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Spicy IP Weekly Review (November 16- November 21)


Here is our weekly review containing briefs of posts from the past week, 22 case summaries, and a few national and international IP developments. Do let us know in case you think we missed out on anything!

 

 

 

Highlights of the Week

Pharmaceutical Trademark Confusion: Poison Pill or Public Health?

Aparajita writes about the need of higher scrutiny while comparing competing marks in pharmaceutical products for similarity and confusion. She highlights that despite an order from the Supreme Court, prescribing the above caveat, there have been instances where the lower courts have not paid heed to it. Discussing one such decision in detail, she assesses how the order fell short in a properly assessing the similarity between the two competing marks of prescription drug and instead relied on factors like common API and price difference between the two products.

 

From Creating Patent Ecosystem to Building National Innovation System for Industrial Growth

In this guest post, Prof. Ruchi Sharma highlights a few findings of the Economic Advisory Council to the Prime Minister’s report “Why India Needs To Urgently Invest In Its Patent Ecosystem?” and emphasizes on the need to facilitate data access by IPO for the betterment of the national innovation system, something which the above report is silent on. She argues that dissemination of information is essential to construct a culture of innovation and thus it is necessary that the IPO takes conscious efforts to enable access to information not only for the sake of it but also in a manner which can be properly understood and utilized by the public.

Other Posts

Delhi High Court on “Fly Higher” in Frankfinn v. Vistara 

Mathews writes about the recent Delhi High Court order in Frankfinn Aviation Services Private Ltd. v. Tata SIA Airlines, vacating the ex parte interim injunction granted against Vistara’s use of term “Fly Higher” in its advertisements. Appreciating the order, he highlights the court’s findings on the term “Fly Higher” to be a descriptive and that the deference paid to similarity of classes of the two parties’ services.

Opportunities

We informed our reader about a workshop on ‘Patent Oppositions in the Pharmaceutical Field’ organized by IUCIPRS, CUSAT, and Third World Network from December 4- 8, 2022 in Kochi, Kerala.

Case Summaries

Star India Pvt Ltd And Anr V. Pikashow Application And Ors On 4 November, 2022 (Delhi High Court)

Delhi High Court granted an interim injunction to the Plaintiff, blocking ‘Pikashow’ App from being accessed in any matter whatsoever. Pikashow is an app which claims to provide free content of known OTT platforms. The court relied on the studies conducted by Lumen and “large volumes” of cease and desist complaints to prima facie establish that the App is a rogue website and deserves to be blocked as a whole. The Court also justifies this measure by stating that the past experiences have shown “that blocking of URLs themselves may not be sufficient to stop the streaming of infringing content.”

Ultra Tech Cement Limited And Anr  V. Ultra Plus Cement Pvt.Ltd And Ors  On  4 November, 2022 (Delhi High Court)

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Delhi High Court granted an interim injunction to the Plaintiff against the Defendant’s use of ‘Ultra Plus’ which the court prima facie found similar to the ‘Ultra tech’ and other formative marks of the Plaintiff. Interestingly, Defendant argued that as per a previous order of the Bombay High Court passed in Ultratech Cement Limited v. Shree Balaji Cement Industries and Ors, the term  ‘Ultra’ was regarded as a descriptive word. The Court dismissed the argument by holding that in that case, the competing marks were not deceptively similar, unlike in the present case where prima facie the Defendant’s mark “has tried to come close to the Plaintiff’s mark in all aspects.”

Shriram Pistons And Rings Limited vs Mr. Sunil Kumar on 9 November, 2022 (Delhi District Court)

Delhi District Court decreed a suit in favor of the Plaintiff, passing permanent injunction against the Defendant’s use of marks ‘Usha’ and “Shriram’.

Indiana Ophthalmics vs Sapient Laboratories (P) Ltd on 10 November, 2022 (Delhi High Court)

The Delhi High Court dismissed an appeal against the decision of Trial Court which had refused to grant an interim injunction against the Appellant. The Trial court had determined that the Appellant has established its prior use of the mark “Hylofresh” in comparison to Respondent’s use of “Hylufresh”. The High Court also refused to grant an injunction in favor of the Appellant and agreed with the Trial court that though the Appellant’s prior use is prima facie evident it would need to be proved by way of evidence.

