Others

SpicyIP Fortnightly Review (Dec 2-15)


Topical Highlight

Divij wrote a post on a recent order of the Supreme Court in Google India v Visakha Industries. Through this order, the Supreme Court denied to quash defamation proceedings against Google for its failure to expeditiously remove allegedly defamatory material from its ‘Google Group’ service. Divij notes that this decision is important for online intermediaries operating in India, as it holds that online intermediaries may be liable as a ‘publisher’ in criminal defamation proceedings under the Indian Penal Code in certain circumstances.

Thematic Highlights

In her post, Latha Nair discussed the opinion of the Advocate General (AG) of the European Court of Justice in Sky Plc v Sky Kick UK in light of the Indian Supreme Court’s decision in the Charminar case of 1996. She noted that both cases discuss the width of specifications of a trademark, and their relevance to ‘non-use’ claims and infringement proceedings generally.

Other Posts

Adarsh wrote a post on the decision of the highest court of Brazil on the overlap between patents and protection of plant varieties. The judgment concerns a claim by an association of farmers on their right to use, replant, sell, donate and exchange Roundup Ready® Soybean Seeds and produce therefrom, without paying any royalties to Monsanto. The judgment holds that the farmers are obligated to pay Monsanto for use of these seeds and that the farmers’ privilege under plant variety law cannot limit rights under patent law. They noted that patent law protected only the gene and the insertion process, and was distinct from the plant variety protection, which extended only to the variety. Further, the court noted that the exhaustion principle is inapplicable and that exceptions within the plant variety law cannot extend to patent law because the two are separate, incompatible laws.

Divij brought to our notice the sale of the ‘.org. domain registry to a private equity organisation. In his post, he discusses the ramifications of this move, with widespread concerns over the privatization of internet commons and possibly increased censorship owing to the change in the non-profit status of the domain name registrar.

Pankhuri informed us that Prof. (Dr.) Shamnad Basheer has been identified as one of the 50 Most Influential People in IP 2019 by Managing IP (MIP) for his outstanding contribution to the world of IP. He was one of only two Indians on the list, the other being Justice Ravindra Bhat, who was recently elevated to the Supreme Court.

Divij brought to our notice WIPO’s Public Consultation on AI and Intellectual Property, the deadline for which is February 14, 2020.

Rishabh wrote a tidbit on the recent press release by the Ministry of Commerce and Industry, which clarified that any order of the Intellectual Property Appellate Board and any decision of intellectual property offices can be challenged before High Courts by way of a writ petition under Article 226 of the Constitution and before the Supreme Court by way of Special Leave Petition under Article 136 of the Constitution.

In a guest post, Mathangi provides a comparative analysis of the requirement of ‘originality’ under design law. She notes that both the Indian and European jurisdictions give paramountcy to the requirement of originality, but the EU has been far more successful in ensuring this assessment is objective in nature.

Adarsh Ramanujan wrote a two-part post on the latest Draft Access and Benefit Sharing Guidelines. In the first part, he provides a short summary of the regulations, set up under Section 21(4) of the Biological Diversity Act 2002. He notes that making State Biodiversity Boards bound by regulations for benefit-sharing when exercising powers conferred under Sections 23 (b) and 24 is a positive change, as it prevents arbitrariness on their part. In the second part, he discusses the difficulties that may arise due to the proposed definition of ‘convention breeding’ in the context of exemptions under Section 2(f).   He also critically analyses the changes made to exemptions under Section 40 and value-added products. Further, he notes the problem of appointing the NBA as the checkpoint for the Nagoya Protocol.

Other Developments

Indian

Judgments

ITC Limited v. Ganesh Flour Mills and Another – Madras High Court [November 1, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing the Plaintiff’s copyright in its label for its product sold under the mark “AASHIRVAAD” by using a label containing identical elements for its mark “GANESH”. In arriving at this decision, the Court noted that the label used by the Defendants was identical to that of the Plaintiff, and may create a confusion in the mind of customers. The Court went on to note that the label used by the Defendants was the clear label of the Plaintiff.

