SpicyIP Weekly Review (June 11- June 17)

(This Weekly Review was written by SpicyIP fellow Sreyoshi Guha)

This week’s thematic highlight was the two-part guest post by Eashan Ghosh on the distinction between an action for trademark infringement under section 29(1) and that under section 29(2) of the Trademarks Act. Part 1 begins by highlighting this distinction as part of the contentions raised during a recent trademark infringement case before the Bombay High Court. Eashan argues that both the sections are embedded in an ‘activity-comparison-condition’ chain that the courts have found difficult to isolate, in practice. He further reproduces the same in tabular form and undertakes a detailed “infringement outcome” analysis.

Part 2 begins by identifying the key difference between the two sections. He notes how this difference stems from one of the outcomes of his infringement analysis and forms the gist of the arguments made in Bombay HC case. He proceeds to explore the difference between the condition/effect of 29(1) and that of 29(2) – by studying the scope of “use as likely to cause deception” vis-à-vis “use as likely to be associated with a registered trademark.” After that, he looks to history and English law for more clarity on this difference. He concludes by noting that section 29(1) exists as a general proposition of law, as against the other subsections, especially section 29(2) – which undertake the “heavy lifting” on the question of TM infringement.

Prashant brought us the topical highlight by updating us about the recent notification of the ‘Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017’. He begins by noting that these rules were notified under the Finance Act and then proceeds with a recapitulation of all the concerns surrounding the provisions of the act. Subsequently, he argues that several provisions of the rules are un-constitutional in view of existing precedent. He particularly finds issue with the appointment and removal criteria as applicable to tribunals. He concludes by hoping for a challenge to the constitutionality of the Finance Act itself.

Rajiv began the week by informing us of the settlement of all pending litigation between Apple and Nokia. Rajiv then traces the suits instituted parallelly by the two companies against each other. He further analyses how one of these suits gave way to an exploration of the practice of patent privateering by Nokia. He concludes by noting that the settlement leaves open discussion on the same, including its anti-competitive effects. These anti-competitive effects can potentially be investigated by the CCI if it takes suo-moto cognizance of the matter.

Next, Prashant brought India’s PIL system under the scanner through a post on the PIL against Whatsapp’s privacy policy. He begins by noting how the PIL, after being dismissed by the Delhi High Court a few months ago, has now found new life before the constitution bench of the supreme court. He then maps the factual history of the case, taking time to mark the fault lines along the way. Among other things, he argues that the PIL from the very beginning was frivolous; that the Supreme Court on appeal, had failed to examine the issue in detail before referring the matter to a constitutional bench. He also notes the discrepancy in the arguments of the counsels appearing for Facebook and Whatsapp. These were thankfully remedied during hearings before the constitution bench. He concludes by observing that the case being before J. Misra, things look bleak for data innovation.

Finally, I ran a post on the passing off claim by the producers of the movie “Veere Di Wedding” against producers of the movie “Veere Ki Wedding”. Through the post, I study the protectability of movie titles as analogous to trademarks. I note how J. Patel passed a well-reasoned interim order and refused to grant the petitioners an injunction. I begin by exploring the law of passing off as applicable to movie titles. I then trace the requirement of satisfaction of the “classical trinity” of reputation, misrepresentation, and damage in a case of passing off – with the bar of reputation being higher for movies with commonplace titles. I conclude by agreeing with the court, that even a movie with a unique title would have to first be made, to satisfy the bar of reputation.

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