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SpicyIP Weekly Review (November 5-11)


SpicyIP has been bustling with posts this week. Here’s the roundup:

Thematic Highlight

As part of the ongoing series on the problems with the Indian plant varieties regime, Prof. N. S. Gopalakrishnan shared the second part of his guest post that critiques farmers’ rights in India. In this part, he delves into the practical applications of the provisions of the PV Act with respect to benefit sharing, compensation under Section 41, the functioning of the gene fund and recognition for conserving plant varieties. He argues that in their practical application, the PV Act fails to deliver the farmers with adequate rights and protection due to administrative lethargy and ineffective enforcement.

Topical Highlight

Divij wrote a post on the Christian Louboutin v. Nakul Bajaj judgment passed by the Delhi High Court on the liability of online intermediaries in cases of trademark infringement. The sole issue in the case concerned the ‘safe harbour provision’ under the IT Act, and whether it absolved the defendant of liability for infringing Christian Louboutin’s trademark. Divij notes that the judgment goes finds the defendant as an ‘active participant’, and therefore, ineligible for protection under the safe harbour provisions.

Other Posts

By way of a guest post, Pankhuri shared Prof. Glynn S. Lunney’s open letter to the US Supreme Court, which expressed his bemusement at their decision in Festo Corp. v. Shoketsu Kogyo Kabushiki Co. The Professor pokes fun at the dearth of reason in the judgment, which has added confusion to the doctrine of foreign equivalents under patent law.

Pankhuri shared with us an anonymous guest post which highlights issues pertaining to the Patent Agent Examination 2018.  The writer points out a few errors in the answer key to the examination. The writer also notes that the focus of the examination, on a general level is skewed, with the focus being placed on recall skills rather than analytical skills. In light of this, the writer suggests that the exam be made ‘open-book’, with lesser weight given to questions requiring memory rather than analysis. The writer also sheds light on the subjective nature of marking in the viva-voce, urging an overhaul of the testing to improve the standard of patent agents.

In his post, Prashant alerted us to the government’s proposal to amend the Sports Broadcasting Signals Act, 2007. The proposed amendment to the SBS Act will allow Doordarshan’s signal to be rebroadcast under the Cable Television Networks Act, 1995. The last date to submit comments on the proposed amendments is December 31, 2018.

Prashant also wrote a post on bench-fixing allegations in a number of trademark infringement cases filed by KRBL Ltd. before the Delhi District Courts through the law firm K.G. Bansal & Co. He notes that the matter is now pending a hearing on merits before the Delhi High Court, although he observes that finding proof in these cases is a difficult task without initiating a criminal investigation.

Rajiv covered the recent judgment concerning the licensing of its technology to its competitors. The judgment holds that Qualcomm must grant a license to all willing companies, hinting at a potential breach of Qualcomm’s FRAND commitments. He notes that this case makes it clear that standard-essential patents must be licensed to parties in the value chain, including willing chipset owners.

Other Developments

Indian

Judgments

Megha Cashew Pvt. Ltd. v. B.R.Industries – Meghalaya High Court [September 19, 2018]

The court interpreted S. 134 of The Trademarks Act, 1999 and directed the parties to file the suit before the Court of District and Sessions Judge, Nongpoh according to the provisions of the law and directed the lower court to adjudicate and dispose of the matter within 2 months. The court held that the previously granted stay will remain in force until the matter is taken up by the lower court and a decision is passed by the judge independently.

Ultra Tech Cement Ltd. v. Kotai Mineral Products Pvt. Ltd – Delhi High Court [October 25, 2018]

The court granted an ad-interim injunction restraining the defendant from using the mark, ULTRA CEMENT, or using the tagline, The Ultimate Choice, in its goods and services as they were deceptively similar to the Plaintiff’s trademark, ULTRA TECH CEMENT and tagline, The Engineer’s Choice. The court held that the defendant’s conduct was writ with dishonesty as the infringing marks could not have been mere coincidence and directed the Court receiver to make an inventory of all the infringing goods and seal them in the premises of the defendant.

Body Basic Healthcare v. Sachin Raghunath Shinde – Bombay High Court [October 25, 2018]

The court granted an ad-interim injunction restraining the defendants, owners of the gym NEW BODY ART FITNESS CLUB, from using the mark BODY ART or other similar marks in any way relating to the defendants’ trade till the disposal of the suit. The court held that the defendants’ use of the Plaintiff’s marks were not honest considering that the defendant and the Plaintiff have been in the same line of business and the defendant would have had knowledge of the Plaintiff’s Trademark.

