[This Weekly Review has been co-authored with 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 5 posts, 16 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
Marking Prof. Basheer’s 47th birth anniversary with something special for our readers, we are extremely excited to announce the SpicyIP Empirical Database Series. The series presently contains 50+ Copyright related empirical studies and 50+ Patent related empirical studies published over the period of the last 15 years, and this will continue to be expanded over time.
Along with our launch of the SpicyIP Empirical Database series today, on Prof Basheer’s 47th birth anniversary, we are also very happy to open up applications for the recently announced SpicyIP Doctoral Fellowship. Click the link for details on eligibility, terms and application requirements. Deadline for the Applications: 11:59pm IST, 23rd June, 2023.
Delhi High Court specifies some contours of publicity rights in India! Recently, tech brands Rario and Striker found themselves in a tussle over the exclusive right to use images and names of famous cricket players on their respective Online Fantasy Sports Platform. However, the court pulled a masterstroke by holding that the use of names and other attributes of celebrities, like cricketers, available in the public domain does not infringe publicity rights. Gaurangi Kapoor highlights the key aspects of the litigation and writes on the findings of the court. Though the order is appreciable for its inclination towards freedom of speech, she critiques it for not considering the right of celebrities under Article 21.
Recently, ISRA entered into a royalty-sharing agreement with Indian music labels. This comes only a few days after the Bombay High Court’s order recognizing the royalty rights of lyrics and musical composers. SpicyIP intern Surmayi Khatana writes on this exciting news clarifying that the agreement is technically between ISRA and the Collective Rights Management Organization, PPL, and not the industry body IMI, as reported in the media. Highlighting the longstanding debate over the recognition of royalty rights of singers by the Indian courts, she comments on the general lack of clarity over the terms of the agreement and its limitations in fully resolving the issue of royalties for singers.
The Delhi High Court has recently been remanding back a lot of unreasoned orders from the IP Offices rejecting a patent or trademark application. Adding to this, the court recently set aside three such orders from the IP Offices in one day! Praharsh Gour writes about these orders from the Delhi High Court and highlights the recently expressed opinion of Justice Jyoti Singh in the IPD Annual Report on such non-speaking orders from the IP Offices. He then explores the reason why these orders need to be well-reasoned and clear and how they can benefit adjudication in the Indian IP regime.
Delhi High Court dismisses Brompton Lifestyle’s appeal against the Single Judge order restraining it from using the Yves Saint Laurent marks.
Earlier, in the proceedings before the Ld. Single Judge, the court restrained Brompton and its associates from using the YSL marks. In this appeal, Brompton contended that Brompton and Beverly were related to each other and the purpose of Brompton was to circumvent the FDI policy restrictions in India for running the YSL Boutique. After perusing the material on record, the court concluded that Brompton had no privity of contract with YSL and the Supply Agreement with Beverly from which Brompton claims to derive its rights was in contravention of the original Franchise Agreement with YSL. Further, Brompton cannot turn back from its stand of being a separate entity having no association with Beverly while coming to this appeal. The conduct of Brompton taking contrary stands before the Ld. Single Judge and giving false undertakings before this court shows that Brompton has approached the court with unclean hands. Additionally, Brompton cannot bring new pleadings wrt overcoming the FDI restrictions to improve its case while approaching the appellate forum. Thus, the court dismissed Brompton’s appeal with a nominal cost of Rs. 50,000/- to be paid to YSL.
Considering that the petitioner is the prior user of the mark and has an earlier registration, Delhi High Court directs the Trademarks registry to remove the respondent’s allegedly similar mark.
This case concerned rectification of the Trademarks Register by removing the respondent’s. The petitioner argued that the respondent’s mark is registered in the wrong class and its “Golden Queen” mark is deceptively similar to the petitioner’s “Golden Crown” mark. They further argued that the competing marks have identical texts and similar layouts on the two packages. Furthermore, Queen and Crown depict cognate ideas, also conveying an element of idea infringement. Since the petitioner has priority over both registration and the user of the said trademark, the court, thus, ordered the Ld. Registrar to rectify the Register by removal of the impugned mark.
