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SpicyIP Weekly Review (July 8-14)


We had an extremely busy week at SpicyIP! Here’s the roundup:

Topical Highlight

In a guest post, Prashant Reddy wrote a piece on the Delhi HC’s decision to allow the current Chairman and Technical Expert for Plant Varieties to hear disputes in all matters, including patents, trademarks, etc. It has also declared that all orders passed by the IPAB without quorum are proper. Prashant argues that the judgment ignores the provisions of the Trade Marks Act, and makes a mockery of the entire idea of having a specialised tribunal for IP disputes.

Thematic Highlight

In the third post of the ongoing series on The Sustainable Seed Innovations Project, the research team of the project provides insight into the first phase of the project (Sustainable Seed Innovations 1.0 Project), which concluded with a conference (Sustainable Seed Innovations 1.0 Conference) held on September 15, 2017, in Bangalore. The research team shared the suggestions and recommendations made at the conference.

In the fourth post, Mrinalini Kochupillai provides further context to the genesis of the Sustainable Seed Innovations Project, discussing how the research idea evolved from an individual multi-disciplinary PhD project to an international collaboration.

In the fifth, sixth, and seventh posts, Mrinalini begins the discussion on the substance of the Sustainable Seeds Project. She first discusses the need for a three-pronged approach to incentivise and support sustainable seed innovations. Julia Köningera, Jasper Matthiessenb, Mrinalini Kochupillai and Prabhakar Rao then discuss the rationale, justification and means of implementing the three-pronged approach, which consists of reviving traditional ecological knowledge-based farming systems, re-designing of curriculums and re-thinking incentive mechanisms. She argues that the way forward for sustainable seed innovations involves the use of traditional methods alongside modern innovations.

Other Posts

In her third submission for the SpicyIP Fellowship, Arushi Gupta wrote on an interim order passed by a division bench in Crocs Inc v Aqualite India. This order found the earlier order passed by Justice Endlaw to be erroneous. First, it held that Mohan Lal allowed for registered designs to be protected through the remedy of passing off. Second, it discussed the Carlsberg decision and noted that this decision prohibits the simultaneous protection of registered designs and trademarks. However, Arushi notes that the order does not discuss more controversial policy issues in Justice Endlaw’s order, pertaining to overprotection, evergreening and the legislative intent of the trademark exclusion.

SpicyIP Events

Pankhuri informed us of the 5th International Patent Drafting Competition to be conducted by the Institute of Intellectual Property Research and Development, along with Khurana & Khurana, Advocates and IP Attorneys. The competition is to be held from September 2-25, 2019.

Pankhuri also informed us that the deadline for applying for the 7th SpicyIP Fellowship has been extended to July 31, 2019.

Other Developments

Indian

Judgments

Macleods Pharmaceuticals Limited v. Swisskem Healthcare and Another – Bombay High Court [July 2, 2019]

The Court rejected an application for an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered marks “PANDERM” and “PANDERM +” by using a deceptively similar mark “POLYDERM” in respect of medicinal drugs. The Court observed at the onset that the Defendants had failed to contest the suit at any stage, and the only question to be determined pertained to the similarity of the marks. The Court noted that there was no visual or phonetic similarity between the rival marks. The Court referred to the Cadila case decided by the Supreme Court wherein it laid down the guidelines to assess the deceptive similarity of marks. Relying on the guidelines, the Court observed that the rival marks belonged to the stream of dermatology, but contained no visual or structural similarity. Furthermore, the Court noted that the only similarity between the marks was the term “DERM”, while the prefixes “POLY” and “PAN” were completely distinct. Hence, the Court concluded that a person with average intelligence and imperfect recollection would not be confused between the rival marks. The Court also dismissed the Plaintiff’s contention of similarity between the rival cartons in light of the difference between the rival word marks.


