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
Recently the Delhi High Court issued an injunction against unlawful dissemination of Jainemo Pvt. Ltd. (Apna College)’s study material online. How well does this order fare in light of the Court’s finding in the DU Photocopy Case? Read Yogesh’s post to know more about this.
Delhi High Court and the tryst with Section 124! Just a few days after passing an important clarification about the alternate route to seek rectification sans fulfilling the Section 124 requirement, the Delhi High Court faces another dilemma. This time the question is whether a rectification application can be filed before the issue of invalidity of the plaintiff’s mark has been framed and the suit has been stayed under Section 124. Tejaswini and Praharsh write on these orders.
After much furore, Delhi High Court clarifies that its earlier observation about affording the defendants an opportunity to be heard in ad interim injunction cases is a ‘qualified’ one. Tejaswini writes on this development.
Delhi High Court’s recent order directing the Indian Patent Office to re-examine the application in terms of the 2017 CRI Guidelines instead of the 2016 Guidelines, reignites the age-old debate on the patentability of Computer Related Inventions against the mandate of Section 3(k). Read Yogesh’s assessment of the order.
Has the jurisprudence of Dynamic Injunctions in India been “a step forward and two steps back”? Since its first use, the dynamic injunctions have progressively been widening through the years. Krishna Ravishankar and Parul Anand write on this journey of dynamic injunctions in India and suggest means to help the court in assuring proportionality.
Last week we had put out a reminder for our readers to file their comments/ suggestions on IP Manuals and Guidelines, before the CGPDTM. The last day to file these comments/ suggestions was October 15.
The plaintiff alleged disparagement to its mark via the defendant’s pink salt commercial but failed to establish a prima facie case. The court held that the defendant’s advertising falls under the ambit of permissible comparative advertising, rejecting the plaintiff’s claims and emphasized on a competitor’s right to prevent disparagement while allowing reasonable product promotion.
Allowing the appeal against the impugned order that rejected the appellant’s patent application for being a diagnostic method, the Madras High Court held that since the invention was per se incapable of identifying the existence of a disease, it will not be barred by Section 3(i). Passing the order, the court also clarified that the term “diagnostic” under Section 3(i) should neither be construed narrowly, limited to only in-vivo or definitive diagnosis, nor broadly to include any process relating to diagnosis. Rather, the court opined, the claims should be examined in the context of the complete specification, to determine whether it specifies a process for making a diagnosis for treatment, and if it is concluded that the diagnosis for treatment is made (even if not definitive) the claims will be patent ineligible.
The Delhi High Court rejected the plaintiff’s application to amend the plaint and the memo of parties to add new defendants for lack of prior due diligence by them. Through this amendment application, the plaintiff attempted to implead the impugned mark’s proprietors as parties to the suit. The court relied on the proviso to Order VI Rule 17 of the CPC to reiterate that in order to allow such an application, the party has to show that it has conducted necessary due diligence and despite the due diligence the plea for amendment could not be raised before the commencement of the trial. Since the plaintiff was unable to show that it exercised due diligence before the commencement of trial and in fact it was aware about the proprietorship of these additional parties on the impugned marks, the court rejected its amendment application.
The Delhi High Court passed an ad interim injunction, restricting the defendants from using the mark “Good Time Butter Cookies”. Holding that the impugned mark is similar to the plaintiff’s “Good Day” mark, the court held that butter cookies are products that are purchased by children, literate and illiterate people across rural and urban areas and the enormous turnover of the plaintiff’s “Good Day” cookies leaves no doubt that the mark has achieved enormous recognition and goodwill in the market.
A Division Bench of the Delhi High Court responded to the questions on divisional applications referred to it by the Single Judge earlier. The single judge had expressed apprehensions over correctness of another single judge order passed in Boehringer Ingelheim International GMBH vs. The Controller of Patents and referred the following 2 two questions to the division bench- 1) Does the requirement of parent application to contain plurality of inventions without any objections by the Controller, necessary?; 2) Does the plurality of invention has to be reflected in claims of the parent application or is it sufficient if the plurality is reflected in Complete Specification? Relying on the language of Section 16, the division bench overruled the Boehringer Ingelheim order and held that a divisional application will be maintainable provided the plurality of application is disclosed in the provisional or complete specification. On the first question, the court clarified that there is no distinction between the requirement of plurality of invention for divisional application when it is moved by the applicant on its own motion or on the basis of the Controller’s order and in both cases, plurality of invention is a must.
In a dispute involving allegations of unauthorized use of the Geographical Indication “Bikaneri Bhujiya” the court ordered the defendants to produce alternate packaging to distinguish their products from the defendants and maintain a distinction between GI and non GI products. The court also appointed a local commissioner to examine the extent of manufacturing taking place in the premises of Defendant no 1 and 2 in Bikaner for production of “Bikaneri Bhujiya.”
In a suit filed by the Japanese Patent Office alleging infringement of its mark, the Delhi High Court passed an ex-parte interim injunction, restraining the defendant from using the JPO mark. While passing the order, the court opined that though JPO does not have a trademark or copyright registration in its favor, it could have never imagined that its logo would be imitated by anyone.
Observing that the present case raises the classic case of idea-expression dichotomy, the Delhi High Court held that while there cannot be any monopoly over the running of storytelling platforms, (idea) copyright can be claimed over the way these stories are expressed in form of images, literary content and manner in which these stories are depicted on the platform, exclusive to them. The court thus, held that both Humans of Bombay and People of India cannot replicate each other’s literary works and commissioned images/ videos.
In a suit seeking an injunction over the release of the cinematograph film “Ruslaan”, the Patiala House Court reiterated that there cannot be any copyright claim over the title of a work. Though the plaintiff accepted that the name “Ruslaan” was not registered as a trademark, it argued that the title of its film has acquired a secondary meaning and allowing the defendant to use the same can lead to confusion. However, the court opined that the plaintiff’s movie was released in 2009 and “can be said to have faded in the public memory” whereas the defendant’s movie is generating much more publicity than the plaintiff’s movie and thus there does not appear to be any likelihood of confusion. The court also presumed that before making a choice, the viewer will carefully look through the poster and decide after some background research about the actors, storyline director etc. and thus held that there is no prima facie case for an interim injunction.
Other IP Developments
- Filmmaker Shaad Ali moves Mumbai court alleging theft of his script by two former associates.
- Indian Patent Office to Hire 900 People: DPIIT Secretary.
- Karnataka High Court reiterates that Copyright Owner’s suit against infringement bars an action under Section 60 seeking remedy against groundless threat of legal proceeding.
- Prasar Bharati Plans To Launch OTT Platform.
- India-UK may sign FTA by the end of this month.
- Delhi High Court holds that the court cannot “presume” disobedience of its order. Asserts that there is a need for proof, while dealing with the application alleging disobedience of interim injunction order.
International IP News
- Apple settles $1 billion patent lawsuit with Caltech.
- Google says that it will defend its customers, using its generative AI services, in any copyright infringement suits.
- British MPs urge motion on NFT copyright infringement, crypto fan tokens.
- Promosome to drop lawsuit against Pfizer, BioNTech in patent lawsuit over Covid-19 vaccine.
H/t to the All IP Care team for sharing the Jagdish Sharma order with us.