Here is our recap of last week’s top IP developments including summary of the posts on Delhi High Court’s order in Dabur v. Alpino, WIPO’s report on diversification and economic development, and the dispute between Samsung and its trade union over the use of “Samsung” in the Union’s name. 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
Recently, the DHC passed an order prima facie finding that Marico’s “Saffola oats” TM was “generically disparaged” by Alpino’s advertisements. Lokesh Vyas analyses the Court’s over-broad interim injunction order explaining how Alpino’s ads were merely hyperbolic and were not disparaging Marico’s marks.
Thou Shalt not Register Your Trade Union with a Name in the Likeness of My Trademark
Reportedly, Samsung India is opposing the use of ‘Samsung’ in an application to register the trade union of it’s workers. Discussing this controversy, Bharathwaj Ramakrishnan examines previous instances where trade unions have locked horns with trademark laws and assesses whether the Trademarks Act extends a protection to TM proprietors against such a use.
Other Posts
In May 2024, WIPO published a report titled “Making Innovation Policy Work for Development” on the need for economies to diversify for better utilization of knowledge and eventually economic prosperity. SpicyIP Intern Deepali Vashist discusses the key aspects of this report and its observation on India.
Planning to attend the “Horn OK Please” Festival at JLN Stadium, New Delhi today? Here is a quick SpicyIP tidbit on the recent copyright dispute concerning the event. BHC recently restrained the venue owner SAI from using PPL’s sound recordings for “Horn OK Please”- a music/ food festival organized by So Delhi. Deepali Vashist and Praharsh write on this order, explaining how the Court left the question about the organizer unaddressed.
Case Summaries
M/S. vs International Films on 2 July, 2024 (Madras High Court)
The plaintiff sought a permanent injunction restraining the defendant from infringing its copyright in respect of the Cinematography film titled “IMAIKKAA NODIGAL” (English dubbed language/version) and from exploiting the same through YouTube, Internet or any other digital media/medium. The plaintiff argued exclusive dubbing rights over the English-dubbed version as granted by the Producer of the said film, and discovered that the defendant had uploaded it without authorization on its YouTube channel. The defendant did not contest the averments in the plaint or proof affidavit. Based on the evidence, the Court decreed the civil suit in favour of the plaintiff.
Ucon Pt Structural System Private vs / on 30 October, 2024 (Madras High Court)
The applicants sought interim injunction restraining third respondent from using the name and logo of “UTRACON” till the disposal of the arbitration proceeding between the parties and further, restrain the respondents from communicating with the clients/employees of the applicant company. Applicants had entered into Sale of Shares (SOS) Agreement with first and second respondent to sell their shares to second applicant. The SOS Agreement included a licensing clause allowing the applicants to use the “UTRACON” trademark whose rights were held by the respondents. The Court noted the expiration of the license and the respondents’ registered trademark rights. Further, given the delay in raising an alleged breach of the SOS, the Court refused to grant any interim orders.
Bibin John vs Lifestyle International Private Ltd. on 14 October, 2024 (Madras High Court)
The appellants challenged an interim injunction restraining them from passing off the trademark “MELANGE”. The Court held that the lower Court had failed to consider the balance of convenience and irreparable injury caused to the respondent before granting interim relief. It also highlighted that the appellant’s showrooms were outside Chennai , precluding the Court’s jurisdiction in view of Section 134(2) of the Trade Marks Act, 1999. The Court vacated the interim injunction.
Samsudeen A vs The Registrar Of Trade Marks on 7 November, 2024 (Madras High Court)
The question that arises for consideration in this appeal is whether it would suffice for the purpose of complying with the requirements of Rule 18(2) of the Trademarks Rules, 2017, if the first respondent had despatched the email notice to the e-mail address given by the appellant in his trademark application. The appellant contended that he never received the opposition notice of the second respondent and the time to file the counter-statement only begins from the receipt of the notice. The Court through a purposive interpretation of Rule 18(2) held that the appellant had not received the notice and that the first respondent failed to provide proper acknowledgment of receipt. The appellant was permitted to file a counter-statement within three weeks.
Ask Automotive Limited vs Ask Enterprises on 7 November 2024 (Delhi District Court)
The plaintiff sought injunction and damages from the defendant for the alleged infringement and use of their trademark, “ASK”. It was alleged that the defendant’s use of the mark on automotive products, such as, air filters was deceiving consumers and that the defendant was capitalizing on plaintiff’s goodwill. A local Commissioner, appointed by the Court, seized products from the defendant’s premises, which had the mark, “ASK”. The Court was satisfied with this proof and granted permanent injunction, preventing the defendant from using the “ASK” mark. Additionally, the Court awarded the plaintiff INR 5,00,000 in damages.
The Plaintiff alleged that the defendant infringed and illegally streamed their copyrighted sounds and music. Also, it was claimed that they infringed the Plaintiff’s trademarks, including “Sunday Suspense,” “Mirchi,” and “Radio Mirchi.” The Court found substantial evidence to support these claims and acknowledging non-compliance with the plaintiff’s cease and desist notices by the defendant, the Court gave an ex-parte order for injunctive relief and ruled in favour of the defendant.
