Here is our recap of last week’s top IP developments including summary of the posts on the Lenacapavir patent application and oppositions, ANRF and corporatisation of research, the copyright dispute between Jasleen Royal and T Series, and DHC’s recent order in Master Arnesh Shaw v. Union of India 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
Patent Application for Gilead’s Lenacapavir Opposed: Saving Generics of HIV Drugs?
Lenacapavir is being seen as the next major development in fight against HIV AIDS, as it holds promise for not only treating HIV but also for prevention through its twice-yearly injections. The drug has recently been in the news as the IPO gears up to hear opposition to Gilead Sciences’ patent claims for this drug. Tejaswini Kaushal explores these Pre Grant Oppositions as well as potential licensing questions, highlighting how the outcome could profoundly impact the availability of affordable HIV treatments in low- and middle-income countries (LMICs) like India.
A Followup on Lenacapavir: Gilead enters into Voluntary Licensing Agreements in 120 LMICs
Gilead recently announced the signing of “Royalty-Free Voluntary Licensing Agreements” (VLAs) with generic manufacturers for the HIV drug Lenacapavir. Coincidentally, this move came after the reports of oppositions to Gilead’s patent application on the drug. These agreements aim to enhance HIV prevention efforts in high-incidence, resource-limited countries. Tejaswini Kaushal reviews the coverage surrounding these VLAs, assessing the accuracy of Gilead’s claims and their implications for global health.
The launch of the Anusandhan National Research Foundation (ANRF) and its emphasis on private funding in R&D has led to concerns over the corporatisation of research. Samridhi Chugh explores the implications of this shift in government approach, its impact on curiosity-driven research and what India can learn from the world in forging successful industry-academia partnerships.
Comments invited for proposed amendments to the Geographical Indications Act. Submissions to be sent in by October 10th. Do send in your comments!
Other Posts
In an update on the rare diseases case (Master Arnesh Shaw v. UoI), Mehnaz Khatoon explains why the Delhi High Court has come down heavily on Sarepta for delays, and notes the Court’s directive for Ministry of Health to fund the necessary treatments.
In a tie breaking verdict, the BHC strikes down the controversial IT Amendment Rules for setting up Fact Check Units. Mehnaz Khatoon writes on this development.
“All Right” for Who? Assessing the Jasleen Royal and T-Series Recent Copyright Controversy
After a copyright tussle with T-Series over a song, things seem to be “All Right” for Jasleen Royal after all as T-series agrees to take down its version from different platform. Read Mansi Bhatia’s post on the dispute.
The IP Press announces extension of the registration deadlines for their “Comprehensive Course on Patents”, organized in collaboration with S. Majumdar & Co. The deadline for registration has now been extended to October 4. For more details about the course and the registration, read their announcement above.
Case Summaries
V. Lakshminarayanasamy v. Siva Bhaskaren on 27 September 2024 (Delhi High Court)
The plaintiff sought rectification of the defendant’s ‘SAGUNA’ mark, alleging malafide and dishonest adoption. They also alleged that such use is likely to cause confusion since their goods as well as trade channels are similar and the class of customers is also identical. On the other hand, the respondents contended that they were the prior users of the mark and it identifies their business, products and services. The court said that though the marks are not identical, they are very similar and there is a likelihood of confusion. The Court further held that the respondent failed to establish the acquired distinctiveness of their mark. The Court held that the respondent has not distinguished their mark from that of the plaintiff and thus there is an absolute ground for refusal of their mark under s. 9(1)(a).
The Hershey Company v. Ashok Kumar & Ors. on 30 September 2024 (Delhi High Court)
The plaintiff sought an injunction against the defendants, alleging that they misrepresented themselves as being authorized by the plaintiff and carried out fraudulent activities in the name of the plaintiff. They were issuing fake job offers/walk-in interview letters, unauthorizedly containing and bearing the plaintiff’s name and marks. They argued that this was bound to mislead and confuse people. The court accepted that the plaintiff is the registered proprietor of the impugned mark. Since the identity of all fraudulent registrants was not known to the plaintiff, the plaintiff feared that the fraudulent activities would continue even after the grant of interim injunction. The court granted ex-parte ad interim injunction, holding that the plaintiff had demonstrated a prima facie case.
