[The weekly review is co-authored with SpicyIP intern Tanvi Agarwal]
Here are the quick summaries of the 7 cases and other 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!
Delhi High Court injuncts defendant from using “Sona” however, imposes costs worth 10 Lakhs on the plaintiff for concealing material facts.
The dispute pertained to the use of “Sona” as a part of the mark and trade name “Sona Mandhira Pvt. Ltd.” by the defendant. The plaintiff is the proprietor of various “Sona” formative marks. The order stands out for 2 reasons-
1) Finding on concealment of the material fact by the plaintiff– the defendant highlighted that while granting the protection to the plaintiff’s mark, the registry had clarified that the registration was only for the concerned device and no protection for the use of word “Sona” can be claimed by the plaintiff. However, the plaintiff concealed this disclaimer from the court. Owing to this concealment, the court imposed damages worth 10 lakhs on the plaintiff.
2) Finding on passing off– despite the above finding about concealment, the court opined that the “disclaimer does not travel with the mark” and upon comparing the competing marks, found that the defendant’s unexplained adoption of the tradename “Sona Mandhira” to be mala fide.
Delhi High Court extensively discusses the tests of distinctiveness and use of laudatory marks
In the present case, the plaintiff alleged infringement of its device “Royal” and passing off by the defendant’s adoption of “Zabreen Royal” device. The defendant on the other hand argued that the device “Royal” is descriptive and thus, no exclusive right can be claimed over it. Considering the above arguments, the court extensively discussed the tests of distinctiveness and the use of laudatory marks like ‘Royal’ to describe the quality of the product. However, after the above elaborate discussion, the court notes that the defendant has agreed to change its competing label and give prominence to “Zabreen” instead of “Royal”. In light of this development, the court restrained the defendant from using its earlier packaging and allowed it to use the subsequently proposed packaging.
Latest in the Anubhav Jain v. Satish Jain saga, the Delhi High Court refuses to intervene with the interim injunction order of the Trial court
In one of our previous posts, we discussed the rectification side of the dispute over the mark “Jain Shikanji”. The present order concerns the appeal filed against the order of the trial court in the infringement suit. The respondent is the proprietor of the above mark and instituted the suit against the appellant (who claims to be the respondent’s distant relatives) for using a similar mark. The court held that the appellant has not produced any documents in support of its claim regarding the impugned mark being a family mark and relying on Wander v. Antox decision, refused to interfere with the order of the trial court.
The orders from the Controller should reflect its considerations on the written submissions of the applicant, clarifies Delhi High
The appellant approached the court against the impugned order by the respondent rejecting its patent application without considering its submissions. The court set aside the impugned order and held that the respondent should have included its considerations on the submissions of the appellate. It opined “some amount of application of mind to the contentions advanced by the applicant in response to the FER as well as the written submissions advanced before the learned Controller was required to be manifested in the impugned order, inter alia, so that this Court would be in a position to assess for itself whether the grounds on which the learned Assistant Controller deemed it appropriate to reject the appellant’s application were sustainable in law.”
Minor differences will not suffice to distinguish the impugned design from the suit design, clarifies the Delhi High Court
Prima Facie holding that the Defendant’s fan design is an obvious imitation of the plaintiff’s registered design, the Delhi High Court passed an interim injunction restricting the defendant from manufacturing and selling fans with the impugned designs. On the defendant’s argument that the shape of the extension of the central motorhead is different in the competing designs, the court held that such a minor difference will not suffice to distinguish the impugned design from the suit design.
Delhi High Court interprets Rule 3 of IT Rules, 2021, clarifies that intermediary is not bound to act on the complaints of infringement under the above law.
The plaintiff alleged that Flipkart has violated the obligations under Rule 3 of IT (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021, by not acting on its complaint to remove the infringing products from its website. The court however interpreted Rule 3 to not include any obligation wherein the intermediary must act against any infringers after the receipt of a complaint. In light of this interpretation, the court said that it “cannot, by judicial fiat, read, into the IT Rules, something which the rule does not contain either expressly or by necessary implication.” The plaintiff then argued that Flipkart is bound by its ‘infringement policy’ to remove the infringing listings, the court however, held that it cannot read this obligation under Rule 3 based on the internal policy of Flipkart, especially when such provision is consciously omitted from the 2021 Rules.
Delhi High Court reiterates that apprehension about defendant’s expanding its business is a valid of cause of action for the court to have the territorial jurisdiction.
In an appeal against the order of the Trial Court concerning an application for rejection of the plaint under Order VII Rule 10 for lack of territorial jurisdiction, the Delhi High Court reiterated that a detailed examination of the facts is not necessary for a decision to return the plaint under the above provision. The court clarified that the order should be passed on the assumption that the arguments in the plaint are true, without looking at the defence pleaded by the defendants. After the above observation, the court set aside the impugned order, holding the Trial Court wrongly disregarded the plaintiff’s plea to invoke the jurisdiction based on the apprehension of defendant’s expanding its business in Delhi, without any cogent reasoning. For this, the court relied on Allied Blenders & Distillers Pvt. Ltd. v. Prag Distillery Pvt. Ltd to hold that suits can also arise out of cause of action premised on apprehension.
Other IP Developments
- Court orders jail for two Maiden Pharma execs for exporting substandard drugs to Vietnam.
- Kacha Badam Singer Bhuban Badyakar Files Complaint Alleging Copyright Infringement.
- Last date to apply for Trademark and Patent Agent extended till 15thMarch, 2023.
- Centre planning to reform patent laws, seeks suggestions from industry and stake holders.
- Mysore Silk, Kangra Tea, Thanjavur Paintings granted GI tag: DPIIT
- APEDA working with Indian alcoholic beverage associations to promote export of Goan Feni.
- Hyderabad cardiologist granted patent for medical device to treat ventricular septal defect
International IP Development
- WIPO notes that a record of 278,100 patents were filed last year, increasing the international patent filings by 0.3%.
- A report titled “Accelerating innovation in connectivity: The case for an Open RAN patent pool”, authored by Harvard Business School Professor Josh Lerner claims that patent pools can play an important role in Open RAN, a key component in unlocking 5G ado.
- Warner Music Group Corp and Scottish rock band The Jesus and Mary Chain have agreed to end a lawsuit over the band’s attempt to terminate the music label’s rights in its music.
- UK Supreme Court hears case by and American computer scientist for patent over inventions created by his AI system DABUS