Here is our recap of last week’s top IP developments including summary of the posts on legal notices sent by Manu Bhaker’s team to different companies for putting out unauthorized congratulatory posts, DHC’s orders on Al-Hamd Tradenation’s compulsory license application to access PPL’s sound recordings, and our comments on the draft Trademark (Holding of Inquiry and Appeal) Rules. 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
Comments on the Draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024
Comments on the Draft Trade Marks (Holding Inquiry and Appeal) Rules, 2024 Read on below for the comments on the draft Rules by Rishabh Deshpande, Praharsh Gour, and Swaraj Barooah.
Alongside winning medals for India in the 2024 Olympics, shooter Manu Bhaker is also in the news for legal notices sent on her behalf against ‘unauthorized’ congratulatory posts by different companies. Tejas Misra explains why and how these seemingly innocuous posts may infringe on the shooter’s personality rights.
Other Posts
In a big relief for PPL, the DHC by two back to back orders clarified that a pending compulsory license application will not justify unauthorised use of sound recordings. The application was filed by Al Hamd Tradenation alleging that PPL was charging unreasonable royalty rates to use its repository of songs. Read Tejaswini Kaushal’s analysis of the orders above.
Jan Vishwas (Amendment of Provisions) Act Comes Into Force Today
Provisions of the Jan Vishwas Act related to various IP legislations come into effect today. Read below for a tidbit on this development by SpicyIP intern Aditi Bansal.
Case Summaries
Under Armour Inc vs Armario Clothing And Accessories & Anr on 30July 2024 (Delhi District Court)
The Court decided in the favor of the plaintiff and granted a permanent injunction restraining the defendants from using UNDER ARMOUR and other word marks/ device marks/ labels which may be identical or/and deceptively similar to the plaintiff’s trademark/label. The defendants were manufacturing and selling t-shirts, jackets and track pants using the impugned mark, which were recovered from the defendant’s premises. It was held that the defendant’s use of the impugned mark was infringing upon the plaintiff’s trademark rights. It was also held that the defendants, by using the impugned “Under Armour” mark were passing off their product as that of the plaintiff’s.
Novex Communications Private Limited vs Siddhivinayak Hospitality on 29 July 2024 (Bombay High Court)
An ad-interim relief was granted by the Court in a copyright infringement case instituted by the plaintiff. It was held that if the relief is not granted, the plaintiff is likely to suffer from grave and irreparable loss. The plaintiff argued that it has obtained assignments and exclusive control over copyrights of several music labels. It was submitted that the plaintiff’s sound recordings were unauthorizedly being communicated in the premises of the defendant. The Court evaluated the potential benefits and losses to the parties and considered that the defendant did not appear before the Court even after being serviced. Ultimately, the Court granted the ad-interim relief to the plaintiff.
Vishal Choudhary vs Snpc Machines Private Limited & Ors. on 25 July 2024 (Delhi High Court)
A division bench of the High Court passed an interim order allowing the appellant to sell eight brick making machines. Previously, the appellant was restrained from manufacturing or selling the impugned brick making machine which were infringing the plaintiffs’ patents. The DB held that prejudice would be caused to the appellant if such is not allowed. However, to safeguard the interest of the respondent, the Court directed the appellant to place the copy of the GST invoices on the record within ten days of the sale. The Court clarified that if the respondent succeeded in the appeal, damages can be awarded to it.
M/S.Bharani Pictures Private Limited vs Narne Media Solutions Pvt.Ltd on 2 July 2024 (Madras High Court)
In a case concerning copyright infringement, the Court decreed in favor of the Plaintiff and granted a permanent injunction against the defendants. The plaintiff company owned the copyright of several films and these were not licensed to any party. It was argued that the defendant was illegally telecasting these films over Youtube. The plaintiff served a legal notice to the defendant, but despite the same, the defendant continued their infringing acts. The plaintiff placed 21 exhibits on record including the screenshots of the defendant infringing upon the plaintiff’s rights over Youtube and several other documents proving their rights. Based on the above, the Court granted a permanent injunction to the plaintiff.
