Here is our recap of last week’s top IP developments including summaries of the posts on unreasoned patent grants and rejections, the One Nation One Subscription initiative by the government, and the DHC order on missing reasons for ex-parte injunctions. 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
In Part – 1 of this post, Swaraj, Praharsh and Md Sabeeh Ahmad emphasise the need for reasoned grant orders and mechanisms to keep a check on the quality of such orders.
In Part – 2, Praharsh Gour and Md Sabeeh Ahmad write on the development discussing the role of the Controller and other allied issues stemming from the uncertainty of a timeline.
Is One Nation One Subscription A Panacea for the Gap in Widespread Access to Knowledge?
Is One Nation One Subscription the panacea for the gap in widespread access to knowledge in India? Praharsh Gour and Shravya Pandre explore this question, reflecting on some of the lessons learned from the past.
Other Posts
In C.K. Chandran vs Manju the petitioner was seeking a permanent prohibitory injunction against the respondent from entering into two shops under the trademark “Calluna”. The respondent filed a counterclaim arguing that she was the owner of the “Calluna” trademark and therefore, sought an injunction against her husband from using it. Read Kaustubh Chakrabarti’s post discussing whether the family court is empowered to decide on prayers seeking injunction against the use of a spouse’s trademark?
SpicyIP Tidbit: Reasons be Recorded While Granting Ex-parte Injunctions, held the Delhi High Court
Missing reasons for granting ex-parte injunction the DHC emphasizes the need for reasoned orders in ex-parte injunctions, while setting aside order. Lokesh Vyas writes on this order by DHC in Kailash Kumar Jain v. Kundan Electro, highlighting the Court’s finding on unreasoned ex-parte interim injunctions.
NALSAR’s Indian Journal of Intellectual Property Law (IJIPL) is inviting submissions for its 15th Volume. The last date for submission of entries is March 31, 2025.
Comments Invited to Revise the ABS Guidelines, 2014 (December 17)
The National Biodiversity Authority has invited comments to revise the ABS Guidelines, 2014. Comments can be shared by December 17, 2024.
Case Summaries
Swatch Ag vs Labham Agarwaal on 9 December, 2024 (Delhi District Court)
The plaintiffs were engaged in the business of manufacturing and sale of finished watches, jewellery, watch movements and components and had built up worldwide reputation and goodwill. The plaintiffs trademark include “SWATCH”, “RADO”, “TISSOT”, “OMEGA” and “LONGINES”. The defendants were also engaged in a business of similar nature. It was alleged that the defendants were indulging in counterfeiting the products of the plaintiffs by creating replicas that made it difficult to distinguish the fake and inferior products of the defendants, from the high-quality products of the plaintiffs. However, the plaintiffs failed to prove their claims as they could not produce the original goods/products bearing registered trade-marks before the Court. The Court was unable to make any comparison between the original goods of the plaintiff and the impugned goods. Therefore, the Court refused to grant the injunction prayed for by the plaintiffs and ruled in favour of the defendants
RSPL Ltd. vs Nikunj Traders on 7 December, 2024 (Delhi District Court)
The plaintiff was engaged in the business of manufacturing and marketing of washing soap, detergent powder, soap, etc. and had filed a suit for permanent injunction and damages against the defendants alleging trademark infringement. It was stated the word GHARI/GHADI along with the image of a device of watch as well as the punchline “PAHLE ISTEMAL KAREN FIR VISWASH KAREN” and the artistic features involved in the said trade mark/label are both individually as well as collectively essential, material and distinguishing features of the said trademark GHARI/GHADI label. The plaintiff could successfully prove through social media posts that the depiction by the defendant caused confusion in the minds of the people. Hence, a decree of permanent injunction was awarded in favour of plaintiff and against defendant.
Shemford Schools P. Ltd vs Shemford Little Stars Barnala on 6 December, 2024 (Delhi District Court)
The plaintiff had coined and adopted the trademark “Shemford”. The defendant was in a franchise agreement with the plaintiff to run and operate a school under the name and style of “Shemford” on payment of royalty fee. The defendants defaulted in the payment of royalty and the franchise agreement was terminated in 2017. The plaintiffs believed that the defendants have stopped the unauthorized use of plaintiff’s trademark. However, recently it came to the notice of the plaintiffs that defendants continued to run the school under the name of “Shemford” which was very similar to plaintiff’s trademark. The court passed an ex parte order against the defendant as the plaintiffs successfully proved that they were the owner of the registered trademark and the defendants had infringed that trademark.
