Others

SpicyIP Weekly Review (October 21-November 3)


Thematic Highlight

Adarsh wrote a two-part post on the various misunderstandings surrounding the Plant Varieties Act (“PPV Act“). In the first part of the post, he focussed on the Public Notice 01/2019 (“Notice“) published in May 2019, which created a compound system for seeking registration of ‘hybrids’ and ‘parental lines’. He points out that the Notice is ultra vires since the Notice has been issued under Section 20 of the PPV Act, which is simply the provision empowering the PPV Authority to examine any filed applications for acceptance and does not give the power to frame such guidelines. In the second part of this post, he points out that the Notice is ultra vires qua the linking of the eligibility criteria between patents and hybrids i.e., Distinctness, Uniformity and Stability and provides a detailed analysis of the same. Readers will have access to further discussion on this Notice in the third part of this post, which will be published shortly.

Topical Highlight

Balu posted about a judgment of the Delhi HC wherein Justice Prathiba M Singh issued an interim injunction directing various intermediaries to take down on a global basis, defamatory content uploaded on their platforms against Baba Ramdev. The Court relied on Section 79 of the IT Act (aka the safe harbour provision) which provides that in order to avail the immunity for intermediaries provided therein, intermediaries have to disable access to the offending material residing in or connected to a computer resource. In his post, Balu points out that the Court ignored all arguments relating to freedom of speech and conflict of laws.

SpicyIP Events

Pankhuri released an announcement that the Inter University Centre for IPR Studies, Cochin University of Science and Technology is organising the seventh annual ‘Rethinking Intellectual Property Rights’ workshop on the theme ‘Role of IPR in the Realm of Sports’ for law students and students of other disciplines interested in this area (under graduates, post graduates and research scholars). The programme is scheduled to be held from January 31 to February 2, 2020.

Other Posts

Latha Nair wrote about a Delhi HC judgment wherein the Court directed the Trademarks Registry to record grounds of refusal of applications, as required under Section 18 (5) of the Trademarks Act. The Court held that Rule 36 of the Trademarks Rules, in so far as it empowers the Registry to communicate the decision of the Registrar without the grounds of refusal or conditional acceptance, is arbitrary and inconsistent with the mandate of the statute and hence, Section 18(5) would prevail over Rule 36. Latha Nair points out that this decision will shorten the appeals procedure and save time of the aggrieved applicant. Further, she points out that the decision will help in increasing transparency in the Trade Marks Registry.

Swaraj wrote a post on the Indian Innovation Index 2019. (“Report“) , released by the Niti Aayog in partnership with the he Institute for Competitiveness. In his post, he summaries the objectives and the approach of the Report. The Report helps to understand every state’s innovation ranking and relative performance and aims to empower states to improve their innovation policies. In his post, he states that though the Report has collated quite a bit of useful data, it does not give very substantial recommendations.

Prashant wrote about a Delhi HC order which pointed out the dysfunctional nature of the IPAB and demanded answers from the Secretary of the DIIPT on the state of affairs at the IPAB. In his post, Prashant observes that the IPAB has been dysfunctional since the past 16 years and continues to remain so despite of past endeavours to rectify the situation. He suggests that the government should explore the option of shutting down the IPAB and reverting the powers vested in the IPAB to High Courts.

Other Developments

Indian

Judgments

Flipkart Internet Private Limited v. Somasundaram Ramkumar – Madras High Court [September 13, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “FLIPKART” by using a deceptively similar mark “FLIPPINGKART”. The Court observed that the Plaintiff was the registered proprietor of the mark “FLIPKART” and the Defendant had adopted the mark with a malafide intention to harm the goodwill and reputation of the Plaintiff.

M/s. MRF Limited v. Vinod S. George – Madras High Court [September 13, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “MRF”, and from infringing the Plaintiff’s copyright in its artistic works. The Defendant admitted to infringement and submitted that it would desist all infringing activities.

