[This SpicyIP Weekly Review is co-authored with SpicyIP intern Sidhi Pramodh Rayudu. Sidhi is a final year B.A. LL.B (Hons) student at Hidayatullah National Law University, Raipur. He is interested in IP law, and commercial and criminal litigation.]
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
The CGPDTM has extended the deadline to file comments/ suggestions on IP Manuals and Guidelines to November 15.
Recently, the Karnataka High Court in Chancery Pavilion v. Indian Performing Rights Society Ltd. held that instituting a subsequent copyright infringement suit will render a suit against the groundless threats of legal proceedings u/s 60 infructous. However, the High Court seemingly missed taking into account a key detail that the relevant copyright infringement suit was disposed of in 2015. Praharsh and Tejaswini write on this development.
Exploring the idea of reforming the current IP legal research methodology, Niharika Salar argues in favor of “mixed” socio-legal empirical methods.
Continuing our Sifting Through SpicyIP Pages series, Lokesh discusses the notable posts published in “Septembers” (from 2005 to the present) with some interesting anecdotes on the Draft National Innovation Act, the issue of requiring the patent agents to be tested on foundational legal subjects, patent oppositions, innovation and more!
Recently a division Bench of the Bombay High Court upheld the single judge’s order holding that Section 31D does not include internet broadcasting within its ambit. Agreeing with the statutory interpretation adopted by the single judge, the court held against the argument of “copyright hoarding” by the respondent and called out the appellant for resorting to Section 31D to avoid paying the license fees. In their co-authored post, Sidhi, Praharsh and Swaraj write on this order.
The Delhi High Court vacated an ex parte interim injunction against the defendant, restricting it from using its app for being similar to the plaintiff’s app. It was alleged that the defendant’s app imitates the “trading/ stock” feature and the GUI of the plaintiff’s app. However, the court clarified that the plaintiff’s feature is not an original expression and that similar apps existed before the plaintiff’s app. The court further held that the defendant’s GUI is substantially different from the plaintiff’s and thus on the basis of the above reasons passed the present order.
The Delhi High Court denied an exemption request from the plaintiff regarding advance service to the defendant in a case involving trademark infringement of ayurvedic pharmaceutical products. An application was filed by the plaintiff under the apprehension that the defendant would continue to use the subject mark after the expiry of the license agreement. The court however refused to hear the injunction application without the advance service. It was held that advance service is required under the IPD and Delhi High Court (Original Side) Rules. Furthermore, the court observed that there is no averment within the plaint that the defendant has commenced to use the mark after the expiry of the license and considering that the products are “Ayurveda pharmaceutical” products, the court may have to examine the impact of Section 30 (1)(a).
An appeal was preferred against the impugned order whereby the appellant’s opposition was “deemed abandoned” by the respondent for not filing any evidence or statement in support of the opposition. The appellant, however, argued that evidence/statement shall be adduced to counter statements that were served. Since the service took place over an email, without the appellant providing its mail id in the notice of opposition, such service was improper under Section 143. The court held that Section 143 allowed for email service if an email id was provided by the party, indicating the party’s consent to such service. In this case, since no email address was given in the notice of opposition, email service was deemed improper and the impugned order was set aside.
The plaintiff sought an interim injunction from the court, restraining the defendant from infringing the suit patent for ‘FLURALANER,’ sold as ‘Bravecto’ which is used to treat tick fever, ticks, and fleas in animals. The plaintiffs alleged that the defendant was advertising, manufacturing, and selling a similar product under the mark ‘BRAVOGARD,’ which infringed on their patent and trademark. However, after receiving the suit papers, the defendant claimed they would not manufacture or sell ‘FLURALANER’ tablets. The court held that considering the plaintiff’s patent having been granted and recognized in various other suits and in view of similar marks, the plaintiff has made a prima facie case for the grant of an injunction. The court further held that considering the pharmaceutical nature of the product, irreparable harm would be caused to the plaintiff if the injunction was not granted. Therefore, the court passed an interim injunction order, prohibiting the defendants from using the mark ‘Bravogard’ and the plaintiff’s Fluralaner patent. On 16th October, the parties reached a settlement on the patent dispute.
