Here is our recap of last week’s top IP developments including summary of the posts on the lack of participation by academics in court proceedings, Patent Controller’s order on patent of addition, and Delhi High Court’s decision on latching and passing off. 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
Whither Indian IP Academics’ Engagement with the Judiciary?: Some Thoughts for Discussion – Part I
Why is the involvement of Indian IP academics in judicial process so rare? In this two-part post, Lokesh Vyas examines the legal framework governing academic participation in the judicial process, tracing its roots to Soviet-inspired codes.
Whither Indian IP Academics’ Engagement with the Judiciary?: Some Thoughts for Discussion – Part II
Continuing the discussion on the participation of IP academics in court proceedings India, in Part II, Lokesh Vyas shares two hypotheses for this problem of limited participation and raises critical questions that call for deeper empirical and theoretical investigation.
Section 54, “Patents of Addition” is an extremely important provision that has received little jurisprudential analysis. Tejaswini Kaushal analyses two interesting orders by Asst. Controller Mr. Kundan Kumar, that delves into the history of Patents of Addition as adopted by India and the distinction in this adoption by the Ayyangar Committee compared to the Swan Committee.
Does Latching on amount to Passing off?- Still Searching for Answers
The DHC recently ordered Flipkart to disable the ‘latching on’ feature on the plaintiff’s listing, citing instances of passing off. Explaining the concept, Yogesh Byadwal argues that latching on can be permitted as long as it enables others to become resellers of genuine products. However, he cautions that a line must be drawn to ensure resellers do not exploit the goodwill of the original seller through latching on.
Other Posts
Discussing the US decision in Hachette Book Group v. Internet Archive, Tanishka Goswami explains the implication of the decision on fair use and access to information.
New Roster Out: Welcome Calcutta HC Intellectual Property Rights Division
Calcutta High Court notifies roster of its newly formed IPD! Check out Md Sabeeh Ahmad’s post for more on this.
Case Summaries
The Pololauren Company L.P vs Ms G.B. Shoe on 23 September, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction against defendants for infringement and passing off. The plaintiff claimed to have used the trademark “POLO” since 1967. The defendants were using the trademarks “POLO,” “POLO BY RALPH LAUREN,” and a device of a polo player for their footwear products, which closely resembled the plaintiff’s marks. The Local Commissioner appointed by the Court reported that seven pairs of POLO slippers were recovered from the defendant’s location. The Court observed that the report of a Local Commissioner can be treated as evidence in the suit where it is not challenged by any party and granted a permanent injunction to the plaintiff.
Levi Strauss And Co vs Dinesh Sharma on 26 September, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction against the defendant for infringing on its trademarks, including “LEVI’S,” the “Two Horse Logo,” and the “Arcuate Stitching Design.” They claimed that the defendant’s use of these marks is visually and structurally identical, causing confusion among consumers regarding the origin of the goods. The Court observed that in cases of trademark infringement, if the defendant’s mark is found to be identical to the plaintiff’s registered trademark, it constitutes infringement, requiring no further examination. Consequently, the Court granted a permanent injunction, ordered the defendant to deliver up all seized infringing goods for destruction, and awarded the plaintiff exemplary damages.
Levi Strauss And Company vs Kulwant Singh on 25 September, 2024 (Delhi District Court)
The plaintiff sought a permanent injunction against the defendant for the unauthorized stocking and sale of goods bearing counterfeit “Levi’s marks.” The Plaintiff undertook a market survey, which revealed that the defendant was secretly selling inferior quality apparel, under deceptively similar trademarks to those of the plaintiff. They also claimed that the defendant’s labels lacked the standardized security, size, and price label which is peculiar to the plaintiff’s products. The defendant did not claim ownership of the “Levi’s” trademark and only denied selling such goods. Consequently, their possession of numerous infringing products suggested they were selling counterfeit, prompting the Court to grant a permanent injunction in Plaintiff’s favour.
Mrs Arti Gupta & Anr. vs Puran Rana & Anr. on 13 September, 2024 (Delhi High Court)
The Plaintiff sought the cancellation of the trademark “KONVIO NEER” registered by the Respondent. The Plaintiff claimed prior use of the mark since 2018. The Respondent, engaged in a similar business, applied for the trademark in 2023. The Court noted that the Respondent’s trademark is a complete reproduction of the Plaintiff’s mark, adopting the same color, font, and style, which could confuse consumers. Applying the ‘ordinary observer test,’ the Court ruled that the impugned trademark is liable for cancellation and must be removed from the Register of Trade Marks.
