SpicyIP Weekly Review (September 4- September 10)

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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

Delhi High Court Calls Out the Practice of Granting Ad-Interim Ex-Parte Injunction Without Granting the Defendant an Opportunity to Reply

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The Delhi High Court recently clarified that if an impugned mark has been in the use before institution of the suit, the court will accord an opportunity to the defendant to file a reply against the interim injunction application. Tejaswini writes on this order by the Division Bench and its subsequent acknowledgment by the court, highlighting how this order can correct the practice of granting unfair ex parte ad-interim interim injunctions in Trademark litigation disputes.

AI and Copyright: More Developments – Human Prompts are Not ‘Direct Instructions’

After the Thaler case, the US Copyright Office passed another interesting order on AI-generated works, this time refusing the registration due to the work’s failure to meet the de-minimis threshold. Discussing the order, Aparajita draws a parallel with the position of AI-generated works and prompts in the Indian Copyright law.

Other Posts

Have a Break, Have a KitKat: The Chocolate or Chanachur?

Calcutta High Court resolves the 23 year old trademark battle between KitKat and KitKat, using a seemingly wrong precedent by the IPAB. Read Aparajita’s insightful post on why the reliance on the IPAB order was incorrect, on both, substantive and procedural grounds.

Preliminary Exams for the Recruitment of Patent and Designs Examiners Cancelled!

Just a day after conducting the Preliminary exams for the recruitment of the Patent and Design Examiners, the Quality Control Council of India (QCI) on September 4, announced that the same has been cancelled due to “some irregularities/ technical glitches.” Read the short post on this by Praharsh.

Case Summaries

Global Music v. Shatrughan Kumar AKA Khesari Lal Yadav and Ors. On 05 September, 2023 (Delhi High Court)

In an appeal against the single judge order, the division bench of the Delhi High Court restrained Bhojpuri artist Khesari Lal Yadav from engaging with other music companies except the appellant for monetizing any new songs till September 30, 2023. The court held that the single judge had erroneously assumed that the appellant is seeking specific performance of the agreement and thus is met by Section 14 of the Special Relief Act (which prescribes contracts that are not specifically enforceable), whereas the appellant is seeking to enforce the negative covenant in the agreement, as permitted under Section 42. However, the court clarified that enforcing the negative covenant will not mean that the respondent has been benched or has been rendered idle.

Manju Singhal v. Deepak Kumar on 6 September, 2023 (Delhi High Court)

The Delhi High Court allowed a petition seeking cancellation of the defendant’s copyright registration on the artwork for its product “Gulcharre Sevaiyan”. The registration has previously been stayed by the Copyright Board and an injunction is in operation, restricting the defendant from using the impugned label. Comparing the competing works the court held that the respondent’s work is a direct copy of the petitioner’s work and directed to remove the impugned work from the register.

W R Grace v. Controller of Patents on 4 September, 2023 (Delhi High Court)

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An appeal was filed u/s 117A of Patents Act, related to a “crystalline form of nicotinamide riboside” along with the method of preparing such crystalline form II of “nicotinamide riboside chloride” for their use in pharmaceutical compositions. The impugned order was passed owing to lack of inventive step, no therapeutic efficacy of the known substance and presence of only one active component, which did not met requirement of composition claim. However, the appellant later filed an amended claim set as per which the scope of the claims would be restricted to the method aspect of preparing the crystalline form. The court assessed the order and held that the same was passed on objections regarding product claims and the amendment will change the nature of the application but will remain within the scope of patent application. The court thus remanded the matter back to the patent office and directed to consider afresh.

Saurav Chaudhary v. UOI on 1 September, 2023 (Delhi High Court)

A writ petition challenging the abandonment of the patent application was filed. The Petitioner claimed that they diligently followed up with their patent agent but received no response, leading to the abandonment of their application. The concerned patent agent was directed to file and affidavit explaining the position leading up to the abandonment of the application.  The Court also expressed concerns about the lack of regulation and supervision of trademark and patent agents and has instructed the government to provide information on how these agents should be regulated.

Trustees of Princeton University v. The Vagdevi Educational Society and Ors. on 6 September, 2023 (Delhi High Court)

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The Delhi High Court refused to grant an injunction to the plaintiff against the defendant’s use of the mark “Princeton” restricted to Telangana. The plaintiff argued that they are not asserting transborder reputation but rather are arguing the use of their mark in India since 1911. For this the plaintiff presented a newspaper clipping.  The court however rejected this to mean as the “use of the trademark” and held that the plaintiff’s actual use in India commenced in 1996 whereas the defendant’s mark has been in use since 1991. Considering that the defendant’s mark is prior to the use of the plaintiff’s mark and its registration (in 2012) the court passed the present order.

Dr. Reddy’s Labs Ltd. v. Fastcure Pharma on 4 September, 2023 (Delhi High Court)

The Delhi Court clarified that applications under Section 47, 57 and 124(1)(ii) would be maintainable before the jurisdictions of the relevant registration granting trademark registry as well as the before the jurisdiction where the “dynamic effect” of the impugned registrations is felt.

Promoshirt SM SA v. Armassuisse and Anr.  on 06 September, 2023 (Delhi High Court)

A division bench of the Delhi High Court clarified that a Letters Patent Appeal can be filed against the order of a Single Judge bench in an appeal against the order of the trademarks registry. It was argued that such an appeal will be prohibited under Section 100A of the CPC, however, the court clarified that S. 100A bars appeal against the decision of the Single Judge when such an order is passed in an appeal against an original or appellate decree or order. It further held that since the order of the Trademark Registry is not from a civil court, S 100A will not bar a Letters Patent Appeal against it.

Nadeem Majid Oomerbhoy v. Gautam Tank on 6 September, 2023 (Delhi High Court)

Delhi High Court appointed 2 amicus to assist it in assessing whether a challenge to the defendant’s mark can be considered u/s 124 when no defense u/s 30 (4) is raised by it in a trademark infringement suit.

Zee Entertainment Enterprise Ltd. v. Triller Inc. on 7 September, 2023 (Bombay High Court)

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In a dispute pertaining to the defendant’s default in payment of royalties for using the plaintiff’s sound recordings, the Bombay High Court directed them to pay USD 300,000 (INR 2,44,26,480/-) along with 18 percent interest.

Appolo Burn Hospital v. Apollo Hospitals Enterprise Ltd. on 7 September, 2023 (Madras High Court)

The Madras High Court vacated interim orders holding that the respondent was not able to establish a prima facie case for injunction. The court held that there is no case for infringement of trademark as the applicant’s use of the impugned mark (1992) predates the registration of respondent’s mark (2007). On passing off, the court held that the respondent has not pleaded reputation of its mark on the date of applicant’s adoption and thus held that the applicant cannot be held to pass off its service as that of the respondent’s. Further, the court held that the applicant acquiesced but delaying in filing the suit as its first hospital was opened in 2009 and the suit was filed only in 2023. Owing to the above reasons the court passed the present order.

Other IP Developments

International IP Developments

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