ASWAL ASSOCIATES- Intellectual Property Law firm India

Supreme Court  in Indian Performing Rights Society Ltd. vs. Sanjay Dalia held that  the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner and clarified that if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place. The Court observed that under Section 62 of the Copyright Act and Section 134 of the Trade Marks Act, an additional forum has been provided by including a District Court within whose limits the plaintiff actually and voluntarily resides or carries on business or personally works for gain. The object of the provisions was to enable the plaintiff to institute a suit at a place where he or they resided or carried on business, not to enable them to drag defendant further away from such a place also as is being done in the instant cases. The Court held that the expression “no...

The Intellectual Property Rights (Imported Goods) Enforcements Rules 2007 allows registration of notice for suspension of clearance of infringing goods by Indian custom authorities, but rarely this notice is registered by Registered Proprietor/ Owners of Intellectual property rights (Right Holder). Registration of notice allows the IP owner protection against import of infringed goods especially in case of Copyrights, Trademarks and Designs. Though Patents are also covered but they involve more technicality and expertise as compared to other IP rights. The period of protection is minimum one year unless any shorter period is demanded by the right holder. The notice is to be filed along with certified copy of the IP right, Annexure containing details of Right Holder's rights as well as grounds for registration of notice and prescribed fee of INR 2000. An indemnity bond along with surety bond is to be supplied along with the request. Where such request is filed through an Att...

Where the Indian Trademark Registry has any objection to the Trademark, a  provisional refusal report is issued by IRDI Section and forwarded to WIPO and then WIPO notifies the Right Holder. The registry normally issues the notice of provisional refusal to WIPO within a week of issuance of same and within 15 days of receipt WIPO dispatches the notice to right holder vide registered mail or post. The deadline to respond to provisional refusal is one month from the date of receipt of notice of provisional refusal by the Holder or his legal representative. The response to provisional refusal is required to be filed through an Agent (either a Trademark Agent or an Advocate) or through a representative, having address within territory of India. A response to provisional refusal or request for reconsideration of provisional refusal, evidence in support of prior use of Trademark in India by way of Owner's Affidavit, or limiting the scope of protection or a request for hearing ca...

Summary A five-judge bench of the Delhi High Court delivered a landmark judgment overruling the earlier three-judge bench decision in Mohan Lal v. Sona Paint & Hardwares, holding that plaintiffs can maintain composite suits combining design infringement and passing off claims against the same defendant. The Court clarified that when both causes of action arise from the same transaction and involve common questions of fact and law, they can be joined under Order II Rule 3 of the CPC to avoid multiplicity of proceedings and promote judicial efficiency. Introduction On December 14, 2018, a  five-judge bench of the Delhi High Court  delivered a significant judgment in  Carlsberg Breweries v. Som Distilleries and Breweries Ltd. , addressing the critical question of whether design infringement and passing off claims can be combined in a single composite suit. This ruling  effectively overruled  the earlier three-judge full bench decision in  Mohan Lal v...