Here is our recap of last week’s top IP developments including summary of the posts on SC collegium’s recommendation of three advocates for appointment as DHC judges, recent cases of IP trolling and the urgent need for awareness on legitimate usage, MHC’s order on Section 3(p) and much more. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
From Bar to Bench: Mr. Ajay Digpaul, Mr. Harish Vaidyanathan Shankar, and Ms. Shwetasree Majumder were recommended for appointment as Judges of the DHC by the SC Collegium yesterday. Interestingly, the resolution also specifically referred to the IPD. Read on for more.
Rising IP Trolling: Urgent Need for Awareness on Legitimate Usage
On the recent menace of trolls impersonating law firms like SAMCO, K&S Partners, Lall & Sethi, Anand and Anand and defrauding the general public, Aditi Bansal discusses the urgent need to include discussions on legitimate usage in IP awareness initiatives in her post.
Traditional Knowledge in Patents: Need for Clarity and Interpretation
Looking at Traditional Knowledge and Patents: The MHC recently upheld the Controller’s rejection of a patent application for being based on Panchagavya, a form of Traditional Knowledge. Using this order, Vishno Sudheendra and Kevin Preji look into the scope of Section 3(p) with regard to non-medicinal inventions, and with an emphasis on the phrase “in effect traditional knowledge”.
Other Posts
On August 21, the DPIIT rescinded its 2016 notification that had extended the scope of Section 31D to internet streaming. This is coming almost two years after the BHC’s decision in Wynk’s music v Tips industries. Read Yogesh Byadwal’s post on the development.
We’re pleased to announce that Trends in Intellectual Property Research (TIPR) is inviting original, unpublished manuscripts for publication for its upcoming issue (Volume II, Issue II). The last date for submissions is November 30, 2024. For further details, please read the journal’s call for papers.
SpicyIP Tidbit: Trade Marks (Holding Inquiry and Appeal) Rules, 2024 Notified
Trade Marks (Holding Inquiry and Appeal) Rules, 2024 notified, with very minor differences from earlier Draft Rules. Yogesh Byadwal covers this update here.
SpicyIP tidbit: Reports Suggest that Centre is Pulling Back the Contentious Broadcasting Bill
Good news for many, as the Centre has decided to withdraw the contentious Broadcasting Bill. The Bill had earlier come under severe criticism from many quarters for its potentially severe impact on free speech in India. Read a quick tidbit on the development.
Case Summaries
Asics Corporation vs Ashok Kumar on 20 August, 2024 (Delhi District Court)
The plaintiff alleged infringement of its “Asics” mark by the defendant and filed the present trademark infringement suit. The plaintiff alleged that the defendant is manufacturing counterfeit products, using its marks on these products. Upon execution of the local commission, infringing products were seized from the territory of the defendant. Despite being served with the suit papers, the defendant did not appear. After comparing the competing marks, the Court decreed the suit in favor of the plaintiff and granted it a permanent injunction.
Adidas Ag vs Inder And Ors on 22 August, 2024 (Delhi District Court)
The plaintiff alleged infringement of its “Asics” mark by the defendant and filed the present trademark infringement suit. The plaintiff alleged that the defendant is manufacturing counterfeit products, using its marks on these products. Upon execution of the local commission, infringing products were seized from the territory of the defendant. Though the defendants filed a written statement, none appeared on their behalf for the final arguments. Relying on the evidence on the record the Court decreed the suit in favor of the plaintiff and calculated damages to the tune of Rs.24,00,000/- from defendant no. 1 and Rs.15,00,000/- from defendant no.2.
The order concerns a writ petition filed by JCB against the investigation of CII on JCB for abuse of judicial procedure to harass its competitors. The suit filed by the JCB against Bull Machines (informant before the CCI) has been settled. While the parties JCB and Bull Machines argued against CCI to continue investigation in light of the settlement, CCI argued that just like filing a vexatious litigation could be anti competitive, the settlement reached could also be anti competitive. The Court terminated the proceedings before the CCI and held that allowing the proceedings to continue before the CCI would be contrary to the spirit of mediation and would affect the business interests of the parties. The Court also observed that allegations of “sham litigation” ought to be discouraged and approaching the CCI in such cases would be justified only when the Court has issued a finding that the litigation was a sham one.
Phonographic Performance Ltd. v. State of Goa and anr. on 13 August, 2024 (Bombay High Court)
The petitioner sought to quash a circular issued by the respondent which encouraged police to take actions against individuals collecting royalties for playing music during wedding festivities. The petitioner argued that the circular has expanded the scope of Section 52(1)(za) and that the respondent is not authorized to do so. The respondent argued that the circular does not take away any powers or rights but simply provides a clarification on the provision. The Court held that the circular goes beyond the extent of the provision and interferes with the enforcement mechanism under the Act and thus set it aside.
Marico Limited v. John Doe Ashok Kumar on 7 August, 2024 (Bombay High Court)
The plaintiff, proprietor of several trademarks including “MARICO”, “PARACHUTE” and “LIVON” filed a suit against impersonators. It was alleged that the impersonators were defrauding job seekers by collecting money and personal information under the false pretence of offering employment at the plaintiff company. The Court recognised the need for ex-parte ad-interim relief, observing that giving prior notice to the offending parties would defeat the purpose of the injunction by allowing them the opportunity to destroy evidence. Granting the said injunction, the Court restrained the defendants from infringing and passing off the plaintiff’s trademarks and copyrights and from continuing the fraudulent activities, ordering the domain registrars and the banks involved to disclose the information about the errant individuals.
