Here is our recap of last week’s top IP developments. Last week we published 3 posts including a post discussing the concept of hot tubbing, a post on the DHC interim injunction order restraining Geonix on the grounds of reverse passing off, and a tidbit on CCI’s appeal before the Supreme Court in. This and a lot more in this SpicyIP Weekly Review. Anything we are missing out on? Please let us know in the comments below.
Highlights of the Week
Recently, the DHC issued directives regarding expert evidence in the Perjeta patent litigation. Currently, the Court has asked the parties to share the credentials of their experts. The upshot of these directives can be significant for IP litigation, especially in courts resorting to ‘hot-tubbing’ in the future. SpicyIP Doctoral Fellow Malobika explores the meaning and origin of this concept, highlighting its pros and cons. Read on to know more!
SpicyIP Tidbit: The Competition Act v. The Patent Act: Catch 22
Does the Patent Act prevail over the Competition Act? The Supreme Court is set to decide. In this tidbit, Yogesh discusses the longstanding controversy regarding the CCI’s overlapping jurisdiction in patent disputes and the issues upon which the Supreme Court will adjudicate.
A Case of Reverse Passing Off: DHC Rules In Favour Of Western Digital On Trademark Infringement
Recently, the DHC passed an ex-parte interim injunction order against Geonix, holding them prima facie liable for indulging in ‘reverse passing off’ by selling Western Digital’s hard disks as their own. What does this concept mean? Read Tejaswini’s post as she discusses this case and the court’s findings.
Case Summaries
Therelek Machines Private Limited vs Therelek Engineers Private Limited on 28 February, 2024 (Karnataka High Court)
The petitioner challenged the rejection of its interim application under Section 124 of the Trade Marks Act, seeking a stay in a suit for trademark infringement. The Court held that the pendency of a rectification application, even if filed by a third party, justifies a stay under Section 124. The Court held that as long as there exists an application under Section 57, the requirements of Section 124 is completed. The party filing the application doesn’t need to be the same party filing the suit. The Court sets aside the rejection, staying the suit until the rectification application’s disposal within eight months.
Ynsect vs The Controller Of Patents on 28 February, 2024 (Delhi High Court)
The appeal challenged the denial of an Indian patent application for insect treatment. The Controller of Patents rejected it, primarily citing prior art and asserting non-patentability under Section 3(i) of the Patents Act. However, the Court found fault in the lack of detailed analysis regarding the applicant’s arguments distinguishing their method. Emphasizing the need for a thorough examination, the Court remanded the case to the Controller, instructing a fresh hearing. The decision highlighted the Controller’s duty to consider existing knowledge and the inventive step properly.
Mukesh Kumar Vidyarthi vs Controller Of Patents New Delhi & Anr on 1 March, 2024 (Delhi High Court)
The appeal challenges the rejection of a patent application for “Charge Recirculation Air Intake Main Ford (CRAIM).” The Deputy Controller of Patents cited lack of novelty and inventive step (Section 2(1)(ja)) and non-compliance with Section 59(1). The Court, considering the technical nature, directed a fresh hearing within four weeks, emphasizing reconsideration. The impugned order is set aside, and the application is restored, instructing the Controller to issue a new hearing notice, conclude the hearing in four months, and render a decision within one month thereafter.
The appeal challenged the rejection of a patent application for a “Bi-Functional Co-Polymer” by the Assistant Controller of Patents. The rejection was based on non-compliance with Sections 2(1)(ja), 16(3), 10(4), and 3(i) of the Patents Act. The Court set aside the impugned order citing the lack of independent scrutiny, and remanded the matter for reconsideration. The Court restored the Divisional Application, with specific directions for a fresh hearing and a decision within four months, leaving all rights open.
Abhi Traders vs Fashnear Technologies Private Limited on 29 February, 2024 (Delhi High Court)
The plaintiff, a popular e-commerce seller, filed a suit against defendants on www.meesho.com for unauthorized use of copyrighted images and selling counterfeit goods. It was alleged that the Defendants replicated plaintiff’s products, impacting their sales. The Court granted an ex-parte ad interim injunction, restraining defendants from imitating designs, photographs, and products, while directing the e-commerce platform to disclose sellers’ details and directed the Defendants to take down infringing listings within 72 hours.
Fashion Design Council Of India vs Fef Global Private Limited & Ors on 1 March, 2024 (Delhi High Court)
The Court, in response to the plaintiff’s plea, granted an ad-interim injunction against defendants from organizing “India Fashion Awards” due to its similarity to FDCI’s identical trademark. While allowing the event’s continuation, the Court directed the defendants to use “FEF” as a prefix and display a disclaimer to avoid association with FDCI’s event. The Court considered the advanced event preparations but mandates compliance with the modifications. The defendants must file an affidavit of compliance, and any future use of the impugned mark requires Court permission.
