Copyright Patent Trademark

SpicyIP Weekly Review (October 12 – 18)


Topical Highlight

Delhi High Court Issues Anti Anti-Suit Injunction in InterDigital v. Xiaomi Patent Infringement Dispute

In a guest post, Rajiv looks at the anti anti-suit injunction granted by the Delhi High Court (‘DHC’) against Xiaomi in the patent infringement dispute with InterDigital. He highlights that the court viewed the lis as not impacting the proceedings before the Wuhan Court concerning fixation of FRAND rates. He considers that Xiaomi should have pursued a different strategy than the one it adopted. The court noted Xiaomi’s argument to be predicated on comity of courts and held public policy concerns to trump the comity principle, considering the Wuhan judgment to be a direct impediment to its ability to decide the matter before it. Rajiv argues that even at best case if InterDigital wins the case it will be awarded royalty based on FRAND terms, which issue is pending before the Wuhan Court prior to the institution of the Indian suit. He then highlights how DHC failed to consider the greater number of InterDigital’s patents in China than India, investigations against InterDigital’s policies in China in 2013, and strategic litigation against defendants in SEP disputes. Finally, he emphasises that DHC ignored the public interest aspect that lies at core of a patent infringement suit.

Thematic Highlight

Non-Personal Data Governance Framework and Intellectual Property Implications

In this post, I analyse the Non-Personal Data (NPD) Committee Report (‘Report’) in context of its intellectual property implications. I first provide a background on the definition of NPD and its classification as per the Report to highlight how they misunderstand some fundamentals about the nature of data and IP law. I argue that even though the copyright protection in databases might be limited, it doesn’t preclude trade secrets protection that the Report fails to acknowledge. The Report rests on weak ownership claims over data without pointing out why the same should override, inter alia, confidentiality protections. I then argue that private players use data to gain a competitive edge which is protected as trade secrets and technical knowhow. Mandatory sharing of such data could impede investment and innovation. I then argue that confidential information is not considered as property in India but is protected under contract law and equity. This takes away the state’s legal basis of claiming an eminent domain over data. Moreover, even in exercising eminent domain powers, the State has to offer compensation which isn’t provided in all cases by the Report. Finally, I end with cautioning about broad wording of ‘public purposes’, possible violation of TRIPS, and a need to look at alternative solutions.

Other Posts

Image from here

Sixth Annual IP Mosaic Conference: The Arc is Hot!  Using IP to Further Social Justice

Recently, we informed our readers about the Sixth Annual IP Mosaic Conference being organised by the Institute for Intellectual Property and Social Justice (IIPSJ) virtually on 30th and 31st October, 2020. Registration for the conference is free of cost. Further information on the conference is mentioned in the post.

Call for Papers: NUALS’ Book on Sports and Intellectual Property Rights [Submit by November 15]

We also informed our readers that the Centre for Intellectual Property Rights at National University of Advanced Legal Studies (NUALS), Kochi is seeking papers for its book on themes relating to sports, e-sports and their interplay with IPR. The deadline for submission for the papers is November 15, 2020. Further information on the submission guidelines is mentioned in the post.

LexisNexis’ Webinar on How Its Solutions Can Help with Patent Search and Drafting High Quality Non-Provisional Applications for IPO [October 29]

We further notified our readers about a webinar on ‘How LexisNexis solutions can help with Patent Search and Drafting High quality Non-Provisional Applications for IPO’ being organised by LexisNexis. The webinar will be held on October 29, 2020 (Thursday) from 3.00 to 4.00 pm IST, and will be led by Tharraniiswari Gunasekaran. Further information on the webinar, including the procedure for registration, is mentioned in the post.

