SpicyIP Weekly Review (June 5- June 11)

Last week saw some interesting IP developments. The Bombay High Court passed two important orders related to the assignment of copyright, and the Calcutta High Court passed a first-of-its-kind order on the Plant Varieties Act, granting an interim injunction to the plaintiff.

Read on below for an update on these as well as other developments and discussions that took place on the blog in the last week. Anything important we’re missing out on? Drop us a comment below!

Highlight of the Week

Vistara: The Limitless Possibilities of (Trademark) Expansion

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Recently, a Division Bench of the DHC held that Vistara Home Appliances’ use of the Vistara trademark was in bad faith and likely to cause confusion among consumers. However, surprisingly the Court overlooked the crucial factors that play a significant role in determining trademark confusion. Furthermore, as per the ruling, a business could be found liable for trademark infringement even if the competing marks were not identical and if it did not intend to cause confusion. To delve deeper into this ruling and its implications, don’t miss our latest post by Aparajita.

Other Posts

[Sponsored] PatSeer Announces the Launch of a New AI-driven Semantic Search Built on a Custom-Trained GPT Model

We brought to our readers this sponsored post by PatSeer on the launch of their new AI-driven semantic search.

Case Summaries

Bombay High Court clarifies that termination of an agreement will not result in automatic re-assignment of the copyright.

Case: Super Cassettes Industries Pvt. Ltd. v. RBEP Entertainment Pvt. Ltd. and Hungama Digital Media Entertainment Pvt. Ltd. v. RBEP Entertainment Pvt. Ltd. on 05 June, 2023 (Bombay High Court)

In a dispute pertaining to the interpretation of the terms of a Long Form Agreement (LFA) between the parties, the Bombay High Court has clarified that termination of the agreement will not result in the automatic re-assignment of copyright to the original assignor. The Court held that the requirement for a written assignment agreement under Section 19 of the Copyright Act is mandatory and later emphasized on clause 6.1 of the LFA to hold that a deed of re-assignment should have been executed for re-assignment of the copyright.

Bombay High Court clarifies that for interim relief, the plaintiff must file all the relevant documents.

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Case: Shemaroo Entertainment Limited vs Super Cassettes Industries Pvt Ltd Ors on 05 June 2023 (Bombay High Court)

The Bombay High Court refused to grant an interim injunction for the lack of a prima facie case. The plaintiff had alleged that it was the copyright owner of the songs in the 24 films, which were put out by the defendant on YouTube. However, the Court held that no link documents were filed by the plaintiff for 9 out of the 24 films and for the other 15 films, the plaintiff was unable to establish that only audio rights were assigned to the defendants.

Calcutta High Court clarifies that a civil court does not have jurisdiction to determine the validity of registration granted under the Plant Varieties Act.

Case: Pan Seeds Pvt. Ltd. v. Ramnagar Seeds Farm Pvt. Ltd. on 9 June 2023 (Calcutta High Court)

A division bench of the Calcutta High Court allowed an appeal against the District Judge’s order and clarified that a civil court does not have jurisdiction to determine the validity of registration granted under the Protection of Plant Varieties and Farmers’ Rights Act, 2001. The Court reached this understanding after a combined reading of Section 28 and Section 89 of the Act.

Himachal Pradesh High Court grants ex-parte interim injunction to Mohan Meakin, restrains Devicolam Distilleries from using “OMR” mark for being prima facie similar to the “Old Monk Rum” mark.

Case: Mohan Meakin Limited vs. The Devicolam Distilleries Ltd. on 06 June 2023 (Himachal Pradesh High Court)

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The dispute pertained to the defendant’s use of ‘DDLs OMR’, mark and trade dress and its alleged similarity with the plaintiff’s registered ‘Old Monk Rum’ mark and trade dress. Apart from allegations of infringement, the plaintiff alleged that by adopting a similar mark and trade dress, the defendant is also passing off its goods as the plaintiff’s. Finding a prima facie case, the Court passed an ex-parte interim injunction order, restraining the defendants from using the impugned ‘OMR’ mark and trade dress.

Decreeing the suit in favor of New Balance Athletics, the Delhi High Court imposed costs of  INR 4 Lakhs on New Balance Immigration Pvt. Ltd.

Case: New Balance Athletics Inc. v. New Balance Immigration Private Limited on 01 June 2023 (Delhi High Court)

The plaintiff filed an application Order XXXIX Rule 2A for non-compliance of the earlier interim order, against the use of “New Balance” mark, by the defendant. Despite being served with summons, the defendant did not appear before the Court nor did they file any written statements. The Court, after its assessment, held that the plaintiff was able to show that the goodwill of its “New Balance” mark extends beyond its goods and the defendant’s “NB” mark, used for immigration and visa services, is similar to the plaintiff’s “New Balance” mark. For the above reasons, a decree of permanent injunction was passed by the Court. Owing to the dishonest adoption of the impugned mark and continued use despite the interim injunction, the Court imposed costs of Rs. 4,00,000 on the defendant.

Delhi High Court refuses Marico Ltd. an interim relief against Dabur’s Amla oil print advertisement.

Case: Marico Limited vs Dabur India Limited on June 2, 2023 (Delhi High Court)

This case pertained to the disparagement of the plaintiff’s “Nihar Amla Oil” through WhatsApp messages and a print advertisement. The defendant disputes any intention to disparage the plaintiff’s product and asserts legitimacy in their newspaper advertisement. The plaintiff was granted an ex-parte interim injunction but the same was later suspended on July 19, 2022. The plaintiff filed the present application seeking the revival of the interim order. The Court disposed of the application making three key observations- First, the plaintiff suppressed material facts about the orders from the Bombay High Court on dispute pertaining to similar facts; Second, the plaintiff indulged in forum shopping by approaching both Bombay and Delhi High Court and; Third, there is no disparagement by the print ad of the defendant. With regard to the Whatsapp messages, the defendant submitted that it has no objection to an injunction over the circulation of the Whatsapp messages, and thus, the Court restrained it from circulating the impugned message.

Other IP Developments

International IP Developments


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