Others

SpicyIP Fortnightly Review (Dec 23 – Jan 5)


[This post has been authored by Bhavik Shukla, a 5th year student at NLIU, Bhopal]

Topical Highlight

Adarsh wrote a post on the recent order of the Supreme Court of India in Genetech Inc v Drug Controller General of India. Through this order, the Supreme Court set aside the interim order of the Division Bench of the Delhi High Court and restored the earlier order of the Single Judge. He notes that in restoring the earlier order, the Court relied upon its previous order requiring the Division Bench to hear both sides to the appeals together, along with the change in the status quo maintained by the Single Judge’s order without considering the balance of convenience. In his conclusion, Adarsh notes that the order does not make a marked difference to the position of Reliance as it has been allowed to sell the drug along with being given the go-ahead to participate in tenders. He ends the post on an apprehensive note, doubting whether Reliance would be pulled up for its violation, if any, under the Drug and Cosmetics Rules, 1996.

Thematic Highlight

In her post, Latha Nair analysed the recent decision of the Singapore High Court in Scotch Whisky Association v. Isetan Mitsukoshi Ltd. The Singapore High Court noted that the use of ‘Isetan Tartan’ essentially indicated a connection with Scotland. Contrasting this with the Indian scenario, she notes that India has decided in favour of non-registration of such Scottish words as trademarks on numerous occasions. From a GI-specific angle, she argues that a Tartan would not be registered as a trademark in India in the first place, considering that it is a GI which evokes a geographical connection with Scotland.

Other Posts                                                                                       

In an interesting piece, Simrat discussed the non-applicability of Section 31D of the Copyright Act, 1957 to internet platforms. She traces the foundational principles of statutory licensing to examine whether it meets the present realities and sets forth a four-step argument aimed at indicating how statutory licensing in case of music does not offer the most appropriate solution. Rather, she suggests that ostensibly, most streaming services are financially strong, and the grant of a statutory license results in chilling of innovation. She concludes by supporting a movement towards market-determined royalty rates along with the music being made available to listeners through collective management organizations (CMOs) for fees, in order to tackle the menace of piracy.

Latha Nair also wrote about the decision in the gripping case of Sajeev Pillai v. Venu Kunnapalli. She notes that this case involved an angle of moral rights of the scriptwriter, where his script was used to produce the movie ‘Mamankam’. Furthermore, she notes that the Court balanced the rights of both parties i.e. the costs incurred by the producer to make the film ready for release and the inextinguishable moral right of the scriptwriter. Subsequently, the Court ordered that the movie be released without naming anyone as the scriptwriter till the final disposal of the suit.

In her first post of 2020, Kaveri discussed the decision of the Danish Maritime and Commercial High Court, where it ruled that insertion of an author’s artwork in wristwatches would not constitute its destruction, but merely reproduction. She notes that the Indian position on the subject is varied, but reassuring for artists in light of recent trends towards awarding damages to authors for violation of their moral rights.

The yearly review of 2019 was co-authored by Pankhuri, Balu and Adarsh with assistance in shortlisting from Divij and Bhavik. Beginning with the sublime poem of Prof. Basheer which galvanizes the heart and soul to keep going, the post listed out India’s top IP developments which have been covered on the blog. The review has been divided into 2 sections: 1) Top 10 Judgments/Orders; and 2) Top 10 Legislative and Policy Developments.

Other Developments

Indian

Judgments

M/s. Lancome Parfums et Beaute and Cie v. M/s. Impressions – Delhi District Court [December 11, 2019]

The Court granted a permanent injunction in favour of the Plaintiff thereby restraining the Defendant from infringing and passing off the Plaintiff’s mark “LANCOME” by using an identical mark in respect of perfumes and other accessories. The Court noted that the Defendant was dealing in an identical mark as that of the Plaintiff, and had failed to show that the goods had been obtained from an authorized source. Furthermore, the Court noted that the Defendant had adopted the Plaintiff’s mark with an aim to take advantage of its reputation and goodwill. Accordingly, the Court granted damages to the Plaintiff to the tune of Rupees 50,000 for loss of profits, goodwill and reputation.

