In the first week of the new month, here are our summaries of the 3 blogposts, 7 court orders and other national and international IP developments. Important IP cases that we’re missing out on? Especially from other High Courts? Please let us know so we can include them!
Highlight of the week
Delhi High Court makes a U turn on Secondary Meaning and Acquired Distinctiveness
In a spicy turn of events, a division bench of Delhi High Court overruled the earlier order and held that SCHEZWAN CHUTNEY holds secondary significance in the market. SpicyIP intern Ishant Jain discusses both orders and highlights important issues pertaining to secondary significance and acquired distinctiveness, that await adjudication.
Other posts
SpicyIP Tidbits: Delhi High Court Interprets the Term “Leaving with the Registrar” Broadly
Will “Leaving with the Registrar” mean “Attempt to file” before the registrar? Responding in the positive, the Delhi High Court adopted a liberal interpretation of the term under Rule 45 and afforded the Opponent the benefit of confusion arising out of the badly worded provision. SpicyIP intern Ishant Jain explains the reasoning adopted by the court here.
Book Release: ‘Archives, Ethics and the Law in India’ – A Guidebook for Archivists in India
We announced the release of ‘Archives, Ethics and the Law in India’, an open-access publication co-authored by Farah Yameen and our blogger Divij Joshi. The guidebook is published by National Centre for Biological Sciences in Bangalore. The guidebook discusses various aspects where archival practice intersects with the law and addresses issues around access to physical records, reproduction of copyrighted material, data protection law and privacy, in order to make important historical documents available to researchers and the wider public.
Case Summaries
Delhi High Court cancels a registered mark on the basis of an unregistered similar device mark.
Case: Raj Kumar Sharma vs Sandeep Kumar & Anr. on 30 January, 2023 (Delhi High Court)
Can a registered trademark be cancelled on the basis of an unregistered similar device mark? Delhi High Court responded in the affirmative. In this interesting case, the court first read Section 11(1) (b) with clause (a) of the explanation to hold that a valid relative ground of refusal can be raised when the opponent’s mark was “applied” prior to the subject mark and owing to similarity between the marks there is a likelihood of confusion. Thereafter, the court reasoned that since the registered mark met with a valid relative ground of refusal, the same can be cancelled under Section 57(2) (ii). The court further clarified that the difference between the classes of the competing marks will not matter, rather what has to be seen is that the goods and services are similar or identical for application of Section 11.
Delhi High Court refuses to interfere with the order imposing INR 25,00,000 as costs on the Defendant.
Case: Lt Foods Limited vs Saraswati Trading Company on 30 January, 2023 (Delhi High Court)
Hearing an application under Order IX Rule 13 of the CPC for setting aside the ex-parte judgement dt. 11th Nov. 2022 (whereby the court imposed costs worth INR 25,00,000 on the Defendants), the court agreed with the Plaintiff that the Defendant cannot cite non-service of summons as a ground to seek setting aside the order when they remained absent for three dates of hearing, despite the service of the earlier interim injunction order during the execution of the local commission.
Delhi High Court clarified that similarity u/s 11(1) has to be seen for goods or services for which competing marks are used and not for the occasion of their use.
In this order, Delhi High Court clarified that similarity for the purpose of Section 11(1) has to be of the 
goods or services for which the competing marks are used and not of the occasion of their use. The controversy was around the impugned order whereby the respondent had rejected Plaintiff’s ‘Cock’ word mark for water guns used in Holi, citing its similarity with another ‘Cock’ device which was registered for amorces for toy guns used in Diwali. The Court here held that the concerned competing products are different in nature i.e. cited mark is not over a toy gun but rather for amorces, a fire cracker and the subject mark was for a water gun. Furthermore, the court held that registration cannot simply be refused because both the products may be used in some festivals.
Delhi High Court grants an ex-parte interim injunction against the use of similar mark for water pumps holding that the same will cause irreparable harm not only to the Plaintiff but also to the public.
Case: Spp Pumps Limited & Anr vs Sp Pumps on 2 February, 2023 (Delhi High court)
In this cast pertaining to similarity of marks over water pumps, Delhi High Court granted an ex-parte
interim injunction holding that “irreparable harm would be caused not only to the plaintiff but also to the public if an ex parte ad interim injunction as prayed is not granted in favour of the plaintiff.” Interestingly, the order does not elaborate how public interest will irreparably be harmed nor does it discuss any arguments advanced by the Plaintiff on harm to public interest. The competing marks are ‘SPP Pumps’ (plaintiff) and ‘SP Pumps’ (defendant).
Delhi High Court clarifies the rules for adding new parties in trademark infringement suits.
In a matter pertaining to joinder of parties, Delhi High Court held that trademark infringement cannot be seen as a “common transaction” and requires common actors (“infringer” and “infringee”) to allow the addition of new parties to the suit. Furthermore, the court clarified that the Plaintiff and the party it seeks to add to the suit do not share the common cause of action and thus cannot resort to Order II Rule 3. The case pertained to Defendant’s use of ‘RN Jindal Tubes’ device marks that the Plaintiff alleged infringes it Jindal Device marks and sought addition of JIPL (one of its sister companies that enjoys proprietary over the word mark ‘Jindal’) as a necessary party.
Madras High Court rejects A.R Rahman’s petition against levy of service tax on the transfer of copyright in musical work.
The case concerned the proceedings initiated by the respondent on the basis of a show cause notice that proposed to levy service tax on transfer of copyright in musical work in a specific period. The notice alleged that the petitioners are not the owners of the respective composed music work and thus no copyright is vested with them. This show cause notice was issued to the acclaimed musicians A.R Rahman, CR Santosh Narayanan and GV Prakash Kumar who argued otherwise. The court however dismissed the petition holding “It is best that such issues be decided by the authorities who can call for relevant information, including the agreements, from the petitioners for their appreciation. Interpretation of contractual clauses is not a matter that should concern this court.”
Delhi High Court imposed costs worth 2 Cr. INR for the contempt of its interim injunction order.
Case: Pfizer Inc. & Anr. v. Triveni Interchem Pvt. Ltd,. on 24 January, 2023 (Delhi High Court)
In a matter concerning infringement of Palbociclib patent, Delhi High Court imposed costs worth INR 2cr. on the Defendant for “wilful and contumacious contempt” of the court interim injunction order dt. 21 October 2022.
Other Developments
- Budget 2023: Allocation for IPR ecosystem up by 15% to Rs 329 crore.
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- Bengaluru Court Restrains Two Manufacturers From Counterfeiting Actor Vijay Deverakonda’s Clothing Brand ‘Rowdy’.
- After Telegram, WhatsApp now sued over its members sharing allegedly infringing copies on the platform.
- During January-March 2022, of the 19,796 patent application filed, 10,706 were filed by Indian applicants, against 9090 by non-Indian applicants- DPIIT
- Patent office refuses Daiichi Sankyo’s application for anticoagulant drug Edoxaban, sold globally under the trade name Savaysa and Lixiana, after pre-grant opposition from IP Alliance.
International Development
- Trump lawsuit claims Woodward audiobook violates copyright, seeks $50 mn.
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- Russian court fines Amazon’s Twitch $57,000 over Ukraine content.
- Microsoft, OpenAI & GitHub appeal to dismiss AI copyright case.
- Samsung agrees to settle patent lawsuits with Nanoco Tech and pay $150 million.
- Hermes battle digital artist Mason Rothschild over NFT tokens resembling Birkin bags.
