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Showing posts from March, 2013

Trap Purchases and Manufactured Jurisdiction in Indian IP Litigation

  Trap Purchases and Manufactured Jurisdiction in Indian IP Litigation A study of SML Ltd. v. M/s Happy Agro Chemicals and the doctrine of trap transactions Introduction In intellectual property disputes, few procedural issues matter as much as deciding where a case can be filed. The choice of court often shapes the entire journey of the case — from how quickly interim orders are granted, to the attitude of the local lawyers, to the practical burden placed on a defendant who must fight far from home. Because the forum is so important, plaintiffs sometimes try to influence it. The most common method is the trap purchase : a test buy arranged by the plaintiff, where an investigator pretends to be a regular customer, purchases the allegedly infringing product, and keeps the invoice and packaging. Later, this evidence is used not only to show infringement but — more controversially — to argue that the cause of action arose within the territory of the chosen court. Tra...
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Delhi High Court Full Bench Clarifies Scope of "Prior Publication" Under the Designs Act, 2000: Resolving the Conflict Between Dabur India and Gopal Glass Works

A Division Bench of the Delhi High Court has referred an important question to a Full Bench of the Court, calling into question the correctness of an earlier Division Bench ruling in Dabur India Ltd. vs. Amit Jain & Anr. (2009, Del.), which had held that the mere existence of a design in the publicly inspectable records of a foreign Registrar of Designs does not, by itself, amount to "prior publication" within the meaning of that expression under Sections 4(b) and 19(1)(b) of the Designs Act, 2000 (the "Act"). Background: The Conflicting Precedents The Division Bench in Dabur India Ltd. had concurred with the earlier view of a Single Judge of the Calcutta High Court in Gopal Glass Works Ltd. vs. Assistant Controller of Patents & Designs (2006, Cal.), which held that mere publication of designs, specifications, drawings, or demonstrations by a foreign patent office would not, in itself, amount to "publication" sufficient to render an Indian-re...
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Bombay High Court Holds Mere Website Posting Does Not Constitute Valid Communication of Examination Report Under Rule 38(4)

The Bombay High Court has held that mere posting of an examination report or objection notice on the Trade Marks Registry's website does not amount to valid "communication" of such objection to the applicant, as mandated under Rule 38(4) of the Trade Marks Rules, 2002. The Court held that, at the highest, such posting can be treated as having communicated the objection only on the date on which the applicant actually notices it on the website. Consequently, where an applicant applies for a hearing within one month of acquiring such actual knowledge, the application cannot be deemed to have been abandoned for failure to seek a hearing under Rule 38(5). Brief Facts On October 1, 2010, the petitioner applied for registration of the mark "CMA" in Class 41. On March 30, 2011, the petitioner wrote to the Registry, noting that despite repeated inquiries, it had received no response regarding its application, and that this delay was preventing it from offering train...
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Delhi High Court Division Bench Upholds Restoration of "MBD" Trademark: Union of India & Ors. vs. Malhotra Book Depot

The Division Bench of the Delhi High Court, in Union of India & Ors. vs. Malhotra Book Depot (LPA No. 564 of 2012), has upheld the judgment dated November 29, 2011, passed by a Single Judge of the Delhi High Court in W.P.(C) No. 7882/2010, directing the restoration and renewal of the trademark "MBD" (Class 16) in favor of the respondent, Malhotra Book Depot. The Division Bench, however, modified the direction to require the Registrar to first satisfy itself that the respondent is indeed the registered proprietor or successor-in-interest of the mark, and that no identical or similar marks have been registered by third parties during the intervening period. Brief Facts The predecessors of the respondent—Shri Ashok Kumar Malhotra and late Shri Balbir Singh, trading as M/s. Malhotra Book Depot (subsequently constituted as a partnership of Ms. Satish Bala Malhotra, Ms. Monica Malhotra Kandhari, and Ms. Sonica Malhotra Kandhari)—had applied for and secured registration of t...
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