Others

SpicyIP Fortnightly Review (March 25 – April 7)


The thematic highlight for this fortnight, is Rahul’s post on the recent Bombay HC judgment that held copyright registration mandatory for maintaining an action of infringement. Rahul notes the Court’s flawed reasoning that since, under section 50-A, registration is the only way to inform the public of copyright in a work, this is indicative of legislative intent to make registration mandatory. The Court also applied this reasoning to hold that several other provisions would be deemed unworkable if registration was not held to be mandatory. Rahul disagrees with this reasoning, arguing that not only is this decision entirely against settled principles of copyright law, but is also jurisprudentially flawed – being that the court seems to have interpreted the law in a way best suited to arrive at a desirable outcome.

Pankhuri brought us this fortnight’s topical highlight with her update on the IPO’s recent publication of stakeholder’s comments on Patent Working Issues & Form 27. The IPO had recently invited comments from stakeholders, following a Delhi HC order in Prof. Basheer’s Patent Working PIL, directing it to file an affidavit detailing the time and manner in which it wishes to modify Form 27. Pankhuri notes the diversity of stakeholders, and views put forward. As a post script, she adds that in the Patent Working PIL, a telecom industry association, TEMA represented by Rajiv Kr. Choudhry (analyst at SpicyIP) has filed an intervention supporting the petition and seeking strict enforcement of the patent working disclosure mandate and constitution of an expert committee to suggest necessary reforms.

Next, we had a guest post by Eashan Ghosh critiquing the Delhi HC judgement in the recent case of Ferrero Rocher v. Ruchi International. This case records an award of Rs. 10 Lakhs as damages against the defendant. Noting the staggering amount of damages awarded in a fairly standard trade dress infringement case, Eashan analyses the Court’s reasoning in the backdrop of several cases, chief among these being HUL v. Reckitt Beckinser – which took a whole different view on punitive damages.

In other news, Pankhuri reminded our readers that The World Trade Institute of the University of Bern, Switzerland and the Centre for WTO Studies, Indian Institute of Foreign Trade, India will be conducting the 5th WTI – CWS Joint Academy on International Trade Law and Policy (“Joint Academy”), from June 4 to June 29, 2018 in New Delhi.

