SpicyIP Weekly Review (January 10- January 16)

After another busy week here at SpicyIP, we bring out the quick summaries of the 6 blogposts that were put up, along with 12 case summaries and national and international IP developments for you. 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

Bill to Decriminalise IP Offences Misses the Mark and Dilutes Significant Provisions

Discussing the proposed amendments to the IP laws under the Jan Vishwas (Amendment of Provisions) Bill, 2022, Aparajita highlights the bits where the amendment falters. She argues that the proposed amendments to the Copyright Act i.e. removal of Section 68 will not achieve much and instead the amendment should have focused on differentiating between different acts of copyright infringement, limiting criminalisation only to mass piracy and making prior judicial cognisance as a pre-condition to initiate criminal investigation. On the proposed amendments to the Patent Act, inter alia  she argues against dilution of the criminal penalties for non- compliance with patent working requirements, highlighting the importance of the “working” requirements within the patent regime of the country.

Indian Government Denies Access To Covid 19 Vaccine Collaboration Agreements

In an ongoing litigation, the Delhi High Court will decide whether the government can refuse to disclose its collaboration agreements and investments in developing and procuring the COVID-19 vaccine, Covaxin. On this, Aparajita discussed the inherent public interest involved in accessing this information and argues how the disclosure of the COVID-19 vaccine license is a global norm and is followed by the US and the UK. Furthermore, she emphasized that the provision under which the government has refused to disclose the above information is not a blanket provision and as per a binding precedent, Navoz Mody v. Mumbai Port Trust, the government is obligated to provide the access to these licenses.

Other Posts

Prabhakar v. M/S. Saga Films: Madras High Court on Interim Injunction and Section 12A of Commercial Courts Act

Mathews discussed the order of the Madras High Court in V. Prabhakar v. M/s Saga Films. Highlighting the facts of the case and the order’s emphasis on the need to hold a pre-institution mediation under the Commercial Act, he discusses apposite remedy of granting an interim injunction, in a counterfactual situation where the petitioner would have convinced the court about the possible infringement.

The Buck Stops At Freedom Of Expression: Delhi High Court Clarifies The Situation On Disparagement In Case Of Generic Comparison 

Image from here

Delhi High Court in Zydus v. Dabur order concerning the allegation of disparagement of Zydus’s Glucon-D, via a TV commercial, deferred to creative freedom of a creator over the allegations of disparagement in cases of indirect generic comparisons between the competing products. Praharsh and SpicyIP intern Ananya, highlight the key elements of the order and discuss how the court has adopted an overall broader view this time, in comparison to the previous orders on similar issue.

SpicyIP Tidbit: IPO Cannot Introduce New Objections During a Hearing, holds Delhi High Court

In this tidbit, Praharsh highlighted the Delhi High Court’s order asserting the responsibility of the IPO to inform the Applicant of all the grounds of objections before the hearing. In this case, the IPO had introduced a fresh objection to the application under Section 3(f) during the hearing. The court found merit in the Appellant’s argument that introducing objections at the eleventh hour is against the principle of natural justice and directed the IPO to hold the hearing afresh, after informing the Appellant of all the grounds of objection in advance.

10th Mahamana Malviya National Moot Court Competition by Law School, Banaras Hindu University [Varanasi, March 24-26, 2023]

We informed our readers of the 10th Mahamana Malaviya National Moot Court Competition concerning a moot problem on patents law and incremental innovations. The competition will be conducted from 24th March- 26th March 2023 and the last date to register for the competition is January 20, 2023.


Case Summaries

When identical issues are sub judice, the petitioner cannot approach other court for adjudication, holds Delhi High Court.

Case: V-Guard Industries Ltd vs Mr Rakesh Malhotra & Ors on 9 January, 2023 (Delhi High Court)

The Defendant filed an application under Section 10 CPC, seeking a stay on the litigation before the Delhi High Court on the grounds that a matter on similar issues was awaiting adjudication before the Kerala High Court. After assessing the issues raised by the parties before both the courts, the High court held that “the intent behind Section 10 of the CPC is to prevent Courts of concurrent jurisdiction from simultaneously deciding suits between the same parties, involving directly and substantially the same cause of action” and thus, stayed the suit on the ground that the identical issues are sub judice before the High Court of Kerala.

Communication of conceptual design to the public will not mean prior publication of the design, clarifies Delhi High Court

Case: Novateur Electrical & Digital Systems Pvt. Ltd. vs V-Guard Industries Ltd on 4 January, 2023 (Delhi High Court)

Delhi High Court, while passing an injunction in favour of the plaintiff, clarified that a concept is different from a design and in order to seek defense of prior publication, it needs to be shown that the design was communicated to the public. The court further held that mere communication of the concept of a design does not constitute prior publication.

