Here is our recap of last week’s top IP developments including summary of the posts on DHC’s orders in a trade secrets matter, and in the Louis Vuitton- Haute24 copyright dispute, HP HC’s order emphasising the importance of pre-institution mediation, and missing public records at the DCGI’s office. 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
A Baffling Judgment from the Delhi High Court in a Trade Secrets Case
On DHC’s recent interim injunction in a lawsuit concerning trade secrets, Prashant Reddy briefly touches upon the essential factors required to protect trade secrets in India. He then explains how the Court’s order goes overboard by not only disregarding these factors but also granting vaguely worded and overly broad reliefs to the plaintiff.
DHC Passed Over-broad Order in Louis Vuitton Advertisement Material Copyright Dispute
More than what one wished for? Recently, Louis Vuitton managed to get a favorable injunction order restraining Haute24 from selling LV’s “new goods”, after LV took them to Court for copyright infringement. Was this a trademark remedy in a copyright claim? Praharsh and Tejas Misra look into this order.
Does Litigation Fatigue affect democratic processes? Capturing his multi-year journey trying to trace important ‘missing’ public documents, Prashant Reddy highlights the lack of transparency and shoddy record keeping by CDSCO and shares his exhausting experience with the resultant litigation before the DHC in this hard hitting post.
Journey Through “Mays” on SpicyIP (2005 – Present)
Concluding the “Sifting through the pages of SpicyIP” series, Lokesh takes a look at our posts from May(s). Read on as he takes a quick look at some of the hard hitting and incisive posts on IP and CSIR, TKDL, IP’s interaction with trade and customs, comparative advertising, and patent linkage.
Other Posts
SLP Rejected in Novartis v. Natco: Are Interim Orders not Precedents?
On the importance attributed to interim injunctions in Indian IP regime, Tejaswini Kaushal explains the unique place of the interim reliefs and how they are often considered as precedents, in context of the recent Novartis- Natco SC order. She then argues why the Court was right in setting aside the both the interim orders, underlining the essential difference between interim orders and final judgements.
Recently, the HP HC underlined the importance of pre-institution mediation under the CCA by refusing to hear an infringement suit due to plaintiff’s non compliance with the above requirement to explore the alternate remedy first. Samridhi Chugh discusses the order and its wider significance.
We are pleased to inform our readers that the CIPR at NUALS, Kochi is inviting submissions for the IXth CIPR National Essay Writing Competition. The deadline for the submission of essays is September 30, 2024. For further details, please read their announcement.
Case Summaries
M S Nandhini Deluxe vs Ms Hotel Mysore Nandhini on 2 September, 2024 (Bangalore District Court)
The Court dismissed the trademark infringement suit filed by the plaintiff, ruling that the defendant’s use of ‘MYSORE NANDHINI’ did not infringe upon the plaintiff’s ‘NANDHINI’ or ‘NANDHINI DELUXE’ trademark. Noting the differences in the font size, style of writing the names etc., the Court rejected the plaintiff argument of deceptive similarity. It was also emphasized that the plaintiff’s restaurant does not operate in Mysore (the defendant’s place of restaurant), further reducing the likelihood of confusion.
Bristol-Myers Squibb Holdings Ireland vs Km Swarnalatha & Ors on 27 August, 2024 (Delhi High Court)
The plaintiff is the patentee of Patent No. IN 203937 that claims and covers dasatinib and its pharmaceutically acceptable salts, solvates, isomers and prodrugs. The plaintiff submitted that Defendants No. 1 to 4 were planning to launch the generic version of dasatinib, while Defendants No. 7 had released dasatinib products under the brand name DASA SPL at the distributor level in the Indian market. The Court noted that the defendant nos. 1 to 3, 5 and 6, did not launch any dasatinib containing product till the expiry of the suit patent and imposed a cost of ₹5,00,000 on the non-appearing Defendant No. 7, for infringing the patent with their “DASA SPL” product.
The Indian Hotels Company Limited vs Manoj on 30 August, 2024 (Delhi High Court)
In a summary judgment, the Court granted damages to the tune of 10 lakhs and 5 lakhs for the trademark and copyright infringement of the iconic and well-known Taj Hotel marks. The Court held, that the use of the various contents and photographs available on the plaintiff’s website and indulging in criminal activities by impersonating as plaintiff and defrauding a jeweller of hundred gold coins worth Rs. 51,21,735/- , has caused incalculable harm and injury to the plaintiff’s business, goodwill and reputation.