Fmc Corporation & Ors. vs Insecticides India Limited on 11 November, 2022 (Delhi High Court)

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In another case pertaining to launch of CTPR by the Defendant, the Delhi High Court refused to grant an injunction to the Plaintiff and permitted the Defendant to launch its product with a caveat that it assures the court that it shall not use process claimed under the suit patent IN’645. Inter alia the court agreed with the Defendant’s argument that “IN’645 focusses on acid-amide coupling where both the acid and amide intermediates are known compounds for which patent protection expired on 13.08.2022” and that “the product CTPR obtained at the end of process of claim 1 in IN’645 is not new since it is already known and was disclosed and claimed in IN’978 and again in IN’307, both of which were published before the priority date of IN’645.”

Pidilite Industries Limited vs Riya Chemy on 11 November, 2022 (Bombay High Court)

Bombay High Court granted an interim injunction to the Plaintiff,  restraining the Defendant from using its registered mark ‘R-Seal’. The court not only held both M-Seal (Plaintiff’s mark) and R-Seal to be similar, but also opined  that the Defendant has registered its mark by playing a fraud on the registry by concealing the prior registered mark of the Plaintiff.

M/S. L’Oreal S.A vs M/S. J.R. Cosmetic Shop on 14 November, 2022 (Delhi District Court)

Delhi District Court passed an order for permanent injunction against the Defendant’s use of Plaintiff’s registered marks which inter alia include L’oreal and Maybelline and also awarded punitive and compensatory damages to the Plaintiff. The matter mostly proceeded ex parte as the Defendant did not contest the allegations nor did it appear after a few appearances.

Fmc Corporation & Ors. vs Gsp Crop Science Private Limited on 14 November, 2022 (Delhi High Court)

Delhi High Court refused to grant an interim injunction to the Plaintiff against Defendant’s launch of Chlorantraniliprole (CTPR), holding that the suit patent was already covered under specification and claims of a previous process patent. Apart from this, the court also called out the Plaintiffs for suppression of material facts and attempting to evergreen their expired patent.

M/S Pornsricharoenpun Co Ltd & Anr vs M/S L’Oreal India Private Limited & Anr. on 14 November, 2022 (Delhi High Court)

Delhi High court passed an appeal setting aside the interim injunction passed by the Trial court against the Appellant for its use of the term ‘Hair  Spa’. The court opined that the term ‘Hair Spa’ despite being registered in favor of the Respondent is common to trade and is used by the Appellant as a description and not as a mark.

Star India Pvt Ltd & Anr. vs Moviesghar.Art & Ors. on 14 November, 2022 (Delhi High Court)

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Delhi High Court granted permanent injunction to the Plaintiff against more than 680 websites/ domain names from broadcasting Plaintiff’s cinematographic work ‘Bhuj: Pride of India’.

 

 

B C Hasaram And Sons Ayurvedic Pharmacy Ltd. vs Pahari Garhwali Ayurvedic Pharmacy on 14 November, 2022 (Delhi High Court)

The matter pertained to identical trade dress of the parties for the competing products. Parties settled out of court with Defendant agreeing to pay 1 lakh of nominal costs. The court also imposed a condition that if Defendant violates any conditions he shall pay 25 lakhs to Plaintiff without any further adjudication.

Nike Innovative C.V vs Shri Manoj Yadav and Anr. on 15 November, 2022 (Delhi District Court)

Delhi District Court granted a permanent injunction to the Plaintiff restraining the Defendants’ from using an identical or similar mark as the Plaintiff’s registered mark ‘Nike’.

Shemaroo Entertainment Limited V. Saregama India Limited And Others On 15 November, 2022 (Bombay High Court)

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Bombay High Court granted an ad-interim relief to the Plaintiff against the Defendant’s exhibition of play ‘Disco Dancer- The Musical’. The Court, considering the investments and arrangements already made, permitted that the relief should not affect the staging of the above play scheduled for next four days in London, on the condition that all the collections of the shows shall be deposited with the court. The Plaintiff had argued that all the rights pertaining to the film vests with them by virtue of an agreement with the producer entered in 2011. The Defendant on the other hand argued that the right to musical adaptation lies with them on account of a separate trail of agreements. The Court however, prima facie ruled that rights stemming from the Defendant’s agreements pertained to recordings of performances of musical nature and sound tracks thereof.

M/S Gulab Oil And Food (Ahmedabad) Pvt. Ltd vs Smt. Madhu Gupta on 15 November, 2022 (Delhi High Court)

A Division bench of Delhi High Court dismissed an appeal seeking vacation of the interim injunction passed by the commercial court which has restrained the Appellant from using the mark “Gulab” which is similar to previously registered mark of the Respondent “Gulab ka Phool”. Notably the court dismissed Appellant’s argument regarding absence of  Respondent’s name as a proprietor by reiterating that “there is no hiatus in succession and the estate of the deceased is transmitted to the successors immediately on his/her demise..” while also acknowledging the pending applications for change of ownership.