Mohammed Mohideen v. M/s. Kalanjiam Dresses – Madras High Court [September 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “KALANJIYAM” by using a deceptively similar mark “KALANJIAM” in respect of textile goods. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a similar mark in order to sell its goods. The Court ordered the grant of punitive damages to the tune of Rupees 5,000 in favour of the Plaintiff as the Defendant continued its infringing activities, despite the legal notice provided by the Plaintiff.

M/s. Mahesh Valve Products Private Limited and Others v. Kapila Rubber Industries – Madras High Court [September 23, 2019]

The Defendant was alleged to have infringed the Plaintiff’s trademark “STUMPER” as well as its copyright over the Plaintiff’s pouch. In proceedings before the Court, the Defendant admitted to having committed infringement and declared that it would desist any further infringing actions. Moreover, the Plaintiff did not press for damages in respect of the infringement. Accordingly, the Court disposed of the suit without awarding any damages to the Plaintiff.

M/s. Bell Products Private Limited v. M/s. Solanki Products and Another – Madras High Court [September 24, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark, as well as infringing the Plaintiff’s copyright in its artistic works with respect to stationery. The Court observed that the Defendant had adopted a similar mark and artistic work as that of the Plaintiff, and that the Plaintiff’s evidence to prove infringement remained unchallenged.

Castrol Limited v. Jay Bharat Petroleum Products Company (India) – Madras High Court [September 25, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing the Plaintiff’s copyright in its artistic work of the “CASTROL ACTIV” label. The Court arrived at this decision on the Defendant’s admission of infringement and submitted that it would desist all infringing activities.

Less Than Equals Three Services Private Limited and Another v. Paras Mehra and Others – Delhi High Court [October 11, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiffs’ copyright in its website “www.quickcompany.in” through the Defendants’ action of copying its source code. The preliminary question before the Court to decide under these facts pertained to whether the Plaintiff had disclosed the identity of the author of the copyrighted work as well an agreement vesting such copyright in the company in line with the requirement pronounced in the Tech Plus case. On an examination of the affidavit of the author of the copyrighted work, the Court concluded that the copyright was vested in the Plaintiff expressly. Accordingly, the Court dismissed the preliminary question and granted the Defendant the leave to seek framing of an issue in the same regard.

Jawed Habib Hair and Beauty Limited v. Jawed Habib Hair and Beauty and Another – Bombay High Court [October 16, 2019]

The Court granted a decree of interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s marks “JAWED HABIB”, “JH”, “JH JAWED HABIB” and “JAWED HABIB HAIR AND BEAUTY” as well as from infringing its copyright in the artistic work containing “JAWED HABIB” while carrying on the business of a salon. The Court noted that the Plaintiff was the registered proprietor of the aforementioned marks. The Court further observed that the franchise agreement entered into between the Parties had expired, and accordingly the Defendant could not be permitted to use the Plaintiff’s intellectual property.

Meher Distilleries Private Limited v. Raisen Marketing Private Limited and Another – Bombay High Court [October 17, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark, along with its copyright in the artistic work embossed on its liquor bottles and packaging. The Court considered the fact that the Defendant was a habitual offender, and noted the existence of a strong prima facie case for injunction.

M/s. Super Cassettes Industries Private Limited v. KTV News and Entertainment (KTV) – Delhi High Court [October 18, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid licence. The Court observed that the Defendant had committed repeated infringement by ignoring communications from the Plaintiff and failing to pay licence fees. The Plaintiff was further granted damages of Rupees 25 lakhs, considering the substantial loss and damage caused by the Defendant on account of its continuous infringement.

