Here is our recap of last week’s top IP developments including summary of the posts on the “origin” of Khadi, an empirical study on the ways “scandalous” and “obscene” marks are prosecuted by the Trademark Registry, quia timet injunction in Roche v. Zydus. This and much more in this SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Notes from the Doctoral Diary: 42nd ATRIP Congress in Rome (30th June – 3rd July 2024)
Sharing his personal experience at the prestigious ATRIP – Teaching and Research in IP Congress where he attended as the FICPI – International Federation of Intellectual Property Attorneys Young Scholar Prize winner, Lokesh Vyas brings us some insightful comments he observed over the course of the 4 day event, as well as some observations of perhaps special interest to those in the Global South.
Part I- An Empirical Analysis of ‘Scandalous’ and ‘Obscene’ Trade Marks in India
What does data say about marks that are considered obscene or scandalous by the Indian Trademark Registry? Take a look at Part I of this fascinating guest post by Ram Mohan M P, Aditya Gupta, Vijay V Venkitesh explaining the trend of prosecution of the marks objected under Section 9 (2)(c) by the Indian Trade Mark Registry, after compiling a robust dataset comprising of information from different examination reports, responses to the objections, oppositions and eventual grants.
Part II- An Empirical Analysis of ‘Scandalous’ and ‘Obscene’ Trade Marks in India
Continuing the discussion based on empirical data around the absolute ground of refusing to register the mark for being obscene or scandalous, in Part II of their post Prof. Ram Mohan M P, Aditya Gupta, and Vijay V Venkitesh highlight the inconsistencies in the administration of Section 9(2)(c) objections by the Trade Marks Registry.
Journey Through “Marchs” on SpicyIP (2005 – Present)
After a brief hiatus, Lokesh Vyas is back with the flashback series looking at SpicyIP posts through the years, from 2005 to present date. This time, he looks at the months of March through these years, including looking at posts on Section 3(d), compulsory licenses, the Madrid Protocol, and ex-parte interim injunctions.
Journey Through “Aprils” on SpicyIP (2005 – Present)
Back to back flashbacks, as right on the heels of the “March” post, Lokesh Vyas brings us a look at the pages from April, from 2005 to present day, on SpicyIP. Read on below for a quick look at posts over the years on topics including jurisdictional issues in IP disputes, parallel importation, intermediary liability, and technology transfer.
Other Posts
Recently, the MHC came down heavily on the Indian Patent Office in Ulm University v. Asst. Controller of Patents for its non-speaking order rejecting a patent application. Discussing the issues flagged by the court, especially concerning the lack of discussion on obviousness and the application of prior art, Mathews P. George highlights some pressing questions about the repercussions (if any) for such orders by the IPO.
Part 1: Khadi’s Origin and Legal Battles: Unraveling the Historical Significance
Discussing “Origin” as a legal concept as enshrined under different IP laws with “Khadi” as a case study, we are pleased to bring to you this very interesting historical dive by Subhadeep Chowdhury. In this post, Subhadeep discusses the recent legal battles pertaining to “Khadi” and recounts how Khadi derived its meaning (legally) in light of the Khaddar (Name Protection) Act, 1934.
Part 2- Khadi’s Origin and Legal Battles: Back to the Future
Following the discussion in Part 1, on the “origin” of Khadi’s meaning under the Khaddar Act, in Part II of this two part post Subhadeep Chowdhury builds an argument for an interdisciplinary approach to study IP with the concept of origin as the subject matter.
Taking a Look at Quia Timet Injunctions in Light of F-Hoffman-La Roche v. Zydus
Recently the DHC granted Roche a quia timet injunction, restricting Zydus to launch its biosimilar version of anti cancer drug Perjeta. Highlighting the court’s unusual rationale for this injunction, Tejaswini Kaushal discusses what these injunctions are and when they can be granted.
