Here is our recap of last week’s top IP developments including summary of the post on the analysis of Cigma Events Private Limited v. Deepak Gupta & Ors and enforcing criminal remedies against IP infringement in 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
Do trade secrets/confidential information need to have economic or commercial value? Can a Claim for Breach of Confidence and Breach of Contract be made together? Bharathwaj Ramakrishnan in this post explores these issues and the Court’s decision in Cigma Events v. Deepak Gupta.
Enforcing Criminal Remedies Against IP Infringement in India: A Long Road to Justice?
In a recent order, a Mumbai Magistrate Court acquitted an accused in a copyright infringement case after 37 years! The significant delay in this case – almost 4 decades – raises several questions on the justifiability of criminal prosecution for copyright infringers combined with the burden of an overburdened judiciary. Read this post by Aditi Agrawal discussing these issues!
Case Summaries
Gilead Sciences Inc vs Union Of India on 19 December, 2024 (Madras High Court)
The writ petition pertains to a patent application filed by the petitioner, which was contested by the 4th respondent through a post-grant opposition. The petitioner challenged the hearing notice and recommendations from the Opposition Board, constituted by the Patent Office, which were allegedly issued without giving the petitioner an opportunity to present evidence, and in light of this, the petitioner challenged the validity of these actions. The Court quashed the impugned hearing notice and the opposition Board’s recommendations and issued directions for a fresh adjudication of the opposition application, permitting both parties to submit evidence within three weeks.
Nirmala Agarwal Prop of Karmyogi vs B.C Hasaram And Sons on 13 January, 2025 (Delhi District Court)
The plaintiff, a firm selling Ayurvedic medicines, sought a permanent injunction restraining the defendants from infringing their copyright and trademark and passing off of trade dress. The plaintiff used the registered trademark “Nayan Jyoti” for their most popular product. The defendants were using the label “Amrit Nayan Jyoti” with the same colour scheme, get up etc. The Court, relying on the Local Commissioner’s report, and previous instances of infringement by the defendants, concluded that the defendant was a habitual infringer and harbored mala fide intentions behind using the name “Amrit Nayan Jyoti”. The District Court ruled in favour of the plaintiffs, awarding them damages of Rs.48,35,610/- and instructed the defendant to destroy all infringing products.
Paragon Polymer Products Private … vs Sumar Chand Nahar on 7 January, 2025 (Madras High Court)
In an appeal against the Trade Mark Registry’s order, the Appellant, a footwear company using the mark “Paragon” since 1975, opposed the registration of the same word by the respondent for electric motor starters under Class 9. The Court held that the appellant cannot prevent the first respondent from registering its mark in Class 9 due to the latter’s honest and concurrent use since 1977 and prior registration in Class 7 in 1986. The Court clarified that the appellant’s mark was declared well-known in 2017, and the well known status of a trademark is prospective and cannot retrospectively affect prior users. The Court however allowed the appeal and remanded the matter back to the trademark registry with the direction to impose necessary conditions for co-existence of both marks within their classes.
K.Mangayarkarasi vs N.J.Sundaresan … 1St on 9 January, 2025 (Madras High Court)
The petitioners filed this suit seeking permanent injunction to restrain the respondent from infringing their trademark “Sri Angannan Biriyani Hotel”/ “Abh Sri Angannan Biriyani Hotel”. The respondent invoked the arbitration clause present in the Deed of Assignment of Trade Marks leading to the Commercial Court referring the matter to arbitration. The High Court upheld this decision, stating that the arbitration clause is valid and enforceable. The allegations of fraud made by the petitioners were deemed insufficient to oust arbitration jurisdictions. Relying on precedents, the Court concluded that disputes regarding contractual agreements, being in personam, are arbitrable.
