SpicyIP Weekly Review (May 1 – May 6)

[This weekly review is co-authored with SpicyIP intern Srujan Sangai. Srujan is a Second Year student at the National Law School Of India University, Bengaluru and has a keen interest in IPR and Technology Law. His previous posts can be accessed here and here.]

After a busy week at the blog, here are the quick summaries of the 9 posts, 11 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

Music to Many Ears! Bombay High Court Passes a Landmark Order Recognizing the Right to Receive Royalties by Authors of Underlying Works

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In a major development, Bombay High Court recognizes the rights of the authors of underlying works! Praharsh Gour highlights the key findings of the court on the exclusive rights of an owner being unfettered, subject to other provisions of the Act and highlights the long walk to this formal recognition by a court.

The Backlog Challenge Faced by the Indian Trademark Office: Addressing Inefficiencies and Ineffectiveness

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Recently, the Trademark Registry’s notices to deem abandoned 98000 and 82000 trademark applications was the talk of the trademark town. However, when the matter reached the Delhi High Court, the Registry gave an undertaking that it will take down the notices and restore the status of the application. In light of this background, Raja Pannir Selvam shares his thoughts on the state of affairs in the trademarks registry, the problem of trademark application backlogs and suggests ways to resolve it.

CGPDTM to Continue Daily Open House Sessions to address Grievances/Suggestions on IPR Issues

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Niyati Prabhu brings us the news of CGPDTM’s announcement to hold daily Open House sessions for addressing grievances/suggestions on IP-related issues.

Other Posts

An IP-Centric Approach towards AI Regulation in India- Part I

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Looking at the rapid scale of improvement in AI tech, the need for introducing a specific regulation today is more than ever. In the first part of her two-part guest post, Varsha Jhavar highlights some reasons for looking at the IP aspects of AI regulation.

An IP-Centric Approach towards AI Regulation in India- Part II

In part 2 of her 2-part post on the regulation of AI from an IP-centric approach, Varsha Jhavar takes the discussion forward and explores certain aspects of AI that could be regulated to ensure that an AI is developed ethically and responsibly.

Why Moral Rights are Dead Serious: Preserving the Posthumous Moral Right of Integrity – Part I

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In Part I of her two-part guest post, Karishma Karthik suggests that the moral rights of integrity, protecting an author’s reputation against prejudice or harm, can be a tool to preserve their reputation after their demise and discusses the relevant Indian precedents on it.

Why Moral Rights are Dead Serious: Preserving the Posthumous Moral Right of Integrity – Part II

In Part II of her two part guest post, Karishma Karthik Kartik reflects on the practical problems in ascertaining the author’s subjective assertion of prejudice to reputation after their demise and suggests that state intervention maybe the way out.

 All’s Fine with Pine Labs as Karnataka HC Vacates the Problematic Interim Injunction Order on the Point of Sale Machine

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Recently, Pine Industries had to venture through a tough journey when its Point of Sale (POS) machine was injuncted by a trial court in Karnataka on the allegations of patent infringement. Later, the Karnataka High Court vacated the interim injunction holding that the plaintiff incorrectly asserted rights over the POS machine. SpicyIP Interns Rohan Srivastava and Srujan Sangai write about this development and highlight the issue with ex-parte interim injunctions in technical patent dispute.

Workshop on ‘Access to Medicines, TRIPS and Patents in the Developing World’ [Kochi, June 3-7]

Third World Network (TWN) and Inter-University Centre for IPR Studies, Cochin University of Science and Technology, Kochi are jointly organizing a five-day course/workshop on ‘Access To Medicines, TRIPS and Patents in the Developing World’ from June 3-7, 2023 at Kochi, Kerala. The last date to apply for the workshop is May 5, 2023.

Case Summaries

Delhi High Court recognizes the “Flying Eagle” mark as “well known”, restrains the defendants from using it and imposes INR 3 lakhs as damages on them.

Case: Retail Royalty Company & Anr. vs Nirbhay Marg News Broadcast … on 25 April, 2023 (Delhi High Court)

The present suit has been filed seeking the relief of permanent injunction restraining the defendant from the infringement of the trademark and copyright of the plaintiffs. The Court held that “the registration and the long usage of the Flying Eagle mark by the plaintiffs, as also the goodwill vesting in the Flying Eagle mark, entitles the plaintiffs for grant of permanent injunction and decree in terms of the plaint.” The defendant was given an opportunity to be heard but they voluntarily abstained from appearing. Hence, the Court passed a decree against the defendants after analysing the mark of both the parties where it held that the defendant was illegally using a similar mark as that of the plaintiff’s. The Court granted ₹3 lakh damages, payable by the defendants, to the plaintiffs, within 8 weeks. 

