Year

IP Cases — 2016

136 decisions across all jurisdictions

By jurisdiction: India 136 European UPC 0 US PTAB 0
By type: patent 103 trademark 21 copyright 7 design 5

Page 4 of 5 · 136 total

patent interim order · Jun 10, 2016

Telefonktiebolaget Lm Ericsson(Publ) v.Lava International Ltd

Delhi High Court · CS(OS) No. 764/2015

The court addressed an application filed by the defendant seeking procedural reliefs, including a fresh trial schedule and permission to examine additional witnesses. The case involves patent infringement allegations concerning mobile radio communication technology and questions regarding the FRAND status of the patents.

trademark plaintiff favorable · Dec 6, 2016

Mehra Cosmetics v.Ram Kumar Gulati & Ors.

Delhi High Court · CS(OS) No.196/2016

The Delhi High Court granted an interim injunction favoring Mehra Cosmetics against Ram Kumar Gulati & Ors. The court found that the defendants were attempting to pass off their goods as those of the plaintiff by using a deceptively similar mark ('BLUE CHEF' vs 'BLUE CLIFF'). Despite arguments regarding the unregistered status of the plaintiff's trademark and procedural issues, the court ruled that the similarity in sound and appearance constituted passing off. The defendants were ordered to cease using the infringing mark and change labels on their existing stock.

patent plaintiff favorable · Mar 29, 2016

Wind World (India) Limited v.Enercon GmbH

Bombay High Court · ARBITRATION PETITION (L) NO.374 OF 2016

Wind World (India) Limited challenged an arbitral tribunal's order that directed them to produce documents and granted interim measures. The dispute arose from various agreements, including the Intellectual Property Licensing Agreement. The Bombay High Court set aside the impugned order, finding it contrary to law.

patent plaintiff favorable · Mar 9, 2016

Pfizer Products, Inc & Anr v.Platinum Pharmaceuticals Pvt Ltd & Ors

Delhi High Court · CS(OS) No.2246/2011

The Delhi High Court ruled in favor of Pfizer Products, Inc. in a suit alleging trademark infringement and passing off by Platinum Pharmaceuticals Pvt Ltd. The court found that the defendant was illegally selling a drug under the deceptively similar trademark BEQSULE against the plaintiff's registered mark BECOSULES. Furthermore, the court noted that the defendant adopted an identical trade dress (white and reddish orange color combination) to mislead consumers, leading to a decree of injunction.

patent plaintiff favorable · May 3, 2016

Chandra Sekar v.The Controller of Patents and Designs

Madras High Court · W.P.Nos.12620 & 12621 of 2017

Chandra Sekar challenged orders dismissing his two patent applications (Nos. 8846/CHENP/2011 and 8907/CHENP/2011) because the request for examination was filed late. The petitioner argued that the delay was due to calendaring errors and negligence on the part of the Indian agent, not his own.

patent plaintiff favorable · Apr 22, 2016

M/S Shinhan Apex Corporation v.M/S Euro Apex B.V.

Supreme Court - Daily Orders · Civil Appeal Nos. 4359-4360 of 2016

This appeal concerned the enforcement of a PFA from an arbitration award, which mandated the respondent to unconditionally and irrevocably transfer all rights and interests in specific Indian Patents (Nos. 2143/MUM/2008 and 2144/MUM/2008) to the appellant. The Supreme Court found that the appellant had duly executed and forwarded the required deed of transfer, thereby fulfilling its obligation under the PFA.

patent plaintiff favorable · Jul 28, 2016

Wonderful Developers Private Ltd. v.Impresario Entertainment And Hospitality Private Ltd. & Ors.

Delhi High Court · CM(M) 376/2013

The Delhi High Court addressed a conflict regarding when a trade mark infringement suit must be stayed pending rectification proceedings before the IPAB. The court clarified that merely filing a rectification application after an infringement suit has commenced does not automatically mandate a stay. Instead, the trial court must assess whether the plea of invalidity is prima facie tenable; if so, it should stay the suit to allow time for the IPAB decision. This ruling provides clarity on the procedural interplay between civil suits and IPAB rectification actions.