Kent RO Systems Ltd. & Anr. v. Kaleem Sarwat & Ors. on 1 October 2024 (Delhi High Court)
The plaintiffs sought a permanent injunction to restrain infringement of their registered design by the defendant. They alleged that the defendant was involved in infringing the registered design licensed to the plaintiff no. 1 and the defendant’s use of the similar design leads to consumer confusion. The Court held that the defendant’s use of the impugned design was unauthorized and the infringing goods were being sold dishonestly with the intention to ride upon the goodwill and reputation of the plaintiff. Thus, on balance of convenience and finding a prima facie case, the court granted an interim injunction to the plaintiff.
The Appellant challenged the Single Judge’s finding of passing off and the interim injunction preventing them from using the mark “EVECARE.” They argued that their registered mark does not create confusion due to differences in the product’s nature, registration classes, packaging, and the Respondents’ use of their house mark “Himalaya” along with the word mark “EVECARE”. The Respondents claimed prior use of the mark since 1998, asserting that both products, though different, are related to female reproductive hygiene and target the same consumers. They also contended as both the products are ‘Hush Products,’ the likelihood of confusion is amplified as the customers are less likely to openly enquire about them. The Court agreed with the Single Judge, concluding that the similarity of the marks and the nature of the goods create a likelihood of confusion, supporting the finding of passing off.
Sh. Rummy Chhabra And Anr. v. Packson Impex Ltd. on 27 September, 2024 (Delhi District Court)
The plaintiff sought an injunction against the defendant’s use of the trademark “VELOMAN,” claiming it is deceptively similar to their trademarks “VELO” and its variants. They argued that both marks are phonetically, structurally, and visually similar, likely confusing consumers. The defendant contended that their company has been manufacturing bicycles and parts since 1997. They claimed “VELO” is generic, meaning bicycles, and thus not protectable. The Court, finding “VELOMAN” to be deceptively similar to the plaintiff’s marks, emphasized that while there may be some differences between the two names, an unwary purchaser of average intelligence and imperfect recollection could be deceived by their overall similarity. The Court granted a permanent injunction against the defendant’s use of the mark.
Star India Private Limited v. Crichd.Pk & Ors on 30 September, 2024 (Delhi High Court)
The plaintiff anticipated unauthorized dissemination of the tournament matches and sought a dynamic injunction to protect its broadcast reproduction rights for the ICC Women’s T20 World Cup 2024, to be held from October 3rd to 20th, 2024. The Court acknowledged that this poses a significant threat to the plaintiff’s revenue and emphasized the need for proactive legal measures. The Court ordered: (a) Rogue Websites to restrain from unauthorized streaming or disseminating any part of the tournament; (b) DNRs to lock and suspend the domains of rogue websites within 72 hours; (c) ISPs/TSPs to block the rogue websites immediately upon receiving the order; (d) The plaintiff to report any newly identified infringing websites during the tournament to DoT and MeitY for immediate blocking.
Lalit Kumar v. State of Rajasthan on 27 September, 2024 (Rajasthan High Court)
The petitioner sought quashing of FIR based on offences under sections 63/64 of the Copyright Act, 1957 and Sections 103/104 of the Trade Marks act, 1999. Even though the petitioner was found in possession of counterfeit and non-genuine products, he alleged that FIR should be quashed since the matter was already compromised between the parties. The genuineness of the compromise was not in dispute. So, the Court, invoking its inherent powers under section 482 of the CrPC, quashed the FIR to avoid undue hardship to the parties.
Manchu Vishnu Vardhan Babu Alias Vishnu v. Arebumdum & Ors. on 1 October, 2024 (Delhi High Court)
The plaintiff sought a permanent injunction restraining the defendants from infringing his copyright. The defendants extracted clips from movies or other cinematographic works containing performances of the plaintiff for creating and communicating videos, which brought ridicule to the plaintiff. The Court held that there was violation of the plaintiff’s personality/publicity rights as well as moral rights in his performances. Since he demonstrated a prima facie case for grant of injunction, the Court granted interim injunction based on balance of convenience.
Ratan Malkani v. State of Madhya Pradesh on 1 October, 2024 (Madhya Pradesh High Court)
The applicant was held liable under sections 51 and 63 of the Copyright Act and sections 103 and 104 of the Trade Marks Act. This application was filed by him for grant of bail. On the other hand, the State prayed for the rejection of the application. The Court, after going through the facts and circumstances of the case, allowed the application and granted bail to the applicant upon him furnishing personal bond.