Radico Khaitan Ltd vs M/S Raina Beverages & Ors on 26 September, 2024 (Delhi High Court)
The Plaintiff sought a permanent injunction against the defendant to protect its trademark “Magic Moments Remix,” and its associated trade dress. Despite a prior decree against the defendants for trademark infringement, they continued to produce and export products that closely resembled the plaintiff’s brand. A detailed comparison showed striking similarities: both products featured identical colour combinations like a black cap and ribbon, similar logo styles, dancing figures on both bottles and the placement of flavour indicators, demonstrating a clear case of copyright infringement and passing off. The court found the defendants to be habitual infringers and granted the permanent injunction.
Ashfaq Saifi v. State of UP and Anr. on 25 September, 2024 (Allahabad High Court)
The applicant filed an application for quashing the proceedings under s. 63 of the Copyright Act, 1957. The prosecution argued that the applicant had deceitfully inscribed the hologram of Usha company on his sewing machines to give an impression of original machines manufactured by Usha. On the other hand, the applicant argued that he had been falsely implicated in the case, and the proceedings were an abuse of the process of the Court. The Court held that on the basis of FIR and statements recorded, ingredients of s. 63 of the Copyright Act are satisfied. Further, it was also noted that the proceedings were not maliciously instituted with an ulterior motive. Since no illegality, perversity or any other substantial error could be pointed out, the Court refused to exercise its powers and interfere in the matter.
M K Auto Clutch Co. and Anr. v. Swapnil Jain and Ors. on 13 September, 2024 (Delhi District Court)
The plaintiffs filed the suit seeking permanent injunction restraining the defendants from using their registered mark MK. It was alleged that the defendants had adopted and used their marks with dishonest intention to trade upon their goodwill, reputation and proprietary rights. Further, the goods sold by the defendants were of low quality, causing losses to the plaintiffs. The Court, based on evidence such as the local commissioner report, photographs of counterfeit products decided in favour of the plaintiffs. The Court passed a decree of permanent injunction against the defendants, as well as directed them to pay damages to the plaintiffs.
R.A.A. Arsalan Enterprise Private v. Swiggy Limited and Ors. on 5 October, 2024 (Calcutta High Court)
The plaintiff filed the suit seeking an interim injunction restraining the defendants from using the trademark ‘Arsalan.’ It was alleged that the defendants’ mark ‘New Arsalan Biryani House’ were using a deceptively similar trademark with an insignificant prefix and suffix. The Court held that the plaintiff was the owner of the trademark, and the defendants were using it without his authorization. It concluded that trade names of the defendants were visually identical, phonetically, deceptively and confusingly similar to the plaintiff’s registered trademark. Accordingly, the Court granted an ad interim injunction in favour of the plaintiff, having made out a prima facie case.
Luker Ecommerce Pvt. Ltd. v. Union of India on 30 September, 2024 (Telangana High Court)
The petitioner company filed this writ petition seeking information related to the case filed against them by the respondents. The respondents had previously filed a case against the petitioner on the ground that the name of respondent no. 3 was similar to the name of the petitioner and was likely to cause confusion. The petitioner argued that certain other applications were instituted by the respondents against them, and copies of all applications/orders and information had not been furnished to them. The Court sided with the plaintiff company, and directed the respondents to furnish all the documents sought by the petitioner.
Vinoy Kumar Duggar @ Vinay Kumar Dugar & Ors., on 5 October, 2024 (Calcutta High Court)
The petitioner challenged application of section 63 in the matter and argued that respondent no. 2 does not have a registered trademark . The Court held that despite incorrect references in the charge sheet, the Magistrate retained jurisdiction to frame appropriate charges based on the evidence of deceptively similar articles found in the petitioners’ possession. The Court urged the Magistrate to expedite the proceedings due to the long pendency of the case.
