Others

SpicyIP Review (September 23 – October 13)


Thematic Highlight 

In her first submission, fellowship applicant Akanshha Agrawal wrote on the free speech, morality and trademark law debate in light of the recent Iancu v Brunetti decision of the Supreme Court of the United States. She discussed the implications of the decision to strike down the ground of immorality to refuse trademark registration, including concerns overuse of racial slurs in trademarks. She also noted the use of ‘Urban Dictionary’ as evidence in the case. In the next part of her post, she will discuss potential implications on Indian jurisprudence around the immorality exclusion.

Topical Highlight

In a post co-authored by Pankhuri and Bhavik Shukla, it was reported that the Patent Office has released a list of newly enrolled/ retained scientific advisors last month. A total of 37 advisors have been included in the list. They note that despite this announcement, several rules may have been flouted, including those relating to annual updation of the list and the failure to include photographs and signature specimen, amongst others.

Other Posts

Justice Ravindra Bhat has recently been appointed to the Supreme Court of India. In his post, Prashant notes that this is a positive development for Indian IP jurisprudence since Justice Bhat has written several judgments on important IP cases, including the Roche v Cipla matter and the Monsanto case.

Divij wrote a post on the ruling of the CJEU in Case C-18/18 – Eva Glawischnig-Piesczek v Facebook Ireland Limited. In this case, the CJEU held that national courts may direct injunctions against online content-hosting intermediaries like Facebook, which require the intermediary to block the specific content globally, as well as blocking identical or equivalent content or information. Divij notes that this marks a crucial turn in online content regulation in the EU, as it explicitly endorses a ‘notice-and-stay down’ standard for content removal, and endorses upload filters for online content. He argues that the judgment marks a clear acknowledgement that the EU is willing to subject intermediaries to more stringent rules for preserving individual rights, at the same time, the ruling offers little balance on considerations of issues of freedom of expression.

The CJEU recently delivered two significant judgements on the scope of the delisting and de-indexing requirements (or the Right to Be Forgotten) to be followed by search engine operators under the EU’s data protection laws. In his post, Divij discusses the implications of these judgments. The first case seems to have held that Google is not obliged to carry out de-linking requests globally. In the second case, the Court held that for information that falls in special (sensitive) categories, there is a default obligation on search engines to de-link such information. Divij is sceptical about whether these decisions are victories for free speech in light of existing jurisprudence.

In her second submission, fellowship applicant Akanshha Agrawal wrote on the issues and challenges with the DPIIT’s Draft Guidelines on Geographical Indications Logo and Tagline. The draft proposes to create a logo and tagline as a mark that certifies goods that have received GI tags. She notes that while the draft will improve awareness and identification of GI goods, it fails to create a time limit on processing requests for grant and place responsibility on the government for misuse of the logo, amongst other things.

The Trade Marks Registry (TMR) had issued a public notice requesting suggestions from stakeholders regarding the display and availability of documents on its official website. In her post, Aparajita discusses the merits of the changes proposed, including the distinction created between a category of documents that will be fully accessible and can be viewed/downloaded by the public and a second category that will contain only the name of the document but viewing/downloading will be restricted in light of the RTI Act.

SpicyIP Events

Pankhuri brought to our notice the Second IP & Innovation Researchers of Asia Conference, which will be held on February 27 & 28, 2020 at the Faculty of Law, Universitas Indonesia, in Jakarta, Indonesia. The deadline for submission of the request to present a paper and the abstract is October 30, 2019.

Pankhuri brought to our notice the call for papers for the NUALS Intellectual Property Law Review, operating under the aegis of the Centre for Intellectual Property Rights (CIPR), NUALS. The deadline for submissions is December 15, 2019.

Other Developments

Judgments

Amrish Agarwal v. M/s. Venus Home Appliances Private Limited – Delhi High Court [August 27, 2019]

The dispute between the Parties concerned the delayed filing of the Legal Proceedings Certificate by the Plaintiff in an action relating to the mark “VENUS”. The Defendant filed a petition objecting the filing of this certificate at a late stage in the trial. The Court agreed with the Defendant that the certificate was to be filed at the initial stage. However, it permitted the Plaintiff to file the certificate in the present case on the ground that substantive justice was to be done between the Parties, contingent to the payment of Rupees 50,000 as costs to the Defendant. In further proceedings, the Court laid down guidelines stating that the Legal Proceedings Certificate had to be filed along with the plaint and also stated the documents to be filed in its absence. Moreover, the Court observed that at the time of admission or denial, the parties should not to be permitted to deny the fact of registration. Ultimately, the Court directed the Registrar to communicate the order to all District Judges for compliance, and the CGPDTM and the Joint Secretary, DPIIT to ensure that Legal Proceedings Certificate are issued without delay.