Super Cassettes Industries Private Ltd. vs K.Tv Varanasi on 11 November, 2024 (Delhi District Court)
The plaintiff holding label “T-SERIES” contended that the defendant was broadcasting/communicating to the public the sound recordings, the underlying works and audio-visual songs as well as other works of the plaintiff through its cable network channels like “K. TV News” without obtaining any licence or permission from the plaintiff, amounting to infringement of the copyright of the plaintiff. The defendant failed to appear or contest the present proceedings. The suit proceeded ex-parte and the plaintiff proved infringement through the unrebutted testimony of PW1. The court in light of inadequate evidence, however, held that the plaintiff is entitled to only notional damages and a decree of permanent injunction was granted in favour of the plaintiff.
Genentech vs Controller Of Patents And Designs on 28 March, 2024 (Madras High Court)
The appellants sought for the order by the respondent Controller to be set aside and further, their patent application for its medicinal compound titled “Inhibitors of IAP” to be allowed to proceed to grant. The Court held that the appellant had made a Markush claim, and the claim based on oxazolyl moiety needs to be understood in the context as it is one that falls within the same compound with same therapeutic effects. It held that the respondent is not required to make any prediction as to whether a person skilled in the field will ever select a particular moiety, but is only required to examine if the claims are patentable. It allowed the appeal and remanded the matter back to the Controller.
Beerco Ltd vs The Registrar Of Trademarks on 5 November, 2024 (Madras High Court)
The appellant challenged the order by the respondent refusing to register the trademark “BeerCo” under class 32. The appellant has categorically contended that they have adopted an inherently distinctive mark with bonafide and honest intentions. The respondent under the impugned order has failed to consider the same, through a non speaking order erroneously applied Section 9(1)(b) of the Trade Marks Act, 1999. It was argued that when the same materials which includes the registrations obtained by the appellant for its trademark BeerCo under class 35 were produced before the respondent, it should have taken note of the same and should have permitted the appellant to publish the trademark in the trademark’s journal for the purpose of receiving objections. Instead, the respondent has at the threshold itself refused to register the appellant’s trademark. Hence, the Court allowed the appeal and quashed the impugned order.
The plaintiff sought an interim injunction restraining the defendant from using the trademark/name “ALDER BIOCHEM” which infringed upon their registered trademark “BIOCHEM”. The plaintiffs contended that the defendant’s mark was structurally, phonetically, and visually similar to theirs, potentially leading to consumer confusion due to the overlap in the goods category – pharmaceuticals. The Court found a prima facie case for infringement, recognizing “BIOCHEM” as the dominant part of the plaintiff’s mark, and that the defendant’s mark was likely to confuse consumers. As a result, the Court granted the interim injunction in favour of the plaintiff.
The appellant challenged an order of the Trade Marks Registry dated 22.06.2018, declaring the appellant’s opposition to the 2nd respondent’s trademark application as abandoned due to delay in filing evidence. The appellant argued that it dispatched evidence on 07.10.2016, one day before the extended deadline, but due to holidays, the evidence reached the Registry on 13.10.2016. The Court held that the Trade Marks Registry was taking a rigid approach, functioning akin to a “pre-programmed robotic than a human being managing the affairs of human beings”. It set aside the order, remanding the matter for reconsideration of the appellant’s opposition.
Modi-Mundipharma Pvt. Ltd. & Anr. vs Win Health Pharma on 13 November 2024 (Delhi High Court)
The following case involved an application under Section 124 of the Trade Marks Act, 1999, for the invalidation of certain trade marks registered by the defendant. The plaintiff had registered trade marks such as, “NITROCONTIN” and other marks containing the word “CONTIN”. It was contended that they were being used since 1982 and were well-known in the market while attaining considerable goodwill. The plaintiff alleged that the defendant was selling the same product, in a similar (pink and white) trade dress, under the same mark (CONTIN). It was alleged that this may cause confusion and health risk in public. The Court ruled in favour of the plaintiff and proceeded to suspend the proceedings for 3 months, in line with Section 124 of the Trade Marks Act, 1999.
Vineethkumar vs State Of Kerala on 7 November 2024 (Kerala High Court)
This case involved a criminal revision petition involving Section 63, 68A and 52A of the Copyright Act. The appellant was convicted under Section 63 and 68A for selling pirated CDs of various films. It was alleged that the prosecution did not prove conscious possession of these pirated CDs or the lack of required details on the CDs as per Section 52A. The Court found prima facie evidence in favour of the appellant and found evidence of procedural lapses by the prosecution. Subsequently, the Court acquitted the appellant of all charges and directed the refund of any fine amount paid by the appellant.
This case was filed by Hugo Boss which claimed copyright and trade mark infringement and sought permanent injunction and damages. It claimed that the defendants used their registered trade marks such as “HUGO BOSS” and “BOSS” on counterfeit clothing and sold it in Delhi’s Gaffar Market. It highlighted the prevalence of this practice. The evidence collected by a local commission’s inspection was enough for the Court to rule in favour of Hugo Boss. Since, there was no reply from the defendants, the proceedings happened ex-parte.
Other IP Developments
- Bombay High Court temporarily restrains “Jhampa” from infringing “Campa”‘s trademarks.
- MP High Court restrains reuse of embossed beer bottles by other brands.
- Dhanush and Nayanthara lock horns over use of behind the scenes footage in latter’s Netflix documentary.