Here is our recap of last week’s top IP developments including summaries of posts on the Ericsson- Lava SEP dispute, disclaimed trademarks, and impact of patents on innovation in academia. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Some Thoughts on the “Fairness” of the Delhi High Court’s Ericsson-Lava FRAND Determination- Part II
Continuing their discussion on the DHC Ericsson- Lava decision, Swaraj and Praharsh critique the reasons (and lack thereof) in the Judgement along with the issues in adopting the global FRAND rate by the Court. Don’t forget to read the first part of the post, published last week!
Perverse Incentives: How Academic Incentives are Counter-Productive to Innovation Ecosystem
Incentivizing patent filings with academic promotions may increase the number of patent applications, but is it beneficial for innovation within the country? Apoorv Kumar Chaudhary examines this issue, critiquing the current UGC Academic Performance Index and NAAC policy on academic patents and discussing the potential consequential problems that may arise in the future.
Other Posts
Disclaimed Trademarks: Protection or Usurpation
Understanding the legal position of disclaimers in trademark registrations. In this guest post, Surabhi Katare discusses the statutory and judicial position on disclaimers in trademarks in infringement cases and highlights the need of judicial clarity on the disclaimers in cases alleging passing off.
We are pleased to inform you that admissions are now open for the WIPO-NLUD-IPO joint Masters/ LL.M. programme. The last date to apply is June 3, 2024. For more detail please read the announcement.
Working Group on Access to Medicines and Treatments is organizing a webinar today to examine the impact of the EFTA-India Free Trade Agreement and the Patents Rules Amendment.
Case Summaries
M/S Reflect Sculpt Private Ltd. & Anr vs Abdus Salam Khan on 3 April, 2024 (Delhi High Court)
The plaintiff filed the present suit alleging infringement of copyright in their ‘sculpted boning’ technique in garments and registered designs in some hand crafted garments. It was alleged that the defendant manufactures and sells imitative garments and also operates a youtube channel where he uploads videos teaching how to make products imitating plaintiff’s products. The Delhi High Court found the defendant to be prima facie infringing plaintiff’s copyright, designs, and trademarks and passed an ex-parte interim injunction against the defendant.
Kubota Corporation vs Kaira Agros & Ors on 3 April, 2024 (Delhi High Court)
The plaintiff alleged trademark and copyright infringement, and passing off by the defendant and sought an ex parte interim injunction. The plaintiff alleged that the defendant’s use of the tagline “For Nature, For Future” in its device mark is deceptively similar to the plaintiff’s “For Earth, For Life” tagline containing similar elements and color combination. The plaintiff also alleged that the defendant’s “Contrac King” device is deceptively similar to the plaintiff’s “Harves King” device. Additionally they alleged that the defendant’s product catalogue imitates the plaintiff’s catalogue and the defendant uses plaintiff “Kubota” mark on its Indiamart page and website in association with its products. The Court held that that the defendant has prima facie infringed the plaintiff’s copyright and trademark and has prima facie passed off its goods as the plaintiff’s. On the above basis, the Court passed an ex-parte ad interim injunction order restraining the defendants from using the impugned marks and plaintiff’s catalogues.
The Hershey Company vs Atul Jalan on 15 April, 2024 (Delhi High Court)
The defendants sought to vacate the previously granted ex parte interim injunction order restraining them from selling “Hershey’s” chocolate. The defendant argued that the impugned products with faulty expiry dates were supplied to them by their suppliers and cannot be attributed to them. The Court dismissed this argument and held that the defendant should establish that it conducted proper due diligence before procuring the goods. The Court also held that selling of chocolates with incorrect and altered expiry dates will infringe the plaintiff’s trademark as it would suggest that the impugned products are manufactured and sold by plaintiff. The Court further clarified that if the reseller alters a genuine product in a way that could mislead the consumer, then the first sale doctrine will not apply, considering the ensuing confusion.
Other IP Developments
- GSK sues Pfizer and BioNTech in Delaware Federal Court over COVID-19 patent vaccines.
- US places India in its Priority Watch List in the 2024 Special 301 Report.
- 386 kgs of Panchamritam seized in Tamil Nadu’s Tiruchendur over lack of labelling details.
- Division Bench of Delhi High Court partially allows an appeal against the Eltrombopag patent interim injunction against Natco.
