Opportunities Patent Plant Variety Protection Publication Trademark

SpicyIP Weekly Review (November 29- December 5)


We bring you a number of IP updates this week!  This time we have quick summaries of 2 blogposts and 2 opportunities, followed by case summaries of 30 court orders and decisions and a few 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!)

 

Highlights  of the Week

SpicyIP Tidbit: IPD Updates in Delhi, Calcutta and Madras High Courts.

We discussed the recent updates in Delhi, Madras and Calcutta High Courts, regarding adjudication of  intellectual property right matters. Highlighting the change in  roster of the Intellectual Property Division (IPD), we also discussed the progress, with regard to similar arrangements, in Calcutta and Madras High Courts. As an additional update, Delhi High Court has put out a call for Law Researchers (IPD) on a contractual basis for 1 year, which can further be extended to 3 years. The last date for applying for the position is December 31, 2022.

 

Image from here

Never Gonna Give You Up? Discussing the Recent Patent Application Restorations by Delhi and Madras High Courts.

We discussed the recent orders from Delhi and Madras High Court regarding restoration of ‘deemed abandoned’ patent applications. These orders were passed by the high courts after considering that the applicants had the intention to proceed with their respective patent applications, however owing to the negligence of their patent agents, the applications were deemed abandoned.

Other Posts

[Sponsored] PatSeer’s IP Symposium ‘PatSight’ [Bangalore, December 9]

We informed our readers about PatSeer’s one day IP symposium, which will be held in Bangalore on December 9th. The symposium aims to highlight the best innovative method in IP research and analysis via case studies and panel discussions and is free to attend.

Call for Submissions- The IP Press Law Review: Volume I Issue 2 [Submit by Jan 2]

We informed our readers that the IP Press Law Review is calling for submissions for the second issue of their first Volume. The last date to send the entries is January 2, 2023.

 

 

Case Summaries

Delhi High Court decreed the suit in favor of the Plaintiff and inter alia directed the Defendant to assign its trademark ‘Saptrishi Sandhi Sudha India’ in favor of the Plaintiff, as undertaken by it in its affidavit. The Defendant initially denied selling or manufacturing product bearing the mark but later was found to be making false statements before the court.

Delhi High Court decreed the suit in favor of the Plaintiff granting it a permanent injunction and restrained the Defendant from using recycled bottles bearing the Plaintiff’s marks for its products. The Defendant had argued that it has not used any bottles bearing the Plaintiff’s mark intentionally and instances of the Defendant’s products bearing the Plaintiff’s mark are inadvertent errors, committed at the time of procuring second hand bottles. The Defendant assured that it will be more cautious in the future to ensure such instances do not recur. The Court agreed that recycling of bottles in liquor trade is a usual phenomenon and though using recycled bottles bearing marks of other manufacturers is not permissible, there have been multiple instances where such cases have come up before the court.

The Plaintiff filed the present suit against the Defendant for uploading an audio book titled ‘Mossad: Greatest Mission of the Israeli Secret Service’ on its online platform. The Defendant claimed it to be an inadvertent mistake on its part and informed the court that the book has been removed from the platform. The court directed the Defendant to ensure that the audio book shall not be uploaded unlicensed till the subsistence of the copyright or finalization of the suit, whichever is earlier. Both the parties also agreed to amicably resolve the dispute and in light thereof the court referred them to mediation.

Delhi High Court decreed the suit in favor of the Plaintiff by passing a summary judgement and granted it a permanent injunction  against the Defendant’s use of identical mark ‘Dream 11’. The Defendant did not appear before the court, nor did it file any written submissions thereby causing the matter to proceed ex parte.

·      Make My Trip (India) Private Ltd. vs Owners Of HTTPS://WWW.MAKEMYTRIPMOOD.COM & Ors. on 25 November, 2022 (Delhi High Court)

Delhi High Court decreed the suit in favor of the Plaintiff by passing a summary judgement and granted it a permanent injunction  against the Defendant’s use of the domain name similar to the Plainitff’s mark ‘Make my trip’. The Defendant did not appear before the court, nor did it file any written submissions thereby causing the matter to proceed ex parte.

Delhi High Court decreed the suit in favor of the Plaintiff and directed the Defendant no. 3 (Vodafone) to provide KYC details of the people who registered domain names www.tylengene.com and www.tylliva.com, displaying the contents similar to that of the Plaintiff’s website.