trademark The Court granted an interim injunction restraining Patanjali from using the 'Kesh Kanti' trademark or any similar design for ten weeks or until further order. · Mar 18, 2016

emami limited v.patanjali ayurved limited

Calcutta High Court · G.A. 818 OF 2016 with C.S. 80 OF 2016

Emami Limited sued Patanjali Ayurved Limited for infringement of its registered trademark 'Kesh King' and design of a bottle, alleging that Patanjali’s ‘Kesh Kanti’ was deceptively similar and copied the bottle design, creating confusion among consumers. The Petitioner claimed significant turnover (Rs. 305.44 Crores) after acquiring rights to both the trademark and design.

patent defendant favorable · Mar 30, 2016

Telefonaktiebolaget Lm Ericsson (Publ) v.Competition Commission Of India

Delhi High Court · W.P.(C) 464/2014 & 1006/2014

Telefonaktiebolaget LM Ericsson challenged the orders passed by the Competition Commission of India (CCI), which had initiated investigations based on complaints from Micromax and Intex. The core dispute revolved around whether the CCI possessed jurisdiction to examine claims related to royalty payments for Standard Essential Patents (SEPs). Ericsson argued that patent-related royalty issues fall exclusively under the Patents Act, 1970, not the Competition Act, 2002. The Delhi High Court ultimately dismissed the writ petitions, affirming the jurisdictional boundaries of the CCI in this context.

patent plaintiff favorable · Nov 15, 2016

Cadila Healthcare Limited v.P.Ramu Trading as Skylane Pharmaceuticals

Madras High Court · C.S.No.481 of 2011

The Madras High Court ruled in favor of Cadila Healthcare Limited, a major pharmaceutical player, finding that the defendant's use of the trademark PANTOSKY constituted infringement against Cadila's registered mark PANTODAC. The court held that PANTOSKY was deceptively similar to PANTODAC, leading to a decree for permanent injunction and damages. This judgment reinforces the protection afforded to well-known pharmaceutical trademarks in the Indian market.

patent plaintiff favorable · Jun 2, 2016

M/s.Advaith Bio Remedies v.The Registrar Of Trademarks

Madras High Court · W.P.No.15534 of 2016

M/s. Advaith Bio Remedies approached the Madras High Court seeking intervention regarding the undue delay in processing their trademark application for 'BIO CARE' (Application No. 3040849). The petitioner, which manufactures Ayurvedic medicines, argued that the prolonged wait was negatively impacting their business operations. The court intervened by issuing a Writ of Mandamus, directing the Registrar of Trademarks to prioritize and dispose of the pending application as expeditiously as possible.

design plaintiff favorable · Dec 6, 2016

Mandev Tubes Pvt. Ltd v.Kalpesh R. Jain And 2 Ors

Bombay High Court · 917-NMS2195-16-F.DOC (Suit No. 742 of 2016)

The Plaintiff, Mandev Tubes Pvt. Ltd., sought protection for its registered design (No. 224751) concerning copper tubes, alleging that the Defendants infringed this design and engaged in passing off. The Plaintiff claimed the design was novel and original, featuring an expanded bell shape at one end of the tube.

patent mixed · Aug 3, 2016

M/S Rspl Limited v.Mukesh Sharma & Anr

Delhi High Court · FAO(OS) 145/2016

This appeal challenged a single judge's decision that dismissed an IP suit based on lack of territorial jurisdiction. The appellant, M/S Rspl Limited, had filed the suit under the Trade Marks Act and Copyright Act seeking injunction against alleged infringement and passing off by the respondents using the name 'GHARI TRADEMARK COMPANY'. The High Court Division Bench overturned the single judge's ruling, affirming that the court has jurisdiction given the plaintiff's corporate office and business activities within Delhi.

patent defendant favorable · Aug 8, 2016

M/s.Cavinkare Pvt. Ltd. v.Hindustan Unilever Ltd.

Madras High Court · C.S.No.460 of 2016

The suit was filed by M/s.Cavinkare Pvt. Ltd. seeking a declaration that its cosmetic composition did not infringe Patent No.169917 and requesting a permanent injunction against Hindustan Unilever Ltd. The court found that the subject patent had already expired in 2009, rendering the claims of infringement and the request for an injunction moot.

patent mixed · Apr 18, 2016

Delhi Public School Society v.Dps World Foundation And Anr

Delhi High Court · IA 2920/2016 in CS(COMM) 154/2016

The Delhi High Court granted an interim injunction in favor of the Delhi Public School Society against Dps World Foundation And Anr. The court restrained the defendants from using the registered trade mark 'DPS' or any deceptively similar mark, citing infringement and passing off. While the plaintiff sought protection for its crest logo under copyright, the court denied this specific relief due to lack of evidence regarding continuous use. This ruling sets a precedent for protecting established educational brand identities in litigation.

trademark defendant favorable · Feb 29, 2016

Qarshi Industries Pvt. Ltd. v.Abdul Mueed & Ors.

