Here is our recap of last week’s top IP developments including summary of the posts on Orders passed by contractual staff of Trademarks Registry, DHC’s recent order on 3(k), and Safe Distance Rule. 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
Two years of trademark orders are under scrutiny, after it came to light that functions of the trademark examiners had been outsourced to the QCI! Md Sabeeh Ahmad dives into this controversy, while also recommending a deeper investigation into these issues.
CGPDTM Issues Order to Re-validate TM Orders Passed by Contractual Staff
In the aftermath of the DPIIT’s directive to revalidate trademark orders passed by the contractual staff recruited by the QCI, the CGPDTM has now come up with a mechanism for the same. Read on to know more.
DHC and 3(k): This time using the ‘Technical effect’ Test
Continuing the game of pingponging on “technicalities” of Section 3(k), DHC seems to have left “technical advancement” behind for the “technical effect” test this time in its recent decision. Read Yogesh Byadwal’s post explaining what the case is about and how the court interpreted “technical effect”.
Playing from a “Safe Distance”: Analysing the Rule, its Roots and Application in India
What is the “Safe Distance” rule in trademark law and how does it apply? This is a question that was recently brought up in the Delhi High Court. Though the argument was rejected, there was an interesting discussion that followed from it. To know what the rule is, where it comes from, and what could be its implications, check out Samridhi Chugh’s post on the rule.
Other Posts
(GM) Mustard and More: Analysing the SC’s Decision in Gene Campaign v. UOI
The Supreme Court’s split verdict on the GM Mustard case (India’s first transgenic food crop), though still leaving the way forward uncertain, did agree that a national policy is needed, as well as that GEAC decisions are open to judicial review. Tejaswini Kaushal takes us through the 400+ page judgment in this crisply worded post.
Copyright Violations in Derivative Works and Music Sampling – The Case of “Chuttamalle”
On the recent controversy surrounding similarity between Anirudh’s latest song “Chuttamalle” and Chamath Sangeeth’s “Manike Maga Hithe”, Tejas Misra explains how sampling works in the music industry and whether it is prohibited under the Copyright Act.
In light of the ongoing copyright dispute between legendary composer Ilaiyaraaja and makers of the hit Malayalam movie “Manjummel Boys”, Tejas Misra shares his quick take on the rights of composers under the Copyright Act.
In an important development, the DHC recently clarified that the non-appearance of an applicant does not justify the Controller in deeming their patent application as abandoned. Aditi Bansal writes about this order.
Case Summaries
M/S Mrt Music vs Paramvah Studios Private Limited & Ors on 12 August, 2024 (Delhi High Court)
It was alleged that the defendant was using the audio visual recordings of the plaintiff without authorisation. The plaintiff submitted that they reached out to the defendant multiple times but to no avail. The Court found a prima facie case in favour of the plaintiff and directed the defendants to deposit INR 20 lakhs before the Court.
Imagine Marketing Ltd. vs Ashok Kumar And Ors on 9 August, 2024 (Delhi High Court)
The plaintiff is the owner of the domain name, http://www.boat-lifestyle.com and uses its trademark ‘boAt’ over several e-commerce websites. It was alleged that the Defendant had a fake website which infringed upon the Plaintiff’s marks and also sold counterfeit products. The Court found a prima facie case in favour of the plaintiff and passed an ad interim injunction against the defendants.
The plaintiff was an Indian production house and was the proprietor of the well-known show “Tarak Mehta ka Ooltah Chashmah”, and owned all rights with respect to the show. The plaintiff submitted that various persons were infringing upon these rights by publishing the show’s content on the Internet anonymously. In particular, the plaintiff accused the various defendants for utilising the domain name with the show’s title, for selling merchandise bearing the intellectual property of the show, for running Youtube channels utilising content of the show, for sharing sexually explicit and vulgar content using the character of the show with an unknown AI face distortion technology, and for creating video games bearing the intellectual property of the plaintiff. The plaintiff prayed for a John Doe order prohibiting other parties from misusing the content of the show for the same. Accordingly, the Court held that the plaintiff had demonstrated a prima facie case for injunction and directed for an ad interim injunction against the defendants.
Merryvale Limited vs John Doe And Ors on 12 August, 2024 (Delhi High Court)
The Court decided in the favor of the plaintiff and granted an interim injunction for trademark infringement. The plaintiff was a subsidiary of an American company and operated a number of gaming websites under the registered trademark “BETWAY”. However, owing to the volatile regulatory environment in India, the plaintiff blocked its services in India from 2023 onwards. The plaintiff submitted that several websites were duping unaware customers by employing their well-known trademark and maliciously claiming to be an alleged “successor” of the plaintiff in India, which caused confusion and deception in the mind of consumers. Accordingly, the Court held that the balance of convenience lay in favor of the plaintiff and directed for an ad-interim injunction against John Doe as well as the named defendants from utilizing the similar trademark.
