SpicyIP Weekly Review (June 14- 21)

Topical Highlight

Singh & Singh Strikes to become King… Again: Trademark Infringement, but from Canada?

Singh + Singh logo

In this post, Adyasha analyses the recent Delhi High Court order temporarily restraining the Canada-based law firm, ‘Singh + Singh Lawyers LLP’ (‘S&S Canada’) from infringing the trademark of the reputed Indian law firm, ‘Singh & Singh Law firm LLP’ (‘S&S India’). She first summarises the contentions of the two parties and the court’s reasoning. She highlights that the court failed to look at the limbs of balance of convenience and irreparable injury while granting the injunction. She then notes that while not discussed in the order, the issue of jurisdiction of the court could assume importance later on. She further argues that there appears to be a problem-solution mismatch in that the injunction plea based on transborder reputation would not have much effect in India as the defendant firm is anyways not operating here. Finally, she argues that there seems to be an extremely weak case of defence, if at all possible, under Section 35 on grounds of bona fide use.

Other Posts

Book Review: Patent Law Cases and Materials – A Synthesis for India

Patent Law Cases and Materials, by Adarsh Ramanujan. Amazon affiliate link

In this guest post, Dr Feroz Ali Khader reviews Adarsh Ramanujan’s recent book titled ‘Patent Law Cases and Materials – A Synthesis for India’, first published in September 2020. He finds the form of the book stylized similar to American casebooks as surprising given the absence of an effective court specialized on patent law in India. He then explains the structure of the book that includes 10 chapters with each chapter containing extract of relevant statutory provisions followed by the author’s commentary. It is then followed by extracts from relevant foreign and domestic case laws and then by the author’s analysis of the cases. He then mentions the themes touched upon in different chapters. He states that the book could benefit with reduction in extracts and content freely available in the public domain that is contained in the appendix. He, however, notes the need for inclusion of Patent Rules, 2003, in the book. Additionally, he states that since it is a book designed as an aid to teach patent law in law schools, thoughtful questions at the end of the extracted content would be a welcome addition. He concludes by noting that it might be difficult to recommend this book in the absence of detailed discussion on patent prosecution.

[Sponsored] The Top 7 Skills Every IP Lawyer Needs for Success

Representational image of a future lawyer

We brought to the readers this post by UNH Franklin Pierce School of Law, identifying the top skills every IP lawyer should possess and why, based on the collective experiences of its alumni and professors. The seven skills identified are namely: Communication; Understanding the ‘why’; Preparation and in-depth knowledge; Grasping the fundamentals; Maintaining a worldview; Proactivity and cooperation; and Laser focus. More details can be found in the post here.

Call for Papers: CNLU’s E-Journal of Academic Innovations & Research on IP Assets (JAIRIPA, Vol. 2, Issue 1) [Submit by August 31]

Logo of CNLU, Patna

We informed the readers about the call for papers by the Centre for Innovation Research and Facilitation (CIRF) in Intellectual Property for Humanity and Development (IPHD) of Chanakya National Law University, Patna (CNLU) for its ‘Journal of Academic Innovation & Research in Intellectual Property Assets’ (JAIRIPA). The submission deadline is August 31, 2021. Further details including submission guidelines and procedure are mentioned in the post.

Decisions from Indian Courts

• The Delhi High Court in Willowood Chemicals Pvt Ltd v. Indo-Swiss Chemicals Ltd, dismissed the defendant’s application to allow it to sell its existing stock of fungicidal products which the court had prohibited it from selling by way of an interim injunction in a patent infringement suit. [June 18, 2021]
• The Bombay High Court in Pidilite Industries Limited v. O-Chem Sealers Private Limited, granted an ad-interim injunction restraining the defendant from using any marks or designs infringing the plaintiff’s registered marks and designs such as ‘DR FIXIT’, ‘LW’, ‘LW+’, and ‘URP’. [June 16, 2021]

  Logo of Dr. Fixit. Image from here.

• The Bombay High Court in Franco Indian Pharmaceuticals Pvt Ltd v. Micro Labs Limited, granted an ad-interim injunction restraining the defendant from using their ‘FERRI ORANGE’ mark, the plaintiff’s registered ‘DEXORANGE’ mark, and using bottles with the plaintiff’s unique shape. [June 14, 2021]
• The Bombay High Court in Sulphur Mills Limited v. Virendra Kumar Saini, granted an ad-interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s registered ‘FERTIS’ mark. [June 14, 2021]
• The Delhi High Court in Frankfinn Aviation Services Private Limited v. Frankfinn Creations, granted an ad-interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s registered ‘FRANKFINN’ mark and appointed a local commissioner to visit the defendant’s premises to make an inventory and take into custody products bearing the marks ‘FRANKFINN/FRANKFINN CREATIONS’. [June 14, 2021]
• The Bombay High Court in Franco Indian Pharmaceuticals Pvt Ltd v. Healthyraj Wellness Enterprises, granted an ad-interim injunction restraining the defendant from using any mark deceptively similar to the plaintiff’s registered ‘DIAVIT’ mark. [June 14, 2021]
• The Telangana High Court in Sri Tulasi Industries v. Sri Sapthagiri Industries, allowed an appeal against the order of the Principal District Judge that had dismissed the appellant’s plea for a temporary injunction against the defendant’s use of the marks ‘TASTY DROPS’ and ‘TASTY PLUS+’. [June 9, 2021]

Other News from around the Country

• PepsiCo has filed a trademark infringement suit against Parle Agro for the use of the tagline ‘For the Bold’ by the latter for promoting their beverage B Fizz. The mark is registered globally for the Doritos nacho chips brand which PepsiCo is producing in India.

  Bottles of the beverage B Fizz. Image from here.

• Venus Remedies has won a 10 year old legal battle for the revocation of patent on intravenous paracetamol solution in India by French pharmaceutical firm SCR Pharmatop.
• Insecticides India has received a patent for ‘A Synergistic Fungicidal Composition Comprising Hexaconazole and Carbendazim’.
• India and Pakistan are likely to come to an arrangement to share GI ownership over the Basmati mark in the EU, which has been contested by both the countries since last year.

News from around the World

• WTO members have agreed to engage in text-based negotiations over the TRIPS waiver proposals with an aim to come to a final agreement on the issue by next month.
• Fashion brands such as AirWair International have accused the Chinese Fashion unicorn Shein of trademark infringement stating that it has “clear intent to sell counterfeits”.

  Logo of the company Apple. Image from here.

• A lawsuit has been filed against Apple for allegedly infringing several patents related to wireless communication services in its products.
• Miley Cyrus has won the right to use her name as a trademark in the EU for a wide range of products after the CJEU overruled the EUIPO’s decision to restrict the scope of use.
• The rock band ‘The Jesus and Mary Chain’ have sued Warner Music Group for copyright infringement claiming $2.55 million USD as damages.
• The National Music Publishers’ Association in the US has sued popular gaming firm Roblox seeking $200 million in damages for hosting a library of unlicensed copyrighted songs.

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