Here is our recap of last week’s top IP developments. Last week we published 3 posts on the MHC’s interpretation of Section 3(d) in the Novozymes case, DHC’s referral of 3 questions concerning the jurisdiction of High Courts in trademark rectification matters, and DHC’s decision on infringement of product by process claims. Anything we are missing out on? Let us know by dropping a comment below.
Highlights of the Week
‘Non’-Pharmaceutical Substance and Efficacy under Sec 3(d)
Can Section 3(d) be applied to a non pharmaceutical invention? The MHC in Novozymes v. Asst. Controller of Patents and Designs made some interesting observations on this issue. In this detailed post discussing the order, Amit Tailor highlights what can be ‘efficacy’ for such a subject matter.
Legislative Oversight? Addressing the High Court Jurisdiction Vacuum Post-IPAB vis-a-vis Cancellation Petitions under the Trademark Act. Kevin discusses his thoughts on the ability of High Courts to hear rectification petitions in light of the recent DHC order in Hershey Company vs Dilip Kumar Bacha.
Product-by-Process claim: DHC to the rescue
Does DHC DB’s decision on product-by-process claims bring clarity to this concept that has seemingly remained alien to Indian patent jurisprudence? Or does it suffer from the same issues of reading the product and process claims in silos like the Single Judge’s decision that it sets aside? Read Yogesh’s take on this decision to know more.
Case Summaries
Clover Infotech Pvt Lt. Clover Centrum vs Clover Network Inc. on 14 February 2024 (Delhi High Court)
The petitioner sought the removal of the respondent’s mark ‘CLOVER,’ registered in Class 9. The petitioner, with a prior registration since 2010 and evidence of use since 2000, argued against the respondent’s mark registered in December 2018 on a proposed-to-be-used basis. In the absence of the respondent’s response, the Court allowed the petition, ordering the removal of the respondent’s mark from the Trade Marks Register.
Zed Lifestyle Pvt Ltd vs Hardik Mukeshbhai Pansheriya & Ors on 14 February, 2024 (Delhi High Court)
The plaintiff sought a permanent injunction against the defendants for infringing on the mark “BEARDO.” Despite multiple notices, the defendants didn’t appear or file a written statement. The Court granted a decree of permanent injunction, restraining the defendants from using similar marks. Costs of Rs. 3 lakhs were awarded against the defendants. The suit was disposed of with directions for monitoring defendant no.3 (Amazon) for potential infringements on the plaintiff’s Amazon Store.
International Society For Krishna Consciousness (Iskcon) Temple vs. Iscon Timber (Gujarat High Court)
The appeal challenges the dismissal of a trademark infringement suit filed by ISKCON against the Order 17 Rule 3 provision. ISKCON, citing its charitable and religious activities, argued it holds exclusive rights to the trademark. The Court dismissed the suit due to non-appearance, prompting this appeal which contended insufficient time and procedural irregularities. The High Court allowed the appeal, quashing the dismissal order, and ordered the suit’s restoration for a fair hearing.
The issue in the present case was whether a party can plead under Section 124 of Trade Marks Act, 1999 even though the statutory time for filing the written submission has collapsed. In this case, the said plea was made in the counter-affidavit by the defendant that the defendant’s mark was in prior use and the plaintiff’s mark was thus invalid. The Court held that the strict interpretation of Section 124 should be avoided and the defendant’s should be allowed to file the application of rectification on the account of the invalidity of the plaintiff’s mark.
Louis Vuitton Malletier vs M/S Capichino/Capture & Ors on 14 February, 2024 (Delhi High Court)
The plaintiff applied for a decree against the defendants in a trademark and copyright infringement case. On an earlier occasion, the Court has granted an ad interim injunction due to the counterfeiting of products done by the defendants by using the plaintiff’s marks. On the account of no response from the defendants after the ad interim order, the Court found it suitable for granting a decree of permanent injunction and damages to the plaintiff.
Tata Sons Private Limited & Anr vs Malla Rajiv on 12 February, 2024 (Delhi High Court)
The plaintiff, an internationally renowned conglomerate, filed an application for interim injunction against the defendants on the grounds of passing off in relation to Plaintiff’s mark, Tata Copper+ Water. The Court granted the ex parte ad interim injunction in favor of the Plaintiff as prima facie, the defendant’s mark, JK Copper+ Water, did infringed the registered trademark of Plaintiff.
Louis Vuitton Malletier vs Jai Kumar Kashyap & Ors on 16 February, 2024 (Delhi High Court)
The Court granted a decree in favor of the plaintiff, Louis Vuitton, against defendants 1-3 in a trademark infringement case. Defendant no.3 sought de-sealment of goods with ‘LEE VENTO’ mark, agreeing to obliterate deceptive device marks and also agreed to pay Rs. 1,00,000 as costs. The Court directed de-sealment with conditions and decreed the suit.
Maharashtra Hybrid Seeds Company Vs Assistant Controller General Of Patents, Designs And Trademark And Geographical Indications On 20 February, 2024 (Delhi High Court)
Considering the intricacies of the matter, the Court appointed an Amicus Curiae in an appeal against the Patent Office’s order, and scheduled the next hearing. The respondent’s Patent Officer was allowed to join via video conferencing on the following date, responding to opening submissions for the appellant.
