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SpicyIP Weekly Review (January 7 – 13)


Kick starting this week, Pankhuri announced the 14th ITechLaw 2018 International India Conference, to be organized by ITechLaw, from January 31, 2018 to February 2, 2018 at the Ritz Carlton hotel in Bangalore. The conference theme for this year is ‘The Fourth Industrial Revolution: Challenges Ahead for India.’ Notably, ITechLaw is offering special discounted prices to local India delegates and in-house counsel members. All those interested may register here.

Next, we had Pankhuri posting on behalf of Prof. Basheer, who reported the recent Delhi HC ruling on a PIL filed by him in 2015. The PIL outlined serious concerns regarding the filing of “patent working” documents, also known as “Form 27” filings, and also urged the Court to examine the format of Form 27 as it exists at present. Over the course of his report, Prof. Basheer gives us an overview of the contentions raised on behalf of all the parties and finally notes the High Court’s positive ruling – by way of which, the Bench directed the Govt. and the Controller General to file a status report before the next date of hearing, which should also note the planned course of action to rectify the Form.

Subsequent to this report, Prof. Basheer wrote another post on this decision, which doubles as our topical and thematic highlight for this week. In appreciation of the Court’s lucid reasoning, Prof. Basheer reproduces for our perusal, certain portions of the order, which he believes captures the essence of his petition. Before doing so, he takes a moment to highlight and appreciate the Court’s clarification that patent working information cannot be classified as “confidential” and that such information has to be submitted by all patentees. Further, all licensees – including compulsory licensees, have to make Form 27 disclosures as required of them, under section 146(2) r/w Rule 131 of the Patents Act. The full order is now available on our archives here, and I highly recommend it to all our readers.

Other Developments

Indian

Judgments

M/S Bombay Plaster Industries v. M/S Jagdamba Plaster – Rajasthan High Court [January 3, 2018]

The appellant preferred two separate appeals and instituted civil suits against the two respondents for perpetual and mandatory injunction, restraining the defendants from infringing their trademark and copyrights in their goods (plaster of paris). Relying on the Supreme Court’s verdict in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors., the court held that it could not infer “likelihood of confusion” among customers and invoke the doctrine of “Quia timet” in favour of the plaintiffs and relied on the Supreme Court’s observation in T.V. Venugopal v. Ushodaya Enterprises Ltd. that even in regard to generic words, the use of identical word with dishonest intention and bad faith are pre-requisite for passing restraining order against the defendant which could not be established in the case at hand as the court found that the design, style, lay out and arrangement of features in the label trademark of the defendant was per se at variance with that of the plaintiff. Upon being unable to find any error much less manifest error of law and facts for exercising appellate jurisdiction which is limited and circumscribed regarding the grant or refusal of interlocutory injunction as per the holding in Wander Ltd. v. Antox India P. Ltd., Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Skyline Education Institute (India) Private Ltd. v. S.L. Vaswani, the court dismissed both the appeals but directed the trial court to expedite the trial in the suits clarifying that its finding only pertained to a temporary injunction and should have no ramification on the final outcome of the main suits.

Levi Strauss & Co. v. Rajesh Agarwal – Delhi High Court [January 3, 2018]

The appeal arose out of the dismissal of the plaintiff’s suit by the Additional District Judge with which the ex-parte ad-interim injunction in favour of plaintiffs also lapsed. The Plaintiff filed the suit for permanent injunction and damages restraining the infringement of trademark, copyright and passing off in respect of the Plaintiff’s registered trademark “LEVI’S”, “LEVI STRAUSS”, derivatives and labels thereof. The court held that the dismissal of the suit on the ground of the non-filing of the assignment of the trademarks in favour of the Indian Company, was erroneous and contrary to law as the Indian Company along with the Plaintiff ought to be treated as `one economic entity’. The court relied on Harbhajan Singh v. Smt. Shakuntala Devi Sharma and Misrilal Ramratan Mansukhlal v. A. S. Shaik Fathimal to hold that in the absence of any challenge by the defendant to the report of the Local Commissioner, the law does not require its examination, allowed the appeal, awarded costs of Rs. 14,750/- in favour of the plaintiff while disposing all miscellaneous applications as infructuous.

Vishvajeet Sharma v. State Of Punjab – Punjab & Haryana High Court [January 5, 2018]

The complainant had developed a product, named, ‘Divya Kit’, manufactured and registered by him by mentioning phone numbers on the website. The complainant alleged that the product named ‘Divya Kit’ was sold in the market through various advertisements, whereas, the petitioner-accused being Director of the Company selling the product sold it by taking the screen shots of the websites and helpline phone numbers mentioned on the complainant’s website causing financial loss as well as loss to the complainant’s goodwill. The court had held previously that as the applicant was not interested in his bail application, the same was dismissed in default and the interim relief was ordered to be vacated. The court in the present case held that the petitioner should have been given a chance to project his case before the concerned Judge as the matter concerned violation of trade mark or “Passing Off” and thus, set aside the previous order restoring the bail application to its original number.

Texmo Industries v. Taxmo Aqua Engineering India Private Limited  – Madras High Court [December 11, 2017]

The plaintiff, Texmo Industries filed a suit seeking ad interim relief and directions against the respondents as well as a declaration that their trademark was a well-known mark. The parties had been referred to mediation and arrived at a settlement of all issues and the plaintiff’s claim of a well-known mark was not disputed by the respondents. The court held upon perusal of the plaint and accompanying documents that the mark satisfied the requirements and tests of a well-known mark as mentioned in Tata Sons Ltd. v. Manoj Dodia and Ors and World Wrestling Entertainment Inc v. Reshma Collection and Ors, and was entitled to be categorised as such in terms of Section 2(1)(zg) of the Trade Marks Act, 1999 while also referring to Article 6bis of the Paris Convention for the Protection of Industrial Property. The suit was decreed in terms of the mediation agreement, made a part of the order declaring the plaintiff’s trade mark as a well-known mark.

