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Pidilite Seals a Win: Bombay High Court Validates Creative Design Combinations
In Pidilite Industries Limited v Astral Limited, the Bombay High Court passed an ad-interim injunction order to stop Astral Limited (Astral) from manufacturing, selling, dealing and offering to sell a ‘container’ infringing a registered design of a container of Pidilite Industries Limited (Pidilite).
Pidilite sued Astral, alleging that Astral’s SOLVOBOND containers infringed on their own registered M-SEAL PV SEAL container design. Pidilite claimed the suit design was novel, original, and recognised by consumers for its unique shape and configuration. Furthermore, Pidilite argued that the similarities between the two products increased the likelihood of consumer confusion and market dilution.
Interestingly, Astral did not even contend the similarity between the two designs but instead raised several defences to oppose Pidilite’s request for interim relief, including questioning the suit design’s validity, contending that it lacked novelty and originality.
The Court observed that Astral’s container was almost identical to that of Pidilite’s suit design. Therefore, the Court considered other defences raised by Astral as follows to decide if Pidilite was entitled to interim reliefs –
1. Design Appeal:
Astral submitted that Pidilite’s suit design lacked visual appeal, with nothing capricious or catchy about the design. However, the Court disagreed, referring to the Delhi High Court ruling in TTK Prestige Ltd v KCM Appliances Private Limited, stating that the test for ocular appeal of a design should be objective, not subjective. From that perspective, Pidilite’s container design was found to be distinctive, unique and visually appealing to the eye, thus deserved protection.
2. Prior Publication and Novelty:
Astral submitted a compilation of prior publications to indicate that there was nothing unique/appealing in the suit design, in addition to noting that Pidilite filed a patent application for the same design a week prior to filing the design application. However, Court observed that prior art and publications when seen as a whole are neither deceptively similar nor identical to the design in question. The Court also ruled that breaking down an article into parts (mosaicing) to compare individual parts with parts of a design is not permissible.
The Court clarified that while a combination of known articles is prohibited under Section 4(c) of the Designs Act, this prohibition does not extend to parts of known articles. Moreover, Pidilite’s prior patent application did not constitute prior publication since it was published much later.
4. Originality and Trade Variant:
Astral argued that minor tweaks and variations in a design are wholly insufficient to qualify as new or novel design and that the difference must be substantial/significant. However, the Court found this argument to be flawed, noting that Astral had not demonstrated any prior design similar to the suit design. Then, the Court moved on to make a very crucial point that will have long-drawn consequences for registering designs; the Court explained that combining known elements/integers in a novel way can create a new, original design that appeals to the eye.
The Court also defined the three factors helpful in determining if a particular article or its design is a trade variant:
- nature and size of the article to which the design has to be applied;
- utilitarian nature of the article; and
- if the article’s nature or size is allows only minor or small changes , such changes may be sufficient/substantial enough to make the design new/novel and unique.
Court accordingly ordered that, features of Pidilite’s container design taken as a whole, was not present in any of prior cited designs, and therefore, the same cannot be termed as a trade variant. Consequently, the Court granted Pidilite ad-interim reliefs, restraining Astral from pirating or infringing Pidilite’s suit design.
This decision underscores the importance of protecting unique and original designs, defining key principles such as the objective test for visual appeal, the impermissibility of mosaicing, and the conditions under which combinations of known designs can be considered novel.
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Delhi High Court Bars JK Cement from Using Akzo Nobel’s Trademark
In an important decision, the Hon’ble High Court of Delhi has restrained JK Cement Ltd. (‘JK’) from using the trade mark “WEATHER SHIELD” in relation to cement.
Akzo Nobel Coatings International B V (‘Akzo Nobel’), an international conglomerate, owns one of the world’s most popular paint brands, DULUX which it uses as a standalone mark and in conjunction with its other reputed marks such as WEATHERSHIELD and VELVET TOUCH. Akzo Nobel filed a suit alleging that JK’s use of the mark WEATHER SHIELD for its cement products amounts to infringement and passing-off.
