SpicyIP Weekly Review (May 31 – June 6)

Topical Highlight

Phone Pe v. Bharat Pe: Whether Vernacular Wordplay Can Save from Being Labelled Generic?

BharatPe and PhonePe trademarks side-by-side (image from here)

In this guest post, Devangini responds to an earlier guest post on the Delhi High Court’s recent interim injunction order in Phone Pe v. Bharat Pe trademark dispute. She first summarises the history of the case, the arguments, and the court’s holding. She critiques the court’s reliance on the Delhi High Court case of Marico v. Agrotech to deny the plaintiff’s claim on two grounds. First, the term ‘Pe’ should not have been classified as descriptive/ generic. Second, while dissecting PhonePe, the court failed to acknowledge the fact that ‘Pe’ should be treated as dominant as can be discerned from its logo. She also notes the malafide intention of the defendant in attempting to adopt a strikingly similar logo to that of the plaintiff before abandoning it. Finally, in conclusion she points out the court’s conclusion of the difference in services offered by the parties while correct, the difference is not substantial and could be inconsequential especially for less tech savvy or illiterate merchants which are target groups for both parties.

Other Post

Webinar on ‘TRIPS Waiver: Update and Analysis of Recent Developments’ [June 5]

We informed our readers about a webinar on ‘TRIPS Waiver: Update and Analysis of Recent Developments’ organized by the People’s Health Movement (PHM) and the Third World Network (TWN) on June 5, 2021. The details of the event are available in the post here.

Decisions from Indian Courts

• The Delhi High Court in Golden Tobie Private Limited v. Golden Tobacco Limited, considered a dispute concerning the breach of a trademark licensing agreement as arbitrable and referred it to arbitration. [June 4, 2021]
• The Delhi High Court in Phonographic Performance Limited v. Union of India, specified that if the petitioner’s case is successful, their re-registration application would stand revived and that in case the Respondent is considering any other application for a copyright society in respect of sound recordings, the same must be informed to the Petitioner. [June 2, 2021]
• The Delhi High Court in Singh & Singh Law Firm LLP v. Singh + Singh Lawyers LLP, granted an interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s ‘Singh & Singh’, ‘Singh & Singh Law Firm LLP’, ‘Singh & Singh.com’, ‘Singh & Singh Advocates’ marks, and directed to suspend the defendant’s domain name till the next hearing. [June 2, 2021]
• The Delhi High Court in Kulvinder Singh Kohli v. Jasmeet Singh Enterprises, granted an interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s registered ‘Pamoist’ mark. [June 1, 2021]

  The Logo of Phonographic Performance Ltd (Image from here)

• The Delhi High Court in Sanofi India Limited v. Ridley Life Science Private Limited, granted an interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s registered marks COMBIFLAM, COMBIFLAM VET, and COMBIFLAM, PAIN GONE, ZINDAGI (LIFE) ON. [May 31, 2021]
• The Delhi High Court in Merck Sharp and Dohme Corp v. YMS Laboratories Private Limited, granted an interim injunction restraining the defendant from dealing in any products infringing the plaintiff’s Indian patent including SITAGLIPTIN or any other pharmaceutically acceptable salts. [May 31, 2021]
• The Delhi High Court in The Foundry Visionmongers Ltd v. Vivishaa Solutions Private Limited, granted an ex parte ad interim injunction restraining the defendant from using plaintiff’s softwares including NUKE and NUKE X without license, and referred the parties to mediation. [May 31, 2021]
• The Delhi High Court in Black Diamond Trackparts Private Limited v. Black Diamond Motors Private Limited, in an appeal, vacated the interim injunction issued by a commercial court restraining the appellants from using the marks ‘BLACK DIAMOND’, ‘BLACK DIAMOND TRACK PARTS’ and ‘BLACK DIAMOND TRAILER TECH’, while holding the appellants to be bound to their undertaking of indicating the source of the products while dealing in Class 12/subject goods. [May 28, 2021]
• The Delhi High Court in Sun Pharmaceutical Industries Ltd. v. Kinetic Lifescience Opc P Ltd, granted an ex parte ad interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s registered ISITE/I-SITE and SUN marks. [May 28, 2021]
• The Delhi High Court in Raaj Unocal Lubricants Limited v. Apple Energy Pvt. Ltd., allowed the prayer to vacate an anti-suit injunction issued by the court restraining the defendant from continuing trademark infringement proceedings before the United States District Court at the Southern District of Texas concerning the ‘76’ mark. [May 25, 2021]
• The Madras High Court in Sun Pharmaceutical Industries Ltd. v. Cipla Limited, dismissed an application seeking vacation of interim orders issued against the defendant in a trademark and copyright infringement suit with respect to the drugs ‘BUDECORT RESPULES’ and ‘DUOLIN RESPULES’.
• The producers and director of the film, Nyay: The Justice, based on the late actor Sushant Singh Rajput’s life, have submitted before the Delhi High Court that the film does not depict the actor’s caricature, name, or likeness since it is not a biopic, in response to a plea by the actor’s father seeking injunction from the use of his son’s name or likeness in movies. The court reserved its judgment and directed a stay on the release of the film until the judgment is pronounced.

Other News from around the Country

• Amidst the talks regarding the distribution of vaccines by the US to India, the US reportedly has sought an assurance from India that it will not invoke its compulsory licensing provisions.

  TVF Aspirants Poster (Image from here)

• In a unanimous resolution passed by the Kerala Assembly, it, inter alia, urged the Union Government to invoke compulsory licensing provisions to ramp up vaccine manufacturing.
• The Karnataka State Road Transport Corporation issued a clarification stating that the claims by the Kerala transport minister of having exclusive right over the trademark ‘KSRTC’ is incorrect.
• The author Nilotpal Mrinal has alleged that TVF’s recent web series ‘Aspirants’ has infringed his copyright in the book ‘Dark Horse’.
• A webinar was recently organized by the Research and Information System for Developing Countries (RIS) on the issue of TRIPS waiver. The recording for the same is available here.

News from around the World

• BRICS has extended its support for the India-South Africa proposal for TRIPS waiver to deal with the pandemic. Greenpeace India has also written to the WTO to end patent rights on Covid-19 vaccines. There currently remains a split amongst WTO members on the issue. The European Union, on the other hand, has submitted a three-part plan to effectively broaden vaccine supply as an alternative to the intellectual property waiver sought by the India-South Africa proposal.

  Nintendo Logo (Image from here)

• The European Commission has published its guidance on Article 17 of the Copyright Directive.
• Australia’s largest electricity generator AGL Energy has sued Greenpeace for copyright and trademark infringement for the use of AGL’s logo in their campaign describing them as nation’s “biggest climate polluter.”
• Ericsson and Samsung have entered into multi-year global patent licensing agreements, thus ending their ongoing licensing dispute and also withdrawing their pending complaints before the United States International Trade Commission (USITC).
• Nintendo won a lawsuit against RomUniverse for illegal publication of its games by the latter on their website, and the site’s operator was ordered to pay over $2 Million in damages.

Note: The applications for SpicyIP Fellowship are now open and will close on June 30, 2021.