Copyright COVID-19 Design Patent Trademark

SpicyIP Weekly Review (January 17- January 22)


After a week full of interesting IP developments and some very interesting orders (!), here are our summaries for our blog posts, 15 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!

 

Highlights of the Week

 

Examining Oppositions: Time for a Deeper Look

Recently a monograph on patent oppositions was published by HNLU, Raipur and was presented to

the DPIIT with suggestions on streamlining patent opposition process and enabling ease of doing business in India. In a hard hitting guest post, Sandeep K Rathod, critiques key aspects of the report.  Aside from issues around methodology and scope,  he points out that the comparative assessment by the report was undertaken by comparing the practices of India with that of developed countries, highlighting that such a comparison is not a ‘like-to-like’ one.  On the part dealing with oppositions and procedural delays, Sandeep highlights how only a miniscule proportion of total applications are met with pre-grant oppositions and argues to instead investigate on ways to effectively process the larger proportion of pending applications.

 

Welcome Clarification?: Police Commissionerate, Jaipur issues Circular on Section 52(1)(za) of Copyright Act

Wedding bells can now ring without copyright worry in Jaipur, as police circular clarifies empty copyright threats at weddings won’t be accepted! Read SpicyIP intern Gaurangi‘s post on this development.

 

 

Other Posts

 

COVID-19 Vaccine Patent Infringement? The Battle Between Moderna and Pfizer/BioNTech Continues

The litigation surrounding mRNA patent thickens in the USA as Pfizer/ BioNTech files defence and counterclaims against the patent infringement allegations made by Moderna. Aparajita discusses the key arguments made by Pfizer/ BioNTech in her piece and raises question on enforceability of Moderna’s patents in light of its 2020 patent pledge. This post was originally published in Bill of Health, the blog of Petrie-Flom Center at Harvard Law School.

 

Kerala High Court on Publishing Judgments and Right to be Forgotten: Some Points to Ponder Upon

Image from Ken Whytock, here

Kerala High Court’s recent ruling on the “right to be forgotten” (RTBF) declares that publishing/reporting judgments is part of freedom of expression. Differentiating the right to privacy and the right to anonymity, the court held that a tussle between RTBF and public interest needs to be settled mainly through legislative action and, in some cases, by Courts using a balancing exercise. Underscoring this observation of the Court, Lokesh highlights some key points emphasizing the role played by the prevailing political context and popular political consciousness in the debate between public interest and individualistic rights like right to be forgotten.

 

Division Bench, Delhi High Court reiterates that one registered proprietor can sue another registered proprietor for using allegedly deceptive marks

Case: Corza International And Ors vs Future Bath Products Pvt Ltd And Anr. on 12 January, 2023 (Delhi High Court)

Division bench of Delhi High Court dismissed an appeal against an interim injunction order by the Single judge bench. The bench found merit in the Respondent’s reason to institute the suit, by relying on the Appellant’s Facebook post wherein it was stated that the Appellants will be expanding their business in the Respondent’s class of goods. Thus, the court found the Appellant’s arguments about the competing goods being dissimilar and different places of operation of both parties to be untenable. The bench also relied on Raj Kumar Prasad & Anr. Vs. Abbott Healthcare (P) Ltd. (DB order) to reiterate that one registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity between the competing marks (para. 7).

Delhi High Court sets aside the cryptic order passed by the Respondent, directs to consider the matter afresh

Case: Alfred Von Schukmann vs The Controller General Of Patent, Designs and Trademarks and Ors.  on 12 January, 2023 (Delhi High Court)

Delhi High Court accepted the appeal and directed the CGPDTM to consider the matter afresh and pass a reasoned order. The Appellant had alleged that despite filing detailed written submissions addressing the objection against the patentability of the invention under Section 2(1)(j) as raised in the examination report, the Respondent issued a cryptic order rejecting the patent application. The court prima facie examined the order and held that the impugned order has been passed without going into the explanation offered on behalf of the Appellant and simply runs to a conclusion that the subject invention lacks inventive steps. In light of the above, the court directed the Respondent to place the matter before any other officer than the one who had passed the impugned order.

Delhi High Court highlights the need for legislative policy to address the raising cases of copyright infringements by rogue websites.

Case: Star India Private Limited. & Anr vs Live4Wap.Click & Ors on 11 January, 2023 (Delhi High Court)

In a matter seeking injunctions against the alleged rogue websites, Delhi High Court passed an ex-

parte interim injunction and notably remarked- “This Court finds itself inundated with such suits, which keep cropping up every now and then. It may be useful for the Legislature to formulate some kind of a policy by which such disputes can avoid being taking up the time of the courts.”

