Here is our recap of last week’s top IP developments including summary of the posts on DPIIT’s decision to take over the IT division of CGPDTM, BHC at Goa’s decision to scrap the Goa govt.’s circular on Section 52(1)(za), MHC’s clarification on whether a counterclaim can be filed against a trademark rectification petition, and DHC interim injunction order against infringement of the IP rights of the makers of “Taarak Mehta ka Ooltah Chashmah” sitcom. This and a lot more in this week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
SpicyIP Tidbit: CGPDTM in Spotlight- DPIIT Head takes over CGPDTM IT Division
In the background of a writ petition by AIPOWA pending before the DHC, alleging large-scale arbitrary reallocation of matters within the Indian Patent Office, the DPIIT has seemingly taken matters into its own hands by appointing one of its directors, Subhash Chandra Karol, as the IT head for CGPDTM. Yogesh Byadwal dives into the details of this writ petition, other instances where AIPOWA has locked horns with the CGPDTM, and the numerous recent administrative and other issues within the o/o CGPDTM in this tidbit.
Goa Circular on the Unauthorized Use of Sound Recordings During Weddings Hits a Wrong Note!
BHC turns down the volume of wedding bells in Goa! The BHC recently set aside the state government’s circular that allowed the use of sound recordings without an NOC from copyright owners during wedding festivities. Gaurangi Kapoor discusses this decision, explaining the longstanding squabble between the executive and the judiciary regarding the interpretation of Section 52(1)(za).
With directions to reconsider whether the invention, as specified in the complete specification, would be non-obvious, the MHC has remanded a patent application back to the IPO. Curiously, the IPO had already rejected the application on the grounds that its claims fall under prior art. Discussing this paradoxical cycle of events, Md Sabeeh Ahmad writes about this judgment.
Other Posts
Can a counterclaim be filed against a TM rectification petition? The MHC addresses this seemingly novel question by treating the counterclaim as a fresh petition. Read Tejaswini Kaushal’s post on this development.
Underlining the difference between product and process patents, the MHC, in back-to-back orders, has clarified that a product patent application cannot be rejected on the grounds that the relevant process has already been patented. Read Tejaswini Kaushal’s discussion on these orders.
Who truly owns the attributes of fictional characters? the DHC interim injunction in favor of makers of the Indian sitcom “Taarak Mehta ka Ooltah Chashma” makes a strong case for the makers of the show. SpicyIP intern Samridhi Chugh discusses this order.
Case Summaries
Nippon Steel Corporation vs Controller General Of Patents, Designs on 29 August, 2024 (Delhi High Court)
An appeal was filed against the impugned order by the respondent rejecting the appellant’s patent application for lacking novelty and inventive step. It was alleged that the controller gave no reasoning or justification for the order and the order was cryptic. The Court decided to set aside the impugned order and ordered the controller to decide the application on merits.
Impresario Entertainment vs Star Hospitality on 27 August, 2024 (Delhi High Court)
The High Court passed an interim injunction against the defendant, restraining them from using the “Social” mark. The defendant was using the impugned mark “Social Affair” for similar services as that of the plaintiff. The plaintiff is the prior adopter of the mark “Social”. The Court held that the competing marks are deceptively similar and use of the impugned mark by the defendants might cause public confusion or deception.
M/S Prakash Pipes Limited vs M/S Jaiswal Traders on 29 August, 2024 (Delhi High Court)
The Court granted a permanent injunction and decree to the plaintiff against the defendant restraining them from using the marks “PRAKASH/PRAKASH GOLD”. The plaintiff uses the mark “PRAKASH” and has continuously used it since 1980 to build goodwill in the market. Considering that both the Plaintiff and the Defendants were in the identical line of business and finding that the competing marks are deceptively similar, the Court passed the injunction order.
HT Process Controls Pvt. Ltd. v Ankur Gupta & Ors. on 15 July, 2024 (Delhi High Court)
The Plaintiff sought an ex parte ad interim injunction order from the court against the defendant to protect its confidential information, trade secrets and technical know-how. The plaintiff alleged that the defendant, who is an ex-employee of the plaintiff, has transmitted confidential information before leaving their employment from his official id to his personal id. They further alleged that the subsequent employer of the defendant and another enterprise, acting in collusion with them, filed pre grant oppositions against the plaintiff’s patent application relying on the above confidential information. The Court found a prima facie case against the defendant and his employer and passed an ex-parte ad interim injunction order against them.
The plaintiff approached the Court seeking refund of court fees after they had withdrawn a prior suit contending trademark infringement. However, the plaintiff had made incorrect and misleading averments in their previous plaint. The Court held that where a party is found guilty of making dishonest averments, then the Court can dismiss the application without reason as they had approached the court with unclean hands. Accordingly, the Court dismissed the application with costs of Rs. 50,000/-.