M/S Pvr Ltd v. P.V.R & Sons Engineers Pvt Ltd & Anr – Rajasthan High Court [January 5, 2018]

The plaintiffs filed a suit seeking mandatory permanent injunction restraining the defendants from infringing their trademark and passing off and for rendition of accounts of profit, damages and delivery up. The defendants argued that the court had no territorial jurisdiction in the suit and the plaintiff sought to withdraw the suit with the liberty to re-file it in a court with competent jurisdiction, for which the court directed that the interim order would continue to operate for four weeks and would cease to operate from 5th February, 2018 if the plaint was not filed in the court of competent jurisdiction within the stipulated period or no interim order was passed by the competent court within the said time. The court with these directions disposed of the present suit and all pending applications.

Saregama Ltd v. The New Digital Media & Ors   – Calcutta High Court [22 December, 2017]

The court while distinguishing the agreements in Gramophone Co. of India v. Shanti Films relied upon by the plaintiff held that though non-payment of royalty would not lead to any right assigned to the plaintiff reverting to the defendant, the interim order passed earlier stood modified to the extent that the defendants could not use the sound track of the films Awara Baap, Dhanwan and Babu as they were in any manner till the disposal of the suit. However, the order was vacated regarding 8 films forming category A and category B as the right of the producers to record or re- record works beyond the period of one year is not restricted with respect to these categories and the producer could not be made to suffer double jeopardy by non-payment on one hand and restraint from exploiting the songs on the other. The defendants were directed to render true and faithful accounts of the revenue earned by exploiting the songs in respect of the said eight films and furnish quarterly statement of accounts to the plaintiff.

Aatreyee Nirman Private Ltd. & Anr v. You Tube – Calcutta High Court [January 6, 2018]

The plaintiffs filed a suit for an injunction restraining the defendants from infringing their copyright in the Bengal film “Commrade” by streaming, downloading, reproducing, adapting, distributing etc. in any manner and further relief on the grounds that the respondents by making the said film available for viewing by internet users illegally not only violated the petitioner’s copyright but also the provisions of the Information Technology Act, 2000, read with The Information Technology Rules, 2011. The court held that the petitioners made out a prima facie case and the balance of convenience and inconvenience wholly lay in their favour and granted an interim order of injunction till December 22, 2017.

M/s. Greenply Industries Ltd. v. M/S Gupta Timber Bhandar – Delhi District Court [January 6, 2018]

The court granted ex-parte, ad-interim injunction restraining the defendant M/s. Gupta Timber Bhandar from infringement of Trademark & Copyright and Rendition of accounts etc. in respect of its registered and massively advertised Trade Mark “Green” under Section 135 of the Trade Marks Act, 1999 read with Order 39 Rule 1 & 2 read with Section 151 CPC as the court did not find any distinctive marking of the defendant’s impugned trade mark GREEN VATIKA. The word GREEN along with VATIKA was definitely prima facie deceptively similar to the trademark of the plaintiff. Thus, the court allowed the plaintiff’s application and the defendant was restrained from using the trademark GREEN VATIKA after 30 days from the date of the order. However, there was no restraint order against using trademark excluding GREEN for all products similar to those of the plaintiff company.

M/S. Orient Bell Limited v. M/S. Royal Marketing  – Delhi District Court [January 4, 2018]

The court granted a permanent injunction in favour of the plaintiff restraining both the defendants and their agents from passing off goods in their trademark and copyright ORIENT, infringement of the same in any manner and a mandatory injunction for the destruction/erasure of labels, blocks, dies etc. bearing the impugned trademark and copyright within one month of the pronouncement of judgment as the evidence of the plaintiff was unrebutted, reliable and consistent The court awarded both compensatory and punitive damages in favour of the plaintiff against the defendants for a sum of Rs 1 Lakh each and a total sum of Rs 2 Lakh

Intech Billing Ireland, Mumbai v. Assistant Director of Income Tax (International Taxation) Rg 3(1), Mumbai – Income Tax Appellate Tribunal, Mumbai [January 8, 2018]

The tribunal partially allowed the appeal of the assessee directing the Assessing Officer to grant it credit for Tax Deducted at Source (TDS) contrary to the order of the Disputes Resolution Panel – I, Mumbai as the payment made by RIL to the assessee was not royalty within the meaning of Article 12 of India Ireland Double Tax Avoidance Agreement (DTAA) as a unilateral amendment to Section 9(1)(vi) of the Income Tax Act cannot bring about a legislative amendment to a treaty concluded between two sovereign states and where the provision of the treaty was more beneficial to the assessee, the treaty would prevail over the Act. The tribunal further held that as a computer programme is a ‘literally work’ under section 2(0) of the Copyright Act, for the consideration paid by the cellular operator to qualify as royalty, the cellular operator must obtain all or any of the copyright rights of such literary work. Intec Ireland merely granted Reliance a ‘copyrighted software’ and not the ‘copyright in the software’ (exclusively owned by Intec Ireland) it was held to be not chargeable as per Article 12 of the Treaty. The other grounds for appeal were rejected for being premature.

News

International

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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