Here is our recap of last week’s top IP developments including summary of the posts on some of the recent controversies concerning CGPDTM, establishment of a Committee to draft a code of conduct for Patent and Trademark Agents, the DHC judgement in the 23 year old Lacoste- Crocodile trademark dispute, and the DHC order retraining T-series from using “Ashiqui” in their movie titles. 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
The Delhi High Court recently restrained T-Series from using the title “Tu Hi Aashiqui” for infringing Vishesh Film’s trademark on the franchise “Aashiqui.” Tejaswini Kaushal explains the unique place of film titles in the IP regime and examines the court’s intriguing take on the trademarkability of the “Aashiqui” mark, assessing how this decision contrasts with past rulings on similar issues.
SpicyIP Tidbit: Committee Constituted to Draft the Code of Conduct for Patent and Trademark Agents
A committee to draft a Code of Conduct for regulating the conduct of Patent and Trademark Agents has now been constituted. This comes in as a result of the DHC’s order noting instances of professional negligence by these agents. Md Sabeeh Ahmad writes about this development.
Sailing Troubled Waters: A Look at the Spiral of Controversies that the CGPDTM Has Fallen Into
Recent legal challenges for the CGPDTM, including two Delhi High Court writ petitions against the institution have once again spotlighted the instability within the office. Tejaswini Kaushal examines the spiral of controversies surrounding the body and assesses how much of this is just smoke without fire.
In a peculiar decision, the MP High Court recently set aside an order by the Excise Commissioner for failing to assess the similarities between competing beer labels. Mehnaz Khatoon breaks down why the Court’s interpretation is faulty and overly broad in light of the relevant rules, and discusses the implications of this order in the SpicyIP tidbit.
Other Posts
The MHC’s recent order in Tiger Foods v. Registrar of TM may seem like a simple, straightforward decision directing the Registry to dispose of a Form TM P (application to change the name of the proprietor). But it’s only the tip of the iceberg of systemic issues with the CGPDTM like delays in disposing of applications, stock pile of pending applications/ oppositions, and the resource crunch. Yogesh Byadwal writes on these issues, indicating the need for a systemic reform in this tidbit.
Expert Lectures by Prof William Fisher on Pharma and IP, and on AI and Interests of Humanity
Attention IP enthusiasts! Prof William Fisher, whom many may know from his global CopyrightX and PatentX courses, will be delivering two public lectures in India over the next few weeks on Pharma and IP, and on AI and Interests of Humanity. See below for the relevant details including the registration formalities for both the lectures.
After 23 years, the Lacoste- Crocodile Int. TM dispute seems to have reached its conclusion. In this detailed post, Samridhi Chugh highlights the key issues of the dispute and breaks down the DHC verdict.
Case Summaries
The plaintiffs sought relief against the defendant for the infringement of their trademark “VOLVO.” It was alleged that the defendant was engaged in the unauthorised manufacture, sale and supply of pumps under the name “VOLVO Pumps.” Despite a cease-and-desist notice, the defendant continued using the mark, leading to consumer confusion and market dilution. The plaintiffs argued that this harmed their brand’s reputation and business due to the inferior quality of the defendant’s existing products. Recognising the “well-known” nature of the plaintiff’s trademark, the Court issued an ex-parte ad-interim injunction restraining the defendant from using “VOLVO Pumps” or any similar mark.
Kent RO Systems Ltd. & Anr v. Suresh Kumar & Ors. on 11 September, 2024 (Delhi High Court)
The plaintiffs sought a permanent injunction for design infringement, accusing the defendants of copying their patented water purifier design and selling identical products under names like “NEW AQUA GRAND+,” which was deceptively similar to their well-known mark “KENT” and other variations. It was alleged that the defendants, without authorisation, copied Kent’s designs and sold them through e-commerce platforms like Amazon, leading to confusion and deception among consumers. Despite being notified, Amazon continued listing the infringing products on its website. Upon examination, the Court found that a prima facie case of design infringement was being made out and issued an ex-parte ad-interim injunction, restraining the defendants from selling the infringing products and directing Amazon to remove the said listings and share the details of the seller.