Rejecting JK’s defense that the mark WEATHERSHIELD is non-distinctive and descriptive, the Court held that Akzo Nobel has prima facie established that the mark WEATHERSHIELD has acquired extensive reputation, both in India and abroad, on account of long and continuous use and extensive marketing. To arrive at this finding, the Court relied on the dual test as articulated in McCarthy on Trademarks and Unfair Competition, namely, the “degree of imagination test” and “competitors’ need test”, which was followed in “Anil Verma v. R K Jewellers S K Group & Anr.” [(2019) SCC OnLine Del 8252]. The “degree of imagination” test requires the court to adjudicate whether a particular mark describes the quality or characteristics of the product or is merely suggestive of products or services. In case of difficulty in making an assessment whether the mark is ‘descriptive’ or ‘suggestive’, then registration of the mark will tilt the case in favour of the plaintiff. The second element of “need of competitors” is the degree to which a competitor, i.e. the defendant requires the same word to describe their goods, or whether there were alternate ways of describing them. Noting that that these two tests are interlinked, the Court observed that if more imagination is required to associate a word with a product in relation to its descriptiveness, the defendant can always adopt an alternative terminology. If the degree of imagination required is higher, the need of the competitor, would be lower.
Applying the above tests, the Court held that the mark WEATHERSHIELD is a coined word having only elements to suggest that the product would shield against weather, but on an overall assessment it cannot be said to be descriptive. The Court further observed that while ‘weather’ and ‘shield’ are two commonly used words, their combination in ‘WEATHERSHIELD’ is unique and distinctive. The Court also held that given that the defendant has attempted to seek registration of the mark ‘WEATHER SHIELD’ as part of the device, it cannot now allege that the said mark is generic.
JK’s argument that its goods being cement are different from Akzo Nobel’s goods being paints was also rejected by the Court. The Court held that the rival goods are allied and cognate and are in fact complementary to each other. The Court relied upon the ‘Aunt Jemima Doctrine’ (Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 2nd Circuit) which stipulates that a mark is protected on goods that buyers would be likely to think came from the same source as plaintiff’s goods.
Based on the above, the Hon’ble Court held that JK’s use of the mark WEATHER SHIELD in relation to cements amounts to infringement and passing off and thus violates Akzo Nobel’s rights in the mark WEATHERSHIELD.
Akzo Nobel was represented by Prashant Gupta, Jithin .M. George and Udit Tewari of K&S Partners.
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Delhi High Court’s Progressive Rulings Favor Microsoft in Software Case
In a recent decision by the Delhi High Court, in the case of Microsoft Technology Licensing, LLC v Assistant Controller of Patents and Designs, the Court reaffirmed that the Guidelines for Examination of Computer Related Inventions (CRI), 2017 (CRI Guidelines 2017), which eliminated the novel hardware requirement, must be applied to determine the patentability of software-related inventions.
Overturning the refusal decision of the Assistant Controller of Patents and Designs (Controller), the Court directed the grant of Microsoft Technology Licensing, LLC‘s (Microsoft) subject patent application (application).
The case revolved around Microsoft Technology Licensing, LLC’s (Microsoft) application for a novel reversible 2D overlap operator to improve the encoding process while maintaining compression quality. This application was rejected by the Controller in 2019.
Microsoft in its appeal finally before the Court, argued that their invention was not a mere computer program but a technical solution to a specific problem. They further contended that the refusal was based on the outdated Guidelines for Examination of Computer-Related Inventions (CRI), 2016 (CRI Guidelines 2016), which required novel hardware to overcome the exclusion of patentability under Section 3(k) of the Patents Act. However, the CRI Guidelines 2017 removed this requirement.
The Controller argued that the invention was solely performed by means of a computer program in C language and being software-based, it squarely falls under the non-patentable category of “computer programs per se” of Section 3(k) of the Patents Act, 1970.