SpicyIP Tidbit: The Woes of Patanjali Continue as BHC Directs it to Deposit INR 50 Lakhs
In this SpicyIP tidbit, Md Sabeeh Ahmad writes about the recent legal woes of Patanjali following the recent BHC order directing the company to deposit INR 50 lakhs.
Case Summaries
Hasmukhrai And Co vs Registrar of Trade Marks on 24 June, 2024 (Bombay High Court)
The appellant filed an appeal against the impugned order, alleging the same to be cryptic. There is a mere finding in the order that the applied trademark ‘NATURE’S WEALTH FOR YOUR HEALTH’ is inherently incapable of distinguishing the goods of one person from those of another person and is devoid of any distinctive character. Further, the words used in the applied trademark are too common to be monopolized by an individual. The appellant argued that the mark is unique with respect to its goods and argued for application of anti dissection rule. The Court held that the respondent has shown a lack of application of mind and remanded the matter back to the Respondent.
UPL Limited vs Assistant Controller of Patents on 24 June, 2024 (Bombay High Court)
The appellant filed an appeal against the impugned order and alleged that the same is cryptic in terms of the reasons for the rejection of the amended claims. He stated that the requirement of Section 2(1)(j)(a) of the Patents Act has only been partly followed, wherein the D1 & D2 have been merely reproduced, but there is non-consideration of documents D3 and D4, in spite these documents being filed. The Court held the appellant’s submissions are valid, since the respondent has not furnished any valid reasons for the rejection of the amended claim. Hence, the Court remanded the matter to the Respondent.
Nexus Solar Energy Pvt. Ltd. v. Nexus Power Systems on 9 July 2024 (Delhi High Court)
The appellants have filed the present appeal against the order of a commercial court that prima facie found the appellant’s trademark to be deceptively similar to the respondent’s registered trademark under Section 29(4). It was contended by the appellants that the order of the commercial court is flawed on multiple grounds as: i) it falls foul to the Anti-Dissection Rule, ii) the respondents failed to provide adequate proof of their trademark’s reputation in India, and iii) Section 29(4) of the Trade Marks Act would be inapplicable since the Court found the goods to be identical. The Delhi High Court found merit in the contention that if the goods are identical, Section 29(4) of the Act would be inapplicable as sub-clause (b) of the provision (requiring the competing goods to be dissimilar) would not be satisfied. A period of four weeks was provided for replies to be filed, and in the meantime, the impugned order was stayed.
M/s Jindal (India) Ltd. v. M/s Rawalwasia Steel Plant Pvt. Ltd. on 9 July 2024 (Delhi High Court)
The plaintiff alleged infringement of trademark and copyright owing to the defendant’s use of trademark ‘HINDJAL’ which the plaintiff claimed was deceptively similar to their registered trademark ‘JINDAL’. The plaintiff has been using the ‘JINDAL’ trademark since 1952 and it is alleged that the defendants are infringing the plaintiff’s right to exclusive use by imitating the writing, style, and colour of the registered trademark. Despite the defendants agreeing to not use the mark after emails were exchanged between the two parties, the plaintiff submits that since there is no undertaking by the defendants to cease using the infringing marks commercially, injunctive relief shall be necessary. The Court was satisfied and concluded that the plaintiff made a prima facie case in their favour and granted the interim relief sought.
Opella Healthcare Group v. Pureca Laboratories Pvt. Ltd. on 9 July, 2024 (Delhi High Court)
The plaintiff filed the suit seeking permanent injunction for infringement of trade mark, passing off, and unfair competition owing to the defendants using the mark ‘PHENSERYL’ which the plaintiff alleged is deceptively similar to their registered trademark ‘PHENSEDYL’. Both ‘PHENSEDYL’ and ‘PHENSERYL’ are products marketed to treat the same allergic symptoms, leading to increased chances of confusion. It was also submitted by the plaintiff that the defendant’s product was deceptively similar in terms of trade dress, packaging, get-up, layout, and choice of colours. The Court found a prima facie case in favour of the plaintiff and granted the sought interim relief.
