SpicyIP Weekly Review (July 3- July 9)

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Last week, we had some interesting discussions on the blog and saw some important IP development across the courts. We featured a total of 5 posts discussing 2 significant orders from the Karnataka High Court on Twitter’s writ petition against blocking orders issued by the GOI, and on the copyright infringement complaint filed against the Indian National Congress. We also highlighted that the CGPDTM will recruit 553 Patent and Design Examiners with the help of an autonomous organization, the Quality Council of India. Last week also saw many landmark orders from the courts across the nation. For instance, the Delhi High Court directed Oppo to deposit the royalty amount, in its high-profile SEP litigation with Nokia. The Delhi High Court also passed an important order refusing to set aside the order from the Protection of Plant Varieties and Farmers Right Authority, revoking the registration of Pepsico’s FL 2027 potato variety. 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! 

This post is co-authored with SpicyIP intern Abhijeet Audichya. Abhijeet is a fourth-year law student at Hidayatullah National Law University, Raipur. Having a profound interest in Data Protection, he is keen in researching about the intersection of TMT and IP sectors.

Highlights of the Week

CGPDTM to Recruit 553 Patent and Designs Examiners via QCI

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In a step to seemingly address the longstanding systemic challenge of an insufficient workforce, CGPDTM, along with an autonomous organization -QCI, issued a notification to recruit 553 Patent and Design Examiners. Praharsh, writing on the notification, highlights the earlier recommendations by courts and other committees to resolve this problem.

Karnataka HC Rules Against Twitter’s Plea for Restricting the Scope of Online Blocking Orders

In a major upset for Twitter, K’taka HC recently dismissed its writ petition challenging the GOI’s Blocking Orders against certain handles and imposed exemplary costs worth 50 Lakhs on it! In a nuanced post, Divij comments on how the HC’s interpretation of the GOI’s power u/s 69A has the potential to exponentially increase the leeway for censorship in the country.

How India Learnt to Stop Complaining and Love Copyright

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In the second post of the IP History Series, Shivam Kaushik writes about how India historically transitioned from being skeptical about copyright to embracing it.

Other Posts

Sifting Through the Pages: SpicyIP in the Junes

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SpicyIP has been around for nearly 18 years now! Averaging close to a post a day for all these years, we’ve been tracking the Indian IP ecosystem with some of the brightest minds (writers and readers!) guiding us on this journey. In our new “Sifting through the Pages”, we revisit some popular posts that are at least a decade old, and see how things have changed (or not). In this first post, Lokesh takes a look back at some posts that came up in June in years past!

Congress Leaders in Trouble over Copyright Infringement Claims

Though the Bharat Jodo Yatra has seemingly concluded, its aftermath haunts the Indian National Congress. The K’taka High Court recently refused to quash an FIR against the senior party leaders alleging copyright infringement over unauthorized use of the KGF: Chapter 2 songs during the yatra. Read the post by Gaurangi to know more about the order.

Case Summaries

Delhi High Court refuses to grant an interim injunction against the alleged infringement of ‘Regorafenib’ patent

Case: Bayer Healthcare v. Natco Pharma on 05 July, 2023 (Delhi High Court)

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The dispute pertained to an interim injunction application against the infringement of the plaintiff’s ‘Regorafenib’ specie patent. Though the genus patent had expired, the plaintiff argued that the person ordinarily skilled in the art will not be able to arrive at the suit patent using the genus patent. Defendant, on the other hand, submitted that the suit patent is anticipated by prior publication and thus is liable to be revoked u/s 64. The defendant further submitted that while extending the term of the patent in the US, the plaintiff has accepted the suit patent for Regorafenib to be disclosed in the genus patent and later argued that the application for specie patent was rejected in Columbia and Argentina, for lacking an inventive step. Relying on the defendant’s arguments, admission in the plaint that the suit patent is “technically covered” and on Section 53, the court rejected the application owing to the lack of a prima facie case. Interestingly, the court also considered the disparity between the prices of the competing medicines and held that the public interest would demand access to an affordable anti -cancer drug.

Delhi High Court refuses to set aside the order revoking Pepsico’s potato plant variety

Case: Pepsico India Holdings Pvt. Ltd. v. Kavitha Kuruganti on 5 July, 2023 (Delhi High Court)

An appeal was filed against the impugned order of the Protection of Plant Varieties and Farmers Right Authority, revoking the appellant’s registration of plant variety – FL 2027 potato variety. The registration was revoked on the ground of- incorrect and ambiguous information being served by the appellant regarding the date of the first sale, the category of the variety, the chain of assignment, and the grant being against the public interest. The appellant argued that the concerned form was unclear on the date of first sale of the variety, however, the court held that the form clearly specifies that the date of first sale in the countries where production is made is to be given. The court held that this information is important as the law prescribes that registration to ‘extant variety’ cannot be granted if 15 years have passed from the date of the first sale. On the chain of assignment, the court clarified that the applicant has to submit Form PV-2 which mandates the breeder to sign the document in the presence of two witnesses, which was not done in the present case. However, the court found that the authority erred in its public interest finding as merely filing litigations against the farmers cannot be construed to be against the public interest. On the locus of the respondent to seek revocation of the registration, the court held that “any person interested” within the Act would mean a publicly spirited person and on the above grounds, the court refused to allow the appeal.

