SpicyIP Fortnightly Review (June 3 – 16)

In a guest post, Arun Mohan shared his thoughts on the recent Ilayaraja judgment passed by the Madras High Court. He notes that the judgment consolidates producers’ rights over sound recordings that incorporate musical works that are created prior to and post the 2012 amendments. The judgment does, however, pay heed to the composers’ moral rights to paternity and integrity.

Pankhuri wrote a post on the developments from the order passed by the Delhi HC in the patent working PIL filed by Prof. Basheer. The government has failed to comply with the timeline laid down in an order by the Delhi HC for publishing the amended version of Form 27. Further, Pankhuri notes that the draft that was recently released misses out on a significant portion of the suggestions made, and subsequently critically examines certain aspects of the draft, including the information required and word limit for the statement of justification amongst others. She concludes by informing us how we can make our views known to the government, the deadline for which is June 30, 2019.

SpicyIP Events

Pankhuri shared details of the Conference on Intellectual Property through Collaborative Enforcement, to be held on June 20, 2019, at Lakshmipat Singhania Auditorium, PHD Chamber of Commerce and Industry, New Delhi. The conference is being organised by PHD Chamber of Commerce & Industry in association with the Office of the Controller General of Patents, Designs and Trade Marks, Ministry of Commerce & Industry and United IPR.

SpicyIP Jobs

Pankhuri informed us of the requirements and selection process for a job opening at S. Majumdar & Co. for a Litigation Associate.

Other Developments



M/s. Teleecare Network India Private Limited v. M/s. Asus Technology Private Limited and Others – Delhi High Court [May 28, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered marks “ZEN MOBILE” and “ZEN” by using a deceptively similar mark “ZENFONE” in respect of the sale of mobile phones. In arriving at the decision, the Court noted that the rationale behind the recognition of trademarks was to ensure that people do not get confused about the source of goods and services. Further, the Court observed that the Plaintiff’s registered marks were arbitrary in respect to mobile phones, and were accordingly entitled to higher protection. The Court also noted that the Plaintiff had furnished the registration certificates for its marks, and was the prior user of its marks since 2008. Additionally, the Court concluded that the Defendant had passed off the marks of the Plaintiff as all the three tests for passing off had been satisfied.

Pentel Kabushiki Kaisha and Another v. M/s. Arora Stationers and Others – Delhi High Court [May 28, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged use of the Appellants’ design concerning ballpoint pens. The Single Judge noted that the features alleged by the Appellants are not novel or substantially new or original to have protection under the Designs Act, and accordingly ruled against the grant of an injunction in its favour. The Appellants filed an appeal to this order, where the Court observed in the beginning that the Single Judge had failed to consider the fact that during the pendency of the suit, the Respondents had obtained registration for the same design as that of the Appellants. The Court noted that the Respondents have registered an identical design could not turn around and question the originality of the same when already registered by a prior registrant. Accordingly, the Court allowed the appeal and set aside the decision of the Single Judge.

M/S Crocs Inc USA v. M/S BATA India and Others – Delhi High Court [May 29, 2019]

The appeal was filed against an order which held six Shape Trademark Suits (STSs) filed by the Appellants as not maintainable. At the outset, the Court noted that in each of the STSs, the relief sought was for a permanent injunction on the grounds that the Defendants adopted and copied the shape trademark and trade dress of the Appellant. The Court observed that the Appellants made out a prima facie case for grant of the limited interim relief which would not prejudice the Defendants since the STSs against them were not being revived for the present and no similar STSs against any of them was permitted to be filed by the Appellant during the pendency of the present appeals. The Court further directed that during the pendency of the appeals, the impugned judgment of the Single Judge would not constitute a precedent to bar other STSs of the Appellant, and the maintainability of such STSs would be decided independently. Accordingly, the Court disposed the applications and set the list for final hearing on October 17, 2019.

