(Thanks to Aditi and Khushi for the case summaries)
Keep up with the ever changing world of IP with SpicyIP’s Weekly Review! A quick glance at last week – Madras HC accepts a US District Court’s Letter Rogatory to furnish confidential information, a look at Functional Fallacies in Thomson Reuters vs Ross Intelligence and many more. We also have the initiation of our attempt to bring IP conversations to wider audiences through multilingual writing! This and much 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
‘De-code Indian Intellectual Property Law’ – For who? While we have always tried to provide a platform for simplifying complex or technical legal jargon into language that isn’t exclusionary, there is always (much) further we can go. In continuation of this effort, we aim to encourage those who can write in any regional language, to also start contributing to the IP discourse in regional publications. Where we can, we would like to offer our help with feedback, guidance, writing, refining ideas, and/or anything else that we may, in our limited capacity, be able to help with! As a small first step in this direction, we are delighted to share this piece in Bengali by our Doctoral Fellow Malobika Sen in the Bengali daily, “Ekdin”.
Pfizer v. Softgel: The Errors of Comity
The Madras High Court accepted a Letter Rogatory from The US District Court in Delaware directing India-based Softgel Healthcare to furnish confidential information to the US Court. However, the Court seemingly overlooked the nature and specifics of the information sought. Praharsh Gour writes on this order, highlighting the above omission.
From Headnotes to Head-scratchers: The Functional Fallacies in Thomson Reuters v. Ross Intelligence
The recent US District Court opinion in Thomson Reuters (TR) v Ross Intelligence, which allowed TR’s motion of copyright infringement against Ross for its usage of TR’s headnotes, has caught the attention of genAI and copyright enthusiasts around the world. Interestingly, Judge Bibas has changed his position from his initial 2023 opinion in the same case. Akshat Agrawal and Sneha Jain argue that the Court has made a flawed originality analysis, misapplied infringement standard, and inadequately considered merger and fair use defences.
Delhi High Court was asked to decide whether Syngenta’s Tier II expert can access the information by the Tier I scientific expert, appointed by the Director of IIT Delhi on the directions of the court. Asserting the need for the independence of confidentiality club members, the DHC clarified the level of information accessible to members of different tiers within the club. Malobika Sen explains the multi-tiered confidentiality club here, the role played by members at each tier, and how this decision contributes to existing precedents on the eligibility of the members.
Other Posts
After ANI, Bollywood Music Labels Have a Face-off with OpenAI
Music labels in India seem to have joined the AI-Copyright party a.k.a. ANI-OpenAI litigation. Similar to ANI’s contention, music labels, such as T-Series, Saregama India, and Sony Music and the trade body Indian Music Industry (IMI), have claimed that their copyrighted sound recordings have been used to train OpenAI’s models without authorisation. Anjali Tripathi writes on this development and the key legal issues involved!
In an interesting order, the Delhi High Court vacated an injunction granted to DCM Shriram for its 303 and 404 trademark. The defendants showed suppression of material facts by producing a letter signed by the plaintiff’s authorised representative from six years before filing the suit! The defendant also claimed prior use, and that 303 and 404 are widely recognised trademarks for seed varieties. Aditi Agrawal writes on this development discussing the clean hands doctrine and ex-parte interim injunctions!
Comments Invited on “AI Governance and Guidelines Development” Report (February 27)
The office of CGPDTM has invited comments on the Draft Guidelines for Processing Patent Applications of Ayush Systems and Related Inventions for providing clarity on the filing and processing of patent applications of Ayush Systems and related inventions. The deadline to file the comments is February 28.
IndiaAI, an initiative of the MeitY has invited comments on a report titled ‘AI Governance and Guidelines Development’. The deadline to file the comments is February 27. Read the post for more.
Case Summaries
Manash Lifestyle Private Limited vs Shabina Kundial & Anr. on 14 February, 2025, (Delhi HC)
Manash Lifestyle Pvt. Ltd. filed a rectification petition under Section 57 of the Trade Marks Act, 1999, seeking the removal of the respondent’s registered trademark in Class 44, alleging deceptive similarity to its prior-registered “FACES” marks. The respondent failed to appear or file a reply. The Delhi HC in an ex-parte judgment found that the impugned mark incorporated the petitioner’s mark entirely, causing confusion and unfairly capitalizing on its goodwill. Holding the registration to be in violation of Sections 9, 11, and 18 of the Act, the court directed the trademark registry for the cancellation of the respondent’s mark.
