Here is our recap of last week’s top IP developments including summary of the posts on the Delhi High Court’s Oppo decision, Calcutta High Court IPD Rules, Central Government’s executive order on clinical trial waiver. 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
Calcutta High Court Notifies IPD Rules: A Quick Comparison
The Calcutta High Court IPD Rules have been published! Take a quick look at some of the welcome changes, such as ensuring accessibility for PwDs, and understand how these rules differ from their Delhi and Madras counterparts.
Of Clinical Trial Waivers in India: The Misses Outweigh the Hits
Does the recent executive order granting clinical trial waivers for new drugs miss the mark? Md Sabeeh Ahmad raises some concerns while looking at this order. Read on below for his take on the executive order.
The recent decisions by the UK Court of Appeal and the EPO in the Emotional Perception AI Ltd and Mitsubishi cases have sparked an intriguing discourse on the patentability of Artificial Neural Networks (ANNs). Exploring this issue in a two-part guest post, Bharathwaj Ramakrishnan explains what ANNs are and breaks down the positions of the EU and UK authorities on their patentability.
Continuing the discussion on the patentability of Artificial Neural Networks (ANNs), Bharathwaj Ramakrishnan explores how the patentability of ANNs can be interpreted in India in light of Section 3(k) and decisions such as Open TV v. Controller of Patents and Ericsson v. Lava.
Other Posts
Claim Amendments Must Adhere to the Scope of Last Amended Claims, Clarifies the Controller
In an important clarification, the Controller has recently ruled that any new amendments to the patent claims cannot exceed the scope of the last amendments. Take a look at this post to know more!
Deciding Product by Process: The Dilemma lingers on
An interim injunction application against a process to manufacture FCM was recently rejected by the Calcutta High Court for lack of a prima facie case. Breaking down the Court’s rationale, Yogesh Byadwal explains how the Court erred in its examination by confining its inquiry only to the process instead of also assessing the resultant product.
Recently, the DHC in InterDigital v Oppo set a rather intriguing precedent by allowing access to in-house employees to the confidentiality club documents. Tejaswini Kaushal discusses the implications and propriety of such expansion of the scope of a confidentiality club, given that the purpose of a confidentiality club is to prevent the other party from having access to confidential information.
Blackberry Innovates!: Understanding Algorithm Exclusion u/s. 3(k)
In the recent Blackberry decision, the DHC clarified that despite algorithms being excluded under S. 3(k), an invention merely incorporating an algorithm can still be patented if other conditions of patentability are satisfied. Discussing this development, Yogesh Byadwal explores whether this marks a shift from the position in the OpenTV case and if it is similar to the Mayo Test of the US. Read on to know more.
Case Summaries
The plaintiff, proprietor of “HEALTH OK” trademark, accused the defendants of selling products under the confusingly similar mark “ALL OK+.” It was claimed that the similar trade dress and colour scheme of both products, using the green, blue and silver combination, aggravated the existing confusion among consumers. Highlighting its significant investment in promoting its marks, the plaintiff provided evidence of sales and goodwill built over the years. On examining the said averments, the Court found a prima facie case in favour of the plaintiff, granting an interim injunction to restrain the defendants from using the “ALL OK+” mark and other confusing marks similar to the plaintiff’s.
Kentucky Fried Chicken International Holdings LLC v. Muhammad Ali. M And Ors. on 5 September, 2024 (Delhi High Court)
The plaintiff sought a permanent injunction to prevent the defendants from using the impugned trademark “AFC” (“American Fried Chicken”), contending that it was deceptively similar to KFC’s trademarks in both appearance and concept. Providing the evidence of its trademark registrations, extensive marketing campaigns and distinctive red-and-white trade dress, it claimed to have garnered significant consumer recognition, including celebrity endorsements. While the defendants subsequently proposed a new logo during the proceedings, the plaintiff rejected it, asserting that it continued to resemble its own branding. The Court recognised this said resemblance between the competing trademarks and found that there was a prima facie case for infringement. Observing this, it issued an ad-interim injunction restraining the defendants from using the impugned mark or any similar marks and directed them to cease production and sale of the infringing products affixing them.