The Court, however, referenced a recent judgement in an SEP dispute, Lava International Ltd. v Telefonaktiebolaget LM Ericsson, to emphasize that an invention incorporating computer programs or algorithms can be considered patentable if it significantly enhances hardware functionality and demonstrates a tangible technical effect or advancement. It must also meet other criteria such as novelty, inventive step, and industrial application.
Additionally, the Court referred to the recent cases of Microsoft Technology Licensing, LLC v The Assistant Controller of Patents and Designs, and Raytheon Company v Controller General of Patents and Designs, to reiterate the inapplicability of the 2016 CRI Guidelines for assessing patentability, and the removal of the novel hardware requirement.
In light of these precedents, the Court observed that the invention has real-world applications and significantly enhances the functionality of the hardware components by enabling efficient and reversible digital media data compression. This directly contributes to reduced storage requirements during processing and hence improves system performance and efficiency of the hardware. Thus, the Court concluded that the application in question did not fall under the exclusions of Section 3(k) and met the criteria for patentability and directed the Controller to grant the application.
The judgement yet again underscores the importance of recognizing technical contributions and practical applications of software inventions, rather than dismissing innovations based solely on their software components. This decision exemplifies the Indian courts’ commitment to ensuring that innovative software-led products and solutions are supported and protected, to foster an environment of technological advancement.
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Suppressed Fact Must be Material to allow revisitation of interim injunction
In the case of Novartis AG & Anr. v Natco Pharma Limited, the Delhi High Court dismissed an application by the defendant, Natco Pharma Limited (Natco), an Indian pharmaceutical company, seeking vacation of the interim injunction granted to Novartis AG (Novartis) in 2023 in the ongoing patent infringement suit against Natco.
Novartis is suing Natco for infringing its Indian patent for Ceritinib, a protein kinase inhibitor used to treat a certain type of lung cancer, alleging that Natco was manufacturing and selling a generic version of Ceritinib without a license. In January 2023, the Court granted an ad-interim injunction against Natco, restraining them from exploiting the suit patent till the disposal of the infringement suit.
Natco then challenged the validity of the suit patent asserting anticipation and obviousness of the claims based on prior art including patents belonging to other pharmaceutical companies such as AstraZeneca, Nigel and Novartis as well.
Natco also argued that Novartis suppressed material facts by not disclosing the filing and subsequent rejection of a divisional application related to the suit patent during the interim injunction hearing. Natco contented that the divisional application was rejected as it did not meet the statutory criteria. Therefore, the rejection should not be seen as mere abandonment and Novartis had a responsibility to disclose these facts as this would have significantly impacted Novartis’s attempt to secure an interim injunction.
Novartis countered that the divisional application was not pursued due to strategic reasons and thus, did not impact the validity of the suit patent. They asserted the refusal did not constitute an adjudication on merits.
The Court dismissed Natco’s application for the vacation of the interim injunction while making the following observations:
- Analysis of Markush claims: It was concluded that the general Markush formula in the prior art did not enable the synthesis of Ceritinib, showing that Ceritinib was not obvious from existing patents;
- Inventive step and therapeutic advantage: The inventive step in creating Ceritinib was highlighted, noting its unique structural modifications and therapeutic advantages, such as fewer side effects, emphasizing the non-obvious nature of Novartis’s patent;
- Merits of the refusal of divisional: Novartis’s divisional application was not rejected on its merits; rather, Novartis chose not to pursue it. This does not prevent Novartis from contesting the validity of the suit patent challenged by Natco. Even if the refusal were on merits, the Controller's decision is not binding on the Court. The Court's independent analysis determined that the suit patent is not vulnerable to invalidity on any grounds raised under Section 64 of the Act, which covers reasons for revoking a patent, such as lack of novelty or obviousness;
- Revisitation of injunction order: Under the second proviso to Order 39, Rule 4, Code of Civil Procedure (CPC), the injunction order cannot be revisited unless there is a change in circumstances or the order causes hardship to the defendant, which was not the case here;
- Suppression of facts: Revisiting the interim injunction order on the grounds of suppression of fact is only warranted if the disclosure could alter the case's outcome. In this instance, the non-disclosure of the divisional application's status did not meet this criterion; and
The Court also delved into the meaning and scope of “suppression of material act” referring to the Supreme Court judgement in SJS Business Enterprises Pvt Ltd v State of Bihar which held:
“13. As a general rule, suppression of a material fact by a litigant disqualifies such a litigant from obtaining any relief. This rule has been developed to deter litigants from abusing the process of the court by deceiving it. However, the suppressed fact must be material in the sense that its disclosure would have affected the merits of the case. It must be a matter significant for the court’s consideration, irrespective of the view the court might have taken [R. v. General Commissioners for the purposes of the Income Tax Act for the District of Kensington].”