The plaintiffs sought a permanent injunction against the defendant for infringing their trademark “VOLVO” and “FMX” by selling leaf springs under these names. The Court held in favor of the plaintiffs, granting a permanent injunction prohibiting the defendant from using the trademarks and requiring them to use a descriptive text indicating that their products are “adapted to be used in VOLVO” vehicles, along with a disclaimer of any trade connection with the plaintiffs. The defendant was also ordered to pay INR 5,00,000 in damages.
The appellant sought the restoration of Patent No. 408932 after it was ceased due to non-payment of renewal fees, claiming he did not receive the renewal notification due to it being sent to an incorrect email address. The Court held that the appellant should not suffer the extreme consequence of patent cessation for a communication error by the Assistant Controller, thus allowing the appeal and directing the restoration of the patent upon payment of the renewal fee.
Embio Limited v. Malladi Drugs & Pharmaceuticals Ltd. on 4 October 2024 (Madras High Court)
The petitioner sought revocation of a patent held by the defendant for a method of synthesizing optically pure chiral β-amino alcohols, citing lack of novelty and inventive step. The petitioner argued that the patented process did not offer significant advancements over prior art and that the steps were obvious. The Court, however, found that the patented process showed substantial technical improvement, including higher optical purity and yield, and upheld its novelty and inventiveness. Finding no merit in the petitioner’s arguments, the Court dismissed the petition, upholding the validity of the patent.
The plaintiff alleged copyright infringement by the defendant. The Defendant neither replied to the plaintiff’s notice nor responded to the court summons. Thus, the Court proceeded to decide the case ex parte and ruled that since the Defendant had not replied to the Plaintiff’s legal notice, it amounted to an acceptance of the claims in the notice. The Court granted injunction and awarded Rs. 5,00,000 as damages and also gave an order to the Defendant to hand over the infringing material to be destroyed.
State vs Sushil Khurana on 3 October, 2024 (Delhi District Court)
The State filed a criminal case under U/s 63 Copyright Act and 103/104 of Trademark Act on the basis that the accused was selling counterfeit spare parts of motor vehicle brands, specifically TATA, Mahindra and Maruti. The accused contended that the evidence was planted and he was not guilty. The Court noted that all the evidence against the accused is based on a raid from which the allegedly counterfeit items were recovered, and held that due to inconsistencies in the prosecution’s case, they had failed to prove charges sufficiently.
ITC Limited vs Arpita Agro Products Pvt Ltd & Ors. on 8 October, 2024 (Delhi High Court)
An application to vacate an interim injunction was filed by the defendants. The plaintiff contended that the defendant was infringing its trademark by marketing a floor cleaner under the mark ‘POWRNYM’. They claimed that the defendants had assigned the rights to the marks; NIMYLE and the rest of the NIM family of marks including JOR POWR, NIMEASY, NIMGLO etc to the plaintiffs for a sum of 100 Crores. The Court affirmed the ad interim injunction on the basis that the marks are similar and rejected the application to vacate the injunction.
News Tamil 24 X 7 vs Ananda Vikatan Publishers (P) Ltd on 25 September, 2024 (Madras High Court)
The defendant sought rejection of the plaint for non-compliance with Section 12A of the Commercial Courts Act, arguing that it lacked averments of need for urgent interim relief. The Plaintiff contended that despite attempts to resolve the matter the defendant’s unwillingness to settle amicably necessitated the filing of the suit after collating extensive documentation. The Court observed that the plaint, documents and facts should be examined holistically to determine the need for interim relief. Upon reviewing the timeline and circumstances, the Court found no indication that the plaintiff circumvented pre-institution mediation under Section 12A and therefore, dismissed the application to reject the plaint.
F- Hoffmann -La Roche Ag & Anr. vs Zydus Lifesciences Limited, on 9 October, 2024 (Delhi High Court)
The plaintiff alleged breach of assurance by the defendant by not informing the Court about the eventual regulatory approval granted to its biosimilar version of Pertuzumab during the pendency of the proceedings. Conversely, the defendant claimed that they have no duty to inform the Court of regulatory approvals, as no explicit order mandated this, and that public interest in life-saving drugs outweighed the plaintiffs’ claims. They also argued that the plaintiff has not done claim mapping to show alleged infringement. The Court held that mere existence of a patent alone is insufficient grounds for an injunction and emphasised that without ‘claim mapping’ no injunction could be granted.