SpicyIP Weekly Review (April 24- April 29)

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

Here are the quick summaries of the 4 posts, 12 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

Formation of a New Copyright Society in Cinematographic Films

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New Copyright Society for Cinematographic Films! Mathews brings us the news of the new copyright society in town and forewarns us about the potential conflict between copyright societies for cinematographic films and sound recordings.

Done, so Dusted? Discussing the Relevance of the Responses Filed Against FERs Issued by Trademark Registry

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Is FER and its Reply relevant after a mark is registered?  The Delhi High Court’s order in Under Armour v. Aditya Birla Fashion states that the FER and its Reply are only relevant in limited circumstances! The author questions this order, looking at prior case laws, and discusses how it inadvertently also limits the importance of the documents in rectification matters.

Other posts

Rochem v. Nirtech – Analysing the Claim of Breach of Confidential Information

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Ex-employees using confidential information acquired from the former employer! In this post, the author discusses the Bombay High Court order in Rochem v. Nirtech on protecting confidential information. She highlights how the court adopted an evidence-based approach toward the allegation of breach of confidential information and reflects on the conundrum surrounding the legality of expertise gained by an ex-employee.

Rectifying Problematic Interim Injunctions: A Discussion on the Bombay High Court’s DB Decision in  Tri-Parulex v. CTR Manufacturing Industries

The set of orders passed by the Bombay High Court in Tri-Parulex v. CTR Manufacturing Industries highlights some challenges with granting interim injunctions in technical patent disputes. Previously, the Single Judge Bench had granted an interim injunction in a presumably mistaken understanding of the Plaintiff’s patent and the alleged infringement thereof. In this post, the author writes on the appeal against the Single Judge order and discusses how the DB sets the record straight.

Case Summaries

Delhi District Court (Tis Hazari) restrains ZLib.Org from making available 10 law books for download and imposes costs of INR 2.50 Lakhs payable towards the Plaintiff.

Case: M/S Taxmann Publications P. Ltd. V. Zlib.Org And Ors.  on 19 April, 2023 (Delhi District Court)

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In this case, the plaintiff is a publishing company that claimed that defendant No. 1 violated its copyright by illegally uploading its 10 books on its website. The plaintiff requested compensation from the Delhi District Court for alleged financial damages and a permanent injunction against the defendant for unfair competition. The court held that the defendant was barred from making either of the books available for download. With regard to the damages, the court held that the ten books in question are priced at more than Rs. 700/­ per book, and considering that defendant no. 1 is offering the said books for download for free, it imposed a lumpsum amount of Rs. 25,000/­ per book i.e. Rs. 2.50 Lac total can be awarded in favour of the plaintiff.

Delhi High Court dismisses the defendant’s arguments against the applicant of the mark being a proclaimed offender, restrains them from using the mark “Af Finity.”

Case: Vinit Dua vs Prashant Mani Tripathi & Ors on 21 April, 2023 (Delhi High Court)

In this case, the plaintiff alleged that the defendant violated their “AF FINITY” registered word mark. On the other hand, the defendants disputed the legitimacy of the assignment deed and the registration of the mark and further tried to discredit the applicant of the mark as a proclaimed offender. However, the court categorically dismissed the above arguments and found a prima facie case of infringement of the word mark and passed the interim injunction order. 

Delhi High Court dismisses a rectification petition against the registration granted to “Burger King.”

Case: Virendra Kumar Gupta vs Burger King Corporation on 21 April, 2023 (Delhi High Court)

Here the plaintiff filed a rectification petition to seek cancellation and removal of the defendant’s trademark, “BURGER KING”. The court relied on its decision in another case (Burger King v. Virendra Kumar) wherein it had held that the plaintiff’s plea was not prima facie tenable, and on the Patel Field Marshal judgement to dismiss the petition. 

Delhi High Court stays the operation of the respondent’s mark “Burger King” for being similar to the respondent’s well-known “Burger King” mark.

Case: Burger King Company Llc vs Virendra Kumar Gupta & Anr. on 21 April, 2023 (Delhi High Court)

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The petitioner had filed a rectification petition seeking cancellation of the Defendant’s deceptively similar mark “Burger King”. The petitioner claimed prior adoption, transborder reputation, and prior registration of its mark and sought intervention from the court, to stay the operation of Defendant’s mark. The court agreed with the petitioner’s arguments and also found that the explanation of reverse deduction by the defendant, for the coinage of the mark, if accepted, will trivialize the trademark law.  The court held that by choosing to trade under the defendant’s well-known mark, the respondent dishonestly intended to deceive the public and benefit from the goodwill. Based upon the above, the court stayed the operation of the mark registered by the respondents. 

Madhya Pradesh High Court quashes an FIR filed u/s 63 of the Copyright Act, holding that the provisions of the Act are not applied on the manufacturing or trading of electrical goods.

Gaurav Sahu Vs The State Of Madhya Pradesh On 24 April, 2023(Madhya Pradesh High Court)

The Madhya Pradesh High Court, in an application filed under section 482 of the Criminal Procedure Code, recently quashed an FIR filed under section 63 of the Copyright Act. It was alleged in the FIR that the petitioner was selling fake house wires under the brand name of M/s Havells India Limited. The petitioner in this case contended that the provision of section 13 which talks about the subsistence of copyrights is not applicable to selling or trading or manufacturing of electrical goods. The court accepted the contention and quashed the FIR, reliance was also placed on the decision in the case of Kasim Ali v State of MP which had an identical factual matrix and the court held that provisions of the copyright act are not applicable to electric products such as the wires in this case. 

Delhi High Court sets aside an order from the Controller General of Patents for lack of adequate reasoning in rejecting the patent application.