State vs Pawan Deep Singh on 31 July 2024 (Delhi District Court)
It was alleged that the defendant was selling counterfeit products of M/s Tata Motors Ltd which were discovered during a raid. However, the witnesses and the complainant were not able to identify when the raid was conducted and what items were consequently recovered. Further, the complainant could not identify the accused. Due to the above circumstances and multiple procedural lapses, the Court summarized that there are several inconsistencies in the testimony of the witnesses and acquitted the defendants.
Phonographic Performance Limited vs Secunderabad Hotels Private Limited on 30 July 2024 (Bombay High Court)
The plaintiff is the owner and the exclusive licenser of public performance rights for the works of 400 music labels. It alleged that the defendant unauthorizedly broadcasted their works at its premises. The plaintiff sent legal notices to the defendant but received no reply and thus filed the present suit and sought ad interim reliefs. The Court held that if the interim relief is not granted the plaintiff is likely to suffer grave and irreparable losses and found the balance of convenience in the favor of the plaintiff. Holding the above, the Court granted an ex-parte interim injunction to the plaintiff.
Play Games 24X7 Private Limited vs R Y Easy Shop Private Limited & Anr on 29 July 2024 (Delhi High Court)
The Court ordered that until the next date, the defendant and related parties are restrained from using the mark ‘RUMMYCIRCLE’ in any manner including the logo, domain name, or on social media, etc. The defendants misrepresented themselves to be an extension of the plaintiff. It was submitted that the Plaintiff’s platform uses real money and misrepresentation by the defendant could cause harm to the Plaintiff. It was also submitted that the advertisement of the plaintiff including their mark ‘RUMMYCIRCLE’ was changed to show ‘VRUMMY’ by the defendants. The Court was of the view that the act of the defendant could cause deception or confusion among the public and it was further held that the plaintiff is the prior adopter of the mark and passed the present order.
JPM Industries Limited vs Jangra Motor JPM Private Limited & Ors 30 July 2024 (Delhi High Court)
The plaintiff uses the mark ‘JPM’ as a trade name, several other marks related to JPM are used within the JPM group of the plaintiff. The defendant applied for EVJPM which was opposed by the plaintiff and the defendant did not respond to the same abandoning the trademark application. Later it was noticed that the defendant is using the impugned mark ‘JPM’ to manufacture and sell its products which are identical to the plaintiff’s. As they were in the same business line, the Court considered it fair to retrain the defendant from using the impugned mark ‘JPM’ or any other related marks and passed the present ex parte ad interim injunction order.
Primestack Pte. Ltd And Anr vs John Doe And Others on 29 July 2024 (Delhi High Court)
The plaintiff alleged infringement of their trademark “CoinDCX” by the defendants. It alleged that the plaintiff received complaints about unwary persons losing money and falling prey to some imposters who lured them by offering financial gains, and part time jobs under the pretext of being associated with the plaintiffs. The Court held that the plaintiff has made a prima facie case, and the balance of convenience is in its favor. It further held that if defendants are not restrained, the plaintiffs will suffer irreparable loss and injury and passed the present interim injunction order.
Bardhaman Agro Products (I) Private Limited vs Kiran Mallik on 29 July 2024 (Calcutta High Court)
The Court decided that the plaintiff made a prima facie case and so the ad interim order was passed in order to protect the plaintiff. The respondent was using the mark ‘MAMU ROSE’ since 2016 as mentioned in their application, however evidence for the same was not provided. The petitioner proved prior use by placing documents on record since 2001. Being the prior adopter of the mark, the defendant was using the mark to cause deception as their marks were identical and deceptively similar. The Court was of the view that this would cause injury and loss to the plaintiff. Hence, the respondent was restrained from using the impugned trade mark “MAMU ROSE” or any other mark which is identical and deceptively similar to the registered trademark of the petitioner “ROSE” till 9th September, 2024.
Les Laboratories Servier Anr. v. Sefier Life Sciences Pvt. Ltd. on 19 July, 2024 (Bombay High Court)
The plaintiff alleged that the defendant’s mark ‘SEFIER’ is deceptively similar to their registered trade mark ‘SERVIER’ and hence sought an interim relief restraining the defendant from usage of the mark ‘SEFIER’. In the Court’s prima facie view, the impugned trade mark ‘SEFIER’ and ‘SERVIER’ are deceptively similar as well as phonetically, visually, and structurally alike. The Court therefore granted ad-interim relief as sought by the plaintiff.