The Plaintiff has proprietorship over marks ‘Setaret’ and ‘Sitared’.  ‘Setaret’ ,which though is registered, has not been used by the Plaintiff and ‘Sitared’ which is being used by the Plaintiff and is pending consideration for registration. The Plaintiff alleged that the Defendant’s marks ‘Sitara-D’ is similar to its registered mark ‘Setaret’ and thus sought injunction against the Defendant’s use of the same. The Court rejected the Plaintiff’s application holding that the marks Sitared and Sitara-D when compared as a whole are not similar. The court also opined that the Plaintiff’s registered mark was registered 20 years ago and has not been used till date that thus the Plaintiff cannot claim interim relief only on this registration’s basis.

Delhi District Court granted a permanent injunction, restricting the Defendant from using deceptively similar mark ‘ejugantar’ and domain name ‘ejugantar.com’. The Defendant had filed a written submission before the court arguing that it was the prior adopter of the mark, however did not appear before the court.

Delhi District Court granted  a permanent injunction, restricting the Defendant from using identical word mark ‘Nike’ and ‘Swoosh’ logo. The Defendant had appeared once but thereafter stopped appearing, causing the matter to proceed ex-parte.

Delhi District Court granted a permanent injunction, restricting the Defendant from using identical mark Levi’s” and “Levi’s (House- mark)”, “Two Horse logo” & “Arcuate Stitching Design”. No written statement was filed by the Defendant nor did it appear before the court, causing the matter to proceed ex-parte.

A division bench of Delhi High Court set aside the order passed by the commercial court which had allowed the application filed by the Defendant and had returned the plaint on ground of lack of jurisdiction. The Plaintiff had claimed jurisdiction of courts in Delhi, inter alia, on basis of its numerous stores operating in Delhi, availability of its goods through its website to customers in Delhi, imminent apprehension that the Defendant will launch/ manufacture infringing product in Delhi, and that the Defendant is already supplying counterfeit products in Delhi. The Commercial Court had passed the impugned order and returned the plaint on lack of its jurisdiction by stating that the Plaintiff was not able to substantiate on the above claims. The division bench, however, disagreed with the above reasoning and relying on Exphar Sa & Anr vs Eupharma Laboratories Ltd. & Anr and M/S Allied Blenders And Distillers vs Prag Distillery Pvt Ltd & Anr  reiterated that an in-depth assessment of the averments made in the plaint cannot take place at the interim stage and can only be done during the course of the trial. The court further reiterated that at this stage the court must take the allegations contained in the plaint to be correct, and thus, passed the present appeal.

Karnataka High Court set aside an order passed by the District Court and held that a plaint seeking remedies against passing off can be amended to include remedy against infringement where cause of action is the same. The Plaintiff had filed the suit pending registration of its mark ‘Milaap’ seeking remedy against passing off. However, upon being granted the registration, it sought to amend the plaint and seek remedy for infringement as well. The District Court rejected the request and held that agreeing to it will relate back to the date of filing of the suit and therefore, if amendment is allowed, it would cause serious prejudice to the interest of the defendants. The High Court disagreed with the above reasoning and held “If the cause of action for infringement and passing off actions are substantially identical and same in law and both the reliefs are virtually based on the same fundamental idea and if plaintiffs intend to incorporate the relief relating to infringement of trademark, that would not fundamentally change the character of the suit and it would only be in the nature of alternative relief.”

Delhi High Court declared ITC’s ‘Bukhara’ to be a well-known trademark. The court held that the decisions of the US courts on ‘Bukhara’ not being a well-known mark will not apply in India, since the mark originated in India and enjoys substantial goodwill and reputation not only among Indians but also foreigners who travel to India and carry back the said reputation.

Delhi High Court passed a summary judgement, granting a permanent injunction against the Defendants’ exhibition of the India tour of New Zealand, 2020. The court relied on UTV Software Communications Ltd. & Ors  case to determine if the Defendants are rogue websites and after a positive determination passed the present order. No appearance was made by the Defendants in the present case.

Delhi District Court passed a permanent injunction against the Defendants, restricting them from using identical mark ‘India Gate’ and domain name ‘Indiagatericeltd.com’. The Defendants did not appear before the court and the matter proceeded ex-parte.

