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SpicyIP Fortnightly Review (January 21 – February 2)


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

Topical Highlight

Last week, we received an anonymous post on the recent judgment of the Delhi HC in Astrazeneca v. Emcure and Astrazeneca v. MSN. Through this order, the Court held that a species patent can be granted and is enforceable even when an already existing product is covered by a genus patent. The author is of the opinion that this decision suffers from certain serious flaws. First, the author notes that Supreme Court’s finding on “artful drafting” in the Novartis case conveys that a patentee cannot claim its patent to not disclose a product by relying on his astute drafting, when that product is actually covered by the patent. Second, the author opines that a holding which permitted genus patent and species patent to be granted simultaneously would be bad law, except in certain specific cases. Third, the author notes that the factual holding of the court is ‘cryptic’ and ‘irreconcilable’ with the law laid down in the Novartis decision, as the Supreme Court arrived at the Novartis decision due to its peculiar facts. Rather, the author suggests that courts should focus on a plaintiff’s statements and its conduct and legal effect. Subsequently, the author paves the way to conclude that the Plaintiff’s patented invention was actually disclosed by the genus patent. In conclusion, the author states that if a patent protects a compound which enables the patentee to restrain a third party from making it, the compound should be considered to have been disclosed through the patent granted.

Thematic Highlight                                                                         

In an interesting piece, Sunanda wrote about the art of making kathputlis, a kind of puppet made by the Bhaat community of Rajasthan. Through this piece, she expounds on the IP framework which protects kathputlis. She observes that kathputlis are currently protected as Geographical Indication (‘GI’), but is at risk because it is not an economically rewarding endeavour anymore. In light of this, she examines the status of automatic protection of kathputlis under the Copyright Act, 1957. In the concluding part, she admits that the intention of the post was to highlight the interaction between IP and puppets, and she earnestly hopes that the Entrepreneurship Development Institute of India engulfs the art of kathputlis within its fold.

Other Posts

In a recent post, Latha covered the decision of the Bombay HC in the case of Marico Limited v. Abhijeet Bhansali. She begins by explaining the two variants of coconut oil, an understanding of which is extremely essential to the complete understanding of the decision. First, she quotes the defendant’s video to note that “coconut oil” and “organic coconut oil” (the name of which was undisclosed in the video) with which the “freeze test” was performed are two separate and incomparable categories. Second, she notes that apart from the colour of the oils, the defendant failed to analyse any of their characteristics. She highlighted the arguments of the parties, and subsequently recounts the court’s finding in respect of misrepresentation, responsibility of “social media influencers”, and the disparagement and special damages suffered by Marico. Finally, referring to the appeal filed before the Division Bench by the Defendant, she hopes that the Division Bench rules in favour of the plaintiff, in line with the decision of the Single Judge.

SpicyIP Announcements      

Pankhuri informed us about Gridlogics’ 9th edition of its IP symposium, PatSight to be held on February 28, 2020 at Hotel Orchid, Mumbai. The symposium was a full-day event with lectures and panel discussions interspersed with breaks. Attendance to the symposium was free and was on basis of filling a registration form.

Other Developments

Indian

Judgments

TTK Prestige Limited v. Mr. Ayyavu – Madras High Court [January 13, 2020]

The Court granted a permanent injunction restraining the Defendant from infringing and passing of the Plaintiff’s mark “STRAINO” by using an identical mark in respect of pressure cookers. The Court observed that the Defendant had already submitted that it would not carry on any business under the Plaintiff’s mark, and accordingly did not grant any decree on damages.

Avenue Supermarts Limited v. K. Eswar Rao – Bombay High Court [January 20, 2020]

The Court granted an ex parte interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “D MART” by using a deceptively similar mark “D MAART” in respect of running department stores. The Court observed that the Defendant refused to accept service of the application sought and granted an injunction in favour of the Plaintiff.

