Others

SpicyIP Fortnightly Review (August 11-25)


This month, we received the tragic news of the passing away of our Founder and Chief Mentor, Prof. (Dr.) Shamnad Basheer. He touched the lives of all of us here at SpicyIP in innumerable ways and always encouraged us with our work at the blog on a day-to-day basis. His loss cannot be put into words, but we hope to honour his legacy by continuing the good work he started with SpicyIP. See the tribute penned for our blog by Prashant Reddy here.

Topical Highlight

Aparajita wrote a post on Shogun Organics Ltd v Gauri Hari. This case concerned an infringement action for a patent over the manufacturing process of d-trans Allethrin (an active ingredient in mosquito repellants). The Delhi HC found patent infringement because, amongst other things, an adverse inference could be drawn over the defendant’s failure to disclose their process despite being directed to. This case brought out an important contradiction between the Patents Act 1970 and Insecticides Act 1968, where a ‘follow-up registration’ under the Insecticides Act requires imitating the process of the ‘original’ registration, but the Patent Act prevents such imitation if the process is registered as a patent. She concludes by offering possible solutions to this problem, in the form of consent from the patentee, or an order of invalidity of the patent.

Thematic Highlights

In a guest post, Dr Arul George Scaria addressed the legality of text and data mining in the India context. He specifically addresses the issue in light of JNU Data Depot, a project that allows on-site data and text mining of over 73 million journal articles. Dr Scaria argues that this project would be legal since the text and data mining would come within the purview of ‘fair dealing’ under Section 52 of the Copyright Act 1956. He concludes by noting the potential of the project in India’s quest to overcome socio-technological challenges and lead the way in innovative ways of unlocking knowledge discovery.

Prashant Reddy penned a reply to Dr Scaria’s post, arguing that the JNU Data Depot would not be protected under Section 52 of the Copyright Act 1956. He notes that the four-factor test that has evolved in the United States of America cannot be imported into Section 52 since this provision lists out specific instances in which fair dealing would be permitted. He also argues that the defence of personal use for research under Section 52(1)(i) would not be applicable since the Depot is open to the public for use. He concludes by laying out the potential ramifications of a legal dispute for JNU but states that a legal dispute would be unlikely.

Other Posts

Rajiv Choudhury wrote a post on Pelham v Hutter, a case on infringement of copyright in music before the Court of Justice of the European Union. The defendant, in this case, had sampled 2 seconds of music from the plaintiff’s record and used it on loop in their track. The case was decided in favour of the plaintiff since the music sampled, although short in duration, was easily discernible and recognisable. In his discussion, Rajiv Choudhury notes that using ‘recognition’ as a test for the infringement may be inappropriate since often music is created by tweaking existing tracks. If these tracks are only tweaked to the extent that they avoid recognition by the human ear, they would unfairly evade an infringement claim.

Divij wrote a post on the over the interim orders passed by the Delhi HC between July 27 and August 12, 2019. These orders consisted of website blocking injunctions for ISPs to block dozens of websites and their mirror/redirect versions, including popular pirate websites Tamilrockers and eztv. He notes that these orders add to Indian jurisprudence by requiring the Department of Telecom and the Ministry of IT to ‘suspend the domain name registration’ of the impugned website. He argues that this development represents a harsh stance towards online intermediaries and is not justified by existing laws, jurisprudence from courts or policy considerations. He concludes by noting that an ‘IP Ombudsman’ model, suggested by Prof. Basheer would be a suitable way to deal with blocking injunctions.

I wrote a SpicyIP Tidbit sharing information on the malfunctioning IPAB website and inviting readers to share any information they have on this issue.

Other Developments

Indian

Judgments

Hindustan Unilever Limited v. Seif Khan – Calcutta High Court [July 31, 2019]

The Court granted a decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “ACTIVE WHEEL” and “SURF EXCEL” by using the marks “ACTIVE LOVELY DETERGENT POWDER” and “LOVELY DETERGENT CAKE” respectively in respect of selling detergent. In arriving at the decision, the Court observed that the Petitioner was the registered proprietor of the marks. Moreover, the Court noted that the Respondent’s products were sold in a colourable and deceptive imitation of the Petitioner’s artistic works over which it possessed copyright, and hence gave rise to a prima facie case against it.

Hindustan Unilever Limited v. Beeru Mishra – Calcutta High Court [July 31, 2019]

The Court granted a decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “ACTIVE WHEEL” and “SURF EXCEL” by using the mark “AARO DETERGENT POWDER” in respect of selling detergent. The Court observed that the Petitioner was the registered proprietor of the marks and the Respondent’s trade dress was similar to that of the Petitioner’s packaging. Moreover, the Court noted that the Respondent’s products were sold in a colourable and deceptive imitation of the Petitioner’s artistic work over which it possessed copyright, and hence gave rise to a prima facie case against it.

