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SpicyIP Weekly Review (December 17-23)


Merry Christmas to all our readers! We’ve had an exciting week at the blog, with some major developments breaking on the blog:

The topical highlight for the week is Prashant’s post on IPRS’s re-registration as a copyright society. This comes in the aftermath of a long and bitter battle for the control over the copyright society and its functioning, polarizing artists and music labels. The registration is the outcome of a reconciliation between the two groups, forged particularly through the efforts of Javed Akhtar, elected as chairman of the society. As Prashant notes, the developments of how the society functions and administers rights under the Copyright Act will be very interesting to watch.

The thematic highlight is Eashan Ghosh’s guest post on the Christian Louboutin’s trademark dispute, where the Delhi High Court recognized Louboutin’s ‘Red Sole’ as a well-known trademark in India, for the purpose of the Trademark Act. In his thorough analysis, Eashan breaks down the issues with the High Court’s analysis – in particular, the failure of the court to refer to the Trademark Rules which specifically provide guidelines for the trademark registry to determine well-known marks. Secondly, Eashan discusses the Court’s metrics for determining damages for infringement, in particular, its decision to reject punitive damages.

Prof. Basheer brought us news and his analysis of a recent brief filed by the US Government in a Federal Court, where it has specifically argued that patents should not be classified as ‘property’. As Prof. Basheer notes, the US government’s stand indicates a far more IP-minimalist outlook than India, even though the US is a standard for high levels of IP protection.

Finally, Balu updated us about a PIL filed in the Delhi High Court for making acts and lesiglaions more easily publically available. Balu notes that the Copyright Act’s provisions, Specifically Section 52(1)(q), prevent universal access to legislations, which the public ought to have a right to, by requiring any fair dealing of government legislations to also incorporate an additional element of originality.

Events:

Pankhuri informed us about a call for papers from the Journal of Intellectual Property Studies at NLU Jodhpur. The last date for submissions to the journal is January 20, 2018.

Boehmert & Boehmert, Patent Attorneys, Germany will be conducting a workshop on Trademark Registration, Protection and Enforcement in Europe on Monday, January 22, 2018 in Mumbai. The leading law firm will be conducting sessions on a number of trademark issues in Europe, including counterfeit, managing non-traditional trademarks, trade dress, implementing effective registration processes when expanding into new markets and litigation procedures and strategies.

Other Developments

India

Judgements

  1. Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels Private Limited— Delhi High Court [December 13, 2017]
    Suit was filed for permanent injunction and related reliefs against infringement of mark GETMYTRIP as being deceptively and phonetically similar to the plaintiff’s logo and brand name. This order dealt with the contention that the plaintiff had not impleaded Hermes, one of the agents of the defendant, in this suit; who the plaintiff ha permitted to use the impugned mark. The court found that the plaintiff had suppressed such a material fact when they had sought reliefs against all the agents of the defendant, and found that no case for an interim injunction was made out. injunction was dismissed.
  2. Ats Infrastructure Limited v. Platonic Marketing & Anr— Delhi High Court [December 12, 2017]
    Suit was filed for permanent injunction and related reliefs against trademark infringement and passing off of the mark ATS. The plaintiff argued that by virtue of continuous and extensive use (20 yrs), it has acquired reputation and goodwill as well as consumer recognition. The court accepted this averment based on evidence adduced by the plaintiff and found that there was no explicit authorisation by the plaintiff to the defendants to use the mark. Moreover, as the plaintiff’s evidence has gone unrebutted, the contentions raised by them were deemed to be true and correct. The suit was decreed accordingly.
  3. M/S Inter Ikea Systems BV v. Akea Furniture Solutions— Delhi High Court [December 11, 2017]
    Suit was filed for permanent injunction and related reliefs against the trademark infringement of the plaintiff’s mark IKEA. The court had previously passed a detailed injunction order granting the plaintiff’s prayers. In this hearing, the defendants stated that they had stopped using the mark AKEA and communicated the same to all relevant 3rd parties. Hence the suit was decreed accordingly.
  4. Super Cassettes Industries Private Limited v. Rcn Digital (Raj Cable Network) — Delhi High Court [December 8, 2017] and Super Cassettes Industries v. Rajasthan Infotech Media Pvt. Ltd. — Delhi High Court [December 6, 2017]
    Suit was filed for permanent injunction and related reliefs against unauthorized and unlicensed use of its copyrighted works on the defendant’s channel. The defendant did not enter appearance despite service, and an ex parte interim injunction was given in favour of the plaintiffs. On bare perusal of the evidence adduced by the plaintiff, the Court found that the defendant was fully aware that the copyright of the work belonged to the plaintiff. Since, the averments of the plaintiff were unrebutted, they were deemed to be true and correct. Hence the Court held in favour of the defendant.
  5. C. Murali Kannan v. N. Sathish — Madras High Court [November 30, 2017]
    Suit was filed for permanent injunction and related reliefs against the use of the mark SIVA in the water fixtures market. This order was regarding an appeal against the interim injunction by the lower court. It was found that the parties were carrying on business under the same name till 2015 when differences arose, leading to separation of businesses. The court held that when there has been concurrent usage of the mark, and that is the admitted position, an injunction is uncalled for. The appeal was accordingly disposed off without costs.
  6. M/S Hotel Swagath v. M/S Hotel Swagath East Court— Andhra Pradesh High Court [November 28, 2017]
    Suit was filed for permanent injunction against use of plaintiff’s mark SWAGATH on grounds of deceptive similarity. The plaintiff had sought an interim injunction which was denied by the lower court, hence this appeal. The Court observed that that appellant-plantiff had demonstrated the three requirements of an interim injunction and also that SWAGATH was hardly a generic word, and hence allowed the appeal.
  7. Lotus Green LLP v. Renowned Buildtech Private Limited— Delhi High Court [December 4, 2017]
    Suit was filed for permanent injunction and related reliefs against infringement of the plaintiff’s corporate name LOTUS. The court found that in a trademark dispute, if two conclusions are possible, then the Court need not interfere, but if only one conclusion (that infringement is present) then the Court must protect the legitimate owner/ user. Thus, when the plaintiff is the owner of the mark, and the defendant copies its prominent portion in a dishonest manner, then the plaintiff suffers loss, and these actions constitute infringement. Hence the court concluded that the defendant had proven the 3 tests for an interim injunction and granted the same.

News

  1. Songs.pk returns, music industry expresses concern
  2. IPR cases pending in high court: SC seeks data
  3. Delhi court upholds man’s conviction for misusing Pepsi’s name to sell spurious drinks, modifies sentence to 14 days
  4. Facebook reveals data on copyright and trademark complaints

International

  1. The Red Bull colours: no trade mark registration for indeterminate colour combination
  2. Lawmakers Introduce Music Modernization Act, Which Simplifies Digital Licensing and Increases Rates
  3. Canadian Government Triggers Major Copyright Review

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