After an eventful week, here is our recap of its top IP developments. Last week we published 9 posts on topics such as the proposed Patent (2nd Amendment) Rules, the Delhi High Court-Butter Chicken Controversy, and developments regarding the public search and e-register feature of the TMR website. Don’t forget to check them out on the blog too!
Highlights of the Week
Comments on the Proposed Patent (2nd Amendment) Rules, 2024
In addition to the typos and ambiguity regarding the timelines, the Draft Patent (2nd Amendment) Rules, 2024, inter alia, suffer from limited scope and require clarity on the qualification of the designated officers. Read the submitted comments on the Proposed Rules to know more.
Squawking over butter chicken: The mystery of the real master chef
Re the recent ‘Butter Chicken’ brouhaha before the DHC, Aparajita raises some pressing questions on what the dispute is all about! Read her take on the controversy.
Food, Fights, and the Butter Chicken: Some More Thoughts on “The Mystery of the Real Master Chef”
Right on the heels of Aparajita’s recent post on the “Butter Chicken” controversy, Lokesh shares his thoughts on the potential IP issues involved here, based on information from the Trademark Registry, the order, and some more news reporting. These posts surely make you wonder if there is a legitimate IP dispute or if is it just a case of overhyped (and perhaps incorrect?) media coverage!
In landmark development, BHC has clarifed that organizations such as Phonographic Performance Ltd (PPL) and Novex Communications can grant licenses for the musical works owned by them. Read Tejaswini’s post on the decision.
Restrictions on E-Register and Public Search Features of the Trademarks Registry Lifted (Finally!)
Restriction on the E-Register and Public Search feature of TMR website finally lifted! The features will be accessible 24×7 now. Read more on this news.
Other Posts
Some Thoughts on the Draft Patent (2nd Amendment) Rules, 2024
Ambiguous provisions, excluding major offences from its scope, and unclear criteria for the appointment of the adjudicating and appellate authorities are some of the issues with the recently proposed Patent (2nd Amendment) Rules, 2024. Read Praharsh and Pranav’s quick take on the proposed Rules.
Cybersquatting: Delhi HC on Infiniti Retail Limited v. M/S Croma – Share & Ors.
Recently the DHC blocked a few websites defrauding customers under the pretext of offering jobs with Croma/ Infiniti Retail Ltd. All’s well that ends well? Well, not exactly. Discussing the judgement, Mathews raises some important questions concerning injury to the customers and liability of the domain name registrars in such cases. Read his take on the controversy.
Same Same but Different! The Menace of Different Drugs with Similar Trade Names
What if we tell you that there is a drug that is used for treating diabetes, but has a similar/ almost identical brand name as another drug used for treating a type of cancer. Surprising, isn’t it? Unfortunately, the issue of similar brand names for different drugs treating different ailments is pretty common in India. Bringing this issue to light, Dinesh S Thakur and Prashant Reddy T break down why the problem of drugs with similar names is a cause for concern in India. [This article was first published in the Hindu.]
CGPDTM to listen to grievances regarding the processing of trademark applications and the TMR portal on February 1.
Case Summaries
Harindra Singh And Anr vs The State Of Maharashtra on 8 January, 2024 (Bombay High Court)
The Bombay High Court quashed an FIR against the petitioner alleging that by using one of the Respondent’s logo (Edelweiss Financial Services Ltd.) in a press release, they have defamed the Respondent. The court assessed the material on the record and held that there were no evidence that there was no infringement, misuse or malicious use of the logo/trademark of Edelweiss Financial Services Limited. The impugned use was only with regard to the news report concerning petitioner’s resignation from the company and consequently, there was no wrongful loss to the company.
Volans Uptown Llc vs Mahendra Jeshabhai Bambhaniya on 15 January, 2024 (Delhi High Court)
Delhi High Court passed a permanent injunction against the defendant restraining them from using the plaintiff’s mark “Botanic Hearth”. The plaintiff alleged the defendant to be a trademark squatter who would file trademark applications and coerce legitimate trademark owners into paying large sums for no objection certificates. The court took note of the above and held that such conduct poses a significant threat to the integrity of trademark law and thus passed the present order.