Pidilite Industries Limited v. E.C. Industry – Bombay High Court [December 11, 2019]

The Court granted an ad-interim injunction restraining the Defendant from infringing the Plaintiff’s mark “LW” and “LW+” through using identical marks in respect of adhesives, along with the Defendant’s breach of the Plaintiff’s copyright in its artistic work on the receptacles and packaging of its adhesives.

Hatsun Agro Product Limited v. A.Z. Arogya Milk – Madras High Court [December 11, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AROKYA” by adopting a deceptively similar mark “AZ AROGYA” in respect of milk. The Court observed that the Defendant’s mark was prima facie deceptively similar and would easily mislead the public due to its similarity of colour scheme with the Plaintiff’s mark.

Hindustan Unilever Limited v. Introx Chemicals Private Limited – Calcutta High Court [December 16, 2019]

The Court granted a decree of ex parte interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered trademark “SURF EXCEL” by using a deceptively similar mark “SURF” in respect of detergent powder. The Court noted that the mark used by the Respondent were prima facie infringing of the Petitioner’s mark. Moreover, the Court observed that the artistic work of the Respondent was a colourable and deceptive imitation of the Petitioner’s artistic work.

M/s. Thalappakatti Naidu Anandha Vilas Biriyani Hotel v. Star Thalapakattu Biriyani – Madras High Court [December 16, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “THALAPPAKATTI” by using a deceptively similar mark “THALAPAKATTU” in respect of a biryani restaurant. The Court observed that the Defendant had deliberately adopted the Plaintiff’s mark with an intent to ride on its goodwill and reputation.

Gurdeep Singh v. Vinit and Others – Delhi District Court [December 17, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “KAKE DI HATTI” through use of an identical mark and deceptively similar mark “SHAHI KAKE DI HATTI”. The Court noted that the Plaintiff is the registered proprietor of the mark and has been using the same since 1996. The Court also granted damages to the tune of Rupees 50,000 in favour of the Plaintiff, considering that it had been drawn into litigation.

Shanavas v. State of Kerala – Kerala High Court [December 17, 2019]

The Court noted that seizure of an infringing material could be made only by an officer not below the rank of a sub-inspector under Section 64 of the Copyright Act, 1957. Accordingly, seizure by a civil police officer was noted to be illegal, and the accused was discharged.

Merwans Confectioners Private Limited v. M/s. Sugar Street and Others – Bombay High Court [December 17, 2019]

The dispute between the Parties arose on account of termination of a Franchise Agreement entered into between them in respect of selling bakery and confectionery articles. The Applicant alleged that the Defendants continued to use its trade dress in the décor, layout and design of the shop even after such termination. The Court noted at the onset that there was no clause in the Agreement which prevented the Defendants from carrying on an identical business. Further, the Court observed that there was no prima facie similarity in the get-up of the Applicant’s shops and that of the Defendants. It was noted that the Defendants’ shops had different colour scheme, entrance, seating arrangement etc. Accordingly, the Court stated that the Applicant had failed to make a prima facie case for an interim application, and dismissed the suit.

Super Smelters Limited and Others v. SRMB Private Limited – Calcutta High Court [December 18, 2019]

