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SpicyIP Weekly Review (October 1-7)


This week on SpicyIP…

Mathews wrote a post on the recent Madras HC decision in Kajal Aggarwal v. VVD & Sons. The court held that a producer can exploit a cinematograph film for the statutorily sanctioned 60 years despite a contract to the contrary. Mathews argues that a wiser course of argumentation for the appellants may have been to rely on IP jurisprudence, arguing that reducing the time-period of the copyright to 1 year would improve access for the public, with the consent of the producer.

On the occasion of Gandhi Jayanti, Divij brought an interview with Mr. Carl Malamud. Mr. Malamud, who has been at the forefront of a battle to increase access in the United States, spoke about his efforts to increase access to scientific works in India, his belief in the ideals of Gandhiji and about Gandhiji’s efforts towards open access at the Phoenix Ashram.

In a guest post, Abhimanyu Chopra discussed the Delhi HC’s decision in Sketchers USA v. Pure Play Sports. After issuing an order imposing a temporary injunction on the defendants for passing off, the court issues a summary judgment in favour of Sketchers, despite no prayer for the same. Further, this case was also the first instance where a party which was awarded costs went through the process of filing a Bill of Costs and leading evidence before the Taxing Officer. These two aspects, according to Abhimanyu, as the speedy disposal of cases and imposition of enormous costs will discourage infringing activity.

Prarthana wrote a post on the SC’s judgment in Wockhardt Limited v. Torrent Pharmaceuticals, which reinstated principles pertaining to passing off and delays and acquiescence. Prarthana notes that the judgment brings out a sharp distinction between acquiescence and delay, and reaffirms similar opinions put forth by the Bombay and Delhi High Courts. She points out that the judgment did leave some lingering doubts as to the distinction between deceit and fraud, and their role in determining a passing off claim.

Other Developments

India

Judgments

M/s Shree Rajmoti Industries v. M/s Shri Vishwaprabha Food – Delhi High Court [September 27, 2018]

The question before the Court was whether or not using ‘RAJMOTI RICE’ would amount to infringing the plaintiff’s registered trademark RAJMOTI. In May 2014, an ex-parte ad-interim injunction had been granted restraining the defendants from using ‘RAJMOTI RICE’ until final disposal of the suit. The plaintiffs are the registered owners of the trademark RAJMOTI, used for edible oils, mineral water, aerated drinks, juices etc. for several decades. Since oil, mineral water and rice are articles of human consumption sold together in kirana stores and have the same class of consumers, they are allied/cognate goods. The Court decreed that it was usual for the registered TM owner to expand the business into cognate goods, and granted a permanent injunction in favour of the plaintiffs. Since the defendant’s product was not placed on record, no decree for damages or rendition of accounts could be passed.

Unilever PLC & Another v. Banu Chauhan – Bombay High Court [September 27, 2018]

The Court in its original jurisdiction granted further relief to the plaintiffs by issuing a temporary injunction restraining the defendants and its stockists, producers, employees and all parties claiming under them from using the plaintiff’s trademark DOMEX in relation to cleaning liquids (for bathrooms, kitchens, glass surfaces, interiors etc.). The Court also granted a temporary injunction restraining the defendants from using the impugned trademark HOMEX in relation to cleaning liquids (for bathrooms, kitchens, glass surfaces, interiors etc.) until final disposal of the suit.

Inter Ikea Systems v. Annanya Gautam & Anr. – Delhi High Court [September 28, 2018]

The Court, in this case, deliberated on whether or not IKAH, a trademark belonging to the defendants, infringed the petitioner’s internationally well-known trademark IKEA, and whether IKAH was used to pass off the defendant’s goods as IKEA goods. The defendant’s products were sold on their website www.ikah.in. Weighing in rival submissions, the Court came to the conclusion that since IKEA is a coined term (Ingvar Kamprad and Elmtaryd and Agunnaryd) it must be offered the highest degree of protection. The defendant’s IKAH is a registered as a logo/device mark and thus does not vest them with rights over the IKAH mark itself. The Court found IKAH to be closely similar to IKEA both visually and phonetically, that the use of IKAH in the defendant’s domain name constituted a separate ground for infringement apart from use on products. An interim injunction order was granted in favour of the plaintiffs, restraining the defendants and its employees from using IKAH in any manner. NIXI was also directed to suspend the domain www.ikah.in until complete disposal of the suit.

Unilever Plc & Anr v. Anoy Paul & Ors. – Calcutta High Court [October 01, 2018]

This dispute is concerning the alleged infringement of the plaintiff’s trademark CORNETTO by the defendants. While some of the defendants were not found at their addresses, the remaining defendants have provided affidavits of undertaking stating that they were unaware that their goods were deceptively similar to the plaintiff’s CORNETTO trademark. The Special Officer appointed shall take possession of all such wrappers and infringing materials and destroy the same in the presence of the concerned defendants. The remaining defendants were given leave to file their affidavit of the undertaking on record.

Shambu Nath & Brother & Others v.  Imran Khan – Calcutta High Court [October 3, 2018]

The Court decided whether or not the mere registration of SNJ TOOFAAN entitled the plaintiffs to maintain a suit for infringement of and passing off as TOOFAAN, and to do so, had to determine whether TOOFAAN was a device mark or wordmark. Plaintiffs are the registered and uninterrupted users of TOOFAAN for many decades, in respect of manufacture of electrical fans and contested the respondent’s application for registration of SNJ TOOFAAN, which is in respect of heating and lighting apparatus. (TOOFAAN is also copyright protected, and the jurisdiction of the Court u/s 62, Copyright Act was also invoked.) The Court found that the word TOOFAAN was an essential feature of the label, and the label itself did not have any distinctive feature apart from the word (the TM certificate clearly shows it to be a device mark. However, the petitioners had requested the TM Registry to correct the same.) Thus TOOFAAN was juxtaposed as a whole with SNJ TOOFAAN to determine deceptive similarity. Evidence also suggested that SNJ TOOFAAN was a trademark put to use, and the Court concluded that plaintiffs were entitled to maintain a suit for infringement and/or passing off.

News

Patent applications by Indian start-ups rising in India: President Kovind at IISF 2018

The JPO and the DIPP, MCI, India Agree in Principle to Start a Bilateral Patent Prosecution Highway

Checking Patent Status Online in India

IPR policy reduces pendency of intellectual property applications: DIPP Secy

Government staff apprised of provisions in biodiversity act

IPAB dismisses plea against trademark of iPhone

Mumbai trademark registry to consider Disney’s plea

International

Fiji fights to trademark ‘Bula’; time for India to think about Namaste?

Brazil court strips Gilead of hepatitis C drug patent

Suzhou to host 7th China International Copyright Expo

Ana Mendieta estate sues Amazon Studios over copyright infringement

Global green energy patents up 43 per cent in a year

Toshiba, Macronix settle patent disputes

Rishabh Mohnot

Rishabh is a fourth year law student at the National University of Juridical Sciences, Kolkata. He is currently the Director of the Intellectual Property and Technology Law Society at his University and a Senior Associate Member of the NUJS Law Review. He is happy to correspond by email at [email protected]

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