The Court granted an ex parte ad interim injunction in favor of the plaintiff, Tata Group companies, in a trademark infringement case. Defendant nos. 1-6 were restrained from using the “INDICASH” mark in any manner, and defendant no.7 was directed to take down specific listings. Additionally, domain names containing the mark are to be suspended.
Phonographic Performance Limited vs Geetanjali Salon Private Limited & Ors on 16 February, 2024 (Delhi High Court)
The Court granted an ex-parte ad interim injunction in favor of the plaintiff, Phonographic Performance, in a copyright infringement case. It was argued that despite service of notice, the defendants continued to use the plaintiff’s sound recordings without authorization. Finding prima facie case in the favor of the defendant, the Court restrained the defendants from exploiting the plaintiff’s copyrighted sound recordings.
Phonographic Performance Limited vs Apparel Group India Private Limited on 16 February, 2024 (Delhi High Court)
The Court grants an ex-parte ad interim injunction, preventing the defendants from using the plaintiff’s copyrighted works, available on their website, at various premises without a valid license. The plaintiff established a prima facie case, demonstrating potential irreparable harm owing to which the Court passed the present order.
Salish Sham Viswan vs Singing Artists Association Kerala on 16 February, 2024 (Kerala High Court)
The petitioner, proprietor of ‘Singing Artists Association Kerala,’ seeks to cancel the Trade Unions Act registration obtained by the 1st respondent, alleging infringement of his Trademarks Act-registered name and logo. The 2nd respondent’s dismissal (Ext.P4) based on a mistaken assumption is set aside, directing a reconsideration of the petitioner’s application within three months. The Court clarified non-interference in the merits of the case.
Tata Sons Limited vs Greenpeace International & Anr on 19 February, 2024 (Delhi High Court)
The Plaintiff filed a suit to take down the Defendant’s game ‘Turtle Versus Tata’ from third party sources. The Court on a previous occasion had directed the defendant to remove the game and the same was complied with. However, the game is still available through third party sources. Therefore, the Court has directed the removal of the game from the list of sources as provided by the Plaintiff. For the ascertainment of the damages, the parties have been sent for mediation.
The Plaintiff had approached the Delhi High Court for interim injunction for maliciously using the Plaintiff’s marks on Defendant’s product. The marks had grave similarity and the defendant had been aware of the Plaintiff’s marks as the Registry had denied the registration of the Defendant’s mark on the account of the existence of a similar mark owned by the Plaintiff. Thus, the Court granted ex parte interim relief in the favor of the Plaintiff.
The Plaintiff had filed a suit of trademark infringement of its registered marks by the defendants even though the Court on an earlier occasion had restricted the defendant from doing so. The Plaintiff alleged that the use of brand name ‘Minda Oil’ and ‘Mindus UTO’ creates a confusion in the mind of the customer in respect to its mark ‘Minda’ and the other similar registered marks. The Court granted relief to the Plaintiff and the Respondent agreed to stop using the impugned marks.
Tie Inc vs Tie Global & Anr on 19 February, 2024 (Delhi High Court)
The Plaintiff has a considerable presence in India and has registered its marks ‘TiE’, ‘TiE Global’ and ‘The Indus Entrepreneur’. The defendant has been using the marks ‘TiE’, ‘TiE Global’ and ‘The Indian Entrepreneurs Global’ due to which the Plaintiff alleged that such marks were causing deception and confusion and therefore, asked for a permanent injunction against the defendant. The Court granted the interim relief in favour of the Plaintiff and directed to pull down the impugned domain name.
The Plaintiffs, a USA based software company and their authorized agents in India, owned copyright over a computer aided design software called ‘SolidWorks’. The plaintiffs alleged that the Defendants have been using a large volume of pirated version of the plaintiff’s software and the usage was completely authorized. The Court granted interim injunction in favor of the plaintiff as it was a prima facie infringement of the Plaintiff’s copyrighted work.
Shri Dhiraj Kumar vs R H Agro Overseas Pvt Ltd & Anr on 20 February, 2024 (Delhi High Court)
The Petitioner had initiated the stay on the proceeding of a trademark and copyright infringement case going in the District Court against itself. The Petitioner presented the Rule VII Order 11 application on the ground that pre-mediation was ignored by the District Court and directly the ex parte interim relief was provided. The High Court clearly held against the Petitioner that such pre-mediation can be well skipped if the immediate relief is more important and thus, no stay on the proceeding shall be there.
Castrol Limited vs Rajesh Kumar Tuteja on 12 February, 2024 (Delhi High Court)
The plaintiff was aggrieved by the use of the mark “Castroi” which was alleged to be deceptively similar to its “Castrol” mark. The defendant had a registration over the trademark “newcast roi racing”, and argued that their registration is subjected to a disclaimer asserting no affiliations with the “Castrol” trade mark. The Court held that the defendant’s use of the mark was deceptive and was done with a clear intent to deceive the public. Regarding the disclaimer, the Court held that it fails to acknowledge consumer perception and market reality where initial impressions and brand recognition play a crucial role in consumer decision making. Owing to the above reasons the Court decreed the suit in favor of the plaintiff and imposed INR 5 lakhs as damages and INR 7 lakhs as costs.