Manufacturing counterfeit COVID-19 vaccines against public order, detention under National Security Act upheld by Allahabad High Court.

Case: Lakshya Java vs Superintendent District Jail Varanasi on 13 January, 2023 (Allahabad High Court)

Allahabad High Court dismissed a writ filed by the Petitioner who was detained under Section 3(2) of the National Security Act for manufacturing counterfeit COVID-19 vaccines, testing kits and Remdesivir. Under Section 3(2) of the NSA, 1980, an order of detention can be passed to prevent a person from acting in any manner prejudicial to the security of the State or to the maintenance of public order. The court held the alleged actions of the Petitioner to be against the public order in para number 29 :-

“ The detention order shows that fake drugs/injections were manufactured at Varanasi in order to earn undue profit and in turn, said injections/vaccines and other articles were sold in Delhi and other States.  (….) On the one hand, the drug manufacturer, supplier, and distributor were tirelessly performing their respective duties so that the country may come out of such great health crisis and on the other hand, some people were indulging in blackmarketing of Remedesivir and even using fake Remedesivir and vaccines. In such time, it was incumbent upon the State machinery to maintain ‘public order’”.

Novartis patent set aside on procedural grounds by Delhi High Court.

Case: Natco Pharma Limited vs Assistant Controller Of Patents & Designs on 12 January, 2023 (Delhi High Court)

The Delhi High Court allowed the writ and set aside the impugned order, granting a patent to Novartis on pharmaceutical combinations of “an Angiotensin Receptor Antagonist and an NEP Inhibitor”. The Petitioner had argued that the Respondent considered amended claims of Novartis and conducted a subsequent hearing, however, did not informed the Petitioner (who has filed a pre-grant opposition against the above application) of the same. Therefore, it was argued, that the Respondent has violated the principles of natural justice. Finding merit in the arguments of the Petitioner, the court directed the Respondent to consider the matter afresh from the point where it defaulted in issuing the notice to the Petitioner. However, the order has been stayed by a Division Bench.

Delhi High Court clarifies that difference in brand name cannot be a defense against prior publication of the suit design.   

Case: Novamax Industries Llp vs Prem Appliances & Anr. on 16 January, 2023 (Delhi High Court)

In a case concerning infringement of a design of air coolers, the Delhi High Court found prior publication of the suit design as a valid defence by the Defendant and hence dismissed the plea of design infringement.  The Defendant argued that the suit design was published prior to the date of registration under a different trade name. On this the court observed that “ The brand name of the cooler is, in fact, really irrelevant. What has to be seen is whether the coolers bearing the suit design were available online prior to the date of application, by the plaintiff, for registration of the design. Whether the design was being sold under the brand ―ZEPHYR or the brand ―MIST, or, for that matter, any other brand, makes no difference to the controversy.”

Delhi High Court holds that “unreasoned decisions cannot sustain the scrutiny of law”, sets aside the order passed by the Respondent.

Case: Kabushiki Kaisha Toshiba vs Asstt. Controller Of Patents And Designs on 10 January, 2023 (Delhi High Court)

Another case dealing with unreasoned orders from the IPO, Delhi High Court allowed the appeal asked the Controller to de novo its decision for registration of a process patent filed by the Plaintiff. Asserting the need of reason in an order, the court stated “The impugned decision is completely unreasoned. Such a decision cannot sustain the scrutiny of law. Reasons, it is trite, are the life and soul of every judicial or quasi-judicial decision. Absent reasons, the Court is unaware as to why the learned Assistant Controller deemed it necessary to reject the application of the appellant.”

 Delhi High Court rejects the review petition, reiterates sharing concept in image form cannot be regarded as prior publication as it is not a depiction of the design in a tangible form.

Case: Novateur Electrical & Digital Systems Pvt. Ltd. vs V-Guard Industries Ltd on 17 January, 2023 (Delhi High Court)

A review petition was filed by the plaintiff, challenging the impugned judgement for being  contrary to Reckitt Benckiser India Ltd vs Wyeth Ltd. In the impugned judgement the court had determined that forwarding the concerned concept in image form to the Defendant cannot be regarded as prior publication as the image was not a depiction of the design in a tangible form. The review Petitioner argued that in Reckitt Benckiser case, a full bench of the court adopted a broader approach to interpret “tangible form” which was binding on the single judge bench.  The court however, ruled that the review Petitioner’s interpretation of Reckitt Benckiser case will not apply in the present matter as under para 19 the full bench has held that (i) the mere ability to replicate, convert and give a physical shape to the design would not suffice to constitute a “tangible form” and (ii) “the design should not be a factum on paper/document alone”. On the basis of this understanding the court held:-

A computer image is merely an idea of what the design should look like. It is not even a prototype, or a photograph of a prototype. Reckitt Benckiser, in my view, clearly forecloses such a concept as being regarded as a design, so as to render the mere communication of the computer image, by one person to the other by e-mail, as “prior publication” within the meaning of Section 4(b) of the Designs Act.”

