Here is our recap of last week’s top IP developments including summaries of posts on the new Patent (Amendment) Rules, and some thoughts on safeguards which can be used by intermediaries to prevent trademark infringement. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
In this two part post on the recent amendments to the Patent Rules, Swaraj and Praharsh assess the implications of these Rules on some of the crucial safeguards within the Indian patent regime in this two-part post. In Part I of their discussion, they focus on the amendments to the obligation to disclose crucial information about the working of the patent, and the amendments on the corresponding patent foreign application, and how these amendments affect the patent bargain.
Continuing the discussion in Part II of their post on the Patent (Amendment) Rules, Swaraj and Praharsh focus on the changes to the pre-grant opposition mechanism. They discuss how there is little to no evidence indicating that the delay in patent examination is attributed to these oppositions, and how these amendments can reduce scrutiny given in ensuring that only deserving patents are granted.
In light of the recent Patent (Amendment) Rules, 2024, we are pleased to bring this post by Prashant Reddy T., which was written in the context of the October ’23 draft amendments. Prashant raises questions as to the influence of business lobbying groups, and concerns regarding the then proposed changes to the Rules.
[Please note that the op-ed was first published in The India Forum.]
Other Posts
In light of the DHC’s order in Zed Lifestyle Pvt Ltd. V. Hardik Mukeshbhai Pansheriya and Ors, Mathews shares his thoughts on safeguards intermediaries can employ to preclude trademark infringements. Read more!
Case Summaries
Geetanjali Studio Private Limited & Anr v. M/S Asm Traders & Ors on 18 March 2024 (Delhi High Court)
The case centers on trademark infringement and passing off allegations brought by the Plaintiffs against the Defendants. The Plaintiffs, owners of the trademarks “GEETANJALI STUDIO” and related marks, accused the Defendants of unauthorized use of a deceptively similar mark, “GEETANJALI PALM.” The Defendants’ adoption of this mark, resembling the Plaintiffs’ trademark in font, style, and overall appearance, was alleged to mislead consumers and infringe upon the Plaintiffs’ rights. Despite warnings and legal notices, the Defendants continued to operate under the impugned mark. The court, upon examining the evidence presented, found a prima facie case in favor of the Plaintiffs. As a result, it granted an interim injunction restraining the Defendants from using the impugned mark until further proceedings.
The case centered on the establishment of a confidentiality club in a biosimilar litigation dispute. The Plaintiffs sought access to the Defendant’s manufacturing process for a biosimilar drug, while the Defendant argued that access should hinge on the court’s determination of product similarity. The court, emphasizing the need to preserve timelines and avoid prejudice, directed the Defendant to file a reply to the application within one week. It viewed the application as a proactive measure to facilitate a swift decision, ensuring that the confidentiality club could promptly access relevant information when needed. Discussions on the club’s composition were deferred to subsequent hearings, scheduled for 4th April 2024.
The appeal challenged the order rejecting the Appellants’ patent application under Section 15 of the Patent Act, 1970, for lack of novelty and inventive steps compared to prior art. However, the Appellants filed an application seeking leave to submit an auxiliary claim. The Controller of Patents had no objection to this application, and the auxiliary claim set was allowed to be taken on record. As a result, the appeal was disposed of with directions for the matter to be remanded to the Respondents for reconsideration.
The petition concerned alleged violations of a previous judgment where respondents undertook not to imitate, copy, manufacture, or sell shoes imitative of the petitioner’s designs. Despite this, the petitioner claimed that nine out of 26 designs are still being used by the respondents, identical to their own. Respondent’s counsel acknowledged the issue but stated it was an inadvertent error by one franchise store. The court issued a notice, accepted by respondents’ counsel, and directed both parties to file replies and rejoinders within specified timelines. The case is set to be re-notified on July 12, 2024, for further proceedings.
Plaintiffs filed a suit contending that the Defendants are using the Plaintiff’s DASNAC trademark as a part of their domain name, on their websites, and on their social media thereby constituting infringement of the Plaintiff’s statutory rights vesting in the DASNAC trademark. The court granted an ex-parte injunction in favour of the plaintiff against the defendants, restraining the use of the plaintiff’s trademark ‘DASNAC’ or any similar variant by the defendants. Furthermore, directives were issued to domain registrants and relevant government departments to suspend access to infringing websites. Notices were served to all parties, with stipulated deadlines for responses, and compliance with procedural rules was mandated.
