Wondering what IP developments took place last week? Look no further as we present to you the SpicyIP Weekly Review, highlighting the discussions that took place on the blog along with other IP news.
Highlights of the Week
Akshay Ajayakumar discusses an interesting development of how an arbitrator’s self-praise and improper research led to setting aside a domain dispute award by the Delhi High Court.
The office of the Controller General of Patents, Design and Trademarks (CGPDTM) is inviting comments from stakeholders to revamp the Patents, Designs, Trademarks, GI and Copyright Manuals and Guidelines. Deadline- October 15, 2023.
Ad campaigns like “It smells similar, just costs a lot less” have opened the doors to interesting trademark questions and whether any infringement is occurring. Ishant Jain argues in this post why such usage should not amount to trademark infringement.
The Draft Patent (Amendment) Rules, 2023 were recently published in the Gazette of India, with public comments invited by September 22. Md Sabeeh Ahmad writes on the proposed changes to the timelines in the patent prosecution process.
RTI applications are often responded to with dodgy replies and incorrect information. In order to improve the status quo, recently Punjab and Haryana High Court and the Supreme Court of India passed two separate orders directing the public offices to properly maintain the records and make proactive disclosures. In this short post, Lokesh discusses these orders.
Delhi High Court imposed 5 Lakhs as costs for the breach of its earlier interim injunction orders by the Defendant.
Considering, inter alia, that the appellant’s products were available in the market before the institution of the suit, a Division Bench of the Delhi High Court held that the appellant should have been accorded an opportunity to oppose the ad interim injunction application. The Court thus set aside the impugned order and remanded the matter back to the Single Judge for reconsideration.
The dispute was regarding the Defendant’s violation of the Non-Competitional Confidentiality Agreement. The court held that it cannot decide at an interim stage on the question of whether an injunction can be obtained in the light of Sections 41 and 14 of the Specific Relief Act, read with Section 27 of the Contract Act. Issuing a prima facie finding and rejecting the request for an interim injunction, the court held that the plaintiff was unable to prove a violation of the agreement and allowed the defendant to file a response. Interestingly, the court also gave an explanation on the recent DB order in Dabur v. Emami on ex parte injunctions and observed that- “where the impugned mark has been used by the defendant for any length of time, that sole factor would entitle the defendant to an opportunity to respond, inviting, to the prayer for interlocutory injunctive relief, before orders are passed by the Court thereon.”
The dispute pertained to the use of RCB’s jersey in one of scenes in the movie “Jailer” in a disparaging manner. The defendant agreed to digitally alter the impugned clippings.
The Delhi High Court clarified that “one is required to read the plaint wholly” to determine whether the cause of action has arisen within the jurisdiction of the court or not. Considering that cause of action is a matter of fact, the court held that if the same has been pleaded even without specific reference to the relevant provision (here Section 20 of the CPC), the suit will be maintainable.
The plaintiff argued that the written statement of the defendant was not submitted and sought a judgement in its favor. However, the Court observed that the service of summons had not taken place and the application was therefore bereft of merit. The plaintiff asserted that though summons were not served, the defendant was served with the suit paper while execution of the local commission. On this, the court clarified that service of papers during Local Commission is not a method of service as per CPC or the Original Side Rules and it cannot be treated as service of summons as the latter binds the defendant with a time limit to file written statement u/Order VIII Rule 7.
Rejecting an application for stay of the suit u/s 124(1)(ii) the court reiterated that for a substantive application challenging the validity of a trademark under Section 124 of the Trademark Act, all the ingredients given in the provision have to be satisfied. The defendant inter alia argued that though there was no pleading regarding the invalidity of the suit patent, the proceedings should still be stayed since the same was argued before the court. Dismissing the argument, the court clarified that invalidity is a mixed question of fact and law and has to be pleaded. In the absence of a written pleading, a party cannot merely stand up in court and argue that a registered trademark is invalid
Dismissing the suit alleging copyright infringement, the Delhi High Court clarified that guide books though not protected under fair use, can still be protected as derivative works if they fulfil the test of providing “step by step process to reach the answer and detailed analysis of the problem” as held in University of Cambridge v. B.D. Bhandari.
Passing a dynamic injunction order, the court imposed INR 20,00,000 as damages for infringing the plaintiff’s copyright in the film “Brahmastra Part One: Shiva”. This is perhaps one of the first orders where the court referred to Section 6AA of the Cinematograph (Amendment) Act, 2023.