M/s. Steer Engineering Private Limited v. M/s. Glaxosmithkline Consumer Healthcare Holdings (US) LLC – Karnataka High Court [October 18, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged use of information maintained by the Appellant concerning the nutritional drink Horlicks, along with the Respondents’ revealing confidential information through filing an International Patent Application in respect of the extrusion process required to be implemented for the manufacture of nutritional drinks. The Appellant filed a case claiming copyright in information, as well as claiming the grant of an injunction in respect of the patent application. The Trial Judge noted that the Master Services Agreement entered into between the Parties gave the Respondents control over all information which was gathered for the purposes of any project of intellectual property rights between the Parties. Additionally, the Trial Judge noted that the three elements to prove grant of injunction were not fulfilled by the Appellant, as it had placed no documents to show the test of experiments or even that the experiments were done within the premises of the Appellant. The Appellant filed an appeal to this decision. With respect to the infringement of copyright in respect of the information, the Court noted that the Appellant had failed to make a prima facie case before it as it had not placed the original document before the Court but a redacted version of the same. In dealing with the confidential information revealed through the filing of the patent application, the Court noted that the Appellant had not indicated when the same had been generated, and had failed to identify the scope of such information. The Court also noted that the patent application was filed in 2016 but the Appellant filed an action in this respect only in 2019. In light of the aforementioned discussion, the Court noted that the decision of the Trial Judge was not exercised in a perverse manner. Accordingly, the appeal was dismissed by the Court without any costs.

 Make My Trip (India) Private Limited v. Make My Travel (India) Private Limited – Delhi High Court [October 18, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “MAKEMYTRIP” through the use of a deceptively similar mark “MAKE MY TRAVEL”, abbreviated identical to the Plaintiff’s mark “MMT”, along with the use of the tag line “DREAMS UNLIMITED”, with respect to travel services. In arriving at this decision, the Court observed that the marks of the Parties were phonetically, visually, structurally and conceptually similar as the Defendant had merely changed the last word of the Plaintiff’s mark, thereby conveying the same meaning, idea and concept. Moreover, the Court noted that the target audience of both the Parties is the same. With respect to tag lines, the Court noted that the Defendant’s tag line “DREAMS UNLIMITED” was deceptively similar to those of the Plaintiff’s, namely “HOTELS UNLIMITED” and “MEMORIES UNLIMITED”, as they had no difference in idea or concept. Having considered these aspects, the Court noted that all the three elements for the grant of an interim injunction tipped in favour of the Plaintiff. Furthermore, the Court noted that the Defendant’s adoption of the mark was dishonest in nature and its defences of suppression and acquiescence would be subjected to a deeper analysis during the course of trial.

Larsen & Toubro Limited v. Bindra Electric Company and Another – Delhi District Court [October 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “L & T” and its variations, by using deceptively similar marks in respect of offering construction services. The Court noted that the Plaintiff had failed to prove that the goods sold by the Defendant No. 1 were counterfeit or that they carried the logo of the Plaintiff, and hence the case against it was dismissed. With respect to Defendant No. 2, the Local Commissioner had found certain products in its premises which carried marks deceptively similar to those of the Plaintiff. Accordingly, the Court granted damages of Rupees 10,000 towards damages on account of loss of profits based on the quantity of the recovered products from the Defendant No. 2’s premises.

Rao Chunni Lal Kanwar Singh Educational Trust and Another v. Aravali International School and Another – Punjab-Haryana High Court [October 22, 2019]

The Petitioner filed a revision petition challenging a previous order which allowed for the review of an order passed in 2018. The Petitioner argued that the ground of copyright could not serve as a cause of action in order to restraint a person from running an institute with a similar name. However, it was pointed out by review that the Respondents had registered its mark since 2004. Accordingly, the order of 2018 was restored, as the error on part of the previous court was expressly evident.

State v. Nawal Jain – Delhi District Court [October 30, 2019]

The accused in this case was found in possession of duplicate bats, basketballs, badminton rackets and other sports items bearing a logo of “PUMA” and “NIVIA”. The Court emphasized that it is a principle of criminal law that prosecution is supposed to prove its case beyond reasonable doubts by leading on reliable, cogent and convincing evidence. It was noted in the findings of the Court that the complainant had not received any special training in distinguishing fake goods from original ones. Additionally, there was no recording of the raid being conducted, thereby making it doubtful and improbable. In light of these lapses, the Court noted that the Prosecution had failed to prove its case beyond doubt, and the accused was entitled to a benefit of doubt.