The plaintiffs had obtained an ex-parte ad-interim injunction against the defendants, in 2019, for alleged patent infringement after which a few patents had expired. Although some patents had expired during the suit’s pendency, the Court confirmed that the injunction remained effective for valid patents. An application seeking discovery of information from a Defendant’s employee was filed, aiming to gather details regarding the origin and import of disputed products. The court ordered the employee to appear and disclose the required information.
The case involved two appeals from orders filed under Order XLIII Rule (1)(r) of the Civil Procedure Code, 1908, by the appellant, challenging the rejection of injunction applications by the learned trial court. The appellant, a registered company established in 2006, filed suits against the respondent, alleging infringement of its registered trademark “KARAMGREEN” and “KARAMGREEN TEX” by the respondent’s use of the mark “KARAM GREEN BAGS.” The appellant also filed injunction applications, which were rejected by the trial court. The court found that the appellant had not established a prima facie case for granting the injunctions. The court noted that the marks were not identical, the goods offered were different, and there was no evidence of the appellant’s use of the trademark. Additionally, the court observed that the appellant had suppressed material facts regarding their business relationship with the respondent. Ultimately, the court dismissed both appeals, affirming the trial court’s decision to reject the injunction applications.
The plaintiff filed a petition seeking leave to file a trademark infringement suit before the Bombay High Court by the defendant’s trampoline park in Lonavla. The plaintiff argued that all the commercial transaction took place in Mumbai and thus the Court has jurisdiction to entertain the suit. The Court granted the leave under Clause XII of the Letters Patent to file the proposed suit in Mumbai.
A group of entertainment companies filed a suit against cyberlocker websites for copyright infringement of the copyrighted content of the companies. It was alleged that the cyberlocker websites were different from usual rogue websites since they would allow users to upload without any filter and takedown request is immediately subverted by generation of a new links. The court granted an interim injunction in favor of the plaintiff and the defendants agreed to take down infringing content and disable features allowing regeneration of links. They also agreed to disclose revenues, track de-listing requests, and enable monitoring by plaintiffs.
An appeal was filed against the impugned order that had dismissed a trademark suit under CPC and Commercial Courts Act for being barred under Section 15 of the Copyright Act. The Court found the rejection to be flawed, stating Section 15(2) of the Copyright Act doesn’t bar suit institution. It ruled that the impugned judgment’s interpretation was erroneous and remanded the matter for separate consideration of the applications.
The court dismissed the revision application concerning a complaint lodged for selling counterfeit Diageo products, citing infringement of trademark. Despite the incorrect mention of the Copyright Act in the complaint, the court determined that the offence relates to trademark infringement and not copyright, based on the distinction between trademarks protecting brand identity and copyrights safeguarding creative expressions. Upholding the cognizance of the offense under the Trademark Act, the court declines to quash the proceedings under Section 482 of the Cr.P.C.
The appellant’s appeal, challenging an interim injunction granted to the plaintiff regarding trademark infringement was dismissed by the High Court. The Court held that the plaintiff had been using the trademark extensively for 13 years, while the defendant had only proposed to use it. As there is no evidence of actual use by the defendant, the interim injunction was upheld.
The plaintiff sought appointment of a Receiver to enforce court orders directing removal of “Spencer’s” from the defendants’ corporate names. Despite orders, defendants, led by defendant no. 1, persisted in using the impugned tradename. The court appointed a Receiver to facilitate name changes, given the defendants’ trademark infringement and non-compliance with previous orders.
Other IP Developments
- TVS chairman’s family enters into an agreement to avoid future trademark tussles.
- IARI demands legal action against Pakistan for cultivating and renaming India’s protected Basmati Rice varieties.
- Delhi High Court directs to take down WhatsApp accounts, websites defrauding customers by misusing IKEA mark.
- Indian Patent Office Grants Over 1 Lakh Patents in a Year.
