Here is our recap of last week’s top IP developments including summary of the posts on posthumous personality rights of artists, and book reviews of “Modern Law of Copyright in Singapore” and “Overlapping Intellectual Property Rights (2nd Ed.). 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
Book Review: Overlapping Intellectual Property Rights 2nd Edition
The 2nd edition of “Overlapping IP Rights” (OUP 2023), edited by Profs Neil Wilkof, Shamnad Basheer, and Irene Calboli, much like its predecessor, serves as a great guide and authority on dealing with the overlaps and interfacing of different IP rights. Md Sabeeh Ahmad shares his review of the book.
Bringing the dead back from their grave? In the context of utilizing deceased artists’ voices through AI tools, Julia Anna andSnehal Khemka discuss the sufficiency of the legal frameworks in India and other countries to address this phenomena.
Book Review: Modern Law of Copyright in Singapore
Reviewing’s David Llewelyn, Gladys Tan, Estelle Moh Huixuan and Ng Hui Ming’s treatise ‘Modern Law of Copyright in Singapore’, (SAL Academy Publishing, 2023) Prashant Reddy discusses how India and Singapore’s copyright regime diverge from each other over the years.
Other Posts
[Sponsored] PatSeer Launches AI-Driven Industrial Design Database with Unrivalled Worldwide Coverage
We are pleased to bring to you this sponsored post by PatSeer on the launch of their new Industrial Design Search solution. For more details, read their announcement on the blog.
Case Summaries
The plaintiff sought an interim injunction against the defendants for selling ghee products that were deceptively similar to its trademark “ANIK” and trade dress. The Calcutta High Court found that the defendants were selling products that closely resembled the plaintiff’s packaging, thus, probable to create confusion among consumers. The Court concluded that the plaintiff had established a prima facie case and granted an interim injunction, restraining the defendants from manufacturing, selling, or marketing the products.
Saregama India Limited vs The New Digital Media And Anr on 11 September, 2024 (Calcutta High Court)
In a copyright dispute, the Calcutta High Court allowed the application by Defendant No. 1 to produce certain documents for cross-examination, which were not initially disclosed. The Court dismissed the plaintiff’s procedural objections, viewing them as technicalities, and allowed the production of documents solely for the purpose of cross-examination. It was reiterated that under Order XI Rule 1(7)(c)(i) of the Code of Civil Procedure, documents could be used for the limited purpose of cross-examination to impeach the witness’s credibility and not to substantiate a new defense.
State vs. Naresh Chand Gupta on 2 September, 2024 (Delhi District Court)
The accused was convicted under Section 104 of the Trademark Act, 1999, for possessing and selling counterfeit goods bearing the falsified trademark of “TVS Motor Company Ltd.” at his shop. The prosecution, supported by the testimony of seven witnesses, demonstrated that a raid conducted on 29 June 2019 led to the seizure of spurious articles, such as packing pouches, boxes, and disc clutches, with the counterfeit logo of TVS. Despite the defense’s arguments questioning the lack of independent public witnesses and alleging false implication, the Court found the evidence sufficient to convict the accused.
The Delhi High Court, while accepting the defendant’s argument of lack of territorial jurisdiction, noted that the plaintiff is having its office at Gandhi Dham Gujarat where the entire cause of action has arisen whereas no cause of action has arisen in Delhi. The Court, accepting the argument, concluded that it lacked territorial jurisdiction and returned the plaint for filing in the appropriate Court.
The plaintiff filed a suit to recover the principal amount, i.e. ₹67,50,909 plus interest from the defendant as the latter failed to pay monthly fees and top-up security deposits as stipulated in the exclusive Workspace Office License Agreement. Despite repeated reminders and legal notices the defendant did not appear in Court and the Court proceeded ex-parte awarding the plaintiff, the principal amount and interest at 9% per annum.
The Polo/Lauren Company L.P. v. Landmark Traders Pvt. Ltd. on 4 September, 2024 (Delhi District Court)
The plaintiff, using the “POLO” trademark and related variations since 1967, accused the defendants of selling counterfeit goods bearing deceptively similar trademarks. The infringement surfaced in 2017 when such goods were seized in the Dominican Republic, allegedly exported by the defendants who denied manufacturing or selling them and claimed to be mere exporters for third parties. The suit was transferred to the Commercial Court, which granted an ex-parte ad-interim injunction in 2018, restraining the defendants from using the impugned trademarks. The Court, herein, issued a permanent injunction, barring the defendants from using or exporting goods with similar marks, but no customs directive was given due to insufficient proof from the plaintiff. The plaintiff was awarded the cost of the suit.