Multani Pharmaceuticals Limited vs S.A. Herbal Bioactives Llp & Ors. on 14 February, 2025 (Delhi HC)
TThe plaintiff, a manufacturer of Ayurvedic and Unani medicines, filed a suit seeking a permanent injunction against the defendants for trademark and copyright infringement of its well-known ‘KUKA’ brand. The plaintiff alleged that the defendants were manufacturing and exporting counterfeit ‘KUKA’ cough syrup under the deceptive mark ‘KYKA’ in Moldova and Russia. The Delhi HC initially granted an ex-parte ad interim injunction in favor of the plaintiff, and the matter was later referred to mediation, resulting in a settlement. As per the settlement, the defendants paid ₹6,50,000/- to the plaintiff. The Court decreed the suit in terms of the settlement and allowed the plaintiff’s request to recognize ‘KUKA’ as a well-known trademark under the Trade Marks Act, 1999.
The case involved a trademark infringement suit filed by Tata Power Solar Systems Limited and its parent company against multiple defendants for unauthorized use of their registered trademarks, including “TATA” and “TATA POWER SOLAR,” in domain names and communications to deceive customers. The Delhi HC granted an ex-parte ad interim injunction restraining the defendants from using the plaintiffs’ marks. As the defendants failed to appear or file a written statement, the court deemed the allegations admitted. Finding a clear case of trademark infringement and passing off, the court ruled in favor of the plaintiffs and granted a permanent injunction emphasizing the importance of expeditious resolution in commercial disputes.
The Supreme Industries Limited vs Mr. Devaram on 14 February, 2025 (Delhi District Court)
The plaintiff, a leading manufacturer of plastic products under the trademark “SUPREME”, filed a suit for injunction and damages against the defendants for trademark infringement, passing off, and unfair trade competition. The defendants were found to have used a deceptively similar mark, “SUM-PRIME,” for PVC pipes and fittings, causing confusion among consumers and damaging the plaintiff’s goodwill. The court upheld the plaintiff’s trademark rights, granting a permanent injunction against the defendants and awarding partial costs of Rs.1,58,760. The court categorized the infringement as a “first-time knowing infringer” case, entitling the plaintiff to injunctive relief and partial monetary compensation.
Havells India Limited vs Cab-Rio Industries, & Ors. on 17 February, 2025 (Delhi HC)
The case involved a trademark infringement dispute between Havells India Limited and Cab-Rio Industries over the use of the mark ‘REO’ and ‘CAB-RIO’ for electrical cables and wires. Havells, which introduced ‘REO’ in 2012 and holds a registered trademark, alleged that the defendants’ mark ‘CAB-RIO’ is deceptively similar and intended to ride on its goodwill. The CCourt examined the principles of prior use, phonetic similarity, and deceptive resemblance, finding Havells to be the prior user based on documentary evidence. The defendants failed to justify their adoption of ‘RIO,’ and the court held that their mark was not bona fide. Consequently, the Court granted an interim injunction restraining the defendants from using the impugned mark.
This case involved an appeal by the Revenue against an order by the Commissioner of Income Tax (Appeals) for Assessment Year (A.Y.) 2019-20. The issue was whether payments made by the assessee to Deloitte Global Services Holding Limited (DGSHL) for Global Technology/Knowledge Management, Global Communication, and Global Brand services were “royalty” under Article 13(3) of the India-UK Double Taxation Avoidance Agreement (DTAA), and whether the CIT(A) erred in directing the Assessing Officer to grant a refund of taxes paid u/s 195(2). The Tribunal noted that in the assessee’s own case for A.Y. 2018-19 and 2019-20, it had already been held that such payments do not fall within the ambit of “royalty” under Article 13(3) of the India-UK DTAA. The payments were made for shared services and not for the use of intellectual property or information concerning commercial experience. The Tribunal distinguished these payments from royalty by emphasizing that DGSHL provides internal guidance and support services without transferring intellectual property rights. Further, the Tribunal relied on the Delhi HC’s judgment in EY Global Services Ltd. v. ACIT, which reversed the AAR’s decision and held that payments for shared services within a professional network do not constitute “royalty” under the India-UK DTAA. Consequently, the Revenue’s appeal was dismissed, and the assessee was not required to deduct TDS on these payments.