Delhi High Court · FAO (OS) (COMM) 1/2016

The Delhi High Court addressed an appeal filed by Qarshi Industries challenging the denial of an ex-parte ad-interim injunction against Hamdard in a passing off suit. The court found that given the complexity of the arguments—including issues regarding the descriptive nature of the Urdu words 'JAM-E-SHIRIN' and potential suppression of facts related to Pakistani trademark disclaimers—the prima facie case was not strong enough for an immediate injunction. Consequently, the appeal was dismissed, requiring both parties to complete their pleadings before further relief could be considered.

patent plaintiff favorable · Jan 19, 2016

M/S. Bhatia Enterprises v.Sh. Subhash Arora

Delhi High Court · CS(OS) No.2471/2012

M/S. Bhatia Enterprises filed a suit alleging infringement of its registered design for a water jug (No. 235010). The court considered an application for a preliminary injunction, noting that the defendant had previously failed in its attempt to cancel the registration based on prior publication. Given that the plaintiff had a prima facie case and irreparable loss would occur without protection, the court granted the interim injunction.

trademark defendant favorable · Mar 11, 2016

Essel Propack Ltd. v.Essel Kitchenware Ltd. And Anr

Bombay High Court · SUIT NO. 272 OF 2010 (Notice of Motion No. 370 of 2010)

Essel Propack Ltd. filed a suit seeking injunctions for trade mark infringement and passing off against Essel Kitchenware Ltd. The court considered the convoluted litigation history and arguments regarding sufficient cause for interim relief. Ultimately, the court dismissed the Notice of Motion, finding that the Plaintiff had not demonstrated sufficient cause.

patent mixed · Aug 31, 2016

The Indian Performing Right Society Ltd. v.Entertainment Network (India) Ltd.

Bombay High Court · ARBITRATION PETITION NO.341 OF 2012 & ARBITRATION PETITION NO.1017 OF 2012

This case involved disputes arising from a license agreement between The Indian Performing Right Society Ltd. (a Copyright Society) and Entertainment Network (India) Ltd. (an FM radio station operator). The core dispute centered on whether the claimant needed a license to broadcast copyrighted musical works, and subsequent claims regarding royalty payments and refunds. The Bombay High Court reviewed the arbitral award, ultimately setting aside one part of it due to lack of jurisdiction while allowing the petition filed by the Copyright Society.

trademark defendant favorable · Jul 19, 2016

Staar Surgical Company v.Polymer Technologies International & Ors

Delhi High Court · CS(COMM) No.855/2016

The Delhi High Court dismissed Staar Surgical Company's suit against Polymer Technologies International, which alleged passing off of intraocular lenses. The court found that the defendant's current trademark, 'EYEPCL,' was entirely distinct and not deceptively similar to the plaintiff's brand name, 'VISIAN ICL.' Despite previous interim injunctions granted on a different mark used by the defendants, the court ruled that the new mark failed to meet the test of confusion, especially considering the specialized nature of the medical goods.

patent dismissed · May 30, 2016

Teva Api India Pvt. Ltd. v.Merck Sharp & Dohme Corp

Delhi High Court · FAO(OS) (COMM) 34/2016

The respondents sued the appellants alleging infringement of Indian Patent No. 209816 for Sitagliptin. The appellants challenged the interim injunction, claiming their manufacturing and exports were solely for Research & Development (R&D) and obtaining global regulatory approvals before the patent expiry in 2022. The court dismissed the appeal but directed the parties to complete pleadings.

patent plaintiff favorable · Nov 3, 2016

Aktiebolaget Volvo & Ors v.Hari Satya Lubricants & Anr

Delhi High Court · CS(OS) 1771/2014

The Delhi High Court ruled in favor of Aktiebolaget Volvo & Ors, finding that the defendant's use of the mark 'VALVO' for lubricating oil products constituted trademark infringement and passing off against the well-known mark 'VOLVO'. The court issued a permanent injunction restraining the defendants from using the similar mark. Furthermore, nominal damages were awarded to one of the plaintiffs, reinforcing the protection afforded to famous trademarks in India.

patent plaintiff favorable · Apr 22, 2016

M/S Shinhan Apex Corporation v.M/S Euro Apex B.V.

