SpicyIP Weekly Review (October 26 – November 1)

Topical Highlight

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Mountain Dew Trademark Battle: David v. Goliath or Misapplication of Prior User Rights?

In this post, Adyasha analyses the decision of the City Civil Court of Hyderabad against PepsiCo, ruling that Hyderabad-based Magfast Beverages enjoys prior user rights over ‘MOUNTAIN DEW’ (identical to PepsiCo’s mark for its citrus flavoured soda) for their packaged drinking water business. She first looks at the facts, and the history of both business’ use of these marks in detail, as well as previous claims by plaintiff Syed Ghaziuddin, owner of Magfast Beverages. She then argues that the Court’s decision has a discrepancy in applying the prior user rule under the Trade Marks Act, 1999, inasmuch as for Magfast to benefit from it, it would have to demonstrate continuous use prior to PepsiCo’s registration in 1985 and not its first-use. She argues that the honesty of Magfast’s adoption of the impugned mark was suspect. She also notes that the Court did not evaluate the doctrine of trans-border reputation qua PepsiCo’s mark, which could arguably come to the company’s rescue in subsequent litigation in this regard.

Thematic Highlight

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Critiquing Prizes as an Alternative Mechanism for Promoting Innovation

In this guest post, Avani Bagaria examines the pros and cons of prizes as alternatives to patents for encouraging innovation. She notes that prizes are used to promote social welfare by making the inventor’s knowledge public, and thus precluding the need to grant the inventor a monopoly. They maximise consumer welfare by eliminating dead-weight losses arising out of monopoly pricing. They can also be used by the government to prioritise investment in creating certain socially valuable instead of just economically valuable goods, that the patent system incentivises investment in. However, prizes also suffer from drawbacks— they are given out of taxpayers’ money, their implementation involves market studies, determination of eligibility, managing contests and deciding on winners, which Avani argues does not make them very economical. Lastly, she notes that they can lead to the government undervaluing or overvaluing inventions. Therefore, she concludes that no one method can incentivise innovation optimally, and ideally a hybrid of methods should be used, for instance the use of prizes should be confined only to incentivise the invention of essential products.

Other Posts

Call for Submissions: NLUJ Centre for Intellectual Property Studies Blog

We recently informed our readers regarding a call for submissions invited by the Centre for Intellectual Property Studies at National Law University, Jodhpur for its Blog on any contemporary debates in intellectual property law and allied fields, including, but not limited to, cyberspace, biotechnology, environment, competition law, human rights, trade and other related field having an interface with intellectual property. More details regarding the Blog, institution, themes for posts and submission guidelines can be found here.

Call for Submissions: NLIU’s Blog on IP and Technology Law (Rolling Submissions)

We also informed our readers regarding a call for submissions invited by the Cell for Studies in Intellectual Property Rights (CSIPR) at NLIU, Bhopal’s for its Blog on IP and Technology Law. More details regarding the Blog, institution, themes for posts and submission guidelines can be found here.