Kohinoor Seed Fields India Pvt. Ltd. v. Veda Seed Sciences Pvt. Ltd. on 9 September, 2024 (Telangana High Court)
The plaintiff (respondent, herein) had filed a suit seeking permanent injunction and damages to restrain the defendant from infringing on its trademarks—”Sadanand,” “Tadaka,” and “Basant”—used for selling hybrid cotton and other seeds. The appellant objected to the maintainability of the suit, arguing that the then plaintiff had not followed the mandatory pre-institution mediation requirement under Section 12A of the Commercial Courts Act, 2015. The plaintiff argued that the urgency of the case, due to the defendants’ sale of the “Sadanand” trademark and the imminent risk to their business, justified bypassing pre-institution mediation. The Court agreed, noting that trademark-specific disputes require swift intervention to prevent significant harm, thus, exempting the present matter from the mediation requirement. Consequently, the Court upheld the decision to proceed with the suit without mediation.
AR Bela Agrawal v. Council Of Architecture and Ors. on 5 September, 2024 (Delhi High Court)
The petitioner, contracted by Madhya Pradesh Public Works Department (MPPWD) in 2017 as a consultant, was accused by Arcop Associates of copying their designs and failing to disclose ongoing contracts. The Council of Architecture (COA), after hearings, found her guilty of misconduct under Clause 2(1)(x) and Clause 2(1)(xv) of the Architects (Professional Conduct) Regulations, 1989, and imposed a one-year suspension. The Court found COA’s suspension arbitrary and violative of natural justice, observing that it expanded the charges without giving her a chance to defend herself and overstepped its jurisdiction by involving itself in copyright issues. The Court also noted the suspension was based on unsubstantiated allegations and was disproportionate to the alleged misconduct. Consequently, the Court quashed the suspension and directed COA to adhere to proper procedural and jurisdictional limits in future disciplinary actions.
The defendant filed an application to reject the plaint alleging trademark infringement. The defendant argued that in 2019 they had filed a trademark infringement suit against the plaintiff in the Rohini District Courts, Delhi against which the plaintiff filed its written statements and counter claim. Subsequently, in 2022, the plaintiff withdrew its counter claim and consequently in 2023, filed the present suit. The defendant argued that the plaintiff’s present suit is based on the same cause of action and inter alia the plaintiff is seeking same reliefs as sought under its withdrawn counter claim. They further argued that since the plaintiff has willingly withdrawn its counterclaim without the liberty to file any fresh suits, the present plaint should be rejected. The Court compared the plaint and 2019 counter claim and held that the averments in both the documents are same and pertain to similar cause of actions. Holding that the plaintiff had withdrawn the counter claim without seeking a liberty to file subsequent suits, the Court rejected the present plaint.
Other IP Developments
- Delhi High Court restrains Italy based firm from using “Amuleti” mark. Holds it to be deceptively similar to “Amul”.
- Central and state govt universities to be exempted from paying GST on research funds.
- CGPDTM forms a committee to draft a code of conduct for Patent and Trademark Agents.
- Jasleen Royal files a copyright infringement suit against Guru Randhawa and T-Series before the Bombay High Court.
- Ernakulam District Court temporarily restrains creation of Minnal Murali spin off movies, graphic novels and merchandise.
International IP Development
- Xockets accuses Nvidia and Microsoft of patent infringement and creating a cartel in gen AI markets.
- Two former executives of Samsung arrested for allegedly leaking USD 3.2 billion worth of company’s IP to build a chip fab in China.
- Thom Browne wins the three stripes IP infringement law suit against Adidas in Germany.
- White Stripes files a copyright infringement case against Donal Trump for unauthorised use of their “Seven Nations Army” song.
- Sohum Shah files a copyright infringement suit against Netflix and maker of “Squid Game” Hwang Dong-hyuk alleging that the series infringes the copyright in his film “Luck”.