Others

SpicyIP Fortnightly Review (February 3 – 17)


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

Topical Highlight

Last week, Eashan wrote a post on the judgment of the Delhi HC in Amazon Seller Services v. Amway India Enterprises. Through this judgment, the Court set aside the Single Judge’s order which had restrained various e-commerce platforms from selling products of ‘direct selling’ companies without their consent. In the post, he critically discusses the appellate court’s approach in reversing the findings of the first court on trademark issues. He notes that the appellate court relied upon material not considered by the first court, rather than rebut their findings on the facts it did acknowledge.  Further, he notes that the appellate court also failed to engage with the findings that the first court made. He questions whether this is an appropriate standard of appellate scrutiny. Finally, he notes that the appellate court’s acknowledgement that the trademark issues fall outside the purview of the appeal is disappointing since it spends a large amount of time on them.

Thematic Highlight                                                                          

In his piece, Swaraj traced the journey of Computer Related Inventions (‘CRIs’) in India. He starts his enquiry with the Patent (Amendment) Act, 2002, wherein “computer programmes per se” were excluded from patentability for the first time. Going forward, he notes the proposed dilution of S. 3(k) through the Patent (Amendment) Act, 2004, and reveals that this ordinance was eventually repealed. He discusses the oscillating positions in the subsequent Manuals, before noting that the 2016 Guidelines on Examination of CRIs introduced an important 3-step test to check their patentability. However, he notes that even this test was also done away with by the 2017 Revised Guidelines which shortly followed. Referring to the 2019 Patent Manual, he observes that there has been no substantial change with respect to the guidelines for patentability of CRIs since the 2011 Patent Manual, before concluding that the position on CRIs is confusing till date.

Other Posts

In his post, Divij covered the decision of the Madras HC in the case of Adithya Modi v. Union of India, where the court refused to order Prasar Bharati to stream sports broadcasts over the internet. He begins with an overview of the Sports Broadcast Act, 2007 (‘Act’) which requires Prasar Bharati to re-transmit a broadcasting signal concerning sporting events of national importance. He subsequently focuses on petitions filed before various courts, aimed at expanding the scope of coverage from terrestrial broadcasting to online streaming. Dealing with the specific decision of the Madras HC on the aforementioned issue, he notes that the court’s conclusion is in line with the Act, and it correctly interprets the scope of Article 19(1) (a) of the Constitution. In spite of these observations, the court noted that the government should decide on the feasibility of such broadcasting and make a decision within 3 months. In conclusion, he suggests that the decision of the court is extremely vague and appears to set the government in motion to amend the Act.

In a guest post, Mohd Shadab Danish discussed the relationship between patents, innovation and economic growth. He suggests that innovation has to be seen as a dynamic concept, being the outcome of collaborative efforts of various participants in the economy. Furthermore, he notes that innovation in this competitive age is fairly represented by the number of patent applications filed. In order to ascertain the quality of innovation, he undertakes an analysis of the value of patents. He does so by: first, estimating the value of a patent based on its renewal information, and second, by noting that patents in some sectors are more valuable than those in other sectors. He presents his reasoning under both the aforementioned points to arrive at the understanding that patents filed at the Indian Patent Office are of a lower value, before giving possible explanations for the same. In conclusion, he observes that improvement in R&D investment is the dire need of the hour in India.

Latha reported on the Delhi HC’s decision in the case of Amazon Seller Services v. Amway India Enterprises. She notes that the primary issue before the court concerned the selling of products by e-commerce sites, which was in alleged violation of the Direct Selling Guidelines, 2016 (‘DSG’). Further, she summarizes the Single Judge’s findings in the order which was passed in July 2019. Dealing with the Division Bench’s decision, she notes that the court held that DSG was not law (i); that the suits were not filed as traditional trademark infringement or passing off actions (ii); that there was no distinction between ‘active’ and ‘passive’ intermediaries under the IT Act (iii); and finally that there was no proof of tampering of products (iv).

Other Developments

Indian

Judgments

Sun Pharma Laboratories Limited v. Intas Pharmaceuticals Limited – Delhi High Court [January 9, 2020]

The dispute between the Parties arose on account of the Respondent’s alleged infringement and passing off of the Appellant’s mark “BEVETEX” by using a deceptively similar mark “BEVATAS” in respect of a pharmaceutical drug. The Trial Court observed that the rival trademarks of the Parties were not in respect of the same molecule/ product/ salt, and were entirely different and distinct, structurally, phonetically and visually. The Court affirmed the order of the Trial Court and observed that there is no ocular similarity between the rival marks. Furthermore, the Court noted that the rival marks when pronounced as a whole are phonetically dissimilar and do not rhyme with each other. The Court also stated that both the drugs are schedule ‘H’ drugs and could not be self-administered, and not available over the counter. In respect of the consumers and customers of both the drugs, the Court noted that they are highly specialized oncologists and specialized medical staff, and there could be no likelihood of any confusion. The Court noted that the Respondent’s use of the suffix “BEVE” in relation to the compound Paciltaxel, and the prefix “TAS” as a part of its company’s name Intas is entirely justified. Accordingly, the Court found no merit in the appeal and dismissed it.

