Here is our recap of last week’s top IP developments including summary of the posts on Lupin’s colour trademark registrations, revisions to Covaxin’s patent application, DHC’s order against a plaintiff who submitted false evidence in a trademark suit, and BHC’s decision restraining AI platforms from using Arijit Singh’s likeness. 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
What’s in a Colour? Taking a Look at Lupin’s Colour TM Application for its Inhalers
On Lupin’s recent colour trademark registrations for its inhalers, Md Sabeeh Ahmad. Sabeeh highlights how these registration can extend Lupin’s monopoly and could affect million’s right to access these essential medicines. Read on below to know more.
[PART I] Synthetic Singers and Voice Theft: BomHC protects Arijit Singh’s Personality Rights
In a first of its kind order in India, the BHC restrains AI platforms from using likeness of famous singer Arijit Singh, finding them to prima facie infringe his personality rights. In her two part post on this development, Tejaswini Kaushal discusses the rationale of the Court in Part I.
[PART II] Synthetic Singers and Voice Theft: BomHC protects Arijit Singh’s Personality Rights
Continuing the discussion on Part II of the Arijit Singh personality rights order by the BHC, Tejaswini Kaushal discusses the international legal position on voice cloning and similar kind of uses by AI platforms, and identifies the gaps in the present ruling.
…And The Covaxin Patent Saga Continues: BBIL Changes the Patent Application Again
After the furor around the missing mention of ICMR in the Covaxin patent application, Bharat Biotech has made two important changes to their application, coincidentally before the Health Minister’s speech in Parliament. Tejaswini Kaushal examines these developments, raising questions about why it took so long for these amendments and highlighting the glaring lack of transparency around this information.
Other Posts
Trademark Infringement to Criminal Prosecution: an Inimitable Interaction?
In an interesting turn of events, a plaintiff in a trademark infringement suit got criminal proceedings initiated against them by the DHC for submitting false evidence! Rishabh Deshpande discusses this development in this tidbit.
SpicyIP Tidbit: BHC Directs Patanjali to Pay Additional 4 Crores in a Trademark Infringement Dispute
After directing Patanjali to deposit INR 50 Lakhs in a trademark dispute, the BHC has now imposed a hefty cost of INR 4 crores on Patanjali. Read a quick SpicyIP tidbit on this below.
Case Summaries
Novartis Ag v. Natco Pharma Limited on 2 August, 2024 (Supreme Court)
A Special Leave Petition against a DHC DB order was disposed of by the Supreme Court. The DB order had set aside parts of the Single Judge order granting an interim injunction against Natco for prima facie infringing Novartis’ Eltrombopag patent. The Court observed that while the matter was pending before the DB, the suit patent had expired. Therefore, the Court was of the view that it is unnecessary for the DB to review the matter based on merits as the impugned judgment of the single judge bench would be irrelevant once the patent expired. Setting aside both the DB and the Single Judge orders, the Court stated that both the orders cannot be used as precedents.
C2Sense, Inc v. Senior Examiner Of Trade Marks And Anr on 7 August, 2024 (Bombay High Court)
The appellant filed an appeal against the impugned order by the respondent rejecting its trademark application. The appellant submitted that he had no opportunity to meet the objection raised by the respondent under Section 91(1) (b) of the Trade Marks Act, 1999 during the proceeding. Therefore, as the petitioner was not given a proper chance, the Court decided that the matter needs to be remanded back.
Tushar Saraff & Anr. v. Manish Kumar Jain & Ors on 8 August, 2024 (Calcutta High Court)
The petitioners filed an infringement case against their licensee for infringing their “JJ” Marks. As per the agreement the respondents were entitled to carry on business under the above marks on behalf of the petitioners. The petitioners submitted that the respondents filed for registration of the impugned JJ mark, in derogation of their rights. On the other hand, the respondents contended that they had terminated the partnership agreement but still held the right to use the mark. The Court held that once a licensee who once had authorization to use a trademark becomes associated in the public mind with the licensor, then continued utilization of the mark that the licensee once had can lead to confusion in the minds of customers. Thus, the Court directed for an interim injunction to the respondents to not use any marks of the petitioners.
M/S Nike Innovate C.V v. Sham Setia on 5 August, 2024 (Tis Hazari Court, Central Delhi)
The Court decided in the favor of the plaintiff and granted compensation for trademark infringement. The plaintiff submitted that the defendant had been flooding the market by manufacturing and selling counterfeit goods under the same label. By an earlier order of the Court, the Local Commissioner had been appointed to visit the premises of the defendant and had found incriminating evidence of goods with a similar trademark to that of the plaintiffs. Thus, the Court awarded exemplary damages to the plaintiffs.