M/s. Allied Blenders and Distillers Private Limited and Others v. Amit Dahanukar and Another – Delhi High Court [May 30, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged unauthorized use of the Plaintiffs’ marks “MANSION HOUSE” and “SAVOY CLUB” in respect of alcoholic beverages. Plaintiff No. 3 had granted Defendant No. 2 a license to use the aforementioned marks in 1983, and in an agreement in respect of buying of concentrates (used in alcoholic beverages) was entered into between the Parties in 1987. These agreements were terminated in 2003 and Plaintiff No. 3 entered into a licensing agreement with a third party. In spite of such termination, the Defendant allegedly continued to use the Plaintiff’s marks. In arriving at a decision, the Court noted that Plaintiff No. 3 was denied an injunction by the Bombay High Court in an identical proceeding against the same Defendant. Drawing from that decision, the Court observed that Plaintiff No. 3 had conceded before the Bombay High Court that they had transferred and assigned the aforementioned trademarks to Defendant No. 2 in 1987. The Court also stated an unexplained and inordinate delay of 11 years to be a cause to not award an injunction in favour of Plaintiff No. 3. With respect to the suit filed by Defendant No. 2 seeking to dismiss the suit for a permanent injunction of Plaintiff No. 3, the Court noted that regardless of the decision of the Bombay High Court, infringement of trademark gave a continuous cause of action to a party. Therefore, the fresh suit filed by Plaintiff No. 3 could not be dismissed on the ground that it amounted to activating an already relinquished part claim.

M/s. Agi Music Sdn Bhd v. Ilaiyaraja and Another – Madras High Court [June 4, 2019]

The dispute between the Parties arose over a licensing agreement for a sound recording. Defendant No. 1 is a world-renowned composer assigned his sound recordings to his wife, who further entered into a licensing agreement with the Plaintiff in respect of those recordings. As there was no term for the assignment, Defendant No. 1 claimed that the default period of 5 years be considered and therefore, the use of those sound recordings by the Plaintiff beyond the statutorily specified period would be an infringement of his recordings. The Court noted that the producers of the films held copyright in respect of the sound recordings of Defendant No. 1, as he had failed to produce any evidence of reservation to the same. The Court further stated that despite the assignment of rights in the sound recordings, Defendant No. 1 had a claim to authorship based on the provision relating to moral rights. Having decided the producer to be the owner of the sound recordings appearing in their cinematograph films, the Court observed that the assignment made by Defendant No. 1’s wife to the Plaintiff had no statutory sanction in regard to those specific recordings. Regardless, the Court noted that other sound recordings (not appearing in the cinematograph films) would be valid for the statutorily specified period of 5 years, as no term had been mentioned in the assignment deed.

Reliance Industries Limited and Another v. Dhananjay Dinkarrao Khairnar and Another – Bombay High Court [June 10, 2019]

Defendant No. 2 submitted to abide by the decree according to which they would be restrained by a permanent injunction from using the marks “JIOFIT” and “JOIFER” or any other marks deceptively similar to that of the Plaintiffs’ mark, “JIO”. Additionally, Defendant No. 2 agreed to furnish the correct account of the stocks available with it and return to the Plaintiffs all label, materials etc. with the infringing marks for destruction.

Siyaram Silk Mills Limited v. Stanford Siyaram Fashion Private Limited and Others – Bombay High Court [June 11, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s mark “SIYARAM” by using an identical mark for marketing apparels. This suit on infringement was stayed in light of the rectification filed by the Plaintiff against the registration granted to the Defendant. The Defendant opposed the filing of the infringement suit claiming that the Act prevented the Plaintiff from filing a suit for infringement as its mark was registered. The Court dismissed this argument stating that the Act expressly enabled filing of a suit for infringement against a registered mark. Therefore, it was noted that the action of passing off clubbed with the infringement suit was permitted.

M/s. Proline Incorporation v. Ramesh Jain – Calcutta High Court [June 12, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “SWETON” by using a deceptively similar mark “SWEETON” in respect of speakers and its components. In arriving at the decision, the Court observed that the marks were artistically, visually, phonetically and structurally similar, and the Defendant’s use of the mark would create confusion in the minds of customers. Moreover, it was observed by the Court that the Plaintiff’s mark was senior to the Defendant’s mark as the Plaintiff had used its mark since 1982.



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