SpicyIP Weekly Review (September 25- October 1)

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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

Bayh Dole-esque Guidelines Notified by Dept of Biotechnology

Infogram provided by DBT detailing out the Autonomous Institutes and PSUs, as well as various key statistics generated by DBT funded work
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Earlier this month, Dept of Biotech notified the DBT IP Guidelines for ownership and commercialization of IP arising from DBT funded research outcomes. This comes nearly 10 years after the PUPFIP bill’s withdrawal. Swaraj shares some basic details about the new Guidelines, while we await a more detailed examination of it in the coming weeks.

SpicyIP Tidbit: GII 2023 – India Retains its 40th Rank

India ranks 40th in the Global Innovation Index, 2023! Check the report as well as the India specific chapters linked in the SpicyIP tidbit by Niyati Prabhu.

Image Rights Alright—But Can They Trump Established Rights and Doctrines? Should They?

Anil Kapoor in a navy blue suit next to a chardboard cutout of his character in the "24" game.
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The Delhi High Court’s recent interim injunction concerning Anil Kapoor’s personality rights throws up an important question- should such orders protecting personality rights overlook the established principles and doctrines? Read the post by Prof. Sunanda Bharti Bharti on this.

Applying Section 100A No More?: Delhi High Court Allows Letters Patent Appeal Against Single-Judge Orders Passed Against Trademark Registrar’s Decisions

Can another appeal be filed against the order of a Single Judge that was originally passed in an appeal? The Delhi High Court says yes, as long as the original order was not passed by a civil court. Discussing the key aspects of the order and its implications, here is a post by Tejaswini Kaushal.

Other Posts

Not Everyone’s Cup of “Use” – The Changing Dynamics of “Trademark Use” and “Infringement” in Internet Advertising

"Google" logo with the letters written in blue, red, yellow and green.
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Google adwords as trademarks. Taking the discussion around the use of trademarks as keywords further, Nivrati Gupta looks at the implications of the Google v DRS DB order in this post.

The Conundrum of Naked Licensing

Naked Licensing, aka “You Snooze, You Lose.” Conceptually, a lack of quality control mechanism while licensing TMs can result in the license being regarded as a naked license and the mark being deemed abandoned. But does the Indian Trademark Act allow such a treatment? For a more thorough discussion on the concept of naked licensing and its application within the Indian TM law, read this post by Naman Keswani.

Another Drop in the Bucket: Delhi High Court’s Interim Injunction Denial for Vifor in FCM Patent Infringement

"CSL Vifor" written in red color.
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Considering Biological E’s launch of FCM in the market, the Delhi High Court denies an interim injunction to Vifor. But clarity on the recognition of Product-by-Process within the Indian patent regime still seems distant writes Tejaswini in her take on the order.

Webinar on “Breaking Patent Barriers: Struggle to Access Breast Cancer Medicines in India” (September 28)

Third World Network organized a webinar on “ Breaking Patent Barriers: Struggle to Access Breast Cancer Medicines in India” on 28th September, Thursday at 1 pm GMT (6:30 pm Indian Standard Time).

[Sponsored] PatSeer Connect 2023: AI’s Role in Shaping the Future of Intellectual Property

PatSeer is organizing its event “PatSeer Connect 2023” in Mumbai (October 6, 2023, Friday), Delhi (October 12, 2023, Thursday) and Chandigarh (October 13, 2023, Friday).

Case Summaries

Kubota Corporation v. Godabari Agro Machinery and Services India Pvt. Ltd. on 21 September, 2023 (Delhi High Court)

Kubota logo with the word "Kubota" in green color
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The plaintiff alleged infringement of its suit patents in parts of combined harvester by the defendants. It alleged that the impugned products are imported by defendant no. 1 from China where they are manufactured by defendant no. 2 and 3.  Considering the nature of the matter, the Delhi High Court appointed two academicians as experts to inspect the defendant’s machine/ impugned product. Defendant no. 3 also alleged that some of the corresponding suit patents have been invalidated in China, which the court asked them to place on the record in response to the application for an interim injunction.

Shah Mayankkumar Bharatkumar vs Controller Of Patents And Designs … on 21 September, 2023 (Calcutta High Court)

Aggrieved by the delay in disposing of the opposition, the plaintiff filed a revisional application.  Disposing of the application the Calcutta High Court observed that the Controller of Patents has the powers of a civil court in terms of Designs Act 2000 and discharges quasi-judicial functions and directed the respondent to conclude opposition proceedings within 2 months.

Vbm Medizintechnik Gmbh vs Geetan Luthra on 25 September, 2023 (Delhi High Court)

VBM logo with the letters "VBM" in blue.
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Delhi High Court ruled in favor of the plaintiff, finding the defendant guilty of trademark infringement and passing off. The plaintiff argued that the defendant intentionally imitated their trademark “VBM”, causing market confusion. However, the defendant claimed their adoption of “VBM” was bonafide and its adoption was inspired by the holy trinity of “Vishnu Brahma and Mahesh.”  Disregarding the defendant’s explanation as too facile to pass the legal muster and being unsupported by any corroborative documentary evidence, the Court concluded that the defendant’s actions were driven by bad faith and issued an injunction in favor of the plaintiff.

