Others

SpicyIP Weekly Review (April 8-14)


Topical Highlight

Divij wrote a post on India’s first ‘dynamic’ website blocking injunction, issued by the Delhi High Court. This order allows for the plaintiff to apply for the extension of an injunction to ‘mirror/redirect/alphanumeric’ websites (that contain the same content as the original prohibited website) to the Joint Registrar of the Delhi High Court.

Thematic Highlight

I wrote a post on the nature of orders and quorum requirements at the IPAB, in light of the orders passed despite continued vacancies. I argued that the applicable provisions do not allow for an exception for ‘administrative orders’, and further, that the orders passed were not administrative in nature based on jurisprudence from the Indian Supreme Court.

Other Posts

Prarthana wrote a post on the latest order in a tussle between Hindustan Unilever Ltd and Emami concerning fairness creams. The court passed an order that rejected HUL’s allegation that Emami has disparaged its product because there was no specific reference to HUL’s product or generic disparagement. She concludes by pointing out that the judgment delivered by the court lacked clarity on its decision on generic disparagement.

Divij shared his post on Medianama, where he writes on the evolution of copyright law to catch up with the development and usage of technology.

SpicyIP Events

Pankhuri informed us of upcoming Annual Refresher Course for Law Teachers on Developmental Perspectives on IPRs, to be held at CUSAT, Cohin from June 21-28, 2019.

Other Developments

Indian

Judgments

Tata Sky Limited v. National Internet Exchange of India and Others – Delhi High Court [April 2, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged use of the Plaintiff’s mark “TATA SKY” and its slight modifications in registering domain names. The Plaintiff in light of the repeated registrations of such deceptive domain names prayed for a dynamic injunction against Defendant No. 1. The Court observed that there was merit in the Plaintiff’s argument and stated that such grant of an injunction to prevent registrations in the future would keep pace with the infringers, and eliminate the grievants from continuously approaching the courts. The Court also suggested that Artificial Intelligence could be employed within the parameters of law in order to prevent such registrations. However, the Court did not conclusively decide the matter and was of the opinion that a question of public interest arose, which could only be decided by the Chief Justice.

Hindustan Unilever Limited v. Ankit – Calcutta High Court [April 4, 2019]

The Court granted an interim injunction restraining the Respondent from infringing the Petitioner’s mark “EXCEL” and its artistic work on the packaging, by the adoption of deceptively similar marks “MR. EXCEL” and “MS. EXCEL” and imitative packaging, in respect of detergents. In arriving at this decision, the Court noted that the packaging of the Respondent and its colour scheme was very similar to the Petitioner’s packaging. Accordingly, the Court stated that it was a prima facie case of infringement of trademark and copyright in the label of the Petitioner’s packaging.

Elder Projects Limited and Another v. Elder Pharmacia LLP and Others – Delhi High Court [April 5, 2019]

The Court vacated the interim injunction against all Defendants which restrained them from using the Plaintiff’ marks “ELDER” and “EVERVIT” or any other deceptively similar marks, in respect of manufacturing and selling pharmaceuticals. The Court had previously granted an interim injunction against Defendant Nos. 1 and 5, however, the present suit was filed to claim passing off remedies against Defendants Nos. 2-4. The Court observed at the onset that the Plaintiff No. 1 had not sought the permission of its sister concern and thus, such use could not be characterized as “permitted use”. Moreover, it was noted that since five years have not passed since the continuous use of the mark by the Plaintiff No. 1, there could not be any claim of acquiescence. In light of the aforementioned, it was concluded that the Plaintiff No. 1 was infringing a registered trademark, and therefore could not bring an action of passing off against another infringer.

Baskaran v. The Deputy Registrar of Trade Marks– Madras High Court [April 5, 2019]

A writ petition was filed by the Petitioner for its expired mark “TAJMAHAL”, used in respect of pappads, for the renewal of the mark even though the stipulated period for renewal, as prescribed under the Trade Marks Act had expired. The Petitioner relied on the fact that the Trade Marks website showed the mark’s status as “registered”. The Court observed that the Respondent had a statutory and mandatory duty to issue notice under Form O-3 to the Petitioner before removing its mark from the register. In absence of issuance of this notice, the Court noted, the mere expiry of time would not take away the Petitioner’s right of ownership over the mark. Thus, the Court directed the Respondent to fulfil its mandatory and statutory duty by issuing the Form O-3 to the Petitioner, and the Petitioner would then be allowed to pay the renewal fee. Consequently, the Registrar would consider the merits of the Petitioner’s application.

Sandisk LLC and Another v. M/s. B-One Mobile and Others – Delhi High Court [April 9, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing of the Plaintiff’s “RED FRAME LOGO” and its peculiar packaging, by using deceptive and colourable packaging for the sale of memory sticks. In arriving at the decision, the Court noted that the Plaintiff’s mark “SANDISK” has acquired reputation and goodwill globally. It was also observed by the Court that the Defendant had consistently used the Plaintiff’s registered marks and its packaging, thereby qualifying for prima facie infringement.

Christian Louboutin SAS v. Abubaker and Others – Delhi High Court [April 11, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged infringement of the famous “RED SOLE” mark of the Appellant, in respect of footwear. The original suit of the Appellant was dismissed by the Single Judge stating that a single colour does not qualify for protection under the Trade Marks Act, 1999 and that the Appellant’s word mark “CHRISTIAN LOUBOUTIN” was completely different from the Respondents’ mark “VERONICA”, among other reasons. The Court set aside the order of the Single Judge, by first claiming that the original suit could not be dismissed in limine as there was no “admission” on part of the Plaintiff of the Defendant’s case, as required by the Civil Procedure Code, 1909. With respect to the validity of a trademark consisting of merely a single colour, the Court observed that the suit did not relate to the question of the validity of the mark, and in such a situation the validity of the mark would be prima facie presumed if it is registered. However, the Court refrained from further commenting on this aspect as it considered that such deliberation could prejudice the merits of the case. Ultimately, the Court stated that the Single Judge should have referred the matter to a larger bench of two judges because he was unable to agree with the decisions of co-ordinate Single Judges. The suit was accordingly restored before the Single Judge.

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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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