SpicyIP Weekly Review (February 18 – 24)

Topical Highlight –

Prashant reported on the recent repeal of the Copyright Amendment Acts of 1999 and 2012 by the Parliament. Setting the context with the help of certain case law and legislations, Prashant offers up two divergent interpretations of the effect of this repeal. He notes that one of these could be that the principal act, i.e. the Copyright Act, 1957 survives along with the amendments while the amending act has been repealed by the parliament. On the other hand, another interpretation is that the repeal causes the amendments proposed by the legislation of 1999 and 2012 to be canned and the law then reverts to the way it was before the amendments. Interestingly, this post garnered a couple of rather heated reactions from our readers.

Thematic Highlight –

Next, Divij covered the recent Delhi High Court judgement in the case of Crocs v Liberty and Ors.,  wherein the Court rejected Crocs Inc.’s applications for interim injunctions against the breach of copyright in their registered design. The Court found that Crocs’ designs for its clog-type sandals were ‘liable to be cancelled’. Divij notes the different grounds of cancellation relied on by the Court – i.e. prior disclosure, newness and originality. He argues that while the Court came to the correct conclusion on the ground of prior disclosure, the court’s analysis of ‘newness’ and ‘originality’, was slightly awry given its return to the ‘sweat of the brow’ principle for IPR protection, and also in view of the precedent set by it in Pentel Kabushiki. 

Mathews brought us a case note on the recent judgment of the Division Bench of the Delhi HC in the case of Ansari Bilal Ahmadlal Mohd v. Shafeeque Ahmed Mohammad Sayeed. After taking us through the facts of the case, he notes that the present case is a refresher on legal principles vis-a-vis interim relief in trademark infringement suits. By way of this case, the court reiterated two settled principles – (a) limited interference with trial court’s order by appellate courts during interim stage, and (b) while judging confusion, the test to be applied is that of a person of average intelligence and imperfect recollection.

Next, Prashant covered the recent development wherein we heard of the recently re-registered IPRS sending notices to Indian telecom companies and platforms such as Apple and YouTube, Bharti Airtel, Vodafone etc. demanding royalties. Prashant carries out a thorough analysis of the matter – including deliberation on, interalia, the exact rights administered by IPRS and their scope, the situation before the 2012 amendments and the effect of the 2012 amendments. Especially highlighting the complicated situation created by the 2012 amendments, he argues that litigation is inevitable and should be taken forward by a fresh set of lawyers.

Prashant reported a recent tidbit by one of our readers highlighting the erroneous Form 27 filings made by Wyeth with regard to its Patent for the drug Tygacil, which is also the subject matter of litigation before the Delhi HC. As Prashant notes, there exist serious discrepancies between the sales figures noted on Form 27 and the figures pleaded before the court. Throwing some light on the reasons provided by Wyeth for the error, and consequently the methods adopted by the company for calculating Form 27 data, he argues that the Form 27 filings require thoughtful revision.

Rahul then wrote on the recent order of the Bombay High Court in the case of Shalina Laboratories v. Syncom. As Rahul notes, the case carries precedential value because the Court came down heavily on the defendants for circumventing court orders and engaging in infringing conduct in a persistent fashion, even after having agreed to abide by such orders before the court. Further, it also laid down a set of guidelines to be followed, which Rahul argues sends a clear message to such defaulting defendants.

Pankhuri announced the commencement of registrations for the March 2018 session of IPPro, IPComp and CCIPR courses offered by the Federation of Indian Chambers of Commerce and Industry (FICCI). The last date for registration is February 28, 2018.

Finally, in a follow-up post on last week’s update on the petition filed by Sanjai Gandhi challenging the requirement of the Patent Agent Examinations to practise as a patent agent, Prashant wrote on two more similar petitions filed before the High Courts of Madras and Delhi. While the former has been filed by Wing Commander (retd.) T.R. Mohan, the latter has been filed by advocate Aditya Gupta. Prashant reiterates the arguments he made last week, regarding the possibility of challenging the provision in question.