M/S Prestige Estates Projects vs M/S Falcon Shelters Pvt. Ltd on 15 November, 2022 (Bangalore District Court)

Bangalore District Court granted the Plaintiff a permanent injunction against the Defendant’s use of mark ‘Falcon’ in one of its construction projects. After recording and assessing the evidences the Court ruled that that Plaintiff is the proprietor of the mark ‘Falcon’ and passed the order for injunction. The order is however, silent on the Defendant’s plea that the mark ‘Falcon House’ is registered in its favor.

M/s ASK Automotive Pvt. Ltd. v. Sri Sai Automobiles Parts on 15 November, 2022 (Delhi District Court)

The District Court partly decreed the suit granting the Plaintiff a permanent injunction against Defendant’s use of mark ‘AXK’ which was deceptively similar to the Plaintiff’s mark ‘Ask’. However, since no infringing good or business entity was found in the Defendant’s entity, as the same was sold off by them, the court refused to grant relief of rendition of account and damages.

Purvankara Projects Ltd vs M/S Purva Metal Section Private on 15 November, 2022 (Bangalore District Court)

Bangalore District Court decreed the suit in favor of the Plaintiff, granting them a permanent injunction against Defendant’s use of identical mark ‘Purva’. The Plaintiff has registrations over the marks ‘Purva’, ‘Purvankara’.  Notably, the order seems to have used the terms similar and identical interchangeably though out th

Fox And Mandal And Ors vs Somabrata Mandal And Ors on 15 November, 2022 (Calcutta High Court)

Calcutta High Court passed an interim injunction against the Defendant from claiming that it was established in 1896 and was associated with the Petitioner  as that will mislead the public. It is noteworthy that via a previous interim injunction the Defendant was injuncted from using ‘Fox and Mandal’ and ‘F&M’ as their marks.

Janssen Pharmaceuticals & Others vs . Msn Laboratories on 15 November, 2022 (Himachal Pradesh High Court)

Himachal Pradesh High Court passed an interim injunction against the Defendant from manufacturing Metformin or Pharmaceutically acceptable salt thereof in combination with Canagliflozin and/or Canagliflozin+Metformin Hydrochloride in any form whatsoever, or any product covered by the Patent No. 312847 which is registered under the name of the Petitioner. The Plaintiff had alleged that Defendant is manufacturing the above drug and thereby infringing the suit patent. It is worth noting that the above order was passed, despite the Defendant’s plea that it has not received any copy of the Plaint and other documents.

Vintage Distillers Limited vs Ramesh Chand Parekh on 16 November, 2022 (Delhi High Court)

Delhi High Court passed a quia timet injunction against Defendant from using the mark ‘Dhola Tharu’, which it prima facie held to be deceptively similar to the Plaintiff’s mark ‘Dhola Maru’, for country liquor. Defendant had objected to the application for injunction on the grounds of lack of territorial jurisdiction, no similarity between the marks, and non-use of the registered mark by the Plaintiff.

The Court ruled against these averments holding that it has the territorial jurisdiction in the present case. The Court opined that since the case is regarding a quia timet action with apprehension of the launch of infringing products in Delhi and also because the principal place of Plaintiff’s business is Delhi, it has the territorial jurisdiction. The court then ruled that upon comparing the essential features of  the marks, they are prima facie similar.  The court further rejected Defendant’s defense regarding  non-use of the mark owing to special circumstances exception (excise policy of Rajasthan requiring specific color scheme to denote concentration of alcohol), prescribed under Section 47.

Moroccanoil Israel Limited Anr. vs Modicare Limited on 18 November, 2022 (Delhi High Court)

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Delhi High Court made absolute an ex parte interim injunction granted in favor of the Plaintiff against the Defendant’s use of ‘Moroccan Argan Oil’, prima facie holding it to be deceptively similar to the Plaintiff’s registered mark ‘Moroccanoil’. In doing so, the Court assessed the overall similarity in the packaging and way of writing the both the marks and held them to be prima facie similar.

However, the court also found merit in Defendant’s argument that Plaintiff’s mark is descriptive and denotes geographical origin. And thus the Court granted the Defendant permission to proceed with its rectification application, filed before the erstwhile IPAB, concerning validity of the Plaintiff’s mark and stayed the proceedings of the case before the Delhi High Court till the decision  on the above rectification.

Viacom18 Media Private Limited v Bharath Sanchar Nigam Limited and others on 18 November, 2022 (Madras High Court)

Madras High Court passed an interim injunction order restricting more than 12,000 websites from exhibiting FIFA World Cup 2022.

Other developments

International Developments

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