Marico Ltd. & Anr vs J. K. Enterprises on 31 January, 2024 (Calcutta High Court)
The Calcutta High Court dismissed a 20 year old trademark infringement suit due to lack of sufficient evidence. The plaintiff filed the suit alleging infringement of its trademark “Nihar” by the defendant’s use of a deceptively similar trademark “Nihal”. Despite being served with suit papers, the defendant did not appear before the court nor filed a written statement. The plaintiff passed for a judgement relying on Order VIII Rule 10 of the CPC. The court clarified that the power under the above provision is discretionary and refused to pass a judgement only on the basis of the plaint without any evidence, thus dismissing the suit as undefended.
Mother Sparsh Baby Care Pvt Ltd vs Aayush Gupta & Ors on 25 January, 2024 (Delhi High Court)
The court disposed of 2 applications via this order. First, it allowed defendant no. 4 to be removed from the array of parties considering that it’s only an intermediary. Second, relying on Jumeirah Beach Resort LLC order, the court accepted the Plaintiff’s request to consolidate the rectification proceedings filed before the Registrar with the present infringement suit.
An appeal was filed against the Trial Court’s order dismissing the appellant’s plea to seek a permanent injunction against the defendant’s use of the mark “SALESKEN”. The Court assessed the arguments and compared the plaintiff’s “SASKEN” mark with the defendant’s mark and held that the two marks were neither identical nor similar.
Of the four suits regarding Nokia’s SEPs in the Delhi High Court, the parties moved an application for settlement regarding CS(COMM) 303/2021 & 304/2021. However, for CS(COMM) 162/2022 & 171/2022 the plaintiffs alleged that there was no settlement as on date. Thus, considering the above, the Delhi High Court thereafter passed an order to defer the matter to 26th February 2024 for receiving the settlement application on CS(COMM) 303/2021 and 304/2021 and final instructions on the other 2 suits.
Ajanta Pharma Ltd vs M/S R.R. Enterprises & Ors on 25 January, 2024 (Delhi High Court)
The plaintiff applied for a permanent injunction against the defendant to restrain them from selling counterfeit products. The plaintiff further alleged that the defendants were operating under a stolen identity. A laboratory test report supplied by the plaintiff verified that such counterfeit products were harmful, posed health risks and were of inferior quality. The court, upon being satisfied that the plaintiff had made out a prima facie case, would suffer irreparable harm and that the balance of convenience was in the plaintiff’s favour, passed an ex-parte ad interim injunction against the defendant.
The plaintiff filed an application for a permanent injunction against the defendant’s – “TA TA TAN / Ta Ta Tan”, mark. Considering the well-known status of the plaintiff’s mark, the court observed that the defendant’s products are not listed on their own website, but are available for distribution and sale on other e-commerce websites and thus passed an ex-parte ad interim injunction against the defendants.
The petitioner challenged an arbitral award upholding the respondent’s plea to cancel/transfer the disputed domain name to them. The petitioner alleged that the Award was passed ex-parte violating the principles of natural justice. However, dismissing the argument, the court took note that the petitioner was in receipt of a notice of the arbitral proceedings.
Canvas Communication vs Phonographic Performance Limited on 25 January, 2024 (Delhi High Court)
The plaintiff sought a declaration that its use of sound recordings would not infringe defendant’s copyright and relied on DPIIT’s notification clarifying that playing music during wedding functions would not be copyright infringement. The defendants argued that the notification conflicted with Novex Communications Private Limited v. Union of India and Anr. and that the 2023 Notification would only cover the main ceremony and not the pre and post-wedding events. While the court did not pass an order on the merits, to balance the equities, it directed the plaintiff to deposit Rs. 1,00,000 with the defendant, subject to the final adjudication of the suit.
Other IP Development
- Gujarat Court dismisses a copyright infringement suit against singer Kinjal Dave. Allows her to perform the song “Char Char Bangadi Wali Gaadi” in concerts.
- Bombay High Court passes a split verdict on the constitutionality of IT Rules Amendment 2023.
International Development
- USTR releases 2023 Review of Notorious Markets for Counterfeiting and Piracy (the Notorious Markets List). Market places from New Delhi, Mumbai, Bengaluru featured on the list.
- US lawmakers propose Non Consensual Anti-porn Bill.
- Netgear sues Huawei in US antitrust case over patent licensing.
- US court allots USD 151.5 million to Centripetal Networks, holds Palo Alto Networks liable for patent infringement.
- Philip Morris International Inc and British American Tobacco p.l.c. resolve all ongoing patent infringement disputes.