Spicy IP Weekly Review (April 2- April 8)

[This weekly review has been co-authored with SpicyIP intern Rohan Srivastava. Rohan is a second-year student pursuing B.A. LL.B (Hons.) from National Law School of India University, Bengaluru.]

Here are the quick summaries of the 5 posts, 8  case summaries, and other IP developments that took place last week. Important IP cases that we’re missing out on? Especially from different High Courts?  Please let us know so we can include them!

Highlights of the Week

Madras High Court Notifies Intellectual Property Division Rules, 2022

In a huge development for IP community, the Madras High Court Intellectual Property Division Rules, 2022 have been notified in the official gazette dated April 5, 2023, making it the second court in the country to have an IP division, after Delhi High Court. Praharsh unpacks these rules and shares his first thoughts on this major development.

Other Posts

Examining Deeming Abandonment in the Trade Marks Act – A Call for Revaluation?

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Recently, the Registry has deemed abandoned nearly 98,000 and 82,000 trademark applications for not responding to the Examination Report and Notice of Oppositions respectively. In light of this, Ritwik Sharma discusses the interplay between the provisions of the Trademark Act and the Rules on deemed abandonment, highlighting the legal and administrative framework that governs it.

Oreo v Fab!o: A Ballad of Colours and Syllables [PART I]

Cadbury and Parle battle it out before the Delhi High Court over latter’s adoption of a blue trade dress and an allegedly similar-sounding name. In part I of their assessment of the court’s order, Kartik Sharma and Aditya Singh, analyze the court’s assessment of intent in this infringement and passing off dispute.

Oreo v Fab!o: A Ballad of Colours and Syllables [PART II] – Spicyip

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In part 2 of their two part guest post on the dispute between Cadbury and Parle, Kartik Sharma and Aditya Singh focus on the Court’s assessment of the trade dress of the two products and the phonetic similarity between Oreo and Fabio.

Call for Papers: NLU Jodhpur’s Journal of Intellectual Property Studies Vol. VII, Issue II [Submit by May 28]

We’re pleased to announce that NLU Jodhpur’s Journal of Intellectual Property Studies (JIPS) is inviting original, unpublished manuscripts for publication for its upcoming issue (Volume VII, Issue II). The last date for submissions is May 28, 2023.

Case Summaries

Calcutta High Court rules that once the tests for an ex-parte injunction order is fulfilled, the court cannot refuse to exercise its discretion in favour of the plaintiff. 

Case: Kreamz Confectionery Private Limited  vs  Kreamz Cakes And Bakes on 5 April, 2023 (Calcutta High Court)

In an appeal, the Calcutta High Court passed an ex parte interim injunction order, restraining Kreamz Cakes and Bakes from using the mark “Kreamz Celebrating Life” and “Kreamz Cakes and More”. The Court noted that the  plaintiff has been carrying on the food manufacturing business since June 2021 and was able to establish the trinity test for getting an ex parte injunction order. Despite this, the trial court did not pass an injunction order in the favour of the plaintiff. The court set aside the trial court’s order and held the plaintiff could not have been denied the injunction, once it was determined that its case meet all the criteria for obtaining an ex parte injunction. The court asserted that if the plaintiff/appellant’s intellectual property rights were not protected, the very purpose of an application for injunction would be defeated.

Calcutta High Court rules in favour of the rights of bona fide auction purchaser and  restrains an allegedly unauthorised assignee from using the Trade Mark

Case: Paul Brothers And Another vs Union Of India And Others on 6 April, 2023 (Calcutta High Court)

The petitioner purchased 14 trademarks of a liquidated company at an auction but it later was found that 7 out of these 14 trademarks were registered in favour of respondent 3, daughter-in-law of one of the directors of the company. The petitioner approached the HC under Article 226 seeking a writ of mandamus against the registry to revoke these 7 assignments in favour of respondent 3. The court held that strangers to a decree and bona fide purchasers have a legitimate expectation that the court will protect their rights. Upon examination of the facts, the court prima facie found that respondent 3 had not complied with the requirements of Section 42 of the TM Act and that the registry had wrongly assigned the TM despite communication by the Liquidator to maintain the status quo. The Court also observed that the existence of an alternate remedy under Section 57(2) of the TM Act is not a bar on the jurisdiction of the High Court under Article 226, and the High Court may choose to entertain a writ petition upon its discretion.