Castrol Limited vs Rajesh Kumar Tuteja And Anr on 12 February, 2024 (Delhi High Court)
Stemming from the above case, this order pertains to the application for cancellation of the respondent’s “newcast roi racing” mark. In a strongly worded order, the Court held that the lack of contest from the respondent underscores the severity of misuse and its decision to discontinue the use of the mark and offering no opposition to the cancellation petition will not mitigate the infringement that has already occurred. Directing to cancel the respondent’s mark, the Court held that the cancellation serves not only as a corrective measure for this case but also serves as a deterrent against such deceptive practices.
Sadulram & Anr. vs Retail Royalty Company & Anr. on 8 February, 2024 (Delhi High Court)
An appeal was filed against the Single Judge’s judgement granting a permanent injunction to the respondent and imposing INR 5,50,000 as costs on the appellant. The impugned judgement was passed in a trademark infringement suit wherein the respondent alleged that the appellant’s use of “Raiko with a flying eagle” device is deceptively similar to their “Flying eagle” mark. The single judge had held that if the appellant’s “Flying eagle” device was used without the “Raiko” mark, there was a possibility of confusion owing to imperfect recollection test. The division bench set aside the impugned judgement awarding the cost and held that the single judge ought to have considered the ‘anti dissection’ rule.
A division bench of the Bombay High Court stayed the investigation in FIR filed by the Respondent no. 2 for being malafide. The respondent no. 2 filed a FIR on behalf of designer Mrinalini Kumari, alleging that the petitioner is wrongfully and illegally using her “Intarsia” and “Sandwich patch” design for manufacturing clothes. It was also alleged that the respondent no. 2 and Mrinalini Kumari were former associates and the former stole her designs/ techniques causing her wrongful harm. The Court found that the allegations in the FIR have been adjudicated by an Arbitrator in Italy and that after suffering an adverse order in the above proceedings, Mrinalini Kumari filed the present complaint. Finding that prima facie the FIR was filed to misuse the criminal law machinery, the Court passed the present order.
The Delhi High Court decreed the suit in favor of the plaintiff. The suit was filed alleging trademark infringement alleging that the defendant’s “Novya” mark was deceptively similar to the plaintiff’s “Nova” mark. It was also alleged that the trade dress of the impugned products was similar to the trade dress of the plaintiff’s product. The Court compared the competing marks and trade dresses and held that the defendant’s mark and trade dress to be deceptively similar to the plaintiff’s trademark and trade dress. The Court also held that defendant’s decision to file a trademark application for its “Novya” mark indicates a deliberate attempt to capitalize on the plaintiff’s goodwill and the defendant’s subsequent abandonment after the plaintiff’s opposition suggests dishonest and malafide intentions. The Court also took note of the defendant’s conduct during the proceedings especially them making false representations and held them guilty of contempt, imposing INR 5 Lakhs as penalty to be paid to the plaintiff.
The Delhi High Court passed a quia timet interim injunction against the defendant from launching ‘Ruxolitinib’ and directed to execute a local commission at the premises of the defendant for seizing any infringing material. The plaintiff submitted that Claims No. 1, 17 and 21 of the Suit Patent cover and claim the patented compound ‘Ruxolitinib’. It alleged that as per a report by an independent investigating agency, i.e. Strategic Analysis India Private Limited, the defendants intend to launch their variant of ‘Ruxolitinib’ and sought quia timet relief. Considering the above, the Court held that the plaintiff has made a prima facie case and passed the present order.
Other Developments
- The Delhi High Court imposed a penalty of INR 5 lakhs on Oppo for substantial delays in a patent litigation.
- Indian Music Industry opposes Meta’s Interoperability proposal in Metaverse, citing copyright and royalty concerns.
- Youtube Dhruv Rathee undertakes before the Calcutta High Court that he’ll mask Dabur’s identity in an allegedly disparaging video.
- Oracle’s proprietary word ‘Java’ cannot be used in the domain name and the company name, says the Delhi High Court.
- Decade Later, Man Acquitted Of Selling Fake Branded Watches Worth Rs 2,500.
- Should’ve Been Diligent About Protecting Trademark: Delhi High Court Denies Plea For Additional Documents To Prove Use Of Mark After Two Years Of Filing Suit
International Developments
- OpenAI Can’t Patent ‘GPT’ Trademark, Confirms US Govt.
- Former Rep. George Santos sues late night host Jimmy Kimmel for allegedly ‘deceiving’ him into creating Cameo videos
- Tech companies using content without consent claims IPA president Karine Pansa regarding AI-generated material.
- United Therapeutics files litigation with FDA over rival Liquidia’s drug application
- US Supreme Court won’t review Apple’s win against $503 million patent verdict
- Cox Communications wins order overturning $1 billion US copyright verdict