[This post has been co-authored with SpicyIP intern Jyotpreet Kaur. Her previous posts can be found here.]
Wishing our readers a very happy and healthy new year ahead. As we bid adieu to 2023, let’s take account of the interesting developments that we came across last week.
Highlights of the Week
A Look Back at India’s Top IP Developments of 2023
Continuing with our annual tradition, we curated a list of the top IP developments in India. We divided these developments under the following five heads -1) Topicality/ Impact, reflecting those decisions that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem, etc.; 2) Jurisprudence/Legal Lucidity, reflecting those decisions that we thought reflected a fair bit of jurisprudential rigour and/or legal lucidity; 3) IP Legislative and Policy Developments– covering important rules, release of policy notes, that may have an impact on the Indian IP ecosystem; 4) Other IP developments that don’t fit into the above categories; 5) Other Notable IP Developments.
Other Posts
Despite noting the lack of clarity on the concepts of “technical effect” and “contribution” in the context of the patentability of CRIs, the DHC in Microsoft v. Asst. Controller of Patents declared that the subject invention had technical effects. Read Bharathwaj Ramakrishnan’s take on this contradiction within the judgement.
AI and copyright: Prompts and Intellectual Inputs This Time from China
Recently in a copyright infringement dispute concerning a work generated by using an AI, the Beijing Internet Court held that it qualifies as an original work of human intellectual achievement. Read Aparajita’s post to know more about the development.
Case Summaries
Van Tibolli & Anr. vs K. Srinivas Rao & Anr. , December 26, 2023(Delhi High Court)
The plaintiffs alleged that the defendants’ trademark ‘GK WELLNESS’ and their logos, infringe the plaintiffs’ trademark ‘GK HAIR’ and sought an interlocutory injunction against the use. The Court observed that the registration of the defendant’s trademark was granted contrary to the law since the Registry failed to consider the extension to file oppositions, in light of the COVID-19 pandemic and wrongly rejected the plaintiff’s opposition to the defendant’s application. Furthermore, the Court ruled that considering the design of both logos where ‘GK’ is prominently visible and the words ‘WELLNESS’ and ‘HAIR’ are in a disproportionately smaller font, it was likely that a consumer may be confused between the two products and granted the injunction against the defendant’s use of the impugned mark and the logos.
Bikramjeet Singh Bhullar vs Yash Raj Films Pvt. Ltd. & Ors. , December 20, 2023 (Delhi High Court)
The plaintiff applied for an interim injunction against the exhibition of the film ‘Shamshera’ alleging that it infringes the plaintiff’s copyrighted script titled ‘Kabu na chhadein Khet’. The Court found that while some themes in the film were similar to those in the script, such themes or ideas cannot be protected by copyright and that the standard of ‘substantial copying’ had not been established in the present case. The Court, stating that there could be no monopoly over ideas, refused to grant the injunction.
The IPAA (Intellectual Property Attorneys Association) filed a writ petition against two public notices issued by the Registrar of Trade Marks in September 2023. The notices stated that owing to system overload, the Trade Marks (TM) public search and E-register modules shall not be available from 10:00 am to 4:30 PM. This was challenged by the petitioners, asserting that such action severely impairs the Trademark attorneys’ and other stakeholders’ functioning. Countering the Registry’s position that it is a mere external issue, the petitioners argued that statutory deadlines would be put at risk. The court directed a response from the registry by January 4, 2024, and instructed to include technical details and other concerns about the action in the response.
Novex Communication Private … vs Rsvk Restaurant Private Limited on 22 December, 2023 (Delhi High Court)
The plaintiff owns numerous sound recordings and has alleged that the defendant, operating various establishments, has engaged in unauthorized playing of copyrighted recordings without obtaining the necessary licenses. The defendant asserted that his use is protected under Section 33, arguing that since the plaintiff is not a copyright society, it cannot insist the defendant take a license. The court rejected the defendant’s argument and relying on Phonographic Performance Limited v. Canvas Communication, the court, held that Section 33 will not restrict the rights of the copyright holder to demand a license for exploitation of their sound recordings, thus granting an ad interim injunction against the defendant.
Ferrero Spa & Ors vs Dugar Overseas Pvt Ltd & Ors on 21 December, 2023 (Delhi High Court)
The plaintiffs alleged that the defendants are infringing its “Ferrero Rocher” trademark by selling counterfeit chocolates in-store at Pune and Indore Airports. Defendant no. 1 denied knowledge of such usage and asserted that Defendant No. 2 is fraudulently using Defendant No. 1’s name and FSSAI number on the impugned products. Registering the suit, the court held that a prima facie case of infringement and passing off is established and granted an ad interim injunction.
Kudos Pharmaceuticals Limited & … vs Dr Reddys Laboratories Limited on 22 December, 2023 (Delhi High Court)
The plaintiffs filed a suit against the defendant alleging infringement of their patent IN 228720 Olaparib which is used for treating cancer, along with additional patents for related products. The defendants submitted that the commercial launch of their product was scheduled only after the expiry of the plaintiff’s patents i.e. March 2024. The defendant asserted that it is undertaking activities permissible under Section 107A of the Patents Act. Considering the submissions and the defendant’s undertaking, the court restrained the defendants from commercially launching Olaparib until after the patent’s expiry or potential revocation.
Other IP Developments
- Dept. of Science and Technology releases their year end review for 2023.
- The Principal District and Sessions Court of Mysuru rules in favor of S.L. Bhairappa and directed Priyadarshini Prachurunalu to pay 5.05 lakhs for unauthorized translation of Bhairappa’s novel Vamshavruksha in Telugu.
International IP Developments
- The import ban on Apple watches comes into force. The ban was imposed on Apple by the US International Trade Commission for violating Masimo’s patent to monitor blood oxygen level.
- New York Times sues Microsoft and OpenAI alleging copyright infringement through their generative AI models.
- Rapper Eminem seeks protective order in the “Shady” trademark dispute with Gizelle Bryant and Robyn Dixon.