Here is our recap of last week’s top IP developments including summaries of the posts on the DHC’s decision regarding consumer confusion in “Hush Products”, US antitrust case against numerous publishing houses, strategy to register trademarks in grayscale, and DHC’s decision on claim amendments. 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
UCLA Professor Takes on Academic Publishing Giants in Groundbreaking Antitrust Lawsuit
UCLA professor Lucina Udwin recently filed an explosive lawsuit at a US District Court, assailing a host of anti-competitive practices long-prevalent in academic publishing. What does this imply for the future of the Open Access Movement in light of the ongoing infringement disputes globally and in India? Samridhi Chugh, closely examines this question from the lens of this pivotal development.
Trademark for ‘Hush Products’: Is there Greater Likelihood of Consumer Confusion?
Recently a division bench of the Delhi HC assessed ‘likelihood of confusion’ in trademark disputes concerning intimate (labelled as “hush”) products. Bhuwan Sarine analyses the order in his post.
Revaluating the Sweeping Brushstrokes of Protection for Black-and-White Trademarks in India
Highlighting the perks of registering a mark in grayscale over colour, Samridhi Chugh examines the justification behind the overly broad protection given to grayscale trademarks and identifies the problems with it.
Another IPD Incoming: Himachal Pradesh HC Notifies IPR Division Rules
New addition to the IPD Club as Himachal Pradesh High Court notifies its IPD Rules, making it fourth HC after Delhi, Madras and Calcutta. Read Md Sabeeh Ahmad’s post on this development.
Other Posts
Recently, the Madras High Court delivered a noteworthy ruling in Kymab Limited v. Assistant Controller of Patents & Designs, holding that methods for producing antibodies through the genetic modification of non-human animals are indeed patentable. Tejaswini Kaushal analyzes the judgment and the broader trends of the courts in interpreting the scope of Section 3(i) of the Patent Act 1970.
Patenting at the Frontiers, Algorithms and Section 3(k)
Taking the discussion on Section 3(k) and algorithms forward, Bharathwaj Ramakrishnan writes on the Court’s new test for inventions incorporating algorithms and explores what exactly is the distinction between Computer Programmes and Algorithms.
Making Tall Claims: Amendments u/s. 59
Permitting the appellant to amend their broad claims, the DHC recently allowed an appeal against the Controller’s refusal order. Discussing the Court’s observations on the guiding principles of claim amendments, Yogesh Byadwal connects the decision with the broader debate emanating from the DHC on the issue of amendments to patent application.
Case Summaries
Hindustan Unilever Ltd vs Pramod Gupta And Ors on 9 October, 2024 (Delhi District Court)
The Plaintiff alleged that the Defendant was engaged in selling counterfeit products under the Lakme trademark and had consequently infringed the registered trademark, trade dress, and copyright of Lakme and Fair and Lovely. The Court, considering that the seized products indicate clear infringement and the Defendant cannot prove a case and continues to be absent, granted summary judgment for damages and also directed Defendants to pay the costs to the Plaintiff.
Interdigital Technology Corporation vs Guangdong Oppo Mobile on 14 October, 2024 (Delhi High Court)
The present application concerned the plaintiff’s request for getting additional documents on the record. They had filed voluminous additional documents running into many pages which included the extensive filings of the expert witness. The Court allowed the additional documents and held that the documents are necessary and that the plaintiffs have demonstrated “reasonable cause” to get these documents on the record.
Mohammad Anas vs State Of U.P. on 15 October, 2024 (Allahabad High Court)
The Applicant, who is in jail for being accused under multiple sections of the IPC, Copyright Act, and Trade Marks Act, sought a bail. The prosecution alleged forgery by the applicant for using the name “M/S New Triveni Almirah,” similar to the informant’s “Triveni Almirah”. The applicant contended that his business is registered in the name and style of “M/S New Triveni Almirah”, and any Trade Marks violation would warrant civil remedies, not criminal charges under Sections 420, 467, 468, 471 IPC. The Court held that the matter appeared to be primarily civil in nature and granted bail with conditions, including no tampering with evidence or intimidating witnesses, and attending all trial dates.
Diamond Modular Pvt. Ltd vs Vikash Kumar on 15 October, 2024 (Delhi District Court)
The plaintiff sought an injunction for trademark infringement, claiming the defendants’ “DIAMOND GOLD” mark was deceptively similar to its “DIAMOND” mark. They claimed the Court had territorial jurisdiction since the defendants promoted their products via Facebook, WhatsApp, and YouTube, and had agreed, through WhatsApp chats, to deliver products within the Court’s jurisdiction. The Court observed that in trademark cases, the cause of action arises in every place where the mark is used. However, it held that mere consent to deliver goods does not establish jurisdiction without actual delivery or a completed sale and that the defendants’ websites were not interactive as they only displayed product catalogues. The Court denied the injunction request since the plaintiff failed to substantiate its territorial claims or allegations.
Hanif vs State Of U.P. And Another on 16 October, 2024 (Allahabad High Court)
The applicant sought anticipatory bail in a case registered under Sections 420, 486 IPC, and Section 11(3) of the Trade Marks Act. After some arguments, the applicant’s counsel withdrew the request, seeking instead to file a regular bail application. The Court granted liberty to the applicant to apply for bail within two weeks, and directed the trial Court to decide on the bail application expeditiously in accordance with the Supreme Court’s ruling in Satender Kumar Antil vs. CBI. Meanwhile, the non-bailable warrant against the applicant will be suspended for two weeks or until he surrenders. The petition was then disposed of.
Bentley Systems Inc & Anr. vs Pushparaj Kandaswamy & Anr. on 15 October, 2024 (Delhi High Court)
An appeal was filed against the impugned order by the District Judge rejecting the joint settlement application of the parties filed in their copyright dispute. The Court set aside the impugned order holding that the impugned order rejected the application on unsubstantiated grounds, and took note of the fact that the parties entered into the settlement agreement through their authorised representatives without any coercion.
Other IP Developments
- India ranks among top the six countries in global patent filings for technologies pertaining to 6G.
- Bombay High Court clarifies that Section 134(2) of the Trademark Act will not bar a plaintiff from seeking leave of the Court under Clause XIV of the Letters Patent.
- Novartis denies allegations of shortage of Thalassemia drug Desferal.
- Delhi High Court awards damages of INR 10. Lakhs to Pradhan Mantri Bhartiya Janaushadhi Pariyojana (PMBJP) in a trademark dispute with a Madhya Pradesh based entity.
- Delhi High Court reinstated the injunction on Zydus to sell breast cancer drug Sigrima, a biosimilar of Roche’s Pertuzumab (Perjeta)
- Supreme Court refuses to hear plea challenging release of film “Jigra” over allegations of trademark infringement.
International IP Development
- New York Times sends cease and desist notice to Perplexity over unauthorised content use.
- GSK sues Moderna for infringing its COVID-19 vaccine patents.
- Hoth Therapeutics receives patent in the US for its Alzheimer’s treatment HT-ALZ.
- Meta partners with Blumhouse for testing its AI movie generation model.
- US Judge rules that trade embargo with Cuba bars Cubaexport from suing Bacardi over infringement of ‘Havana Club’ trademark.
- David and Elizabeth Emanuel, designers of Princess Diana’s iconic wedding dress have settled their dispute concerning the sale of design drawings.