No provision for appeal in Order XLIII Rule 1 against an order rejecting an application under Order VII Rule 11 CPC, clarifies Delhi High Court.

Case: Bhushan Oil And Fats Pvt. Ltd. vs Mother Dairy Fruit And Vegetables Pvt. Ltd on 12 January, 2023 (Delhi High Court)

An appeal was filed before a division bench of Delhi High Court against the impugned order that had rejected the Appellant’s application under Order VII Rule 11 CPC. However the respondent argued that the present appeal is not maintainable under the provisions of the CPC. The court examined Order XLIII rule 1 and held that no provision of an appeal against the rejection of an Application filed under Order VII Rule 11 is envisaged under the code and agreed with the Respondent that the present appeal was not maintainable.

Delhi High Court grants an ex-parte interim injunction to GSK, holding ‘GT-BACT’ and ‘T-BACT’ to be prima facie similar.  

Case: Glaxosmithkline Pharmaceuticals Limited v. Vimnat Pharmaceuticals on 18 January, 2023 (Delhi High Court)

Delhi High Court passed an ex-parte interim injunction, restricting the Defendant from manufacturing and selling drugs bearing the name ‘GT-BACT’. The court found the impugned mark prima facie similar to the Plaintiff’s registered mark ‘T-BACT’.

Delhi High Court clarifies that mandated time of 15 days to submit written submission is necessary  under Rule 28(7) of Patent Rules. 

Case: Impact Selector International LLC vs Controller Of Patents on 17 January, 2023 (Delhi High Court)

Allowing an appeal against the Respondent’s impugned order, the Delhi High Court directed the respondent to consider the matter afresh. The court agreed with the Appellant’s contention that the impugned order is cryptic and incomprehensible and also rebuked the respondent for not granting the mandated time of 15 days to the Appellant, under Rule 28(7) of the Patent Rules, to file the written statement.

Delhi High Court refused to grant interim injunction to KRBL for alleged infringement of ‘Taj Mahal’ mark, allowed Vikram Roller Flour Mills to uss similar mark ‘Taj Mahal’ for dalia.

Case: Krbl Limited vs Vikram Roller Flour Mills Limited on 19 January, 2023 (Delhi High Court)

Delhi High Court refused to grant an interim relief to the Plaintiff, holding that the Plaintiff was not able to establish a prima facie case in its favor. The court assessed the following factors- 1) Registration of both the competing ‘Taj Mahal’ marks; 2) Consent order passed by the court earlier in a connected suit; 3) Difference between overall trade dress; 4) Well known Status of the Plaintiff’s Mark. Observations in Para 17 (holding that registration of a mark will assure protection, regardless its use by the party), and Para 20 (keeping a check on the benefits of a well-known tag) stand out here.

Litigation pertaining to ‘Ismail Building’ trademark settled.

Case: Marie Gold Realtors Pvt. Ltd. v. Banijay Asia and Anr. on 20 January, 2023 (Delhi High Court)

The suit pertained to the Defendant’s use of the ‘Ismail Building Photo’ device mark.  The Plaintiff’s case was that the ‘Ismail Building’, which is 116 years old, has right to publicity and has been registered as a mark since 2020. This could have been an opportunity for the court to discuss application of trademark law on buildings, however, the matter was eventually settled out of court.

Calcutta High Court clarifies that a claimed invention cannot be ruled as obvious when individual parts of the claim taken separately are known. 

Case: Groz-Beckert Kg vs Union Of India & Ors on 18 January, 2023 (Calcutta High Court)

Calcutta High Court set aside the order of the Controller for dissecting the patent application into different elements and consequently finding the invention as not obvious. The court opined in para 7 that “ in determining inventive steps, the invention should be considered as a whole. In other words, it is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious. The contention that an invention is obvious in relation to a particular item must be treated with care and caution. In doing so, the whole picture presented should be taken into consideration and not a partial one.”

Delhi High Court refuses to grant ex-parte interim injunction considering that the Defendant also enjoys a registration on the allegedly similar mark . 

Case: Mr. Ashok Kumar Gupta & Anr vs Ms. Sunita Devi on 16 January, 2023 (Delhi High Court)

Considering that the Defendant also enjoys a registration on the allegedly similar mark, the court refused to grant an ex-parte interim injunction. Furthermore, the court directed the matter to be listed next before the bench dealing with rectification application filed by the Plaintiff against the Defendant’s trademark.

 

Other Developments

International Development

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