 Super-Max Ipr Holdings Ag v. Tigaksha Metallics Private Ltd – Bombay High Court [October 26, 2018]

The court granted an ad-interim injunction restraining the defendants from using the marks, Zorrik, Supermax, Vidyut, Samrat, Rise, Dollar and Thames or other marks that belong to the Plaintiff, by either passing the defendant’s goods as those of the Plaintiff’s or in the course of the defendant’s business. The court relied upon the conduct of the defendants like using the suit trademarks on www.indiamart.com despite the expiry of the license from the Plaintiff to use them, making statements that the defendants were authorized to use the trademarks, to arrive at the conclusion that the Plaintiff’s rights will be seriously infringed if a temporary injunction were not granted.

M/S. Super Cassettes Industries v. Damoh Cable Network – Delhi District Court [October 29, 2018]

The court granted an ex-parte permanent injunction restraining the defendant, a cable operator, from infringing the copyright of the plaintiff, the owner of the ‘T-Series’ label, by broadcasting cinematographic films and musical works owned by it, over the cable. It further directed the defendant to hand over all the infringing material and also pay punitive damages of Rs. 20 lakhs to the plaintiff.

Impresario Entertainment v. Mocha Blu Coffee Shop – Delhi High Court [October 30, 2018].

The court granted a permanent injunction restraining the defendant, a coffee shop, from using the mark, MOCHA BLU as it was virtually identical to the Plaintiff’s registered mark, MOCHA, in running the coffee shop or offering its services to customers. The court awarded costs to the Plaintiff to the extent of actual costs incurred by the Plaintiff and disposed of the suit.

State v. Vikas Sharma – Delhi District Court [October 31, 2018].

The court acquitted the accused, Vikas Sharma, of the charge under S.63 of the Copyright Act as the prosecution hadn’t produced any evidence to prove copyright or trademark violation. The court held that the prosecution had failed on counts of failing to prove how the alleged spurious goods of gel and deodorant were recovered from the accused who exclusively sold artificial jewellery, even assuming the contrary, the prosecution had not proved that the goods were counterfeit, as the original goods were never produced. The court finally held that the Prosecution had not fulfilled its burden of satisfying the court beyond reasonable doubt that the accused was guilty and disposed of the suit.

Hindustan Unilever Limited v. Modi Powder and Soap Company & Others – Bombay High Court [October 31, 2018]

The dispute concerned the alleged infringement and passing off of the Plaintiff’s trade dress in its products. The Court granted an injunction in favour of the Plaintiff and it was subsequently revealed by the Defendants that an entity, namely “Reliable Packaging” had provided them with the infringing trade dress. The Plaintiff filed an application for impleading “Reliable Packaging”. The Court allowed the Plaintiff’s application and restrained “Reliable Packaging” from using or causing the Plaintiff’s trade dress to be infringed in any manner as well as directing them to deliver all the relevant materials pertaining to the Plaintiff’s trade dress on the final disposal of the suit.

Sun Pharmaceutical Industries Limited v. Systopic Laboratories Limited – Delhi High Court [November 1, 2018]

The dispute concerned the alleged infringement and passing off of the Plaintiff’s mark “STORVAS” by the Defendant through the use of a deceptively similar mark “ORVAS”. The Plaintiff filed an application for framing a fresh issue in order to challenge the validity of the Defendant’s registration of its mark. In allowing the application, the Court relied upon its previous decision and stated that in framing an additional issue regarding the invalidity of a mark, it had to be reasoned that the same was a material plea and did not return any prima facie finding. The Court noted that another factor in allowing the application was that the Plaintiff had made detailed averments in its plaint with respect to the similarity of the marks and Defendant’s knowledge of the Plaintiff’s registration at the time of obtaining registration for its mark.

M/S. Malbro Appliances v. Gas Chulla Ghar – Delhi District Court [November 1, 2018]

The court granted a permanent injunction restraining the defendant, a manufacturer/distributor of LPG stoves, from infringing upon the Plaintiff’s trademark, SURYAFLAME or using deceptively similar Trade-dresses. The court held that it was clear that the objective of the defendant was to ride upon the goodwill and reputation of the Plaintiff by using a deceptive identical mark. The court disposed of the suit and directed the defendant to pay Rs. 1 Lakh to the Plaintiff as compensatory damages and further added that the Plaintiff was entitled to a 10% interest p.a on the sum from the date of institution of the suit.

Shoppers Stop Ltd vs Softobell Inc. – Delhi High Court [November 1, 2018]

The court granted a permanent injunction restraining the defendants from passing off the defendants’ goods as those of the Plaintiff’s and from selling goods by using the mark, “VETTERN FRATINI” or other marks which were deceptively similar to the Plaintiff’s mark, “VETTORIO FRATINI”. The court awarded costs to the Plaintiff, to the extent of actual costs incurred by the Plaintiff and disposed of the suit.

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International

 

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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