SpicyIP Weekly Review (April 17- April 22)

[This weekly review is co-authored with SpicyIP intern Sudhiksha Maneeswaran. Sudhiksha is a 4th-year student pursuing B. A., LL. B (Hons.) from School of Law, Christ (Deemed to be University), Bangalore.]

Here are the quick summaries of the 4 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

Legal Basis for Personality Rights in India – The Repercussions of Unreasoned Decisions

What do superstars like Amitabh Bachchan, Rajnikant and Gautam Gambhir have in common apart from an enviable reputation and tall personalities? Unreasoned court orders to protect them, argue Pranjali Sahni and Souradeep Mukhopadhyay in this guest post. Looking back at the orders protecting personality rights in India, the authors argue how the existing judgments are ambiguous, fail to provide the rationale necessary for appellate review, and provide little guidance to lower courts and future benches of the High Court who may be called to adjudicate similar issues, stunting the development of sound jurisprudence.

Spicy Foods And Spicier Interpretations: Schewzan Chutney To Have Acquired Secondary Significance?

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Has the mark “Schezwan Chutney” acquired secondary significance? Looking at the sales figures and advertisements, the Division Bench of Delhi High Court says it has. In this guest post, Devangini Rai critiques the above finding from the lens of settled principles on the use of generic words as trademarks and acquired distinctiveness. She also compares the reasons adopted by the Division Bench with the rationale of the Single Judge Order that had previously held “Schezwan Chutney” as descriptive.

Other Posts

Protecting Confidential Information as Copyrightable Material with Confidential Reasons?

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A Tale of Two Orders! Recently Bombay and Delhi High Courts passed conflicting orders in matters pertaining to the protection of confidential information. While the Bombay High Court order is a reasoned one, expressly noting why the interim injunction deserves to be vacated, the Delhi High Court order granted interim protection to the confidential information as copyrightable material, without any substantive reasoning. Niyati Prabhu writes on this, analyzing the Delhi High Court order in depth. She further assesses the trend of protecting confidential information under the Copyright Act and highlights the shortcomings of this approach.

An Obituary to the TRIPS ‘Waiver’: Lessons from an Imperfect Response 

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Looking at the fate of the much-hyped TRIPS waiver, SpicyIP intern Rohan Srivastava reflects on the broader, pragmatic issues of seeking a waiver as a way out of the crisis.

Case Summaries

Delhi High Court remands the Registry’s order rejecting the application for the mark “What do you see?” for lack of reasons. 

Case: A Dot limited v Registrar of Trade Marks on 11 April 2023 (Delhi High Court) 

Recently the Delhi High Court in an appeal petition under Section 91 of the Trade Marks Act, set aside a refusal order given by the Registrar of Trade Marks Registry, refusing A Dot Limited’s Trademark application for the phrase “What do you see?”. The  Impugned order rejected the application on the ground that it fails to distinguish the goods and services of one person and another and is thus barred by section 9(1)(a) of the Trademarks Act. Reference was also made to section 9(1)(b) of the Act, which bars marks that include or serve in trade to designate the kind, type, quality, quantity, purpose, or geographic origin from being registered. The High Court in setting aside the impugned order noted that the Registrar failed to provide any reasons why it fails the test of distinctiveness and merely relied on the dictionary meaning of the word. The Court also noted that the phrase clearly forms a slogan/tagline and is thus eligible for grant of trademark, and has also been granted the trademark in other jurisdictions such as US, UK etc. On 9(1)(b), the court clarified that the question ‘What do you see?’ is often used to elicit an individual’s perception or interpretation of a given situation or object, serving as a prompt for them to share their thoughts, opinions, or observations. It, therefore, does not designate the time, quality/ quantity or intended purpose of any other characteristics of the goods and services falling in the afore-noted classes.

Delhi High Court restrains the Defendant from manufacturing cookers that pirate Prestige’s “Svachh” range of pressure cookers. 

Case: TTK Prestige v. KCM Appliances on 13 April 2023 (Delhi High Court)

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This dispute pertains to piracy allegations made by the plaintiff TTK Prestige against KCM appliances, that the latter’s “Impex” pressure cooker infringes the suit design of the plaintiff. The plaintiff alleged that the defendant copied or imitated novel features of the suit design, including the design of the lid, of which the plaintiff is the pioneer and inventor. Three major claims of validity, functionality and piracy were dealt with by the court. On the aspect of validity, the court rejected the challenge raised on the ground of prior publication and want of novelty and originality. Court ruled that the defendant’s evidence didn’t prove items were similar and that the challenge is devoid of substance. On the aspect of functionality, the Court ruled in the plaintiff’s favor that a design can be both functional and utilitarian. The aesthetic of the product is also relevant here. Court noted, “From the point of view of eye appeal, which is the test to be applied as per Section 2(d), the suit design is entitled to registration.” On the aspect of piracy, the court ruled against defendants that their designs were similar and no substantial distinctions visible except for some minor inconsequential differences. After analyzing both designs, the court ruled a prima facie case of piracy. The Court restrained the defendant, till pendency, from manufacturing or selling its pressure cookers which may infringe plaintiff’s rights. Court also directed the defendant to make reasonable efforts to effect the same and produce evidence.