Krbl Ltd vs Tricon Polyfabs Pvts Lts. And Ors on 10 January, 2025 (Delhi District Court)
The Delhi District Court upheld the trademark rights of KRBL Ltd., a rice miller company, in a dispute over trademark infringement and passing off regarding their registered trademarks “Noor Jahan” and “Nur Jahan”. The defendants were unable to establish prior use and legitimate registration. The Court rejected the generic term defense put forth by the defendants as the Plaintiff’s trademarks have acquired distinctiveness through continuous use, citing section 32 of the Trademarks Act which protects the registration in cases of distinctiveness. The Court upheld KRBL’s exclusive rights and granted a permanent injunction against the defendants.
Abacus Montessori School vs Abacus International Montessori on 8 January, 2025 (Madras High Court)
This case revolved around a trademark dispute between two Montessori schools both using the term “ABACUS” in their names. The petitioner, a Montessori School operating since 1987, claims that its prior use of the trademark “ABACUS Montessori School” gives it exclusive rights to the name and the respondent’s use of a similar name, “ABACUS International Montessori School” constitutes infringement. The Court ruled in favour of the petitioner and held that the respondent’s use of the trademark constituted an infringement and passing off. The Court noted that despite the addition of the word “International”, the mark was identical and likely to cause confusion and the respondent’s recent attempts to modify its name showed a clear intent to capitalise on the petitioner’s well-established reputation.
The Delhi High Court dismissed the plaintiff’s claim of trademark infringement and ruled in favour of the defendant, Mahindra. The plaintiff had alleged that the defendant’s use of the mark “eZEO” was deceptively similar to its registered trademark “EZIO”. While discussing the possibility of a settlement, Mahindra conceded to omit the letter ‘e’ in the beginning and add the house mark ‘MAHINDRA’. However, the plaintiffs rejected this proposition. Subsequently, the Court assessed the likelihood of confusion between the two marks based on various factors such as the visual, phonetic and other overall similarities. The Court concluded that the marks were adequately distinct so as to avoid confusion among consumers and the plaintiffs had failed to establish that the defendant’s mark would cause harm to its trademark’s distinctiveness.
M/S.Haldor Topsoe A/S vs Controller Of Patents & Designs on 2 January, 2025 (Madras High Court)
The petitioner challenged the rejection of their patent application by the respondent, citing violations of natural justice and non-application of mind. The impugned order, which referred to Section 21 of the Patents Act, was contended as an improper refusal under Section 15, as the petitioner had not received a second examination report and had not been given a chance to respond. The Court noted that the hearing notice has been treated as a second examination report by the respondent and the petitioner was not afforded sufficient opportunity to raise all objections. The Court also noted that the impugned order could not have been passed under Section 21 of the Patents Act, which is an abandonment order since the petitioner has already raised all objections to the first examination report. The Court quashing the impugned order held it to be unsustainable due to violation of principles of natural justice and on the ground of non- application of mind.
The Respondent No. 2, Boehringer Ingelheim Pharma, sought dismissal of the revocation petition filed by the petitioner against the respondent’s patent on LINAGLIPTIN. The Respondent no. 2 had in turn filed an infringement suit at the Himachal HC. Upon the expiry of the patent on August 18, 2023, the Respondent no. 2 filed two applications for dismissal of the revocation petition. First, arguing that the subject patent had expired and therefore nothing remains in the revocation petition. Second, arguing that the petitioner had filed a written statement in the infringement suit seeking invalidity of the subject patent under section 107 of the Patents Act in the Himachal Suit. The Court held the petition to be maintainable with the view that the scope and effect of a revocation petition filed under Section 64 of the Patents Act and the defence of invalidity taken under Section 107 of the Patents Act in an infringement suit is entirely different.
Other IP Developments
- The Delhi HC issued notice to Dabur India Limited on a plea filed by Tata Group owned Capital Foods for using using Capital’s registered trademark ‘Schezwan Chutney’
- The Delhi HC has ruled in favour of KRBL Limited, in a trademark infringement case against “Bharat Gate” brand selling basmati rice.