Glaxo Group Limited v. Huk Natural Private Limited and Another
 – Delhi High Court [July 3, 2019]

The Court noted that Defendant No. 1 was not the main contesting defendant in the case, thereby rejecting the Plaintiff’s argument that though Defendant No. 1 had been acting under the authority of Defendant No. 2 who also owned the allegedly infringing mark, was the main contesting defendant. In light of this determination, the Court disagreed to grant an ex-parte injunction in favour of the Plaintiff according to the terms of the memorandum of parties, as the Plaintiff had made a wrong statement and further insisted upon the same.

Rajesh Kumar Agarwal and Another v. Sanjay Gupta – Calcutta High Court [July 3, 2019]

The dispute between the Parties arose on account of the Respondent’s alleged infringement of the Petitioner No. 1’s mark “GANPATI’S”. The Court noted that both the Parties adopted identical marks “OM GANPATI CATERERS” in 2009. The Court further observed that there appeared to be prima facie substance in the Respondent’s argument that Petitioner No. 1 had notice and knowledge of the Respondent’s use of the mark “GANPATI’S”. Moreover, the Court noted that the Petitioner No. 1 had failed to produce any documents to prove its proprietorship of the marks. Accordingly, the Respondent was ordered to file an affidavit-opposition within two weeks from the date of the judgment.

Amway India Enterprises Private Limited and Others v. 1MG Technologies Private Limited and Others – Delhi High Court [July 8, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged unauthorized sale of the Plaintiffs’ products under the marks “AMWAY”, “MODICARE” and “ORIFLAME” on e-commerce platforms, wherein such platforms had also been arrayed as Defendants. The Court studied the policies and the functioning of the Plaintiffs’ and Defendants’ in-depth before analysing the Local Commissioner’s report. Based on its analysis, the Court concluded that there existed large scale tampering of goods, and held the Defendant e-commerce platforms to be involved in the same. With respect to the policies of the e-commerce platforms, the Court observed that such platforms could not sell a product for which the seller was not authorized. Moreover, the Court observed that the Plaintiffs’ products had a different return policy from the actual one and the customer reviews for the same were very poor, indicating a loss to the reputation and goodwill of the various Plaintiffs. The Court also noted that the Plaintiffs’ marks were completely diluted as there was no way to confirm the genuineness of any goods, as the seller details were absent. In view of all these points, the Court concluded that the Plaintiffs had a legitimate grievance against the Defendants. With regard to infringement, the Court mentioned that the e-commerce platforms could not use the Plaintiffs’ marks for advertising, promotion or sale offers wherein the products were not genuine and such use would result in taking unfair advantage of the Plaintiffs’ marks. Accordingly, the Court stated that the Defendants were liable for infringement of the Plaintiff’s marks. The Court noted in respect of intermediary liability, that the e-commerce platforms to be considered intermediaries would have to fulfil due diligence requirements and comply with their own policies. However, the Court observed that the Defendants had turned a blind eye to the Plaintiff’s intimation of its own policies and continued displaying the Plaintiffs’ marks and allowing the sale of goods under such marks. The Court additionally held the Defendant e-commerce platforms liable for inducing breach of contract and further interfering with contractual relationships of the Plaintiffs and their distributors. Therefore, the Court passed an interim injunction in favour of the Plaintiffs restraining the Defendants from advertising, displaying, offering for sale the Plaintiffs’ products.

Yash Raj Films Private Limited v. Sri Sai Ganesh Productions and Others – Delhi High Court [July 8, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing the Plaintiff’s film “BAND BAAJA BAARAAT” by its dubbing and release in Tamil as a cinematograph film titled “JABARDASTH”. After examining the storyline of the two films, the Court observed that the owner’s exclusive right “to make a copy of the film” is not limited to merely a physical copy by the process of duplication, but includes a comparison between the substance of the two films. Furthermore, the Court noted that the Defendant had no real prospect of defending its claim, and the Plaintiff’s argument had gone rebutted.

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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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