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SpicyIP Fortnightly Review (December 17-30)


Here’s the round-up of the last fortnight of 2018!

Thematic Highlight

Prarthana wrote a post on Carlsberg Breweries v. Som Distilleries, in which a 5-judge bench of the Delhi High Court held that a composite suit for design infringement and passing off is maintainable, and further, a remedy for passing off for a registered design can be brought if the said design is not functioning as a trademark and if the remedy of passing off is claimed for trade dress infringement or any other similar infringement.

Topical Highlight

Prof. Basheer broke the news of Novartis’ attempt to obtain a patent for a polymorph, without evidence of its therapeutic efficacy. This application was rejected on the basis of Sections 3(d) and 3(e) of the Patents Act, 1970.

SpicyIP Jobs

Pankhuri informed us that Inttl Advocare, one of India’s leading IP boutique law firms, is looking to immediately hire lawyers for the position of Senior Associate in its Litigation team.

Other Posts

In a guest post, Akshat Agrawal wrote on a recent decision of the Court of Justice of the European Union pertaining to sensory copyrights. The thrust of the case rested on the interpretation of ‘work’ under Article 2(1) of the Berne Convention, which would determine whether the taste of a food product could be copyrighted. The Court concluded that there can be no copyright in taste due to its basis of identification being subjective sensations and experiences. Akshat notes that the outcome is correct, but identifies certain discrepancies in certain portions of the reasoning offered in the judgment.

Other Developments

Indian

Judgments

Sun Pharmaceuticals Industries Limited v. Brexsun Pharma Private Limited – Delhi High Court [December 13, 2018]

The Court granted a permanent injunction restraining the Defendant from using the mark “SUN” in infringing and passing off the Plaintiff’s identical mark in respect of sale of medicines. In arriving at this decision, the Court noted that the Defendant had no real prospect of defending the claim as it had completely engulfed the Plaintiff’s mark in adopting its mark. Moreover, it was noted that the Plaintiff was the registered proprietor of the mark “SUN”, and therefore the same could not be adopted by the Defendant.

M/s. Inter Ikea Systems BV v. M/s. Ikea Furnitures and Others – Delhi District Court [December 17, 2018]

The Court granted a permanent injunction restraining the Defendant from using the mark “IKEA” in infringing and passing off the Plaintiff’s identical mark in respect of the sale of medicines. The Court noted that the evidence adduced by the Plaintiff sufficiently proved that the Defendant had adopted the Plaintiff’s mark in its business. Moreover, it was stated that the Defendant’s intention to gain from the goodwill and reputation of the Plaintiff in the commercial space was very clear. Ultimately, the Court granted damages to the tune of Rupees 1 lakh in light of the unfair commercial advantage received by the Defendant in trading under the Plaintiff’s mark.

Ranvir Singh Bijnaria v. Ashok Kumar and Others – Delhi High Court [December 18, 2018]

The Court granted a permanent injunction restraining the Defendants from using the mark “EASY SLIM” in respect of its domain names in infringing and passing off the Plaintiff’s identical mark in respect of the sale of ayurvedic medicines. In arriving at this decision, the Court noted that the Plaintiff was the registered user of the mark, and the Defendants had committed clear infringement by using the Plaintiff’s registered mark to sell counterfeit goods.

Mahle Filter Systems India Private Limited v. Mobis India Limited and Another – Delhi High Court [December 20, 2018]

The dispute between the Parties arose on the Plaintiff’s claim of alleged infringement by the Defendant of its marks as the same would indicate a trade relationship between them. In light of First Information Reports being filed by the Defendant, the Plaintiff sought to obtain a declaration against the groundless threat. The Court noted that there was no threat of groundless infringement as the Plaintiff was selling spare parts pertaining to the Defendant’s manufactured vehicles in a packaging which contained the Defendant’s mark along with the phrases “genuine accessories of Elofic Industries Limited” and “suitable for Hyundai Accent”. Further, it was ordered by the Court that the Plaintiff should replace the aforementioned words in quotes with “adapted to form a part of” while simultaneously declaring that its products had no trade connection with the Defendant.

M/s. Parul Food Products v. M/s. Gurudev Industries – Delhi High Court [December 20, 2018]

The Court granted a permanent injunction restraining the Defendant from using the mark “FREEFUN” in infringing and passing off the Plaintiff’s similar mark “FUNFINE” in respect of the sale of confectionary goods. It was noted by the Court that the Plaintiff was the prior user and registered proprietor of the mark which had acquired reputation and goodwill across India. The Court stated that the Defendant was selling products bearing a deceptively similar mark to that of the Plaintiff and had no real prospect to defend its claim.

M/s. Avantika Elcon Private Limited v. M/s. Ajit Industries Private Limited – Delhi High Court [December 21, 2018]

The Plaintiff filed a suit on the ground that the Defendant had committed infringement in using the mark “AIPL MNTECH”, which was claimed to be deceptively similar to the Plaintiff’s mark “MNTECH AELCON”. In denying any relief to the Plaintiff, the Court noted that the Plaintiff had failed to disclose that the mark “MNTECH AELCON” actually belonged to a Korean company with whom it had entered into an agency agreement. The Court considered that in light of the gross suppression, the Plaintiff was liable to deposit a sum of Rupees 2 lakhs with the Court Advocates’ Welfare Trust.

D.B. Corporation Limited v. Dainik Divya Bhaskar and Another – Delhi High Court [December 21, 2018]

The Court granted a permanent injunction restraining the Defendant from using the mark “DAINIK BHASKAR” or “DIVYA BHASKAR” through their domain name in infringing and passing off the Plaintiff’s marks in respect of news services. It was noted by the Court that the Defendant’s use of the domain name had violated the statutory and common law rights of the Plaintiff. The Court considered the evidence of the Plaintiff and further noted that there was a clear case of infringement by the Defendant.

M/s. Psychotropic India Limited v. M/s. Syncom Healthcare Limited – Delhi District Court [December 22, 2018]

The Court granted a permanent injunction restraining the Defendant from using the mark “CTZ” in infringing and passing off the Plaintiff’s similar mark in respect of the sale of medicines. In arriving at the decision, the Court noted that the Defendant’s use of a deceptively similar mark was to encash on the goodwill and reputation of the Plaintiff. Moreover, it was noted that the Plaintiff had suffered immense losses due to the illegal activities of the Defendant and the grant of a permanent injunction was the appropriate remedy.

News

Comments / suggestions invited on Draft of “The Information Technology [Intermediary Guidelines (Amendment) Rules] 2018

MakeMyTrip takes 5 firms to court for using similar names

Transfer of Patent Rights assessable under CST Act: Kerala HC

Patent Applications By Female Innovators To Get Faster Clearance

Strategic transformation is the need for much greater support for AYUSH

Andhra Pradesh loses Araku GI tag to Coffee Board of India

‘Art is in the most deplorable condition in India’ craftsmen struggle to continue traditional Jaipur blue pottery

Advertisement is a facet of Commercial Speech protected under Article 19(1)(a): Delhi HC

International

GSK awarded Arrow declaration in patent dispute with Vectura

Motorola Solutions alleges Hytera Communications copied its source code

Mohit Suri, Mithoon allege T-Pain’s latest song That’s Yo Money is copied from Aashiqui 2’s Tum Hi Ho

IP tribunal rules Murugappa’s BSA trademark well-known, asks Malaysia firm to remove similar one

Disney moving to get a wider trademark on the Swahili phrase is being seen as cultural appropriation

 

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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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