The Court thus clarified that only the suppression of a fact that would alter the outcome of the case if disclosed can be regarded as a material fact, justifying a revisitation of the order of interim injunction.
The Court’s stance in this case indirectly suggests that despite the Controller’s thorough examination, the Court’s prima facie assessment could still supersede them. In this case, the Court’s prima facie assessment seems to have weighed heavily, indicating that it is critical to present all relevant information during legal proceedings, more so in patent enforcement proceedings.
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Delhi High Court Backs Microsoft for Clarity & Global Standards in Patent Cases
In Microsoft Technology Licensing LLC v The Assistant Controller of Patents & Designs, The Patent Office, the Delhi High Court highlighted the necessity for procedural fairness and clarity in the patent examination process to align with principles of natural justice and international patent standards.
Appellant, Microsoft Technology Licensing LLC (Microsoft) filed a patent application for an invention related to a method of securing communications through operations of a computer system that encompasses plurality of host devices interconnected by a network, organized into enclaves. The Assistant Controller of Patents & Designs (Controller) rejected the application on the grounds of non-compliance with Section 10(4) and Section 2(1)(j) of the Indian Patents Act, 1970 which deal with the sufficiency of the invention’s disclosure and the lack of inventive step, respectively.
Microsoft argued that the objection regarding sufficiency of disclosure under Section 10(4) was not maintainable due to lack of proper reasoning in the First Examination Report (FER) and complete absence from the Hearing Notice. Furthermore, they highlighted procedural irregularities in the citation of prior art documents, which were not mentioned in the Hearing Notice and the FER. Microsoft also pointed out that the corresponding application in Europe had been granted by the European Patent Office (EPO) where the prior art documents cited by the Controller were not considered obstacles to patentability. Lastly, Microsoft argued that the cited prior art documents did not disclose their invention, and the Controller had failed to provide sufficient reasoning to support his finding. All these aspects were cited as violations of the principles of natural justice.
The Court concurred that the deficiencies in the complete specification identified by the Controller, must be articulated with clarity and should be conveyed properly to an applicant. The Court further highlighted the importance of Section 10(4) and observed that the Controller’s conclusion that a specific claim of the invention fails to meet the standards of Section 10(4) of the Act, without a detailed exposition of the non-compliance, is not legally tenable.
The Court also noted that there are procedural irregularities in the refusal order which it deemed to “undermine the fairness and integrity of the examination process, being violative of principles of natural justice.” The Court clarified the importance of ensuring that an applicant is provided with a fair chance to address any deficiencies identified in their application, and/or to present arguments countering the objections raised.
The Court recognized that the Indian Patent Office (IPO) is required to examine patent applications independently, without being bound by decisions made in corresponding foreign patent applications. However, if the objections and citations align with those considered in foreign jurisdictions in such applications, then the resolution of these objections and the granting of a patent should be considered as a precedent with persuasive value while deciding patentability of an Indian application.