Rieter Ag And Ors vs Ariser Engineering Pvt. Ltd. And Anr on 28 August, 2024 (Delhi High Court)
The Court granted an ex parte, ad interim injunction against the defendants, prohibiting them from using marks similar to plaintiffs, including ‘EliTe,’ ‘EliTop,’ and ‘RIETER’ trademarks. It also restrained them from manufacturing, selling, and distributing products that infringed upon the plaintiff’s patent and registered designs. The defendants were also prohibited from using proprietary images of the plaintiffs’ products in any promotional material, and were ordered the removal of such infringing content from the defendants’ website and social media handles.
Headout Inc vs Ashok Kumar / John Doe And Ors on 28 August, 2024 (Delhi High Court)
The plaintiff filed the present suit against the defendant’s unauthorized use of its “Headout” trademark and for duping innocent customers. It was submitted that the defendant copied and created an identical website as that of the plaintiff. This caused many users to be confused and enter into financial transactions with the defendants thus resulting in heavy financial losses to the users. The Court passed an interim injunction restraining the defendants from using the plaintiff’s marks and blocking the impugned websites.
Star India Private Limited & Anr vs Livecric.Pk & Ors on 28 August, 2024 (Delhi High Court)
The High Court made absolute a previous interim injunction order granted on December 05, 2023, restraining the defendants from broadcasting “India Tour of South Africa” cricket series. The Court noted that the defendant did not file a written statement and that the series concluded on January 7, 2024, concluding that the rights of the plaintiffs were protected by the interim injunction order.
Elder Prroject Limited vs Elder Orgichem Private Limited on 28 August, 2024 (Delhi High Court)
The Delhi High Court granted an ex parte ad interim injunction to the plaintiff, restraining the defendants from using “Elder” mark of the plaintiff. The Court prima facie found that the defendant was using an identical mark as that of the plaintiff and considering that the parties operate in the same line of business there is a likelihood of confusion among the consumers.
The appellant filed an appeal against the impugned order rejecting the appellant’s writ petition against Respondent no. 1’s decision to register Respondent no. 3’s allegedly similar label for beer. The Respondent argued that the dispute pertains to trademarks and should be filed before the competent civil court. The appellant argued that as per MP Beer and Wine Rules, Respondent no. 1 is duty bound to ensure that no similar labels are registered. The Court set aside the impugned order and allowed the appeal, holding that the competing marks are similar and may cause confusion.
M.K. Srinivasan And Another v. Chemsol India And Another on 3 September, 2024 (Delhi High Court)
The plaintiffs, active since 1989 in the power sector, accused the defendants of unauthorisedly using their trademarks “TAURUS” and “VOLTCHECK TAURUS,” to sell high-voltage detectors. Despite agreeing to stop in May 2024, the defendants continued infringing, as shown by an August 2024 tax invoice. This ongoing use risked confusion among consumers and damaged the plaintiffs’ reputation and vested rights. Noting that the plaintiffs had established a prima facie case in their favour and would suffer irreparable loss if the defendants were not restrained, the Court granted an ex-parte ad-interim injunction, directing the defendants not to use the impugned trademarks in any form until the next hearing.
The plaintiff filed a case claiming trademark infringement and passing off, citing unauthorised use of the “MGF” mark by the defendant. It claimed long use of the mark since 1958 in motor vehicle financing and dealerships, owing to which it had gained significant goodwill. The defendant applied for the same trademark in 2022 and 2023 for similar services under the mark “MGF INDIA,” which the plaintiff opposed arguing that the defendant’s use was deceptive and took undue benefit of its established reputation based on the impugned mark. After a prima facie evaluation of the matter, the Court granted an ex-parte ad-interim injunction, restraining the defendant from using the impugned mark or any similar marks and their domain names, owing to the likelihood of potential confusion and irreparable loss to the plaintiff.
Amba Shakti Steels Ltd. vs Sequence Ferro Private Limited on 3 September, 2024 (Delhi High Court)
The Delhi High Court granted an interim injunction in favor of the Appellant, finding that the respondent’s use of the trademark ‘AMMAJI’ was deceptively similar to the appellant’s registered trademarks, including ‘AMBA.’ It found that the Commercial Court had erred in focusing on the individual elements of the two marks rather than the overall commercial impression, which was bound to be the same, owing to the similarity between the two marks in terms of phonetic sound, structure, and the literal meaning of the words.