Delhi High Court directs the Trademarks Registry to cancel the respondent’s “MGalin” mark and restrains the respondent from using the impugned mark, additionally imposing costs of INR 3 Lakhs on them.
The dispute pertained to the cancellation of the respondent’s trademark “MGalin” for getting it registered based on a false user claim. The petitioner is the sole registered proprietor and user of the “Maxgalin” mark, a Schedule H drug, since 2005. It alleged that respondent No. 1 applied for the registration of “MGalin” in 2018 with false user data of 7th January 2003, to which the respondent failed to adduce any evidence to rebut the assertion. Furthermore, MGalin, also used for treating the same ailment, is trying to capitalize on the goodwill and reputation of the “Maxgalin” mark based on the former’s deceptive similarity. To this, the respondent failed to file any reply/counter-statement, and thus, the court canceled the registration of the “MGalin” mark under Section 57 of the Trade Marks Act, 1999.
The present suit has been filed for seeking the relief of a permanent injunction restraining the defendant from the infringement of the plaintiff’s trademark. The plaintiff submitted that by adopting the mark “MGalin”, the defendant is taking unfair advantage of Maxgalin’s goodwill and reputation. After perusing the material on record, the court concluded that the defendant’s trademark, with its deceptive similarity, is violating the plaintiff’s statutory and common law rights. The court thus passed a permanent injunction decree in favour of the plaintiff and a burden of Rs.3,00,000 to be paid to the plaintiff.
Delhi High Court clarifies that a franchisee is created by a separate agreement and is not the same as a subordinate office.
Case: M/S S. S. Hospitality vs M/S Sagar Ratna Restaurants Pvt. Ltd on 4 May, 2023 (Delhi High Court)
The defendant M/S Sagar Ratna Restaurants filed a revision petition against the Commercial Court’s order. The defendant argued that the plaintiff cannot file the suit in Delhi and instead it is required to be filed in Chandigarh. The defendant relied on Ultra Home Construction Pvt. Ltd. v. Purushottam Kumar Chaubey arguing that if the plaintiff has a principal office at one place and a subordinate office at another place and if in such a case the cause of action has arisen in the location of the subordinate office then the suit has to be filed there and not where the principal office is. The plaintiff submitted that M/S S.S. Hospitality does not have any subordinate offices in Chandigarh, whereby the suit can only be instituted where their principal office is, which is in Delhi. The defendant argued that two outlets that are franchisees of the plaintiff in Chandigarh and they would constitute subordinate offices. The franchisees in question are separately incorporated as a private limited company and the plaintiff asserted that the principal office does not have control over them. The Delhi High Court held that a subordinate office is an office which is in the nature of a branch over which the principal office exercises control. A franchisee is a creature of the franchise agreement, which is separate. The court set the revision aside stating that suit is maintainable in Delhi.
Delhi High Court clarifies the terms wherein Pre-Institution Mediation, under the Commercial Courts Act is not required.
Case: Ms. Yamini Manohar vs Mrs T K D Keerthi on 8 May, 2023 (Delhi High Court)
The defendant filed an application seeking rejection of the plaint as the plaintiff failed to comply with provisions of Section 12A of the Commercial Courts Act which mandate pre-institution mediation before filing a commercial suit and relied on Patil Automation v. Rakheja Engineers. The plaintiff contended that the reliance on Patil Automation was misplaced as the Supreme Court was not concerned with cases where urgent interim relief was contemplated by the plaintiff. They further argued that they had issued a cease and desist notice on 6th November, 2020 to which no response was received. A Notice of Opposition was also filed against the defendant’s trademark application to which the defendant filed a counter statement arguing that the opposition was frivolous. The plaintiff then filed the suit seeking urgent relief. The plaintiff pleaded that they shall ‘suffer an irreparable loss and injury, which cannot be compensated in monetary terms unless an immediate order of injunction is passed’. The Court held that the plaintiff has satisfied Section 12A firstly as the Plaintiff had attempted an amicable resolution which was rejected by the defendants. Secondly, as the Plaintiff has sought urgent interim relief. The Delhi High Court concluded that the Commercial Court had correctly come to the conclusion in their order that as the plaintiff had contemplated urgent interim reliefs, they were not required to exhaust pre-institution mediation as under Section 12A(1) of the Commercial Courts Act.
