SpicyIP Weekly Review (May 29- June 3)

Last week saw a bunch of interesting IP developments. The Delhi High Court gave specific directions to the Indian Patent Office while passing speaking orders rejecting patent applications. In another landmark order, the Delhi High Court clarified that the requirement to pay a 1 Lakh fee for including a mark in the list of “Well-Known” trademarks cannot be avoided even when a court recognizes the mark as well-known. From the corridors of the other High Courts, the Karnataka High Court clarified that pending civil proceedings in a copyright matter will not halt the simultaneous criminal proceedings. 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!

Highlights of the Week

Delhi High Court clears the air around Copyright of Satyajit Ray’s ‘Nayak’

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Refusing to entertain the Producer’s plea of copyright infringement, the Delhi High Court clarified that Satyajit Ray owned the copyright for the screenplay of Bengali magnum opus Nayak. In doing so the court essentially clarified that the agreement between Ray and the Producers was in the nature of “a contract for service” and not “a contract of service”, explains Niyati. She also highlights the other key observations of the court, clarifying the difference between the rights of a producer and the rights of the author of an underlying work.

Hear Me Out! Assessment of Phonetic Similarity is as Important as that of Visual Similarity: An Assessment of INSEAD v. Fullstack Education

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Delhi High Court directs the Registry to assess the phonetic similarity between trademarks. But is it within the Court’s powers to do so? Praharsh and Surima Singh write on the INSEAD v Fullstack Education case.

Other Posts

Webinar on ‘The Proposal to Amend the Indian Patents Act: Adverse Implications for Access to Medicines’ [June 2]

We informed our readers that the Third World Network and the Working Group on Access to Medicines and Treatments organized a webinar on “Proposal to Amend the Indian Patents Act:  Adverse Implications for Access to Medicines” to raise awareness on the potential implications of the proposed amendments to the Patent Act.

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

In the second part to his Three-part post on National Mission on Quantum Technologies and Applications (NM-QTA), Mathews provided an overview of the international quantum technology space. In his post he discussed the relevant arrangement in the US, China, the EU and the UK with regard to quantum technology.

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

In the third part of the three part post on National Mission on Quantum Technologies and Applications (NM-QTA), Mathews suggests that to capitalize on the quantum technology, India should position itself to the top of the quantum value chain in order to reap the first mover advantage. However, looking at the existing publicly available documents on this, he raises apprehension that presently this understanding is not realized in India and that it is a late entrant in the race.

Case Summaries

Qualifiers identified by the USPTO, while granting the registration to a mark, will not apply on the registration granted by the Indian Trademark Registry as the registration was granted without any disclaimers.

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Case: Savita Oil Technologies v. Valvoline Licensing and Intellectual Property LLC on 11 May 2023 (Delhi High Court)

A Division Bench of the Delhi High Court dismissed an appeal against the impugned order rejecting a rectification petition against the mark “All Fleet.” The court held that the mark “All Fleet” registered in favor of the respondent, is not descriptive and not relatable to automobiles. The court further held that the mark is not common to the trade. Further, on the contention that the subject mark was granted registration with qualifiers by the USPTO, the court held that the same qualifiers will not apply in the present case as the Indian registry granted the mark without any conditions and dismissed the appeal.

Delhi High Court passes directions on speaking orders rejecting patent applications. Suggests Controller General to consider organizing a course on writing quasi judicial orders for the officers in the patent office.

Case: Huhtamaki Oyj And Anr vs Controller Of Patents on 26 May, 2023 (Delhi High Court)

The appeal pertained to the non-speaking rejection order by the patent office. The Delhi High Court, taking a stern view against this “endemic problem” passed directions that the order rejecting a patent application/ accepting or rejecting  a pre or post grant opposition needs to be a speaking order; when objections are raised in the FER and Hearing Notice and reply of the applicant are worthy of acceptance then orders granting the patent should explain why the application was accepted for the aid of the post grant opponent(if any); requirement of speaking order will not apply in case a patent is granted when no objections are raised in FERs or Hearing Notice and no oppositions are filed against the applications. The court also asked the Controller General to consider whether a course on writing quasi judicial orders, organized by Delhi Judicial Academy, for their officers can be useful.