The plaintiffs sought a permanent injunction against the defendants for infringing their well-known and registered “VERIZON” trademark. Despite receiving cease-and-desist notices, the defendants continued using the “VERIZON” mark for energy-related services under the name “VERIZON ENERGY PRIVATE LIMITED.” Even after changing the name of their company, the defendants persisted in using the trademark in their operations and branding. The Court found a strong prima facie case of trademark infringement, noting the defendants acted in bad faith, misleading the public and benefitting from Verizon’s goodwill. An ex-parte ad-interim injunction was granted, restraining the defendants from using the impugned mark, logo or any similar identifiers, including domain names and emails.
Yc Electric Vehicle vs Vishwas Automobiles Llp on 13 September, 2024 (Delhi High Court)
The plaintiff obtained an ex-parte ad-interim injunction against defendant’s use of the deceptively similar marks, “YATRI” and “YATRI STAR” . The plaintiff argued that the defendant had imitated the artistic and distinguishing features of the plaintiff’s ‘YATRI’ branded e-rickshaw to deceive customers, primarily illiterate rickshaw drivers. The Court held that such usage could cause confusion and was likely to result in irreparable harm to the plaintiff’s goodwill.
The plaintiff instituted a copyright and trademark infringement suit against the defendants regarding the unauthorized use of Bentley’s copyrighted software. The Court, while accepting the plaintiff’s argument that the defendants were engaged in piracy by using unauthorized software on several machines, resulting in harm and unjust enrichment, granted an interim ex-parte injunction.
Rado Uhren Ag And Ors vs Surjeet Singh And Anr on 12 September, 2024 (Delhi District Court)
The Patiala House Courts, New Delhi, granted a permanent injunction against the defendants for selling counterfeit watches bearing the trademarks of Rado, Tissot, Omega, Longines, and Swatch. The Court found the defendants guilty of trademark infringement and passing off, causing public confusion and harming the plaintiffs’ goodwill. The defendants were directed to deliver up all seized goods for destruction and erasure.
An appeal was filed against the order passed by a contractual employee at the Trademark Registry. The Court set aside the impugned order, stating that the officer lacked the authority to pass quasi-judicial decisions. The case was remanded to the Registrar of Trade Marks, Kolkata, for fresh consideration by a competent officer.
Axcess Limited vs Controller Of Patents And Designs on 13 September, 2024 (Delhi High Court)
The appellant challenged the rejection of its patent application by the Controller of Patents, arguing that the Controller’s finding qua amendments on Section 59(1) is contrary to the facts of the case. The Court found that the amendments made to the patent claims were within the scope of the original application and overturned the rejection. The case was remanded to the Controller for fresh consideration, instructing a de novo hearing and a decision within four months.
Kas Zainulabdin & Co vs Gokul Chand Manoj Kumar And Sons on 17 September, 2024 (Calcutta High Court)
The plaintiff alleged that the defendants’ mark (“099”) was deceptively similar to their registered trademark (“999”). The Court held that the defendants, who had knowledge of the plaintiff’s mark, attempted to pass off their products using a confusingly similar mark. An interim injunction was granted, restraining the defendants from using or selling products with the “099” mark until 19 November 2024.
Adidas Ag vs Mohd. Irfan on 11 September, 2024 (Delhi District Court)
The plaintiff filed a suit against the defendant alleging trademark infringement and sale of counterfeit goods. The Court dismissed the case, holding that the plaintiff could not produce sufficient evidence, including original and seized counterfeit products, to support its claims during the trial.
Other IP Developments
- Meghalaya’s Lakadong Turmeric gets a GI registration.
- Khola Chilli receives Goa’s 1st farmer plant variety registration.
- Panacea Biotech and Sanofi settle their hexavalent vaccine patent dispute.
- Karnataka High Court issues warning on unauthorised use of clippings from the live streaming of Court proceedings.
- Bombay High Court restrains Apollo Tyres from circulating “Seth” advertisements, holds it to be denigrating to Ceat tyres.
- Government of India launches AI powered tools for improving IP management.
- Public health groups express concern over Giled’s patent application concerning HIV drug lenacapavir.
International IP Developments
- Manhattan Court finds Donald Trump guilty of copyright infringement in “Electric Avenue” case.
- Miley Cyrus sued for copyright infringement. Tempo Music alleges that Cyrus’ “Flowers” is similar to Bruno Mars’ “When I was Your Man”.
- Munich Regional Court rules in favour of Nokia in its patent dispute with Amazon.
- The Pokémon company wins copyright dispute over Pocket Monster reissue.