[This weekly review is co-authored with SpicyIP Intern Vishno Sudheendra. Vishno is a second year law student at the NLSIU, Bangalore. His previous post can be accessed here.
Here is our recap of last week’s top IP developments including summaries of posts on the Delhi High Court’s decisions in Sulphur Mills v. Dharmaj Crop Guard and Kudos Pharma v. Natco. Along with this dont forget to read our review of SpicyIP posts published in the month of February, from 2005 onwards. This and a lot more in this week’s weekly review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Recently, the DHC found Sulphur Mills’ patent on sulphur-based agrochemical fertilizer to be obvious and consequently refused to grant them an interim injunction against multiple defendants. In this guest post, Kartikeya Tandon discusses the DHC decision. Read on to know more.
Is short always sweet? Recently, the DHC directed the IPO to reconsider its rejection order in the Man Truck v. Asst Controller case. Surprisingly, the IPO made a “U turn” on its initial finding merely 29 days after, in barely 5 lines. Praharsh and Aarav discuss this controversy in this co authored post and highlight what can be implications of such reversals.
DHC’s Concerning Order in Kudos Pharmaceuticals v. Natco Pharma: Will it lead to Evergreening?
Coverage, Disclosure, and Evergreening: In discussing the recent order regarding the Olaparib patent infringement, Yogesh raises some concerns about the Court’s findings on obviousness, the missing elements of the three-factor test, and the sidelined public interest.
Other Posts
Journey Through “February” on SpicyIP (2005 – Present)
A little late but worth the wait 😉 Here is another round of SpicyIP flashbacks by Lokesh, where he looks into a variety of topics ranging from Patent Office Reforms, Data Exclusivity Debate, Software Patents, IP and Competition Law and more! Do let us know your thoughts on these, in the comments below!
What’s the extent of Judicial Review in Opposition Board’s Recommendation? Recently, the Madras High Court has clarified the position on this important question in two decisions, explaining that the court can only intervene in issues arising out of procedural lapses. Read Kevin’s take on these decisions below.
Case Summaries
The case involved M/s Sri.Lakshminarayan Rice Mills suing the defendant for trademark infringement and passing off. The plaintiff alleged that the defendant’s use of “MOTHER LAND” was deceptively similar to their registered trademark “MOTHER INDIA,” causing confusion among consumers. The Trial Court dismissed the suit. On appeal, the Court found in favor of the plaintiff, ruling that the defendant’s actions indeed constituted infringement. The Court granted the plaintiff’s injunction relief, ordering the surrender and destruction of infringing materials. The defendant was also barred from passing off the plaintiff’s trademark.
Kunal Mondal v. Union Of India And Ors. on 15 March 2024 (Delhi High Court)
The case involves a dispute over copyright ownership of artistic labels used on tobacco products. The petitioner, M/s Anjali Trading Company, claimed sole ownership of the label ‘NEW CALCUTTA BIDI’, used since 1999, and obtained copyright registrations in 2021. They discovered that the respondent obtained a copyright registration for a strikingly similar label in 2022. The petitioner sought cancellation of the respondent’s copyright, alleging infringement. The petitioner highlighted measures taken in opposing including filing an FIR against the respondent before the copyright registration. The respondent claimed to be the prior adopter and user of the disputed label, presenting handwritten invoices from 2017 as proof of prior use. The court found the respondent’s label to be a substantial reproduction of the petitioner’s original work, allowing the petitioner’s petition and directing rectification of the respondent’s copyright registration, without costs.
Upakarma Ayurveda Private Limited v. Rasayanum Enterprises on 22 March 2024 (Delhi High Court)
The case revolves around a dispute over trademark infringement and passing off related to the plaintiff’s trademark ‘UPAKARMA AYURVEDA PURE SHILAJIT’ and the defendant’s mark ‘RASAYANAM PURE SHILAJIT’ for similar products. An ex-parte ad interim injunction was granted in favor of the plaintiff, restraining the defendant from using a similar label. Subsequently, the defendant introduced new packaging for its products. The court analyzed the changes made by the defendant and concluded that while the new 10gm packaging did not violate the injunction, the 20gm packaging still posed a risk of confusion due to the similar background color. The definition of “mark” in the Trademark Act shows the intent of the legislature to recognise the role colours/colour combinations play in trademarks regime. The injunction was maintained, and the defendant was given two months to adopt a new distinct trade dress for its 20gm product. The court also emphasized the aspect of creating a distinctive identity in the market and upheld the injunction order until further notice.
APL Apollo Tubes Limited vs M/S Steel Track & Ors. on 1 April 2024 (Delhi High Court)
The case involves a trademark infringement and passing off action brought by the Plaintiff, a leading producer of steel pipes and tubes in India, asserts that the Defendants’ use of marks like “APOLLO” and “APOLLO TMT” infringes upon their registered trademarks (“APOLLO” and “APL APOLLO”) and constitutes passing off. The court, after considering the arguments, finds that it has jurisdiction over the case and that the Defendants’ marks are deceptively similar to the Plaintiff’s trademarks, likely to cause confusion among consumers. Additionally, the Defendants’ use of similar marks without authorization could mislead the public and damage the Plaintiff’s business and reputation. Consequently, the court grants an interim injunction restraining the Defendants from using the disputed marks during the proceedings, except for goods already manufactured and packaged.