Mangalam Organics Ltd vs Patanjali Ayurved Ltd on 29 July, 2024 (Bombay High Court)
The plaintiff filed an interim application seeking the enforcement of an ex parte ad interim injunction issued against the defendant restraining it from using a trade dress and carton packaging for camphor products that was similar to that of the plaintiff. The plaintiff alleged that despite the injunction, the defendant continued to manufacture, market and sell the camphor products with the impugned trade dress and packaging. The defendant, by its own admission, continued the sale, infringing on the said trade dress, even after the Court’s order, claiming the sale to be inadvertent and issuing an unconditional apology. The Court, not accepting the defendant’s claim of inadvertent breach, due to the significant lapse of time and the extent of continued sales, directed it to pay Rs. 4 crores to the plaintiff within two weeks.
Chapter 4 Corp v. Sandeep Kumar on 14 August, 2024 (Delhi District Court)
The plaintiff alleged infringement of its well-known mark “SUPREME” by the defendant, across markets in New Delhi and Hyderabad, and sought a permanent injunction against them. The Court, in an earlier order, had already granted an ex parte ad interim injunction against the defendants, and issued a local commissioner for searching their premises. In the present order, the Court issued a permanent injunction restraining the defendants from using the impugned mark.
Shardul Amarchand Mangaldas And Co vs John Doe & Ors on 7 August, 2024 (Delhi High Court)
An ad-interim injunction order was passed by the Court restraining the Defendants from using the plaintiff’s trademarks or the name and photograph of the executive director/partner/member/employee. The plaintiff alleged that the defendants have issued fake notices in its name, infringing its rights. Passing the order, the Court also granted the liberty to the plaintiff to send out a public notice informing the general public about the actions of the defendants.
Akums Drugs And Pharmaceuticals vs Kovex Life Sciences & Ors on 5 August, 2024 (Delhi High Court)
An order was passed by the Court restraining the Defendants from using the Plaintiff’s mark/label for ‘CERVIFINE’ and ‘MET-OVEX’ and trade dress/tagline for KOFERT GOLD. However, the defendants were also allowed to exhaust their existing stock within two months from the date of the order and file details for the same.
Play Games 24X7 Private Limited vs Www10Xbettcom & Ors on 7 August, 2024 (Delhi High Court)
The Court ordered an interim injunction in favor of the plaintiff, restraining the defendant from using ‘MY11CIRCLE’. It was alleged that the infringing websites were illegal and caused misrepresentation. The plaintiff has been using their mark since 2019, openly, extensively and continuously. The impugned websites are for betting and gambling with real money. It was held that the activities of the defendant were causing irreparable loss, injury and damage to the Plaintiff, and hence the interim injunction was passed.
The plaintiff was the proprietor of the “BIOCON” trademark. The plaintiff contended that the defendants were using the deceptively similar trademark “MIOCON” and thus were infringing on the registered trademark of the plaintiff. The defendants contended that their trademark “MIOCON” had already been registered, and that an injunction cannot be granted for infringement against a registered trademark. The Court held that though an injunction for infringement cannot be granted, an injunction for passing off can lie even against a registered trademark. Thus, the Court passed a decree in favour of the plaintiff and passed an injunction against the defendants.
Pidilite Industries Limited vs John Doe(S) /Ashok Kumar(S) & Ors on 19 July, 2024 (Delhi High Court)
The plaintiff is the proprietor of “FEVICOL”, “DR. FIXIT”, “ARALDITE, and “FEVIKWIK”. The plaintiff contended that the defendants are involved in the unauthorized manufacture and sale of counterfeit products using the plaintiff”s well-known trademark. Since the respective defendants were not known, the plaintiff prayed for a John Doe/Ashok Kumar order. The Court, accordingly, passed an ad interim injunction order and appointed Local Commissioners to execute a commission and seize any infringing products that they may find.
Abbott Gmbh & Ors vs Tcsol Biopharma & Ors on 16 July, 2024 (Delhi High Court)
The Court decided in the favor of the plaintiff and granted them an interim injunction. The plaintiffs were a leading global pharmaceuticals and healthcare company and proprietors of various trademarks of drugs like “THYRONORM”. The plaintiff submitted that the defendants were utilizing the trade name as well as the unique design of the bottle of the plaintiffs by the similar name ‘L- THYRONEU’. The Court found the defendants prima facie guilty of adopting and using the deceptively similar mark and thus passed the present order.
In re Rajiv Rai Sachdev on 9 August, 2024 (Competition Commission of India)
The Informant was the promoter of a start-up company which invented a new technology for dyeing and processing natural textiles called “Enliven”, which was patented in India. The opposing party (“OP”) was an American company selling sanitary products under the brand name “Whisper”. The OP invited applications from techno-innovators like the Informant for development of innovative products, to which the Informant submitted their application but were rejected. However, the Informant later alleged that the OP had introduced a new product that utilized the same features and benefits which were offered by the Informant’s submission to the OP. The Informant contended that the OP misused the information shared by the Informant and had utilized their innovation maliciously. On jurisdiction, the Commission first found that the OP was not a “dominant player” in the market, and thus claims need not be examined by the Commission. Regardless, the Commission went into the question of whether the OP had committed an abuse of its position, and held against the Informant. It observed that the Informant had not provided any evidence indicating that the OP had used the Informant’s information or that it had prevented the Informant from introducing a similar product into the market. Thus, it held that there was no abuse of dominant position by the OP.