Biotyx Medical (Shenzhen) Co. Ltd v. The Assistant Controller Of Patents And Designs on 20 September, 2024 on 19 September, 2024 (Delhi High Court)
The appellant challenged the rejection of its patent application for an absorbable iron-based alloy medical device. The respondent, the Assistant Controller, had refused the application under Section 15 of the Patent Act, 1970, citing a lack of novelty and inventive step, based on prior art. The Court noted that the prior art cited by the Controller primarily dealt with alkaline protectors, whereas appellant’s invention focused on a zinc-based protective layer. It observed that the Controller erred in determining novelty by failing to distinguish the specific features of the invention from the prior art. It also observed that the Controller did not adequately apply the recognised five-step test for assessing inventiveness. Thus, the Court set aside the impugned order and remanded the matter for reconsideration. The Controller was directed to reassess the inventive step using a more detailed and scientifically reasoned methodology and to issue a final decision within four months after the hearing.
Keshav Kumar Ratwani v. Rohit Kumar Dhaka & Anr. on 19 September, 2024 (Delhi High Court)
The petitioner sought rectification of the copyright for “DHAKA SHREE BHARAT,” accusing the respondents of fraudulently copying his “Jai Bharat” label and securing copyright for an identical design. It was argued that the registration was invalid as the impugned work used the same colour combination, artistic style and layout, intending to confuse customers and capitalise on the petitioner’s established goodwill. Additionally, it was also pointed out that the respondents had previously admitted to copying the said design in a prior legal dispute settled in 2019. Despite this, they were accused of continuing to infringe on the copyright. In light of these averments, the Court issued an interim stay on the copyright registration pending further hearings.
Emcure Pharmaceuticals Limited v. Siddhi Herbals on 19 September, 2024 (Delhi High Court)
The plaintiff alleged trademark infringement, passing off and copyright violation by the defendants due to the use of a similar trademark and packaging for their product “ORAFER/ORAFER-XT”. The said product is a prescription drug for anaemia, while the defendant’s product is an over-the-counter nutraceutical. This raised concerns of consumer confusion and potential health risks. The plaintiff, which has used the “OROFER” mark since 1996, claimed significant market presence. Based on these facts, the Court found a prima facie case of infringement by the defendants. It issued an ex-parte ad-interim injunction, restraining them from selling products similar to the plaintiff’s until the next hearing, with summons issued for further proceedings.
The plaintiff filed a suit against the defendant for copyright infringement, passing off, and unfair trade practices regarding an architectural design, the “Artistic Work/Device” created by Upton-Hansen Architects Ltd. for the plaintiff’s real estate project “BPTP THE AMAARIO.” The Court granted an interim injunction noting that the defendant’s copying of Plaintiff’s artistic work in their promotional materials for its own project, is liable to cause confusion among the consuming public to spend hefty amounts in the projects of the defendant, expecting the quality which is associated with the plaintiff.
Modern Mold Plast Pvt. Ltd. & Anr. vs Flipkart Internet Pt. Ltd. & Ors. on 18 September, 2024 (Delhi High Court)
The Delhi High, while granting an injunction, reasoned that the actions of Defendants No. 2 and 3, who latched onto the plaintiffs’ listings on Flipkart and sold products under the “MAHARAJA” trademark, amounted to passing off and trademark infringement. It also directed, Defendant No.1, Flipkart to implement its “brand gating” feature, to the listings of the plaintiff to prevent such latching-on in the future.
Treasure Studio Inc & Anr. vs Mohit Khungar & Anr. on 17 September, 2024 (Delhi High Court)
The Delhi High Court ordered the cancellation and removal of respondent no. 1’s trademark “COCOMELON” after finding it deceptively similar to the petitioners’ well-known mark used for children’s content and merchandise. In this ex-parte order, it held that the respondent’s mark was likely to confuse consumers and induce an association with the petitioners’ products.
The plaintiff, engaged in the manufacture and sale of iodized salt under the “PRIME” trademark since 1995, filed this Rectification Application, arguing that the defendant had not used the trademark for any other goods in class 30 except rice. The court found that the defendant had registered the trademark on a “proposed-to-be-used” only till 01 st January, 2024 and the same has not been renewed, thereafter. Given the deceptive similarity between the two marks and the likelihood of confusion, the Court directed the rectification of the defendant’s trademark registration, deleting it for salt and spices.
An ex-parte ad-interim injunction was granted in favor of the plaintiff, who sells a range of premium high-quality hair products under the Trademark “Nashi Argan.” It was argued by the plaintiff that the use of the plaintiff’s said mark by the Defendants amounts to passing off and trademark infringement. The Delhi High Court also appointed a Local Commissioners to conduct searches, seize possibly infringement and counterfeit products.
