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SpicyIP Weekly Review (December 13-December 19)


 

Summarizing the three posts covered on the blog last week, we bring to you 17 case summaries, and other national and international IP developments. Important IP cases that we’re missing out on? Especially from other High Courts? Please let us know so we can include them! Also we are thankful for the comments from our readers on the format of the weekly reviews, we have tried something new this time. Do let us know how you like it!

Highlight of the Week

Delhi High Court’s Decision Discussing Doctrine of Equivalents: An Exhaustive but Blinkered Exercise?

Logo of FMC

Logo of FMC (Image from here)

In this post, Praharsh discussed the FMC v. Natco decision, passed by a Division Bench of Delhi High Court, wherein the court elaborately discussed the ‘doctrine of equivalents’. Discussing the meaning and origins of the doctrine, he highlights how the court modified the doctrine for its application on process patents. However, in doing so, he argues that the court has not considered the implementational challenges which the courts might face in future, without the clear disclosures and submissions about the suit patent, which were available with the court this time.

Other Posts

SITARA-D & SITARED are Not Similar, says the Delhi High Court: What about Consumers, Confusions, & Contradictions?

In this post, Lokesh and Praharsh discuss Delhi High Court’s decision in Sun Pharma v. Intas Pharma Ltd., in which it refused to grant an interim injunction to the Plaintiff. Discussing the factual matrix and interplay between the 4 competing marks, they highlight the court’s rationale that merely a registration will not entitle the Plaintiff for an interim injunction.  They then critique the court’s assessment on deceptive similarity between the un-registered competing marks from the lens of passing off and argue how the court did not pay much heed to the test of strict test for similarity, prescribed by the Supreme Court in Cadilla case. They concluded the post highlighting the indeterminacy in the current framework.

DHC rules on Jurisdiction for Revocation Petitions and Appeals Post Dissolution of IPAB

In this post, Namratha discussed Delhi High Court’s decision on the jurisdiction of high courts wrt revocation petitions and appeals under Section 117A. Highlighting the key findings(jurisdiction in case of revocation petitions will be decided on the basis of the static effect and dynamic effect of the patent; And jurisdiction for Appeals u/s 117A will lie before the high court having territorial jurisdiction over the appropriate office from where the patent application originates), Namratha discusses how the order may have diluted the requirement of territorial jurisdiction for revocation petitions and might have allowed for an increase in forum shopping in the future.

Case Summaries

Assertions in the Plaints are sufficient indicators of ‘cause of action’ for Quia Timet actions.

Case: Novartis Ag & Anr. vs Zydus Healthcare Limited & Anr. on 12 December, 2022 (Delhi High Court)

Delhi High Court dismissed an application seeking rejection of the plaint, holding that the Plaintiff/ Patentee’s averment regarding Defendant’s application for a similar patent (combination of Valsartan and Sacubitril), its trademark application to launch the product on ‘proposed to be used’ basis and obtaining a manufacturing license from CDSCO will amount as sufficient cause of action to institute a suit seeking quia timet action. In reaching the above conclusion, the High Court interpreted the meaning of “cause of action” under Order VII Rule 11 and held that the existence of cause of action is to be seen after careful screening of the arguments advanced in the plaint.

Right to oppose an application is a valuable right and cannot be permitted to be defeated on technical considerations.

Case: Sonya Kapur vs Controller General Of Patent, on 12 December, 2022 (Delhi High Court)

The Petitioner filed a writ against the decision of the Patent office granting a patent to Respondent no. 3, despite subsistence of a pre-grant opposition by the Petitioner. The Patent office responded that the opposition was not in the correct format and was thus was not considered. The Court held that the right to oppose an application under Section 25 is a valuable right, and cannot be permitted to be defeated on technical considerations and ordered the patent office to consider the pre-grant opposition. Doing so the court quashed the order granting the patent and remanded the patent application for reconsideration.

Delhi High Court remands Review Application back to Registry for reconsideration, subjected to the Registrar’s satisfaction that the dismissal order was not originally communicated to the Appellant.

Case: Modern Snacks Pvt Ltd vs The Registrar Of Trade Mark on 8 December, 2022

The Appellant filed  an appeal under Section 91 of the Trademarks Act against Registrar’s dismissal of its review application on the ground that the dismissal order was not officially communicated to them and they rather found it via a general online search on the trademark registry. The court directed the Trademarks Registry to re-consideration of Appellant’s Review Application subjected to satisfaction of the Registrar on the point that the same was not formally communicated to the Appellant.

Observations in the orders passed under Order XXXIX Rule 1 and 2 are tentative and not final.

Case: Institute For Inner Studies, Inc & Ors vs Charlote Anderson & Ors on 13 December, 2022 (Delhi High Court)

The Appellant approached the Division bench against certain observations in the impugned order, which were relied by the Respondents in their rectification and Order XIIIA applications. The Court disposed of the appeal by clarifying that all observations and findings made in the impugned order, passed under Order XXXIX Rule 1 and 2 are tentative and any application moved or any proceedings instituted by the respondent shall be decided uninfluenced by the observations made in the impugned order.