Srinath R vs M/S Reliance Broadcast Network Ltd on 4 December, 2024 (Bangalore District Court)
The plaintiff owned the copyright for the book titled “Madhurya Sarvabhouma Dr. P.B. Srinivas-Nadayogiya Sunaadayaana”. He alleged that the defendants had reproduced the entire excerpts from the said book while broadcasting a programme called ‘Retro Talkies’, without his knowledge and consent and thereby infringed the copyright held by the plaintiff. The defendants contended that the programme contained information about the legendary playback singer Dr. P.B.Srinivas which was available in public domain and it is not any person’s created copyright or created literature to be infringed. The plaintiff successfully proved his copyright ownership. He also produced the entire transcript of the programme that clearly showed that the programme aired by the defendants verbatim contained what had been written in the said book. Thus, it was held that the plaintiff would be entitled for the relief of permanent injunction and damages as prayed.
Boehringer Ingelheim Vetmedica GMBH vs The Controller of Patents on 2 December, 2024 (Delhi High Court)
This appeal was directed against an impugned order dated 29th March, 2022 passed by the Assistant Controller of Patents & Designs whereby the appellant’s patent application titled “Containers for Compositions Comprising Meloxicam” was dismissed. The Controller had rejected the patent application on the grounds of lack of novelty under Section 2(1)(j) as well as lack of inventive steps under Section 2(1)(ja) of the Patents Act. The impugned order, in a blanket manner, dismissed the arguments made by the appellant as “not fully persuasive” without giving any justification for the same. The Court held that the Controller must provide adequate analysis and justification for its decision. Since the Court found the impugned order to be lacking in these aspects, it set aside the order and the matter was remanded back to the Patent Office for fresh consideration.
Crossfit, Llc vs Mohan Lal Sirvi on 6 December, 2024 (Delhi High Court)
The suit was filed seeking relief of permanent injunction restraining the defendant from infringing the trademark of the plaintiff. The plaintiff became aware that the defendant had applied for registration of the mark ‘CROSS FIT’ and the same was advertised in the trademarks journal. The plaintiff sent a letter demanding the defendant to withdraw the aforesaid trademark application. The plaintiff filed its Opposition to the said application for the mark after receiving no response. The defendant did not file any response to the Opposition. Subsequently, the Registrar of Trade Marks passed an order rendering the trademark application by the defendant as ‘Abandoned’. The plaintiff alleges that despite filing the aforesaid trademark application on a ‘proposed to be used’ basis, the defendant had already started using the impugned mark from the date of filing the trademark application. The defendant had admitted in the written statement that he had already ceased using the mark ‘CROSS FIT’ and does not intend to use the same in the future. Pertinently, the defendant did not file a reply to the present application for summary judgment, despite being granted multiple opportunities. On 2nd December, 2022, this Court granted an ex parte ad interim injunction in favour of the plaintiff restraining the defendant from using in the course of trade. Passing a summary judgment, the Court awarded a cumulative sum of Rs.5,00,000/- towards damages and costs for the Plaintiff.
Waterotor Energy Technologies Inc vs Union Of India & Anr. on 9 December, 2024 (Delhi High Court)
The present petition was filed for setting aside the deemed abandonment notice issued by respondent no. 2 in respect of the patent application of the petitioner. The basic premise of the petitioner is that the petitioner is based in Canada and had engaged the First Patent Agent in Canada for filing a patent application in India. The First Patent Agent appointed another Patent Agent in India, to file and prosecute the patent application in India. On account of certain miscommunications, the petitioner missed the deadline, and the reply to the First Examination Report (“FER”) issued by the respondent no. 2, was not filed on time. The Court, considering that the deadline was missed by the petitioner on account of non- receipt of the FER issued by the respondent, set aside the abandonment notice. The Court also emphasised on the enormous responsibility that patent agents discharge to ensure that valuable innovations are properly protected as per the procedures prescribed in law..