SpicyIP Weekly Review (May 22-May 27)

[This Weekly Review has been co-authored with SpicyIP intern Shikhar Chauhan. Shikhar is a second-year law student at NALSAR University of Law, Hyderabad. He shares a keen interest in developments concerning IP Law.] 

Here are the quick summaries of the 3 posts, 4 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! 

Highlight of the Week

Bombay High Court blocks Instagram handles for showing short clips of “Scam-1992”!

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Recently BHC issued a dynamic injunction against rogue Instagram handles exhibiting clips of the popular web series “Scam-1992”. Assessing the order, Shikhar highlights how the court has passed an overly broad injunction order by virtue of not defining limitations or boundaries for the injunction.

Other Posts

Trademark musings to beat the Monday Blues!

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Who is the relevant “viewer” of a comparative advertisement? Can the defendant be said to have “bad faith” for registering a mark that has no protection in India? Discussing a bunch of Delhi High Court’s recent orders on trademark disputes, Lokesh raises some questions for readers to deliberate upon.

National Mission on Quantum Technologies and Applications (NM-QTA) – I

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In the first of three part posts on Quantum Technologies and Applications, Mathews explains the concept of quantum computing and briefly touches upon its advantages. He then discusses the National Mission on Quantum Technologies and Applications (NM-QTA).

Case Summaries

  1. Delhi High Court suggests that the Trademarks Registry should conduct a phonetic and word mark search even at a preliminary stage after a trademark application is filed.

Case: Institut Europeen D Administration Des Affaires ,Insead, Association V. Fullstack Education Private Limited & Anr  on 17 May, 2023 (Delhi High Court)

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The plaintiff filed a rectification petition seeking removal of the defendant’s “INSAID” mark from the register on account of being deceptively similar to its prior “INSEAD” mark. The court applied the initial interest confusion test to hold that though the consumer may make an informed choice later, phonetic similarity between the marks will nonetheless establish infringement, and removed the mark from the register. Considering the lack of any fixed guideline on the nature of searches which are required to be conducted after the application, the court suggested that when a mark is submitted for application, then the registry should, even at a preliminary stage, conduct a word mark search and a phonetic search as well.

2. Calcutta High Court sets aside the rejection order by the Patent Office u/s 3(h) since the same does not explain how the subject application falls under “agriculture.”

Case: Decco Worldwide Post Harvest Holdings B.V & Anr. vs The Controller of Patents and Designs & Anr. on 19 May, 2023 (Calcutta High Court)

The appellant applied for grant of patent for an invention which provides for a treatment method for black sigatoka, a leaf-spot disease in banana plants. The application was rejected on the basis of Section 3(h), insufficient disclosure, lack of novelty, lack of inventive step and novelty.  The court however, set aside the impugned order, holding that the same does not explain why the subject invention falls under “agriculture”. The court further held that the findings on lack of inventive step was misdirected as the controller did not consider the explanation in the written submission.  

3. Karnataka High Court vacates Trial Court’s interim injunction on ‘Blinkit’.

Case: Blink Commerce Pvt. Ltd.  v. Blinkhit Pvt. Ltd on 17 April 2023 (Karnataka High Court)

In an appeal against the order of a trial court, the Karnataka High Court vacated the interim injunction granted against the use of the mark “Blinkit” on the grounds of non-use of the “Blinkhit” mark by the respondent. The court also observed that the finding on prima facie case was erroneous and the trial court did not consider the fact that both the services of both the parties were different.

4. Delhi High Court holds that late Satyajit Ray is the first owner of the screenplay of cinematographic work “Nayak.”

Case: RDB And Co. Huf vs Harpercollins Publishers India on 23 May, 2023 (Delhi High Court)

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The dispute pertained to the adaptation of the screenplay of Satyajit Ray’s cinematographic film “Nayak” into a novel by the defendant. The plaintiff argued that the novelization of the screenplay, infringes its copyright as the Karta of the plaintiff HUF is the producer of the film. On the other hand, the defendant argued that the screenplay was authored by late Satyajit Ray and his successor is the owners of the copyright. The court, after assessing Section 17 of the Copyright Act, held that late Satyajit Ray, being the author of the screenplay, is the owner of the copyright in the same and consequent to his demise the right to assign the copyright transferred to his successors.  Thus, the court held that the assignment of the right to adapt the screenplay into a novel by late Satyajit Ray’s successors to the defendant was valid and within the scheme of the Act.

Other IP Developments

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International IP Development

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