plaintiff favorable · Dec 11, 2012

R.K.Productions Pvt. Ltd. v.M/s.N.K.Theatres Pvt. Ltd.

Madras High Court · Original Side Appeal No.307 of 2012 (against A.No.2275 of 2012 in C.S.No.258 of 2012)

R.K.Productions Pvt. Ltd. (Plaintiff/Appellant) sued M/s.N.K.Theatres Pvt. Ltd. (Defendant No. 1) for copyright infringement related to the Telugu dubbing and remake rights of its movie '3', after the Defendant failed to pay the final installment amount due under the assignment agreement. The Defendant filed an application seeking arbitration, arguing that all disputes should be referred to arbitration. The High Court allowed the appeal, holding that since the suit involves complex issues mixing payment dispute with copyright infringement against multiple parties, it cannot be bifurcated for arbitration.

patent defendant favorable · Oct 12, 2012

Cipla Ltd. v.Union Of India And Ors.

Delhi High Court · LPA No.695/2012

Cipla Ltd. appealed an order passed by a Single Judge which restrained it from marketing its drugs. The original dispute involved the second respondent challenging the revocation of its patent by the Assistant Controller, arguing that provisions of Section 25(3) and (4) of the Patents Act were not followed. The High Court dismissed Cipla's appeal, upholding the interim restraint order.

patent plaintiff favorable · Aug 30, 2012

Indian Acrylics Limited v.E.I. Du Pont De Nemours And Ors.

Delhi High Court · O.M.P. No. 210 of 2002

Indian Acrylics Limited challenged a majority arbitral award issued by E.I. Du Pont De Nemours, which adjudicated disputes arising from know-how agreements related to acrylic fiber production. The Delhi High Court set aside the portion of the award that allowed Du Pont's claims, concluding that those monetary claims were barred by limitation and violated Indian public policy.

patent defendant favorable · Sep 7, 2012

F. Hoffmann-La Roche Ltd. v.Cipla Ltd.

Delhi High Court · CS (OS) No.89/2008

F. Hoffmann-La Roche Ltd. (Roche) filed a suit against Cipla Ltd., alleging infringement of its patent for the cancer drug Erlotinib (marketed as Tarceva). The plaintiffs sought permanent injunctions and damages, asserting their exclusive rights under the Patent Act, 1970. However, after considering various issues, including whether the defendant's actions constituted infringement and whether the patent itself was valid, the court ultimately dismissed both the original suit and the counter-claim.

copyright plaintiff favorable · Oct 30, 2012

Vodafone India Limited v.M/S. R.K. Productions Pvt Ltd

Madras High Court · C.S.No.208 of 2012 (and C.S.No.294 of 2012)

The suits were filed regarding the unauthorized copying, recording, reproduction, and distribution of cinematograph films '3' and 'Dhammu'. The court upheld the maintainability of the John Doe suits and clarified that the interim injunction was limited to blocking specific infringing URLs rather than entire websites. All applications seeking to vacate the existing interim orders were dismissed.

patent defendant favorable · Oct 8, 2012

Gopal Kishan v.Union Of India & Anr

Delhi High Court · LPA 45/2013

The Delhi High Court dismissed an appeal filed by Gopal Kishan seeking cancellation of trademarks registered in favor of the Union of India & Anr. The appellant argued that the marks were generic or lacked continuous use, but the court upheld the lower tribunal's findings. The judgment emphasized that questions regarding prior usage and distinctiveness are matters of fact best left to the specialized tribunals (like IPAB) and cannot be re-adjudicated in an appeal against a writ petition.

trademark defendant favorable · Sep 17, 2012

Shri Mohan Vidhani v.Registrar of Trade Marks, New Delhi

Central Information Commission · CIC/SS/A/2012/001734

Mohan Vidhani filed an appeal before the Central Information Commission seeking details regarding the status of a registered Trademark (TM No. 455982) during its restoration/renewal process. The CPIO denied the request, stating the queries were beyond the scope of the RTI Act as they asked how decisions were reached. The CIC upheld this decision.

patent plaintiff favorable · Jan 5, 2012

Gilead Sciences Inc v.Intellectual Property Appellate Board

Delhi High Court · W.P.(C) 7640/2011

Gilead Sciences Inc challenged the IPAB's order rejecting its application for condonation of delay in appealing a patent rejection. The core dispute revolved around whether an appeal against a pre-grant opposition was maintainable under Section 117A of the Patents Act, and whether the Board had the power to relax the limitation period despite initial reluctance.

trademark defendant favorable · Dec 5, 2012

Govind Rubber Ltd v.Department Of Income Tax

Income Tax Appellate Tribunal - Mumbai · ITA No. 5740/Mum/2009

The dispute concerned the allowability of claiming depreciation on the trade mark/brand name "GRL International" which was developed by Govind Rubber Ltd. The Revenue argued that the expenditure was merely advertisement and thus revenue in nature, while the Assessee contended it constituted an intangible asset eligible for capitalization and depreciation.

patent defendant favorable · Jul 26, 2012

M/s Surya Roshni Ltd. v.State of Punjab and Others

Punjab-Haryana High Court · CRM No. M-3882 of 2012

M/s Surya Roshni Ltd. filed a petition seeking action against respondents for alleged trademark infringement, claiming exclusive use of the 'Surya' mark. The petitioner argued that prima facie evidence existed for violation of the Trademark Act. However, the State submitted that since respondent no. 4 had initiated civil litigation regarding the same trademark dispute, criminal proceedings were not pursued. Consequently, the High Court disposed of the petition, noting that the petitioner could pursue alternative remedies.

patent mixed · Jul 10, 2012

This Application Has Been Filed Seeking ... v.Ashok Leyland Limited And Another

Madras High Court · O.A.Nos.446 and 447 of 2011 in C.S.No.345 of 2011

The Madras High Court addressed applications seeking interim injunctions concerning the trademark 'O2'. While the court found that the plaintiff had established a prima facie case for passing off, it ultimately denied the request for infringement relief. The judge ruled that despite concerns about delay, the applicant was entitled to an interim injunction specifically regarding the act of passing off by the respondent.

trademark remanded · Feb 6, 2012

Shree Siayaram Fab Private Limited v.Siyaram Silk Mills Ltd.