Decisions from Indian Courts

  • The Supreme Court of India in M/S Laxmi Agro Impex India v. M/S Ladli India Commodities, while disposing of a Special Leave Petition, affirmed the order of the Division Bench of the Delhi High Court which had upheld a Single Judge’s order in a suit for permanent injunction for infringement and passing off of a trademark wherein an initial ex-parte injunction was later modified by the Single Judge, permitting the defendant to use the proposed trade mark, which was ultimately registered later. [October 16, 2020]
  • The Delhi High Court in Allied Blenders & Distillers Pvt. Ltd. v. Agrobiotech Industries Ltd., granted ad interim relief restraining the defendant from using, manufacturing, selling etc. or otherwise dealing in any product, under the impugned “Chetak” label, or under any trademark deceptively similar to the plaintiff’s registered trademarks—”Officers Choice” and “Officers Choice Blue.” The Court held that in quia timet IP actions, the mere likelihood of the defendant launching the allegedly infringing product within the territorial jurisdiction of the Court would be sufficient for its exercise of jurisdiction for the grant of ad interim relief. [October 15, 2020]
  • The Delhi High Court in Minda Corporation Ltd. v. Star Minda Oil Lubricants, granted an ex-parte ad-interim injunction in the case pertaining to passing off of plaintiff’s device/label mark, ‘MINDA’ on account of irreparable loss to the plaintiff in the absence of such an injunction. [October 14, 2020]
  • The Delhi High Court in Sporta Technologies Pvt. Ltd. v. Dream11 Prime, granted an ex parte ad interim injunction restraining sports platform Dream11 from using any mark or logo deceptively similar to that of Sporta Technologies as well as directing the take down of infringing material from its social media pages. The Court also directed the defendants to provide the Basic Subscriber Information regarding domain name registrants to the Court and the plaintiff prior to the next hearing of the case. [October 14, 2020]
  • The Delhi High Court in Mattel Inc v. Present Enterprises, directed Flipkart to remove listings pertaining to the advertisement and sale of the products that violated Mattel’s copyright in the six characters of the ‘Rainforest Family’. [October 13, 2020]
  • The Delhi High Court in Gulf Oil Lubricants India Limited v. Voltronic India Lubricants, allowed the plaintiff’s application for appointment of Local Commissioners to ascertain the alleged infringement of its registered trademark “GULF PRIDE 4T PLUS” within eight weeks’ time, after the plaintiff alleged that it had become aware of rampant infringement of its marks pursuant to an investigation by a specialized intellectual property company. [October 13, 2020]
  • The Delhi District Court (Tis Hazari) in State v. Dheeraj Kumar, a case pertaining to a tempo carrying spurious engine oil of Indian Oil Company, acquitted the accused on charges of copyright infringement since there was no evidence to show that Indian Oil Corporation had any Copyright in the packaging or containers of the Servo diesel engine oil. The accused were also acquitted of charges of trademark infringement since the prosecution failed to prove that the articles recovered were infringed/ spurious, and also failed to connect the accused persons with the alleged recovered articles. [October 13, 2020]
  • The IPAB in Hawar Technologies Ltd. v. The Assistant Controller of Patents, allowed the appeal by Hawar Technologies, remanding the matter back to the Patent Office on account of denial of a fair opportunity to be heard to the applicant. [October 12, 2020]
  • The Delhi High Court in Urban Fitness LLP v. Max Life Insurance Company, pertaining to an allegation against the respondent regarding passing off of petitioner’s trademark THE RUN, recorded that the defendant conceded and assured that the impugned marks have since been removed from its website and will not be used by it henceforth. The defendant also assured the withdrawal of its application for registration of the trademarks before the Trademark Registry. [October 12, 2020]
  • The IPAB in Prism Cement Ltd. The Controller of Patents & Designs, allowed Prism’s appeal and amendment of the claims as sought while directing the Controller of Patents to grant the patent sought to Prism [October 12, 2020]
  • The Delhi High Court in Delhivery Pvt. Ltd. v. Treasure Vase Ventures Pvt. Ltd., allowed the defendant’s prayer and vacated the Court’s interim injunction dated July 3, 2020 against the defendant, on a prima facie basis without commenting on the merits of the case. Pertinently, the Court held that the mark ‘DELHIVERY’ is a phonetically generic word and cannot be registered to seek the benefit of statutory rights. [October 12, 2020]
  • The Delhi High Court in Mohit Rastogi v. Shyam Madiraju & Anr., issued summons regarding the allegation that despite the film ‘HARAMI’ having been jointly produced by the plaintiff and defendant as co-owners of the copyright therein, the defendant was exclusively commercialising the same in collusion with unrelated third parties. The Court also held that if the defendant entered into any commercial agreement with any third party regarding the rights in the film, the same would be subject to the outcome of the suit. [October 12, 2020]
  • The Delhi District Court (Tis Hazari) in Puma v. R.J. Enterprises, held that the defendant’s business of manufacturing garments bearing the plaintiff’s trademark without authorization constituted trademark infringement, passing off, dilution of the plaintiff’s goodwill and unjust profiteering. It granted a permanent injunction restraining the defendant from use of the impugned mark, directed the deliver up of all finished and unfinished goods bearing the mark, payment of compensatory damages worth rupees 1 lakh, punitive damages worth rupees 1 lakh and costs of the suit worth rupees 1,68,500, to the plaintiff. [October 9, 2020]
  • The Bombay High Court in Parle Products Pvt. Ltd. v. Future Consumer Ltd., granted ad interim injunction holding that Parle’s packaging of its products ‘MONACO’, ‘KRACKJACK’ and ‘HIDE & SEEK’ was copied by the Future Group’s packaging of its ‘CrackO’, ‘Kracker King’ and ‘Peek-a-Boo’ products. [October 9, 2020]

Other News from around the Country

  • Given technological developments, the Copyright office of the Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry, is seeking comments on the need for amendments to the Indian Copyright Act, 1957, latest by October 26, 2020.
  • Biswajit Dhar and K.M. Gopakumar write for The Wire, discussing India and South Africa’s proposal to incorporate greater flexibilities in the TRIPS Agreement to enable WTO members to deal with public health concerns in the midst of the Covid-19 pandemic.
  • India TV filed an FIR under section 420 (cheating) of the IPC and sections 60 and 63 of the Copyright Act, against a Twitter user called ‘arnabofficial17” for spreading a “fake WhatsApp chat” between the media company’s chairman and a doctor in the Sushant Singh Rajput case, thereby allegedly misusing India TV’s logo and maligning its reputation.
  • Juhu Police (Mumbai) filed an FIR against the owner of Box Cinema, Narayan Sharma, for copyright violation, cheating and impersonation on account of airing an old movie produced and directed by the late Prakash Mehra.
  • The Shamshabad (Telangana) police have booked a case against JM Joshi, owner of Goa pan masala and his son and actor Sachin Joshi for allegations of infringing the trademark of Manikchand while selling its products.

News from around the World

  • Microsoft claimed to have utilised a court order based on strict provisions in copyright law to gain control of computers installing Trickbot ransomware since Trickbot unauthorizedly uses Microsoft’s copyrighted software. Malicious software like Trickbot can pose a threat to the upcoming November election in the US.
  • The United States Patent and Trademark Office (USPTO) published a report on “Public Views on AI and IP Policy”.
  • The 128th China Import and Export Fair (Canton Fair) initiated a dedicated intellectual property rights (IPR) protection and trade dispute settlement platform through an overhaul of Fair’s old website as well as the introduction of a comprehensive online complaint filing system pertaining to IPR.
  • A new study published by the EUIPO through the European Observatory on Infringements of Intellectual Property Rights examines EU firms’ use of patents, trademarks and registered designs to unravel distinct patterns of ownership of IPR bundles among SMEs and large firms.

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