Delhi High Court sets aside order passed by the Asst. Controller of Patent on the ground that the Appellant did not receive the hearing notice.

Case: Mitsubishi Hitachi Metal Machinery Inc. vs Asstt. Controller Of Patents And Design on 13 December, 2022 (Delhi High Court)

The Appellant filed an appeal under Section 117A of the Patents Act, against the Respondent’s order rejecting the Appellant’s application for not-appearing during a scheduled hearing. Upon perusing the plaint and the communication which took place between the parties, the court held that the Appellant was not served with the hearing notice and thus setting aside the impugned order, the court directed the Respondent to reconsider the Appellant’s application.

Delhi High Court directs to publish Joy Universal’s ‘Princess Pat’  trademark.

Case: Joy Universal Ltd vs Registrar Of Trademarks on 8 December, 2022 (Delhi High Court)

Delhi High Court set aside the order passed by the Respondent and directed the Trademarks Registry to process the registration application of the wordmark ‘Princess Pat’. The court noted that the mark was not registered on the ground that it is similar to seven earlier marks, however, the status of five of these marks has changed and the other two marks are device marks and upon an overall comparison, are not similar to the subject mark. The court also noted that the subject mark is registered in multiple jurisdictions. Lastly, the court clarified and asked for a disclaimer in the trademarks journal that the subject mark shall not be granted with any exclusive rights in the words, “Princess” or “Pat”, separately or individually.

Loreal’s ‘Pillow Proof Dry’ is distinctive and non-descriptive, holds Delhi High Court.

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Case: Loreal vs The Registrar Of Trade Marks on 8 December, 2022 (Delhi High Court)

Delhi High Court set aside the order passed by the Respondent and directed the Trademarks Registry to process the registration application of the wordmark ‘Pillow Proof Blowdry’. The court noted that the mark is not devoid of distinctive character and when assessed overall, it’s a combination of three random words which is not descriptive of the concerned product i.e. a shampoo. The court clarified and asked for a disclaimer in the trademarks journal that the subject mark shall not be granted with any exclusive rights in the words, “Pillow”, “Proof” or “Blowdry”, separately or individually.

‘Espace’ does not enjoy any acquired distinctiveness, rules Delhi High Court.

Case: M/S Bright Enterprise Pvt. Ltd. vs . Narang Infrastructure Pvt. Ltd. on 13 December, 2022 (Delhi District Court)

Delhi District court decreed the suit in favor of the Defendant, dismissing the suit on the ground that the Plaintiff could not establish that the subject mark ‘Espace’ was coined or registered in its favor or that it has acquired any distinctiveness.

Delhi High Court refuses to implead Customs in a suit, holds its neither a necessary party nor a proper party.

Case: Western Digital Technologies Inc. vs Syt Solutions Pvt. Ltd. on 13 December, 2022 (Delhi High Court)

 Commissioner of Customs (General) sought impleadment in the present suit on the basis of Rule 11 of IP Enforcement Rules, which authorizes the custom authorities to destroy the seized IP infringing goods after obtaining a NOC from the IP holder, if there is no legal proceeding is pending with regard to those goods. The court dismissed the application, after making a comparison between a ‘necessary party’ and a ‘proper party’. The court held that the present ‘legal proceeding’ is a suit regarding alleged infringement by the Defendant of the Plaintiff’s mark and the customs office is neither a necessary party, nor a proper party for the purpose of present suit.

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Delhi High Court imposes damages worth INR 20 lakhs on the Defendant for infringing Microsoft’s copyright.

Case: Microsoft Corporation & Anr vs Rupesh Waidande & Anr on 14 December, 2022 (Delhi High Court)

Delhi High Court passed a decree of permanent injunction after completing the trial and restricted the Defendants from infringing its software. The Plaintiff had alleged that the Defendants deliberately misleads the buyers by selling its infringing software in a similar packaging as the Plaintiff. Ruling in favor of the Plaintiff, the court also imposed damages of INR 20,00,000 on the Defendants.

“An order which contains reasons that no one can understand is worse than an unreasoned order.”

Case: Art Screw Co., Ltd. vs The Assistant Controller of Patents and Designs on 14 December, 2022 (Delhi High Court)

Delhi High Court set aside the order passed by the Respondent and directed it to look at the patent application afresh and pass a properly reasoned order. The Respondent had rejected the patent application on the ground that it lacked any inventive step. However, the order passed by the Respondent was alleged to be incomprehensible. The counsel on behalf of the Respondent also confessed that they are not in a position to explain the reasoning contained the impugned order. The court reprimanded the Respondent for the impugned order by stating that “an order which contains reasons that no one can understand is worse than an unreasoned order.”

Delhi High Court Holds ‘Smart Cities India’ device mark to be non-descriptive, directs the Registry to advertise it.