Fox Star Studios v. Aparna Bhat and Others – Delhi High Court [January 11, 2020]

The dispute between the Parties arose on account of the Defendant’s failure to acknowledge the Plaintiff’s role in the making of the film “Chhapaak”. The Trial Court directed the Defendants to include an acknowledgement in favour of the Plaintiff, and found that the Plaintiff had been successful in proving the three elements for the grant of an injunction. The Court examined various communications between the Parties to note that the initial representation was to acknowledge the contribution of the Plaintiff. The Court observed that even after the first screening of the film, Defendant No. 1 acknowledged the contribution of the Plaintiff by an electronic mail. The Court recognized that the Plaintiff had tremendously contributed to the film, and her effort could not be undermined specifically when a representation of acknowledgement was repeatedly made to her. The Court observed that the Plaintiff could not be left remediless only because she did not have a formal contract signed with Defendant No. 1. Moreover, the Court noted that there is no requirement for a written contract in order to recognize paternity rights of a person in a work. Accordingly, the Court directed that the Defendants should release the film on various electronic mediums only with an acknowledgement in favour of the Plaintiff, and the same should also be included in the film being exhibited in theatres with effect from January 15, 2020.

Ashok Leyland Limited v. Captain Tractors Private Limited – Madras High Court [January 24, 2020]

The Court refused to grant an injunction restraining the Respondent from passing off the Appellant’s mark “CAPTAIN” due to the absence of the existence of a cause of action. In arriving at this decision, the Court observed that the Respondent had registered the mark “CAPTAIN” for mini-tractors and did not manufacture heavy vehicles under the mark. Accordingly, no cause of action had arisen in the matter.

Lyft, Incorporation v. Goer Techno Infra Private Limited – Delhi High Court [January 28, 2020]

The Defendant filed an application under Order VII Rule 10 on the ground that the Court did not have the jurisdiction to entertain the case filed by the Plaintiff in Delhi based on a perceived threat of infringement. The Court rejected this application, and noted that the Plaintiff’s case was justified by the credibility of the perceived threat by reference to three documents, including a newspaper report, a response to user comment on Google Play to the extent that the Defendant shall serve other cities near Lucknow soon and the counter-statement of the Defendant where it claimed to have used its trademark “throughout the length and breadth of the country.” The Court further noted that the plaint could not be returned for want of jurisdiction, but it would be open for the Defendant to argue the ground relating to territorial jurisdiction.

Hindustan Unilever Limited v. M/s. Maharani Laghu Udyog Kendra – Calcutta High Court [January 28, 2020]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s copyright in its artistic work “SPLAT” by using a deceptively similar artistic work on its package. The Court also observed that the Parties were trading in the same field, being detergent.

Nandagopal Chetty and Another v. Sunil and Others – Madras High Court [February 5, 2020]

The Court granted an ex parte permanent injunction restraining the Defendants from infringing the Plaintiffs’ copyright in its cinematograph film “POONILAMAZHA” by exhibiting it on its television channel. In arriving at this decision, the Court noted that the Plaintiffs had sent across a notice to the Defendants to desist them from telecasting the movie. However, the Defendants did not reply to this letter of the Plaintiffs. The Court restricted the damages granted to the Plaintiffs to Rupees 50,000, stating that the assignment cost of the movie was in itself limited to Rupees 50,000 and damages in excess of it could not have been sought.

M/s. Sulson Overseas Private Limited v. Shiv Shakti Inter Globe Exports Private Limited – Delhi District Court [February 7, 2020]

The Court granted an injunction restraining the Defendant from infringing the Plaintiff’s copyright in its artistic work appearing on its packaging of rice by using a deceptively similar artistic work on its packaging. The Court noted at the outset that the Parties had a different style of writing their brand names, even though they were written in golden colour. In respect of the artistic work of the Plaintiff containing a “golden label with blue colour body with light blue silver fern leaves”, the Court observed that the Defendant had adopted packaging which was very similar to that of the Plaintiff. Additionally, the Court noted that the Defendant was using the design clandestinely without making its full details available on the packaging.