Delhi High Court passed a summary judgement, granting a permanent injunction against the Defendants’ exhibition of the Plaintiff’s work ‘Baaghi 3’. The court relied on UTV Software Communications Ltd. & Ors  case to determine if the Defendants are rogue websites and after a positive determination passed the present order. No appearance was made by the Defendants in the present case.

Delhi High Court refused to grant  interim relief against the sale of medicines bearing the marks

image from here

‘Nutriepic’ and medicine containing dienogest under the mark ‘Uttercare’. It seems like there are two issues involved in this litigation- first, regarding use of confidential information and second, concerning passing off. The Plaintiff had alleged that the Defendants (who were its ex-employees) have launched a competing product ‘Uttercare’ which is made using the Plaintiff’s confidential information for its products ‘Trimacare’. It had also alleged that the Defendant is passing off its product bearing the mark ‘Uttercare’ which is similar to the Plaintiff’s product ’Layercare’  and bears the formative mark ‘Care’ used by the Plaintiff. The Defendant argued that the Plaintiff has approached the court with ‘unclean’ hands as it has suppressed the information about the examination report issued by the Patents Office which objected its application for ‘Trimacare’ and has also suppressed information about the examination report issued by Trademarks Registry against its ’Layercare’ mark. It further argued that the Plaintiff cannot claim confidentiality as both its and the Defendant’s products are made using publici juris.  The court inter alia agreed with the arguments presented by the Defendant and passed the present order.

The Plaintiff had filed a rectification petition seeking cancellation of the Defendant’s mark “E!”. The Defendant, filed an application opposing the above petition and argued that the Plaintiff cannot seek rectification of its mark as it was aware of its registration during  a previous suit. Thus, the Defendant argued, that the present rectification petition can only be filed when a preliminary issue regarding invalidity of the Defendant’s mark is framed in the previous suit. The court, rejecting the Defendant’s opposition to the rectification petition, ruled that the previous suit filed by the Petitioner pertained to its mark “E Now” and the Defendant’s use of similar mark ‘E! Now’ and “E! News Now’ and merely because the Defendant had argued about the registration of the mark ‘E!’ in that suit, it will not increase the scope of that suit.

Delhi High Court passed an ex-parte interim injunction order, restraining use of similar mark ‘Apna’ by the Defendant. The Plaintiff has no registration over the mark but argued that it enjoys goodwill in the job search market and has invested substantially in promotion and development of its business. It argued that use of similar mark for similar services not only infringes its vested copyright but also causes confusion in the minds of the consumers. The court agreed with the Plaintiff and found a prima facie case to pass the ex-parte interim injunction order.

Delhi District court passed a summary judgement, granting a permanent injunction against the use of identical mark ‘Namaste India’. Plaintiff had alleged that Defendant’s use of an identical trademark not only infringes its registered trademark and copyright but also deceives consumer by passing off the Defendant’s goods as that of the Plaintiff. The Defendant filed a written statement, however, stopped appearing before the court thereafter. The court proceeded ex parte holding that the Defendant did not contest the matter after filing the written statement and passed the above order.

Delhi High Court passed an ex-parte interim injunction restraining the use of similar ‘Jindal’ formative marks. The Plaintiff has alleged that the Defendant is selling its products bearing similar marks ‘Jindal’ and ‘Jindal Rangoli’ and is thus not only infringing its registered trade marks but is likely to cause confusion amongst the public. After assessing the Plaintiff’s claims, the court held that the Plaintiff has made out a prima facie case in its favor, the balance of convenience also lies in its favor and irreparable harm will be caused to the Plaintiff if the ex-parte injunction is not granted.

Setting aside the order passed by the Commercial court, rejecting the Petitioner’s application to frame additional issues in the case, the Delhi High Court ruled that allegations of infringement of trademark, copyright and passing off are three separate causes of action and merit separate issues to be framed. Framing these separate issues, the High Court also acknowledged that the Petitioner has delayed in filing the application for additional issues and imposed Rs. 10,000 as costs on the counsel of the Petitioner.

Delhi District Court decreed the suit in favor of the Plaintiff and passed a permanent injunction restricting use of ‘Levi’s’ formative marks. The Plaintiff had alleged that the Defendants’ use of identical mark is infringing its registered trademarks, copyright and is also causing confusion in minds of the purchasing public. The Defendants did not appear before the court and matter proceeded ex-parte. Agreeing with the Plaintiff’s arguments, the court passed the present permanent injunction and also imposed costs of INR 50000 on Defendant no. 1 and INR 150000 on Defendant no. 2.

