After a busy week at the blog, here are our summaries of the 9 blog posts published last week along with the summaries of some interesting orders from different courts. Anything we are missing out on? Please drop a comment and let us know.
Highlights of the Week
The World IP Indicator 2023 highlights India’s progress in the global patent race. But does this guarantee innovation? In this post, Praharsh highlights some key numbers from the report, along with some general comments on measuring the way forward.
The MIB’s system of Nodal Officers to disable the unauthorized exhibition of films is extremely problematic, to say the least. In this very incisive piece, Yogesh highlights the mechanism’s potential to get a blocking order relatively easily and how this system completely bypasses institutional and legal safeguards.
In a significant (over) ruling, Delhi High Court DB states that all IP suits don’t automatically lie before commercial courts. Swaraj and Praharsh look into this case, pointing out that while the DB may have been right in addressing the artificial distinction that had arisen, the order is unlikely to address the problem that gave birth to the initial order.
Recently Johnson & Johnson announced that it would not enforce its Bedaquiline Patents in 134 low and middle countries. Swaraj and Pranav Aggarwal write on this development questioning whether this means anything different for TB patients.
The Delhi High Court recently clarified that writs challenging orders from the IPAB shall lie before a Single Judge Bench and not a Division Bench of the High Court. Though the order clarifies the state of affairs after the abolition of the IPAB, it somewhat falls short in addressing the anomaly of listing of matters filed before the abolition of the IPAB and matter listed afterwards. Read Yogesh’s take on this to know more.
The October “Flashbacks” are here! Lokesh covers another super interesting round of discussions stemming from SpicyIP’s Octobers (2005-present)! In this month’s edition, he looks into topics including copyright and education, transparency and clinical trial data, Google ad-word cases, and more! With lots of intriguing details, you don’t want to miss this post!
How does Section 3 of the Indian Patent Act interact with biotech inventions? And how far does the court’s interpretation of these provisions apply to such inventions? Aparajita and Rahul Bajaj take a look at these questions.
Conceptualised as a response to failures during the Covid Pandemic, the WHO’s Pandemic Preparedness Accord was supposed to help chart a way forward. However, after 2+ years of negotiations, not much has progressed. As another round of negotiations starts, Arnav Laroia brings us up to date with the key (contentious) aspects of the accord.
In a copyright infringement dispute, the plaintiff sought an interim injunction against the defendant for allegedly continuing to offer its copyrighted recordings on their platforms ShareChat and MojApp post-license expiration. However, it submitted that it would have no objection to the defendant using remix or cover versions of the plaintiff’s copyright content or user generated content. The court passed an ad interim injunction order, restricting the defendant from making the specified works available on its platforms, while permitting the use of cover versions and user-generated content, pending a detailed hearing on 6 February 2024.
A Division Bench of the Delhi High Court dismissed an appeal against the order of the Trial Court dismissing the suit for want of prosecution. The court observed that after the grant of an ex-parte interim injunction in August 2018, subsequent transfer and reversion of the suit between a non-commerical court and a commercial court, when the matter was taken up in September 2020, the plaintiff’s counsel sought discharge. It further noted that even after subsequent notices when the plaintiff did not appear before the court, the trail judge dismissed the suit. The court held that despite being aware about the proceedings, the plaintiff took no steps to pursue the proceedings and thus find no error in the Trial Court’s judgement.
The plaintiff filed the trademark infringement suit aggrieved by the defendant’s use of the mark “World Trade Center”. The parties initially had a business and consulting agreement that permitted usage of the mark and post termination of agreements the defendant continued using the mark. Holding that an ex-licensee cannot be allowed to use the mark after termination of the license, the court also dismissed the defendant’s argument that there was a delay in instituting legal proceedings and thus it will defeat the rights of the plaintiff. It further clarified that there was no inordinate delay in instituting the present suit as after termination of the agreement, the plaintiff tried to amicably resolve the dispute. The court thus passed an interim injunction holding that the continued use of the WTC mark post-agreement termination misleads the public and constitutes infringement.
In a trademark dispute on the mark “Nilkamal”, Plaintiffs opposed the use of mark “Nilkranti” by the defendant on similar plastic moulds and crate products. The plaintiffs asserted infringement on phonetic similarity over prefix “Nil”. It was observed that monopoly over prefix “Nil” cannot be claimed and latter half of the two marks “Kamal” and “Kranti”, have distinct etymological connotations. While rejecting injunction on trademark, the court observed that the device marks, when compared are deceptively similar owing to them being written in similar blue letters and the encasing of font. Consequently, the defendants were restrained from using their device mark or any similar mark but were allowed to continue using the word mark NILKRANTI, provided it did not infringe on the plaintiffs’ device marks.
