India’s Top 10 IP Judgments/Orders of 2020 (Jurisprudence/Legal Lucidity)

1. Interdigital Tech Corp & Ors. v. Xiaomi Corp & Ors. [Delhi High Court] 

In a significant development, the Delhi High Court rejected InterDigital’s proposal for constituting a two-tier confidentiality club for sharing confidential documents to assess whether the licensing terms being offered by InterDigital were on FRAND basis. This proposal sought to exclude any representatives of parties, “other than “non-in-house” advocates and the experts appointed by them”, from accessing documents like “confidential, comparable patent license agreements on FRAND terms, as executed by the parties in the suit”. The court held such a proposal to be against fair play to the defendants and against the lawyer-client relationship.

2. Astrazeneca AB & Anr. v. Intas Pharma Ltd. & Alkem Labs Ltd. [Delhi High Court]

The Delhi High Court refused to grant an interim injunction for the manufacture of generic medicines whose subject matter was argued to be disclosed by a species patent, whereas they had already been covered in an expired genus patent. In this well-reasoned judgment, the court reiterated that there cannot be any dichotomy between disclosure and coverage. It also noted that owing to the COVID-19 pandemic, patients already suffering from diabetes are at a greater risk of contracting coronavirus and thus, affordable diabetes medication was in public interest. The court also clarified that disclosure requirements at the time of application had to be strictly followed by patent applicants.

3. Hindustan Unilever v. Endurance Domain and Ors. [Bombay High Court]

In a cybersquatting suit against various domain name registrars for using HUL’s trademark in domain names for fraudulent businesses, the Bombay High Court held that domain name registrars cannot be expected to ‘block access’ to a domain name, but can only be asked to temporarily suspend specific domain names. This provides clarity to the role and liability of domain name registrars in online trademark disputes.

4. Delhivery Private Ltd. v. Treasure Vase Ventures Private Ltd. [Delhi High Court]

The Delhi High Court held that the registered trademark ‘DELHIVERY’ is phonetically similar to the English word ‘delivery’ and is thus a generic mark, making it ineligible for trademark protection. It observed that only a generic mark which has achieved distinctiveness can enjoy trademark rights and refused to restrain the defendant from using the similar trademark ‘DELIVER-E’.

5. Vinay Vats v. Fox Star Studios India Pvt. Ltd. & Anr. [Delhi High Court]

In a notable decision, the Delhi High Court refused to grant an interim injunction against the release of the movie Lootcase “twenty-four hours before it [was] due for release”. Here the injunction was sought based solely on a trailer released by the petitioner in 2011. The court, after noting the contested similarities between the two works, rightly highlighted that this “plot idea is as old as the hills” and that it was not the “exclusive province of the plaintiff”. It also came down heavily on the plaintiff for approaching it on the last minute and noted that there was “no justification for the plaintiff having approached this Court on the eve of the release of the film” and considered it an example of “misuse of the judicial process”.

6. Plex, Inc. v. Zee Entertainment Enterprises Ltd. [Bombay High Court]

In yet another notable decision, the Bombay High Court refused to grant interim injunction sought by PLEX, a client-server media player that also provides services such as Live TV and free movies, against Zee’s recently launched a pay-per-view service, ZEEPLEX. The court held that the plaintiff failed to establish its reputation within India as against the defendant’s greater reputation. It also noted the difference in the two services and the inability of the plaintiff to show any anticipated injury. Justice Patel also made a pertinent observation on the plaintiff moving the court at the last minute despite earlier knowledge of the incident. He stated that plaintiffs deliberately moving at the eleventh hour “must be prepared to face the consequences” for the same.

7. S.D. Containers Indore v. Mold Tek Packaging [Supreme Court]

In this judgment, the Supreme Court clarified that ‘High Court’ under Section 22(4) of the Design Act includes a High Court that does not have ordinary original civil jurisdiction. On the other hand, Section 7 of the Commercial Courts Act, 2015 only deals with High Courts having ordinary original civil jurisdiction. It also stated that in case of infringement suits under Section 22(4), the cause of action arises in the state where the suit had been initially filed and not the state where the designs are registered.

8. Zee Entertainment Enterprises v. Ameya Vinod Khopkar & Ors. [Bombay High Court]

In this case, the Plaintiff had been assigned the negative rights over the film ‘De Dhakka’ and thus sought to restrain the original creators from releasing a sequel of the film, ‘De Dhakka 2’. The Court refused to grant an ad-interim injunction, holding that the assignment deed pertained only to negative rights in the original film and prima facie did not transfer to them the right to make a sequel or a prequel. It also noted that the sequel in question has a completely different script, different dialogues, different concept, different characters and different locations and different music. The Plaintiff had also sued for infringement of the rights in the film title, but the court maintained, as per established jurisprudence, that the title of a work is not copyrightable.

9. Anil Rathi v. Shri Sharma Steeltech [Delhi High Court]

The Delhi High Court rejected the plea for the allowing the use of a surname-based mark, ‘RATHI’ in the course of trade because the usage of the trademark is regulated by a Memorandum of Understanding and a Trust Deed between the members of the Rathi Family to which the Defendant belongs. The court found that the Defendant’s act of issuing licenses in his personal capacity for the usage of impugned mark amounts to trademark infringement as such issuance is ultra vires the MoU and Trust Deed. It held that even though Section 35 of Trade Marks Act allows one to use a trademark based on their name, this is restricted to personal use of marks and does not to extend to the grant of licenses or use by artificial entities.

10. Novartis AG v. Controller of Patents [IPAB]

The IPAB quashed the revocation of Novartis’s patent on the anti-cancer drug Ceritinib by ruling that although the compound was contained in the markush claim of a broader genus patent, it was not ‘disclosed’ therein, as it hadn’t been specifically identified. This judgment helped shed light on the question of what constitutes disclosure, and held that generic disclosure of a chemical class did not take away the novelty of a specific compound within the class, unless the latter was ‘individualised’. It also clarified rules regarding filing of additional evidence for oppositions and reiterated the significance of adhering to statutory timelines.

Please click here to view our list of India’s top 10 judgments/orders (topicality/impact), here for the list of India‘s top 10 IP legislative and policy developments of 2020 and here for the list of India’s top 10 other IP developments.

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