Dhanam Textiles v. Gowri Textiles and Others – Madras High Court [November 4, 2019]

The Court granted an ex parte injunction restraining the Defendants No. 1 and 2 from infringing and passing off the Plaintiff’s marks, namely “MUBARAK” and “360 BRAND”, along with infringing the “THILLANA” label by using deceptively similar marks and labels in respect of selling lungies. The Court noted that the evidence submitted by the Plaintiff was uncontroverted and unchallenged, and accordingly passed an order for it.

M/s. N.A. Thangarajan & Sons v. M/s. 1st Choice Food Products – Madras High Court [November 5, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “HANUMAN” with device of a flying Hanuman by using an identical device. The Court observed that the evidence filed by the Plaintiff clearly established the nature of its business running with reputation and goodwill. Accordingly, the Court noted that the Plaintiff had proved its claim.

Rajdeep Energies Private Limited v. ResQ Technologies Private Limited – Madras High Court [November 7, 2019]

The Court dismissed an application for vacating an interim injunction against the Applicant and granted a permanent injunction by restraining the Applicant from infringing and passing off the Respondent’s mark “RESQ” by using an identical mark in respect of selling UPS and inverters. In arriving at this decision, the Court noted that the examination report issued by the Registry to the Applicant contained the Respondent’s mark. Accordingly, the Applicant’s adoption of the mark could not have been honest and bona fide. Furthermore, the Court observed that the Respondent had a user date three months prior to the Applicant’s registration, and was prima facie the prior user of the mark. Ultimately, the Court noted that mere delay without anything more does not indicate acquiescence, and that latches and delay in equity could only be furthered by a person who fairly and honestly adopted the mark.

M/s. Power Soaps Limited and Another v. M/s. J.K. Cosmetics and Another – Madras High Court [November 7, 2019]

The Court granted a permanent injunction restraining the Defendant from using the mark “POWER PAX” in infringing and passing off the Plaintiff’s mark “POWER MAX”, along with its copyright in the artistic work contained in the label. The Court observed that the evidence of the Plaintiff was unchallenged and accordingly, the Plaintiff had proved its case that it was the registered owner of the marks.

Merck Sharp and Dohme Corp. & Anr. v. Sanjeev Gupta and Others – Delhi High Court [November 18, 2019]

The Court affirmed the prior grant of an interim injunction restraining the Defendants from infringing the Plaintiffs’ patent in its drug “SITAGLIPTIN”. In arriving at this decision, the Court noted that the Defendants manufactured the patented products in India, which was in violation of the patentee’s exclusive rights. Additionally, the Court rejected the Defendants’ argument that the Drug Controller had granted them a licence to manufacture the drug under the Drugs and Cosmetics Act, 1940, and noted that the Drug Controller did not conduct an enquiry into whether a prior patent-protected such a drug. Accordingly, the Court observed that the interim injunction would continue in favour of the Plaintiffs until the final disposal of the suit.

Arun Chopra v. Kaka-Ka Dhaba Private Limited and Others – Delhi High Court [November 18, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged use of the marks “KAKA DA DHABA”, “KAKA KA RESTAURANT” and “KAKA KA GARDEN” in infringing and passing off the Plaintiff’s mark “K-D-H KAKE DA HOTEL”. The Courts granted interim injunctions in favour of the Plaintiff on previous occasions. Having filed a suit for cancellation of the Defendants’ marks, the Plaintiff sought a stay of the proceedings in the infringement case filed by it. The Court noted that the rival marks were phonetically and structurally similar and that its plea was prima facie tenable. However, it noted that the case would be stayed until the disposal of the rectification application filed by the Plaintiff.

