Others

SpicyIP Weekly Review (28th January-3rd February)


Divij wrote a post  about the recently released draft intermediary guidelines. In his post, he specifically focusses on Draft Rule 3(9) which provides for “automated tools” and “appropriate mechanisms” for identifying “unlawful” online content. Noting the response to the similar proposed changes to the EU Copyright Directive, he analyses the various adverse impacts the Rules may have on copyright  law and access to knowledge.

Rishabh wrote about a worrying development in the IPAB; the Board has allegedly been conducting hearings and passing orders without the quorum required under the Trade Marks Act and the IPAB Rules. The issue was brought to SpicyIP’s notice via a letter by ARS & Associates. Rishabh also draws our attention to a recent IPAB order and the cause list of 7th January, 2019, which serve as proof of these allegations.

Other Developments

Indian

Judgments

Rajesh Chugh & Another v. Chhavi Poplai & Others – Delhi High Court [January 23, 2019]

The Court dismissed the petition against the existing interim injunction restraining the Defendant from using the website name “www.nizams.com” in infringing and passing off the Plaintiff’s mark “NIZAM’S” in respect of food items. In arriving at this decision, the Court noted that even though the mark “NIZAM’S” had a historical context to it, it was capable of protection in light of the same being arbitrary in respect of the goods being sold under it. Moreover, it was noted that the proprietor of trade marks were not expected to run after every infringer and it was legitimate that the proprietor take a measure against the infringer only in a case where the infringement assumed alarming portions.

STP Limited v. M/s. Arihant Sales Corporation & Others – Delhi District Court [January 23, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “SHALICRYL LM” in infringing and passing of the Plaintiff’s mark “SHALICRYL” in respect of water proofing products. In arriving at this decision, the Court stated that the Plaintiff was the registered user of the mark and the mark adopted by the Defendant was structurally, visually and phonetically similar to that of the Plaintiff. The Court also considered it appropriate to grant punitive and compensatory damages to the tune of Rupees 2 lakh and a decree of damages to the tune of Rupees 3 lakh in light of the Plaintiff being unnecessarily dragged into litigation.

Kinjal Lalitbhai Dave v. Red Ribbon Entertainment Private Limited – Gujarat High Court [January 24, 2019]

The dispute between the Parties arose on account of copyright in the video of the Gujarati song “Char Bangadi Wari Gaadi”. The Respondents had already assigned the song in favour of the Appellant but at the same time had a dispute concerning the song with its predecessor. The Commercial Courts passed an injunction against the Respondents stating that the Appellants met all conditions for passing the order of interim injunction. The Court set aside this order of the Commercial Court claiming that Appellant had not satisfied the Commercial Court of the gravity of the situation and at the same time, the Commercial Court had failed to consider the relevant factors prior to granting the decree of interim injunction. Moreover, the Court noted that the requirements for the grant of an interim injunction were mandated by the statute and could not be considered as a mere formality, but had to be done in the manner prescribed by the statute.

M/s. Crocs Incorporation USA v. M/s. Bata India Limited & Others – Delhi High Court [January 24, 2019]

The dispute between the Parties arose on the ground that the Respondents had infringed the registered designs of the Appellant by copying its well-known designs attached to footwear. In a suit filed by the Appellant for infringement, the Single Judge stated that the Appellant’s designs were in the public domain since 2002 and consequently denied them relief. Through the appeal of the same, the Court noted that there was no infirmity in the appreciation of law on the subject by the Single Judge. It was also stated that the Appellant’s registration was cancelled in the European Union on the ground of prior publication. The Court also claimed that a mere variation in the existing design does not entitle that design to protection. In light of these observations, the Court found that the direction of the Single Judge to the Appellants to pay Rupees 2 lakh to all Respondents was unassailable due to the burden of legal proceedings imposed on the Respondents.

Homeseek Realtors v. Deepak Kainth & Others – Delhi High Court [January 28, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “HOMESEEK REALTORS” by using a deceptively similar mark “HOMESEEK REALTY” in respect of real estate services. In arriving at this decision, the Court observed that the Defendant had no real prospect to defend the claim as the Plaintiff was the prior user of the mark.

Stillman Fashion v. Steel All Male – Gujarat High Court [January 29, 2019]

The dispute between the Parties arose on account of infringement of the Plaintiff’s mark “STEEL ALL MALE” by the Defendant through the mark “STILLMAN” in respect of garments. The Court noted that the marks of both the Parties were poles apart in terms of visual as well as phonetic perception. Moreover, it was noted as an essential point that the Plaintiff had not used its mark for 15 months and thus, the Defendant would be free to use its mark, and restrain from using the mark would cause more harm and inconvenience to the Defendant rather than the Plaintiff.

Citigroup Incorporation & Others v. Puneet Motwani – Delhi High Court [January 29, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “CITI” by using a deceptively similar formative marks containing “CITI” in respect of financial services. In arriving at this decision, the Court observed that the Defendant had no real prospect to defend the claim as the Plaintiff was the prior user of the mark.

SRMB Srijan Private Limited v. Shreegopal Concrete Private Limited – Calcutta High Court [January 30, 2019]

The Court granted an interim injunction restraining the Defendant from passing off the Plaintiff’s design in respect of iron bars. In arriving at this decision, the Court noted that even though the Plaintiff did not have a valid registration in respect of the design, the claim of passing off would succeed. Accordingly, the Court noted that the Defendant’s bars had a design which was identical and a slavish imitation of the Plaintiff’s trade dress.

News

International

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