SpicyIP Weekly Review (December 10-16)

Bringing in this week’s thematic highlight, Prateek discussed a recent WHO Discussion Document with respect to seizures of medicines in-transit. The document has reportedly proposed “possible justifications for an intervention on the ground of public health”. Over the course of his post, Prateek deals with the discussion document and some of the primary issues with regard to confiscation of in-transit drugs. He identifies some of these issues as being – restricted access of affordable drugs to developed nations, infringement of the sovereignty of the destination country when medicines are seized in transit, and other jurisdiction related concerns. Stay tuned for Part II of the post, which will deal with the international legal regime governing the subject.

Our topical highlight was Prof. Basheer’s post on the recent, landmark SC decision in the case of Toyota v. Prius. Prof. Basheer notes that this case brings a notable development for Indian trademark law, as it reiterates that IP rights are territorial in nature. Among some of the important observations of the court, are: (a) that transborder reputation has to be proved, by evidencing reputation within the territory of India; (b) that evidence of likelihood of confusion is enough, without need for evidence of actual confusion. Prof Basheer also outlines some of his concerns with the judgement, before concluding that notwithstanding the former, the judgement overall is jurisprudentially sound, lucid and well-reasoned.

Pankhuri began the week by announcing a call for applications by National Law University, Delhi, for the post of Research Fellow (Law) at the Centre for Innovation, Intellectual Property and Competition (CIIPC), at its campus in Dwarka, New Delhi. The deadline for sending applications is December 18, 2017.

Prateek brought us the second part of his analysis on the order in Mattel v. Aman Bijal Mehta. In his post, Prateek first discusses the theoretical basis of a TM dilution claim. He does so with the help of a brilliant illustration. Subsequently, he applies this to the facts of the case at hand – and analyses the dilution of the “Barbie” TM.

Next, Divij wrote on the recent Madras HC order in the case of Thiagarajan Kumararaja v. M/s Capital Film Works. In this case, the Madras HC has held that the right to “dub” a film in another language, vests with the producer of the film, subject to an agreement to the contrary. As Divij notes, this is the first time a court has explicitly deliberated on ownership of rights with regard to dubbing of a film. After taking us through the basic provisions of law as applicable to the present case, he notes inter alia that the court has understood “dubbing” as falling within the ambit of “communication to the public” – which right lies with the producer of a film. He concludes by arguing that, albeit the decision is sound, it does not throw enough light on the overall scope of producers’ rights.

Finally, Pankhuri announced that the Intellectual Property Law Practitioners Association (IPLPA) along with The International Association for the Protection of Intellectual Property (AIPPI) is hosting the T.N. Daruwalla 4th Memorial Lecture at 6 p.m. on 19th December, 2017 in Mumbai (M.C. Ghia Hall, Kalaghoda). Interested participants may register by sending an e-mail to [email protected]

Other Developments



Gautam Gambhir vs D.A.P & Co. & Anr, Delhi High Court [13 December, 2017]

We have earlier reported about a suit filed by the cricketer Gautam Gambhir against a Delhi based resto-bar from using his name as a tagline. Justice SP Garg on Wednesday dismissed Gambhir’s plea against the two pubs Ghungroo and Hawalat in Punjabi Bagh area. The cricketer alleged that use of his name would mislead the public to believe that the restaurant is associated with him. However, the Court rejected the petition as the name of the owner of the pub is also Gautam Gambhir.

Novex Communications v. City Bar, Delhi District Court [8 December, 2017]

The court granted a permanent injunction restraining the “defendants and anyone acting on their behalf from publicly performing or in any manner communicating the sound recording of the songs copyrighted by the plaintiff to the public or allowing their premises to be used for the said purposes without appropriate license.”

Nike Innovate C.V v. Ashok Kumar, Delhi District Court [8 December, 2017]

The District Court granted a permanent injunction against the defendant for trading in goods bearing a mark that was deceptively similar to ‘Nike’. The Court awarded damages to the tune of Rs. 1 Lakh.

Royal Orchid Hotels Ltd. v. Kamat Hotels, Supreme Court [14 December, 2017]

The Supreme Court heard a Special Leave Petition (SLP) filed by ROHL. It disposed the petition and granted a permanent injunction in favour of Kamat Hotels, restraining Royal Orchid Hotels from using a mark identical/similar to ‘Orchid’. This order has come after a long drawn legal battle between the two parties, at various for a including both the IPAB and the Madras High Court.



Sreyoshi Guha

Sreyoshi is a law student at Symbiosis Law School, Pune. Her favourite thing about Intellectual Property Law is Copyrights. She can usually be found doing one of three things: dog-earing her favourite pages of her books, looking up a Zomato menu, or day-dreaming of the day she'll finally meet John Mayer. She doesn't have any notable achievements, except probably that one time when she encountered a crazy pigeon, and lived to tell the tale. Send her your thoughts at: [email protected]

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