Hindustan Unilever Limited v. Satveer Kumar and Another – Calcutta High Court [September 9, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using deceptively similar trade dress, graphics and colour scheme with its mark “TOTAL SUPER DETERGENT POWDER” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and had substantiated the infringement of its mark by the Defendant. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Oravel Stays Private Limited v. Hotel Maan ManuhaarOravel Stays Private Limited v. Hotel Royal AashiyanaOravel Stays Private Limited v. Hotel Metro – Delhi District Court [September 9, 2019]

The Court granted ex parte decrees of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “OYO” by using an identical mark in connection with their hotel names. The Court noted that the Plaintiff was the registered proprietor of the mark and had made a prima facie case for infringement of the same. Additionally, the Court observed that the depiction of the Plaintiff’s mark was a deliberate and conscious move on the Defendants’ part which was aimed at denigrating the Plaintiff’s mark.

Hindustan Unilever Limited v. Atul Tiwari – Calcutta High Court [September 11, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s marks “SURF EXCEL” and “ACTIVE WHEEL” by using various marks in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the marks and the Defendant had adopted colourable and deceptive imitations of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Hindustan Unilever Limited v. Avadh Kishor Saha – Calcutta High Court [September 11, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s marks “RIN” and “ACTIVE WHEEL” by using a deceptively similar mark “SUPER ULTRA RIN” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the marks and had prima facie depicted the infringement of its marks. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Saregama India Limited v. Balaji Motion Pictures Limited and Others – Delhi High Court [September 13, 2019]

The Court granted an interim injunction restraining the Defendants from infringing the Plaintiff’s copyright in the song “VAR DHAGALA LAGLI KAL” through the use of its purported Hindi recreation in its cinematograph film “DREAM GIRL”. The Court noted that all rights in the music of the soon to be released film of the Defendants had been solely vested in Defendant No. 3. The Court stated that the Defendant No. 3 though paying royalty to the Plaintiff under the Court’s order did not choose to approach the Plaintiff before incorporating the Hindi version of the song in the cinematograph film, and this was in itself a sufficient ground for the grant of an injunction in the Plaintiff’s favour. The Court further observed that the Plaintiff had proved a prima facie case in its favour and irreparable injury and balance of convenience were also viewed to be in its favour. The Court finally noted that the exclusion of the Plaintiff from the credits of the film is an irreparable injury which cannot be compensated.

Reliance Life Sciences Private Limited v. M/s. Genetech Incorporation and Others – Delhi High Court [September 18, 2019]

The dispute between the Parties arose on account of the Appellant’s launch of the drug “TRASTUREL”, which was claimed to be the biosimilar of the Respondents’ “TRASTUZUMAB”. The Respondents claimed that the Appellant’s drug could not be termed a biosimilar due to inadequate testing to show such results. The Single Judge passed an interim injunction in favour of the Respondents and directed the Appellant to not call their drug a biosimilar to that of the Respondents’ drug. On appeal, the Court noted that the authorities had granted approval to the Appellant’s drug, and the same could not be considered illegal. Moreover, it was noted that the Single Judge could not injunct the approval granted by the authorities as it would necessarily mean decreeing the suit. The Court also observed that the Respondent’s patent had expired and it was also to be examined if it had filed the suit with malice to unnecessarily stifle competition. In light of the aforementioned discussion, the Court granted an interim stay on the order of the Single Judge.

Ad Ideas Private Limited v. View Ad Ideas and Others – Calcutta High Court [September 18, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendants from infringing and passing off of the Plaintiff’s mark “AD IDEAS” by using an identical name as part of the Defendants’ corporate name. In arriving at the decision, the Court noted that it could be prima facie ascertained that the Plaintiff was the prior user of the mark “AD IDEAS”, and the same had become exclusively associated with it. The Court further observed that the infringement by the Defendants was prima facie proven by the Plaintiff through the annexures advanced in the proceedings. Finally, the Court granted the Defendants a period of seven days to present their defence, failing which the interim order would be made final.

Shambhu Nath and Brothers and Others v. Usha International Limited – Calcutta High Court [September 26, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “TOOFAN” by using an identical mark in respect of electric fans. In arriving at the decision, the Court observed that the Plaintiff had been able to prima facie establish infringement on part of the Defendant. The Court also noted that the Plaintiff was a prior user of the mark and its goods had acquired goodwill and reputation in the market.

Asian Paints Limited v. Mytri Paints – Bombay High Court [September 26, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “APEX ULTIMA” by using the mark “ULTIMA” in respect of selling cement primers. The Court arrived at this decision after a perusal of the Defendant’s container but was of the opinion that the appointment of a Court Receiver would be unfit at the stage.