Decisions from Indian Courts

  • The Madras High Court in Wipro Enterprises Ltd. v. Kerala Khadi & Village Industries,  held that the defendants were not interested in the judicial proceedings and had not appeared before the court even after interim injunctions were granted and summons served against them. The Court held that given the overwhelming evidence of use and registration of the plaintiff’s trademark CHANDRIKA, the defendants, who are in a similar line of business, cannot be permitted to infringe the mark by using it for marketing their soaps. [October 29, 2020]
  • The Madras High Court in Kurichi Thangabalu Karthick v. M/S. Raj Television Network Ltd., a case concerning offences under Section 51, 63, 66 & 69 of the Copyright Act for allegedly broadcasting the film songs of Raj Television Network without license, held that in the absence of more particulars about the role of the petitioners (Kurichi Thangabalu Karthick) in the affairs of the first accused company, the prosecution against them is quashed. [October 28, 2020]
  • The Delhi District Court in Stanley Switchgear Products v. Mr. Sunil Agarwal, dismissed the application of plaintiff while allowing the application of the defendant and vacating the ad interim injunction granted against it. The Court noted that the defendant was the owner of the trademark STANLEY in respect of wires and cables, and the plaintiff was the registered owner of the trademark STANLEY (and prior user) in respect of other goods but not with respect to wires and cables. [October 27, 2020]
  • The Supreme Court in Brihan Karan Sugar Syndicate v. Yashwantrao Mohite Krushna,  disposed of the Special Leave Petition, noting that the Bombay High Court’s order in the case concerning trademark and copyright infringement was interlocutory in nature, and thus, did not warrant interference. It also directed the trial court to expedite the disposal of the suit preferably within nine months from the date of the order. [October 27, 2020]
  • The Gujarat High Court in New Gujarat Cola Private Limited v. Murli Beverages, granted ad interim relief to the appellant, noting that it was evident that it was the prior user of the trade mark HIMSAGAR and the respondent through its registered similar mark SHREE HEMSAGAR, may pass off its goods as those of the appellant. [October 26, 2020]
  • The Delhi High Court in Hiveloop Technology Pvt. Ltd. v. Cresselia Tradeline Ltd. & Ors., passed an order restraining the defendants from using the plaintiff’s trademark “Udaan” as well as their tagline “Khule Munafe Ka Shutter” until the date of the next hearing in the case. [October 23, 2020]
  • The Court of the JSCC-cum-ASCJ- cum-Guardian Judge in Maharishi Ved Vigyan Vishwa Vidya Peetham v. Shri Anand Ayyangar, a case involving an allegation of trade mark infringement for the use of the term transcendental meditation, held that the Court did not have the jurisdiction to try and decide the suit under section 134(1) of the Trade Marks Act, 1999. [October 22, 2020]
  • IPAB in Yashoda Super Speciality Hospitals v. Yashoda Hospital and Research Center Ltd., issued notice in the application and without commenting on the merits of the case noted that it is agreeable that both parties will seek adjournment in the Civil Court, Hyderabad after the hearing date of IPAB and the client will not rely upon the impugned order dated 21.01.2020 in the Civil Court till the application for review is decided. It also listed the matter for hearing on December 5, 2020. [October 16, 2020]
  • The Madras High Court in A.D. Padmasingh Isaac v. Aachi Ladies Hostel, noted that as per a Memorandum of Compromise signed by the plaintiffs and the first defendants, the defendants were to withdraw any application filed for registration of the trademark AACHI LADIES HOSTEL with respect to restaurants. The Court held that since both parties were in agreement, the suit was to be decreed accordingly with the Memorandum constituting part of the decree. [October 16, 2020]
  • The Bombay High Court in Narendra Hirawat v. Satish Tandon Productions, ordered the reinstatement of YouTube links of 5 movies, taken down for copyright infringement. It observed that the defendants had not moved the Court for any ad-interim reliefs after filing its suit in July, 2020. The Court reasoned that, in effect without grant of any interim or ad interim relief, the defendant had successfully stayed the reinstatement of plaintiff’s videos by YouTube, which could not be permitted. [October 16, 2020]
  • The Madras High Court in M/S. Apex Laboratories Pvt. Ltd v. Vensa Pharma, noted that as per a Memorandum of Compromise signed by the plaintiffs and defendants, the defendants agreed to not use the trademark ZINKOWIT in the future. The Court held that since both parties were in agreement, the suit was to be decreed accordingly with the Memorandum constituting part of the decree. [October 13, 2020]

Other News from Around the Country

  • Medianama hosted a roundtable on the future of the Copyright Act in India and curated a useful reading list for the substantive issues to be discussed.
  • An article on Livemint (India) discusses a report by the US Senate which calls for allowing the US Federal Trade Commission to protect news media organizations from tech platforms—arguing that copyright law is meant to incentivise creation of valuable content, and its spirit is violated by tech platforms that consider news to be a free resource.
  • A new drug delivery method to reduce the side effects of arthritis has been developed by Indian scientists, who have also filed for a patent over it.
  • White Hat Jr., an ed-tech startup, alleged copyright infringement leading to YouTube’s take down of a video by a 12-year-old kid who made fun of one of WhiteHat Jr.’s advertisements for coding courses for kids as young as six years old.
  • Lucknow University was granted copyright and trademark protection for its in-house online learning portal, SLATE, meant to provide a “360-degree online classroom” to students during the pandemic.

News from Around the World

  • Microsoft-owned, GitHub took down the supply code of a preferred YouTube video obtain device upon a request by the Recording Business Affiliation of America (RIAA) arguing that the device was “meant to avoid the technological safety measures utilized by authorised streaming companies resembling YouTube.”
  • TikTok approached a San Francisco federal court to file a countersuit over patent infringement against its rival app Triller.
  • SPOKEN GIANTS, a royalty administration company was launched publicly in the US, and is set to be the first of its kind to protect the interests of creators of spoken word copyrights (comedians, podcasters, authors of speeches/lectures, etc.).
  • A Texas jury held that Apple must pay $502.8 million in royalties for its VPN on Demand to VirnetX for infringement of its patent.
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    In a piece for Al Jazeera, Michael Kwet argued for breaking up big tech since among other things, private ownership of the mechanisms of computation such as software code is a prerequisite to extract money, spy on users and target them with advertisements. He notes that if people owned and controlled the digital space instead of corporations, there would be greater knowledge sharing and privacy protection.

  • Srividhya Ragavan in this piece for the TradeRX Report notes the pros and cons of India and South Africa’s recent proposal to waive certain provisions from the TRIPS agreement to deal with the Covid-19 pandemic.
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