We’ve had a busy week at SpicyIP with lots of IP developments on and off the blog. Below, you’ll find our quick summary including of four of our posts, 15 court orders passed in the last week, and some notable international developments. Did we miss anything big? Let us know in the comments below!
Highlights of the Week
Congress and the KGF 2 Copyright Dispute: Ex-Parte Injunctions, Fair Dealing, and Blocking Orders
In this post, Nikhil analyses the recent decision by a Bangalore Commercial Court to, inter alia, block
the handles of INC and Bharat Jodo Yatra. He argues that while it might be a valid infringement claim, the granting of an ex-parte injunction and the order to block the two handles is incorrect. Readers, please note that this order has now been set aside. Livelaw has the details here.
The Shape of Shape Marks in India
In this guest post, Akshay Ajayakumar examines the Delhi High Court’s decision on Knitpro International v. Registrar of Trademarks. He highlights the court’s rationale on the need of acquired distinction for shape marks and criticizes this additional threshold arguing that it goes beyond the mandate of the legislature.
Other Posts from the Week
SpicyIP Tidbits: Compulsory License on Mira Behn’s Autobiography, and Stricter Test of Similarity of Marks for Medicinal Products
Swaraj and Praharsh wrote about the two recent developments- first, about the notice issued by the Bombay High Court in application seeking compulsory license on Mira Behn’s autobiography, under Section 32 of the Copyright Act; And second, about the Delhi High Court’s decision to apply stricter test in assessing ‘deceptive similarity’ between the marks to avoid public injury.
SpicyIP Tidbits: Clarification on Jurisdiction of High Courts after the Tribunals Reform Act 2021, and Need for Reasoned Orders for Rejecting Patent Applications.
Writing on two recent IP developments, we highlighted the Delhi High Court’s order clarifying the position on matters pertaining to revocation petitions and appeals under Section 117A, after the Tribunal Reforms Act, 2021. Then we discussed the Bombay High Court’s decision to rebuke the Patent Office for dismissing a patent application without providing sufficient reasons for the same.
Call for Papers/ Submissions
- Call for Papers: NALSAR’s Indian Journal of Intellectual Property Law (IJIPL) Vol. 13 [Submissions by December 30, 2022]
Cases in Indian Courts
In an appeal against the decision of the trial court, Delhi High Court reversed the decision passed by the trial court and returned the plaint to the Plaintiff for filing before the court of competent jurisdiction. In this case, the trial court had accepted its lack of jurisdiction however, it still decreed it. The Delhi High Court opined that the cause of action for the suit i.e. Defendant’s use of the mark Hari Ram & Sons arose in Prayagraj and the Plaintiff was unable to establish how the courts in Delhi should have jurisdiction to try the matter. The High Court also noted that merely because the impugned mark’s advertisement occurred in Delhi, the courts of Delhi will not become eligible to adjudicate on the dispute.
The Bangalore District Court passed an ex-parte permanent injunction against the Defendant for using the mark “House of Khoday’s” which it held to be deceptively similar to the Plaintiff’s registered mark “Royal House of Khoday’s” in Class 33. The suit was brought by the Plaintiff and despite serving the summons, the Defendant did not appear before the court.
Decreeing the suit filed by the Plaintiff in the matter, the Delhi District Court passed an order of
permanent injunction against the Respondent from using the trademark and trade dress similar to the Plaintiff’s ‘Yellow Diamond’ mark and trade dress. The court noted that the Respondent did appear on a few instance before the court and also filed a written statement. However, after a few appearances, it stopped appearing and the written statement was filed after the lapse of the time limit granted. Therefore, the court proceeded with the matter ex-parte.
Rejecting the appeal filed by the Plaintiff on Defendant’s exhibition of the cinematograph film on its TV channels, the Andhra Pradesh High Court ruled that the terms of the assignment agreed between the Assignor and the Assignee (the Plaintiff) cannot be construed to include residuary rights accruing in the future.
In the present case the Assignor (Defendant no. 2, against which the suit was not pressed) assigned the rights regarding exhibition of 16 mm and 35 mm audio and video, perpetual lease right and world negative rights. The High Court referred to the terms of the assignment deed and ruled that “what was agreed between the parties is traditional mode of exhibiting the cinema as could be contemplated by both parties by then, but after technical advent of exhibiting film through satellite has become available. The consideration would be commensurate to the possibility of making business out of it while negotiating. As such, the agreement between the parties cannot be construed to mean whatever rights that may accrue in future as there is no specific term in the assignment deed covering all forms of residuary rights in favour of the assignee.”