Case: Retail Royalty Company & Anr vs Nirbhay Marg News Broadcast on 3 May, 2023 (Delhi High Court)

The plaintiff filed the present application u/s 152 r/w 153 of CPC for rectification of error in the above judgement dt. 25 April, 2023. The plaintiff submitted that the court had made an oral observation with regard to declaring the ‘Flying Eagle’ as a well known mark, however, the same was not recorded in the judgement. The court assessed the arguments in the plaint and the documents placed on the record to modify the above decree and recognized plaintiff’s “Flying Eagle” mark as well known.

Delhi High Court passes an interim injunction order against the defendants, restrains it from marketing Ferric Carboxymaltose.

Case: Vifor (International) Ltd & Anr. vs J.B. Chemicals and Anr. on 1 May, 2023 (Delhi High Court)

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The dispute pertained to the defendant’s use of the plaintiff’s patent on the manufacturing of water-soluble iron carbohydrate complex (Ferric Carboxymaltose). The plaintiff sought an injunction against the defendant alleging infringement of its “product by process patent”, however, the defendant argued that the patent is only a process patent and thus, the defendant should not be restrained if they are using a separate process. They further argued that it merely markets the product and does not manufactures it. They further argued that since no injunction order has been issued against the manufacturer in a separate connected case, no injunction order should be issued against them. The court however disagreed and interpreted the defendant’s activities to mean “offering for sale” under Section 48. Thus, the court held that the balance of convenience is in the favor of the plaintiff and continued the interim injunction order till 2nd May. Later on 2nd May the matter was listed for 11th May.

Delhi High Court finds the defendant liable for disobedience of the injunction order, restraining them from infringing Crizotinib patent, and contempt of court.

Case: Sugen,Inc.And Ors. vs Mr. K Vijaya Prakash on 25 April, 2023 (Delhi High Court)

The plaintiff filed an application under Order XXXIX Rule 2A alleging that the defendant have violated the ex-parte interim injunction order dated January 6, 2016. The dispute concerned the alleged infringement of the Crizotinib patent by the defendant. Previously an ex parte injunction order was passed by the court but later the plaintiff submitted screenshots alleging that the defendants have not complied with the court’s order. After filing the evidence and the cross-examination, it was held that the plaintiff had provided accurate screenshots and the defendants were held liable for disobedience of the injunction order and contempt of court. The defendant was directed to submit an affidavit within four weeks with regard to the quantum of the punishment.

Reading trademark squatting under the ambit of “bad faith” u/s 11(10), Delhi High Court revokes the impugned BPI mark of the defendant.

Case: BPI Sports Llc vs Saurabh Gulati on 27 April, 2023 (Delhi High Court)

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The plaintiff filed an application for the rectification of the register and alleged that the registration to the defendant’s BPI mark should be revoked as the same was obtained by fraud. The plaintiff argued that its mark enjoys a global reputation and the defendant was aware of the same by being a former importer of the plaintiff’s products. The court held that though the plaintiff’s mark is neither well-known nor registered in India nor enjoys a transborder reputation in India it still allowed the application by finding that the plaintiff is entitled for relief under Section 11(10)(ii) whereby the Registrar shall take into consideration the bad faith in filing the application. Relying on the plaintiff’s argument that the defendant is a “trademark squatter” it ruled that the registration was obtained as “bad faith” u/s 11(10) and directed to remove the impugned mark.

Delhi High Court passes a quia timet injunction order against the defendant on the basis of its trademark application for an allegedly similar “Botanic Hearth” mark.

Case: Volans Uptown Llc vs Mahendra Jeshabhai Bambhaniya on 28 April, 2023 (Delhi High Court)

The plaintiff filed an application seeking quia timet action against the defendant. It argued that the defendant has filed an application to register a similar “Botanic Hearth” mark on a proposed-to-be-used basis. It further alleged that the defendant has asked for INR 18,00,000/- from the plaintiff to relinquish its rights in the trademark application. The court also considered the documents on the record that included trademark applications by the defendant for different renowned brands to make out the defendant’s motives to engage in infringing activities and weaken the rights of registered proprietors. On the basis of the above averments, the court found a prima facie case against the defendant and passed an interim injunction order.

Delhi High Court sets aside the order of the Registrar of Trademark, rejecting the application u/s 11 and 9(1)(b), for lacking reasons and non-use of discretionary powers. 

Case: Shell Brands International Ag vs The Registrar Of Trade Marks on 28 April, 2023 (Delhi High Court)

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The plaintiff filed an appeal, against the order of the Senior Examiner of Trademarks rejecting their application for registration of a device mark consisting of a drum with red and yellow colours in class 4 for oils, greases, lubricants and fuels. The main grounds for rejection were that the mark was similar to earlier marks under Section 11 and devoid of distinctive character under Section 9(1)(b) of the Trade Marks Act, 1999. The order also mentioned that the appellant did not file a user affidavit as required by Rule 27 of the Trademark Rules, 2002. The appellant challenged the order on various grounds, such as the absence of any similar or identical marks cited by the examiner, the irrelevance of the four judgments referred to in the order, and the lack of any mandatory requirement to file a user affidavit. The Delhi High Court allowed the appeal and set aside the impugned order. The court held that the examiner failed to provide any evidence of similarity or identity with earlier marks under Section 11, and merely reproduced the language of Section 9(1)(b) without explaining how the mark fell under any of its grounds. The court also held that Rule 27 gave discretion to the examiner to call for a user affidavit, which was not exercised in this case. The court directed the examiner to proceed with the advertisement of the mark within three months.