Imagine Marketing Private Limited v. Exotic Mile – Delhi High Court [January 21, 2020]

The Court granted an interim injunction restraining the Defendant from passing off the Plaintiff’s mark “BOAT” by using a deceptively similar mark “BOULT” in respect of electronic gadgets. The Court had affirmed the previously granted interim injunction in favour of the Plaintiff, and observed that the Defendant was aware of the Plaintiff’s mark at the time of adoption of its mark “BOULT”. Moreover, the Court noted that there is phonetic similarity between the marks, considering that the first two and last alphabet of the two words being the same. The Court further observed that the logos of both the companies were similar and their taglines used the common word “UNPLUG”. Considering that the Defendant was the registered proprietor of the mark “BOULT”, only actions of passing off and infringement of copyright lay against it.

Boehringer Ingelheim Pharma GmbH & Co. and Another v. Tanmed Pharma India Private Limited – Madras High Court [January 21, 2020]

The Court rejected an application for an interim injunction restraining the Defendant from infringing the Plaintiffs’ patent in the drug “Linagliptin”. In arriving at this decision, the Court noted that the Defendant had never manufactured the drug, and had already submitted an undertaking stating that it would not manufacture the drug in the future.

Nike Innovate CV v. M/s. GB Shoe and Others – Delhi District Court [January 22, 2020]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s trademark in its mark “NIKE”, and the “SWOOSH” device by using an identical mark on its footwear. In arriving at this decision, the Court noted that the Defendants had no right to use the mark, and its use by the Defendant would create confusion and deception in the minds of its customers. The Court also considered it appropriate to grant nominal damages to the tune of Rupees 1.5 lakh from the three Defendants in light of the reputational and goodwill loss suffered by the Plaintiff.

Bristol Myers Squibb Holdings Ireland v. Natco Pharma – Delhi High Court [January 23, 2020]
The dispute between the Parties arose on account of the Defendant’s alleged infringement of the
Plaintiff’s patent in “APIXABAN”. The Defendant initially filed a civil suit before the City Civil
Court at Hyderabad for declaration that manufacture of “APIXABAN” by a member of the public was
justified along with a permanent injunction restraining the Plaintiff from threatening and hampering
its business. Accordingly, the Defendant requested the Court to not try the infringement matter before
it as it was already pending before the court in Hyderabad. However, the Court rejected this
application of the Defendant, and stated that Section 10 of the Civil Procedure Code would only be
applicable to Courts of concurrent jurisdiction to prevent them from simultaneously trying two
parallel suits in respect of the same matter. As the reliefs to be offered in both cases were different,
the Court held Section 10 to be inapplicable to the facts of the case. Moreover, the Court noted that
the mere existence of an ulterior motive to pre-empt a suit was enough to refuse reliance on the
principle of lis pendens. The Court also noted that the reliefs of non-infringement and threat of
infringement claimed by the Defendant under the Specific Relief Act should have been alternatively
claimed under the Patents Act.

Andhra Hosiery Mens Garments v. Mr. Laksham Das and Others – Telangana High Court [January 24, 2020]

The dispute between the parties arose on account of the Respondents’ alleged passing off of the Appellant’s mark “ANDHRA HOSIERY” by using a deceptively similar mark “NEW ANDHRA HOSIERY EXCLUSIVE”. The interlocutory application of the Appellant was dismissed on the ground that it had failed to mention the suffix “EXCLUSIVE” in the name of the Respondents. Accordingly, no relief was granted in its favour. However, the Court during the pendency of this miscellaneous application before it, had granted an interim injunction in the Appellant’s favour. During the final hearing of the miscellaneous application, the Court noted that the Appellant had merely based its plea on passing off and accordingly, it was not required that its mark should have been registered in contradiction to the Respondents’ claim. Moreover, the Court noted that the matter was previously dismissed in the interlocutory application only on the ground that the prayer was defective and not on merits. Accordingly, it noted that the impugned order on the interlocutory application could not be sustained and directed the Chief Judge, City Civil Court to decide the matter within 4 weeks.

