Learned Single Judge has dealt with arguments and contentions raised by SOOTHE and has rightly reached a prima facie conclusion, DABUR’s mark does not infringe SOOTHE’s trademark and DABUR is not passing off its goods as those of SOOTHE. As rightly argued by DABUR and decided by Learned Single Judge, ‘SUPER’ is descriptive and laudatory. Indisputably, ‘SUPER’ is widely used in respect of various products not only of similar nature but also of different class and categories. SOOTHE’s product has a prominent colour scheme in yellow and orange/blue whereas in DABUR’s product, it is primarily green.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Soothe Healthcare Private Limited v. Dabur India Ltd., [FAO(OS) (COMM) 100/2022] decided on 11.07.2022.

A suit on basis of cause of action on a fear or apprehension is commonly known as a quia timet suit, defined as action by which a person is entitled to obtain an injunction and restrain a threatened act – which if done, would cause substantial damage. A person who is under a threat of infringement is not remediless and can maintain a suit for injunction. There is no doubt, such apprehension or threat has to be genuine and not a figment of imagination.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, M/s. Maan Pharmaceuticals Ltd. v. M/s. Mindwave Healthcare Pvt. Ltd., [FAO(COMM) 78/2022] decided on 12.09.2022.

Also see, Reckitt Benckiser (India) Pvt. Ltd. v. Hindustan Unilever Limited, [FAO(OS)(COMM) 149/2021] decided on 26.09.2022 and Peps Industries Private Limited v. Kurlon Limited, [FAO(OS) (COMM) 94/2020] decided on 07.10.2022.

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It is not permissible to hold, two competing marks are deceptively similar, by examining a portion of one mark and comparing it with a portion of another mark, if composite marks viewed as a whole are dissimilar. Indisputably, Vasundhra Jewellers Private Limited does not enjoy monopoly for use of the word ‘Vasundhra’.   

‘Vasundhra’ would be a weak trademark. It is possible for a proprietor to claim exclusive right. However, it would be necessary to establish on account of extensive use, the said common word has been identified exclusively with the business of the proprietor and no other.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Vasundhra Jewellers Private Limited v. Kirat Vinodbhai Jadvani, [FAO(OS) (COMM) No. 287/2022] decided on 13.10.2022.

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Relaxo is engaged in manufacturing and selling of various kinds of footwear. Relaxo was granted registration of Design No. 294938 on 21.06.2017.

For a design to be registered, it must be original and novel; not disclosed in any manner prior to registration; and it should be significantly distinguishable from a known design or a combination of known designs. Thus, a mere trade variant, which is a combination of known designs, would not be entitled to protection under The Designs Act, 2000.

Undoubtedly, footwear designers have to function under constraints. However, Crocs Inc. USA v. Bata India Ltd., (2019) 78 PTC 1 cannot be read to mean, there can be no registrable design in respect of footwear and all designs would be merely trade variants. Aqualite has not produced sufficient material for this Court to conclude, Subject Design is merely a trade variant and indistinguishable from known designs or a combination thereof. It is apparent, Aqualite’s product is almost identical to Subject Design. It is not unusual for small players to copy designs which have become popular. It is not necessary to pursue remedies against each dealer/manufacturer selling infringing products. Aqualite is hereby restrained from infringing Design No. 294938 till disposal of the suit.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Relaxo Footwears Limited v. Aqualite India Limited, [FAO(OS) (COMM) 145/2019] decided on 27.10.2022.

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If a suit involves urgent interim relief, Section 12A of The Commercial Courts Act, 2015 is inapplicable and it is not necessary to enter into a pre-institution mediation. Court is of view, question whether a suit involves any urgent interim relief is to be determined solely on basis of pleadings and relief(s) sought by Plaintiff. A pre-institution mediation is necessary only in cases where Plaintiff does not contemplate urgent interim relief.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd., [FAO (COMM) 128/2021] decided on 27.10.2022.

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Gulab Oil and Food (Ahmedabad) Pvt. Ltd. has been restrained from using the trademark ‘Gulab’ in connection with namkeen, roasted and baked ready to eat snacks and not in in relation to other products. Learned Commercial Court, prima facie, found, use of ‘Gulab’ would constitute infringement of Smt. Madhu Gupta’s trademark ‘Gulab Ka Phool’ registered under Class 30 for sweet edible items, namely, Gajjak and Rewari, in 1944. Court finds no flaw with reasoning of Learned Commercial Court, namkeen and other ready to eat sweets such as Gajjak and Rewari are allied and cognate goods.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Gulab Oil and Food (Ahmedabad) Pvt. Ltd. v. Smt. Madhu Gupta, [FAO (COMM) 138/2021] decided on 15.11.2022.