The plaintiff sought to restrain the defendants from using the mark “Café Social” which was alleged to be deceptively similar to its “Social” trademark. The plaintiff has registered its “Social” trademark and states to have invested considerably in its advertisement from 2001-2023. The plaintiff alleged that the defendant’s use of “Café Social” for its restaurant in Chhindwara, Madhya Pradesh infringes its trademark as it copied the “Social” word mark and the plaintiff’s distinctive artwork representing its trademark. The Court granted an ex-parte ad interim injunction order, finding a prima facie case in the plaintiff’s favor.
Kewal Krishan Bansal vs Puneet Chhabra Propreitor on 27 February, 2024 (Delhi High Court)
The defendant sought vacation of an ex-parte ad interim injunction on three grounds. First, it argued that the plaintiff concealed material information that the registration of its mark was removed for non renewal in 2010 and was renewed only in 2019. Second, the defendant was able to obtain copyright and trademark registrations for its device marks during the above interim phase. Third, the evidence of the plaintiff’s use of the mark from 1989 are fabricated. The Court ruled that the defendant’s plea for vacation of stay was unfounded and deferred to the plaintiff’s prior trademark and copyright registrations, its oppositions to the defendant’s trademark applications, and its applications for rectification of the defendant’s copyright registration. The Court also took note of the defendant’s applications for identical trademark and artistic work, despite the plaintiff’s prior registrations for lack of bona fides.
The Court decreed the suit in favor of the plaintiff, restraining the defendant from using the impugned “Pactrin” mark holding the same to be deceptively similar to the plaintiff’s “Practin” mark. Since the defendant did not appear nor they filed any written statement, the suit proceeded ex-parte. In addition to the permanent injunction, the Court imposed damages worth INR 15 Lakhs in favor of the plaintiff, relying on an earlier settlement between the parties, a plethora of precedents, and Rule 20 of the IPD Rules.
Through this order, the Court disposed of 2 applications. The first application was filed by the defendant seeking release of INR 1 Crore deposited as a pro tem security. The plaintiff relied on the 20.12.2023 judgement wherein the Court found the competing works i.e. the cinematograph film “Shamshera” and the plaintiff’s novel “Kabu na chhadein khet” to be prima facie dissimilar. The Court allowed the application clarifying that the 20.12.2023 judgement will supersede the earlier pro tem arrangement. The second application was filed by the defendant seeking revenue figures of the film ‘Shamshera’ to be taken on record. The Court allowed the application and directed to form a confidential club constituting counsels of the plaintiff and the defendant and prescribed the conditions to which the club shall adhere to.
The plaintiffs claim to manage a chain of restaurants under the name M/s Nizam’s Kathi Kabab since 1978 and alleged the defendant’s mark “Nazim’s/ Nazim’s Kathi Roll” to be deceptively similar to their mark. The defendant argued that his adoption is bonafide and protected under Section 35 of the Trademarks Act, 1999. During the proceedings, the defendant proposed that for the pendency of the suit, he shall use his full name “Nazim Khan” for his products and services, which was agreeable to the plaintiff and consequently the Court passed the present order directing the defendant to make the necessary changes within 3 months.
An application was filed alleging unavailability of efiling and payment gateway features on trademark registry website. Considering the issues with the website, the Court directed the Controller General or a designated senior officer to be present on the next date of hearing i.e. March 11 to appraise the Court as to what steps can be taken to resolve the issue.
Karim Hotel Pvt Ltd vs Kareem Dhanani on 6 March, 2024 (Delhi High Court)
Passed in the long standing dispute between the partes over the defendant’s use of the impugned “Kareem” trademark, this order deals with an application to reject the plaintiff’s 2022 suit against the defendant for using the impugned mark. Both the parties have registrations over their respective “Karim” and “Kareem” trademarks. An initial suit was filed in 2015 which was subsequently stayed due to a pending cancellation petition filed by the plaintiff before the IPAB. Later the 2015 suit was disposed of considering the pendency of the cancellation petition before the IPAB, with parties being allowed to seek subsequent actions after the cancellation petition seeks finality. The cancellation petition is still pending and the defendant in the interim period opened new restaurants under the impugned trademark. Considering the above, the Court held that the present suit cannot be dismissed as the same would render the plaintiff remediless and rejected the defendant’s application.
United Biotech Pvt. Ltd vs Mr. Gaurav Aggarwal & Ors on 1 March, 2024 (Delhi High Court)
The plaintiff filed the suit against the defendant’s use of identical ‘TAZIN’ mark for Tazobactam and Piperacillin injections. Previously an ex-parte interim injunction was granted in favor of the plaintiff. Due to nonappearance of the defendant, the Court decreed the suit in favor of the plaintiff and imposed INR 5 lakhs in as nominal damages in favor of the plaintiff.
Medicover Holding (Cyprus) Limited & vs. Medicover Hospital And Health Care on 28 February, 2024 (Delhi High Court)
The plaintiff filed an application for permanent injunction against the defendants, alleging infringement and malpractice. Previously an ex-parte interim injunction was granted in favor of the plaintiff and since the defendant did not appear in the present matter, the Court decreed the suit in favor of the plaintiff and imposed damages worth INR 5 Lakhs.