The order was passed by the Delhi High Court in further to the order of ex-parte interim injunction restraining the infringement of the rights of the Plaintiff in Asia Cup cricket matches and associated content. The court via its previous order dated August 22, 2022 had directed Domain Name Registrars to disclose the name of the impugned domain names. However, it was reported that a few DNR are not giving effect to the injunction orders passed by the court. Discussing the backdrop of the dispute and multiple order passed by the court, the court directed MeitY and DoT to immediately take actions against these DNRs which are fault. The above DNRs are NameCheap Inc., Dynadot, LLC, Tucows Inc, Gransy s.r.o., and Sarek Oy. The court further directed the authorities to look whether these DNRs ought to be permitted to continue to offer their goods and services in India, if they are not giving effect to orders the courts and not complying with the provisions of IT Act 2000, and the 2021 Rules.
Allowing an appeal, Delhi High Court set aside an order passed by the Examiner of Trademarks and directed to proceed with Appellant’s application for advertisement on a ‘proposed to be used’ basis. The Defendant had earlier rejected Appellant’s mark ‘Brazzers’ on the ground that the latter could not justify its proposed use since 2012 and that similar marks are registered for similar goods. The Appellant however argued that rejecting the application right after Appellant’s response to the First Examination Report was not the right stage for rejection. The Court agreed with the reasoning of the Appellant and passed this order with the caveat that any eventual objections to the mark should be considered without being influenced by the present order.
Dr. Reddys Laboratories Limited & Anr V. The Controller Of Patents & Ors.;Thyssenkrupp Rothe Erde Germany Gmbh V. The Controller Of Patents & Anr; Elta Systems Ltd. V. The Controller Of Patents on Nov. 10, 2022 (Delhi High Court)
Delhi High Court joined three matters and ruled on jurisdiction of the courts post Tribunal Reforms Act 2021. Of the three matters two pertained to revocation applications ( Tyssenkrupp Rothe Erde Germany GMBH v. The Controller of Patents and Dr. Reddy’s Laboratories Limited& Anr. v. The Controller of Patents& Anr.) and the third one was an appeal under Section 117A of the Act. The crux of these matters was whether after dissolution of IPAB can a party approach any High Court with revocation applications and appeals and if not how can the jurisdiction in respect of such matters be determined?
Mr M M Kariappa vs Advance Magazine Publishers, Inc on 10 November, 2022 (Karnataka High Court) Karnataka High Court allowed the appeal and over-ruled the order of the District Court which had restrained the Appellant from using the mark VOGUE. The High Court ruled that one needs to analyse :- 1) The nature of goods and services in respect of which Appellant and Respondent are using the mark (Appellant runs an institution under the name of ‘Vogue Institute of Fashion and Technology’, whereas the Respondent publishes a fashion magazine under the name ‘Vogue’) and 2) The class of consumers- their education, intelligence and the degree of care likely to be exercised while consuming the goods of the Appellant and Respondent. The Court then ruled that the Respondent’s magazine is used by limited section of public who are generally aware about fashion and who cannot confuse it to run a fashion institution. Whereas, the consumers of Appellant’s services are the ones who have knowledge about fashion and taking into consideration the degree of care that an average student is likely to exercise, it is unlikely that they’ll confuse the services of the Appellant with that of the Respondent.
Rejecting an appeal filed against the order of the Trial Court, Rajasthan High Court relied on the position that interference with the order of court of first instance can only be made when its proven that discretion exercised by the court was arbitrary, or where the Court ignored the settled principles of law regulating the grant or refusal of temporary injunction. However, the High Court did direct the Trial Court to decide the original suit, filed in 2018, in an expeditious manner, preferably within 6 months from the date of the present order.
The Trial court had rejected the application for temporary injunction filed by the Appellant against the Defendant’s use of its registered mark “Decide” by choosing a similar mark “Delite” for the same product, on the ground that the prayer made in the Civil Suit as well as in the application for temporary injunction was similar.
The Division Bench of the Delhi High Court ruled in the intra-court appeals filed by the parties against the order of the Commercial Court. The Commercial Court had restrained Mr. H.S Sahni and M/s. M.K Auto Sales Corporation (Sahni’s enterprise) from using the mark “M.G Cables” but declined to grant injunction against the use of the marks “M.G” and “M.G.I” by M/s. M.K Auto Sales on the ground that these marks are registered in favor of H.S Sahni. The above injunction order against Sahni’s and its enterprise’s use of the mark “M.G Cables” was passed on the ground that registration in favor of the mark lies in favour of Mukul Singhal who had established its claim of prior use via documentary evidence.
The Division Bench upheld the Commercial Court’s order with respect to the injunction passed in favor of Mukul Singhal. However, it overruled the Commercial Court’s position with regard to allowing Sahni to use its registered mark “M.G” and “M.G.I” on the ground that it has propensity to confuse public and a comparison of the labels of competing products shows that Sahni’s use of its mark “M.G” is strikingly similar to Singhal’s use of “M.G Cables”.
