Here is our recap of last week’s top IP developments including summaries of posts on the India- EFTA TEPA, AP High Court’s curious findings on fair use, and Delhi High Court’s order imposing INR 1 lakh as damages on Google for failing to disclose information about their corresponding foreign applications. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
One of the highlights of the India-EFTA TEPA is its provision regarding the applicant’s obligation to share information about foreign applications corresponding to their Indian patent application. In this guest post, Prathibha Sivasubramanian and Sreenath Namboodiri discuss the combined effect of these changes on transparency, the public information system in the Indian patent regime, and public health. Read on to learn more.
In a significant decision, the AP High Court made some curious findings on copyright and educational material. The Court held that no copyright vests in Mathematics and Science textbooks, and in arguendo, if copyright does vest in them, their unauthorized use will be protected as fair use. Yogesh argues that the reasoning adopted by the Court is problematic and unreasonable. Read on to know more.
Recently, the DHC imposed costs worth INR 1 Lakh on Google for concealing information about the rejection of its foreign patent applications corresponding to the application filed in India. Discussing this, Yogesh explains the relevant amendments to the Patent Rules and why such punitive measures against erring applicants will be difficult hereon.
Other Posts
Section 24(5) of the Plant Varieties Act Revived?
In an important development from the seldom discussed area of plant varieties, the DHC set aside the PV Registry’s order rejecting the breeder’s application for interim reliefs before the variety’s registration. In doing so, the HC clarified that the SC’s stay on a 2016 DB’s order deeming the relevant provision for such relief as unconstitutional, enables the application of the provision. In this post Vishno argues why this revival by the DHC may be inaccurate and why the DB was right in holding the provision as unconstitutional. Read on to know more.
Tic tac toe three in one row! In the past few days, the DHC and MHC have, in three separate and interesting orders, refused to- (1) vacate an interim injunction, (2) remand back to the patent office, and (3) continue allowance of a patent grant! Take a look at these three orders in this quick tidbit.
Case Summaries
Gsk Consumer Healthcare S.A. vs Celebrity Biopharma Ltd & Anr on 22nd March 2024 (Delhi High Court)
The petitioner sought revocation of the respondent’s trademark- “Otrinir” alleging it to be similar to the petitioner’s mark “Otrivin”. Upon making a holistic comparison, the Court held that the two marks reveal significant phonetic, structural and visual similarities that are likely to cause confusion among the consumers.
The plaintiff alleged infringement of its registered “Clarks” trademark by the defendant’s use of identical marks. The defendant argued that they were entitled to use the impugned mark by the virtue of an assignment agreement. The Court held that no such agreement was filed by the defendant and relying on the defendant’s oral arguments, held that the clause from the agreement cannot be interpreted as an assignment. The Court compared the competing marks and found the defendant’s mark to be deceptive, misleading and likely to cause confusion among consumers.
Rajesh Jain vs Amit Jain & Another on 4 April, 2024 (Delhi High Court)
The appellant sought discovery and production of a few documents in relation to the defendant’s defence of distinctiveness. Disposing of the appeal, the Court held that the documents sought were not relevant for the present case and clarified that the onus to establish as assertion lies on the party making it.
The Court passed an ex-parte ad interim injunction restricting the defendants from using “Vectair Systems”, “V screens”, and “Excel International” marks. The plaintiff’s marks are registered in the UK but have been used in India which was established by the annual sales figure and expenses incurred in advertising the mark in India. The plaintiff alleged that the defendant was using identical marks and were selling counterfeit goods.
Panasonic Holdings Corporation vs Ashok Kumar And Ors on 18 March, 2024 (Delhi High Court)
Delhi High Court passed an ex-parte ad interim injunction against the defendants restraining them from selling the counterfeit goods under plaintiff’s “Anchor”trade mark.
Visakha Chemicals vs Bindal Food Products on 21 March 2024 (Delhi High Court)
The plaintiff alleged that the defendant has infringed its “Rochak” and “Am Pachan” marks by adopting deceptively similar trademarks and trade dress. Though the defendant did not appear before the Court, it filed a written statement claiming that the impugned marks are generic. The Court held that the defendant was not able to establish this assertion by leading any evidence and relying on the plaintiff’s evidence and comparing the two marks, the court decreed the suit in favor of the plaintiff and imposed INR 3 Lakhs as nominal damages on the defendants.
Phonographic Performance Ltd. v. Passcode Hospitality Pvt. Ltd. on 10 April, 2024 (Delhi High Court)
The Delhi High Court passed an interim direction asking the defendant to deposit INR 15,00,000 as ad hoc license fees for using the plaintiff’s sound recordings. The plaintiff alleged that the defendant was unauthorizedly using its sound recordings and it has the right to determine the rates at which it licenses its repository. The defendant argued that after the expiration of an earlier settlement agreement, the plaintiff demanded for a 250% hike in the license fees determined previously under the above agreement. The Court allowed the defendants to use the sound recordings subject to payment of the ad hoc fees.
Other IP Developments
- Delhi High Court directed to take down fraudulent websites using Tata trademarks to lure public into Ponzi schemes.
- Ludhiana Court refuses to injunct Amar Singh Chamkila’s biopic.