Holding that the procedures prescribed under Section 115 (4) of the Trademarks Act are essential for conducting a valid search and seizure, P&H High Court quashes an FIR bereft of the above formalities. 

Case: Ashok Kumar vs State Of Punjab And Another on 10 January, 2023 (Punjab and Haryana)

On the powers of a police officer to take cognizance of certain offences and conduct search and seizure in a premises, Punjab and Haryana High Court held that the procedures under Section 115 (4) cannot be dispensed with. The court reiterated that the before the search and seizure, the police officer has to obtain the opinion of the Registrar on facts involved in the offence relating to trade mark and that such search and seizure cannot be undertaken by an officer below the rank of DSP. Since the search and seizure conducted in the present case was bereft these procedural formalities, the court quashed the concerned FIR filed under Section 103 and 104 of the Trademarks Act.

Holding “Andamen” word mark and “And Men” device to the dissimilar, the Delhi High Court directed Registry to process the registration of the “Andamen” mark.

Case: Siddharth Suri vs Registrar Of Trade Marks on 10 January, 2023 (Delhi High Court)

Delhi High Court allowed an appeal against the order of the respondent and directed it to process the application for registration of the mark “Andamen” under class 18. The respondent had rejected the mark on the basis of its similarity with a device bearing the words “And Men” and during the hearing it was also argued by the respondent that the impugned mark serves as geographical origin of the goods. The court however disagreed with the above arguments stating that the mark ‘And Men’ is a device which is prima facie dissimilar and the Appellant was able to secure registrations in other classes, despite ‘And Men’ device being cited as a similar mark. On the issue of impugned mark serving as geographical origin, the court relied on the Manual of Trademarks Practice and Procedure to hold that registration of a name of place is permissible if the place does not have a reputation or association with geographical origin.

Delhi High Court holds that the contempt proceeding against the Defendant for filing a dubious IPAB decision is separate from the infringement case.

Case: Ab Mauri India Private Limited V. Vicky Aggarwal & Ors.  On 10 January, 2023 (Delhi High Court)

In a followup to the case covered by Gaurangi here, the Delhi High Court modified the undertaking given by the Defendant and allowed it to use the mark ‘Tower’ in respect of Monosodium Glutamate, Citric Acid, Tartaric Acid, Camphor and Hexamine tablets in Class 1 or green raisins in Class 29. The court separated the contempt proceeding initiated against the defendant from the present matter and relied on para 15 of the plaint and a letter dated March 2013 from the Defendant to the Plaintiff  to infer that the Plaintiff was aware of the Defendant’s use of the impugned mark with regard to Class 1 and Class 29 and did not dispute its right for such use.

Delhi High Court reiterates that disputes relating to rights in personam, arising from rights in rem are arbitrable.

Case: M/S Liberty Footwear Company vs M/S Liberty International on 10 January, 2023 (Delhi High Court)

The Delhi High Court allowed the application filed by the defendant under Section 8 of the Arbitration Act concerning a trademark dispute on Plaintiff’s ‘LIBERTY’ mark infringement. The Court propounded a fourfold test for determining when the subject-matter of a dispute in an arbitration agreement is not arbitrable. It was observed that only when the Court is certain that no valid arbitration agreement exists or the disputes/subject-matter are not arbitrable, the application under Section 8 would be rejected.

Delhi High Court holds that parties cannot claim benefit of Rule 45 of Trademark Rules for being confusing.

Cases: M/S V-Guard Industries Ltd vs The Registrar Of Trademarks & Anr and M/S V-Guard Industries Ltd. vs M/S Livguard Energy Technologies  on 6 January, 2023 (Delhi High Court)

The Delhi High Court set aside the order passed by the Deputy Registrar of Trademarks to treat the opposition filed by the appellant, to the application of Respondent 2 seeking registration of the “LIVGUARD ZING” mark, as having been abandoned. Though the court identified that the appellant cannot seek benefit from the inherent ambiguity in Rule 45 of the Trade Mark Rules, and its use of confusing words “leave with the registrar”, it deferred to the Appellant’s notice of application and its attempt to “leave” the evidence within the stipulated time to overlook the delay in filing the evidence in favor of the opposition.

