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SpicyIP Weekly Review (February 4 – 10)


We’ve had quite an eventful week at the blog –

Prof. Basheer brought us the thematic highlights of this week with updates on the proceedings of the Patent Working PIL instituted by him before the Delhi HC:

  • To begin with, Prof. Basheer provided us a summary of the proceedings before the Court on the 5th of February – noting that his counsels argued for stricter sanctions for errant patentees who refused to comply with filing requirements. He notes that they also suggested for the grant of a “cut-off date” to errant patentees, within which they must complete their filings before being made subject to sanction. Prof. Basheer observes that the court’s direction to the government to come up with steps and timelines for a framework of enforcement against errant patentees resembles a much needed light at the end of the “patent working tunnel”.
  • Next, Prof. Basheer updated us on the intervention application filed by Ericsson and the arguments put forward by them – with their primary argument being that they could not disclose patent working information owing to the operation of certain “club confidentiality orders”. Observing that this argument is wrong in law owing to section 146(2) of the Patents Act, he also notes that the Court has given the Govt. time till the 20th of February to file the affidavit with the specific enforcement framework, as directed by it on the previous date of hearing (referred above).
  • Finally, Prof. Basheer wrote on the intervention application filed by Natco, going over several notable points – including interalia, the motives behind the filing of the intervention application, the misrepresentation of the merits of the PIL and its terms by Natco’s counsel, Natco’s own history with filing compliance and considerations of public interest & transparency that buttress the PIL.

This week’s thematic highlight was a guest post by Eashan Ghosh, adding to Divij’s two-part post on Delhi High Court’s decisions on online jurisdiction in TM cases. To begin with, Eashan goes over the relevant case law on the subject, including:  WWE v. Reshma, Banyan Tree, Icon Health, News Nation & Impressario. Subsequently, he studies the “composite claims” rule as put forward by the SC in Paragon Rubber – i.e. that jurisdiction for passing off and infringement have to be made out separately before the two claims are made. Eashan analyses the impact of this rule on litigants and potential enforcement.

Kick starting the week, Rahul covered a recent judgment delivered by the Delhi High Court, vacating an interim injunction in a design infringement case. The case was instituted by Pentel and involved the alleged infringement of the registered design of ball point pens. Going over the facts of the case, Rahul notes that the key issue before the Court was whether or not the design possessed sufficient novelty or originality – which the Court answered in the negative. Rahul also disagrees with the primary point of criticism to the judgment: that the court cannot go into the question of newness/originality of a registered design unless by way of a petition for cancellation of registration. He argues that as per section 23(2) of the Designs Act, the court’s decision is on sound legal footing.

Next, Prateek brought us another episode in his ‘Choco Wars’ series – Part 1 of his post on the 2005 dispute between Mars and Nestle over the validity of unconventional marks. The dispute revolved around Nestle’s attempt to register the mark “have a break” and Mars’s opposition of the same. Prateek notes that the primary consideration for the Court was whether unconventional marks or those that are used as part of/in conjunction with a registered mark – could be said to have acquired distinctiveness. Stay tuned for Part 2, where he promises to bring us an analysis of the applicable law and the AG’s opinion on the acquired distinctiveness of unconventional marks.

Finally, I reported on the recent Delhi HC judgment vacating an ex-parte interim injunction granted in favour of ‘Three-N-Products’ after the lapse of seven long years. The Court vacated the injunction on the grounds that the mark in dispute “AYURVASTRA” did not infringe any exclusive rights granted in favour of the plaintiff’s mark “AYUR” – given that it was a generic word qualifying for lower level of legal protectability, and also the major differences in the two marks in get-up, style and design. I agree with the court’s observations and also outline some of the perils of ex-parte injunctions granted in IP cases with little regard to legal principles governing the same.

Events & Other Updates

Pankhuri announced the launch of the NPTEL Open Online course titled “Patent Drafting for Beginners” by Dr. Feroz Ali Khader, Chair Professor on Intellectual Property Rights (IPR) at the Indian Institute of Technology (IIT) Madras. The deadline for enrollment is February 12, 2018.

Pankhuri also documented for our readers, our Fellowship Experiences. We remind our readers that the 6th SpicyIP Fellowship is open for applications. The deadline for the same is February 28, 2018. As Pankhuri noted, this year we are also looking for at least two (2) Research Fellows and the deadline for the same is February 10, 2018.

Other Developments

Indian

Judgments

Ahilya Vedaant Education Welfare Society & Anr. v. K. Vedaant Education Society & Anr. — Madhya Pradesh High Court [January 30, 2018]

A suit for permanent injunction against defendant for issuance of groundless threats of legal proceedings in the form of circulars, advertisements or proceeding for infringement of trademark even if claimed to be registered trade mark under s.142 of the Trade Marks Act, 1999 shall be maintainable unless, the defendant satisfies the Court that the trade mark is registered and that the acts in respect of which the proceedings were threatened, constitute, or, if done would constitute an infringement of the trademark.

DDIT (IT)-2(1), Mumbai v. M/S. Reliance Infocomm Ltd. — ITAT Mumbai [February 2, 2018]

Reliance claimed that the ITO had not deducted payments made by them to foreign entities for transfer of software licences from the taxable income. The ITAT identified eight key factors can be very helpful to solve the issue of taxation of royalty payments to non-resident entities. The ITAT also found that in the instant case, the ITO erred in not deducting the payments from royalty income, and held in favour of Reliance.

Lotus Herbals Limited v. The Chief Commissioner Of Custom & Ors. — Delhi High Court [February 2, 2018]

Suit was filed for permanent injuntion and related reliefs against trademark and copyright infringement and passing off of the plaintiff’s mark LOTUS. Defendant No. 2 submitted that the impugned goods had been seized by the customs officials, and also undertook that in the future, no goods bearing the said mark shall be imported without taking specific permission/authorization of the plaintiff. Defendant No. 3 had not appeared before the Court, despite service, and was proceeded against ex parte. The court granted the plaintiff’s suit against Defendant No.3 with actual costs.

Grasim Industries Limited v. Grasim Electricals And Switch Gear Pvt. Ltd. — Delhi High Court [February 6, 2018]

Suit was filed for permanent injunction and related reliefs against the infringement of the mark GRASIM. Based on the evidence adduced, the Court found that there was no authorisation from the plaintiff in favour of the defendant to use the trademark, and the latter had malafidely copied the same. Therefore, the actions of the plaintiff amount to infringement, and since the evidence of the plaintiff was unrebutted, the same was deemed true and correct. Hence, the suit was decreed accordingly.

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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