Hindustan Unilever Limited v. Rahul Shaw – Calcutta High Court [October 30, 2019]

The Court granted an ex-parte decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “ACTIVE WHEEL”, “SURF EXCEL” and “SUNLIGHT” by using the marks “ACTIVE WHEEL”, “SURF EXCEL EASY WASH” and “SUNLIGHT” 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 infringed the artistic works of the Petitioner, comprised in the label, packaging, trade dress and overall get-up of its products.

Hindustan Unilever Limited v. Rajesh Jain – Calcutta High Court [October 30, 2019]

The Court granted an ex-parte decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “RIN” and “VIM” by using a deceptively similar mark “RIM” in respect of selling detergent products. The Court observed that the Petitioner had prima facie proven infringement by the Respondent’s mark, and the balance of convenience also lay in its favour.

Su-Kam Power Systems Limited v. Mr. Kunwer Sachdev and Another – Delhi High Court [October 30, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged use of the Plaintiff’s mark “SU-KAM”. At the outset, the Court noted that the Plaintiff was the registered proprietor of the mark, and the Defendant No. 1’s defence to use of the mark on the basis of its prior adoption and licencing would be inconsequential to the result of the case. Moreover, the Court noted that the trademark licencing agreement between the Parties was only for cable TV business, as they were only conducting that business at that point of time. Regarding the deed of assignment for the mark, the Court observed that the same was void for breach of fiduciary duty and on account of lack of quorum at the Board Meeting, thereby discounting Defendant No. 1 from relying on it. The Court also stated that the Defendant No. 1 was estopped from leading evidence to prove its title to the mark as it had made representations that the Plaintiff was its exclusive owner. In light of the aforementioned points, the Court noted that the Defendants had no real prospect for defending the Plaintiff’s allegations, and there was no reason for a trial.

GSK Consumer Healthcare SA v. EG Pharmaceuticals & Others – Delhi High Court [October 31, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s mark “OTRIVIN” through adoption of a deceptively similar mark “BIOTRIVIN” in respect of nasal decongestant. The Court observed in the beginning that the Defendants had presented mere bare denials in its written statement, without providing a counter to the Plaintiff’s written statement. Deciding on the similarity of the mark, the Court observed that the Defendant could not use the prefix “BIO” to distinguish its mark from the Plaintiff’s mark. Moreover, the Court noted that the drugs being sold under the rival marks had different chemical compositions, and a confusion between them would be fatal to an “old customer”. Further, the Court stated that an action for infringement could not be maintained against the Defendant as its mark was previously registered, and though its registration had lapsed, the same had not been removed from the Trademark Register. Regardless of the Plaintiff not selling its goods in India, the Court observed that a possibility of confusion for a foreign brand could arise in this extremely globalized world. Ultimately, the Court noted that the Plaintiff had fulfilled all the three elements for the grant of an injunction to award it an interim injunction against passing off its drug.

News

  • Delhi HC raps Trade Marks Registry for delay in registrations, says process needs to be streamlined.
  • GI body asks Odisha activist to file documents afresh
  • Bajaj Auto, TVS Motor settle all cases related to patent infringement
  • West Bengal wins ‘sticky’ Rosogolla battle with Odisha, gets to keep GI tag on coveted dessert
  • The Patents (2nd Amendment) Rules, 2019 – published for objections or suggestions
  • The Draft Designs (Amendment) Rules, 2019 – published for objections or suggestions
  • Delhi HC directs Registrar of Trade Marks to explain backdated uploading of O-3 notice on website
  • Dr Zeus accuses Bala makers of remaking his hit song ‘Don’t Be Shy’ without permission
  • Madras High Court allows scriptwriter to file fresh plagiarism suit against Vijay’s film Bigil
  • DPIIT launches app for Intellectual Property Rights for SMEs and startups

International

  • Facebook uses copyright law to tackle hacking operations and phishing websites
  • House of Representatives voted to approve the Copyright Alternative in Small-Claims Enforcement Act
  • Europe joins international agreement on geographical indications
  • Katy Perry sued for $150000 by photo agency due to copyright infringement over old Halloween picture
  • TuneIn loses its massive copyright infringement suit in the UK
  • French media groups to take Google copyright fight to court

 

 

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