Gujarat High Court holds that grounds of passing off should be claimed in the infringement suit as both involve inquiry of likelihood and are based on similar facts.

Case: Sazzy Sizzlers Cafe vs Yanki Sizzlers Private Limited on 31 March, 2023 (Gujarat High Court)

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The dispute pertained to the use of trademark “Sazzy Sizzlers” by the Appellants and the alleged infringement of trademark and trade secrets of the Respondent, who runs the business under the name of “Yanki Sizzlers.” The Respondent had originally entered into a leave and licence agreement with the Appellants who were the owner of a commercial premise and had been running the restaurant ‘Kitchen Kraft’. After the respondent had vacated the premises it was alleged that the appellants had used the trade dress and trade secrets of the plaintiff and started the restaurant ‘Sazzy Sizzlers’. On basis of the above, the commercial court had passed the impugned order, granting the injunction to the Respondents. The Appellant preferred an appeal and contended that since there was already an infringement suit filed on the same cause of action, the present suit is barred under CPC and the respondents must have pleaded passing off in that suit itself. The court noted that though passing off and infringement are conceptually different, both require the inquiry of likelihood to cause deception and are based on similar facts and hence the ground of passing off must have been pleaded in the infringement suit itself.  Going to the merits the court noted that there was a dearth of evidence to substantiate the claim that the appellants had used Yanki Sizzlers’ trade secrets etc. Furthermore, the court held that since the Respondent had served sizzlers at the same location under ‘Kitchen Kraft’ their prior use was to be respected. The word ‘Sizzler’ was understood as being a common food name not capable of being a distinct trademark. Moreover, it was also noted that Sazzy and Yanki do not have any phonetic similarity to cause confusion. On the basis of the above, the Gujarat High Court set aside the injunction granted by the commercial court.

Delhi High Court clarifies that an identical or confusingly similar mark, even if adopted in good faith, can be infringing the prior mark’s rights if it leads to consumer confusion.

Case: Jagdish Prasad vs Jay Prakash Rai And Anr on 27 March, 2023 (Delhi High Court)

In a dispute pertaining to cancellation of the defendant’s deceptively similar ‘JP’ mark, the Delhi High Court observed that priority of use and registration and likelihood of confusion between the marks are critical factors in determining trademarks rights. The court said that since the purpose of the mark is of a source identifier, an identical or confusingly similar mark, even if adopted in good faith can still be infringing the prior mark’s rights if it leads to consumer confusion or dilution of such mark. Apart from this, the court also considered that the defendant was a trader and the registration obtained by it for the allegedly similar mark was for goods. Thus, the court observed that the use of the mark for services by the defendant cannot accrue any goodwill for products for which it is registered.

Delhi High Court holds that phonetic similarity should be proximate and not remote to constitute a basis for infringement.

Case: Glaxo Group Ltd. v. Maiden Pharmaceuticals Ltd. on 06 April, 2023 (Delhi High Court)  

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The case pertained to the use of Betason, Betnomaid and Mednovate marks by the Defendant, which were alleged to infringe the Plaintiff’s Betnesol and Betnovate mark. With regard to Defendant’s Betason mark, the court held that the same does not infringe Plaintiff’s Betnesol mark. For this, the court held that for phonetic similarity to constitute a basis for finding on infringement, “proximate” and not “remote” phonetic similarity is required.  Thus, the court held that what is to be assesed is whether as ordinarily pronounced, the rival marks are phonetically, confusingly or deceptively similar.  However, regarding Betnomaid and Mednovate, the court held that the marks are similar to Betnovate. The Defendant had argued that Betnomaid is portmanteau of Betno (API betamethasone) and its name Maid (Maiden) however, the court held that Betno cannot be seen as an abbreviation of betamethasone and thus, rejected its argument passing the interim injunction order.