The Court in this case granted an injunction against the defendants from importing goods that infringed on trademark. The plaintiff was a company dealing in cosmetics and was the proprietor of the registered trademark “HUDA BEAUTY”. The plaintiff alleged that the defendants imported a consignment of counterfeit products containing fake products of the plaintiff, and were further selling such products using the plaintiff’s trademark which caused confusion and deception amongst consumers. The Court was of the view that the balance of probabilities was in favor of the plaintiff. Accordingly, the Court held that since the goods were counterfeit, they could be destroyed by the Custom Authorities and the cost was to be borne by the plaintiff. Further, the Court directed for a permanent injunction restraining the defendants from selling or importing any goods using any of the plaintiff’s trademarks.
VE Commercial Vehicles Limited v. Jaswant Industries & Ors on 19 July, 2024 (Delhi High Court)
In this case, the plaintiff, claiming to be a joint venture of Volvo Group and Eicher Motors, sought a permanent injunction against the defendant for allegedly infringing and diluting its registered designs pertaining to Volvo 9600 buses. It was alleged that the defendants violated its previous undertaking stating that it will not continue with its infringing acts. Finding that the allegations bore weight, the Court granted the said injunction restraining the defendants from dealing with the infringing buses. The Court also appointed Local Commissioners to inspect, document and seal infringing buses at specific locations with the aid of the local police.
M/S ABM Communication Pvt. Ltd v. M/S Sagar Ratna Restaurants Private on 24 July, 2024 (Delhi District Court)
The plaintiff, providing advertising and branding services under an annual retainership agreement with the defendants, alleged non payment of outstanding dues since January 2020 despite repeated reminders and a legal notice. On the other hand, the defendants contended that the plaintiff had originally agreed to waive off certain invoices in light of the Covid-19 pandemic, barring one invoice which was later settled between the parties. The plaintiff categorically denied this claim. Perusing through a swathe of documentary evidence, the Court found that there was no ground to support the defendants’ claims of waiver and held that the plaintiff was entitled to full outstanding dues along with 18% interest for future and pending amounts.
The plaintiff company alleged the infringement of its trademark “ULTRACON” by the defendants, who was previously an authorised licensee, despite the expiration of the licence in March 2021. The Court found the case to be prima facie made out in favour of the plaintiff for grant of interim injunction. The defendants were restrained from using the impugned mark with their domain name directed to be blocked.
Ms Deen Dayal Anand Kumar Saraf v. Paras Agarwal Ta Ms Purushottam Agarwal on 6 August, 2024 (Delhi High Court)
The plaintiff, involved in the sale of jewellery, under the trademarks “MD” and “MD-70” registered in Class 14, sought a permanent injunction against the defendants restraining them from selling or dealing with their products under the impugned marks “MD Payal”, “MD Star”, etc. The Court initially granted an ex-parte ad-interim injunction against the defendants, who then filed an application under Order XXXIX Rule 4 of the CPC seeking to vacate it, contending non-disclosure of essential details on the part of the plaintiff, including the response of the defendants against a Cease & Desist Notice issued by the plaintiff in the same matter. The Court relied on S.P. Chengalvaraya Naidu v. Jagannath and Canon Kabushiki Kaisha v. B. Mahajan to hold that non-disclosure of material facts had a vitiating effect on the order obtained on the strength of such non-disclosure. Dismissing the plaintiff’s rebuttal, the Court held that the plaintiff had deliberately misled it into passing the impugned injunction, and, hence, vacated it.
Mr Sunit Shah v. Sunshine Food Products on 12 August, 2024 (Delhi District Court)
The plaintiff, who is involved in the business of selling snacks and spices, using the trademarks “SHAH”, “SHAH NAMKEEN” and “SHAH HOT MIX” , alleged the defendant to be selling products under the impugned trademark “HOT MIX” which he claimed was deceptively similar to his mark. He claimed exclusive rights over the marks having acquired distinctiveness as well as reputation and alleged that the defendant’s use of the impugned mark, being likely to deceive susceptible consumers, constituted infringement and passing off, seeking damages. The defendant, contrarily, argued that the impugned mark was a generic term in common use in the food industry to describe any type of mixed namkeen, and was not open to be monopolised by the plaintiff. This contention was accepted by the court which concluded that the impugned mark was generic in nature, not having acquired any secondary meaning sufficient to cause confusion or to be considered distinctive, and could not be claimed by the plaintiff exclusively, dismissing his prayer for injunction or damages.
Other IP Developments
International IP Developments
- Pitbull’s production company and DJ White Shadow sued for copyright infringement concerning their “I Feel Good” song.
- Donal Trump sued for using Isaac Hayes “Hold on” song without authorization.
- Novartis fails to convince Delaware Court to block MSN’s Entresto variant.
- Dutch based copyright enforcement group takes down LLM training database.
- AstraZeneca gets USD 107 million Nerynx verdict overturned.
- Hong Kong to offer patent box incentive for providing profit tax concessions.
- Kimdotcom to be deported to to US to face trial in copyright infringement case.