Waterways Leisure Tourism Private Ltd v. Ashok Kumar and Ors. on 1 October, 2024 (Delhi High Court)
The plaintiff filed this application for impleading Meta Platforms INC as defendant no. 9 in the present suit. The plaintiff had already gotten an interim injunction against other defendants, and sought to take down the social media accounts of all the impugned websites being operated by the defendants. The Court allowed the application under Order 1 Rule 10 read with section 151 of the CPC and impleaded Meta Platforms INC as defendant no. 9 in the suit. It directed the plaintiff to file the requisite details of the URLs, so that appropriate orders could be passed for compliance by the impleaded defendant no. 9.
M. Rajaratnam v. M/S Raj Video Vision on 3 October, 2024 (Madras High Court)
The petitioners were partners in the first respondent, a partnership firm. A dispute arose between them wherein the copyright belonging to the partnership firm was being exploited by the second respondent, denying the firm royalties out of such exploitation. The firm sought to refer the matter to an arbitrator, but the second respondent had refused to arbitrate on the ground that the issue is related to copyright infringement, and hence was non-arbitrable. The Court held that the second respondent had accepted the partnership deed in its entirety and could not argue that he was not bound by the arbitration clause. Accordingly, the Court rejected the arguments of the second respondent and appointed a sole arbitrator to decide the dispute.
News Tamil 24×7 v. Ananda Vikatan Publishers (P) Ltd. on 25 September, 2024 (Madras High Court)
The first defendant sought rejection of plaint filed by the plaintiff which alleged use of infringing promotional material by the defendants on their channel. The plaintiff tried to amicably resolve the dispute which was not fruitful. So there was no intention to circumvent pre-institution mediation by using interim application. Accordingly, the Court held that the plaintiff did not contravene section 12A(1) of the Commercial Courts Act, 2015. The Court observed that a plaint is liable to be rejected on the ground that the suit is barred by law only if such conclusion can be drawn from the statements in the plaint. It held that on closely examining the plaint, no such conclusion could be drawn.
Gameskraft Technologies Private Ltd v. John Doe & Ors. on 1 October, 2024 (Delhi High Court)
The plaintiffs filed the suit seeking permanent injunction restraining trademark and copyright infringement. They alleged that the combination of words “Rummy” and “Culture” lends their website a high degree of distinctiveness, and any combination of the two words in a domain name or app name would be directly associated with them. They came to know of various websites operated by the defendants which were replicating their website, hosting infringing content and purporting to associate with them. The Court, on prima facie case, likelihood of irreparable damage and balance of convenience, granted ex-parte ad interim injunction to the plaintiff.
Piyush Saraff and Anr. v. Amaresh Mandal and Anr. on 1 October, 2024 (Calcutta High Court)
The plaintiffs filed the suit seeking ad interim injunction. They argued that the goodwill, reputation as well as the substantial presence of their “JJ” and “JJ ULTRA” brand has become distinctive to their products. They came to know about the products of the defendants having trademark “JJ NEXT” being available in the electrical market in Kolkata and that the defendants in wilful disregard of their rights were using the mark “JJ NEXT.” They further submitted that due to use of a similar mark by the defendant, their mark has been infringed and business is badly hampered. The defendants contended that adoption of the “JJ NEXT” stemmed directly from the surname of their client, vis-a-viz “ASMA ZARA”. The Court did not find any connection between the name of the proprietor of the defendant Amalesh Mandal and Asma Zara, and the mark “JJ NEXT”. Further, the products and target consumers were also similar for the parties, adding to the likelihood of confusion. Accordingly, the Court granted ad interim injunction to the plaintiffs, having made out a prima facie case.
Puma Se vs Amresh Yadav And Ors on 28 September, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction against the defendants for trademark infringement and passing off of the well-known ‘PUMA’ trademark and logo, claiming the defendants sold counterfeit products as genuine. A Local Commissioner’s report confirmed the presence of these counterfeit goods. The Court granted the injunction due to the lack of rebuttal and the strong reputation of the PUMA brand, reasoning that unchecked infringement misleads consumers into paying inflated prices for counterfeit products, believing them to be genuine PUMA products.