The Court held in favor of the defendant as the plaintiff failed to present evidence of a trademark infringement. The plaintiff was a manufacturer and trader of doors and plywood products and used the trademark “Century”, “Centuryply” and “Sainik”. The plaintiff submitted that the defendant was using similar trademarks in relation to its own plywood and allied products, which were of inferior quality and caused detriment to the business of the plaintiff. The plaintiff submitted that it had received such knowledge from its customers and other such persons. However, the Court observed that the plaintiff had not presented any evidence that the defendant was using such trademarks in relation to its plywood products and further that the plaintiff had not disclosed the exact sources from where it acquired such knowledge. Thus, the Court dismissed the suit and held that the defendant would be entitled to costs from contesting the suit.
Exxon Mobil Corporation v. Joydeb Saha on 2 August, 2024 (Delhi District Court)
Patiala House Court provided its decision in favor of the plaintiff and permanently injuncted the defendants from using the plaintiff’s mark MOBIL and awarded damages to the plaintiff. Plaintiff’s presented various cases where they have protected their rights by injuncting the other party who were using their trademark ‘MOBIL’. It was also argued that the defendants are manufacturing and selling products under the mark ‘MOBIL’, within the same class as of the plaintiff thereby causing confusion and deception among the public.
Adidas Ag v. Jagpreet Singh on 31 July, 2024 (Delhi District Court)
Tis Hazari Court delivered an ex-parte decision in favor of the plaintiff restricting the defendant from using the marks of the plaintiff including the ‘three stripes’, ‘performance logo’, ‘trefoil’ and the ‘adidas mark’. The defendant manufactured and sold infringing products of the plaintiff. The plaintiff submitted that it suffered losses due to the defendant’s impugned activities. They also submitted that the local commissioner seized infringing products from the defendant’s premises. Despite being served, the defendants did not appear before the Court. Due to all of the above, the Court was of the view that the plaintiff had the right to destroy the seized products of the defendant and also receive damages. Further the Court had also restrained the defendants from using the marks which are deceptively similar or identical to the plaintiff’s marks.
Forbes Technovative (P) Limited v. Eureka Forbes Limited on 2 August, 2024 (Karnataka High Court)
The appeal was dismissed by Karnataka High Court and the impugned judgment injuncting the defendants was upheld.The initial order was an ex-parte injunction against the defendants restraining them from using marks “FORBES”, “EUREKA FORBES, Friends for Life”, “EUREKA FORBES HOME STORE” and “Aqua Care”, “Aqua Guard” and “A qua Sure”. It was contended in the appeal by the appellant that there was no material on record supporting the allegations made in the plaint. It was also contended that the appellant is in a different business than that of the plaintiff/ respondent and carries out independent operations. The Court was of the view that there is enough material on record to prove a prima facie case of infringement. Therefore, it was held that the business of the appellant is not different from that of the plaintiffs/ respondent.
Mr. Sunit Shah Proprietor Of M/S. Shah v. M/S. Jabsons Foods Pvt. Ltd on 2 August, 2024 (Delhi High Court)
The Delhi High Court granted an ex-parte ad interim injunction against the defendants. The plaintiff had rights over the trademark ‘SHAH HOT MIX’ while the defendant was using the mark ‘HOT MIX’. The marks were falling in the same class and had the same customer base. It was submitted by the plaintiffs that the defendants were aware about the plaintiff and their business and the intention of the deceptively similar marks was to cause confusion among the public. It was also submitted that the packaging of the products was similar as well. The Court was satisfied with the prima facie case and was of the view that the ad interim relief should be granted to the plaintiffs as such was causing irreparable loss to them.
Grm Foodkraft Pvt Ltd And Anr v. Ks Agro Impex And Anr on 1 August, 2024 (Delhi High Court)
The Delhi High Court granted an ex-parte ad interim injunction against the defendants. The defendants were using the mark ‘ZARDA SPECIAL’ which was deceptively similar to the plaintiff’s mark ‘ZARDA KING. Both the parties are into the same business which is selling rice products. Further, the plaintiff submitted a public survey report which concluded that the packaging of both the products were similar and confusing to the public. The Court has restrained the defendants from manufacturing and selling of products in a confusing or deceptively similar packaging and trade dress.
The Court held that the plaintiffs were entitled to damages for legal expenses for instituting a suit for trademark infringement. The plaintiff was a provider of health services and was the proprietor of the trademark “MAX” and had been operating under it since 2000. The defendants were a pharmacy operating under the name “Max Care Chemist”. It was submitted by the plaintiffs that the addition of the non-descriptive suffix “Care” created confusion amongst consumers. Accordingly, an ex-parte injunction was granted in favor of the plaintiffs, which the defendants complied with but did not inform the plaintiffs about, constraining them to file another suit. The Court held thus that the plaintiffs were entitled to costs incurred by it for the institution of the suit and contesting the same.
The Court decided in the favor of the plaintiff and granted compensation for trademark infringement. The plaintiff was a provider of medical and healthcare services and used a distinctive logo and trademark “PATHKIND”. The plaintiff permitted the defendant to operate a technical center and utilize its trademark for providing such services. Afterwards, the defendants informed the plaintiff it would continue operations, but continued to use a similar trademark “Pathworld” with an identical color combination as that of the plaintiff. It was held that this unauthorized use of the trademark beyond contractual terms violated the intellectual property rights of the plaintiff.