Based on these observations, the Court overturned the Controller’s decision and remanded the matter for fresh consideration. The Court instructed the Controller to issue a hearing notice, clearly delineating any objections and render a decision within four months from the date of the hearing.
This judgment highlights the importance of procedural fairness and adherence to the principles of natural justice while examining patent applications. It re-emphasizes the need for clear and specific articulation of objections, ensuring that applicants have a fair opportunity to address such concerns. Lastly, the judgement recognizes the relevance of decisions provided by foreign jurisdictions in patent applications while assessing the inventiveness and patentability of an invention.
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Concerns over handling of personal data by foreign-owned/funded entities
In a recent Public Interest Litigation (PIL) addressed by the Delhi High Court, Ashwini Kumar Upadhyay v Union of India, a critical spotlight was cast on the practices of foreign-owned companies that collect personal information through travel booking platforms in India.
This judgment underscores the significant challenges and stringent requirements for personal data protection under Indian law, emphasizing the need for all international corporations to adhere closely to Indian personal data protection regulations.
In early 2024, a PIL was filed by Ashwini Kumar Upadhyay (Ashwini), highlighting concerns about the collection of personal data (including Aadhaar – India’s unified identification system that contains demographic and biometric data, and passport details) by foreign-owned travel companies operating in India. This extensive reach of data collection extends to both ordinary citizens as well as high-profile individuals such as legislators, ministers, judges, military personnel, government officials, and their families. Furthermore, several of these companies are partially or fully owned by Chinese investors raising concerns of potential misuse of personal data. The PIL therefore, pressed for enhanced privacy protection of personal data, both domestic and foreign, amassed by travel companies during booking processes.
Referring to the 2017 Justice K.S. Puttaswamy (Retd.) vs Union of India case, which established privacy as a fundamental right under Article 21 of the Indian Constitution, the petition reinforced the fundamental right of privacy. Notably, Section 3 of the Digital Personal Data Protection Act, 2023 (DPDPA) was also highlighted in the petition, which extends its jurisdiction to handling digital data within India, regardless of where it is processed.
However, in the decision dated April 3, 2024, the Division (two-judge) Bench disposed of the petition without delving into the specific complaints, reasoning that Ashwini had not filed any representation with the Union of India –– which is typically required before approaching the Court. The Court thus allowed Ashwini the liberty to raise this grievance with the government. Additionally, the Court clarified that it has not commented on the merits of the issue.
While the Court’s decision to not delve into the merits of the case leaves many questions unanswered, it signals the pressing need for a comprehensive administrative and legal framework to ensure the protection of personal data across the wide spectrum of both domestic and international businesses. It highlights the need for businesses to comply with data protection laws and the potential reputational risks associated with the mishandling of personal data. For policymakers, this case is a reminder to tighten data privacy laws and ensure the robustness of their implementation to address challenges arising from businesses handling large volumes of personal data.
Milind Yadav and S Chandrasekhar are colleagues from K&S Digiprotect Services Pvt. Ltd, an affiliate of K&S Partners which delivers premier consultancy in data privacy, information security, and digital estate management.
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Google penalized by Delhi High Court for misrepresenting disclosures
In a notable judgment in early April, the IP Division of Delhi High Court dismissed Google LLC’s (Google) appeal against the rejection of its patent application by the Assistant Controller of Patents and Designs (Controller), and imposed a fine of Rs 1 lakh (~USD 1,200) on the tech giant for presenting incorrect information and failing to disclose critical details about its corresponding applications in Europe.
In 2007, Google filed a patent application before the Indian Patent Office (IPO) for its technology that enables users to manage seamless instant messaging across different smart devices like desktops and PDAs, irrespective of the device. The application was rejected by the Controller based on lack of novelty and inventive step in view of prior art.