Corona Remedies Pvt Ltd vs Umac Pharmaceuticals on 28 September, 2024 (Delhi District Court)
The plaintiff, registered owner of the trademark ‘MAC-RD’, sought a permanent injunction against the defendants for trademark infringement and passing off for using a confusingly similar mark, ‘MAC-DSR’, for their medicinal products. The defendants were involved in the same trade as the plaintiff, specifically manufacturing and selling medicinal products. The plaintiff claimed that the similarity was phonetic, visual, and structural, posing a risk of public confusion and potential harm. The Court held that allowing the defendants to use the similar mark could have not only resulted in wrongful loss to the plaintiff and dilution of its trademark, but also cause grave prejudice and harm to public. Therefore, the plaintiff was granted an injunction.
Jai Prakash Singhal vs Tirupati Structurals Limited on 26 September, 2024 (Delhi High Court)
The Appellant challenged the order of injunction restraining them from using the trademark ―MM TIRUPATI or any other mark which is deceptively similar to the Plaintiff- Respondent’s mark ―TSL-TIRUPATI. Both parties produce stainless steel and PVC pipes and fittings. The Appellant claimed that the Respondent’s trademark registration included a disclaimer, which should limit the Respondent’s exclusive rights. The Court recognised that the presence of a disclaimer within a trademark registration does not automatically preclude the registrant from enforcing exclusive rights over a disclaimed element, especially in cases where such enforcement is necessary to prevent passing off. Ultimately, the Court upheld the injunction, concluding that the Appellant’s marks were indeed identical to the Respondent’s.
Pankaj Plastic Industries Private Ltd. vs Anita Anu on 1 October, 2024 (Calcutta High Court)
The plaintiff sought an ad interim injunction against the defendant’s registered mark “POLY PUNKAJ,” claiming it was deceptively similar to the plaintiff’s established trademarks “PANKAJ FLEX” and “PANKAJ.” The Court found that the defendant was selling identical goods—pipes and hose pipes—while altering their label to diminish “POLY” and emphasize “PUNKAJ,” thereby creating confusion with the plaintiff’s registered trademark. The Court found that the defendant’s mark and trade dress were identical to the plaintiff’s mark. As a result, the Court upheld the plaintiff’s request for an interim injunction, restraining the defendant from using “POLY PUNKAJ” or any similar marks until November 22, 2024.
Master Capital Services Limited & Anr vs John Doe & Ors on 1 October, 2024 (Delhi High Court)
The plaintiffs sought a permanent injunction against the defendants for trademark infringement, passing off, and misrepresentation involving the mark “Master Trust.” The plaintiffs, a reputable broking service provider since 1985 with trademark registration since 1992, alleged that unidentified defendants on WhatsApp impersonated them to solicit fraudulent investments. The Court recognized the potential for irreparable damage to the plaintiffs’ goodwill and the likelihood of confusion among consumers, and therefore, ordered the defendants to restrain from using the mark and mandated actions to block fraudulent accounts and investigate their activities.
Murali Lal Harish Chandra Jaiswal Pvt. ltd vs Karthikeyan Manishekar on 9 August, 2024 (Madras High Court)
The petitioner sought cancellation of trademark registration No. 3917470 for “HANS VENBA,” and the parties subsequently executed a settlement memorandum on August 7, 2024, outlining terms for rectification. The Court approved this settlement, specifically directing the cancellation of the registration in the name of Karthikeyan Manishekar and the removal of the trademark from the Register within four weeks. During a subsequent hearing, a typographical error in the initial order, which incorrectly referenced “Trade Mark No. 391747,” was identified; the Court instructed the Registry to correct it to “Trade Mark No. 3917470.”
Other IP Developments
- LML alleges trademark infringement of their “Freedom” mark by Bajaj.
- Delhi High Court allows settlement between Dubai based Jumeirah and a Noida based builder in “Burj” trademark infringement case.
- Bombay High Court restrains 5 parties in Kerala from using “Haji Ali” mark.
International IP Developments
- California signs law making it mandatory for digital store fronts to disclose that customers are licensing a digital media, instead of suggesting that they own it.
- Meta introduces “Movie Gen”, an AI model capable of generating highly realistic video and audio clips from user prompts.
- Germany imposes ban on OnePlus phones after a patent dispute with Interdigital.
- After resolution of copyright dispute with Society of European Stage Authors and Composers (SESAC), Youtube brings back songs by Adele, Bob Dylan, Kendrick Lamar, and others.