SpicyIP Weekly Review (April 10- April 16)

[This weekly review is co-authored with SpicyIP intern Devanshu Agrawal. Devanshu 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 4 posts, 9 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

IPO Rejects Janssen’s Secondary Patent Application for the Fumarate Salt form of Bedaquiline 

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In a huge development, the Patent Office recently rejected a patent application for a treatment of multi-drug resistant tuberculosis, after different pre-grant oppositions highlighted various weaknesses with the application. In this guest post, Priyam Lizmary Cherian, who represented one of the opponents, and Roshan John break down the order and its intricacies.

Other Posts

Delhi High Court Offers an Evaluation of the Meaning of Descriptive and Laudatory Marks (But What’s the Difference?)

On 24th February, Justice Navin Chawla of the Delhi High Court passed an interesting judgment that discusses the parameters for a trademark to be considered descriptive/laudatory and the evidence needed to establish the same. At issue in Lt Overseas North America Inc & Anr. V. Krbl Limited was alleged infringement and passing off of the plaintiff’s trademark registrations for marks that include the word ‘Royal’, by the defendant’s mark ‘Zabreen Royal’ (‘Impugned Mark’). In what follows, Rahul Bajaj sets out the key arguments of the parties and the holding of the court, along with his analysis of the judgment.

To Be or Not To Be (Design): Calcutta HC Sways Against Trend of Denying Design Registrations Over GUIs

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Can a GUI be regarded as a Design? Responding in the affirmative, the Calcutta High Court has swung the interpretative pendulum back in favor of GUIs being registrable. SpicyIP Intern Anjali Baskar takes a look at the reasons of the court and also points out how the order is in contrast to the previous interpretations on this issue.

Where to lean on?  The Biological Diversity (Amendment) Bill 2021 or the Landmark Cases?

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In this guest post, Alphonsa Jojan highlights how the 2021 Amendment Bill falters, on multiple grounds, in ensuring the upliftment of those who depend on Biodiversity and Traditional Knowledge. Offering an alternative, she argues that instead of looking at the Amendment Bill, the judicial orders and judgements by the Indian courts should be the source of reference for the upcoming Diplomatic Conference on IP, Genetic Resources and TK.

Case Summaries

Karnataka High Court sets aside the order of the Regional Director, Corporate Affairs, on failure to consider the interplay between Section 16 of Companies Act and Trademarks Act. 

Case: Coolulu Sports Private Limited vs Union Of India on 5 April, 2023 (Karnataka High Court)

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The writ petition was filed against the order of the Regional Director,  Corporate Affairs directing the petitioner to change its name for being similar to the trademark of the respondent no. 2 (Lulu Mall). Allowing the petition, the court held that the RD did not consider the purpose of Section 16 of the Company Act and further faltered in considering the interplay of the provision with the Trademarks Act. Therefore, the court set aside the impugned order and directed the RD to consider the application afresh.

The question of can a Youtube Channel, posting both infringing and non-infringing content be entirely blocked or not, may require examination, opines Delhi High Court. 

Case: Smithkline Beecham Limited vs Gskfinancial.Com &Ors on 6 April, 2023 (Delhi High Court)

The plaintiff approached the court to implead additional defendants and sought certain interlocutory directions against them. The court had passed interlocutory directions in Feb ’23 on being prima facie satisfied that the defendants 1-3 host rogue websites and provide financial advice in the pretext of being associated with the plaintiff. Of the new list of defendants who are sought to be impleaded, it was informed that channels of the defendant no. 22 and 25 also post non infringing content, on which the court observed that “the question of whether a YouTube channel which posts infringing as well as non-infringing content can be entirely blocked, instead of merely blocking the infringing content, may require examination.” The court then passed an order directing that for the defendants 22 and 25 the plaintiff should first intimate YouTube, in case they come across any infringing content on the channels of these defendant and upon being convinced, YouTube may block the content and file an application to intimate the court. 

Calcutta High Court observes that when an application has been rectified in conformity with the recommendation of the Controller, it is fair to assume that such an application will be allowed. 

Case: Protean Electric Ltd vs The Controller Of Patents And Design on 6 April, 2023 (Calcutta High Court)

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The Calcutta High Court allowed an appeal against the order of the Controller and remanded the application for reconsideration. In passing this order, the court reprimanded the respondent for- not adhering to the statutory timelines; Citing new prior art documents in hearing notice (holding it to be against Section 13(3)); Faulty assessment of the test of novelty and inventive step stemming from a single prior art ( the court held that The tests to determine novelty and obviousness are entirely different and can never co-exist with respect to the same document.); Not re-examining the re-fled application. Interestingly the court also observed that when an application is rectified in conformity with the recommendation of the controller, it is fair to assume that such an application will be allowed unless it falters in satisfying the provisions of the Act and the Rules. 

 Delhi High Court imposes costs worth INR 2 Lakhs on the defendant for violation of its interim orders. 