Delhi High Court restrains Bodhisatva Charitable Trust from using the “Mayo” mark. Holds its adoption by the defendant to be dishonest.

Case: Mayo Foundation vs Bodhisatva Charitable Trust on 29 May, 2023 (Delhi High Court)

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The case pertains to a trademark dispute between the parties over the use of “MAYO” Trademark. The court held that the defendant has dishonestly adopted the mark as it was aware of the plaintiff’s mark and gave no reasons for adopting the similar mark. On the allegation of acquiescence, the court observed that the plaintiff had issued a cease and desist notice to the defendant and even before institution of the suit, they initiated mediation proceedings and thus held that there was no acquiescence. The court also put hospitals and educational institutions in the same sector and passed the interim injunction order.

Delhi High Court clarifies that the coverage of a trademark must be decided on the basis of the registration certificate.

Case: Fybros Electric Private Limited vs Vasu Dev Gupta on 25 May, 2023 (Delhi High Court)

The case pertains to Section 57 of the Trademarks Act where the petitioner was aggrieved by the respondent’s registration of the NJBROS mark. The defendant argued that the classes for both the subject marks are different. The court however held that the subject goods are allied and cognate and clarified that the expression “covered by the trademark” cannot be equated with “in respect of which the mark is used” and that coverage of a trademark must be decided based on registration certificate and thus directed that the impugned mark be removed from the Register.

Karnataka High Court clarifies that pending civil proceedings will not halt the criminal proceedings under the Copyright Act.

Case: M/S Mangalore New Sultan Beedi vs State Of Karnataka on 31 May, 2023 (Karnataka High Court)

The writ petition was filed against inaction by the police on an FIR arising out of section 63, Copyright Act, owing to the pendency of a civil suit on the same cause of action. The court issued a writ of Mandamus, holding that under Section 63 same fact matrix may give rise to a cause of action in tort, contract and crime and thus, unless the law prohibits, the police cannot keep the complaint pending on the ground that a separate civil proceeding on the same facts is pending.

Delhi High Court clarifies that payment of the fees of INR 1 Lakh to include the mark in the Registry’s list of well-known trademarks is mandatory.

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Case: Tata Sia Airlines Limited vs Union Of India on 25 May, 2023 (Delhi High Court)

The writ petition was filed seeking inclusion of Vistara, which is declared as a well-known mark by the court, in the list of well-known marks maintained by the Registry. The Registry on the other hand argued that regardless the recognition by the court, the application in TM-M along with the fees of INR 1,00,000/- must be filed under Rule 124. The Court perused the relevant rules and held that Entry 18 in the First Schedule to Rule 11 clarifies that the fees of 1, 00,000/- is to be paid not only for determination but for inclusion of the mark in the list of Well-known Trademark as well. On the petitioner’s argument that after declaration of a mark as well-known, Registry has to just add it to the list of well known marks, the court held that it cannot test the prescribed fees on the yardstick of work done by the Registrar.

A division bench of the Delhi High Court set aside the Trial Court’s order refusing an interim injunction against the defendant’s use of “Vistara” Mark. Holds that the defendant’s adoption of the similar mark was dishonest.

Case: Tata Sia Airlines Limited vs Vistara Home Appliances Private Ltd. on 31 May, 2023 (Delhi High Court)

An appeal was preferred against the order of the Trial Court whereby the court had refused to restrain the respondent from using the ‘Vistara’ mark for goods under classes 7, 9 and 11. The Division Bench however, set the impugned order aside. The Court took note of the fact that the parent company of the appellant is involved in the business of FMCG products and held that merely because the appellant’s marks were registered in separate classes, the Trial Court cannot deny the relief of the interim injunction. The court also held that the adoption of the impugned mark by the respondent was dishonest since the inception and also refused to entertain its plea that there are other “Vistara” marks of third parties. 