Delhi High Court clarifies that Section 124 of the Trademarks Act confers an additional benefit over those mentioned under Section 57.
Case: Anubhav Jain vs Satish Kumar Jain & Anr. on 9 January, 2023 (Delhi High Court)

In a case concerning interpretation of Section 124 and its interplay with Section 57, the Delhi High Court clarified that Section 124 requires the following 4 conditions to be fulfilled for the Trial Court to raise an issue regarding validity of the plaintiff’s trademark and adjourn the case to enable the defendant to move the High Court for rectification of the register:-

(i)In the first instance, there must be a suit by a plaintiff against a defendant alleging infringement.

(ii)The defendant in its defense must, raise a plea of invalidity of the Plaintiff’s mark.

(iii)At that time, no proceedings for rectification should be pending.

(iv)The learned Trial Court hearing the suit, should be satisfied, prima facie, that the plea of invalidity of the plaintiff’s trademark, as raised by the defendant, is tenable.

Furthermore, on the Plaintiff’s argument that resorting to Section 124 abrogates the Defendant’s right for rectification under Section 57, the court clarified that the scheme under the Act is to the contrary and stated that the right to seek rectification as a defense in an infringement suit is an additional and independent right to the one enshrined in Section 57.

Delhi High Court clarifies that contention of acquisition of secondary meaning merits proof of long and continuous use by the claimant, without a competitor attempting to use it. 

Case: Capital Food Private Limited, vs Radiant Indus Chem Pvt. Ltd on 11 January, 2023 (Delhi High Court)

The case concerned use of registered mark as a description and acquired distinctiveness of descriptive mark. Plaintiff approached the court seeking injunction against the Defendant’s use of ‘Schezwan Chutney’. The Defendant argued that the mark is descriptive in nature and the Defendant is using it as a description for its product. On acquired distinctiveness, the court clarified that commercial success like high sales or expenses incurred in advertisement does not in itself guarantee a presumption of secondary meaning for a descriptive mark. Contention of acquisition of secondary meaning merits proof of long and continuous use by the claimant, without a competitor attempting to use it. The court further said that apart from the fact that the Defendant was able to establish that the registration of the above mark is challenged not only by them, but also third parties, once the Court prima facie finds that the mark is descriptive of the quality and intended purpose of the goods, the defendant would be entitled to seek protection against an action of infringement by placing reliance on  Section 30(2)(a) and Section 35 of the Act. 

Defendant cannot amend the ‘Khadi’ mark and claim defense of being registered under the PMEGP scheme, rules Delhi High Court

Case: Khadi & Village Industries Commission vs Mukul Chawla And Anr on 11 January, 2023 (Delhi High Court)

Delhi High Court passed an order for interim injunction, restricting the Defendant from using deceptively similar ‘Khadi Roots’ and ‘Mr. Khadi’ marks. The Defendant had argued that they were permitted to use the marks owing to a certificate issued under PMEGP scheme. However, the court clarified that under the above scheme, the ‘Khadi’ Mark is permitted to be used as it is and not without any modifications.

 Delhi High Court clarifies the mandatory procedures for a seeking a summary judgement.

Case: Elofic Industries Limited And Anr vs Mobis India Limited & Anr on 10 January, 2023 (Delhi High Court)

A Division Bench of the Delhi High Court clarified that a summary judgement can be rendered by a court in commercial disputes if a party moves an application for it, clearly stating its intention for a summary judgement along with material facts, documentary evidence and the reason why the Respondent has no real prospect to defend the claim. Furthermore, the Respondent is to be afforded 30 days before the hearing on the application is taken up by the court. Since none of the above steps were followed in the present case, the court set aside the impugned order and the matter was remanded back to the Single Judge bench for re-consideration.

Post the overall comparison of the competing marks, the court may compare the dominant parts of the competing marks, clarifies Delhi High Court.

Case: Subway IP LLC vs Infinity Food and Ors on 12 January 2023, (Delhi High Court)

Comparing the similarity between  ‘SUBWAY’ and ‘SUBERB’, the Delhi High Court compared the syllables of the marks to reach its conclusion. While quoting the anti-dissection rule, it clarified that when it is not apparent that the Defendant’s mark infringes the Plaintiff’s mark after undertaking an overall comparison, the court may examine whether the Defendant’s mark infringes the dominant part of the Plaintiff’s mark. Breaking the concerning marks into ‘SUB’ ‘WAY’ and ‘SUB’ ‘ERB’, the court ruled that ‘SUB’ is publici juris and ‘WAY’ and ‘ERB’ are different and not deceptively similar.

Other Developments

International Developments

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