SpicyIP Weekly Review (July 17- July 23)

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Last week we published a literature review cum blog post on Artificial Intelligence and IP. We also came across interesting orders from different high courts, notably the Delhi High Court decision on RX Prime and Canva’s patent infringement dispute and two orders on visual similarity between the competing marks. Anything important we’re missing out on? Drop us a comment below! 

This post is co-authored with SpicyIP intern Abhijeet Audichya. Abhijeet is a fourth-year law student at Hidayatullah National Law University, Raipur, and is interested in the intersection of TMT and IP sectors.

Highlights of the Week

Artificial Intelligence and IP: A Literature Review

An AI generated image of a library with  an opened book in the centre
Image generated from DeepAI

While there is a plethora of discussions around different aspects of AI, there is surprisingly a dearth of public policy discussions on the intersection of AI and IP in India. In this literature review cum blogpost, Yashna Walia looks through the various government policy documents on AI to see what they have to say about IP.

Case Summaries

Delhi High Court grants a permanent injunction to Allied Blenders in a trademark infringement case concerning ‘Officers Choice’

An image of a bottle of "Officer's choice" whiskey.
Image from here

Allied Blenders and Distillers Pvt. Ltd. v. Ashok Kumar conducting activities through webpage on 13 July, 2023 (Delhi High Court)

The plaintiff sought a permanent injunction against the unauthorised use of its well-known mark ‘Officer’s Choice’ by the defendant. The plaintiff’s representative came across a web page on Facebook containing obscene posts wherein the defendant had dishonestly adopted the plaintiff’s mark and described itself as ‘@officerchoicel. Wine/Spirits.’ The court had earlier granted an interim injunction in favour of the plaintiff and ordered the Grievance Officer of Facebook to take down the impugned web page. Since the objectionable web page was taken down, the court found that no further purpose would have served in continuing the suit. Therefore, the court issued a permanent injunction against the defendant from using the mark or making any reference to the plaintiff’s product on any social media platform.

Delhi High Court opines that visual distinctiveness may not be of much relevance while examining aspects of trademark infringement

Zenith Dance Institute Pvt. Ltd. vs Zenith Dancing and Music on 18 July, 2023 (Delhi High Court)

The dispute pertained to the use of “Zenith” device mark by the defendant. The plaintiff is the proprietor of the word marks “Zenith” and other “Zenith” device mark and the defendant had registration over “Zenith” device which was later revoked by the IPAB, causing the defendant to use the impugned variant. The court estopped the plaintiff from claiming deceptive similarity of the defendant’s device mark with its word mark, owing to its earlier plea before the Registry. The court nonetheless granted it the interim injunction considering that the dominant feature of both the competing device marks was the word “Zenith.” The court interestingly observed that “if the principle defining feature of two marks, such as the name of the two marks, is the same, or is confusingly similar, the fact that the two marks may be visually distinct from each other may not be of much relevance when one examines the aspect of infringement.” 

Delhi High Court grants well-known status to popular clothing brand’s mark ‘Supreme’

Chapter 4 Corp. v. Dhanpreet Singh Trading as M/S Punjabi Adda on 11 July, 2023 (Delhi High Court)

Image of the "Supreme" logo
Image from here

The plaintiff sought a permanent injunction against the defendant for using its red-box device mark ‘SUPREME.’ The defendant was using the mark on their T-shirts and was selling them through their websites. Earlier an ex-parte ad-interim injunction was granted in favour of the plaintiff and later the parties settled the suit. The court thus decreed the suit in favor of the plaintiff and additionally declared the plaintiff’s mark as ‘well-known’ on the basis of its averments in the plaint and documents placed on record. It also stated that considering the extent of its usage, the mark has acquired a secondary meaning.

Karnataka High Court partially allows an appeal against the Commercial Court’s order imposing civil imprisonment on the appellants for willfully disobeying its trademark injunction order

T. Sudhakar Pai and Ors vs M/S Manipal Academy of Higher Education on 17 July, 2023 (Karnataka High Court)

The appellants, employees, and office bearers in the same company, filed the present appeal contesting the compensation and the civil imprisonment ordered by the Commercial court for wilfully disobeying the court’s earlier injunction order. The appellants specifically argued that appellants 2 and 3 should not be prosecuted since they were not a party to the suit. The High Court held that the finding with respect to appellant no. 1 was accurate since the appellant was holding a responsible position in the organization and induced others to disobey the injunction order. However, the court set aside the imprisonment order with regard to appellant no. 2 and 3, since they were obeying orders of appellant no. 1.

Commercial Court, Bengaluru grants interim injunction to Divya Spandana against using her images in the trailer of the film “Hostel Hudgaru Bekagiddare”

Divya Spandana vs. Gulmohar Films Pvt. Ltd. on 17 July, 2023 (Commercial Court Bengaluru)

An image of "Hostel Hudgaru Bekagiddare" poster
Image from here

The suit was filed by the plaintiff seeking directions from the court to take down the trailer of the cinematograph film “Hostel Hudgaru Bekagiddare” alleging violation of her personality and moral rights. The plaintiff had originally agreed to feature as a guest appearance in the film and later agreed to be a part of only its promotional videos. One of the conditions for her appearance was that prior to using her image, the defendant must seek her approval. Despite this agreement, the defendant sent clips of the scenes featuring her to seek her permission and upon saying that she’ll review and confirm the same, the defendant released the trailer. The court held that the plaintiff has made an exceptional circumstance, required the grant of interim injunction, and passed the present order.