Gopi v. M/s. Sha Jayaraja Industries– Madras High Court [August 2, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “GAYATHRI” by adopting a deceptively similar mark “GOLDEN GAYATHRI”, and infringing its copyright in the label “GODDESS GAYATHRI SITTING ON A PINK LOTUS WEARING A RED SAREE” by an identical label, adopted by the Defendant in respect of incense sticks. In arriving at the decision, the Court noted that the Defendant had copied each and every literary feature found on one side of the panel of the packaging carton. Terming it a slavish imitation, the Court observed that the Plaintiff had clearly proved the infringement of its trademark as well as its copyright in the label.

Hindustan Unilever Limited v. Himanshu Lohani and Another – Calcutta High Court [August 2, 2019]

The Court granted a decree of interim injunction restraining the Respondent from infringing the Petitioner’s mark “SURF EXCEL” by using the mark “TAJ ACTIVE” in respect of selling detergent. The Court observed that the Petitioner was the registered proprietor of the mark and the Respondent’s trade dress was similar to that of the Petitioner’s packaging. Moreover, the Court noted that the Respondent’s products were sold in a colourable and deceptive imitation of the Petitioner’s artistic work in its “SURF EXCEL MATIC” packaging over which it possessed copyright, and hence gave rise to a prima facie case against it.

Tata Sia Airlines Limited v. M/s. Pilot18 Aviation Book Store and Another – Delhi High Court [August 5, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “VISTARA” by adopting an identical mark in respect of various products, such as badges, name tags and other accessories. In arriving at the decision, the Court noted that the plea taken by the Defendants that they did not use the mark “VISTARA” was a grave misstatement. Additionally, the Court observed that the Defendants had engaged in the manufacture of uniforms, badges etc. of other prominent airlines which could translate into a serious security threat by giving unauthorized access to persons. Ultimately, the Court declared the mark “VISTARA” to be a well-known mark and noted that the use of the same in connection to unrelated services would also create confusion and deception.

Parle Agro Private Limited v. Shree Balaji Food and Beverages and Others – Bombay High Court [August 6, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “BAILLEY” by using an identical mark in respect of selling packaged water. The Parties had previously contracted through which the Defendant was authorized to manufacture and sell the Plaintiff’s products in certain territories of Maharashtra. However, this agreement between the Parties was terminated in 2018, when the Defendant failed to obtain a Bureau of Indian Standards (BIS) license. Subsequently, during a raid in the Defendant’s premises, the BIS found identical packaged water to that of the Plaintiff. The Court observed that the introduction of contaminated water in the market would lead to harm and injury to the general public. Accordingly, the Court emphasized that it had to remain particularly vigilant where packaged water was being passed off.

Astrazeneca AB and Others v. P. Kumar and Others – Delhi High Court [August 8, 2019]

The Court vacated the interim injunctions granted in favour of the Plaintiffs to restrain the Defendants from infringing its patents in the chemical component “TICAGRELOR”. The Court had previously passed several interim injunctions restraining the Defendants from dealing in the “TICAGRELOR” tablets. At the outset, the Defendants claimed that the Plaintiffs’ patents were liable to be revoked based on a prior invention registered in India which had already published the working of “TICAGRELOR”. The Defendants furthered evidence in the form of the Plaintiffs’ admissions across other jurisdictions, wherein it claimed that its patent actually involved a similar working of “TICAGRELOR” like the prior patent in India. Accordingly, the Court noted that a prima facie finding in favour of the Plaintiffs could not be arrived at in light of the serious challenge to the anticipation of “TICAGRELOR”. The Court also noted that the Plaintiffs had prima facie failed to exhibit “therapeutic efficacy” under Section 3(d) of the Patents Act, 1970 in respect of the “TICAGRELOR” tablets. However, the Court noted that the Plaintiffs had substantially disclosed its pending litigations, and no order for a vacation of the interim injunction could be passed on that ground. Evaluating all the claims, the Court noted that the Defendants had succeeded in making out a serious challenge to the validity of the Plaintiffs’ patents, which was sufficient to vacate the interim injunctions granted in its.

Meso Private Limited v. Liberty Shoes Limited and Another – Bombay High Court [August 8, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged infringement and passing off of the Plaintiff’s marks “FLIRT” and “LEGEND” by adopting identical marks in respect of its perfumes. The Single Judge granted an ad-interim injunction in favour of the Appellant, considering the presence of a prima facie case in its favour. In appeal, the interim order of the previous Single Judge was vacated by another Single Judge who noted that the marks “FLIRT” and “LEGEND” were common words, being extensively used by others in the market in relation to perfumes. In the present appeal, the Court noted that the Appellant was using the mark “DEVON” along with its marks “FLIRT” and “LEGEND” on the same side of the wrapper, whereas the Respondents were similarly using the mark “LIBERTY” along with the marks “FLIRT” and “LEGEND”. Accordingly, the Court observed that there could be no confusion as to the house names of the products. The Respondents also pointed out various manufacturers using the marks “FLIRT” and “LEGEND” in association with their house names. In furtherance, the Court noted that the trade channels for the two Parties were different, as the Respondents only sold their products through select outlets and e-commerce platforms and the Appellant was merely engaged in export of its products. The Court also stated that an average consumer of perfumes would not choose the products casually, and would give due importance to the house name they are being sold under. Therefore, the Court concluded that there could not be any confusion between the two products and refused to grant an interim injunction in favour of the Appellant.