Aggrieved by the impugned order, Google appealed before the erstwhile Intellectual Property Appellate Board (IPAB). After the dissolution of IPAB in 2021, the case was transferred to the Delhi High Court where it was eventually heard in December 2023. During the proceedings involving detailed arguments on novelty and inventive step by both sides, the Court inquired about the status of the corresponding patent applications in other countries. Google responded by stating that the US and Canadian patent applications were granted, while the European patent (EP) application was abandoned. The IPO’s Counsel refuted this by pointing out that the EP application had in fact been rejected on the basis of lack of novelty and inventive step and not abandoned. Court also found that a divisional application with the identical title as that of the rejected EP application had also been filed and its status was also disclosed as “abandoned”, when in fact it was also rejected on the same grounds.
Taking serious note of Google’s conduct in the proceedings, the Court noted that Google had misrepresented facts to the IPO as well as the Court which also breached its duty of disclosure under the Patents Act, 1970 (Act).
The Court finally dismissed the appeal on merits for not meeting the novelty and inventive step requirement. Additionally, the Court ordered Google to pay costs of INR 1 Lakh (~USD 1,200) for presenting wrong facts to the Court and not meeting the disclosure requirements under the Act.
This judgment re-emphasizes the necessity for applicants to provide complete and accurate information throughout the application process, especially concerning information related to corresponding foreign patent applications, which may be material to the grant.
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Delhi High Court awards Ericsson $29 million in SEP case
K&S’ latest article written by Pramod Kumar, Naveen Suriya, and Partner & Sanjeev Kumar Tiwari which analyses the Delhi High Court’s landmark decision to award Ericsson USD 29 million in damages, the highest SEP-related damages awarded in India, for the Patent Lawyer’s newsletter.
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Asserting Patent Infringement with the help of Doctrine of Equivalence
The overarching issue in SNPC Machines Private Limited & Ors. v. Mr. Vishal Choudhary revolves around the application of the doctrine of equivalents to determine patent infringement, focusing on whether functional similarities between two competing brick-making machines constitute a violation of patent rights, despite differences in their physical designs and mechanisms.
In April 2024, the plaintiff, SNPC Machines Private Limited & Ors. (SNPC), filed an infringement suit related to brick-making machines against defendant, Vishal Choudhary (Vishal Choudhary), sold under name of Padma Brick Making Machine in the Delhi High Court. The suit sought “permanent injunction” restraining Vishal from using, making, manufacturing, offering for sale or selling or importing impugned brick-making machines.
The suit patent in question is SNPC’s mobile brick-making machine that molds and lays bricks as it moves, controlled by an operator from a cabin. SNPC claimed that Vishal’s machine is doing the same work, in almost the same manner to accomplish the same results as SNPC’s brick-making machine.
However, Vishal contented that there were distinct differences between the two – Vishal’s machine lacked a cabin and steering mechanism, was designed to be towed by a tractor instead of an integrated mobility system like SNPC’s machine and utilized kinetic energy for operation, in contrast to the electrical energy powering SNPC’s machine.
Vishal argued that since their machine did not include every element specified in the patent claims, they did not infringe on the suit patent, invoking the ‘all elements rule’ as a defense. Furthermore, they raised the issue of prosecution history estoppel, stating that SNPC has previously focused only on roller and die assembly matters, which helps in shaping and forming the bricks, whereas now it was also emphasizing the machine’s integrated mobility.
SNPC countered stating that such differences were “trifling and insignificant” and that Vishal’s machine performed absolutely no function while it was stationery, and therefore included wheels to ensure mobility. They invoked ‘the pith and marrow of the invention’ principle and urged the Delhi High Court to not focus only on the “literal infringement”. Furthermore, they urged the Court to apply the “Doctrine of Equivalents”, to check whether the substituted element in the infringing product does “the same function” in substantially “the same way” to accomplish substantially “the same result” (triple identity test). In other words, SNPC claimed that Vishal had merely replaced the integrated mobility of SNPC’s machine with the tractor, to achieve exactly the same result.