Other Developments

Indian

Judgments

  • M/S Telecomone Teleservices India Pvt. Ltd. v. DCIT, Bangalore — ITAT Bangalore [March 23, 2018]
    Appeal was made against the ITO’s decision to exclude the amount paid for acquisition of software from deductible amount for purposes of income tax calculation.  Since no specific infirmity has been pointed out in the order of the CIT (Appeals), the order was confirmed, and the appeal dismissed.
  • Castrol Limited v. Washim Khan — Madras High Court [February 21, 2018]
    Suit was filed for permanent injunction and related reliefs against the infringement of the plaintiff’s mark CASTROL 2T. The Court, on facts found that the impugned mark of the defendant was deceptively similar to that of the plaintiff, and that the plaintiff was the prior and registered owner of the mark, and hence held in favour of the plaintiff.
  • M/S.Adyar Ananda Bhavan Sweets v. Sree Keerthi Bhavan — Madras High Court [March 15, 2018]
    Suit was filed for permanent injunction and related reliefs against the infringement of the plaintiff’s mark ADYAR ANANDA BHAVAN. The Court, on facts found that the impugned mark of the defendant was deceptively similar to that of the plaintiff, and that the plaintiff was the prior and registered owner of the mark, and hence held in favour of the plaintiff.
  • Mr.A.D.Padmasingh Isaac vs M/S.Harshika Food Products — Madras High Court [March 14, 2018]
    Suit was filed for permanent injunction and related reliefs against the infringement of the plaintiff’s mark AACHI. The Court, on facts found that the impugned mark of the defendant was deceptively similar to that of the plaintiff, and that the plaintiff was the prior and registered owner of the mark. Further, the defendant did not appear despite service, and hence the Court held in favour of the plaintiff.
  • Wockhardt Limited vs Maha Avtar Healthcare Pvt. Ltd. — Delhi High Court [March 21, 2018]
    Suit was filed for permanent injunction and related reliefs against the infringement of the mark and trade dress of plaintiff’s product SASMO-PROXYVAN. The defendant appeared initially, but did not appear thereafter. Hence, the evidence of the plaintiff and the averments in the plaint were unrebutted and deemed to be true and correct, as the plaintiff had made out a case of trademark and copyright infringement. Suit was decreed accordingly.
  • B.N. Firos vs State Of Kerala — Supreme Court [March 27, 2018]
    The petitioner challenged S. 70 of the IT Act and a 2002 government notification under S.70 declaring the computer, computer system and computer network specified in the Schedule to the Notification to be “protected systems” under the IT Act on grounds of ultra vires and excessive delegation. The High Court held in favour of the government, stating that SS.2(k) and 17(b) of the Copyright Act have to be read harmoniously with S.70 of the IT Act, and in doing so, it is made clear the power of declaration of a “protected system” would be only in respect of “Government work”, of which the copyright lies with the Government, acknowledged by Section 17(d) of the Copyright Act, 1957. The Supreme Court upheld the decision
  • Ferrero Spa & Anr. v. M/S Ruchi International & Anr.  — Delhi High Court [April 2, 2018]
    Suit was filed for permanent injunction and related reliefs against the infringement of the plaintiff’s product and trade dress of FERRERO ROCHER chocolate. Defendant no. 1 settled the matter amicably outside court, however, Defendant no. 2 did not appear before the Court, and an ex parte interim order was passed against him. Despite service of the same the defendant had not ceased the sale of the impugned product. The Court found in favour of the plaintiff and imposed costs and damages for not following the interim order.
  • Superon Schweisstechnik India Ltd. v. Modi Hitech India Ltd. — Delhi High Court [April 2, 2018]
    Suit was filed for permanent injunction and related reliefs against the infringement and passing off of the plaintiff’s mark VAC-PAC and SUPERON. The court found that a claim of passing off or infringement could not be entertained, as there was no deceptive similarity between the two products, and the defendant used a different trade dress and mark to identify his product. Further, the plaintiff’s argument that the defendant used the word VAC-PAC and therefore infringed the plaintiff’s mark is baseless because it is a descriptive mark which cannot be protected under trademark law.
  • Super Cassettes Industries Pvt. Ltd. v. Good Media News Pvt. Ltd. — Delhi High Court [April 2, 2018]
    Suit was filed for permanent injunction and related reliefs against the copyright infringement of certain films, music and lyrics, against a cable company. The defendant did not appear despite service. The Court found, based on the evidence adduced, that the plaintiff had made out a case of infringement and since the defendant did not appear, the same was deemed to be true and correct. The suit was decreed in favour of the plaintiff.
  • Mr.A.D.Padmasingh Isaac v. Aachi Mess — Madras High Court [March 14, 2018]
    Suit was filed for permanent injunction and related reliefs against infringement of the plaintiff’s marks AACHI/AACHI CHETTINAD RESTAURANT/AACHI KITCHEN. The defendant did not appear despite service. The Court found, based on the evidence adduced, that the plaintiff had made out a case of infringement and since the defendant did not appear, the same was deemed to be true and correct. The suit was decreed in favour of the plaintiff.
  • Jaideep Mohan v. Hub International Industries & Anr. — Delhi High Court [April 5, 2018]
    Suit was filed for permanent injunction and related reliefs against infringement of the plaintiff’s mark BLACKSMITH in the alcoholic beverages market. The defendant was using the mark GOLDSMITH with respect to the same product. Dismissing the suit the Court found that there is no scope of deceptive similarity between the two marks which is likely to cause confusion in the minds of the consumers and the plaintiff had made no case for infringement.
  • Delhi Public School Society v. DPS World Foundation & Anr. — Delhi High Court [April 5, 2018]
    This order dealt with an appeal against a lower court order restraining the defendants from using the trademark/name DPS. The Court found that based on principle of hierarchy of benches, the order cannot be disturbed, and dismissed the appeal.
  • Maya Sharma v. Unique Law Publication House & Ors. — Delhi High Court [April , 2018]
    Suit was filed for permanent injunction and related reliefs against infringement of the plaintiff’s mark, UNIQUE and UNIQUE20. Previously, an ex parte interim order was passed against the defendant, and the matter was referred to mediation as well, but with no avail. The Court found, based on the evidence adduced, that the plaintiff had made out a case of infringement and since the defendant did not appear, the same was deemed to be true and correct. The suit was decreed in favour of the plaintiff.

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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