SpicyIP Weekly Review (July 8-15)

It’s been an interesting week at SpicyIP!

Thematic Highlight

The second guest post by Prof. (Dr.) N.S. Gopalakrishnan forms the thematic highlight of this week. In continuation to his first post, Prof. Gopalakrishnan states that there has been no report of an individual registering a new variety under the Protection of Plant Varieties and Farmers’ Right Act, 2001 till date. He then proceeds to describe how certain provisions and rules under the Act create confusion with regard to notification of crops and time limit for registration of extant and farmers’ varieties, which benefits seed companies at the expense of farmers. He concludes that there is an urgent need to challenge these rules and notifications to ensure that justice is meted to the farming community.

Topical Highlight

Prashant reported a Delhi High Court judgment whereby the Court upheld the constitutionality of Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013, which gives the government the right to regulate tariff policies. Prashant argues that, under Section 33A of the Copyright Act, 1957, only powers to prescribe rules regarding mode or the timeline of publication have been delegated to the government and hence, the challenged provisions go beyond the scope of Section 33A. He concludes that the task of regulating tariff policies must be not hindered by bureaucratic inefficiency and must be left to the copyright board, an independent judicial body.

Next, Divij covered India’s first post-trial judgment in a Standard Essential Patent suit, delivered by the Delhi High Court. In its judgment, the Court decided the ‘essentiality’ of Philips’ patent positively, and held that the defendants (local manufacturers), by manufacturing standard-compliant DVD players, were infringing this patent. After examining the parties’ arguments and the Court’s reasoning, he concludes that Court’s lack of analysis on important areas like assessing essentiality, forgoing a claim construction, disregarding exhaustion principles and assessing FRAND terms would most likely be challenged via appeal.

Other Posts

Prof. Basheer brought this really interesting news about how a hit Chinese black comedy movie was reportedly inspired by the Supreme Court’s decision in Novartis AG v. Union of India. The movie provides an insight into the life of a cancer patient who started smuggling cheap anti-cancer drugs from India. Prof. Basheer then provides a relook at the 2013 decision of the Supreme Court, wherein it had invoked Section 3(d) and rejected Novartis’ attempt to patent its anti-cancer drug Glivec, since it had not demonstrated any significantly enhanced efficacy over earlier substances. By deciding so, the Court had effectively put an end to evergreening (the practice of making minor developments to existing patented drugs and then claiming secondary patents over those modified drugs).

Next, I wrote a post on a recent Himachal Pradesh High Court judgment which examined the validity of a patent granted way back in 2004. The plaintiff’s patented product had numerous similarities to the traditional kilta (an all-purpose bamboo basket used in Himachal Pradesh for hauling any kinds of goods). Invoking Section 3(p) of the Patents Act, amongst other Sections of the Act, the Court revoked the patent for being based on “traditional knowledge”. I then proceed to analyze the history of the patent grant and expose the lackadaisical attitude adopted by the Patent Office in granting this patent. I conclude my post stating that there is a pressing need for the Courts to define and lay down the parameters of “traditional knowledge” to avoid unnecessary litigation in the future.

Other Developments



The Gillette Company LLC v. Tigaksha Metallics Pvt Ltd & Anr– Delhi High Court [July 9, 2018]

The Court ordered the continuation of the interim injunction restraining the Defendant from infringing the Plaintiff’s ‘WILKINSON SWORD’ trademark for razor blades by using the mark ‘ZORRIK TALVAR’ for the same product, Drawing analogies to the case of Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd., the Court found the balance of convenience in favour of the Plaintiff after explaining at length that using a word sharing the same semantic field for a similar product would amount to infringement and passing off due to the way brand recollection operates in associative memory of consumers, even though the trade dresses were dissimilar.