M/s. Cluett, Peabody Co. Inc. v. M/s. S.R. Traders – Delhi District Court [January 24, 2020]

The Court granted a permanent injunction restraining the Defendant from using the mark “ARROW” in infringing and passing off the Plaintiff’s identical mark in respect of garments and other allied goods. In arriving at this decision, the Court noted that the Local Commissioner appointed in the matter had found counterfeiting goods in the Defendant’s premises. Accordingly, the Court noted that the Plaintiff had been successful in establishing its use of the mark “ARROW” and its infringement by the Defendant. The Court subsequently noted that the Defendant had no right to use the Plaintiff’s mark as it would mislead the consumers and allow the Defendant to enrich itself at the cost of the Plaintiff. The Court granted the Plaintiff nominal damages of Rupees 50,000 in light of continuous infringement of its mark and the loss of reputation suffered by it.

M/s. Century Plyboards India Limited v. M/s. New Rakesh and Company – Delhi District Court [January 25, 2020]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “CENTURYPLY” along with its family marks containing the mark “CENTURY” as a prefix, by adopting a deceptively similar mark “CENTURYPLY”. The Court observed that the Plaintiff was the proprietor of the mark and also had a registered copyright in its logo. Accordingly, the Court noted that there was prima facie reason to believe that the trade mark of the Defendant was deceptively similar to the Plaintiff’s mark and its use would lead to loss of revenue and reputation to the Plaintiff. The Court also appointed a Local Commissioner to prepare inventory of goods and material seized from the Defendant’s premises within 15 days of the order.

M/s. Sentinels Security Private Limited v. M/s. Sentinel Consultants Private Limited – Delhi District Court [January 27, 2020]

The Court rejected an application for an interim injunction restraining the Defendant from passing off the Plaintiffs’ mark “SENTINEL” by using an identical mark “SENTINEL”. The Court noted that the Plaintiff had the burden to prove that it was the prior user of the mark “SENTINEL”, considering that both parties were indulged in identical activities. However, the Court noted that the Plaintiff failed to show that it was using the mark when it was incorporated in 1982 or through any of its advertisements, or through the copies of the balance sheets filed by it.

Novex Communications Private Limited v. Ceres Hotels Private Limited – Bombay High Court [January 28, 2020]

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 recordings 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.

Amazon Seller Services Private Limited and Others v. Amway India Enterprises Private Limited and Others – Delhi High Court [January 31, 2020]

The Appellants in the present case have filed appeals against the order of the Single Judge which injuncted the Appellants from selling the goods of the Respondents. The Court elaborately discussed the decision of the Single Judge before undertaking an examination of the issues on which the Single Judge had given its decision. On the first issue relating to the Direct Selling Guidelines (‘DSG’) being law, the Court observed that the Single Judge had erred in deciding that DSG was law as they were merely a mechanism of formulating rules under the Consumer Protection Act, 2019. With the Act itself not being notified, the Court observed that the DSG formed under it could not be considered to have a character of binding rules only because they were published in the Gazette. Considering the trademark issues, the Court observed at the onset that the Single Judge was in error in observing that the Respondents were the owners of their respective trademarks and there was no dispute on their ownership. Accordingly, the Respondents could not initiate any actions pertaining to infringement or passing off. The Court further noted that the Local Commissioners’ reports being relied upon by the Single Judge could not lead to the sweeping conclusion that the Appellants were tampering with the products, as the Court found certain omissions in the reports. The Court also noted that the Single Judge had reached broad conclusions through its decision without distinguishing that specific reports of the Local Commissioners covered only specific online platforms, and not all the Appellants. In respect of the issue relating to the intermediary status of the Appellants, the Court noted that such a decision could only be arrived at the conclusion of the trial. Moreover, the Court noted that the Appellants had not received any court order from the Respondents through which they were expected to take material down. Accordingly, the Court observed that the Appellants were not required to meet with the diligence requirement of an intermediary. The Court finally noted that the Respondents had failed to establish any of the three grounds for the grant of an interim injunction, and therefore, set aside the order of the Single Judge.

