This weekly review is co-authored with SpicyIP intern Vedika Chawla. Vedika is a third-year B.A.LL.B. (Hons.) student at National Law University, Delhi. Her previous posts can be accessed here.
Wrapping up the first week of 2024, here is a brief recap of our hard-hitting post on TKDL, the detailed comments on the draft Calcutta High Court IPR Division Rules, and an informative take on scandalous and obscene trademark prosecution in India.
Highlights of the Week
Comments on Draft IPR Division Rules of High Court at Calcutta, 2023
Comments on the Draft IPR Division Rules of Calcutta High Court were due on January 5. Read the post for the co-authored comments and blog post with substantive and procedural suggestions on the Draft Rules.
The US’ Review of March-in Rights, and Some Questions on an Indian Counterpart
The US’ Review of March-in Rights, and Some Questions on an Indian Counterpart. Jyotpreet Kaur writes on March-in Rights, the changes proposed in the US NIST guidelines, and India’s position on similar arrangements.
A Spotlight on TKDL Once More: Oppose, Only To Abandon?
Recently Traditional Knowledge Digital Library (TKDL) filed a pre-grant opposition in a matter but walked away without appearing for the hearing. This is not the first time TKDL has had instances of walking away from oppositions though. Tejaswini in this hard-hitting post recounts TKDL’s history with oppositions, raising questions regarding how the database is used.
Other Posts
Scandal and Obscene Trademarks: Determining Immoral Trademarks in Indian Law
Obscene/ scandalous marks are prohibited from registration, but are they? Discussing the historical foundation of refusing registration to such marks Prof. Ram Mohan M P and Aditya Gupta undertake a purposive sampling to study whether the TM registry actually prohibits under such marks or not?
Copyright Bill, 1955: the Best Copyright Law that India Never Had
Read our latest addition to the IP History series, discussing the Mahatma’s take on copyright and the interplay between the 1955 Copyright Bill and the Berne Convention, by Shivam.
PAEP: Free Course on Patent Agent Exams
In light of the approaching Patent Agent Exam, we are pleased to bring to you news from one of our former bloggers Rajiv Kumar Choudhary about a wonderful new initiative he’s put together online- Prepare for the Patent Agent Examination (PAEP), a free for all website for the aid and assistance of the participants.
Case Summaries
Abhinav Immigration Services vs The Registrar Of Trade Marks on 4 January, 2024 (Delhi High Court)
The appeal was filed against an order refusing grant of trademark protection to the appellant’s mark “VISA EXPERTS: PARTNERING LIFE CHANGING DECISIONS” on the grounds that a similar mark “VISA” already existed. The court found that the appellant’s mark is a composite mark and must be assessed as a whole. Further, since Visa International Service Association, the proprietor of one of the cited conflicting “VISA” mark, did not have any objections against the appellant’s mark, the Court directed for it to be registered as a trademark.
Havells India Limited & Anr vs Cosmic Communication & Ors on 4 January, 2024 (Delhi High Court)
The application for interim injunction was filed by Havells alleging that the use of the mark “HEVALLS” by the defendant in relation to security cameras infringed on its registered trademark “HAVELLS”. The Court observed that the plaintiff was a renowned company manufacturing cables and wires for CCTV cameras, and also produces security cameras through its brand ‘Crabtree’. the Court prima facie observed that the use of the “HEVALLS” mark was intended to deceive consumers and granted an ad interim injunction to the plaintiff.
The plaintiff applied for an ex-parte ad interim injunction to be granted against the defendant’s use of the unregistered mark ‘ZECOF’ in relation to medicines to treat cough, alleging that they infringe on its ‘ZECUF’ registered mark. The Court found that a prima facie case was made out and granted the injunction.
Jrpl Riceland Llp vs Neeraj Mittal & Anr on 4 January, 2024 (Delhi High Court)
The plaintiff is the proprietor of the registered mark ‘Biryani King’ and discovered that the defendant was using a similar mark ‘Biryani King XXXL’. The Court found that the marks were nearly identical and used in relation to similar goods, i.e. rice and other edible goods. Thus, finding that a case for ex parte ad interim injunction was made out, the court passed the present order.
Khadi And Village Industries vs Aayush Gupta And Others on 5 January, 2024 (Delhi High Court)
The plaintiff’s “KHADI” trademark is registered across multiple classes, including in relation to hand soaps and other related products, was allegedly being used without authorisation by the defendants on hand cleansers and the products were also being offered on e-commerce websites like Amazon. The use of the deceptively similar “KHADI EARTH” mark by the defendants was found to be a prima facie case of infringement, and the Court granted an ex-parte ad-interim injunction.
Mannat Group Of Hotels Private Ltd. vs M/S Mannat Dhaba & Ors on 4 January, 2024
The plaintiff had registered the marks “MANNAT” and “MANNAT DHABA” in relation to dhabas and eateries around the Delhi-Chandigarh Highway. The defendants were using similar marks, in relation to dhabas. Assessing the competing marks, the court held that a prima facie case of infringement has been made out and passed an ex-parte ad interim order.
The plaintiff, a part of the globally renowned Verizon group and the proprietor of the “VERIZON” mark, contended that the defendants were using a “VERIZONE” mark which infringes on its registered trademark. Noting that the defendant’s mark is deceptively similar, the Court restrained them from using the “VERIZONE” mark as well as any other marks deceptively similar to that of the plaintiff.