The Plaintiff was granted an ex-parte interim injunction restraining passing off and trademark infringement of Plaintiff’s Internationally registered ‘AKEMI’ and ‘AKEPOX’ marks. The Plaintiff conducted a test to ascertain the quality of the Defendant’s counterfeits, under the mark Akepox-5010 vis-a-vis the original products of the plaintiff, finding that the defendant is selling substandard, inferior, hazardous products in the name of the plaintiff.
Reckitt & Colman (Overseas) Hygiene Limited & Ors. v. Ashok Kumar(S)/ John Doe(S) & Ors. on 22 August, 2024 (Delhi High Court)
The plaintiffs sought injunctions and damages against the defendants for trademark, copyright and design infringement, alleging large-scale counterfeiting of their products through the manufacture and sale of closely similar bottles and stickers. Investigations confirmed that these activities revealed a slew of counterfeit operations undertaken by the defendant, including the production of fake labels and the sale of empty bottles bearing the plaintiffs’ marks. Recognising the established reputation and goodwill of the plaintiffs, the Court found merit in their claims on a prima facie basis. It granted an ad-interim injunction restraining the defendants from producing or selling counterfeit goods and appointed local commissioners to seize infringing items and related documents.
The plaintiff sued various defendants for copyright infringement, trademark violations and passing off related to the book “Law of Torts”, authored by Dr. R.K. Bangia. The plaintiff alleged that pirated copies of its book, with unauthorised reproductions of its content and distinctive packaging, were being sold on Amazon by unauthorised sellers, leading to confusion among consumers and reputational harm. The Court, agreeing with these contentions, found the defendants guilty of copyright infringement and passing off counterfeit books as genuine, issuing a permanent injunction to restrain further violations of the plaintiff’s trademark and trade dress. While no punitive damages were awarded, the plaintiff received ₹15,000 for litigation costs.
The plaintiff accused the defendant of trademark infringement, copyright violation and passing off by selling counterfeit products under the trademarks “AKEMI” and “AKEPOX.” The plaintiff claimed that these trademarks had acquired distinctiveness and goodwill, while the defendant’s counterfeit products were of inferior quality. The plaintiff sought a permanent injunction, damages and an accounting of profits, as well as the delivery of the infringing goods. The Court granted interim relief to the plaintiff, restraining the defendant from using the disputed trademarks and appointing a local commissioner to seize the alleged counterfeit products.
Star India Pvt Ltd v. Vegamovies.Pet & Ors. on 20 September, 2024 (Delhi High Court)
The plaintiff sued multiple websites for copyright infringement, accusing them of illegally streaming and distributing its copyrighted TV shows, films and sports broadcasts without authorisation. The defendants included infringing websites, Domain Name Registrars, ISPs and regulatory bodies. The plaintiff presented evidence of systematic copyright violations with the infringing sites avoiding detection by masking their details. Despite legal notices, the websites failed to remove the infringing content. The Court acknowledged the financial harm caused by the infringing websites and referred to established precedents, such as UTV Software v. 1337X., to classify the impugned websites as rogue. Granting a dynamic injunction, it allowed the plaintiff to block mirror or variant sites in the future. It also issued an interim injunction against the infringing websites, suspension of their domain names, blocking of access by ISPs and disclosure of registration details by the Domain Name Registrars.
In this case, the appellant, TVS, appealed against the rejection of its patent application, titled “System for Selectively Operating Regenerative Braking in a Vehicle and Method Thereof.” The patent was denied for lack of novelty and insufficient disclosure. TVS argued that its system was innovative and allowed users to select regenerative modes based on vehicle battery parameters, a feature not present in prior art. The Court found that the Patent Office failed to consider TVS’s arguments on the user-selectable regenerative mode, which could constitute an inventive step. At the same time, the Court observed that TVS failed to disclose some vital parameters, including the predefined state of charge. Finally, the Court set aside the rejection of the patent application and remanded the case for reconsideration by a different patent officer.