M/s. Laboratoire Garnier and Cie v. Sh. Dharampal Sabunwala and Another – Delhi District Court [January 31, 2020]

The Court rejected an application for permanent injunction restraining Defendant No. 2 from infringing and passing off the Plaintiff’s mark “GARNIER” by using an identical mark. The Court observed that the Plaintiff had failed to prove by leading cogent and convincing evidence that the Defendant No. 2 was involved in infringement of its mark “GARNIER” or the copyright pertaining thereto. Moreover, the Court noted that the Plaintiff’s employees had not certified that the seized goods were fake in nature. The Court also noted that the seized items were never produced before it.

Satish Kumar Gandhi v. State of Uttar Pradesh and Others – Allahabad High Court [January 31, 2020]

The Court refused to quash the charge sheet filed against the accused which levelled charges under Section 420 of the Indian Penal Code, 1860 as well as Section 63 of the Copyright Act, 1957. In arriving at this decision, the Court noted that the Applicant failed to establish the source of the disputed product recovered from him or produce bills pertaining to the same. Accordingly, the Court dismissed the accused’s application as the Court had jurisdiction in the matter and the proceedings were maintainable before it.

News

  • Indian activists mount pressure over Sanofi for withdrawal of patent applications from Indonesia and European offices for a drug which could adversely affect the treatment of tuberculosis patients in India.
  • Trade Marks Registry publishes the list of Grievance Redressal Officers for all its branch, along with the publication of a Supervisory Grievance Redressal Officer at Mumbai.
  • The proposed relocation of IPAB from Chennai invites criticism from the DMK. The Bar Council of Tamil Nadu and Puducherry adopt a resolution against the proposal.
  • Union Budget 2020: Government intends to promote a digital platform for intellectual property rights.
  • Yash Raj Films approaches  Bombay HC against IPRS in relation to a royalty dispute to the tune of Rupees 100 crore.
  • The Khadi and Village Industries Commission seek registration of the mark ‘Khadi’ under classes 20, 29 and 33 to prevent it from being used for items seen at odds with the Gandhian philosophy.
  • Delhi HC temporarily restrains Lex Sportel Vision from using Discovery Communications India’s ‘DSport’ in any manner, due to public confusion on the ownership of the channel.
  • Delhi HC temporarily restrains Campus from selling its shoe range which had a similar sole to Puma’s running shoes.
  • Aparna Bhat, the lawyer who represented Laxmi Agarwal, decides to drop contempt petition against Chhapaak filmmakers as they agree to give her credit in the film screened abroad as well.
  • Calcutta HC grants interim relief to Republic TV in a passing off suit against the Defendant, who ran an internet portal.
  • Delhi HC rules that the Office of the Controller General of Patents, Designs and Trade Marks is an ‘industry’ under the Industrial Disputes Act, 1947.
  • Department of Promotion of Industry and Internal Trade (DPIIT) convenes a stakeholder meeting to review existing IP Acts in India, where invitation had been extended to foreign industries as well as law firms.
  • Shemaroo Entertainment accused of violating trademark law by using name of the stage show and launching a Marathi TV channel.
  • National Pharma Pricing Authority (NPPA) seeks clarification on Gilead’s drug pricing plea.
  • Patent Office is likely to conduct Patent Agent Examination in June this year.

International

  • The United Kingdom decides to not implement EU’s controversial Copyright Directive after the Brexit.
  • CJEU rules that pay-for-delay agreements between the patent holder and the generic manufacturers violate competition law where reverse payments occur without justifiable explanation.
  • The Pakistani Senate Committee clears the Geographical Indications Bill, which shall now be presented before the Upper House of the Parliament for its consent.
  • Scientists share coronavirus data in unprecedented way to contain, treat disease.

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