Delhi High Court refuses to grant an injunction owing to the plaintiff’s earlier plea of dissimilarity between the competing marks before the Trademarks Registry

Vasundhra Jewellers Pvt. Ltd. vs M/S Vasundhara Fashion Jewellery on 19 July, 2023 (Delhi High Court)

The dispute pertained to the defendant’s use of the impugned mark ‘Vasundhara’. The plaintiff, registered proprietor of ‘Vasundhra’, claimed prior use since 1999, whereas the defendant, claimed use since 2001. The Delhi High Court held that since both the marks are registered a case of infringement does not arise. The court, further, estopped the plaintiff from taking a contrary stance to the one taken earlier, before the Registrar on dissimilarity between the competing marks. Holding that the marks are visually dissimilar, after assessing them and relying on the plaintiff’s earlier stance, the court rejected the application for an interim injunction. 

Emphasizing the need to establish the spill over of transborder reputation, the Delhi High Court restrains VIP Industries from using the ‘Carlton’ mark

Carlton Shoes Ltd. & Anr. vs VIP Industries Ltd. on 17 July, 2023 (Delhi High Court)

An image of "VIP" logo.
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This order decided on interim injunction applications filed by parties against each other over the use of the mark “Carlton”. The plaintiff filed the present suit after receiving a C&D notice from the defendant who alleged to have acquired the mark under an assignment agreement. Considering that both the parties have registration over their respective ‘Carlton’ marks, the court ruled that no party can allege infringement in the present case. However, on the question of passing off the court held that the defendant failed to establish the spill over of transborder reputation of its mark in India while the plaintiff was able to show formidable goodwill and first use in the Indian market and thus granted an interim injunction to the plaintiff. 

Delhi High Court clarifies that Section 91 cannot be used to appeal against administrative orders of WIPO

Ashwa Ghosh vs Vizrt Ag And Others on 19 July, 2023 (Delhi High Court)

The plaintiff filed an appeal against the administrative order of WIPO under Section 91. Clarifying that Section 91 provides for an appeal against the orders passed by the Registrar, the court dismissed the appeal. 

Delhi High Court restrains Canva from using its “Present and Record” feature, finds it to be prima facie infringing RX Prism’s “My show and Tell” patent

RxPrism Health Systems Private Limited v. Canva Pty. Ltd. on 18th July, 2023 (Delhi High Court) 

An image of "Canva" logo
Image from here

The present suit was filed by the plaintiffs seeking a permanent injunction against the defendant’s alleged infringement of the plaintiff’s system of creating interactive content using ‘Picture in Picture’ feature with ‘Call to Action’ button. The plaintiff alleged that the defendants’ “Present and Record” feature is almost identical to its system whereas the defendant argued that their product does not have a layered presentation or a PIP second media. They also cited several prior art documents to allege that the plaintiff’s patent was invalid. The court held that the distinction the defendant sought to draw was inconsequential and upon comparing the features of the products, the court held that all the same steps as the plaintiffs’ product are available in the defendant’s product. The court further held that the plaintiff’s product is inventive over the cited prior art. Finding a prima facie case of infringement the court passed an interim injunction order and directed the defendant to deposit a sum of Rs. 50 lakhs with the Registrar General of the court as a security for the Plaintiff’s claims for past use of the infringing feature and also awarded costs of Rs. 5 lakhs in favour of the plaintiff owing to the language used in the written statement against the plaintiff.

Delhi High Court reiterates that amended to Rule 138 does not violate India’s PCT commitments

Humanity Life Extension Llc vs Union Of India And Anr. on 20 July, 2023 (Delhi High Court)

Aggrieved by the Controller’s order rejecting the petitioner’s National Phase application, the petitioner filed a writ seeking a declaration that amendment to Rule 138, which took away the power to extend the time to file an international patent application by one month, is ultra vires. The plaintiff argued that it missed the deadline unintentionally, and as per Regulation 49.6 of the PCT Regulations, the designated office is required to reinstate rights in respect of the International Application. The petitioner thus argued that the amendment to Rule 138 of the Patents Rules is ultra vires. The court, however, rejected the petition and relied on Diebold Self Service Systems v. Union of India and Ors. to reiterate that India has expressed its reservations in respect of Regulation 49.6(f) of the PCT Regulations.

Tis Hazari Court, Delhi, vacates an ex-parte injunction granted to Polo/ Lauren Company. Holds “Polo Lifetime” is not similar to “Ralph Lauren Polo” marks

The Polo/ Lauren Company LP v. M/s. Home Needs on 14 July, 2023 (Tis Hazari Court, Delhi)

Image from here

The District Court vacated an ex-parte interim injunction against the Defendant’s use of “Polo Lifetime” and held that the plaintiff has failed to establish prima facie case of trademark infringement. The plaintiff is the proprietor of the well known trademark “Ralph Lauren Polo” and alleged infringement by the defendant’s use of “Polo Lifetime.” The court however held that the competing marks are not similar so as to cause confusion over the defendant’s use of the word “Polo”. The court further held that the plaintiff has failed to establish the use of the mark in India and that the defendant has been using the mark “Polo Lifetime” much prior to the declaration of the defendant’s mark as well known.

Other Developments

International IP developments

An image of "Shein" logo.
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Edit: Hat-tip to Devanshu Jain for sharing the Polo/ Lauren Company LP order with us.


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