The case involves a request for urgent interim relief by the Plaintiff against counterfeit products bearing its “BOMBAY DYEING” trademarks. The Plaintiff seeks an ex-parte appointment of a Local Commissioner to address the urgency and is granted exemption from effecting advance service upon the Defendants. The Plaintiff presents evidence of trademark infringement, demonstrating a prima facie case, which the court finds compelling. An interim injunction is issued restraining the Defendants from marketing, manufacturing, or dealing with products infringing on the Plaintiff’s trademarks until the next hearing. The Defendants are also directed to remove listings of infringing products. Further, the Local Commissioners were appointed, and the Local Commissioners accompanied by a representative of the Plaintiff and its counsel, are authorized to enter the Defendants’ premises or any other identified location to conduct search and seizure activities.
Aktiebolaget Volvo & Ors v. Lamina Suspension Products Limited on 28 March 2024 (Delhi High Court)
The dispute arises from the plaintiffs’ claim of trademark infringement against the defendant’s use of marks like “VOLVO” and “FMX” concerning automobile leaf springs. While the defendant argues that their use falls under Section 30(2)(d) of the Trademarks Act, suggesting mere descriptive usage, the court notes the potential for consumer confusion despite the presence of the defendant’s own mark “LAMINA”. In response, the defendant expresses readiness to adjust the wording to ensure purely descriptive usage, proposing to share proposed alterations with the plaintiffs for consideration. The court suggests referencing past precedents and relevant case laws to guide the formulation of acceptable descriptive terms and expects both parties to engage in discussions toward resolution. Consequently, the court schedules further consideration of the matter for May 3, 2024.
Varun Chopra An Indian v. Shyam Sunder Chopra And Sons Huf on 28 March 2024 (Karnataka High Court)
The case revolves around the jurisdiction of the court regarding a suit filed under Section 134 of the Trade Marks Act, 1999. The plaintiffs, residing in Uttar Pradesh, filed a suit alleging trademark infringement and passing off. The defendants, some residing in Uttar Pradesh and others in Haryana, objected to the jurisdiction of the Bengaluru City Civil Court, where the suit was instituted, citing lack of territorial jurisdiction. The High Court examined the provisions of Section 20 of the Civil Procedure Code and Section 134 of the Act of 1999. It emphasized that Section 20 provides separate avenues for jurisdiction, including where the cause of action arises. The court concluded that the Bengaluru court had jurisdiction under Section 20(c) of the Civil Procedure Code, as the cause of action, (defendants selling infringing goods), had arisen there. Therefore, it allowed the appeal, set aside the trial court’s decision, and restored the suit to the Bengaluru court for further proceedings.
Jaquar And Company Private Limited v. Ashirvad Pipes Private Limited on 1 April 2024 (Delhi High Court)
In a trademark dispute between Jaquar & Co Pvt Ltd and Ashirvad Pipes Pvt Ltd, the court found that the defendant’s use of the marks “ARTISTRY” and “TIARA” infringed upon the plaintiff’s registered trademarks “ARTIZE – BORN FROM ART” and “TIAARA,” respectively. The court determined that there was deceptive similarity between the marks, despite arguments about the discernment of luxury sanitary fittings consumers. It held that phonetic similarity between “ARTIZE” and “ARTISTRY” and the identical pronunciation of “TIAARA” and “TIARA” contributed to confusion among average consumers. This led the court to conclude that the plaintiff had established a prima facie case of trademark infringement under relevant sections of the Trade Marks Act. While passing off claims were not established, the court granted an interim injunction restraining the defendant from using the disputed marks pending further proceedings.
M/S P.M.Diesels P. Ltd. vs M/ S Thukral Mechnaical Works on 2 April, 2024 (Delhi High Court)
The judgment pertains to multiple proceedings, including civil suits and writ petitions, concerning the trademark ‘FIELDMARSHAL’/’FIELD MARSHAL’. Originating from a suit filed in 1985 and subsequently tagged with another filed in 2016, key issues addressed encompassed territorial jurisdiction, trademark and copyright infringement, relief sought, and prior usage rights. The court ruled in favor of P.M. Diesels Pvt. Ltd., concluding that Thukral Mechanical Works engaged in misconduct to obtain trademark registration and granting a permanent injunction against Thukral’s use of the mark. Additionally, in a related cancellation petition, the court found the assignment of the mark to Thukral defective due to lack of prior use evidence, leading to the cancellation of Thukral’s trademark registration. Noting the costs borne by P.M. Diesels Pvt. Ltd., the court awarded actual costs in its favor.
Other IP Developments
- 19 products from Assam gets GI registration.
- Delhi High Court imposed costs worth INR 1 Lakhs for non disclosure of material facts.
- Meghalaya’s Garo textile gets GI registration.
- Minister Ashwini Vaishnaw says India to draft new AI legislation.
- Delhi High Court declares “Haldiram” as well-known trademark.