Insecticides (India) Limited vs Parijat Industries (India) Pvt Ltd – Delhi High Court [July 9, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from using the mark ‘VICTOR 80’ or any mark deceptively similar to the Plaintiff’s ‘VICTOR’ mark for crop protection products, holding that the Plaintiff cannot be dis-entitled on the ground of delay in filing the suit because the Defendant had only been squatting on the ‘VICTOR 80’ mark and even a registered trademark, if not used, cannot qualify as a trademark. Further, the Court held that the Plaintiff cannot be estopped by virtue of a past representation by it before the Registry that the two products in question were actually different because that representation was erroneous and contrary to the Trade Marks Act and there can be no estoppel that goes against the statute.

Hindustan Unilever Limited v. Emami Ltd. & Ors – Calcutta High Court [July 7, 2018] (Case not decided on merits yet)

The Court upheld the Trial Court’s ad-interim injunction on the defendant’s ‘Men’s Fair and Lovely’ ad which was prima facie disparaging the plaintiff’s ‘Fair and Handsome’ product on prime time telecast. The Court observed that the plaintiff’s modus operandi of initiating a disparagement (tort) suit before a Civil Judge as per the CPC for the denigrating comparative advertisement and then seeking leave to present a plaint for infringement of its trademark before the District Court to satisfy Section 134 of the Trade Marks Act, for wrongly using its distinct product as comparison in that advertisement, was procedurally valid. But it has not yet gone into the merits of the case.

Rohit Singh & Anr v. Apple Inc – Delhi High Court [July 4, 2018]

The Court dismissed a plea against Apple for naming its multiscreen software as ‘SPLITVIEW’, which was also the name of the plaintiff’s yet unregistered trademark for similar software. The Court ruled that under Section 27 of the Trade Marks Act, no protection can be granted for unregistered trademarks unless passing off is proved, which was prima facie not apparent. Further, the Court saw no prima facie case for interim relief for injury due to wrongful association, opining that any such association would likely be beneficial to the plaintiff’s reputation.

Xerox Corporation v. Sarita Agarwal & Anr – Delhi High Court [July 2, 2018]

The court granted an ex-parte permanent injunction restraining the Defendants from infringing and diluting the Plaintiff’s trademark ‘Xerox’ and from passing off their goods and services as that of the Plaintiff by carrying on their business under the deceptively similar style and phonetically identical name ‘Zerox’. The Defendants were also directed to transfer the domain  http://zeroxindia.com/ to the Plaintiff.

Lt Foods Limited v. Heritage Foods (India) Limited – Delhi High Court [July 2, 2018]

The Court stayed the present proceedings involving trademark infringement and passing off until final disposal by the IPAB of the applications filed before it by both parties to cancel each other’s trademarks, as both were holding trademark ‘HERITAGE’ registered under the Class 30 for selling rice. It further held that as per Section 124(5) of the Trade Marks Act, 1999, the stay would not preclude the Court from making an interlocutory order to consider interim relief for the plaintiff.

Syed Zakirali S/O Syed Jawarali vs Syed Zahidali S/O Syed Jawarali – Bombay High Court [June 29, 2018]

The Court set aside an Additional District Judge’s decree, holding that the defendant had passed off his bidies as those of the plaintiff by illegally using wrappers/labels that were deceptively similar to those trademarked by the plaintiff. Though the plaintiff had stopped business in 1986 and the defendant had stopped using the disputed labels since 1978, the Court awarded damages for the past infringement and also restrained the defendant from using these labels again if the plaintiff should renew the registration of his trademarks.

Dhanpat Seth & Ors v. M/S Nilkamal Plastic Ltd – Himachal Pradesh High Court [June 29, 2018]

The Court held that the Plaintiff’s patented ‘Device for Manually Hauling of Agricultural Produce’ was not in fact an invention as it did not constitute any inventive step over the traditional knowledge with respect to manufacturing the device known as ‘Kilta’ and simply using plastic as as raw material had not led to any proven enhancements, thereby negating the Plaintiff’s claim for infringement of patent. The Court went ahead and decreed the counter-claim of the Defendants, cancelling the above patent granted to the plaintiffs.




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