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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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India Increases Official Fees for Trademark Filing: Trademark (Amendment) Rules, 2014

The Trademark (Amendment) Rules, 2014 have been notified, revising the official government fees payable for trademark filings in India. With effect from August 1, 2014, the government fee for filing a trademark application has been increased from INR 3,500 to INR 4,000 per class—an increase of approximately 15%. A Pattern of Periodic Fee Revisions This is not the first such revision in recent years. The government fee had previously been increased in December 2010, when it rose from INR 2,500 to INR 3,500 per class. The latest amendment, therefore, marks the second increase within a four-year period, reflecting the Trademark Registry's ongoing efforts to align its fee structure with rising administrative and operational costs. Increase in Fee for Expedited Examination Alongside the increase in the standard filing fee, the government fee for expedited (express) examination of trademark applications has also been revised upward, from INR 17,500 to INR 20,000 per class. Expedited ...
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DESIGN REGISTRATION AS A DEFENCE IN AN INFRINGEMENT SUIT

  A Critical Analysis of Whirlpool of India Ltd. v. Videocon Industries Ltd. ( S. J. Kathawalla, J., Bombay High Court, Notice of Motion No. 2269 of 2012 in Suit No. 2012 of 2012, decided May 27, 2014) Core question: Can an infringement suit under Section 22 lie against a person who is himself a registered proprietor of a design? And, on the facts, was there infringement and passing off? Core statutory provisions: Sections 2(c), 6, 11, 19 and 22, Designs Act, 2000 I. Introduction The Designs Act, 2000 grants a registered proprietor a time-bound monopoly over the visual features of an article, but it does not say, in so many words, whether that monopoly can be enforced against another person who has himself managed to register a similar or identical design. Whirlpool of India Ltd. v. Videocon Industries Ltd. is the leading Bombay High Court authority answering this question, and it did so by adopting — and thereby entrenching — the position first taken by the Delhi High ...
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Acquiescence as a Defense Under the Trade Marks Act, 1999

Statutory Basis Section 33(1) of the Trade Marks Act, 1999 provides that where the proprietor of an earlier registered trademark has acquiesced for a continuous period of five years in the use of a later registered trademark, with knowledge of that use, the earlier proprietor loses the right either to seek invalidation of the later mark or to oppose its use in relation to the goods or services for which it has been so used — unless the later mark was registered in bad faith. The essential elements of the defense may be summarized as follows: (a) The later mark must be registered. (b) The earlier registered proprietor must have been aware of the use of the later registered mark for a continuous period of five years or more. (c) The subsequent applicant or registered proprietor must have used the mark continuously throughout that five-year period. (d) The later mark, once registered, cannot be cancelled unless its registration was applied for in bad faith. (e) Use of the later mar...
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Delhi High Court Three Judges Bench Recognizes Infringement and Passing Off Remedies for Registered Design Proprietors

Summary The Delhi High Court delivered a landmark judgment affirming that holders of registered designs can file infringement suits against other registered proprietors, invoke common law passing off remedies even without explicit statutory provisions in the Designs Act, and pursue both remedies concurrently (though not in a single consolidated suit). This decision significantly strengthened legal protections for design proprietors by harmonizing statutory and common law remedies. Introduction The case of  Mohan Lal v. Sona Paint & Hardwares , adjudicated by the Delhi High Court on May 15, 2013, marks a significant development in the interpretation of the  Designs Act, 2000 . This judgment delves into the complexities surrounding the infringement of registered designs, the applicability of common law remedies such as passing off, and the procedural aspects of filing composite suits involving both statutory and common law claims. Parties Involved Plaintiffs: ...
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