Case: Jmd Heritage Lawns Private Ltd vs Mr Ankit Chawla Proprietor Sadda Pind on 10 April, 2023 (Delhi High Court)

The dispute pertained to adoption of the mark “5adda Pind” by the defendant, which was alleged to be deceptively similar to plaintiff’s “Sadda Pind” mark. The court had previously passed an ex-parte interim injunction order after which the defendant had changed the mark to “5adda P1nd” however, the mark was further changed to “The Punjabi Village”. The court took note of the change of impugned mark to “5adda P1nd” and held it to be violation of the interim orders passed by it. Consequently, the court imposed INR 2,00,000 as costs on the defendant. 

Delhi High Court explains the criteria for a mark to be “common to the trade.”

Case: Glaxosmithkline Pharmaceuticals vs Horizon Bioceuticals Pvt. Ltd & Anr on 10 April, 2023 (Delhi High Court)

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The dispute pertained to adoption of the mark Comodex by the defendant which was alleged to be similar to Cobadex mark of the plaintiff. The defendant argued that the competing marks are not similar and many marks use “Dex” as a suffix and thus the term is common to the trade u/s 17(2) of the Act. The court however held that for a mark to be regarded as “common to the trade” it has to fulfil 2 criteria :- First, existence of a trade in the article or class of the article in which the plaintiff uses the mark; Second, common use of the mark or parts thereof. The court held that since it does not have the statistical data regarding market presence of other pharmaceutical compounds, the brand names that ends with “Dex” and when one removes from the cited examples the products containing dexamethasone and dextromethorphan, the remaining examples cannot make out a case u/s 17(2). Furthermore, the court also held that the competing marks are phonetically similar and that extra caution must be applied in the present case since the plaintiff’s product is a prescription drug.  

Bombay High Court clarifies that plaintiff must disclose confidential information to the court in cases where a breach of confidentiality is asserted.

Rochem Separation Systems (India) Pvt. Ltd. v.Nirtech Private Limited & Ors.

The Bombay High Court vacated the ex-parte interim injunction order that was previously granted over a general allegation of breach of confidentiality by the plaintiff’s ex-employees. The court held that for the plaintiff to get an injunction for breach of confidential information, it is necessary that it informs the court what that information is. Furthermore, the court also observed that the plaintiff has alleged that the defendant has infringed the copyright in its drawing however, prima facie the defendants were able to establish that these drawings are a part of the public domain and thus no exclusivity lies over them.

Orissa High Court assess “Balance of Convenience” and “Irrepairable injury”  while allowing appeal for interim injunction. 

Case: M/s Mahavir PVC Cables Factory v. M/s Indo Mahaveer Kable on 6 April, 2023 (Orissa High Court)

This case arose out of an appeal against the impugned order rejecting the plaintiff’s prayer for interim injunction on the ground that two out of three tests for grant of temporary injunction, i.e. balance of convenience and irreparable injury, were not established in their favour.  The high court however held that the plaintiff was in the business of PVC wire and cables for a long time and thus balance of convenience lies in its favor. Furthermore, considering the loss of reputation the defendant’s mark may cause to the plaintiff by using the similar mark, the court held that there is a likelihood of injury. The court also assessed the public interest involved in the present case and held that though plaintiff can always be compensated by damages, the public, by using substandard products of the defendant, cannot be compensated in case of any untoward event.

Delhi High Court orders to block 40 websites streaming the contents of Universal Studios and others. 

Universal City Studios v. FzMovies.Net on 11 April, 2023 (Delhi High Court)

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The plaintiffs alleged that the defendants site are involved in illegal linking, downloading and streaming of plaintiffs’ protected content. The plaintiff further argued that the defendants’ websites are using “pirate branding” to indicate that they are mere new iterations of previously blocked sites. The court passed an ex-parte interim injunction order directing the ISPs to block the impugned websites and further directed DoT and MeitY to “issue requisite notifications within five working days, calling upon various internet and telecom service providers registered under them to block the aforementioned websites identified by the plaintiffs.”

Division Bench of Delhi High Court decides on issues of product disparagement in dispute between marks Domex and Harpic.

Case: Hindustan Unilever Ltd. v. Reckitt Benckiser (India) Pvt. Ltd. on 13 April 2023 (Delhi High Court)

This is an appeal filed by “HUL” before a division bench of Delhi HC against a single judge bench order of the same court. The Single judge restrained the appellant (HUL) from publishing a print advertisement and airing three YouTube videos for its product ‘Domex’. The advertisements were found to be disparaging the toilet cleaner sold by respondent under tradename of “Harpic”. The Division bench upheld the order of the Single judge bench and noted that an advertiser can indulge in puffery and hyperbole to reflect its product in a good light but cannot show the competitor’s product in bad light. The Court concluded that in this case, the advertisement denigrates Reckitt’s product by claiming that use of Harpic would result in the toilet bowl remaining unclean and emanating a foul smell. After analysing the advertisements thoroughly, the Division bench awarded the balance of convenience in favour of the respondent and noted, “A false advertisement campaign would cause irreparable loss to Reckitt while postponing broadcast of an advertisement referring to Reckitt’s product may not have any material effect on HUL, considering that it is free to advertise its product without reference to Reckitt’s products.” The Division bench also reminded that HUL is not restrained from advertising but only directed to remove all references to Reckitt’s product and the bottle representing ordinary toilet cleaners because it is identifiable with Reckitt’s product – Harpic.

Other Developments

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International IP Development 

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