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SpicyIP Weekly Review (July 1-7)


Thematic Highlight 

Pankhuri released the second post in the blog post series on The Sustainable Seed Innovations Project. In her post, she provides a brief look into Phase I and II of the Project. Phase I seeks to look into the incentives for farmer-level seed innovations from indigenous varieties in India and research about the the role of public recognition for farmers’ seed innovation in creating such incentives. Phase II seeks to publish a position paper for the Government of India, spread stories of innovative farmers on the internet and introduce a Digital Ledger Technology facilitated framework.

Topical Highlight

Rishabh posted an update on the WTO Tobacco Plain Packaging case. In his post, he summaries the appeal filed by Honduras and the Dominician Republic against the 2018 WTO Panel decision, which declared that the TPP Measures did not violate any obligations under international trade agreements. He also touches upon the arguments made by the International Trademark Association in their amicus brief filed before the Appellate Body. In his post, he notes that majority of the arguments centred around the interpretation of Article 20 of the TRIPS, which states that the use of a trademark should not be unjustifiably encumbered by special requirements in the course of trade.

Other Posts

Rishabh also published an insightful two-part post on the GI issues arising from the WTO Tobacco Plain Packaging case. In the first part, he focusses on the interpretation of several aspects of Article 22(b) of the TRIPS, which seeks to protect GIs through anti-competitive practices. Apart from delving into whether a prohibition of GIs on the packaging of tobacco products results in unfair competition, he also delves into the interpretation of “act of unfair competition” and the negative right to use GIs under Article 22(b). The next part of his post dealt with the interpretation of Article 24.3, which provides for protection of pre-existing rights of interested parties in GIs. In his post, he notes that the Panel held that this provision only applies to GI related obligations and not trademark obligations. The Panel concluded that the complainants failed to establish how the TPP Measures affected their pre-existing rights in the GIs, and thereby concluded that they could not avail protection under Article 22(b).

I wrote a follow-up post to Pankuri’s post on the Government’s proposed amendments to Form 27. In my post, I provided a brief recap of the patent working norms and compulsory licensing law under the Indian Patent Act. I then looked into the past compulsory license applications in India and the Patent Working PIL. I finally examined Natco’s compulsory license application under the proposed Form 27 and concluded it would not have succeeded.

Other Developments

Indian

Judgments

Anurag Sanghi and Another v. M/s. Knitpro International – Delhi High Court [June 11, 2019]

The dispute between the Parties arose on account of the Petitioners’ alleged infringement of the Respondent’s design in its needles. The Respondent filed a suit for the same, and further filed two more suits claiming passing off, and infringement of its copyright in the industrial drawing of the same knitting needles before the District Court. The suit for infringement of design was transferred to the High Court from the District Court. Accordingly, the Petitioners submitted that the other two suits should be heard along with the suit for infringement of design in light of the Mohan Lal ruling, wherein the Court stated that suits for infringement and passing off in relation to designs could be tried together if they had been filed in close proximity. The issue before the Court was to determine whether the other two suits could to be transferred to it. The Court answered the issue in affirmative, and observed that the facts in the three suits were intertwined and could not be “split” into different actions. It also cited the Carlsberg case to emphasize on the need for joinder of causes of action to avoid multiplicity of proceedings, and the waste of time, money and energy of the parties and courts. Accordingly, the other two suits were directed to be transferred to the High Court from the District Court in which they were pending.

Birla Corporation Limited and Another v. K.L.K. Cement Private Limited and Others – Calcutta High Court [June 25, 2019]

The Court granted an interim injunction restraining the Respondents from infringing and passing off the Petitioners’ registered marks “PERFECT” and “PERFECT PLUS” by using identical marks in respect of the sale of cement. In arriving at this decision, the Court noted that the Petitioners had produced enough material on record by way of cement bags and labels to indicate their right to protect their marks. Moreover, the Court observed that the Petitioners had made out a prima facie case for obtaining an interim order, and if the same was not granted they would suffer an irreparable loss.

MRF Limited v. Metro Tyres Limited – Delhi High Court [July 1, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s copyright in its advertisement concerning its “REVZ” range of tyres. Before delving into the substantial issue of infringement, the Court noted that the Copyright Act provided an independent protection to cinematograph films against its constituent parts. The Court further observed that though the term “cinematograph film” was not qualified with the word “original”, the subsequent sub-sections mandated the presence of originality for its protection under the Copyright Act. With regard to the definition of an infringing copy in respect of cinematograph films, the Court observed that the same would not cover physical copies only, but also any substantial or fundamental reproduction of such a cinematograph film. Moreover, the Court stated that the test laid down in R.G. Anand’s case could not be confined to merely literary works, and its general application to all copyrightable works is advisable. After looking at the substance of the two advertisements, the Court concluded that they were neither substantially nor materially similar. The Court elaborated on its conclusion by stating that the Plaintiff’s advertisement was more futuristic and emphasized on the manufacturing process of the tyre, while the Defendant’s advertisement sought to showcase the durability of the tyre. Moreover, the Court observed that the suit was filed after a year since the Defendant’s advertisement was first aired, and hence the Plaintiff was not entitled to any interim order.

Dabur India Limited v. Emami Limited – Delhi High Court [July 3, 2019]

The dispute between the Parties arose on account of the Defendant’s use of “ZANDU CHYAVANPRASHAD” advertisements in print as well as digital media in a way that was disparaging and injurious to the goodwill and reputation of the Plaintiff’s mark “DABUR CHYAWANPRASH”. The Court stated that the intent and overall effect of the advertisement had to be examined in order to determine the question of disparagement. Examining this aspect, the Court observed that the Plaintiff’s product was not the subject of comparison, rather comparison was with Chyawanprash as a generic product. Furthermore, the Court observed that the advertisements in print as well as digital media aimed at merely declaring that the Defendant’s product was sugar free and had certain benefits. The Court also rejected Plaintiff’s argument that the Defendant’s advertisements were disparaging generic Chyawanprash on the ground that the Defendant’s had merely pointed out differences between their product and generic Chyawanprash, and focussed on the health benefits of adopting sugar-free Chyawanprash. In view of the aforementioned discussion, the Court disposed off the case without restraining the Defendant from publishing the print or the digital advertisements.

Bennett, Coleman and Company Limited and Others v. Nina Bandwagon Private Limited – Bombay High Court [July 4, 2019]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiffs’ registered marks “MISS INDIA” and “MR. INDIA” by using identical or deceptively similar marks in respect of organizing beauty pageants. In arriving at this decision, the Court noted that the Plaintiffs had made out a prima facie case for the grant of an interim injunction.

Max Healthcare Institute Limited v. Sahrudya Health Care Private Limited – Delhi High Court [July 4, 2019]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered marks “MAX” and “MAX HOSPITAL” by using deceptively similar marks “MAXCURE HOSPITAL” and “MAXKURE” in respect of hospitals and health facilities. In arriving at the decision, the Court noted that the two marks were likely to cause confusion in the public at large. The Court further explained that the Plaintiff’s mark “MAX” was not generic in relation to healthcare services and was registered by the Plaintiff. In light of this, the Court observed that the test of infringement was only limited to the prominent word of the mark, thereby meaning that the adoption of merely “MAX” by the Defendant was infringing in nature as it was a prominent word in the Plaintiff’s mark. Ultimately, the Court agreed with the Plaintiff that the Defendant adopted the Plaintiff’s mark with a mala fide intent to ride over the goodwill of the Plaintiff and make a misrepresentation to the patients.

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