The plaintiffs are holders of copyright and trademark rights in the products related to the proprietary “Densah Bur technology,” which involves bur attachments for dental implants. The plaintiffs discovered that the defendants had displayed exact replicas of the dental burs manufactured by the plaintiffs using their proprietary technology on their website as “Waldent Universal Osseodensification Burs Kit”. Assessing the request for interim injunction, the court held that plaintiff has made out a strong case for ex-parte interim injunction and directed the defendant to remove the impugned listings and further restrained them from using the any marks similar to that of the plaintiff.
Associated Broadcasting Company Ltd. vs Google Llc & Ors on 5 January, 2024
The plaintiff operates several television channels and digital platforms in India named “TV9” and applied for a protective order, preventing its channel from being removed from YouTube after it received notices alleging copyright infringement by the defendants and received information that the defendant has initiated copyright proceedings against them in the United States. Assessing the facts, the Court found no urgency in the matter and refused to issue such orders.
Diabliss Consumer Products Pvt Ltd. vs Overra Foods on 5 January, 2024
The plaintiff employs its registered mark ‘DIABLISS’ in relation to its product, which is a diabetic friendly sugar, and alleged that the defendant was selling a similar product under the name ‘DIABEAT’, which was registered as a trademark, in a similar packaging and trade dress. The plaintiff previously sought and was granted and injunction against the defendants by the Madras High Court, and filed the present petition seeking removal of the ‘DIABEAT’ trademark. Noting that the acts of the defendant were a “mala fide and dishonest attempt to cause confusion in the market”, the Court granted the relief and ordered the defendant’s mark to be removed.
Dr. Reddys Laboratories Limited vs Sgs Pharmaceuticals (P) Ltd on 5 January, 2024
The plaintiff moved the present application to seek protection of copyright and common law rights in the trade dress, packaging, colour scheme and layout of “PRACTIN”, a drug manufactured by the plaintiff, containing the compound “Cyproheptadine”. It was alleged that the defendant produced a similar compound drug under the name “CYPROHEPTADINE-4” and imitated the trade dress of the plaintiff’s product. Noting that the defendants also imitated the particular orange-yellow colour in the packaging of the plaintiff’s product when the usual colour for packaging of pharmaceutical products is silver, there was a strong likelihood of confusion in the mind of anyone dispensing or consuming the drugs. Thus, it granted an interim injunction.
Nivedita Joshi vs Abhishek Ray & Anr on 4 January, 2024 (Delhi High Court)
The Plaintiff sought an ex parte ad-interim injunction against the defendants, alleging that she had penned the lyrics for a song ‘Palko Ke Palne’ to be included in a film ‘Life is Good’ but which was subsequently not produced, and that the song was being used by the defendants without her permission. Noting that the plaintiff was the author and first owner of the literary work, the Court directed that the song, through its dissemination, credit the plaintiff, and all royalties be reserved until further orders.
Puma Se vs Indiamart Intermesh Ltd on 3 January, 2024 (Delhi High Court)
Puma contended that the use of its mark as an option in a dropdown menu by Indiamart constituted an infringement since the resulting page from that option displays several counterfeit products of the plaintiff’s goods. The Court noted that while including a trademarked brand name in a dropdown per se is not illegal, the e-commerce must ensure that there are checks in place to ensure that infringers do not benefit from the same and they have an obligation to “sedulously protect intellectual property rights of others”. Thus, the Court ordered that the counterfeit listings be taken down by the platform and restrained the platform from providing any of the registered trademarks of the plaintiff.
University Health Network v. Adiuvo Diagnostics Pvt. Ltd. on 3 January, 2024 (Madras High Court)
In this case, the fourth respondent had filed a patent application for “fluorescence based imaging and monitoring” in the Indian Patent Office, Delhi. However, the hearing and the examination took place by an Examiner in Chennai. The petitioner, also situated in Chennai, opposed the application and aggrieved by the order granting the patent, filed the writ petition before a Single Judge bench of the Madras High Court. One of the grounds for opposing the writ petitions by Respondent no. 4 was the lack of territorial jurisdiction of the Madras High Court, since the appropriate office was Delhi and aggrieved by the order of the Single Judge, filed an appeal before the Division bench. Upholding the order of the Single Judge the Division Bench held that in a writ petition filed against the order of the patent office, the High Court where part of the cause of action arose will have the territorial jurisdiction. This jurisdiction will be irrespective of the location of the “appropriate patent office”.
Other IP Developments
- Adi kekir (ginger), carpet handmade by Tibetan settlers and wooden items made by the Wancho community from Arunachal Pradesh get GI registration.
- Similipal kai chutney (red ant chutney) from Odisha gets a GI registration.
- Three varieties of sarees- tangail, korial and garad, from West Bengal get GI registration.
- Takedown actions initiated by weather photographer Brandon Clement’s company in the US against many Indian news channels.
- Supreme Court issues notice in the “Blenders Pride v. London Pride” trademark dispute.
- Draft Patent (2nd Amendment) Rules, 2024 published by Ministry of Commerce. Deadline for comments- February 3 (pdf).
- New roster of Delhi High Court IPD takes effect from January 3.
International IP Developments
- Nokia and Honor enter into an amicable settlement of their 5G SEP dispute in China.
- Clothing brand Superdry sues Manchester City for using similar Asahi Super”Dry” logo for their training kits.
- Public Domain Day: Early Versions of Mickey and Minnie Mouse, sound recordings of Bessie Smith’s “Down Hearted Blues” and Ma Rainey’s “Southern Blues”, Hindi Films “Mere Mehboob”, “Taj Mahal”, and “Gumrah” and Tamil films “Annai Illam”, “Anandha Jothi”, and “Nenjam Marappathillai” to fall under public domain in 2024 (see here).