The Court concurred with SNPC that the Doctrine of Equivalents should be applied, using the triple identity test, to determine if Vishal’s machine performs the same function in the same way to achieve the same result as SNPC’s product. The doctrine suggests that an invention can infringe on a patented invention if it functions almost the same way and produces a similar result as the patented invention, even if there may be minor differences between the elements or features of the two products. In other words, if the infringing product is equivalent to the patented invention in terms of its functionality, it may still be considered infringing.
Further the Court noted that while there were differences between SNPC and Vishal’s machine, these differences did not detract from the fundamental aspect of the invention – i.e., the mobility to ensure mobility of the assembly, albeit through different mechanisms. The Court concluded that these differences, according to the doctrine of “the pith and marrow”, were integral to the core functionality of the invention. The Court further interpreted that, without “mobility” the Vishal’s machine would serve no purpose considering it had a roller and die mechanism as well, therefore did not absolve them of infringement.
The Court considering all the facts and evidence, submitted granted a interim injunction in favor of SNPC, restraining Vishal from manufacturing and selling brick-making machines similar to the Plaintiffs’ patented brick-making machines. By focusing on the essential functionality of the patented invention, the Court helped protect SNPC against infringement, promoting innovation and fair competition in the market.
This judgment highlights the importance of the doctrine of equivalence in patent infringement cases, where there are two similar products and the question is whether one product performs the same function in the same way to achieve the same result as the patented invention, despite minor differences in their elements.
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Delhi High Court Restricts Sale of Refurbished Goods for ‘Reverse Passing-Off
Reverse passing off is not something that courts encounter every day. It occurs when a defendant purchases a plaintiff’s product, repackages, and sells it under the defendant’s mark or name, resulting in the public coming to associate the qualities of the plaintiff’s product with that of the defendant.
When this adversely affects the goodwill of the plaintiff, it is a reverse passing off. Recently, the Delhi High Court addressed this issue in Western Digital Technologies Inc & Anr vs Geonix International Private Limited.
The plaintiffs, Western Digital Technologies Inc and its subsidiary (Western Digital), manufacture storage devices under the trademarks ‘WESTERN DIGITAL’ and ‘ULTRASTAR’. They sued Geonix International Private Limited (Genoix) for refurbishing and rebranding storage devices, media players, routers, switches, bridges, desktops and solid-state drives (SSDs) and hard disk drives (HDDs), originally manufactured by Western Digital and selling them as new under the trademark ‘GEONIX’.
Upon becoming aware of the violation, Western Digital investigated the activities of Geonix, and the findings confirmed the refurbishment and rebranding of their products by Geonix. It was found that Geonix physically altered Western Digital’s trademarks, serial and model numbers, and other identifiers from the HDDs. Further, they effaced the erstwhile model and serial number on the printed circuit board (PCB) of the HDDs by reformatting the PCB with their own markings. Thereafter, Geonix rebranded and repackaged the discarded HDDs under the mark ‘GEONIX’, and sold these to customers by misrepresenting them to be new and unused HDDs.
Western Digital argued before the Court that this constituted a violation of the statutory rights in their trademarks. Further, they raised the issue of protection of consumer interest from deceptive marketing practices of Geonix. Western Digital demonstrated through technical test reports that despite the reformatting, refurbishing, and rebranding of HDDs by Geonix, Western Digital could still be identified as original manufacturers of the HDDs. This was found when a report was generated by running the HDDs on a device. Based on this evidence, Western Digital argued that Geonix has been unsuccessful in fully erasing the connection between the HDDs and Western Digital, and that, this constituted reverse passing off.
Geonix’s defence that they sell the products under their own brand and that the principle of exhaustion of trademark rights would apply to the case was rejected by the Court. Finding a strong prima facie case, the Court granted an interim injunction to Western Digital and restrained Geonix from altering or selling HDDs bearing the trademarks of Western Digital. The case will now be listed on April 3, 2024.