Super Cassettes Industries Private Limited v. M/s. ATL NewsSuper Cassettes Industries Private Limited v. Shri Krishna Cable NetworkSuper Cassettes Industries Private Limited v. My News/ My TV NewsSuper Cassettes Industries Private Limited v. Rashmi Vision – Delhi District Court [November 18, 2019]

The Court granted ex parte permanent injunctions restraining the Defendants 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 Defendants without valid licences. The Court observed that the Defendants had committed continuous infringement by ignoring communications from the Plaintiff and failing to pay licence fees. The Plaintiff was further granted damages of Rupees 5 lakhs, considering the substantial loss and damage caused by the Defendants on account of its continuous infringement.

M/s. Elofic Industries (India) v. Mr. Viney Kumar Rai and Another – Delhi District Court [November 18, 2019]

The Court granted an ex parte decree of permanent injunction restraining the Defendants from infringing the Plaintiff’s copyright in its artistic work bearing the mark “ELOFIC” by using an identical artistic work on the packaging of its product. The Court observed that the Plaintiff was the registered proprietor of the mark “ELOFIC” and had discharged its burden of proving the case through unrebutted testimony. Additionally, the Court granted punitive damages to the tune of Rupees 5 lakhs in favour of the Plaintiff on account of the continuous infringement of its copyright.

Nike Innovate CV v. Shoesnation and Another – Delhi District Court [November 18, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s trademark in its “SWOOSH DEVICE” by using a deceptively similar device on its footwear. In arriving at this decision, the Court noted that the Plaintiff was the registered proprietor of its mark, and the Defendants’ use of the same would lead to confusion of an average person with average intelligence. Additionally, the Court awarded damages of Rupees 40,000 to the Plaintiff after the Defendants’ admission of the sales made under the mark.

Hindustan Unilever Limited v. Brijesh Nepokar – Calcutta High Court [November 19, 2019]

The Court granted a decree of interim injunction restraining the Respondent from using the Petitioner’s artistic work in respect of its product, stating that it was deceptively similar to that of the Petitioner.

Sharma Ayurved Private Limited v. B.N. Sharma Ayurved Private Limited – Calcutta High Court [November 19, 2019]

The Court refused the grant of an interim injunction in favour of the Plaintiff from restraining the Defendant from using an identical artistic work for the sale of hair oil. The Court noted that on the partition of the partnership firm constituting the Parties, the Defendant was not precluded from using the label. Furthermore, the Court observed that the case involved piercing of the corporate veil of the Plaintiff so that members of the same family (including the Defendant) could not be prevented from using the artistic work for carrying out the family business.

Intex Enterprises Private Limited and Another v. Sawariya Telecom – Delhi District Court [November 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from selling products under the mark “SINTEX”, being deceptively similar to the Plaintiff’s registered mark “INTEX”. Additionally, the Court noted that the goods sold by the Defendant under the mark “INTEX” were not counterfeit goods, as the Plaintiff had failed to prove the same through any lab report or expert opinion.

Novex Communications Private Limited v. Gipsy Hospitality and Destinations Private Limited – Bombay High Court [November 21, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its sound recording, “APNA TIME AAYEGA”. The Court observed that the Defendant was aware of the Plaintiff’s copyright in its sound recording and had obtained licences on previous occasions. Accordingly, the subsequent deliberate use of the recording without obtaining a licence amounted to a prima facie case of copyright infringement.

Novex Communications Private Limited v. N.S. Hospitality Private Limited and Others – Bombay High Court [November 22, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its sound recording by performing it on-ground. The Court observed that the Defendant was aware of the Plaintiff’s copyright in its sound recording and had obtained licences on previous occasions. Accordingly, the subsequent deliberate use of the recording without obtaining a licence amounted to a prima facie case of copyright infringement.

