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
Are Compulsory Licenses the cure for assuring access to drugs? In her detailed post, Tejaswini Kaushal takes a deep dive into the facts of the ongoing case before the Kerala High Court regarding breast cancer medication. She examines the claims of the pharmaceutical companies, and explores whether it’s time to look beyond compulsory licenses.
In a rare sighting, the Delhi High Court calculated notional damages in a patent dispute on a “reasonable royalty basis” and directed Maharaja Appliances Ltd. to pay upwards of 81 Lakhs to Strix Ltd. Read this post by Swaraj and Praharsh to know more.
The Ministry of Commerce and Industry (MoCI) published 2023 Draft Amendments to the Geographical Indication Rules 2002, inviting objections and suggestions from the relevant stakeholders by November 19.
Recently, Sumitomo Rubber Industries filed an unusual application seeking to register an olfactory mark as a wordmark! Discussing this anomaly and subsequent objections of the Trademarks Registry, Akshay Ajayakumar writes on the requisites for registration of an olfactory mark.
Local Commissions hold a very important place in IP litigation by enabling the court to secure evidence against the allegation of infringement. But what happens if defendants are made aware of the confidential Local Commissioner visits? Exploring this question, Rohit Pradhan and Brahmakrit Rao Gadela suggest solutions to address it.
Delhi High Court confirmed the earlier 2019 interim injunction order, holding that the marks “Indian Stag” and “Royal Stag” are deceptively similar and a prima facie case of infringement is made in the favor of the plaintiff. However, the court held that no case for passing off has been made, considering the difference between the respective labels and that the defendant’s products are entirely exported. The court reiterated that the test to prove passing off is higher than the test to establish infringement.
The Delhi High Court dismissed an application seeking the appointment of a Local Commissioner for being misconceived. The applicant had sought execution of a local commission to enable it to inspect the impugned products and demonstrate the alleged infringement by the defendant. Rejecting the application the court held that permitting this would result in the court aiding one of the parties to obtain evidence and the case which it seeks to set up and thus violate the principle of judicial independence.
Delhi High Court proposed three conditions for the parties to consider before the ongoing SEP dispute could proceed to expedited trial and directed the counsels to seek instructions on the next date (28 November, 2023). The court proposed- First, the suits asserting SEPs and implementation patent suits, will also proceed with expedited trial and not just the SEP infringement suits; Second, the defendants in CS(COMM) 162/2022 and CS(COMM) 171/2022 shall make deposits on similar terms as has been decided by the Division Bench in Nokia Technologies OY v. Guangdong Oppo; Third, the expedited trial would be for the purpose of fixation of global FRAND rate and not just for India and suits filed in UK and China should be withdrawn.
A division bench of the Delhi High Court overruled the single judge’s judgment in Vishal Pipes Ltd v. Bhavya Pipe Industry holding that it would be incorrect to proceed on the presumption that an IPR suit valued below Rs. 3 lakhs are based on ulterior motives to avoid application of Commercial Courts Act.
Relying on Hermes International v. Crimzon Fashion Accessories Pvt. Ltd., Disruptive Health Solutions v. Registrar of Trade Marks and Levi Strauss and Co. v. Interior Online Services Pvt. Ltd. along with the documents provided by the plaintiff in support of its long standing repute, the Delhi High Court declared “New Balance” as a well-known trademark.
A division bench of the Delhi High Court set aside the single judge’s order allowing the respondent’s rectification petition. The single judge order was based on a prima facie finding that the competing mark “INSEAD” and “INSAID” were phonetically similar. However, the division bench held that a finding under Section 57 needs to necessarily be conclusive and cannot be based on prima facie opinion and thus allowed the appeal against the impugned order.
Other IP Developments
- Centre Appoints nodal officers to direct blocking/ takedown of any website, link or app exhibiting pirated content.
- Nippon withdraws the 133 million dollar patent infringement lawsuit against Toyota.
- Scarlett Johansson sues AI app developer against unauthorised use of her voice.
- Vince Vance sues Mariah Carey alleging copyright infringement via her song “All I want for Christmas is you” again.
- US President Joe Biden signs an executive order to reduce the risks posed by AI.
- Threads Software sends notice to Meta against the latter’s use of the mark “Threads”.