Escorts Limited v. Mr. RS Bhalla and Others – Delhi District Court [February 7, 2020]

The Court granted a permanent injunction in favour of the Plaintiff restraining Defendant No. 2 from infringing and passing off the Plaintiff’s marks, “FARMTRAC”, “POWERTRAC”, “ESCORT”, “ESCORTS” and “E Device” by using identical or deceptively similar marks. At the outset, the Court noted that the Plaintiff’s case could not be defeated on the ground that a competent person had not filed it, considering that a substantive right could not be defeated on account of procedural irregularity. Similarly, the Court observed that it had jurisdiction over the matter as the Defendant had a shop in New Delhi. With respect to the substantive issue of infringement, the Court stated that the Local Commissioner seized various infringing goods stored at the Defendant’s premises. Moreover, the Court noted that the Defendant had no right to use the trademark and its use would certainly mislead the public by creating confusion and deception in their minds. The Court granted nominal damages of Rupees 1 lakh in favour of the Plaintiff, as the Defendant had failed to explain the custody of infringing goods or show account books for the purchase of the goods.

State v. Kulbir Singh and Others – Delhi District Court [February 7, 2020]

The accused in this case were charged with engaging in the business of manufacturing and sale of infringing records, audio cassettes and compact disks. The Court noted that the prosecution had to show that the accused was found in possession of articles in which copyright subsisted. However, it was subsequently noted by the Court that the prosecution had failed to prove the recovery and identity of the articles seized as well as to show the relation of the accused with the factory from which articles were recovered. It was noted in the findings of the Court that the prosecution had failed to produce the infringing CD before the Court and accordingly, Section 64 of the Copyright Act, 1957 which mandated production of seized material before the Court had not been complied with. In light of these lapses, the Court observed that the prosecution had failed to prove the case beyond reasonable doubt and the accused was acquitted.

Burberry Limited v. Sh. Harsh Kumar – Delhi District Court [February 10, 2020]

The Court refused an injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “BURBERRY” in respect of apparels. In arriving at this decision, the Court noted that the Plaintiff had not led any evidence against the Defendants to prove that they had engaged in infringement of the mark. Accordingly, the Court held that the Plaintiff was not entitled to any relief, and subsequently dismissed the case.

Puma S.E. v. Mr. Krishnan Prasad Mishra and Others – Delhi District Court [February 12, 2020]

The Court granted a permanent injunction restraining Defendant No. 2 from infringing and passing off the Plaintiff’s mark “PUMA” by using an identical mark in respect of apparel and footwear. The Court observed that the Local Commissioner had seized certain infringing material from the premises of the Defendant. Additionally, the Court noted that the Defendant had no right to use the mark, considering that it would mislead customers and lead to the Defendant’s undue enrichment. Accordingly, the Court granted damages to the tune of Rupees 50,000 in favour of the Plaintiff, considering the continuous violation of the Plaintiff’s trademark rights.

Lacoste S.A. v. Shri Suresh Kumar Sharma – Delhi District Court [February 13, 2020]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “LACOSTE” by using an identical mark in respect of clothing and readymade garments. In arriving at this decision, the Court observed that the Plaintiff had been able to establish the use of the mark, and that the Defendant had no right to use it. Moreover, the Court noted that the Defendant’s use of the mark was to create confusion and deception in trade and the minds of customers. Accordingly, the Court granted damages to the tune of Rupees 50,000 in favour of the Plaintiff, considering the misuse of the mark by the Defendant and the loss of Plaintiff’s reputation.

News

  • Britannia sues Future Group over adopting deceptively similar packaging for the sale of its ‘Tasty Treat’ biscuits.
  • Medecins Sans Frontieres urges India to be careful in negotiations with the U.S. on policies aimed at changing the country’s pro-access intellectual property laws.
  • India ranks 40th out of 53 countries in the International Intellectual Property Index, while the U.S., the U.K., Sweden, France and Germany retain top five spots.
  • Delhi HC issues notice on a petition challenging the Drug (Prices Control) Amendment, which aims at exempting new patented drugs from price control for five years from the date of marketing.
  • SC: Chennai does not seem to be a “suitable place” for the principal bench of the IPAB, as nobody wanted to go there.
  • India is set to review IP laws by drawing up a list of required amendments, ahead of Donald Trump’s visit.
  • Panjab University hosts a global summit on ‘next-gen paradigms in healthcare’, covering various IP issues.

International

  • Google mulls licensing deals with news media as per industry sources.
  • The EPO and China National Intellectual Property Administration announce a pilot programme to enhance PCT co-operation.
  • Qatar claims that it is developing a National Intellectual Property Strategy with support from the WIPO.
  • China clashes with the U.S. over new Huawei accusations of IP theft and North Korea dealings.
  • International IP treaty under the TRIPS Agreement promotes global co-operation against coronavirus.
  • WIPO closes comments for its Public Consultation Process on AI and IP policy on February 14, 2020.
  • U.S. International Trade Commission investigates Google speakers after Sonos complaint on patent infringement.
  • International Trademark Association calls off Singapore meeting, proposes the U.S. instead.
  • Philips sues TCL over its 4K television sets, accusing TCL infringement of patents.

 

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