Delhi High Court clarifies that filing of evidence on affidavit in support of the application for registration of a well-known mark is not mandatory.

Case: Kamdhenu Ltd. v. Registrar of Trademarks on 6 July, 2023 (Delhi High Court)

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An appeal was preferred against the order of the respondent rejecting the appellant’s application to include “Kamdhenu” mark in the list of well-known trademarks. The respondent rejected the application owing to non-filing of any evidence on affidavit, however, the appellant argued that it had filed multiple evidence in support of the application during the filing of the relevant Form TM-M. The court held that as per Rule 124 filing of an affidavit is not mandatory but rather there is a need to file sufficient evidence. Looking at the Evidence Act and the Public Notice dt. 22 May, 2017, the court held that affidavit by the way of evidence cannot be held to be a mandatory requirement for the grant of well-known status, however, what is required is that the evidence shall be documentary in nature. The court further clarified that in the process of determination, the registrar can give an opportunity to file the affidavit and that non-filing of the affidavit cannot be fatal in nature. Owing to the above reasons, the court set aside the impugned order.

Delhi High Court refuses to grant an interim injunction to TV 18 against Bennett Coleman’s use of “Bhaiya ji Superhit”

Case: Tv 18 Broadcast Limited vs Bennett, Coleman, and Company on 4 July, 2023 (Delhi High Court)

The plaintiff adopted the device mark ‘Bhaiyaji Kahin’ in 2016 for their television show. In January, 2022, it came to know that the defendant was launching a show titled “Bhaiya Ji Superhit” on a separate channel. Owing to the similarity in the trademarks as well as the nature of the shows the plaintiff filed the present suit to restrain the defendant from infringing the trademarks of the plaintiff. The defendant contended that the registration was granted to the plaintiff with a clear limitation that the plaintiff will not have any right to the exclusive use of the term “Bhaiyaji”. The defendant further argued that the term “Bhaiyaji” is common to trade and is used in various television as well as radio programmes. In light of these submissions, the court held that the plaintiff failed to make a prima facie case for grant of interim injunction and the application was dismissed. 

Delhi High Court grants an interim injunction to Sun Pharma against Glenmark’s use of ‘Indamet’ mark

Case: Sun Pharma Laboratories Limited vs Glenmark Pharmaceuticals on 3 July 2023 (Delhi High Court)

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The Delhi High Court allowed the interim injunction application against the respondent’s use of ‘Indamet.’ The plaintiff manufactures and sells the anti-diabetic medicine ‘Istamet,’ while the defendant is using the impugned mark for medicine to cure uncontrolled asthma. The court held that the plaintiff satisfies the 3-factor test of prima facie case, balance of convenience and irreparable damage and it also relied on the settled ‘protection of consumer interest and the avoidance of public confusion’ and ‘first in the marketplace’ principles. The court further relied on Cadilla Healthcare v. Cadilla Pharmaceuticals to reiterate that the deceptive similarity is to be judged strictly in the case of pharmaceutical products.

Delhi High Court passes an interim injunction order against Cipla from using “Gluco-C” and “Gluco-D”

Case: Zydus Wellness Products Limited vs Cipla Health Ltd & Anr on 3 July 2023 (Delhi High Court)

The Delhi High Court allowed an interim injunction application against the defendant’s ‘Gluco-D’ and ‘Gluco-C’ marks, holding it to be deceptively similar to the plaintiff’s ‘Glucon C’ and Glucon D’ marks. The court held that the allegation of infringement against the defendant is prima facie clear as the plaintiff enjoys a reputation over the trade name. However, with regard to the plaintiff’s allegation of passing off, the court held that the differences in trade dress are sufficient to establish that the defendant was not passing off their goods as the plaintiff’s.

A division bench of the Delhi High Court directs Oppo to deposit the “last paid amount” attributable to India, with the Court’s registry in the Nokia-Oppo SEP litigation

Case: Nokia Technologies v. Guangdong Oppo Mobile Telecommunications Corp on 3 July, 2023 (Delhi High Court)

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A division bench of the Delhi High Court allowed an appeal against the Single Judge Order, directing the defendant to deposit the “last paid amount” attributable to India as per the 2018 agreement between the parties, with the Court’s registry. It was alleged that the defendant had secured a license for the use of the appellant’s Standard Essential Patents in 2018 for a period of 3 years. After the expiry of this agreement, the defendant sold around 77 million devices in India without paying any royalty to the plaintiff. Because the parties had not executed a fresh license, the plaintiff filed a suit for infringement of its three Standard Essential Patents by the defendant before the Single Judge in July, 2021 (along with the interim injunction application) which was refused. The DB held that the payment of security is the implementer’s obligation in the negotiation phase itself and if negotiations fail, it does not mean that an implementer can continue to derive benefit from the technology of the proprietor.

