After another busy week here at SpicyIP, here are the quick summaries of the 5 blogposts that were put up, along with 15 case summaries and other 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
The Copyright Quandary regarding the Delhi High Court Rules on Live-streaming of Court Proceedings
Recently Delhi High Court came up with ‘Live Streaming and Recording of Court Proceedings Rules’ which would be a positive step towards assuring better access to law and transparency. However, is all fine on the copyright front in this development? SpicyIP Intern Niyati Prabhu raises a few questions to ponder over.
Fallouts from India’s First Website Blocking Order Passed Against Stream Ripping
With India seeing its first dynamic injunction against stream ripping through a recent Delhi High Court
order, SpicyIP Intern Gaurangi Kapoor raises some questions around whether the order has appropriately dealt with the complexity that comes with the issuance of dynamic injunctions and mirroring websites.
Other Posts
Honesty as a Defense vis-à-vis Trademark Infringements: Principle or Provision?
Can “honest concurrent use” be used as a defense against a trademark infringement claim? Lokesh, highlighting its history, argues that honest concurrent use is a principle of trademark law and is not limited to a provision.
Delhi High Court Imposes Costs worth INR 2 Cr. for Disobeying Interim Injunction
Praharsh highlighted the order from Delhi High Court whereby the court imposed costs worth INR 2
Cr. on Triveni Interchem Pvt. Ltd for disobeying the Palbociclib interim injunction.
[Sponsored] UK IPO-INTA Brand Protection Strategies Conference, 2023 [February 24]
In a sponsored post, we announced that the UK Intellectual Property Office (UK IPO) and International Trademark Association (INTA) are jointly hosting a free-to-attend conference on brand protection strategies on February 24th, 2023 at the Imperial, New Delhi, with insights from government officials, academics, brand owners, and IP practitioners. Check out the post for more details.
Case Summaries
Madras High Court rules in favor of United India Exporters in the copyright infringement suit involving the assignment of the film “Veeram”
Case: M/S.United India Exporters vs M/S.Vijaya Productions on February 2, 2023 (Madras High Court)
The Madras High Court, in a case concerning contradictory assignment agreements for broadcasting
of the film ‘Veeram’, decreed the suit in favour of the Plaintiff since the defendant failed to prove that the assignment agreement produced by the Plaintiff was fabricated. On the issue of limitation, the Court decreed in favour of the Plaintiff stating that “every instance of infringement of a copyright will give rise to a continuing cause of action to the Plaintiff against the defendant if such right is violated”. While the Court passed the declaratory relief in favour of the Plaintiff for being the sole and exclusive copyright holder of the film for exploitation purposes it dismissed the relief to recover damages from the Defendant.
After the Supreme Court ruling in Toyota v. Prius, the Delhi High Court revisits law on transnational reputation
Case: Toyota Jidosha Kabushiki Kaisha vs Tech Square Engineering Pvt Ltd and Anr on 3 February, 2023 (Delhi High Court)
In a case concerning a rectification petition filed by the Petitioner against the respondent over its use of the registered trademark ‘ALPHARD’ under Class 9, 12 and 27, the Delhi High Court dismissed the petition and held that the transborder reputation of a mark cannot be a ground for rectification or passing off when the mark used by the Petitioner does not have any territorial reputation in India. The court further held that “mere international usage of the ‘ALPHARD’ trademark by the Petitioner company is not sufficient to prove spillover of its transnational reputation in India”.
Delhi High Court grants an interim injunction to the Plaintiff, despite non-use of the mark for 30 years.
Case: Foot Locker Retail, Inc vs Smt. Geeta Kewalani on 2 February, 2023 (Delhi High Court)
Delhi High Court relying on ‘Laxmikant V Patel v Chetanbhai Shah’ passed an interim injunction restraining the Defendant from using the mark “Foot Locker”. In this case, the Plaintiff, who is the proprietor of the mark “Footlockers” since 1988, has not used it for 30 years. Regardless, it sent a cease and desist to the defendants in 2022 who have a shop in Jaipur with a similar name and have registered the word mark in 2013. What stands out here is that the Court granted an injunction in favour of the Plaintiff based on earlier registration without considering the non-use of the mark by them.
Delhi High Court passes a strongly worded order against entities selling counterfeit products.
Case: Louis Vuitton Malletier vs Capital General Store & Ors. on 6 February, 2023 (Delhi High Court)
Delhi High Court directed the Defendant to pay rupees five lakhs to the famous French luxury brand, Louis Vuitton, within four weeks or be subjected to civil prison for a week, after holding him guilty of contempt of court for violating a restraining order by continuing to sell counterfeit products of the brand bearing the brand’s logo. The court came heavily on the Defendant and held that a person voluntarily selling counterfeit products should not be subjected to any sympathy when the person knowingly practices the act of copying and deception because such a deception goes beyond the doors of the small shop with ramifications involving national economy, benefiting from the rightful brand’s goodwill, and deceiving a trusting customer.