Delhi High Court restrains the defendant from using the green “Royal Queen” trade dress.
Case: Ads Spirits Pvt. Ltd vs Shubhom Juneja on 4 May, 2023 (Delhi High Court)
The dispute pertained to the defendant’s use of a trade dress that was allegedly similar to the plaintiff’s “Royal Queen” trade dress. The plaintiff argued that the defendant was allegedly selling its product under a different trade dress in Punjab but adopted a deceptively similar trade dress while introducing its good in Delhi. The court prima facie found the competing trade dresses to be similar and held that an average customer might confuse between the two. It also held that given Royal Queen had a dissimilar trade dress earlier, the defendant has adopted a deceptively similar trade dress to create confusion. On the question that the word “Royal” is common to the trade, the court held that it is essentially a matter of trial. On the basis of the above reasons, the court restrained the defendant from using the deceptively similar trademark/ trade dress and clarified that the order will not be applicable to the defendant’s earlier trade dress.
Considering that the defendant’s trademark application has been pending for 14 years, the Delhi High Court grants it 10 days to respond before taking any decision on the plaintiff’s prayer for an interim injunction.
The plaintiff alleged infringement of the registered trademark PANTOCID. The defendants are using the mark PANTOPACID, for Pantoprazole tablets. The defendants applied for registration of their mark on 13th April 2009. The defendant argued that the plaintiff is not entitled to exclusivity over PANTOCID since it is a part of the active pharmaceutical ingredient of the drug and also a part of the name of the ailment that the drug treats. The defendant relied on Sun Pharma Laboratories v. Hetero Healthcare Ltd. The plaintiff argues that the mentioned case is different as the drug, in that case, was LETROZ, which is an abbreviation of the name of the molecule, Letrozole, constituting the drug. The defendant further argued that it has applied to register its mark in 2009, however, the application is still pending. Considering the above, the court held that the matter needs consideration and grants the defendant 10 days to respond against the prayer of interim relief.
Madhya Pradesh High Court allows the defendant to file a patent application and directs the Patent Office to hear the plaintiff before considering the defendant’s application.
Case: Ajay Panwar vs Kishore Chhabra on 8 May, 2023 (Madhya Pradesh High Court)
Defendant No.2 filed for a stay of impugned judgement and decree, which restrains them from using a registered Patent and copyright of Plaintiff/Respondent No.1. The defendant argues that the machinery they are manufacturing has additional facilities than the machinery for which Plaintiff is having patent and copyright registration and both are different. Taking the defendant’s word for it, the Court held that the defendant is free to apply to the competent authority to get a registration and directed the authority to give a hearing opportunity to the plaintiff while considering the defendant’s application. The court further held that if the defendant gets the patent of the machinery, then the defendant will be free to sell its product.
Delhi High Court restrains Villeroy Boch from using “Artis” mark, hold the same to be similar to Jaquar’s “Artize” mark.
The dispute pertained to the adoption of the mark “Artis” by the defendant, which the plaintiff alleged to be similar to its registered “Artize” mark. The defendant however argued that the plaintiff’s mark is a composite mark and the plaintiff does not enjoy registeration over the mark “Artize” alone. The court held that “Artize” is the dominant feature of the plaintiff’s mark and considering that the word mark “Artize-Born from the Art” is registered along with “Artize” device marks, the court held that the mark “ Artize” is capable of being registered. On the defendant’s argument that its “Artis” mark is only a sub-brand and not a trademark, the court held that what matters is how a term is being used, if it is used as a source identifier, then it’s a trademark. After a detailed discussion on acquiescence, and distinctiveness, the court held that the competing marks are similar and restrained the defendant from using the impugned mark.
Delhi High Court observes that there is a need to relook at the exclusions under Section 3(k), directs the registry to share the copy of the judgement with DPIIT.
An appeal was filed against the Controller’s order rejecting the application for a patent on a network architecture and a method enabled to exchange interactive media content on it u/s 3(k). The court dismissed the appeal holding that the invention is barred under 3(k), but observed that there is a need to re-look at the exclusions under the provision, in light of the recommendations of the 161st report of the Parliamentary Standing Committee.