The plaintiff filed a suit seeking a permanent injunction to prevent defendants from copying, reproducing, storing, installing, or using pirated/unlicensed software programs, including “NUKE”, “NUKE X”, and “NUKE Studio”. The Court granted an ex parte ad interim injunction in favour of the plaintiff on November 25, 2021, and made it absolute on March 7, 2023. The plaintiff’s counsel filed an affidavit regarding costs and damages, claiming Rs. 3.11 lakhs for costs and expenses, including Court fees and an estimated revenue loss of Rs. 3.74 crores. The defendants had five licenses for the plaintiff’s Nuke software, which expired on September 20, 2020. The defendant did not renew its licenses and later it was observed that pirated version of the plaintiff’s software were being used in 105 computers with 7,695 infringement hits. The Court held that the plaintiff is entitled to a decree of injunction with partial damages, and awarded Rs. 25 lakhs as damages in favor of the plaintiff.
Viacom 18 Media Private Limited vs Https://Mhdtvsports.Nl & Ors on 1 March, 2024 (Delhi High Court)
The Court passed a dynamic injunction against the defendants restraining them from broadcasting Women Premier League. The Court also directed domain name registrars to lock and suspend the defendant’s domain names and directed ISPs to block the defendant’s websites. Especially with regard to the nature of content being broadcasted in this case, the Court observed that “any unauthorised broadcast and piracy of a live event which is, in essence, a perishable commodity, causes severe damage to plaintiff’s revenues as well as goodwill and reputation in the market, considering that it is not only the content which is critical but also the quality of dissemination in the service provided to the consumer of such content.”
Hmd Mobile India Private Limited vs Mr Rajan Aggarwal & Anr on 28 February, 2024 (Delhi High Court)
The dispute pertained to a copyright registration granted by the Board to an idea. In this order the Court raised two issues with the Copyright registration process- first, what are the filtration process used by the Board to eliminate frivolous applications; Second, scope of rights that a registered copyright owner can claim. The Court appointed Saikrishna Rajagopal as an amicus in the matter and asked him to file written statement by the next date of hearing- 15 March.
Saint Gobain Abrasives Inc & Anr vs Controller Of Patents on 26 February, 2024 (Delhi High Court)
In an appeal against the impugned order rejecting its patent application, the plaintiff argued that the respondent has not explained how the invention is obvious and would fall under the prior art. They also alleged that their amendments were wrongfully rejected for disclosing new substance. The Court perused the impugned matter and agreed with the appellant, remanding the matter back to them.
The plaintiff was aggrieved by the defendant’s use of “RN Jindal SS Tubes” mark alleging it to infringe its “Jindal” wordmark and pass off their goods as the plaintiff’s. The Court compared the two marks and held that they are dissimilar. Furthermore, the Court observed that it is open to anyone to use their surnames as trademarks and that the plaintiff cannot prohibit others from using a common surname like “Jindal” as a part of their trademark. Owing to the above reasons, the Court rejected the interim injunction application by the plaintiff.
UPL Ltd. Registrar and Anr. on 22 February, 2024 (Delhi High Court)
An appeal was filed against the order of the Registrar, Plant Variety Authorities rejecting an application seeking reliefs of damages, injunction and rendition of accounts u/s 24(5). The Registrar acknowledged that the order was passed on a mistaken understanding of the law, however, Respondent no. 2 argued that such a relief cannot be sought considering that the provision was held unconstitutional by the Division Bench previously. The Court stated that the DB order was stayed by the Supreme Court, and thus in the interim status quo regarding the constitutionality of the provision shall persist.
TM25 Holding & Anr. vs Karthik Bhaskar & Anr. on 23 February, 2024 (Delhi High Court)
The Court decreed the suit in favor of the plaintiff restraining the defendant from using deceptively similar “Go Star” marks and “Okie” device. The Court also directed the defendants to pay litigation costs- INR 10,13,200/- to the plaintiff, holding that “the award of costs would serve as a measure to offset the financial burden placed on the Plaintiffs as a result of the Defendants’ actions and their subsequent nonparticipation in the legal process.”
Other IP Developments
- Tripura’s “Risa” to get GI tag.
- Hyderabad’s Lac Bazar bangles get GI tag.
- As per IPO data, Ola Electric tops the list of patent filers in EV sector, followed by TVS.
- Andhra Pradesh High Court states that mathematical equations and science subjects are matters of facts and fall under laws of nature, refuses to grant them protection under Copyright Act.
- Cuttack’s Silver Filigree gets GI tag.
- Law Commission releases Report on “Trade Secrets and Economic Espionage”, recommends a legislation to protect trade secrets.
- Supreme Court rejected MakeMyTrip’s Special Leave Petition in Google Adwords matter.
- Justice Prathiba M Singh’s Commentary on patents law released.
- India to manufacture Semiconductors equipment soon, says IT Minister Ashwini Vaishnaw.
- Delhi High Court issues an ad interim injunction against Natco from selling generic versions of Olaparib.