Deferring to prior use over prior registration, Delhi High Court imposes an interim injunction on the Essee Networks’s use of ‘Elektron’ mark  

Case: Paragon Cable India v. Essee Networks Pvt. Ltd. on 3 July 2023 (Delhi High Court)

The present dispute was regarding the use of the trademark ‘Elektron’ which was registered by two different parties and was being used concurrently, each party being confined to its exclusive product classification. However, the present dispute arose because an overlap emerged in the use of the mark for electric wires and cables. The defendants have a prior registration in the class in which these products fall, but the plaintiffs claim prior use. The plaintiffs had thus filed an injunction alleging infringement and passing off by the defendants and questioned the defendants’ statutory rights. The court allowed the application of the plaintiffs and restrained the defendants from using the trademarks in respect of electric wires and cables. However, the court held that the injunction granted shall apply prospectively and shall not encompass products that have already been manufactured.  

Karnataka High Court clarifies that S. 134 of TM Act provides an additional forum and does not oust the applicability of Section 20 of CPC

Case: Varun Chopra v. Shyam Sunder Chopra and Sons on 30 June, 2023 (Karnataka High Court)

This case deals with the applicability of Section 20 of the Civil Procedure Code (CPC) vis-a-vis Section 134(2) of the Trade Marks Act. The plaintiffs filed a suit claiming infringement of their trademark “Natraj,” while the defendants argued that the court has no jurisdiction. The court held that Section 134(2) of the Trade Marks Act provides an additional forum, and does not oust the applicability of Section 20 of the CPC, citing M/s. Unilever Australasia v. M/S. Shingar Cosmetics Private Limited and Ultra Home Constructions Private Limited v. Purushottam Kumar Chaubey.

Delhi High Court clarifies that in case of infringement suits, consideration should be given to the prospects of the defendant conducting business in the place of filing of the suit.

Case: M/S Escorts Ltd. vs Sudhir Kumar and Anr. on 4 July, 2023 (Delhi High Court)

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Dealing with an application filed under Order VII Rule 10 CPC, for return of the plaint owing to lack of territorial jurisdiction, the Delhi High Court has clarified that where infringement is complained of, basing jurisdiction only as per situation at the time of filing the plaint is not the correct approach and reasonable consideration is to be given to the prospects of the defendant conducting business in the place where the plaint is filed. The present case was filed seeking design infringement and the plaintiff claimed jurisdiction on the basis of defendant’s intent to supply infringing products to the Indian Railways, having its headquarters in Delhi. The court relied on the above clarification and held that the question of jurisdiction here would become a mix question of fact and law, and at this stage, it cannot hold that it lacks the jurisdiction.

Delhi High Court clarifies that in the context of opposition hearings, the Registrar should issue a hearing notice to both- the applicant and the opponent.

Case: Dhiraj Kumar Nanda vs The Registrar of Trade Marks on 3 July, 2023 (Delhi High Court)

Allowing an appeal against the order of the respondent, the Delhi High Court instructed the respondent to issue hearing notices to both the parties and set aside the impugned order deeming the application as “abandoned”. The appellant had instituted the appeal arguing that the respondent had not issued a hearing notice to them. Relying on Rule 50 and Bombay High Court’s order in Institute of Cost Accountants v. Registrar of Trademarks, the court held that the Registrar is required to give notice to the parties of opposition hearings.

Delhi High Court refers the question of retrospective application of the TM Rules 2017 to a larger bench.

Case: SAP SE v. Swiss Auto Products & Anr.  on 3 July, 2023 (Delhi High Court)

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The Delhi High Court, in a complex case relating to retrospective application of the TM Rules, 2017 has referred the matter to a larger bench. The issue revolves around the contention of the defendant that the timeline for attaching additional evidence cannot be extended and the procedures thereby are mandatory rather than directory, (as contended by the appellant), regardless the time of institution of the proceeding. The 2017 rules make it directory and 2002 rules make it mandatory. Thus, the question arises here as to whether the 2002 Rules continue to apply in these matters despite the saving provision of Rule 158 in 2017 Rules. Dissenting with the Co-ordinate Bench in Mahesh Gupta v. Registrar of Trademarks and Anr, wherein the court had opined that 2002 rules will apply on proceedings initiated under 2002 Rules, the court currently held that the larger bench needs to settle down the legal position hereby as to the retrospective application. 

Other Developments

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International IP Developments

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