Case: Exhibitions India Pvt Ltd vs The Registrar Of Trade Marks on 8 December, 2022 (Delhi High Court)

Appellant had approached the court against the order rejecting its trademark application on the ground that its mark “Smart Cities India” is descriptive and similar to conflicting marks. The court after assessing the mark understood it to be a device with a combination of artwork and found it to be non-descriptive. Furthermore, upon overall comparison with the competing marks, the court held that the marks are not deceptively similar to each other. On the above grounds the court set aside the impugned order and directed the Respondent to advertise the mark.

Holding that no renewal notice was sent to the Appellant, Delhi High Court directs the Registrar of Trade Marks to renew the mark post payment of the concerned fees.

Case: L’Oreal S.A (Societe Anonyme) vs The Registrar Of Trade Marks on 9 December, 2022 (Delhi High Court) 

Appellant filed the present application against the impugned order removing its mark on account of non-filing of renewal fees. The Appellant contended that no renewal notice was sent to the Appellant and even after the Appellant filed an interlocutory petition for renewal and restoration of the mark in January 2018, the Respondent removed the mark instead of allowing it to pay the renewal fees. The court agreed with the Appellant that the Respondent has not shown any proof of dispatch of the notice and that the mark was removed much later, in September 2019,  after the Appellant had filed the interlocutory petition. In light thereof the court set aside the impugned order and directed the Respondent to renew the mark after the renewal fees is paid by the Appellant.

 Defendant cannot use ‘Khadi’ mark, after it agreed and failed to take valid certificate of use from Khadi & Village Industries Commission, rules Bombay High Court.

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Case: Khadi & Village Industries Commission v. Board of Trustees, Mumbai Khadi and Village Industries Association on December 14, 2022 (Bombay High Court)

The Plaintiff approached the court alleging infringement of its registered ‘Khadi’ wordmark and ‘Charkha’ logo by the Defendant. It further alleged that in one previous litigation, the Defendant had agreed that it will not use the above mark unless it obtains a certificate of use, from the Plaintiff. The Defendant on the other hand argued that it was the prior adopter of the mark, the mark is a generic term and the present case is regarding infringement of trademark and thus the Plaintiff cannot rely on previous litigation which was essentially based on Khadi and Village Industries Commission Act, 1956 .

The Court however disagreed with the Defendant, holding that the mark is registered and used  by the Plaintiff, not only for products made out of Khadi, but also for other variety of products. The court relied on the earlier litigation to hold that the Defendant had agreed to approach the Plaintiff to obtain certificate, before selling any product bearing the mark ‘Khadi’. Thus, the court ruled that use of impugned mark by the Defendant is prima facie infringement of the Plaintiff’s mark and passed an interim injunction order against the Defendant.

Delhi High Court grants Su-Kam an interim injunction against allegedly misrepresenting Defendants.

Case: Su-Kam Power Systems Limited vs Sukam Nextgen India Private Ltd. on 16 December, 2022 (Delhi High Court)

Delhi High Court passed an interim injunction, restricting the Defendant from using deceptively similar mark ‘Sukam’ and operating the domain name sukam.co.in. The Plaintiff had alleged that the Defendant took advantage of the Plaintiff’s liquidation and registered a company by the name of Sukam Nextgen India Pvt. Ltd. and the above domain name. The Plaintiff further alleged that the Defendant are also misrepresenting themselves as the successor in interest of the Plaintiff. In light of the above arguments and supplementing evidence, the court held that the Plaintiff has established a strong prima-facie case in its favor.

A Trade Mark Applicant cannot be made to suffer owing to clerical errors of the Opponent.

Case: Laans Portfolios Pvt Ltd vs The Registrar Of Trade Marks on 14 December, 2022 (Delhi High Court)

The Appellant sought the Respondent’s impugned order, rejecting its trademark application, to be set aside. The above application was deemed abandoned by the Respondent on the ground that the Appellant has not filed a counter statement against a notice of opposition, however, the Appellant argued that it has filed one. Upon the perusal of facts it was realized that the Opponent had filed identical notices of oppositions and the Appellant had opposed only one of these notices and not both. Considering that both the notices were identical, the court held that filing one counter statement against a notice of opposition is akin to a similar wrt to the other one. The court further held that the Appellant cannot be made to suffer for duplicity committed by the Opponent and thus set aside the order Passed by the Respondent.

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Delhi High Court grants an interim protection to Whitehat Jr., restricting the Defendant from using ‘Whitehat Sr.’

Case: Whitehat Education Technology Private Limited v. Vinay Kumar Singh on December 12, 2022 (Delhi High Court)

Delhi High Court passed an interim injunction restricting the Defendant from using deceptively similar mark ‘Whitehat Sr.’ The court held that prima facie, the competing marks ‘Whitehat Sr.’ and ‘Whitehat Jr’ are similar and replacing the suffix ‘Jr’ with ‘Sr’ will not amount as a material difference between the marks.

Other Developments

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 International Development

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