ASWAL ASSOCIATES- Intellectual Property Law firm India

The Question Before the Court In Indian Performing Rights Society Ltd. v. Sanjay Dalia , the Supreme Court was called upon to settle a recurring and commercially significant question: where a plaintiff's principal place of business is at a location where the cause of action has also arisen, can the plaintiff nonetheless choose to sue at a different place — typically the location of a branch office — merely because it also carries on business there? The Court answered this decisively in the negative, holding that Section 62 of the Copyright Act, 1957 and Section 134 of the Trade Marks Act, 1999 must be construed purposively, and that a plaintiff residing or carrying on business at a place where the cause of action has also wholly or partly arisen must institute the suit at that place. The Statutory Scheme Section 20 of the Code of Civil Procedure ordinarily determines where a suit may be filed: under clauses (a) and (b), at a place where the defendant resides or carries on busin...

Overview The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 empower Indian customs authorities to suspend the clearance of infringing goods, provided the rights holder has registered a notice to that effect. In practice, however, this mechanism remains significantly underused by registered proprietors and owners of intellectual property rights. Registering such a notice gives the IP owner a valuable layer of border protection against the import of infringing goods, particularly in relation to copyrights, trademarks, and designs. Patents are also covered under the Rules, but patent-related border enforcement is comparatively rare in practice, given the greater technical complexity and specialized expertise required to assess infringement at the border. Filing the Notice A notice of registration must be filed together with: a certified copy of the relevant IP right; an annexure setting out details of the right holder's rights and the grounds on which re...

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...

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 ...

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...

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: ...

Background Ericsson initiated patent infringement proceedings against Micromax Informatics Ltd. and Mercury Electronics Ltd., alleging infringement of patents relating to speech codec technology — the combined use of a speech coder and speech decoder to compress a caller's voice signal, transmit it as coded speech frames over a radio link, and decode it at the receiving end. A notable feature of this technology is discontinuous transmission: during periods when the speaker is inactive, no coded speech frames are sent; instead, the transmitter periodically sends speech parameters sufficient for the decoder to generate "comfort noise" in place of silence. According to Ericsson's own patent specifications, speech coders and decoders are conventionally built into radio transmitters and receivers respectively, working together to enable voice communication over a radio link. A mobile phone, in this framing, is simply a conventional radio communication device — a radi...