SpicyIP Weekly Review (January, 1-7)

First things first – we at SpicyIP wish our readers a wonderful year ahead!

Our topical highlight of the week is our coverage of the landmark first decision to deal with Summary Judgements under Order 13A of the Civil Procedure Code – by the Delhi High Court in the case of Bright Enterprises Private Ltd. & Anr. v. MJ Bizcraft LLP & Anr. I first summarize the facts of the case, before listing the highlights of the order: The Court stressed on the time period for filing applications – which is the window after the summons are served on the Defendant, and before the Court frames issues in the suit. The contents of the application for Summary Judgment were interpreted as well. In conclusion, it is a very well-reasoned order, especially as the Court notes that the conditions mentioned in Order 13A are to be very strictly followed, to avoid injustice to parties.

Our thematic highlight this week is undoubtedly Vasundhara’s two-part post on surrogate advertisements. In Part I she looks at the definition of surrogate advertising and the relevant laws that govern the same. Part II takes us through relevant judicial decisions, and brings up the important question of whether laws governing surrogate advertising take away the legitimate rights of trademark holders. She notes that the issues that arise in this circumstance are reminiscent of the plain packaging debate. She concludes that the right to use a trademark cannot be an absolute right, and could be restricted over concerns of public health and public interest. She then suggests several tests to determine whether an advertisement can be considered to be a surrogate advertisement.

Starting off the week, Prashant brought to us his analysis on the dismissal of two different lawsuits filed by Pepsico and Rasna for lack of jurisdiction by the Delhi High Court. They had filed the lawsuits under  Section 134 of the Trademarks Act, 1999 – which allows the Plaintiff to sue at its place of business. Prashant reminds us of the Sanjay Dalia case, where it was held that a company can be said to conduct business only at the place of its registered office and not at its branch office – and Section 134 had to be read in consonance with this holding. In the first judgement that concerns Pepsico, Justice Gauba held that since the Plaintiff had only a branch office in Delhi, the High Court lacked the jurisdiction to hear the matter. The reasoning for dismissing the Rasna case was the same as well.

We then had a guest post co-authored by Roshan John and Dr. Sudarshan Rajagopal. In their post, they discuss the changes made to the format of Patent Agent Exam this year and share the answer keys to both Paper-I and Paper-II as prepared by them.

Pankhuri’s post informed us that WIPO has developed a breakthrough tool based on Artificial intelligence for an instant high quality translation of patented documents. Since language often acts as barrier in the dissemination of information, this tool would go a long way in ensuring wider access to knowledge and transparency.

Vasundhara and Ritvik then brought us their analysis of the PayTM and Paypal dispute.  In their post, they analyze PayPal’s opposition of PayTM’s trademark application and examine the possible contentions of both parties and the merits of the case. They highlight in depth a number of possible issues: the likelihood of PayPal’s opposition being rejected on laches, whether PayPal can claim exclusivity over the word ‘pay’, and its bicolour mark, the amount of reputation and goodwill PayPal has in India, and finally – whether PayTM had acquired secondary meaning in India.

Balu ended the week with his post on a series of orders from the Delhi and Bombay High Courts which highlight the need for transparency in the collection of license fee, and direct collecting societies to publish proof of their right to  collect license fee. Balu summarizes the High Court decisions, which provide for interim mechanisms to collect license fee. In conclusion, he notes that the publication of assignment deeds by these societies enable licensees to go through these websites to ensure that they are paying the right entity. He additionally brings up whether the intent of the Copyright Act is being defeated by allowing copyright societies to escape Section 33.

International Developments

  1. Bulgarian radio barred from playing new music in copyright fight
  2. Samsung files patent for dual-lens camera configuration
  3. Bieber, Usher win dismissal of copyright lawsuit
  4. Judge Rules Against Sanofi and Regeneron in Patent Case
  5. Axanar isn’t fair use, judge finds, setting stage for Star Trek copyright trial
  6. Goznak gets patent for counterfeit-proof value document
  7. Apple Gets Temporary Victory with Touchscreen Patent

Inika Charles

Inika is a fifth year student at National Law University, Jodhpur, and is on the founding Board of Editors of the Journal of Intellectual Property Studies. She has a strong interest in Intellectual Property, and is fascinated with the intersection of IP with Technology and Media law. You can contact her at [email protected], or on Twitter: @inikacharles

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