Delhi High Court refused to intervene with an order imposing costs worth INR 2 crore on the Appellant.
Case: Western Smart Bins (J.V.) & Ors. vs Sotkon Sp Slu on 30 January, 2023 (Delhi High Court)
Delhi High Court dismissed an appeal against the impugned order and held the Appellant prima facie guilty of contempt for continuing to supply garbage bins to Gandhinagar Municipal Corporation, in violation of an interim injunction dated October 2021. The injunction restrained the Appellant from using the Respondent’s registered patent on smart bin technology and related material. The court did not find any merit in the argument that the impugned order was passed by exercising improper discretion, or was arbitrary, perverse or capricious. Besides, the Appellants via the impugned order were given the last opportunity to file their affidavit and photographs subject to the condition that they “deposit a sum of Rs. 2 crores with the Registrar General of this Court, within one month”. The court observed that, by the present appeal, the appellants cleverly intended to challenge the injunction order dated October 2021 against which they have not instituted any appeal in 15 months.
Holding 91 is deceptively similar to 99, Delhi High Court grants an interim injunction to the Plaintiff.
Case: Alphavector India Pvt. Ltd. vs M/S Sach Industries & Ors. on 1 February, 2023 (Delhi High Court)
On 1st February, 2023, the High Court of Delhi passed an order in favour of the plaintiff making absolute an order passed by it on 11th October 2022, granting ad interim injunction in favour of the plaintiff preventing the defendants from using a trademark, “99”/”NINETY-NINE”, deceptively similar to the plaintiff’s “91”/”NINETY-ONE” marks. The court observed that, the similarity in the defendant’s and the plaintiff’s trademarks were too many to ignore and by this the defendant intended to confuse the customer of average intelligence and imperfect recollection into believing the defendant’s bicycles to be that of plaintiffs. In delivering this order, the court relied on two important principles credited to Lord Lindley, LJ in Slazenger & Sons v. Feltham & Co. and Justice Kekewich in Munday v. Carey. “where there is clear imitation with an intent to deceive, the Court must not bend backwards to presume that the intent is not successful, and (ii) where there is intent to deceive, the Court must pay greater attention to the similarities between the competing marks, and avoid searching, instead, for dissimilarities.”
Delhi High Court passed an ex-parte summary judgement and imposed costs worth INR 10,00,000.
Case: Aktiebolaget Volvo & Ors. vs Volvo White Paints Industries & Ors., On 7 February, 2023 (Delhi High Court)
Delhi High Court passed a summary judgement in favor of the Plaintiff, restraining the Defendants from using deceptively similar marks to Plaintiff’s “Volvo” marks. Despite serving the summons the Defendant did not appear and thus the court passed the order in favor of the Plaintiff, and imposed costs worth Rs. 10,00,000 on the Defendants.
Delhi High Court remanded the trademark application back to registry for considering the user claim afresh, reasons that the same cannot be rejected for not complying with procedural changes introduced during its pendency.
In an appeal against the order of the Respondent, Delhi High Court set aside the impugned order rejecting the trademark application for the mark ‘Indirapuram Public School’. The
Respondent had rejected the application for non-filing of the affidavit of user along with supportive evidence and lack of distinctiveness under Section 9(1)(a). The court held that the mark is not bereft of distinctiveness and set the impugned order aside to that extent. However, regarding the affidavit of user, the court noted that the application was filed before the 2017 Trademark Rules that prescribe for an affidavit of user, and thus the same cannot be subjected to the provision that was introduced during its pendency. The court noted that via previous order in September 2022, the Appellant was allowed to place user documents on record and vide this order directed it to file an affidavit of user and remanded the matter back to the Registry for considering the claim of prior use afresh.
Delhi High Court clarifies that for “lack of novelty” to be used as a defence against a Design infringement claim, the lack of novelty is to be seen as on the date of registration of design and not thereafter.
The Plaintiff instituted the present case alleging the piracy of its keyboard design by the Defendant.
The Defendant on the other hand relied on the exception of the lack of novelty of the Plaintiff’s design and argued that there are many designs similar to the Plaintiff’s design. The court clarified that for this defence, enshrined u/s 19 and 22(3), to work, “the lack of novelty or originality has to be seen as on the date when the design was registered. If a design, when registered, does not suffer from lack of novelty or originality, the mere fact that, after it is registered, several persons may choose to copy the said design can obviously not constitute a ground to cancel the registration of the design.”
KTTADI and KHADI are prima facie similar, rules Delhi High Court.
Case: Khadi And Village Industries vs Sumesh Sood And Anr on 7 February, 2023 (Delhi High Court)
Delhi High Court passed an interim injunction restraining the Defendant from using the mark “KTTADI”. The court found prima facie merit in the Plaintiff’s argument that the double ‘TT’s in the Defendant’s mark look like a capitalized ‘H’ and that it incorporates the Plaintiff’s trademark of Khadi in its mark ‘Kailash Khadi Gramudyog’.