Shemaroo Entertainment Limited v. Landmark Apartments Private Limited and Others – Bombay High Court [September 30, 2019]

The Court granted an interim injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted songs from its film “DULHE RAJA” through its news channel “HINDI KHABER”. In determining infringement, the Court acknowledged that the Plaintiff was the owner of copyright in the film and had made out a prima facie case in its favour. Moreover, the Defendant had continued with its activities in spite of being served with a cease and desist notice.

SRMB Srijan Private Limited v. Super Smelters Limited and Others – Calcutta High Court [September 30, 2019]

The Court granted a decree of interim injunction restraining the Respondents from passing off the Petitioner’s “X” ribbed pattern used by it on TMT bars by using a deceptively similar “YY” ribbed pattern in respect of its TMT bars. The Court observed at the outset that the Petitioner’s registration under the Designs Act, 2000 had been cancelled in 2010. Accordingly, the Petitioner chose to rely on its trade mark rights to seek an action for passing off, stating that it had been a prior user of the “X” ribbed pattern in respect of TMT bars. In accepting the maintainability of this passing off action, the Court noted that the Petitioner began using its “X” ribbed pattern as an unregistered trademark before registration under the Designs Act, 2000, and continued to use it even after the cancellation of its design in 2010. Ultimately, the Court observed that the Petitioner had been successful in making a prima facie case for passing off, considering that the Respondents’ TMT bars’ trade dress and pattern were deceptively similar to those of the Petitioner.

Glaxo Smithkline Pharmaceuticals Limited and Another v. Naval Kishore Goyal and Others – Delhi High Court [October 1, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off of the Plaintiffs’ mark “ZENTEL” by using a deceptively similar mark “FENTEL” in respect of an identical pharmaceutical preparation. In arriving at this decision, the Court noted that the rival marks were visually, structurally and phonetically similar and were to be used as a treatment for the same condition. Moreover, the Court noted that the Plaintiffs had been successful in proving that their mark was a coined word and had been used since 1980. With respect to the question of passing off, the Court observed that the Defendants’ adoption of the mark “FENTEL” was dishonest and with a prima facie intent to pass off the goods of the Plaintiffs. Consequently, the Court awarded damages to the tune of Rupees 3 lakhs in favour of the Plaintiffs after disagreeing with their speculative method of calculation of the Defendants’ profits.

Kamal Raheja v. Universal Tradelink – Delhi High Court [October 4, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “AMAIRA” by using a deceptively similar mark “AAMIRA” in respect of cosmetics products and henna. The Court observed that the Plaintiff was the registered proprietor of the mark “AMAIRA” and had proved through unrebutted testimony that the Defendant was using a deceptively similar mark in order to pass off its goods.

News

  • IPAB becomes headless as Justice Manmohan Singh retires.
  • PhonePe drags BharatPe to court over usage of ‘Pe’ as a suffix.
  • All’s not well in Hero: Cousins cross swords over trademark.
  • Civil court summons singer Kinjal Dave over charges of copyright infringement.
  • AICTE asks universities to share patent rights with students for on campus inventions.
  • Delhi HC passes directions on documents to be mandatorily filed with plaint in trademark infringement matters.
  • Delhi HC restrains entity from using mark, colour scheme of Malabar Gold.
  • Cure.fit settles out of court with Book Your Game.
  • Machilipatnam imitation jewellery loses GI battle.
  • Ujda Chaman director planning to send legal notice to Bala makers: This is a clear case of copyright violation.
  • The Madras HC has restrained websites from uploading Sivakarthikeyan film
  • IMI releases Digital Music Study 2019 – ‘A National Snapshot of Music Engagement’.
  • Tamil Nadu earns two more GI tags- Dindigul Locks and Kandangi sarees.
  • Public health activists have expressed apprehensions that provisions in the proposed Regional Comprehensive Economic Partnership could dilute clauses in India’s patent law that enable the p production of affordable generic medicines for patients in India and the developing world.
  • Enai Noki Paayum Thota full movie leaked online to download by Tamilrockers.
  • AICTE to take up patent rights for on-campus inventions issue with commerce ministry
  • The clock is ticking on the question of whether ByteDance pays creators in relation to its famous app, TikTok.

Opinion

A piece in the New Indian Express discusses the possibility of a pan masala suing Dassault Aviation for copyright violation.

International

  • Global biosimilar market to increase 5 times by 2023.
  • High Court told not to review Lilly’s $20M Cialis patent loss.
  • Google may acquire TikTok rival Firework.
  • Meghan Markle Letter on what the law says about the press, privacy and the public’s right to know.

 

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