FDC Limited v. Zaventis Healthcare Private Limited on 30 July, 2024 (Delhi High Court)
The Court granted an interim injunction for infringement of the plaintiff’s trademark. The plaintiff was involved in the sale of medicinal preparations and used the registered trademark “ZIFI” which was associated only with the plaintiff. The defendant adopted the trademark “ZIFISAFE” for identical pharmaceutical products, containing the same active ingredient. It was submitted by the plaintiff that the defendant had just added the generic suffix “safe” to the plaintiff’s mark. The Court observed that the plaintiff had been continuously using the trademark and had built a reputation and goodwill in the market for the same, and accordingly the Court granted an interim injunction to the defendants from using the trademark until the next date of hearing.
Visa International Ltd. v. Visa International Service Association & Anr. (Calcutta High Court)
The appellants raised a challenge against orders passed by the Associate Manager of Trade Marks against the rejection for registration of their trademarks. The appellants contended that the Associate Manager of Trade Marks, who was engaged on a contractual basis, is not authorized under law nor competent to conduct hearings or pass speaking orders. The Court held that S. 3(2) of the Trademarks Act indicates that officers other than the Registrar/Controller General of Patents and Designs and Trade Marks can be delegated to perform their functions, but only as an administrative authority and they cannot be empowered to pass quasi-judicial orders. Thus, the order passed by the Associate Manager was quashed and the matter was remanded back to the Registrar to decide the matter afresh on merits.
Telus Corporation v. Telus International Academy Pvt. Ltd. on 2 August, 2024 (Delhi High Court)
The Court decided in the favor of the plaintiff and granted compensation for trademark infringement. The plaintiff used the registered trademark “Telus” as part of its goods and services offered worldwide, and had obtained registrations in over 60 countries. The defendant, which offered services in the educational sector, used the same “Telus” trademark as part of its trade name on its official website. The defendant claimed to fulfill students’ desire to study in foreign universities in countries like Canada, which was also the home country of the plaintiff. Thus, the plaintiff submitted that this could lead to confusion and misrepresentation due to false association with the plaintiff’s business. The Court held that the balance of convenience lay in favor of the plaintiff and directed for an interim injunction till the next date of hearing.
The Court directed for the taking down of certain Youtube videos that were maligning the reputation of the plaintiff. The plaintiff claimed that the defendants had been selling sarees on their platform using the plaintiff’s design and photographs without any permission or license, only with the intention of attracting the plaintiff’s consumer base by deceiving them into believing that the products were originating from the plaintiff. The plaintiff also contended that the defendants were running campaigns on social media such as Youtube to malign the name and reputation of the plaintiff in order to pressurize them to withdraw the suit. The Court accordingly directed that the relevant Youtube links be taken down and blocked, and further directed that a copy of the order be communicated to the Grievance Officer of Youtube.
BASF SE v. Joint Controller Of Patents And Designs and Ors. on 5 August (Calcutta High Court)
The Court admitted an appeal beyond the limitation period as the appellants had shown sufficient cause. The appellant filed an appeal against an order passed by the Joint Controller of Patents and Designs passed 4th March, 2024. The appellant then submitted their appeal alongside an application for condonation of delay on 19th June, 2024. The respondent contended that the appeal was not in accordance with the Rules 8, 9 and 10 of Part-12A of Chapter XXXVIII of the Rules under the Patents Act, 1970, for being beyond the limitation period. The appellant submitted that they had applied for a certified copy on 20th May and had received it on 28th May, and then had filed the appeal soon after, which had already been accepted by the Registrar. The Court found that the appellants had shown sufficient cause to condone the delay in preferring the appeal beyond the prescribed time, and admitted the appeal.
The Court granted an interim injunction for a patent infringement. The plaintiff was involved in developing and manufacturing sorter machines for warehouse automation, which they submitted which was an advancement over the existing prior art. This had made it a valuable technology for e-commerce and thus, they had received a patent for the invention. The defendant had installed an identical sorter machine upon the plaintiff’s client’s premises, which the plaintiff contended had been copied and reverse engineered. Further, the plaintiff submitted that the company was a Chinese-based entity and had been struck-off the record of Indian companies, but was still clandestinely operating in India. The Court thus directed for an interim injunction to the defendant from manufacturing or selling any product which infringes upon the suit patent.
Other IP Developments
- Delhi High Court orders cancellation of “Andaaz-e- Nizam” trademark in a rectification petition filed by Nizam’s.
- Mohanlal’s directorial debut “Barroz- The Guardian of D’Gama’s Treasure” faced copyright infringement allegation by a Germany based writer George Thundiparambil.
- “Manjummel Boys” producers pays INR 60 Lakhs to Ilayaraja against allegation of copyright infringement.
- Calcutta High Court restrains Parle from using “Top Gold Star” mark.