Anurag Sanghi v. State and Others – Delhi High Court [November 25, 2019]

The dispute between the Parties arose on account of the Petitioner’s alleged infringement of the Respondent’s copyright in its needles. Though the Parties subsequently entered into an agreement, the Respondent claimed that the Petitioner continued to deal in infringing products. The Local Commissioner seized the allegedly infringing products from Petitioner’s premises and the Chief Metropolitan Magistrate passed an order stating that there should be an interim stay against it. The same was upheld by the Additional Sessions Judge subsequently. The Petitioner challenged the aforementioned orders on the sole ground that the offence under Section 63 of the Copyright Act, 1957 was not a cognizable and non-bailable offence, and prayed for quashing the FIR filed against him. The Court noted in respect of Section 63, that its classification as cognizable or non-cognizable should be guided by the period of maximum punishment which can be imposed for the offence contained therein. Applying this rationale, the Court observed that Section 63 would be a cognizable offence as the offence may extend to three years and a fine, and should be classified as falling under the second prong of Part II of the First Schedule of the CrPC. The Court further relied on the Supreme Court’s decision in Avinash Bhosale, where leave was granted on similar grounds under Section 63. Accordingly, the Court set aside the orders of the Chief Metropolitan Magistrate and the Additional Sessions Judge and directed the FIR to be quashed.

PVH Corpoation v. Mr. Manoj – Delhi District Court [November 26, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “VAN HEUSEN” in infringing the Plaintiff’s identical mark, along with its copyright in the artistic work contained in the mark. The Court noted that the Defendant had been carrying on infringing activities surreptitiously without any authority. Furthermore, the Court granted damages of Rupees 1 lakh in favour of the Plaintiff, considering that the Defendant had caused substantial loss and damage to the Plaintiff on account of its continuous infringement.

Royal International Company and Others v. Arun Mohanlal Joshi – Bombay High Court [November 27, 2019]

The dispute between the Parties arose on account of the Appellants’ alleged infringement and passing off of the Respondent’s mark “MUSAFIR” by using a deceptively similar mark “CHAL MUSAFIR”, along with an infringement of the Respondent’s copyright in the artistic work contained on its pouches. Accordingly, an ex parte interim injunction was granted in favour of the Respondent, and the Single Judge directed the Court Receiver to seize infringing pouches from the Appellants’ premises. Appellant No. 1 and Appellant No. 2 appealed against the order stating that the goods seized by the Court Receiver did not belong to them, and they were merely packaging the products. The aforementioned Appellants further challenged the findings of the Single Judge on the basis that they were not served a notice in Himachal Pradesh, that their goods were not spurious in nature and that they could not appear in Mumbai due to delay in the planes on the day of the hearing. The Court dismissed these challenge and noted that the Appellants were blatantly involved in infringement of the copyright of the Plaintiff in its mark “MUSAFIR” and the goodwill contained therein. Accordingly, the appeal was dismissed.

Levi Strauss & Co. v. Rajiv Sachdeva and Manoj Khurana and Another – Delhi District Court [November 27, 2019]

The Court granted a permanent injunction restraining the Defendants from using the mark “LECI STRAUSS AND CO.” in infringing and passing off the Plaintiff’s mark “LEVI’S” in respect of readymade garments as well as allied and cognate goods. In arriving at this decision, the Court observed that the Plaintiff’s goods were adjudged to be counterfeit in nature by the Plaintiff’s expert.

M/s. Himgiri Enterprises Private Limited v. M/s. Shree Balaji Electrical – Delhi District Court [November 30, 2019]

The Court granted a permanent injunction restraining Defendant No. 1 from infringing and passing off the Plaintiff’s mark “GIRISH” with or without the device of “TRISHUL”, by using it in respect of its goods. In arriving at this conclusion, the Court noted that the Plaintiff was the registered proprietor of the mark, and Defendant No. 1 had specifically signed an undertaking to cease infringing activities. In violating the terms of the undertaking, Defendant No. 1 had also violated the Plaintiff’s right in its mark.

Dystar Colours Distribution GmbH v. Jay Chemical Industries Limited – Calcutta High Court [December 2, 2019]

The Court noted that the valuation of the suit was at 10 crore Rupees and the cause of action concerned the infringement of the patent. Accordingly, the Court directed the suit to be treated as a ‘Commercial Suit’ and transferred the same to the ‘Commercial Division’ of the Court.