Emami Ltd. v. Dabur India Ltd. on 11 July 2024 (Calcutta High Court)
The petitioner sought the grant of an ad interim order restricting the publication of the defendant’s advertisement that portrayed the petitioner’s products in bad light. The petitioner is the registered proprietor of the trademark, copyright, and designs associated with the prickly heat powder “Dermi Cool” and talcum powder “Navratna”. It was asserted by the petitioner that in the defendant’s recent advertisement that has been published over 2000 times, a person is seen holding a bottle similar to Dermi Cool and is visibly unsatisfied by its effects. The bottle resembling the petitioner’s product is called ‘sadharannahi’ or ordinary. It is asserted by the petitioner that this advertisement infringes upon their trademark under Section 29(8) and wrongfully disparages the petitioner’s product through deliberate, false, and malicious misrepresentation. The Court found a prima facie case in favour of the petitioner and ordered the advertisement in question to not be published till the next date of hearing- 9 August, 2024.
Phonographic Performance Limited vs Al-Hamd Tradenation on 12 July 2024 (Delhi High Court)
The plaintiff filed the present case alleging an eminent threat of copyright violation by the defendant. It was alleged that the defendant refused to take a license for using its repertoire of sound recordings for its upcoming event and was only willing to pay INR 16,500 against the fees of INR 55,440/-. The defendant on the other hand submitted that it had filed an application seeking compulsory license and argued that it cannot be forced to pay an unreasonable royalty amount. Holding that the plaintiff has established a prima facie case, the Court directed the defendant to approach the plaintiff to obtain a license if it wishes to use its sound recordings and pay the license fees as demanded by the plaintiff.
Al Hamd Tradenation vs Phonographic Performance Limited on 12 July, 2024 (Delhi High Court)
The petitioner had filed an application seeking compulsory license, alleging that the respondent is charging exorbitant licensing fees. The respondent argued that the plaintiff cannot seek for a compulsory license under Section 31(1) as it does not give it any statutory power to raise any issues with respect to license fees being charged by them. Noting the arguments of the parties, the Court allowed 4 weeks to the respondent to file their reply.
Asian Paints Limited vs John Doe And Others on 11 July, 2024 (Delhi High Court)
An application was filed by the plaintiff against John Does who were claiming to offer dealerships to unwary consumers of the plaintiff’s “Asian Paints” products. By the present application, the plaintiff sought an interim injunction against the infringement of its “Asian Paint” mark and a notification to the Internet Service Providers to suspend the impugned websites and domains of the John Does. The Court held that the defendant has made a prima facie case in favor of granting an interim injunction and directed the ISPs to suspend the defendants’ domain names.
Dish Tv India Ltd vs Gulf Dth Fz Llc & Ors on 18 July, 2024 (Delhi High Court)
The plaintiff (respondent) filed a suit against the defendant (appellant) to restrain them from distributing set top boxes and smart cards in the Middle East and North African region. The respondent did not file its written submission in time and subsequently, the right to file the same was closed. The appellant filed an appeal against the decision of the Single Judge regarding closure of its right to file a written statement. They also objected to the application of the Commercial Court Act instead of CPC. The Court clarified that the present case is a “commercial dispute”, however, held that the single judge wrongly declared the suit to be governed by the Commercial Court Act, without following the prescribed procedure for such declaration. The Court also observed that the appellant had filed its written statement before the suit was numbered as a commercial dispute and even otherwise the delay was merely of 3 days from the deadline and thus allowed the present appeal.
Other IP Developments
- FIR registered against Kannada film maker Rakshit Shetty over allegations of copyright infringement in his movie “Bachelor Party”.
- Indian Health Minister insists on the country to have a “world class regulatory framework” for medicines.
- Dr. Reddy’s enters into an agreement with Takeda to commercialize Vonoprazan in India.
- Bombay High Court directs social media intermediaries to take actions against deepfake videos of National Stock Exchange’s MD and CEO.
- Supreme Court suggests Crompton Greaves and V-Guard to settle their “Pebble” trademark dispute out of court.