Delhi High Court sets aside the order from the Controller of Patents for rejecting the application on the grounds other than the one mentioned in the hearing order. 

Case: Grupo Petrotemex S.A. De C.V. vs Controller Of Patents on 28 April, 2023 (Delhi High Court)

The appellant, Grupo Petrotemex S.A. De C.V., had filed a patent application for a process of producing polyethylene terephthalate, which was rejected by the Patent Office on the ground of lack of inventive step with regard to prior art. The appellant challenged the rejection order, arguing that the objection in the hearing notice was with regard to novelty and not lack of inventive step . However, the Patent Office goes beyond the objection of lack of novelty and refused the grant of patent under Section 2(1)(ja) which provides for lack of inventive step. The court set aside the rejection order, remanding the matter back to the Patent Office for fresh consideration. The court also directed the Patent Office to pass a reasoned order within four months.

Delhi High Court restrains the defendant from using the CNN mark. Holds it to be deceptively similar to the plaintiff’s CNN mark.

Case: Cable News Network Inc vs Ctvn Calcutta Television Network Pvt. Ltd. on 28 April, 2023 (Delhi High Court)

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The dispute is about a trademark infringement alleged by the Plaintiff (CNN) against the defendants. Two issues were dealt with in this case: jurisdiction and trademark infringement. First, the defendant’s contention of non-jurisdiction of the court over this case was rejected after a comprehensive analysis of the multiplicity of case laws and fact-situation. The Court concluded that the plaintiff certainly conducted business within the Court’s jurisdiction, given the nature of its activities. Hence, it ruled that the plaintiff’s case is maintainable under both S. 134(2) of the Trademarks Act and S. 20 of CPC. The Court also made out a prima facie case of infringement against the defendant, given the similarity between the used trademark and the same market (and sector) they cater to. The judge also noted that the stark similarity in the stylization of the logos indicate deliberate conduct on the defendant’s part. The Court restrained the defendants from using the plaintiff’s (CNN) trademark till disposal of the case and also directed them to remove the impugned trademark, wherever used. 

Delhi High Court restrains the defendant from using the “Vivanta” mark, imposes INR 6 Lakhs as costs on them.

Case:The Indian Hotels Company Limited v. Vivanta Hospitality Pvt. Ltd. on 28 April, 2023 (Delhi High Court)

The dispute pertained to the defendant’s adoption of the mark “Vivanta”, which is registered in the favour of the plaintiff and has been in use by them since 2008. Earlier in July, 2022 the court had passed an ex-parte interim injunction order, restraining the defendant from using the mark. Subsequently, though the defendant did not file the written statements, it did submit to have changed the name of its corporation and thus, sought the court to not impose damages or costs. The court, after comparing the competing marks, held that “the defendant has not only taken unfair advantage of the reputation and goodwill of the plaintiff’s mark but has also deceived unwary customers of their association with the plaintiff.” The court also considered the fact that the defendant was earlier using a different name and was engaged in an unrelated business and attributed its adoption of the impugned mark in relation to the business identical to that of the plaintiff as the malafide intention of the defendant. The court passed a summary judgement and decreed the suit in favour of the plaintiff and imposed INR 6 lakhs as costs on the defendant in light of the court fees paid by the plaintiff and expenses incurred by it in the commission of the execution.

Delhi High Court restrains the defendant from using “Wingreens Monsoon Harvest”, finding it to be similar to the plaintiff’s “Monsoon Harvest” mark.

Case: Preetendra Singh Aulakh v. Green Light Foods Pvt. Ltd. on 2 May, 2023 (Delhi High Court)

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The dispute pertained to the adoption of the “Monsoon Harvest ” mark by the defendant. Later it was submitted that the defendant has changed its mark to “Wingreens Monsoon Harvest ” and argued that the competing marks (the plaintiff’s “Monsoon Harvest Farms” and the defendant’s “Wingreen Monsoon Harvest”) are different. The court however, held that the mere addition of the word “Wingreens” is not sufficient to differentiate between the two marks. And held the marks to be similar. The parties further argued that the other party has taken a contrary stance with regard to the similarity of the mark and considering both the parties have taken contradictory stands before the registry, the court proceeded to decide the case on merits. Finding the goods of the parties as allied and cognate, the court held that the difference in the class of the goods will not be material and passed the interim injunction order.

IP Developments

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International IP Development

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