Shri Balaji Industrial Products Limited v. AIA Engineering Limited – Rajasthan High Court [December 4, 2019]

The Petitioner filed an application for stay of the suit concerning the Respondent’s patent rights on the ground that it had filed a revocation application before the IPAB. The Court observed that the Petitioner had not proceeded to the IPAB well in time, considering that an order was issued in favour of the Respondent in the patent suit. Relying upon the case of Alloys Wobben and Another v. Yogesh Mehra and Others, the Court observed that the power to stay a suit was discretionary and to be exercised on the basis of equitable principles. Accordingly, the Court dismissed the Petitioner’s application for a stay of the patent proceedings.

Raymond Limited v. Shahi Libas and Another – Bombay High Court [December 4, 2019]

The Court granted an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “RAYMOND” by its unauthorized use. In arriving at this decision, the Court noted that the photographs of the Defendants’ shop indicated the use and display of the Plaintiff’s registered mark “RAYMOND” on the signboard.

Hakimuddin Bhemat v. Supreme Sales Agency – Calcutta High Court [December 4, 2019]

The Court granted an ex parte ad interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its artistic work “BHARAT SHAKTI” by using a deceptively similar label “BHARAT SUPREME SHAKTI”. The Court noted that a prima facie case in favour of the Plaintiff was made out, and ordered the appointed Receiver to make an inventory and submit its report in respect of the infringed products.

Sajeev Pillai v. Venu Kunnapalli – Kerala High Court [December 11, 2019]

The dispute between the Parties concerned release of the film “MAMANKAM”, a Malayalam film. The Appellant claimed that though he was the scriptwriter, the shooting of the film resulted in mutilating, distorting and modifying the script. Respondent No. 1 claimed that the Appellant assigned his work, and accordingly lost copyright ownership over the same. The Court noted that the claim for moral rights made by the Appellant could only be adjudged after a full-fledged trial. Additionally, it noted that the Appellant was the author of the screenplay and script of the film, and if his name was replaced by that of another, it would cause unimaginable harm to him. In view of the expenditure incurred and the arrangements made by Respondent No. 1 in producing and distributing the film, the Court noted that the film was permitted to release. However, it was ordered that the name of no scriptwriter or screenplay writer was to be included in credits until then.

News

  • Guidelines for filing PPH (Patent Prosecution Highway) request under the PPH pilot program between IPO (Indian Patent Office) and JPO (Japan Patent Office) have been published.
  • Filmmaker wins copyright infringement case against Google and YouTube.
  • Madras HC quashes proceedings against Vijay, Lyca Production in copyright infringement case.
  • ‘Mahanadhi’ Shobana moves court over copyright violations.
  • Hyderabad court bars digital release of ‘Bigil’.
  • Injunction order passed against Messe Berlin, organisers of ITB India.
  • Delhi HC dismisses plea alleging plagiarism against JNU Associate Professor.
  • Current patent laws are inadequate for artificial intelligence-related Intellectual Property: Report.
  • Bombay HC clears Panipat for release on December 6.
  • 1,031 facilitators empanelled for startups for free filing, facilitation of IP applications.
  • India has far fewer researchers than China, US, according to a think tank.
  • Netflix faces copyright fight over controversial documentary ‘Bikram: Yogi, Guru, Predator’.
  • USV in talks with Novartis to buy Jalra Trademark for Rs. 200 Crore.
  • Bombay HC restrains Chinese firm in a copyright case.
  • Surrogate tobacco advertisement: Maharashtra government seeks trademark information on brand.
  • Health activists oppose Sanofi’s patent applications for TB medicine in India.
  • AstraZeneca’s Johansson seeks further easing of IP rules in India.
  • Government notifies 6th June 2019 as the date on which section 2 of the Patents (Amendment) Act, 2002 in so far as it amends section 71 of the Patents Act.

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