The plaintiff filed an application alleging noncompliance of the earlier injunction by the defendant and the defendant’s application seeking more time to comply with the injunction order. The defendant was earlier restrained from using the DPS mark owing to the termination of its agreement with the plaintiff whereby they were allowed to use the mark. The court held that though the defendants are in contempt of the earlier order, considering that the defendants are running a school where more than 500 students were studying, it took a compassionate view and allowed the defendants to use the DPS mark till 31st March 2024 and directed that any fresh admission for the academic year 2024-25 shall be under a new name. This was subjected to the condition that the defendants pay an additional sum of Rs. 20,00,000 plus GST.
The plaintiff sought to restrain the defendants from using the mark “Oykaa” for cosmetics, as the same was alleged to be similar to the plaintiff’s “Naykaa” mark. Relying on the “triple identity test”, the court held that plaintiffs have made a strong prima facie case for an injunction to prevent further harm to their business and reputation. Thus, the court ordered the suspension of the Defendants’ website and the removal of their product listings on third-party platforms to protect consumers from potential confusion and harm.
The plaintiff filed the suit against the use of allegedly identical names by the defendant fir their news programs. The court recognized that the plaintiff’s TV channels and programs are quite popular and reiterated that though titles of the news programs may not themselves be capable of being monopolized, they can be protected if they have acquired secondary significance. Comparing the marks for the plaintiff’s TV programs with the defendant’s, the court held that the defendant is attempting to either pass off its program as that of the plaintiff’s or is trying to claim some connection or affiliation with the plaintiff and thus passed an ad interim injunction in favor of the plaintiff.
The plaintiff, holding registered designs for “Devanagiri” and “Banaras” used on crockery, alleged infringement and piracy by the defendants. The court compared the competing designs and granted an ad interim injunction for “Devanagiri”. However, for “Banaras” the court noted substantial differences between the competing designs. The court observed that the certificate of novelty in “Banaras” design certifies that the novelty resides in “surface ornamentation of the plate”, which according to the court, contains concentric levels and thus the extent to which there has been replication of the suit design by the defendant on its cup is arguable and thus granted the defendant an opportunity to file their reply.
The plaintiff sought an injunction against the use of the ‘Jalsa’ sound recording by Defendant No. 3, Satinder Singh Sartaj, and declarations that he has no rights to it. In light of the pending suits on the same song and an earlier order restraining groundless threats against the defendant, the court allowed existing YouTube videos of the Sydney Opera House concert to remain online but required defendants to disclose earnings from these videos and prohibited the upload of new ones.
The plaintiff alleged infringement of its blue and silver with trapezial design trade dress and sought an injunction against the defendant’s use of the trade dress for their “SEVEN HOURS” energy drink products. Though an earlier interim injunction order was passed by the court allowing the defendant to sell off the filled cans of energy drinks bearing impugned trade dress, the court further allowed the defendants to sell off unfilled cans, considering the use of the impugned trade dress by the defendants since 2021 and no complaints regarding the safety of the products being sold. However, the court directed the defendants to pay INR 13 lakhs to the Plaintiff and instructed that any unsold cans post January 31, 2024 shall be destroyed.
Holding the plaintiff’s “Afzal” mark and the defendant’s “Afsal” mark for chewing tobacco as deceptively similar, the Delhi High Court restrained the defendant from using the impugned mark. Passing the present order, the High Court also observed that an imitator who chooses to ride on another’s reputation may be presumed to not be wary of the quality of its own products and since consumption of spurious tobacco can result in serious and often irreparable harm, court’s vigilance in the present matter is justified.
Other IP Development
- Delhi High Court clarifies that writ petitions against the orders passed by the IPAB must be decided by the Single Judge Bench of the High Court.
- Viacom-18 secures dynamic injunction against websites broadcasting “Bigg Boss.”
- Delhi High Court holds that selling goods bearing deceptively similar mark is “as much a tort of infringement or passing off” as manufacturing the impugned goods.
- Ustad Faiyaz Wasifuddin Dagar moves Delhi High Court alleging infringement of “Shiva Stuti” by A. R Rahman and producers of the movie Ponniyan Selvan 2.
- Fewer generics enter the market after linagliptin’s patent term expired this August.
- Differences persist as India and UK continue deliberations on Free Trade Agreement.
International IP Development
- Music publishers Universal Music, ABKCO and Concord Publishing sue AI company Anthropic in Tennessee federal court on Wednesday, accusing it of using its songs’ lyrics to train its chatbot- Claude.
- Youtube plans to launch an AI powered tool that allows users to create songs using voices of famous musicians.
- Syngene gains access to ERS Genomics’ foundational CRISPR/Cas9 patent portfolio.
- OpenAI claims that its tool to detect AI generated images is 99% accurate.