The plaintiff alleged infringement of its trademark “Dr. Pillow” by the defendant’s use of allegedly deceptively similar mark “My Doctor Pillow”. The compared the two marks and held that the plaintiff has established a prima facie case and if an interim injunction is not granted, the plaintiff will suffer irreparable losses. The Court also held that the balance of convenience is in the favor of the plaintiff and thus, passed an ex-parte ad interim injunction in its favor.
HT Media Limited & Anr vs Hindustan Live News & Ors on 29 July, 2024 (Delhi High Court)
The plaintiff alleged infringement of its “HT” marks by the defendant’s use of “Hindustan Live News” marks. The plaintiff alleged that the use of the impugned marks by the defendants is to deceive the public, with the mala fide intent of representing itself and/or its services to be associated with the plaintiffs. The Court assessed the arguments and held that the plaintiff has established a prima facie case and if an interim injunction is not granted plaintiff will suffer irreparable loses. The Court also held that the balance of convenience is in the favor of the plaintiff and thus, passed an ad interim injunction in its favor and directed social media platforms and other intermediaries to take down social media pages and the YouTube channel of the defendant.
Terex India Private Limited vs Cde Asia Ltd. & Anr on 2 August, 2024 (Calcutta High Court)
The appellant filed an appeal against the order of the Deputy Controller of Patents rejecting its post grant opposition. The opposition was filed against the respondent’s application for a “System/ Device Process For Classification Of Various Materials”. The appellant submitted that the respondent has claimed monopoly for a method and a system that were publicly known and were already in use at the time of priority date. They further submitted that the Officer has not given any independent reasoning on how the respondent was able to overcome the objections raised by the appellant and the opposition board. Respondent agreed to remand the matter back to the authority but argued that the matter should be remanded back to the same authority who passed the impugned order. The appellant opposed this assertion and argued that the matter should be remanded back to another officer. The Court held that a litigant should get proper justice and it should mitigate any possibilities of pre determination and thus it would be proper to remand the matter to any other officer to enable parties to argue afresh and bring all the relevant materials to the notice of the concerned officer.
Arijit Singh vs Codible Ventures Llp on 26 July, 2024 (Bombay High Court)
The plaintiff alleged infringement of his personality rights by the defendants who inter alia were using AI tools to synthesize songs and sounds in the plaintiff’s voice. The Court reiterated that celebrities are entitled to protect facets of their personality against unauthorized commercial exploitation by third parties. The Court observed that using the plaintiff’s likeness and creation of new audio visual songs and video though AI jeopardizes his career and livelihood and thus passed an interim injunction restraining such uses by the defendants.
Star Scientific Limited v. Controller of Patents and Designs on 30 July, 2024 (Delhi High Court)
An appeal was filed against the impugned order by the respondent, rejecting the patent application of the appellant. The appellant argued that the application was rejected summarily on ground that it did not appear before the respondent for the hearing. The Court remanded the matter back to the respondent directing them to pass an order after taking all the documents on record into account. The Court also clarified that non appearance of an applicant will not deem the application to be abandoned.
Other IP Developments
- Producers of movie “Manjummel Boys” and Ilayaraja settle copyright dispute over use of the song “Kanmani Anbodu Kadhalan” in the movie.
- Bombay High Court imposes costs worth INR 4.5 Crores on Patanjali for violating ad interim order and submitting incorrect information in a trademark dispute.
- Union Health Minister states that Bharat Biotech has corrected Covaxin patent application to include ICMR, NIV as co-inventors.
International IP Developments
- Sanofi owned Genzyme sues Sarepta for infringing its gene therapy treatments patent.
- Perplexity signs revenue sharing agreements with major news publishers.
- Suno admits using copyright music to train its AI model but claims it as fair use.
- Court of Bari invalidates Italian PV registration for seedless grape variety ‘Sugarone’.
- Bill to address the issue of digital replicas (titled NO FAKES Act) tabled in the US Congress.