Mr. A.D. Padmasingh Isaac v. A. Shakul Hameed – Madras High Court [August 9, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AACHI MASALA KULAMBU CHILLY POWDER” by adopting a get-up and colour scheme deceptively similar to it in connection with its mark “AUNTY’S FOR TASTY MASALA” in respect of spices. The Court considered the affidavit of the Defendant to arrive at the decision, wherein the Defendant had claimed that it would not make future use of its mark which had been declared “abandoned” by the Trademark Registry. In light of the Defendant’s affidavit, the Plaintiff gave up its prayers in relation to claiming account of profits and costs of the suit.

Radha Bharadwaj v. Ellipsis Entertainment Media LLP and Others – Bombay High Court [August 9, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s copyright in its book “A MOST AUSPICIOUS JOURNEY” in producing the film “MISSION MANGAL”. The Plaintiff claimed that the script of the film was substantially similar to its book. At the onset, the Court admonished the Plaintiff for not presenting the allegedly infringing script before it at the time of the hearing. The Court further stated that in the absence of such script it would be impossible for it to come to a prima facie conclusion. The Court also noted that it could not grant an injunction based on the teaser or trailer of the Defendants’ film, without analysing the whole script of the Defendants’. The Court observed that the Plaintiff’s oversight in permitting the Defendants to use the script to produce the film had shifted the balance of convenience in the Defendants’ favour. Accordingly, the Court rejected the Plaintiff’s claim for the grant of an injunction, stating that none of the three elements for its grant was in the Plaintiff’s favour.

Deepak Wadhwa v. Flipkart Internet Private Limited and Others – Calcutta High Court [August 14, 2019]

The Court granted a decree of interim injunction restraining the Defendants from infringing the Petitioner’s registered design in its wristwatches sold under the firm name “TIME WEAR AND BEYOND”, by adopting an identical design in respect of their watches. In arriving at this decision, the Court observed that the Petitioner had made out a prima facie case of infringement and the balance of convenience also lay in its favour.

Aegon Life Insurance Company Limited v. Aviva Life Insurance Company – Bombay High Court [August 19, 2019]

The Court refused to grant an injunction restraining the Defendant from passing off the Plaintiff’s mark “ITERM” by using a deceptively similar mark “ITERM” in combination with the words “AVIVA SMART”. The Court observed at the onset that the Plaintiff’s mark was highly descriptive of the services provided under it, as the term “ITERM” was a directly derived expression from “TERM INSURANCE”, the policies under which were sold online. In determining whether the mark had obtained a secondary meaning, the Court noted that the Plaintiff had a higher burden to discharge whereby it was expected to establish the significance of its mark in the public mind. The Court further observed that the Plaintiff had failed to do so as it had sold only a few insurances and its reliance on promotional expenses was misplaced. It was accordingly stated that sales and promotional expenditure could not be the sole criteria to grant secondary meaning, and the Plaintiff should have relied on market trends and surveys to establish the same. In respect of the infringement issue, the Court noted that the Plaintiff’s mark was not registered, and hence only a passing off action could be sustained. The Court dispelled any confusion between the Parties’ products on the ground that the customers would make an informed decision to purchase policies. Consequently, the Court held that the Plaintiff had failed to establish its mark as a trademark or distinctive of its products and hence was unable to make a prima facie case. Finally, the Court held that the Plaintiff was also unable to show the balance of convenience in its favour, as the Defendant’s policy had been sold to customers already, and any change in its status would result in financial damage to the customers.

Novartis AG and Another v. Natco Pharma Limited – Delhi High Court [August 20, 2019]

The Court vacated the interim injunction granted in favour of the Plaintiffs to restrain the Defendant from infringing its patents containing the chemical compound “CERITINIB”. In previous proceedings before it, the Court had adjourned the final determination of the case in light of the post-grant opposition filed by the Defendant. Accordingly, the Defendant brought it to the Court’s notice that the Plaintiff’s patents had been revoked by the Controller on the ground of lack of novelty on August 16, 2019. The Court in furtherance of the same observed that an injunction could not be granted in absence of a valid and a subsisting patent as the statutory right in its respect had been extinguished.

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