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Lord Diplock in Beecham Group Ltd. v. Bristol Laboratories Ltd., 1978 RPC 153 had referred to Clark v. Adie, (1877) 2 App. Cas. 315 to explain Doctrine of Equivalents.  

“Courts have recognized, to permit imitation of a patented invention which does not copy every literal detail would be to convert protection of a patent grant into a hollow and useless thing” [Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (1950)].

Doctrine of Equivalents has taken on a life of its own [Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 US 17].

If an innovation – whether it is a product or a process – is pirated, an action to prevent such infringement cannot fail solely because, the offending product or process has certain minor and insubstantial variations or differences as compared to the patented product.  

Learned Single Judge had, with consent of parties, appointed Scientific Advisers. NATCO-Process is not equivalent to Suit Patent-Process. It cannot be termed a minor or insubstantial variation, so as plead: infringement and piracy.

Accordingly, we find no reason to interfere.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, FMC Corporation v. Natco Pharma Limited, [FAO(OS) (COMM) 301/2022] decided on 05.12.2022.

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Learned Single Judge, Hon’ble Justice Asha Menon’s decision on 06.01.2022 in Hamdard National Foundation v. Sadar Laboratories Pvt. Limited, CS(COMM) 551/2020 is set aside.

‘Blue Angel’ and ‘Blue Chapel’ were held to be confusingly similar to ‘Blue Nun’ in H. Sichel Sohne, GmbH v. John Gross & Co., 204 U.S.P.Q. 257 (T.T.A.B. 1979). Coordinate Bench of this Court in Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164 found likelihood of confusion in context of two competing marks ‘Officer’s Choice’ and ‘Collector’s Choice’.  

When one considers meaning of ‘Rooh’ and meaning of ‘Dil’, connection becomes clear at once. ‘Heart and Soul’, commonly used in conjunction, is a popular song composed by Hoagy Carmichael with lyrics by Frank Loesser.

There is a similarity in trade dress too.

‘Rooh Afza’ requires a high degree of protection. Sadar Laboratories Pvt. Limited shall not manufacture ‘Dil Afza’.  

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Hamdard National Foundation v. Sadar Laboratories Pvt. Limited, [FAO(OS) (COMM) 67/2022] decided on 21.12.2022.

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Learned Single Judge had held, defence of ‘honest and concurrent user’ is not available under The Trade Marks Act, 1999.

Learned Senior Counsel, C.M. Lall earnestly contended, defence of ‘honest and concurrent user’ was not available. He referred to, Metro Playing Card Co. v. Wazir Chand Kapoor, 1972 SCC OnLine Del 325; Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co., 1989 SCC OnLine Del 34; Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448; Laxmikant Patel v. Chetanbhai Shah, (2002) 3 SCC 65; Ansul Industries v. Shiva Tobacco Company, 2007 SCC OnLine Del 74; Cadila Pharmaceuticals Ltd. v. Sami Khatib of Mumbai, 2011 SCC OnLine Bom 484; Inder Industries v. GEMCO Electrical Industries, 2012 SCC OnLine Del 241; Radico Khaitan Ltd. v. Brima Sagar Maharashtra Distilleries Ltd., 2014 SCC OnLine Del 2036; S. Oliver Bernd Freier Gmbh & Co. v. Jaikara Apparels, 2014 SCC OnLine Del 2686; Kalpataru Properties Pvt. Ltd. v. Kalpataru Buildtech Corp. Ltd., 2015 SCC OnLine Bom 5817.  

It is not necessary for this Court to examine whether any defence of ‘honest and concurrent user’ is available. We consider it apposite to remand the matter to Learned Single Judge to prima facie examine Kei Industries Ltd.’s claim for infringement of its trademarks under Section 29(4) of The Trade Marks Act, 1999.

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Raman Kwatra v. Kei Industries Limited, [FAO(OS) (COMM) 172/2022] decided on 06.01.2023.

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Learned Single Judge [Hon’ble Justice Rajiv Sahai Endlaw] proceeded on basis, packaging of all biscuits would necessarily take shape of biscuits which would be either rectangle or round. No such defence was raised and there is no material to support this finding. CS(COMM) 10/2019 is restored to position.     

– Hon’ble Justice Vibhu Bakhru and Hon’ble Justice Amit Mahajan of Hon’ble High Court of Delhi, Surya Food & Agro Limited v. Om Traders & Raja Udyog Private Limited, [RFA(OS) (COMM) 28/2019] decided on 20.01.2023.