Delhi High Court sets aside the Trial Court order, held that the competing “Sugar Lite” marks are deceptively similar.
This case is an appeal by the plaintiff against the order passed by the Trial Court wherein the court refused to grant an interim injunction to the appellant and had held that the competing marks “Sugar Lite” marks were dissimilar and the competing marks were for different classes of goods. The High Court however, set aside the impugned order and held that the competing goods are allied and cognate, and the marks are deceptively similar.
Delhi High Court sets aside the impugned order from the respondent, holds that the pattern on ‘the surface of a knitting needle’ is distinctive and capable of distinguishing goods.
The Delhi High Court set aside the impugned order from the respondent and directed to publish the appellant’s subject mark. The subject mark pertains to a pattern on the surface of a knitting needle. The impugned order was passed under Section 9 and 11and the respondent argued before the court that the exact mark that is sought to be registered is unclear. The court held that the pattern on the surface is capable of being registered as a mark as the same is distinctive and capable of distinguishing goods, thereby rejecting the grounds of refusal under Section 9 in the present case. Wrt Section 11, the court held that the cited marks are of the appellant only. In light of the above the court set aside the impugned order and directed to publish the mark in the journal.
Delhi High Court observes that order passed u/s 15 should examine all grounds of objection while deciding an application.
An appeal was preferred against the impugned order, rejecting the patent application u/s 10(4). The appellant argued that objection qua Section 10(4)(a) was discussed in the impugned order for the first time. The respondent contended that an objection regarding the scope of the claims was raised in the Hearing Notice, however, the court said that the notice does not specifically cite Section 10(4)(a) of the Act and remanded the matter back for fresh consideration. The court also observed that whenever an order refusing or requiring amendment u/s15 is passed “it is advisable for the Controller to examine all grounds of objection while deciding an application, even if the application is found to be nonpatentable on any one of the preliminary or technical grounds.”
Setting aside the impugned order, the Delhi High Court directs the concerned Asst. Controller to undergo a course in passing judicial orders.
The appeal concerned the respondent’s order rejecting the application for Bone Fixation Apparatus. Looking at the impugned order, the court came down heavily on the Asst. Controller, reprimanding them for “cutting and pasting” paragraphs from the FER and for not supplementing it with their own reason. Setting aside the impugned order, the court also requested to depute the concerned Asst. Controller to undergo a course, by the Delhi Judicial Academy, in passing judicial order.
Bihar High Court directs to form a committee, with 2 Madhubani experts for recommendations to fulfil the requirements u/rule 32 of GI Rules 2002.
The writ was filed owing to the inaction of the State Government in affixing tags on “Madhubani” paintings and not fulfilling the requirements noted in the GI registry’s 2006 communication to the state government. The court noted that it cannot be left to the Industries Dept. to adopt an inspection structure, especially when an expertise in Madhubani Paintings is required and directed the state govt. to form a committee with Padma Shree awardees, Smt. Dulari Devi, and Smt. Bauaa Devi, as experts along with other officers from the state govt. and submit a report on how to comply with the GI registry’s above communication.
- Bombay HC refuses urgent hearing to Republic TV in ₹100 crore trademark infringement suit.
- NERAMAC’s initiative to authorize 800 North East region farmers to use GI-tagging of its processed certifications.
- A Ludhiana court vacated the stay on the release of Imtiaz Ali’s biopic on the life of Amar Singh Chamkila.
- Department of Pharmaceuticals (DoP) to fix the prices of drugs that go off patent to 50 per cent of the current ceiling price.
- Delhi High Court restrains MP based liquor company from using Pepsi’s Mirinda Mark.
- Bombay High Court Restrains Trust In Late Actor Dada Kondke’s Name From Exercising Rights Over 12 Of His Films.
International IP Development
- Issues like agriculture, moratorium on e-commerce, patent waiver for COVID-19 related therapeutics and may come up in the “mini- ministerial meet of the WTO in Paris on June 7.
- India to seek pharma IPR waiver for future pandemics
- Apple loses bid to revive US copyright claims over iOS simulation.
- Gilead Sciences defeats U.S. government lawsuit alleging HIV drug patent violations.