Others

SpicyIP Weekly Review (April 29-May 5)


Topical Highlight

Prarthana wrote a post on the imposition of a staggering Rs. 5 crore in costs in Nippon Steel & Sumitomo Metal Corporation v Kishor D Jain. The case concerned the sale of low-quality pipes to a customer intending to use the same in oil plants. This constituted trademark infringement because the pipes were improperly branded with Nippon Steel’s labels. Justice Kathawalla thought it necessary to impose such extraordinary damages because of the use of low-grade material in an oil plant may result in disasters of great magnitude, and hence must be deterred.

Thematic Highlight

I wrote a post examining Section 84 of the Trade Marks Act 1999, discussing whether it is possible to carve out an exception to the quorum requirements of the IPAB on the basis of the Chairman’s authority. I argue that a plain interpretation would not allow for such an exception, but highlight that the ambiguities in the provision may result in alternate interpretations as well.

Other Posts

Pankhuri informed us of scholarships available for Indian students pursuing an LL.M. or M.Jur. Program at Texas A&M University, which cover 50% of the tuition fees.

I covered the Delhi High Court’s issuance of notice to the Department of Industrial Policy and Promotion, which demanded the submission of a status report on the filling of vacancies in the IPAB. The status report submitted to DIPP revealed that advertisements to fill the posts of Technical Members for the Copyright and Trademarks side (2 members each) and Patents side (1 member) had been issued on July 25, 2018, and the DIPP is currently in the process of interviewing candidates that have applied and shall complete appointments within 3 months. The Delhi High Court fixed the matter for May 24, 2019, for progress updates.

SpicyIP Events

Pankhuri informed us of the International Conference on Intellectual Property and Development, on the topic ‘How to Benefit from the IP System’, to be held in Geneva on May 20, 2019, at the WIPO Conference Hall.

Pankhuri also informed us of the Inter-University Centre for Intellectual Property Rights Studies (IUCIPRS), CUSAT’s empirical study orientation programme on Research Methods in IPRs on June 29, 2019. The deadline for submission of application forms is May 25, 2019.

Other Developments

Indian

Judgments

Anil Verma v. R.K. Jewellers SK Group and Others – Delhi High Court [April 25, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s registered marks “WE BUY GOLD”, “CASH FOR GOLD” and “GOLD BUYERS” by use of identical marks in respect of gold and precious metals business. The Court granted an interim injunction in favour of the Plaintiff for the marks “CASH FOR GOLD” and “GOLD BUYERS” on the ground that the Plaintiff was the registered proprietor and the prior adopter of the marks, and that the Plaintiff’s marks were not descriptive in nature due to their failure to describe the entire range of services offered by it. However, the Court noted that the mark “WE BUY GOLD” completely described the activities undertaken by the Plaintiff, and was prima facie descriptive in nature. Another application filed by the Defendant was clubbed along with the application for an interim injunction, relating to the stay of the suit for infringement. The Court noted in this respect that though its findings were that the Plaintiff’s marks “CASH FOR GOLD” and “GOLD BUYERS” were not descriptive, while the mark “WE BUY GOLD” was descriptive, the Defendant’s challenge could not be disposed of off as being frivolous and without any basis. In view of the same, the Court observed that the Defendants would be permitted to file an application before the IPAB for cancellation of the three marks mentioned above, and the relief for infringement shall remain stayed for 3 months. Ultimately, a contempt petition filed by the Defendants was also decided with the aforementioned applications. The Defendants had alleged that the Plaintiff, being aware of the subsisting injunction against them had failed to abide by its terms and actively pursued a means of criminal intimidation. The Court stated that the Plaintiff was guilty of civil contempt due to its breach of the Court’s orders, and consequently ordered the Plaintiff to pay a sum of Rs. 20 lakhs to the Defendants.

M/s. Paridhi Udyog v. Jagdev Raj Sarwan Ram Dhiman – Delhi High Court [April 29, 2019]

The Court disposed of off the Plaintiff’s suit for the grant of an injunction to restrain the Defendant from using its mark “AADHAR SHREE” by using a deceptively similar mark “AADHAR SHILA” for the sale of Plaster of Paris and plaster sheets. In arriving at this decision, the Court observed that it did not have jurisdiction to entertain the case, because the Plaintiff’s principal place of business was in Rajasthan and the cause of action pertaining to the suit had also arisen in Rajasthan. Moreover, it was noted by the Court that the Plaintiff had failed to show that any of its goods were supplied in Delhi or that the Defendant had infringed its mark within the territorial jurisdiction of Delhi. However, the Court went on to discuss the substantial case of infringement and observed that the conflicting marks were closely similar in their appearance and phonetically similar, but did not grant any relief due to the lack of territorial jurisdiction to try the case.

Raymond Limited v. Radhika Export and Another – Bombay High Court [April 30, 2019]

The Court granted an ex parte interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered marks “RAYMOND” and “COMPLETE MAN”, and from infringing its copyright in the “RAYMOND” artistic work by using identical marks in respect of its apparel business. In arriving at the decision, the Court observed that the Plaintiff was the registered proprietor of the aforementioned marks, and has acquired immense goodwill and reputation in the same. Additionally, the Court noted that the Defendants’ were neither the authorized dealers nor the authorized distributors of the Plaintiff, and hence were not permitted to use the marks.

Novex Communication Private Limited v. Great Indian Nautanki Company Private Limited – Bombay High Court [May 2, 2019]

The Court granted an ex parte interim injunction restraining the Defendant from infringing and passing off the copyright in the Plaintiff’s sound recordings. It was noted that the memorandum of understanding between the parties which granted the Defendant the right to use the sound recordings of the Plaintiff had been terminated due to defaults made in the payment. The Court observed that in light of such facts, the Defendant infringed the Plaintiff’s copyright in its sound recordings by playing them without authorization.

Disposafe Health and Life Care Limited and Others v. Hindustan Syringes and Medical Devices Limited and Others – Delhi High Court [May 3, 2019]

The dispute between the Parties arose on account of two suits, wherein the Single Judge denied the grant of an injunction against the Respondents in the first suit. In the second suit, the Single Judge restrained the Appellants from using the marks “DISPOCAN” and “DISPO” formative marks, which were deceptively similar to the Respondents’ marks “DISPOVAN” and “DISPOCANN”. Before deciding on the issue, the Court noted that the Respondents had been given a limited right to use its registered mark “DISPOCANN”, in a particular style and only for a class of goods. Furthermore, the Court observed that the Respondents did not have registration for any mark named “DISPO” and that its registered marks were per se portmanteau words, wherein the word Dispo referred to the quality of the products. It was also noted that the word “DISPO” has not acquired a secondary association with the Respondents’ products. In light of the same, the Court mentioned that the impugned order of the Single Judge could not be sustained, but the Appellants would not be permitted to use “DISPOVAN” and “DISPOCANN” as the same was voluntarily undertaken by them.

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