Gnv Commodities Pvt Ltd vs Tykekart Technologies Pvt Ltd on 22 September, 2023 (Delhi High Court)

Dog Cart circular logo wtih Dog Kart.in written in while over a red circle.
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The Delhi High Court allowed an appeal against the impugned order rejecting the request for interim injunction and remanded the matter back to the Trial Court for adjudication. The Trial Court had refused to grant an interim injunction citing differences between the competing marks and domain names. However, the Court relied on the Pianotist test and asserted the need to compare the marks visually and phonetically to assess deceptively similarity.

Sagar Ratna Restaurants Pvt Ltd vs Shree Shubh Rathnam Associates on 25 September, 2023 (Delhi High Court)

The Delhi High Court adjudicated on a contractual dispute involving franchise agreements, with the plaintiff claiming rights to use intellectual property and the defendant disputing it as a non-trademark matter. The Court determined that the matter fell under the Delhi High Court IP Division’s jurisdiction as per the Intellectual Property Rights Division Rules, 2022, and suggested exploring an amicable resolution in the next hearing scheduled for October 11, 2023.

Haldiram India Pvt. Ltd vs M/S Nandipat Enterprises & Anr on 25 September, 2023 (Delhi High Court)

In this case, the plaintiff alleged that defendant no. 1 violated an earlier interim injunction whereby it was allowed to use the mark “Haldiram Bhujiawala” as per the settlement agreement between the plaintiff and defendant no. 2. Assessing the previous order, the Delhi High Court clarified that the permission to sell pre-packaged products bearing the mark after procuring them from defendant no. 2 (as agreed in the settlement agreement) does not enable it to manufacture and sell products bearing the impugned marks. For the above reasons, the Court appointed a local commissioner to undertake an execution.  

Fox & Mandal And Ors vs Somabrata Mandal And Ors on 27 September, 2023 (Calcutta High Court)

Calcutta High Court confirmed the earlier ad interim injunction order in the “Fox and Mandal” trademark dispute between the firm and its former partner. The Court restrained the defendant from using the firm’s trademarks, claiming to be associated with the firm, or claiming a legacy in the year of establishment of the firm.

Star India Private Limited & Anr. vs Jiolive.Tv & Ors. on 27 September, 2023 (Delhi High Court)

ICC Men's Cricekt World Cup logo with a silhouette of the world cup trophy in violet and the words "ICC Men's Cricket World Cup India 2023" written in violet and pink.
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Delhi High Court issued an ad-interim injunction to restrain rogue websites from illegally streaming ICC World Cup Cricket matches, recognizing the plaintiff’s exclusive rights. Defendant websites were directed to be locked and suspended by domain registrars, and ISPs were ordered to block them. The Court emphasized the need for real-time blocking to prevent irreparable harm to the plaintiff’s broadcast reproduction rights. The plaintiffs were permitted to communicate new infringing websites to relevant authorities for immediate action. 

Jainemo Private Limited vs Rahul Shah And Others on 27 September, 2023 (Delhi High Court)

Delhi High Court granted an injunction in a copyright infringement case filed by the plaintiff, M/s Jainemo Private Limited, against defendants who were disseminating their educational course materials illegally. The plaintiff argued their material was being shared without permission, leading to financial loss. The Court held the defendants responsible for copyright infringement, issuing an order to prevent further dissemination of the plaintiff’s copyrighted content, and also ordered platforms like Telegram and YouTube to block infringing channels and suspend the involved parties.

Wynk Ltd. and Ors. v. TIPS Industries Ltd. on 20 October, 2023 (Bombay High Court)

In an appeal against the single judge’s order, a division bench of the Bombay High Court reaffirmed that statutory licenses under Section 31D of the Copyright Act are restricted to the non-internet-based radio and TV broadcasting alone and will not apply to internet-based offerings.

The Bhaktivedanta Book Trust, India v. HTTPS://BHAGAVATAM.IN/#GSC.TAB=0 & ORS. on 21 September, 2023 (Delhi High Court)

Swami Prabhupada in a yellow kurta and a red garland, giving sermon.
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The Delhi High Court granted an interim injunction to the plaintiff against the defendant’s reproduction or communication of A.C. Bhaktivedanta Swami Prabhupada’s (A religious leader) works. The subject works in the present case were his writings, teachings, and interpretations of religious scriptures and the court passed the present order against the defendant’s reproduction of the same. For this, the Court relied on the Bombay High Court’s order in Bhaktivedanta Book Trust v. Thomson Press (India) Ltd to reaffirm that though there cannot be any copyright on religious scriptures any derivative works therefrom will be protected under the Copyright Act.

Other IP Developments

International IP Developments


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