Other Developments



Indo Arab Chamber Of Commerce and Industries v. M/S. Indo Arab Chamber Of Commerce — Karnataka High Court [February 12, 2018]

Suit was filed for permanent injunction and related reliefs against the infringement of the trade name of the plaintiff, INDO ARAB CHAMBER OF COMMERCE AND INDUSTRIES. The Court found that the plaintiff had been carrying on its activities under this name since 1980, and the defendant adopted its name to freeride on the plaintiff’s goodwill, and held in favour of the plaintiff.

GCMC Gaay Chhap Masala Company v. M/S Radha Kishan Gobind Ram Ltd. — Delhi High Court [February 19, 2018]

The order dealt with an appeal against a lower court order of ex parte ad interim injunction and appointment of Commissioner in s suit for permanent injunction and related reliefs against the infringement of the mark GAI CHAAP. However, since the matter was settled amicably outside the Court, the suit was decreed accordingly and this application was disposed off.

La Opala R. G. Ltd. v. Cello Plast & Ors. — Calcutta High Court [February 16, 2018]

Suit was filed for permenent injunction and related reliefs against the infringement of trademark and copyright. In this order, the Court granted Leave under Clause 12 of the Letters Patent and directed the defendant to show why leave under Clause 14 of the Letters Patent to combine the causes of action should not be granted. The matter was listed for a later date.

Nirav Shah v. The State Of Maharashtra and Anr. — Bombay High Court [February 9, 2018]

A director of a company in the business of protecting and enforcing copyright in case of infringement had submitted a criminal complaint stating that the appellant in this case was involved in copyright infringement of the software JEWELCAD. The software was owned by a company that had authorised the former to enforce their copyright in cases of infringement. The Court noted that despite there being a prima facie case of infringement, the fact that the complainant had approached the entire situation in a capricious manner so as to beget financial gain, and manner and the process which has been undertaken for registering the offences is not sustainable in law. Thus the complaint was quashed.

Kalpesh R Jain and Ors v. Mandev Tubes Pvt. Ltd. — Bombay High Court [February 20, 2018]

Suit was filed for permanent injunction and related reliefs against infringement of the respondent/plaintiff’s design of a metal tube with diversified uses, sold under the trademarks “MT ECO SELF CONNECT” and “MT MEDI SELF CONNECT PLUS”. Dismissing the appeal, the Court held that the no material was brought by the defendants on record showing any prior publication or lack of novelty. Further, the Court upheld the lower Court order based on on the admitted premise of novelty and originality of the plaintiff’s design and in the backdrop of the fact that the defendant was unable to show use of the said product by any one else prior to the plaintiff.

Sun Pharma Laboratories Ltd v. Lupin Ltd & Anr.  — Delhi High Court [February 19, 2018]
Suit was filed for permanent injunction and related reliefs against infringement of the plaintiff’s mark TRIVOLIB. The Court in this order noted, based on the evidence adduced, that the plaintiff has established prima facie case of having built substantial goodwill and reputation in the market, as well as being a prior user and rightholder of the trademark. The Court also found that the impugned mark of the defendants, TRI-VOBIT is phonetically and structurally similar to the plaintiff’s mark. Further the two drugs of the parties are for the same ailment, and thus, the likelihood of confusion cannot be ruled out. The lower court’s grant of interim injunction was upheld.

Upl Limited v. Pradeep Sharma & Anr. — Delhi High Court [February 21, 2018]
Suit was filed for permanent injunction and related reliefs against the infringement of the plaintiff’s patent. The Court noted that a comparison of the claim of the two products reveals that prima facie, the defendant’s product relates to the plaintiff’s patent. The only difference between the plaintiff’s and defendant’s product is absence of a stabilizer which cannot be an essential ingredient. The defendant also sought to revoke the plaintiff’s patent based on a journal article in the public domain, but the Court rejected this argument. The court found that the balance of convenience lies in favour of the plaintiff, and hence the Court held accordingly.

Sri Pranab Modak & Anr v. Tapas Modak & Ors. — Calcutta High Court [February 14, 2018]
This order dealt with an appeal against an interim order in a passing off suit. The plaintiff claimed that the defendant was barred from using the name M/S. SHYAMAL KUMAR MODAK to carry on business according to the compromise decree. However, the Court found no merit in the appeal and dismissed the same.




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