Bombay High Court · Appeal (Lodging) No.71 of 2012 / Appeal (Lodging) No.72 of 2012

The appeals challenged the Single Judge's orders regarding a suit for infringement and passing off. The core issue was whether the plaintiff could file an infringement suit despite the defendant having a registered trademark, which the appellant argued barred the suit under Order 7 Rule 11 CPC.

patent defendant favorable · Jan 31, 2012

Trans Tyres India Pvt. Ltd. v.Double Coin Holdings Ltd. & Anr.

Delhi High Court · FAO(OS) 296-97/2011

The Delhi High Court addressed an appeal concerning the trademark 'Double Coin' used for tyres. The court examined whether Trans Tyres India Pvt. Ltd., which had established significant market presence and registered the mark, was entitled to protection against Double Coin Holdings Ltd. The judgment focused heavily on the principles governing interim injunctions, ultimately finding that a prima facie case existed in favor of Double Coin Holdings Ltd. based on the goodwill associated with the brand.

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.

design plaintiff favorable · Mar 6, 2012

Asian Rubber Industries v.Jasco Rubbers, Manpasand Footwear (Original Plaintiff)

Bombay High Court · Appeal No.62 of 2012

Asian Rubber Industries challenged an interim injunction granted against them for passing off, while Jasco Rubbers sought to overturn a refusal to grant an injunction based on design infringement. The court found that the defendants' footwear was identical/deceptive to the plaintiff's registered designs and allowed the appeal challenging the ad-interim injunction.

patent plaintiff favorable · Apr 17, 2012

Times Internet Ltd. v.Jonathan S. And Another

Delhi High Court · CS(OS) 1742/2007

The Delhi High Court ruled in favor of Times Internet Ltd., granting permanent injunctions against the infringement of its brand 'Indiatimes'. The court recognized that Indiatimes, a coined word associated with extensive e-commerce operations, held significant goodwill and reputation. Furthermore, the plaintiff was awarded damages, affirming the protection afforded to established online brands.

copyright dismissed · May 8, 2012

Indian Performing Right Society Ltd. v.Aditya Pandey & Ors.

Delhi High Court · FAO(OS) No.423-424/2011; FAO(OS) No.425/2011 and CM No.19128/2011

The dispute centered on whether the act of communicating or broadcasting a sound recording constitutes an infringement of the copyrights in the underlying literary (lyrics) and musical works. The court examined the interplay between rights holders of the sound recording versus those holding the copyright in the original composition.

patent plaintiff favorable · Mar 30, 2012

Lt Foods Ltd. v.Sunstar Overseas Ltd. & Sachdeva & Sons Rice Mills Limited

Delhi High Court · CS (OS) Nos.612/2009, 639/2009 & 653/2009

The Delhi High Court ruled in favor of Lt Foods Ltd. regarding the infringement and passing off of its registered trademark 'HERITAGE' used for rice. The court found that the marks used by the defendants, 'INDIAN HERITAGE' and 'INDIAN HERITAGE SELECT', were deceptively similar, leading to potential consumer confusion. Consequently, the court granted an interim injunction restraining the defendants from using these infringing trademarks until the final disposal of the suit.

patent interim order · Jul 6, 2012

A.R. Safiullah v.A. Sowkath Ali

Madras High Court · O.A.Nos.304 to 306 of 2009 in C.S.No.282 of 2009

The petitioner sought ad-interim injunctions against the respondents regarding infringement of his registered patent (No. 198079) and registered design (No. 182931), as well as passing off related to artificial laminated banana leaves. The court found that while the claim for restraining patent infringement was not grantable, interim injunctions were allowed for design infringement and passing off.

patent plaintiff favorable · Mar 22, 2012

M/S Havmor Ice Cream Limited v.Piyush Shah

Rajasthan High Court - Jaipur · SB Civil Writ Petition No.5496 of 2011

The Rajasthan High Court ruled in favor of M/S Havmor Ice Cream Limited, setting aside a lower court's decision that dismissed its application under Section 142(2) of the Trade Marks Act. The court held that since Havmor was a registered proprietor and had commenced action with due diligence by issuing a statutory notice, the suit filed by the respondent could not be deemed a 'groundless threat.' This judgment reinforces the importance of timely legal action by trademark owners to protect their established rights against potential infringement.

trademark interim order · Sep 15, 2012

M/S Sagar Ratna Restaurants Pvt. Ltd. v.M/S Shri Bihari Ji's & Ors.

Delhi District Court · 123/12

The plaintiff, M/S Sagar Ratna Restaurants Pvt. Ltd., filed an application seeking an interim stay against the respondents for allegedly misusing its proposed brand names ('Ratnam', 'Sagar Ratnam') and breaching a franchisee agreement. The dispute centered on the use of similar brands like 'Shree Rathnam' by the defendants, who were former employees.

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