Others

SpicyIP Weekly Review (November 26-December 2)


Prashant wrote a post about the impact of India’s biodiversity laws’ impact on scientists and businesses. After tracing the history of the biodiversity laws that we see today, he argues that the legislation should be repealed because it opens the door for arbitrary enforcement against businesses and impedes research efforts by scientists.

Pankhuri informed us of the invitation for applications for the CLPR Equality Fellowship with the Centre for Law and Policy Research. The fellows will be expected to engage in litigation and advocacy pertaining to intersectional discrimination in the states of Andhra Pradesh, Karnataka, Kerala and Tamil Nadu The deadline for the applications is December 30, 2018.

Other Developments

India

Judgments

Luxembourg Brands S.A.R.L. and Another v. G.M. Pens International Private Limited – Delhi High Court [November 26, 2018]

The dispute between the Parties arose on the ground that the Defendant had used the mark “RORITO” in infringing and passing off the Plaintiffs’ mark “REYNOLDS” in respect of writing instruments. The Plaintiffs stated that the Defendant was its licensee for a brief period, and after the expiry of the licensing arrangement between them promoted its product in a manner to give the general public a perception that the mark “REYNOLDS” was re-branded as “RORITO”. In considering the Plaintiffs’ argument of passing off, the Court observed that the Defendant did not commit any action of passing off as there was no misrepresentation in its advertisements and that the Defendant merely sought to sell its goods under its bona fide mark “RORITO”. The Court also considered the Plaintiffs’ argument that the Defendant had undertaken a campaign to indicate that “REYNOLDS” was re-branded to “RORITO”, and stated that the evidence filed before it was insufficient to arrive at such a conclusion. Moreover, the Court on a comparison of the rival marks disagreed that their logos were similar. As a related issue, the Plaintiffs claimed that the Defendant’s adoption and use of the mark “TERAMAX” in place of “T-MAX” was infringing of its mark “TRIMAX”. The Court agreed with the Plaintiffs and observed that the Defendant had substituted one similar mark (T-MAX) with another (TERAMAX), which bore a higher similarity to the Plaintiffs’ mark, and accordingly violated the orders passed by the Court on a previous occasion. In view of this particular violation, the Court imposed a penalty of Rupees 5 lakhs on the Defendant, payable to the Plaintiffs within a month.

M/s. Bombay Sewing Machine Company v. M/s. Nipex Light House & Welding – Delhi District Court [November 28, 2018]

The Court granted a permanent injunction restraining the Defendant from using the mark “DURBEY” in infringing and passing off the Plaintiff’s deceptively similar mark “DURBY” in respect of sewing machines. In arriving at this decision, the Court noted that the Plaintiff had been using its mark since 1954 and was also the registered proprietor of the mark. Further, the Court stated that there was no substantial difference between the rival marks as the Defendant’s mark was visually, structurally and phonetically similar to that of the Plaintiff, and the Defendant’s use of the Plaintiff’s mark would lead to loss of Plaintiff’s goodwill and reputation.

M/s. Facton Limited v. Shri Varun and Another – Delhi District Court [November 29, 2018]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “G-STAR” in infringing and passing off the Plaintiff’s identical mark in respect of clothing and allied goods. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of the well-known mark and that the Defendant could not use it to conduct business. In view of the same, the Court granted punitive and compensatory damages to the tune of Rupees 1 lakh in favour of the Plaintiff.

M/s. Lacoste S.A. v. Devi Dayal and Another – Delhi District Court [November 29, 2018]

The dispute arose between the Parties on the ground that the Defendant was using an identical mark to that of the Plaintiff’s registered mark “LACOSTE”. In the suit filed by the Plaintiff, the Court denied the grant of an injunction in favour of the Plaintiff. The Court examined the evidence filed by the Plaintiff and noted that the Plaintiff had failed to place any documentary evidence on record to prove infringement on of its registered mark by the Defendant.

News

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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