Bry-Air (Asia) Pvt. Ltd. v. Union Of India on 26 September, 2024 (Delhi High Court)
The petitioner filed a writ petition challenging the deemed withdrawal of its patent application for failing to submit Form 18 on time, due to the negligence of its former Patent Agent. The agent admitted fault, while Bry-Air argued that it had no intention of abandoning the application. The petitioner sought reinstatement and relied upon previous rulings where their patent applications were reinstated under similar circumstances. The Court affirmed that the petitioner was not at fault and ruled that the patent application should be restored. The Indian Patent Office was directed to allow Bry-Air to file Form 18 and proceed with the examination.
The plaintiff filed a suit seeking a temporary injunction against the defendants to restrain them from manufacturing or selling products containing the compound ‘Olaparib’ (LYNPARZA), which they alleged infringed their patent IN’720. Since the suit patent expired during the course of the hearings, the Court directed the defendants to disclose their earnings from Olaparib sales and directed them to keep aside 20% of these proceeds in a No Lien account. The Court further ruled that an injunction could not be granted and directed the remaining issues to be resolved during an expedited trial.
SM Motorenteile Gmbh v. A.A. Automobiles & Ors. on 26 September, 2024 (Delhi High Court)
The plaintiff sought an injunction to stop the defendants from using its “SM Logos” without authorisation. The plaintiff, known for manufacturing vehicle parts, discovered that the defendants were selling counterfeit gaskets using their trademarks. The Court had initially granted an ex-parte ad-interim injunction in September 2019 and confirmed it after finding counterfeit products during inspections. Now, after a comparative analysis of the two logos, it found that the defendants had copied the plaintiff’s well-known mark and packaging, leading to confusion among customers, especially in rural areas. It held that the defendants’ actions tarnished the plaintiff’s goodwill and reputation and their counterfeit products also violated the provisions of the Legal Metrology Act, 2009. Since the defendants had no substantial defense, the Court granted a permanent injunction to prevent further infringement
The plaintiff claimed that their trademark “RACIRAFT”, used for an acidity and heartburn medication, was copied by the defendants, which applied for the similar mark “RANRAFT”. The plaintiff argued that this similarity would confuse consumers, potentially endangering health. To the contrary, the defendants argued that “RAFT” is commonly used in pharmaceutical products for treating gastroenterological conditions and the prefix “RAN” was derived from their long-established brand “RANTAC”, used for treating similar conditions. The Court found that the trademarks were deceptively similar, particularly the “RA” prefix and “RAFT” suffix. It observed that the minor difference in the middle letters would not be sufficient to prevent confusion, especially in medicinal products, and also rejected the defense that “RAFT” was common to the trade. Finding the defendant’s use unjustified, the Court granted an interim injunction restraining them from using the impugned mark.
M/S.Star Plastics vs Sajeev Antony on 13 September, 2024 (Madras High Court)
The plaintiff sought rectification of the trademark “STAR” registered by the defendant claiming prior use of the mark in the same category of goods. The Court found that the plaintiff had established prior use and that the defendant’s registration of the similar mark was neither honest nor concurrent. The Court ordered the cancellation of the defendant’s trademark registration and directed the Registrar of Trademarks to rectify the entry.
Zydus Wellness Products Ltd vs Mr Prashant Desai on 26 September, 2024 (Delhi High Court)
The Delhi High Court granted an injunction against social media influencer Prashant Desai, restraining him from publishing content disparaging Zydus Wellness’ Complan product. The Court held that Desai’s video, which advised against giving Complan to children due to high sugar content, amounted to disparagement and trademark infringement. The Court found Desai’s statements were unsubstantiated, malicious, and likely to cause irreparable harm to Zydus’ reputation and goodwill. The judgment emphasized that social media influencers must exercise caution when commenting on products, especially without relevant qualifications or substantive basis.
Other IP Developments
- DGCI issues notices to over a dozen food and beverage companies for improper GST payment on trademark usage.
- Patent office assures Karnataka High Court that it is taking steps to make its websites friendly for PwDs.
- Telangana High Court clarifies that threat of infringement pre supposes the urgency for pre institution mediation under Commercial Courts Act.
- Shankar warns film makers against adaptation of Su. Venkateshan’s Tamil novel ‘Nava Yuga Nayagan Vel Paari.
International IP Developments
- Brazil Supreme Court gives X 5 days to produce supporting documents to prove compliance with the Court’s previous directions in the hate speech case.
- Two Nobel Prize winners want to cancel their CRISPR patent in Europe.
- Seoul Semiconductor wins ‘no wire’ patent infringement suit in Europe.
- USPTO notifies coding error in its patent term adjustment software.