Astrazeneca Ab & Anr v. Beacon Pharmaceuticals Plc & Ors on 14 August, 2024 (Delhi High Court)
In this case, the plaintiffs, a Swedish pharmaceutical company, sought a permanent injunction restraining the defendants from infringing their patent in IN 297581 by manufacturing, selling and exporting the pharmaceutical product containing the compound Osimertinib under the brand name “TAGRIX” as well as the removal of listings from online platforms. The Court granted an ad interim ex-parte injunction restraining unauthorised entities from selling, manufacturing or distributing the drug to prevent any likelihood of confusion and deception with the plaintiffs’, to be complied within two weeks of the order.
Astrazeneca Ab & Anr v. Everest Pharmaceuticals Limited & Ors on 14 August, 2024 (Delhi High Court)
The plaintiffs sought a permanent injunction to restrain the defendants from infringing on their patent, IN 297581, related to the drug Osimertinib by manufacturing, distribution and sale, as well as listing on online platforms like IndiaMART. The Court, while allowing the suit’s registration, interrogatories and opportunity for future amendments to damages claims, on prayer by the plaintiffs, granted an ex-parte ad interim injunction based on the existence of a prima facie case being made out in favour of the plaintiffs until further hearings.
The plaintiffs, the registered proprietors of “HIMALAYA” and other marks, alleged that the defendant’s use of the mark “HIMALAYAN ORGANICS” was deceptively similar to their own. The Court restrained the defendant from using the impugned or any other deceptively similar marks, while allowing the defendant to exhaust its existing stock under the “HIMALAYAN ORGANICS” mark within a period of three months.
The plaintiff company, well-known for dealing with the sale and supply of spices, including packaged cardamom, claiming ownership over the trademarks and trade dresses under the “Emperor Akbar Green Cardamom” label, alleged the use of a deceptively similar label, “Mubarak Green Cardamom,” by the defendant. It sought permanent injunction against infringement and passing off by the defendant under the impugned label. The Court, recognising the distinctive character of the plaintiff’s label as well as its acquired goodwill and reputation, held that the defendant’s intentional use of the impugned label and packaging, with similarities in the colour scheme, design and overall appearance, was likely to cause confusion and mislead consumers. Holding the activities of the defendant to be actionable torts, and observing that it already possessed alternative packaging not similar to the plaintiff, the Court granted interim relief restraining the defendant from using the infringing label and trade dress.
Tata Digital Private Limited And Anr vs Jaswanth Nv And Ors on 20 August, 2024 (Delhi High Court)
The Court held in favour of the plaintiffs and directed for a permanent injunction in a trademark dispute. The plaintiffs were proprietors of the trademark “TATA” and “NEU”. Previously, they had approached the High Court asking for an interim injunction restraining the plaintiffs from utilising the above trademarks. The Court had granted the injunction and directed a transfer of the domain names bearing the trademarks to the plaintiff. The Court, in this case, believed that no further purpose could be served in sending the matter for trial and no real likelihood of the defendants succeeding in their claims. Thus, the Court decreed the suit in favour of the plaintiff and directed for a permanent injunction restraining the defendants from utilising the trademarks.
Ulink Agritech Private Ltd vs Sml Limited & Others on 20 August, 2024 (Himachal Pradesh High Court)
The Court observed that a non-speaking order could not be passed to grant an ex-parte injunction and remitted the case. The plaintiffs were proprietors of the trademark “SELZIC”. Earlier, an ex-parte ad-interim injunction was granted restraining the defendants from infringing the patent. The defendants contended that an ex-parte injunction could only be granted under exceptional circumstances and that the Court had not shown the application of mind in granting such an order. Merely recording that the balance of convenience would be in favor of the plaintiff would not be enough to grant an injunction. The Court held that Order 39 Rule 3 of the CPC requires reasons to be mandatorily recorded, and merely recording observations without any cursory discussion of the merits would not amount to compliance with the requirement. Accordingly, the Court remitted the case to the Single Judge for fresh consideration.
The Court passed an ad-interim injunction in favour of the plaintiff. The plaintiff was involved in the medical business proprietors of the mark “NEW LIFE”. The plaintiff came to know that the defendant had been passing off the mark of the plaintiff by utilising the abbreviation of “New Life” as NL in its corporate name “NLCare Pvt. Ltd”, which was engaged in the same business. The plaintiff submitted that the defendant had applied to register the deceptively similar trademark and logo. The Court found that the directors of the defendants were directors of the plaintiff company till 2018 and had resigned from the plaintiff company and surrendered their shares. After resigning, they applied for a similar business and trademark. Thus, the Court found a prima facie case in favour of the plaintiff and directed an ad-interim injunction restraining the defendants from utilizing the same.
The appellants prayed for an order to direct the Trade Mark Registry to accept its application for the trademark “DISPOWAY”. The respondent, the Registrar, purported that a hearing notice was given to the appellant but no such notice was received by the appellant, and was thus unable to attend the hearing before the Registrar. Further, there was no such notice available on the respondent’s website. The Court noticed that there was no evidence on record to show that the notice was actually received by the appellant, and thus the Court allowed the present appeal and remanded the matter back to the Registrar of Trademarks for a fresh hearing.
Other IP Developments
- Delhi High Court orders Rakshit Shetty Paramvah Studios to pay INR 20 Lakhs to MRT Studios in ‘Bachelor Party’ copyright infringement case.
- Kinetic Green and Yulu Bikes settle trademark dispute over ‘Zulu’
- CCI in its internal assessment holds that the USD 8.5 billion merger of Reliance and Walt Disney media may harm competition due to their cricket broadcasting rights.
International IP Development
- Sony, Warner Music and Universal asks US Supreme Court to reconsider USD 1 Billion verdict in Cox copyright case.
- Anthropic hit with a class action lawsuit in California Federal Court for using books without authorisation to train its AI chatbot Claude.
- AstraZeneca manages to overturn USD 107 million Nerlynx patent verdict granted in favour of Wyeth.