Delhi High Court refuses to grant an interim injunction for lack of irreparable prejudice to the Plaintiff.
Delhi High Court refused to pass an interim injunction in favor of the Plaintiff on the ground that the Plaintiff has not specified the period since when the Defendant is engaged in manufacturing the allegedly infringing products and thus it is unclear if irreparable prejudice will occur to the Plaintiff if the injunction is not passed.
CIC clarifies that merely because a fellowship is funded by public exchequer, it will not mean that it is a public interest issue outweighing concerning privacy issues.
Case: Harshal Kate vs Lok Sabha Secretariat on 8 February, 2023 (Chief Information Commission)
The CIC dismissed the appeal against the CPIO’s refusal to disclose information sought on the research proposal made by one Dr. Shveta Singh, Fellow under the Lok Sabha Fellowship Program 2018-19. The appellant claimed that Dr. Singh was supposed to submit her research work within 2 years under the said fellowship and as per the scheme of the fellowship the work will eventually be made public. The appellant alleged that Dr. Singh, who was his Ph.D guide, could have used his research proposal to get the scholarship. However, the CPIO submitted that “the abstract/synopsis of the Research Proposal submitted by Dr. Shveta Singh comes under the purview of Intellectual Property Rights and her research project has not concluded yet. Further, the information sought by the applicant pertains to third party…” and thus, refused to share the information sought. In light of the foregoing arguments, the CIC observed “that the appellant by his own admission submitted that the abstract/proposal was public information and the final research paper/report will eventually be published and be accessible to the public at large. Thus, there is no question of invasion of privacy or personal information of a third party being sought. Having said so, the appellant is aware that the research project has not yet concluded. Therefore, the Commission opines that at this stage the order for disclosure of information shall amount to violation of Sec 8(1)(d) protection granted to a third party. Sec 8(1)(d) reads that information including commercial confidence, trade secrets or intellectual property, the disclosure of which would harm the competitive position of a third party shall not be disclosed, unless the competent authority is satisfied that larger public interest warrants the disclosure of such information. The appellant’s mere claim that the fellowship was being paid from public exchequer does not qualify the same as a public interest issue which outweighs the privacy of the scholar.”
Delhi High Court directs Registry to advertise KFC’s ‘Chicken Zinger’ trademark.
Case: Kentucky Fried Chicken vs The Registrar Of Trade Marks on 7 February, 2023 (Delhi High Court)
Delhi High Court set aside the impugned order and directed the Respondent to advertise KFC’s Chicken Zinger trademark. The application was rejected by the Respondent for being descriptive under Section 9(1)(b). However, the court after an overall assessment of the mark held that the “use of “ZINGER” in conjunction with “CHICKEN” does not draw an instant connection with the kind of goods/ services and may at best, be considered suggestive.”
Delhi High Court restricts Parle from selling “Fab!o” biscuits, holding it similar to “Oreo”.
Delhi High Court passed an interim injunction restricting the Defendant from using the mark “Fab!o” which is deceptively similar to the Plaintiff’s “Oreo” mark. The court held that though the mark is spelled “Fab!o” it is pronounced as “fab-ee-yo” which is similar to the Plaintiff’s “Or-ee-yo”. Notably, the court observed that “There is no other biscuit with a similar sounding name, with a concluding ―eo sound. When, therefore, another identical vanilla cream filled chocolate sandwich cookie enters the market, named ―FAB!O‖ with a concluding ―io sound, there is every likelihood of the lay consumer, who remembers having had the ―OREO‖ biscuit earlier, presuming a connection between the new ―FAB!O‖ biscuit and the earlier ―OREO biscuit”
Delhi High Court directs Zomato and Swiggy to delist 24 entities for using “Khan Chacha” mark.
In an ex-parte interim injunction order, Delhi High Court directed the proprietor of food supply apps- Zomato and Swiggy to delist 24 entities for using, advertising or promoting their outlets as “Khan Chacha”, which is registered in favor of the Plaintiff.
Other IP Development
- Supreme Court stays Kerala High Court’s order imposing the condition to not use
‘Varaharoopam’ song while granting anticipatory bail to the producer and director of ‘Kantara’ movie. - According to a report by global advisory firm Ankura, India has been ranked third in the list of highest contributors of visits to content piracy websites with over 7 billion visits through torrent sites in 2022.
International Developments
- Hermes wins U.S. trademark trial over ‘MetaBirkin’ NFTs.
- Intel, ParkerVision settle chip patent lawsuit during Texas trial.
- Samsung to pay $150 mn to Nanoco Tech in QLED patent suit settlement.
- Meta, nonprofit end U.S. lawsuit over infinity-logo trademark.
- Google created an AI that can generate music from text descriptions.