The Delhi High Court modified the composition of the confidentiality club constituted and directed to add three advocates on behalf of the defendants as members.
The plaintiff filed an interim injunction application against the Defendant no. 3’s use of the “Shreenath” label and Defendant no. 4’s use of ‘Shrinath Tourist Agency” word mark and labels and “Shrinath Nandu Travels” word mark and Defendant no. 5’s use of “Humsafar” label with a similar bus motif. The plaintiff also sought the defendants to be restrained from using the domain names- www.ajayshreenathtravellers.com and http://www.ajayshreenathtravellers.com/ . The court held that the plaintiff’s and the defendant no. 3 and 4’s marks and label are deceptively similar or identical and relying on K.R. Chinna Krishna Chettiar v. Shri Ambal & Co, Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia, the court granted an interim injunction against defendant no. 3 and 4. However, the court refused to pass an interim injunction against defendant no. 5. The court held that the bus motif and use of words “travel and transport agency” cannot be regarded as similar, considering the stark dissimilarity between “Shrinath” and “Humsafar” words.
The plaintiff appealed against the impugned order by the trial court for returning its trademark infringement suit, directing the same to be filed before a non-commercial court. The dispute pertained to alleged infringement and disparagement of Patanjali trademark by the defendant who had uploaded a parody video on Youtube. The court held that the trial court did not follow the mandate under Order VII Rule 10A (1) and the impugned order was passed suo motu without hearing the parties. On the above grounds the appeal was allowed and the court directed the trial court to hear the parties afresh.
The Delhi High Court stayed the District Judge’s order vacating the ex parte interim injunction against the respondent. The ex-parte interim injunction was passed by the District Judge on a finding that the plaintiff’s registered “Ralph Lauren” and “Polo” marks are not similar to the defendant’s registered “Polo Lifetime” mark. However, considering that the appellant’s mark is a well-known mark, cross border reputation of the plaintiff the court passed the present stay order.
A writ petition was filed by the petitioner against the respondent’s registration of the mark “Mahle” for similar products. The petitioner claimed prior registration of the mark and alleged that the respondent’s registration of a similar “Mahle” mark is bound to cause confusion in the course of trade. The petitioner also alleged non use of the impugned mark and thus prayed for rectification of the register. The court exercised its extraordinary jurisdiction under Article 226 and directed to remove the respondent’s mark from the register on the ground of non use for years from the date of the registration of the mark.
A division bench of the Telangana High Court vacated the interim injunction granted by the Commercial Court for not taking “irreparable damages” factor into consideration while passing the impugned order. The respondent has filed the present suit against the appellant’s unilateral termination of the “assignment agreement” regarding the copyright in the latter’s textbook titled “Fundamentals of Medical Physiology” and subsequent agreement with another publishing house to publish the latest editions of the textbook. While the commercial court held that the respondent was able to make out a prima facie case and thus passed the impugned interim injunction order, the High Court held that it failed to consider the “irreparable injury” factor. The court relied on the estimate of damages given by the respondent in the plaint and held that they had failed to establish that an “irreparable injury” would be caused to them if the injunction was not granted and thus set aside the impugned order.
Other IP Developments
- I&B Ministry invites comments for new Bill to cover OTT, digital news by 9th December, 2023.
- Veer Ji Malai Chaap Trademark Suit: Delhi High Court Holds Restaurant Owner Guilty Of ‘Subverting’ Injunction By Tweaking Name.
- Kerala High Court asks Govt regarding scheme for affordable alternates to Breast Cancer medicines.
- India’s patent applications jump by 31.6%– WIPO IP Indicator 2023.
- Participating in a stakeholders meeting with representatives from different Copyright Societies and the Indian music industry, Piyush Goyal emphasises equitable representation in copyright societies.
International IP Development
- Japan’s GHIT Fund and Medicines Patent Pool strengthen ties to improve access to medicines.
- OpenAI to fund users found guilty of copyright infringement.
- Nike sues New Balance, Skechers alleging infringement of its Flyknit patent.
- Maradona’s heirs win EU trademark fight against soccer player’s ex-lawyer.
- Unilever to share reformulation patents with ice cream industry to tackle freezer emissions.