DKH Retail Limited vs Jay on 27 August, 2024 (Tis Hazari Courts, Delhi)
The plaintiff was the proprietor of the registered trademark “SUPERDRY” and was involved in the clothing business. The plaintiff submitted that the defendant was running a warehouse engaged in the business of storing, distributing and selling goods that falsified the trademark of the plaintiff. Previously, a Local Commissioner was appointed for execution of a commission whereby several articles of counterfeit goods containing the falsified trademark were discovered from the defendant’s premises. Accordingly, the Court held in favour of the plaintiff and restrained the defendants from using the concerned trademark through a permanent injunction and hand over all seized products. They also imposed damages of Rs. 3,00,000/- on the defendant.
Grass Valley K K vs Ashok Kumar(S) & Ors on 21 August, 2024 (Delhi High Court)
The plaintiff sought an ex-parte ad interim injunction against Ashok Kumars/ John Does for infringing its copyright in its EDIUS software. It alleged that majority of the users of its software in India use unlicensed/ pirated version of the software and after considerable efforts they have identified IP addresses of users using unlicensed/ pirated version of the software and have collated the crack users’ data, based on the invalid/ incorrect requests it has received. The Court held that such offering and selling of pirated software is illegal and unethical and passed an ex-parte ad interim injunction order against the defendants.
The plaintiff alleged that the defendant used its distinctive trademarks, “VIVO” and other formative marks, in a manner that was identical or deceptively similar, leading to confusion among consumers and thus sought a permanent injunction against them. Earlier, the defendant had filed a trademark application for “VIVO +Plus Adhesive” in Class 01, and the plaintiff discovered this in April 2021. Despite a cease and desist notice sent by the plaintiff, the defendant continued using the impugned marks. The Court had also issued an ex-parte injunction in October 2021, restraining the defendant from using them. Recognising the plaintiff’s extant reputation and goodwill due to its significant presence in the market, advertising and sponsorships of major events, the Court found that the defendant’s use of the “VIVO” mark was dishonest and constituted infringement and passing off. Declaring “VIVO” to be a well-known mark, the Court granted the permanent injunction against the defendants and imposed costs to the tune of Rs. 3,01,000.
The plaintiff filed a petition seeking cancellation of the defendant’s trademark “INDO AIR” in Class 11. Arguing that this use, not being honest or bonafide, constituted infringement, the petitioner argued that the respondent’s trademark, registered in 2018, was marked as “proposed to be used,” and there was no evidence of its prior use. The Court found that the respondent’s mark, being registered for the same class of goods, was deceptively similar to the petitioner’s mark “INDO” and was not adopted honestly, leading to potential confusion among consumers. Consequently, the Court ordered the cancellation of the respondent’s registration and directed the Trademarks Registry to rectify its records and issue a notification accordingly.
Tractors & Farm Equipment Limited v. Bhavya Pipe Industry on 27 August, 2024 (Madras High Court)
The appellant filed an appeal against an order by the Principal Commercial Court, Egmore, Chennai, which returned its plaint under, directing it to be presented before the Commercial Division of the Madras High Court. Originally, the appellant had filed a suit against the defendant seeking declarations that certain trademarks had been abandoned by them in India and other injunctive reliefs against them. The present appeal focused on whether the Commercial Court was correct in returning the plaint. The Court concluded that the first proviso to Section 7 of the Commercial Courts Act (CCA) specifically relates to IPR disputes, which are exclusively heard by the Commercial Division, regardless of the specified value in High Courts with original civil jurisdiction. Following this, the Court upheld the validity of the decision of the Commercial Court, confirming that it correctly interpreted the CCA and dismissed the appeal.
The petitioner filed an appeal against the refusal of its patent application titled “Administration of Wireless Systems,” originally filed in 2008, which involved a system for managing conflicts between multiple wireless servers that configure wireless devices. The Indian Patent Office had objected to the application based on a lack of inventive step and non-patentability under Section 3(k) of the Act, primarily claiming that the invention was directed towards sets of instructions or software, lacking inventive hardware features. The petitioner argued that the IPO overlooked the technical effect of its patent which involved conflict resolution between wireless servers, providing a solution by evaluating and prioritising policies from primary and secondary servers, and involved hardware elements like servers and mobile devices. The Court found weight in the arguments of the Assistant Controller of Patents and dismissed the appeal, holding that while the invention provided a structured approach to managing wireless systems, it fundamentally relied on algorithmic processes without any substantial technical hardware contribution, and, hence, not qualifying for patent protection in India.
Other IP Development
- Delhi High Court imposed INR 5 Lakhs as costs on Haute24 for unauthorized use of Louis Vuitton’s images.
- Bombay High Court grants temporary relief to Burger King Corp. imposes temporary stay on Pune Court’s decision allowing a Pune based eatery to use the “Burger King” mark.
- Delhi High Court declares Boroline as a well known mark.
- Burger King Corporation files a trademark infringement suit against a Jaipur based company for using “Burger Farm”.
- Delhi High Court restrains E-commerce platforms from selling counterfeit copies of EBC books.
- Guru Randhawa and T-Series sued for copyright infringement by Vee.