Case: Honeywell International Inc Vs The Controller General Of Patents on 19 April, 2023 (Delhi High Court) 

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The Delhi High Court, in a recent appeal against the order of the controller general, set aside the impugned order for being unreasonable and arbitrary. The respondent had rejected the appellant’s application for a patent on “a Low-Cost Programmable HVAC Controller Having Limited Memory Resources” by merely noting what the First Examination report had held and did not provide adequate deliberation or consideration on applicability of Section 3(k) in the present case. The court, in setting aside this order noted that adequate reasoning is crucial in orders that are subject to judicial review and the order was plagued by arbitrariness and hence liable to be set aside. 

Delhi High Court attributes the plaintiff’s admission on lack of similarity between the competing marks, in a rectification proceeding,  as the lack of prima facie case for the plaintiff to get an interim injunction.

Case: Ms Lightbook & Anr. Vs Mr Pravin Shriram Kadam & Ors. On 24 April, 2023 (Delhi High Court)

The Delhi High Court refused to grant an interim injunction to the plaintiff for the lack of a prima facie case. The dispute pertained to the defendant’s use of the deceptively similar mark “Lightbook.” The plaintiff alleged that the defendant’s adoption of the mark for allied goods is without a reasonable explanation and has led to confusion among the consumers. However, separately the defendant had filed a rectification application against the plaintiff’s mark, in response to which the plaintiff had claimed that the marks are not similar. The court thus attributed this admission with the lack of a prima facie case in favour of the plaintiff and refused to grant the injunction.

In a trademark dispute between Tata and ITC, Telangana High Court remits the case back to the Commercial Court for not considering the provision of pre-institution mediation u/s 12A of the Commercial Courts Act. 

Case: Tata Consumer Products Limited Vs ITC Limited On 21 April, 2023 (Telangana High Court)

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The Telangana High Court allowed an appeal against the order of the Commercial Court and remitted the matter back to it for considering the maintainability of the suit without availing necessary the pre-institution mediation u/s 12A of the Commercial Court Act. The dispute pertained to the alleged adoption of a similar trade dress by the appellant wrt its “Tata Shuddh Salt”. The respondent (originally, the plaintiff) argued that by such adoption of a trade dress identical to its “Ashirvad Salt” the appellant has infringed its trademark and is trying to ride on the goodwill of its product. The Commercial court had held that the plaintiff had managed to establish a prima facie case and thus granted an ad-interim injunction in favour of the plaintiff. In the appeal, the appellant however contended that the impugned order did not comply with the provision of Section 12-A that mandates for a pre-institution mediation. The High Court held that there was no urgency in the matter and the Commercial Court failed to consider the mandatory nature of Section 12A and passed the present order. 

Delhi High Court finds “ Pactrin” to be deceptively similar to “Practin”. Grants an interim injunction to Dr. Reddy’s Labs.

Case: Dr Reddy S Laboratories Limited Vs Neutec Healthcare On 24 April, 2023 (Delhi High Court) 

The plaintiff is the proprietor of cyproheptadine hydrochloride pharmaceutical formulation which sells tablets named PACTRIN which they are using since 1986. The primary contention of the plaintiff was that the defendant is manufacturing and selling the same product as PRACTIN which is deceptively similar to the plaintiff’s product. The plea is of infringement and passing off against the defendant and their product. Considering the above facts and that the present dispute pertained to a pharmaceutical product, the Court found a prima facie case of infringement in favour of the plaintiff and passed the present interim order. 

Delhi High Court directs for an appearance of two Controllers to put forth the stance of the IPO in a case pertaining to the interpretation of Section 3(k).

Case: Microsoft Technology Licensing, Llc Vs The Assistant Controller Of Patents And DesignsOn 24 April, 2023 (Delhi High Court) 

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The dispute is around the interpretation of Section 3(k) by the court. the Respondent had filed its affidavit in terms of an earlier order however, the court held that the same lacks adequate reasoning. In light thereof, the court directed presence of two Controllers who are versed with the subject matter of Section 3(k) to appear before the court on the date of the next hearing and put forth the stand of Indian Patent Office.

Delhi High Court refuses to condone the delay of 1506 days in filing an appeal against the order of the Registrar of Trademark.

Case: Jagran Prakashan Limited Vs The Registrar Of Trademarks On 20 April, 2023 (Delhi High Court)

The Delhi High Court dismissed an appeal filed by Jagran Prakashan Limited against the order of the Registrar of Trademarks, Delhi, which declared their trademark application for the mark JAGRAN MOTORS to be abandoned due to lack of prosecution. The court did not condone the delay of 1506 days in filing the appeal, as it found that the appellant was given sufficient notice of the order and failed to explain the delay satisfactorily. The court also rejected the appellant’s contention that they were not aware of the order and that no prejudice would be caused to the respondent if the appeal was allowed.

Delhi High Court awards INR 10 Lakhs as damages and costs to Volvo.

Case: Aktiebolaget Volvo & Ors. vs Gyan Singh & Anr. on 25 April, 2023

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In a dispute pertaining to the use of the mark “Volvo” by the defendants, the Delhi High Court decreed the suit in favor of the plaintiff. The court relied on Section 29(6) of the Trademarks Act to hold that the “use” of a mark is not limited to the manufacture of the goods but also includes affixing the impugned mark and offering the goods bearing the impugned mark for sale. In light of the above reasoning, the court held that the defendants, which include manufacturers and sellers of the goods bearing the impugned mark, are infringing the mark “Volvo” and awarded INR 10 Lakhs as damages and costs to the plaintiff.

Other IP Developments

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International IP Developments

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