The Delhi High Court granted an interim injunction, restraining manufacture of products under a deceptively similar mark ‘Rallies’ to that of ‘Raleigh’ of the Plaintiff. The Defendant has furnished an undertaking that it shall not use the impugned mark and has sought permission of the court to clear its stock bearing the impugned mark in  next 18 months. Granting the Defendant time till November 15, 2023 the court passed the above order.

Delhi High Court directed the Registrar of Trademarks to transfer 5 rectification applications to it. The Present suit pertains with the Defendant’s use and registration of a deceptively similar mark ‘Burj Noida’. The court was informed that before institution of the present case, there are already 5 trademark rectification proceeding pending before the Trademark Registry.  Notably the court opined that “ if the Registrar has the power to transfer a matter to the High Court, surely the High Court also has the power to direct the transfer of such matters to itself, especially where all other connected petitions – including petitions for passing off and rectification petitions instituted by Jumeirah against Designarch – which are pending before the IPAB, already stood transferred to the High Court.”

The Delhi High Court granted  ex-parte interim injunction, restricting the release of the movie titled ‘Ajinomoto’, which is the registered trademark of the Plaintiff. Relying on a public interview of the director of the above film, Plaintiff has alleged that though the film is not released or its character is known, “it is blatantly clear that the storyline is conceived and fashioned metaphorically around the cooking ingredient which directly links to the Plaintiff. Considering the wide outreach of films, and the manner in which the story line is conceived, any negative portrayal is bound to severely prejudice Plaintiff’s reputation in the market in respect of its products.” In light of the above arguments, the court ruled that the Plaintiff has established a prima facie case, the balance of convenience lies in its favor and if the ex-parte interim injunction is not filed it shall suffer irreparable loss.

Delhi High Court permanently restrained the Defendant from registering any domain name which incorporates the Plaintiff’s registered marks ‘Adobe’ ‘ Photoshop’ ‘Spark’ and directed these domain names to be transferred to the Plaintiff. Furthermore, acknowledging that the Defendant is an habitual cyber-squatter, the court imposed costs of  INR 2,00,01,000.

Delhi High Court passed ex parte interim injunction, restricting the use of similar marks bearing registered  ‘Sadanand’, ‘Tadaakha’, And ‘Basant’ marks of the Plaintiff. The Plaintiff argued that in  2014, it had entered into a non- exclusive co- marketing agreements with defendant for marking and distribution of a variety of hybrid seeds, which had the condition that except in respect of the Cotton Hybrid Seeds it shall not sell any other hybrid seeds under the brand names permitted under this Agreement, however the agreement was terminated in November 2022. In October, 2022, the Plaintiff came to know that the Defendant was promoting and taking advance bookings for the Cotton Hybrid seeds bearing deceptively similar registered marks ‘Veda Sadanand Gold’, ‘Veda Tadaakha Gold’ and ‘Veda Basant Gold’. The Plaintiff argued that the defendant started using the impugned marks in relation to cotton hybrid seeds which did not belong to the Plaintiff and hence, were outside the permitted scope of the aforesaid marketing agreement. It also argued that the competing marks are similar and the product has a similar trade dress that can lead to confusion. Furthermore, it argued that the Defendant is the prior user of the mark and thus balance of convenience lies in its favor. Considering the aforesaid arguments, the court granted it the ex-parte interim injunction.

Delhi High Court passed an interim injunction restricting use of  marks ‘Snow-Kam’, ‘Big Conqueror Tubular Battery’ and ‘Big Warrior Tubular Battery’ which it prima facie found similar to registered marks ‘Su-Kam’, ‘BIG Conqueror Tubular Battery’ and ‘BIG Warrior Tubular Battery’. The Plaintiff alleged that the Defendant’s use of deceptively similar mark not only infringes its registered trademark but also causes confusion in minds of the consumers. Agreeing with the Plaintiff’s argument the court passed the above order.

The Income Tax Appellate Tribunal discussed whether subscription/ distribution revenue received by the assessee from ESPN India (its distributor of television channels in India) towards a grant of distribution right will amount as royalty or not. Looking at the arrangement between the parties, the tribunal ruled that the assessee had transferred broadcast reproduction right to ESPN India, and not any copyright. The subscription/ distribution revenue received by the assessee here was not royalty.

Other Developments

International Developments

 

Leave a Reply

Your email address will not be published. Required fields are marked *