Delhi High Court vacates the interim injunction granted against the use of “E! Now” and “E! News Now” marks by the defendant.

Case: Bennett, Coleman & Company  vs E! Entertainment Television Llc on 31 May, 2023 (Delhi High Court)

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The Delhi High Court vacated the interim injunction granted to the plaintiff against the defendant’s use of the “E! Now” and “E! News Now” marks by the defendant. The plaintiff has registrations over the “Now” formative marks in classes 38 and 41 and alleged that adoption of the above marks by the defendant infringes its rights in the “Now” formative marks. The defendant also argued that the plaint should be returned as neither the plaintiff nor the respondents work for gain in New Delhi nor any cause of action has arose there. The court however held that it has the jurisdiction to hear the matter, based on the cease and desist notice issued by the defendant and the rejoinder filed in the suit seeking quia timet injunction. The court then vacated the injunction on the basis of defendant’s prior use, contradictory stance on the transborder reputation of the defendant’s marks, non-use of the “Now” mark by the plaintiff under class 41, despite the registration.

Delhi High Court suggests the Patent Office to update the Patent Manual for better guidance on matters like “objections of lack of clarity” and “succinctness“.

Case: Agfa Nv & Anr. vs The Assistant Controller of Patents on 2 June, 2023 (Delhi High Court)

The Delhi High Court allowed an appeal against the order of the Controller of Patents and directed to grant the patent to the appellant on the subject invention. The Controller had rejected the patent application for lack of inventive steps, lack of clarity and succinctness and common general knowledge. The court, owing to the lack of a clear understanding on “lack of succinctness” in the Indian Patent Manual, relied on the explanation in the Australian Patent Manual, to hold that though the claims in the present case are lengthy, they are not unnecessarily lengthy. Furthermore, on the “common general knowledge” objection, the court held that the impugned order does not provide any reference of the ‘common general knowledge’. The order also has a postscript wherein the court has recommended the Patent Office to update the Patent Manual so that better guidance on dealing with intricate matters like objections of lack of clarity and succinctness.

Delhi High Court passed a dynamic injunction against 100+ websites, restraining them from exhibiting “Spider-Man: Across the Spider-Verse”  and “Spider-Man: Into the Spider-Verse.”

Case: Sony Pictures Animation Inc. v. FlixHD.CC/ and Ors. on 29 May 2023 (Delhi High Court)

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The plaintiff sought a dynamic injunction against 100+ allegedly rogue websites, restraining them from exhibiting “Spider-Man: Across The Spider- Verse” and “Spider-Man: Into the Spider-Verse.” Relying on UTV Software Communications decision, the court held that the impugned websites are rogue websites and passed a dynamic injunction restraining them from exhibiting the plaintiff’s work and also directed the government to block access to these and other mirror sites.

Delhi High Court permanently restrains Kent RO from using the “Kent” mark on fans.

Case: Kent Cables Private Limited & Ors. vs Kent Ro Systems Limited & Ors. on 30 May, 2023 (Delhi High Court)

In these connected matters on similar facts, the Delhi High Court permanently restrained Kent RO from selling fans under the mark “Kent”. Both parties have been using “Kent” marks for a long time, over a variety of products. The order concerns the use of Kent RO’s use of the mark for fans. Here, the court accepted that Kent Cables does not have registration for fans, however, accepted that it is the prior user of the mark for fans.  The court also noted Kent RO’s failure in protecting its interest earlier, despite the knowledge of Kent Cables’s use of the mark for fans. Consequently, the court held that Kent Cables has made out a case of prior user and passing off by establishing its reputation and goodwill and that there will be confusion if Kent RO sells its fans under the “Kent Mark”.

Other Developments

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International IP Developments

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