Delhi High Court imposes costs worth INR 9,59,413/- on the Defendants for infringing Louis Vuitton’s trademarks. 

Case: Louis Vuitton Malletier vs Santosh & Ors. on 18 April, 2023 (Delhi High Court)

The Delhi High Court passed a permanent injunction against the defendant’s use of the ‘Louis Vuitton’ mark and decreed the suit in favor of the plaintiff. It took note of the fact that despite entering their appearance in the suit Defendants 1,2,4 and 5 stopped appearing after a point and the court thus proceeded ex-parte. The court further awarded actual costs to the plaintiff and directed Defendants 1 to 3 to pay 9, 59, 413/- (INR 3,00,000/- by Defendant no. 1 and 2 and INR 6, 59, 414/- by Defendant no. 3).

Delhi High Court directs Trademark Registry to file an affidavit on the issue of condonation of delay in opposition proceedings. 

Case: Sun Pharma Laboratories Ltd vs Dabur India Ltd. & Anr on 15 April, 2023 (Delhi High Court)

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Development with regard to opposition proceedings and timelines are stemming up in the Delhi High Court as the court directed the Registry to file an affidavit on the issue of condonation of delay in the opposition proceedings. The court further directed that the affidavit should specifically address the following questions:-

         i. Whether it would be permissible for the Opponent to file the evidence along with the notice of opposition itself, so as to avoid ‘deemed abandonment’.

         ii. Even if the notice of opposition is treated as ‘abandoned’ under Rule 45, whether the grounds contained in the notice of opposition can be considered for the purposes of registration of the mark in terms of Section 19 of the Trade Marks Act, 1999 with the overall object of maintaining purity of the Register.

Calcutta High Court restrains a bunch of social media influencers from airing content that disparages Plaintiff’s “Kwality Walls” ice cream. 

Case: Unilever Industries Private Ltd. vs Naresh Gehani And Ors on 18 April, 2023 (Calcutta High Court)

Calcutta High Court passed an ex-parte interim injunction restraining the defendants (a bunch of social media influencers) from airing the respective impugned videos and contents allegedly disparaging the “Kwality Walls” and “Unilever” trademarks of the plaintiff. The court observed that though the Constitution guarantees freedom of speech and expression, however the same is not unrestricted. The court further held that though prima facie, the intent of the creators of the impugned videos may not be objectionable, by making direct references to the plaintiff and their frozen desserts, they have crossed the Rubicon and thus passed the present order.

Delhi High Court clarifies that Section 3(k) is not an absolute bar on the grant of patents for the computer programs-related inventions. 

Case: Blackberry Limited vs Assistant Controller Of Patents and Designs on 19 April, 2023 (Delhi High Court)

The appeal was filed before the Delhi High Court against the order of the respondent, rejecting the subject patent application u/s 3(k) of the Act. The respondent, in the impugned order, has observed that “the instructions for performing the steps of the method claims and execution of instructions are software features and not physical constructional features. It is considered as a not patentable subject matter.” The court however, relying on Ferid Allani, held that Section 3(k) is not an absolute bar on the grant of patent for all computer programms related inventions and set aside the impugned order, remanding the matter back to the patent office.

Considering the similarity of marks, identical goods, identical trade channels, common consumer base, and well-known status of Plaintiff’s “Officer’s Choice” mark,  the Delhi High Court restrained Defendants from using “Green Choice.” 

Allied Blenders And Distillers Pvt. Ltd. vs SNJ Distillers Private Limited & Anr on 19 April, 2023 (Delhi High Court)

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Delhi High Court made absolute the interim injunction order, restraining the defendants from using the mark “Green Choice”. In its assessment of whether the plaintiff’s mark “Officer’s Choice” and the defendant’s mark “Green Choice” are deceptively similar or not, the court deferred to the extensive use and the well-known status of the Plaintiff’s mark. The court also noted that the Plaintiff’s “Officer’s Choice” formative marks include “Officers Choice Blue” “Officer’s Choice Black” and thus, the defendant’s “Green Choice” lies in the same vicinity. The court further held that since the products of the parties are identical with identical trade channels, a common consumer base and that there is a likelihood of confusion, the plaintiff has made out a prima facie case for infringement. On passing off, the court held that the defendant was unable to justify why it adopted the mark “Green Choice” and considering that one of the defendants is a former bottler of the Plaintiff it was aware of the reputation enjoyed by the plaintiff.

Delhi High Court imposed INR 3,00,000/- as costs on the defendants for dishonestly adopting a deceptively similar mark to Boeing’s. 

The Boeing Company & Anr. vs Advance Technologies & Ors. on 18 April, 2023 (Delhi High Court)

Delhi High Court made absolute an ex-parte interim injunction, restraining the defendant from using the mark which is deceptively similar to the plaintiff’s mark “Boeing”. The court also restrained defendant no. 3 from impersonating as an employee of the plaintiff. The Plaintiff had alleged that the defendant has dishonestly adopted its mark and is also impersonating to be an employee of the plaintiff. Despite being served with the notice the defendant did not appear before the court. Upon finding the competing marks to be deceptively similar, the court held that the adoption of the impugned mark by the defendant was dishonest to mislead the customer and thus imposed a cost of INR 3,00,000/-

Other Developments

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International IP Development

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