Bombay High Court refused to vacate the interim injunction against Defendant’s use of mark and
label similar to the Plaintiff’s. The Plaintiff is the proprietor of the ‘Haji Ali Juice Centre trademark’ and label and had received an ex parte interim injunction against Defendant’s use of a similar trademark on an entity set up in Vijaywada. The Defendant argued that Plaintiff had suppressed material facts about its knowledge regarding Defendant’s connection with other Defendants with whom it is already involved in a separate litigation in Kerala, over the latter’s use of ‘Haji Ali Juice Centre’ trademark. On basis of the above, the Defendant argued that the interim injunction deserves to be vacated.
The Court, however, disagreed with the Defendant’s argument holding that there was no information available in the public domain for the Plaintiff to reach at the above conclusion regarding relations between the Defendants. The Court furthermore, stated that Defendant’s use of an identical mark as that of other Defendants (with whom the Plaintiff is involved in the litigation in Kerala) is not a good enough indicator to conclude relations between the Defendants and thus held that the Plaintiff has not suppressed any material facts.
Delhi District Court passed an ex-parte permanent injunction against the Defendant’s use of similar mark ‘Dhadi’ and trade dress to the Plaintiff’s mark ‘Ghadi’ and trade dress for similar products. The Defendant was served with a copy of summons and it did appear in one of the hearings, but later stopped, thus causing the matter to proceed ex-parte.
The Delhi District Court passed an ex-parte permanent injunction against the Defendant’s use of identical mark and trade dress to the Plaintiff’s mark which inter alia include ‘Lakme’ and ‘Fair & Lovely’ for similar products. The Defendant was served with a copy of summons and it did appear in a few hearings, but later stopped, thus causing the matter to proceed ex-parte.
Delhi High Court passed an ex-parte permanent injunction against the Defendant from selling counterfeiting, inferior goods under the Plaintiff’s trade mark and label ‘Daawat’ and directed the former to pay damages in tune of INR 20,00,000/-. The Court relied extensively on the report prepared by the local commissioner and considering that neither the Defendant filed any written submissions nor did it appear in any hearings, the court did not record any ex-parte evidence.
Delhi High Court, after being informed that the Defendant has removed all the infringing listings from its website in pursuant to a previous order, decreed the suit in favor of the Plaintiff. In this case, the Plaintiff had alleged that upon purchasing its products from one of the listings (M/s. Gold Leaf) on Defendant’s website, the product which ultimately was delivered was made in Pakistan and thus did not comply with the legal requirements of Legal Metrology Act, Legal Metrology Rules and Food Safety and Standards Act. (Note we have recently covered a trademark infringement case on Rooh Afza here).
The Court directed Plaintiff to bring any other listing which infringes it’s mark ‘Rooh Afza’, to the notice of the Defendant who shall then remove the same in accordance with the provisions of IT Rules.
Also, please note that one of our readers has brought a case to our knowledge that we had missed covering previously. The case, Avery Dennison Corporation v. Controller of Patents and Designs (pdf), was decided by the Delhi High Court and deals with issues pertaining to prior art and inventive step.
Other Developments in the Country
- Delhi High Court awarded ₹20 Lakh to Louis Vuitton in a Trademark infringement suit against Club Factory.
- Comedian Vir Das, Netflix booked for copyright infringement.
- KKR-backed JB Chemicals gets interim injunction from Delhi High Court on probiotic drug trademark ‘Lobun’ ‘Lobun Forte’- PharmaBiz
- Dr Vaishali Londhe of NMIMS SPPSPTM wins Patent for Breakthrough Invention.
- Govt, and pharmaceutical companies to work together on pricing mechanism for off-patent drugs.
- IIT-Patna battery management system gets a patent.
- Two artists contest their contribution to Netaji’s statue at India Gate.
- US court restrained rappers Drake and 21 Savage from using ‘Vogue’ covers to promote album.
- US Supreme Court rejected Bristol Myers’s Juno Therapeutics to reinstate USD 1.2 Billion Award against Gilead Sciences’ subsidiary Kite Pharma Inc on Cancer Drug Yescarta.
- Nubeva awarded U.S. Patent for Ransomware Decryption Technology.
- Microsoft, GitHub, OpenAI face class action lawsuit for violating copyright terms.
- Paramount’s motion to dismiss Top Gun: Maverick copyright lawsuit denied.
- Rome Court of First Instance holds an NFT can infringe one’s own trade mark.
- Mahindra Roxor can face a permanent ban in the USA over design infringement.
- ParkerVision files suit against MediaTek and Realtek for infringing 4 patents.
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