Supreme Court of India · CIVIL APPEAL NOS. 4359-4360 OF 2016

The dispute arose from an arbitration award requiring M/S Shinhan Apex Corporation (appellant) to unconditionally and irrevocably transfer all rights and interests of Indian Patents No. 2143/MUM/2008 and 2144/MUM/2008 to M/S Euro Apex B.V. (respondent). The respondent challenged the execution, but the Supreme Court found that the appellant had duly executed and forwarded the transfer deed as per the modified request from the respondent themselves.

patent plaintiff favorable · Dec 15, 2016

Tata Sons Limited v.Ram Niwas & Ors

Delhi High Court · CS (COMM) 1603/2016

The Delhi High Court ruled in favor of Tata Sons Limited, granting permanent injunctions against Ram Niwas & Ors for trademark infringement and passing off. The court found that the defendants were deceptively using the mark 'TATA' and the domain name 'www.tatapackers.com' to associate themselves with the well-known TATA brand in the transport and logistics sector. Furthermore, the defendants were ordered to transfer the infringing domain name to Tata Sons Limited.

patent mixed · Nov 4, 2016

Krbl Ltd. v.Pk Overseas Pvt Ltd

Delhi High Court · FAO 532/2011 & C.Ms.22380/11, 29217/15, 29058/16

The Delhi High Court overturned a lower court's decision regarding an application for interim injunction in a passing off dispute concerning rice brands. The appeal focused on the deceptive similarity of color combinations, not just the marks themselves. The High Court found that the trial court failed to adequately address the crucial elements of reputation and consumer confusion before dismissing the injunction request. Consequently, the case was remanded back to the trial court for a fresh hearing after both parties submit necessary documentation.

patent defendant favorable · Jan 28, 2016

Mac Personal Care Pvt. Ltd. v.Lavera Gmbh And Co.Kg

Delhi High Court · FAO (OS) 194/2015

The Delhi High Court upheld an interim injunction in favor of Lavera Gmbh, affirming that Mac Personal Care Pvt. Ltd. was a dishonest adopter of the trademark 'LAVERA'. Despite initial contradictions regarding trans-border reputation, the court found that Lavera's international registration and intent to market in India entitled it to protection. The judgment emphasizes that dishonesty at the inception of mark adoption is fatal, even if subsequent use by the alleged infringer continues.

copyright defendant favorable · Aug 2, 2016

Akashaditya Harishchandra Lama v.Ashutosh Gowarikar And 4 Ors

Bombay High Court · 907-NMSL1935-16

The plaintiff filed a Notice of Motion alleging that his creative work had been plagiarized. The court dismissed the motion, finding that the plaintiff failed to establish a sufficient prima facie case due to an ever-shifting stand on what was infringed. Furthermore, the court criticized the plaintiff's conduct for publicizing the litigation in the media.

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 defendant favorable · Aug 29, 2016

Times Publishing House Ltd. v.Financial Times Ltd & Ors.

Delhi High Court · FAO(OS) Nos.717/2010 & FAO(OS) No.499/2011

The Delhi High Court dismissed the appeals filed by Times Publishing House Ltd. against Financial Times Ltd, addressing challenges related to the validity and rectification of the 'FT' trademark. The judgment clarified the interplay between civil suit proceedings and IPAB rectification petitions under Section 124 of the Trade Marks Act. Crucially, the court noted that since the IPAB had already ruled in favor of the respondent regarding the mark's validity, the issues raised by the appellant became academic, leading to the dismissal of both appeals.

patent mixed · Dec 23, 2016

My Space Inc. v.Super Cassettes Industries Ltd.

Delhi High Court · FAO(OS) 540/2011

This Delhi High Court judgment addressed a dispute between MySpace Inc., an Internet Service Provider, and Super Cassettes Industries Ltd. (SCIL), a major music company, regarding the unauthorized use of copyrighted works on the Myspace platform. SCIL sought permanent injunctions against alleged infringement, while MySpace argued for intermediary protection under relevant IT laws. The court balanced IP rights with freedom of expression, clarifying that safe harbor provisions apply if an intermediary acts upon specific notice.

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