The dispute between the Parties arose on account of the Respondent’s allegation that the Appellant had infringed its TMT bars and rods carrying the pattern of “X” at regular intervals, by using a deceptively similar double “Y” pattern. The Single Judge ruled in favour of the Respondent, and noted that the Appellant’s use of the double “Y” pattern was deceptively similar to the Respondent’s mark. Moreover, the Single Judge observed that the Respondent could resort to the common law remedy of passing off to protect its unregistered mark. The Appellant, being aggrieved by the order of the Single Judge filed an appeal before the Court claiming that the “X” ribbed mark of the Respondent could not be trademarked as it was it was embossed on the TMT bar to achieve a “technical result”. The Court indulged extensively in tracing the scope of what a “technical result” is under Section 9(3)(b) and finally relied upon the continuity of the Respondent’s use of its mark. The Court noted that the Respondent had used its mark continuously since 2001, and that its mark had attained goodwill and reputation over that period of time. Accordingly, the Court noted that a passing off action was valid for an unregistered trademark. Furthermore, the Court observed that just because a design registration in respect of a mark had been cancelled was not an enough reason to deny it a trade mark protection, as it would militate against the purpose of the Trade Marks Act, 1999. The Court refused to vacate the ad-interim order, and stated that there was no reason to interfere with the order of the Single Judge in a case where the Appellant intended to thrive and prosper at the cost of the Respondent.

Novex Communications Private Limited v. Saya Grand Club and Spa Resort LLP – Bombay High Court [December 20, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its sound recording by performing it on several occasions. The Court observed that the Defendant was aware of the Plaintiff’s copyright in its sound recording and had failed to reply to the cease and desist notices served on it. Accordingly, the subsequent deliberate use of the recording without obtaining a licence amounted to a prima facie case of copyright infringement.

Shyam Steel Industries Limited v. Shyam SEL and Power Limited and Another – Calcutta High Court [December 24, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged infringement and passing off of the Appellant’s mark “SHYAM”. The Single Judge however, noted that that the Respondents could not be restrained from using the mark as it was a part of their business name. The Court noted that the Parties use the mark “SHYAM” on their goods and also on its packaging. The Respondents forwarded the argument that “SHYAM” referred to God and not just a person or name. The Court rejected this argument of the Respondents, and stated that the Respondents had to prove this claim through cogent evidence. Moreover, the Court noted that the Respondents had failed to furnish any documents to show its mark being senior to the Appellant’s mark or depicting sales under its mark. The Court noted that there was no acquiescence on part of the Appellant but merely a delay in filing in petition. Accordingly, the Court granted an interim injunction in favour of the Appellant.

News

  • Supreme Court extends tenure of Justice (Retd.) Manmohan Singh as IPAB Chairman for another year.
  • Bombay High Court restrains over 600 hotels, restaurants and pubs from playing copyrighted songs during New Year’s eve without obtaining a license.
  • Trade Marks Registry invites submissions from stakeholders indicating difficulties/ problems faced by them regarding technical and procedural issues.
  • Delhi High Court rules that a computer program which makes ‘technical contribution’ patentable is not hit by Section 3(k) of the Patents Act, 1970.
  • Modi government gives a green signal to pharmaceutical companies to raise prices by 15-20% in respect of drugs which show “incremental innovations”.
  • Luxury brands, namely Salvatore Ferragamo and Hermes have recently acted against rampant infringement through initiating cases before the Delhi High Court.
  • Delhi High Court rejected plea to summon Nitish Kumar, the CM of Bihar as a witness in a suit concerning infringement of copyright.
  • The Commerce and Industry Ministry called a meeting between copyright societies and music users to discuss possible ways to license songs.
  • PM Modi urged young scientists to “innovate, patent, produce and prosper” through his speech, after inaugurating the 107th Session of Indian Science Congress.
  • Natco Pharma has launched a cut price version of anti-cancer drug, Ibrutinib in India.
  • Punjab and Haryana High Court has noted that no coercive action shall be taken against Google and YouTube in relation to infringement of copyright of Shree Krishna International in relation to Hindi movies.
  • Order by Justice Pratibha Singh provides guidelines for post-grant opposition of patents.

International

  • Facebook is currently pursuing rights to music videos in an attempt to take on YouTube.
  • Meghan Markle and Prince Harry seek to register “Sussex Royal” as a UK trade mark.
  • Workday sues Washington State University to stop leaking trade secrets which were shared on a previous occasion to provide the University with software products.
  • Lengthy 9-year patent dispute between InterDigital and ZTE reaches settlement with a licensing agreement.

 

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