Applying prosecution history estoppel and finding no prima facie case, the Bombay High Court refuses to grant an interim injunction to PhonePe.

Case: PhonePE Private Ltd. v. Resilient Innovation Private Ltd. on 06 April, 2023 (Bombay High Court)

The dispute pertained to the use of the mark “Postpe” mark by the Defendant, which was alleged to be deceptively similar to the Plaintiff’s “PhonePe” mark. The Bombay High Court refused to pass the interim injunction sought in the matter based on 2 grounds- first, via applying prosecution history estoppel, it considered the shifting stance taken by the plaintiff regarding its registered mark. The court noted that in a trademark suit before the Delhi High Court, the plaintiff had explained the term “pe” in its mark to mean payment, whereas, in the present suit it is explaining the term to mean “on” (the English meaning of the term “pe” when read in Hindi). The court thus held that the contradiction in the stands taken by the plaintiff in respect of its own registered mark in different proceedings shows that it has shifted its stance to obtain interim reliefs.  Second, the court found that the plaintiff did not fulfil the 3 tests for obtaining interim injunctions. The court held that there is no prima facie similarity between the marks and also deferred to the defendant’s argument that the nature of the services of both the marks are different. 

Bengaluru Court vacates ex-parte interim injunction restraining the release of the film “Swathi Muttina Male Haniye”.

Case: S V Rajendrasingh Babu v. The President, Karnataka Film Chamber of Commerce and Anr on 05 April, 2023 (Additional City Civil Judge, Bengaluru)

A Civil Court in Bengaluru vacated the ex-parte interim injunction and gave the go ahead to the Respondent no. 2 (Sri Jayadurga Movies) to release the movie titled “Swathi Muttina Male Haniye.”  The plaintiff had inter alia alleged that the title of the movie was based on the popular song of one of his movies “Bannada Gejje” and thus had obtained an ex-parte interim injunction against the Respondent no. 2. The Court however, held that the plaintiff failed to establish that he has registered the title “Swathi Muttina Male Haniye” with the Respondent no. 1 (Karnataka Film Chamber of Commerce) before the Respondent no. 2.  The court further held that the plaintiff cannot claim copyright over the title “Swathi Muttina Male Haniye” as it failed to establish that one single line from the song can be considered as a work for copyright protection.

Delhi High Court grants an interim injunction to KVIC, restrains the defendants from using the ‘Khadi’ mark.  

Case: Khadi and Village Industries Commission v. Khadi Design Council of India and Others on 22 March, 2023 (Delhi High Court)

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The case pertained to the use of the mark “Khadi” by the Defendants in different modes and occasions. The plaintiff alleged that the Defendants used the registered mark in organizing the “National Khadi Designers Awards, 2019” and “Miss India Khadi” events, along with using it in different website, inform of different logos and on different social media platforms. The Defendant, however, argued that the word ‘Khadi’ is descriptive and publici juris (of public right) and thus the plaintiff cannot exert proprietary rights over it. They further argued that they have never manufactured any Khadi product and has been sourcing the fabric manufactured by the plaintiffs from verified outlets.  The Court however held that the defendant failed to establish that the plaintiff has not acquired distinctiveness prior to registration of its allegedly descriptive mark. The court further held that the defendants have admitted to source the material from the plaintiff, bearing its registered mark and using the same in its events, and thus have admitted the intent to associate their activities with those of the plaintiffs, without its permission. On the basis of above reasons, the court granted an interim injunction to the plaintiff, restricting the defendants from using the ‘Khadi’ mark.  

Other IP developments  

International IP Development

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