SpicyIP Weekly Review (August 6-12)

Thematic Highlight

Prashant wrote a special report on certain regulatory restrictions passed by the Ministry of Heath and Family Welfare; the Ministry announced that the Karnataka Antibiotics and Pharmaceuticals Ltd.(a PSU) would be the sole authority for manufacture and supply of the pregnancy drug, oxytocin. In his report, he examines a Himachal Pradesh HC judgment which suggested the need to restrict manufacture of oxytocin to the public sector and claimed that adverse effects were caused by oxytocin. He also examines the regulatory discussions related to oxytocin at the Drugs Consultative Committee and Drugs Technical Advisory Board. He further examines the series of events which led the Ministry to release such restrictions. He concludes that the order reflected the government’s arbitrariness in shaping the nation’s health policy.

Topical Highlight

Prof. Basheer notified everybody about an Indian Patent Office decision in which a patent for a rather  innovative vibrator was denied on the ground that it was an “immoral” invention under Section 3(b) of the Patents Act! Adopting a rather patronising attitude, the Office went on to describe such sex toys as useless and unproductive. It even went on a completely unrelated tangent and invoked Section 377 to state that these toys were banned under the Section. Disagreeing with the Office on all grounds and providing cogent reasons for his dissent, Prof. Basheer concludes that the Office should not be allowed to assume the role of a “moral arbiter”.

Other Posts

Mathews released a tidbit on Novartis’ win at the Gujarat High Court, with the Court complying with Novartis’ request to impose restrain orders on five other Pharma companies from manufacturing the anti-diabetes drug, Vildagliptin.

Balu examined a recent Delhi HC judgment, which granted permanent injunction and punitive damages against a retailer for infringing the Loubotin ‘Red Sole’ trademark. He then examines two other Delhi Hc decisions of the past, where the Delhi HC has taken opposite stands; in the first one, the HC claimed that the ‘Red Sole’ was a well-known trademark and the in the second one, the HC claimed that the same was not eligible for trademark protection. He ends his post by stating that  these decisions could not be reconciled with each other and that there is a need to clear the legal ambiguity in this matter.

I wrote a post on a recent CCI order in which Star India and Sony were accused of price discrimination by Noida Software Technology Park, a HITS operator. Briefly emphasising on the multiple advantage provided by the HITS technology in comparison to other distribution technologies, I go on to highlight other instances where HITS operators have had to face legal and regulatory hurdles. I then summarised the CCI order, where the Commission instructed the Director General to conduct investigation against Star India and Sony. In my take on the CCI’s order, I mostly focus on the jurisdictional tussle between the TRAI and CCI and analyse whether the CCI should have been allowed to interfere in the present matter. I conclude, however, by agreeing with the Commission’s stance on this matter.

Rahul analysed a Supreme Court judgment on a trademark registration dispute. The matter revolved around the use of trademark ‘NANDINI’ by the Respondent for its milk products and the use of the trademark ‘NANDHINI’ for a chain of restaurants by the Appellant. The Court permitted the Appellant to register their trademark mainly on the premise that goods sold by each party were of different character. Though Rahul agrees with the the Court’s finding, he argues that the requirements under Section 11(2)(b) for not registering a mark were not looked into by the Court. He also adds that the ‘added matter’ test would not be effective in the present case.

Lastly, Prof.Basheer passed on the news that an international mediator was willing to mediate Indian IP Disputes for free! For those interested, contact him at <[email protected]>

Other Developments



Tata Sons Limited & Another v. Krishna Kumar & Others – Delhi High Court [August 6, 2018]

The Court granted an ex-parte permanent injunction restraining the Defendant from directly or indirectly using any marks identical to or deceptively similar to the Plaintiff’s mark “TATA”, specifically “TATA”, “TATA FINSERVE PVT. LTD.”, “TATA FINANCE CORPORATION LTD.”, “TATA FINANCE SERVICES” and the domain name “www.tatafinserve.com”, in respect of the business of providing loans, insurance and financial services. In granting the injunction, the Court noted that the mark of the Defendant was closely, visually and phonetically similar to the registered mark of the Plaintiff. The Court also decreed that the infringing domain name of the Defendants must be transferred to the Plaintiffs, and awarded them punitive damages of Rs. 10 lacs for the immense loss to goodwill and reputation.

Super Cassettes Industries v. Sky Vision Digital Cable Network – Delhi High Court [August 6, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid license. The Plaintiff was further granted costs of Rupees 43 Lakhs, a sum arrived at by the Court through calculation of the amount charged by the Defendant in providing services to its customers.

M/s. Mex Switchgears Private Limited v. M/s. Omex Cables Industries and Another – Delhi High Court [August 3, 2018]

The dispute concerned the Respondent’s use of the mark “OMEX GOLD” in respect of electric switchgears and switches, in infringing and passing off Appellant’s trademark “MEX” in respect of identical goods. The Court granted a permanent injunction in favour of the Appellant stating that the Respondent’s mark was deceptively similar to its registered trademark as the addition of the letter “O” was likely to create confusion and deception of a connection with their goods. It was also noted by the Court that the Respondent bore a malafide intent in attempting to register other deceptively similar marks. There was no order for costs.

Grandcure Healthcare Private Limited v. M/s. Finex Healthcare Private Limited and Another – Delhi High Court [August 2, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “FRAVIA” in infringing and passing off the Plaintiff’s mark “BRAVIA” in respect of pharmaceutical preparations. In arriving at this decision, the Court stated that the mark of Defendant is phonetically and deceptively similar to the trademark of the Plaintiff, and that in view of such similarity confusion among the public would be inevitable. The Plaintiff was further awarded costs of Rupees 2 Lakhs.




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