Here is our recap of last week’s top IP developments including summary of the posts on Delhi High Court’s orders in the Pertuzumab patent dispute, order concerning personality rights of the Telugu movie star Vishnu Manchu, and Madras High Court’s decision on burden of proof in patent revocation cases. 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
Injunction or No Injunction: DHC Goes Back on its Rejection of Injunction in the Pertuzumab Dispute
On 16 October 2024 a Division Bench of the DHC, consisting of Justices Yashwant Varma and Ravinder Dudeja, stayed the Single Bench’s Judgement vacating the previously granted interim injunction. This post by Tejaswani Kaushal dives into these updates in light of their implications for the ongoing saga of the Pertuzumab dispute.
The DHC recently granted a broad interim injunction to the Telugu film actor Vishnu Manchu against violation of his personality rights by Youtubers and John Does. Inadvertently, in doing so, the Court has arguably offered a relief against “being annoyed” to celebrities, something which went extinct after the SC Shreya Singhal judgement. Read Praharsh Gour and Yukta Chordia’s take on the case.
Other Posts
Recently, the MHC clarified that the burden of proof in patent revocation cases lies on the petitioner making claims against the grant. Discussing this order, Bhuwan Sarine compares how well it fares in comparison with previous decisions on the issue.
Case Summaries
Gurnam Singh, Trading As M/S G.C. vs Deepak Arora, Trading As Ms Heena on 21 October, 2024 (Delhi High Court)
The petitioner sought cancellation of the trademark “MAX HEAVEN” registered in the name of respondent, claiming it was deceptively similar to its own “BLUE HEAVEN” trademark. The petitioner argued prior use of “BLUE HEAVEN” since 1972 for cosmetics and related goods. The Court found the petitioner’s mark to be the prior mark, as it had been in continuous use since 1972, predating the respondent’s use of their mark since 1990. The Court found the respondent’s mark deceptively similar to the petitioner’s, which could mislead consumers. The Court ordered the cancellation of “MAX HEAVEN” from the Trade Marks Register, directing the Registrar to carry out the necessary rectifications.
Anil Kumar, Proprietor M/S Singla Food … vs Deepak Kumar @ Deepak Manocha on 25 October, 2024 (Delhi District Court)
The plaintiff sought permanent injunction restraining the defendants from infringing on its trademark and passing off goods in South Delhi markets. The defendants contested the Court’s territorial jurisdiction, arguing that neither party operated in Delhi and that no cause of action arose there. The Court found that the plaintiff failed to provide concrete evidence of sales or business activities by the defendants in South Delhi, relying solely on unsupported statements. The Court held that mere allegations were insufficient to establish territorial jurisdiction without any evidence on record. The Court decided in favour of the defendants, ordering the plaint to be returned to the plaintiff for filing in an appropriate court.
Dabur India Limited vs Bhagwati Udyog on 7 October, 2024 (Delhi District Court)
The Plaintiff sought permanent injunction restraining the defendant from infringing and passing off its registered trademark “GULABARI” by selling rose water under the deceptively similar mark “AAYUSH GULABARI.” Dabur argued that the defendant’s product name and packaging closely resembled its own, potentially misleading consumers. The court found the defendant’s mark and packaging deceptively similar to the plaintiff’s, however, the court dismissed Dabur’s claim for damages due to a lack of supporting evidence. The court granted a permanent injunction against the defendant.
New Balance Athletics, Inc. vs Pulkit Khubchandani on 21 October, 2024 (Delhi High Court)
The plaintiff sought a permanent injunction to prevent the defendant from infringing its trademarks “N” and “550” by selling footwear with deceptively similar marks. The plaintiff argued that the defendant’s products and branding closely resembled its own, intended to mislead consumers and capitalize on New Balance’s established reputation. The defendant submitted an affidavit stating that he had ceased selling footwear under the plaintiff’s trademarks and undertook not to adopt or register any similar mark. The court granted a permanent injunction against the defendant, finding his adoption of the marks dishonest. Additionally, the court awarded the plaintiff with costs and damages, ordering the destruction of infringing products.
M/S RSPL Limited vs M/S Sunil Store on 29 October, 2024 (Delhi District Court)
The plaintiff sought permanent injunction restraining the Defendants against the usage of the registered trademark/label GHARI/GHADI (word) along with Device of GHARI/WATCH/CLOCK which was adopted and used by the Plaintiff for washing soap since 1975, for detergent cake in 1988, and for detergent powder in the year 1990. The Court found that the trademark of the Plaintiff is a well known trademark. And therefore ruled in favour of the Plaintiff passing a decree of permanent injunction.
Koninklijke Philips N.V vs Sohail Kanungo on 26 October, 2024 (Delhi District Court)
The plaintiff sought permanent injunction restraining the Defendants from infringing their copyright and trademark and also passing off their goods as that of the Plaintiffs. The Defendant was alleged to have copied both in name and in design a well known trimmer. The Defendant was also alleged to have identically copied and sold several features of the Plaintiff’s product, shapes, label, trade dress, design, packaging and other descriptive features including copyright. The Court held that the goods sold by the Defendant were not genuine goods as manufactured by the Plaintiff but were instead counterfeit goods. The Court therefore granted a permanent injunction in favour of the Plaintiff restraining the Defendant from using the term “Phillips”.
Pravesh Narula vs Raj Kumar Jain Trading on 29 October, 2024 (Delhi High Court)
An application to amend the plaint, to include submissions regarding recent trademark registration of the plaintiff and the prayer for a permanent injunction, was filed by the plaintiff. The defendant opposed it citing that issues have been framed by the Court and that it has filed a rectification petition against the plaintiff. The Court held that there is no impediment in allowing the present application and directed the amended plaint to be taken on the record.
An appeal was filed against the order of the First Appellate Authority rejecting the request to furnish a copy of the YPC Dangey Commission Report on IPRS and other information related to the Copyright Society. The CIC held that the information sought was personal in nature and its disclosure was objected to by the relevant third party (IPRS), thus rejecting the appeal.
Other IP Developments
- Delhi High Court grants a dynamic injunction to Zee Entertainment. Restrains 60 websites from streaming its contents.
- T-Series issues a copyright strike to Singham Again’s title track.
- IPRS bags the fourth position in the CISAC Global Collections Report 2024’ s list of top revenue generating societies.
- Delhi High Court orders auctioning of “Fortis” Trademark in relation to the INR 3500 crore arbitral award in the Daiichi Sankyo- Ranbaxy dispute.