A division bench (DB) of Delhi HC stayed the interim injunction granted by the single judge bench (SB) on 10 February 2025, restraining Sammaan Finserv Ltd. from using the “SAMMAAN” mark in a trademark infringement suit filed by Svamaan Financial Services Pvt. Ltd. While the SB found the marks deceptively similar, the DB noted that immediate enforcement would prejudice the appellants, given its regulatory approvals such as RBI clearance and ROC registration. On 13 February 2025, the DB directed the status quo to be maintained until the next hearing, preventing immediate enforcement of the injunction. In its judgment on 18 February, 2025, the Court acknowledged the complexity of issues, including whether phonetic similarity alone suffices for infringement and whether distinct customer bases reduce confusion. The Court extended this stay until the appeals’ final disposal, allowing the appellants to continue using the “SAMMAAN” mark, subject to the following conditions: all their advertisements must display “Formerly known as Indiabulls” and a disclaimer stating “We have no connection with Svamaan Financial Services Pvt Ltd.” The appeal is set for final disposal on 21 April, 2025.
The present suits were filed by the plaintiffs, Roche and its affiliated companies, seeking a permanent injunction restraining the defendants, Hetero Drugs Ltd., and Cadila Healthcare Ltd. (Zydus) from launching, marketing and selling bio-similar versions of their cancer treatment drugs, Bevacizumab (marketed as AVASTIN) and Trastuzumab (marketed as HERCEPTIN, HERCLON, and BICELTIS). The plaintiffs contended that the approvals granted by the Drug Controller General of India (DCGI) to the defendants violated the Drugs Act, the Drugs Rules, and the Bio-similar Guidelines, as the defendants had not established bio-similarity through independent clinical trials. They sought disclosure of regulatory dossiers and other relevant data submitted by the defendants for obtaining approvals. The defendants argued that the plaintiffs were engaging in a fishing and roving inquiry into confidential business information. They contended that their drugs had undergone due regulatory process and that the plaintiffs had no right to challenge the approvals since the patents for the plaintiffs’ drugs had already expired. The Court held that the plaintiffs were entitled to seek discovery of documents that would have a material bearing on the issues in the suit. It directed the defendants to disclose regulatory dossiers filed with the DCGI, including clinical trial data, approvals, and related correspondence, in a sealed cover and constituted a Confidentiality Club, comprising advocates and an expert from the plaintiffs’ side and advocates from the defendants’ side to review the documents while maintaining confidentiality.
Dassault Systemes & Ors. vs Advanced Engineering Solutions & Anr. on 21 February, 2025 (Delhi HC)
The plaintiff alleged copyright infringement of its “Solidworks”, “Catia”, and “Simulia” computer programmes by the defendants. One defendant undertook that it would not infringe the plaintiff’s copyright over the computer programmes while other defendants remained absent from the proceedings. Based on the above, the Court initially granted an interim injunction to the plaintiff and through this judgement, the Court decreed the suit ex-parte in favor of the plaintiff. Additionally, the Court also granted damages worth Rs. 2,78,34,320 and costs worth Rs. 3,21,000 to the plaintiff.
Koninklijke Philips N.V Vs. Maj(Retd) Sukesh Behl & Anr on 20 February, 2025 (Delhi HC)
The plaintiff alleged infringement of its Standard Essential Patents (SEPs) on DVDs by the defendants. The defendants denied these allegations and argued that their DVD replication process differs from the one employed in the suit patent. They also argued that they outsource to third parties to complete the encoding process. They also filed a countersuit arguing that the plaintiff’s patent was wrongly granted. After the trial, the Court decreed the suit in favor of the plaintiff holding that the suit patent was valid and is an SEP. The Court also held that the defendant undertook indirect infringement by outsourcing the DVD replication process. The Court also found the defendant to be an unwilling licensee who failed to negotiate in good faith. Based on the above, the Court decreed the suit in favor of the plaintiff and held that the plaintiff is entitled to compensation at the standard royalty rate (USD 0.03 per DVD) with an interest of 12% per annum from the date of filing till the date of payment. The Court also held that the plaintiff is eligible for full litigation costs in light of the delaying tactics employed by the defendants.
Arpita Agro Products Pvt Ltd & Ors. vs Itc Limited on 21 February, 2025 (Delhi HC)
The present appeal by the appellant was filed challenging the interim injunction passed against it by a single judge bench (SB) for using the trademark ‘POWRNYM’ or similar marks to ‘NIMYLE’, ‘JOR-POWR’ and/or any of ‘NIM’ family of marks. The appellants argued that the defendants had failed to show how the mark ‘POWRNYM’ was similar to ‘NIMYLE’ or ‘JOR-POWER’ and that the SB had failed to give its reasoning with respect to the trinity test of passing off. The respondents had submitted that since the marks ‘NIMYLE’ and ‘JOR-POWR’ were assigned to the respondent for a consideration of Rs 100 crores, their use of the impugned mark is aimed at taking advantage of the goodwill of the respondents. The division bench (DB) dismissed the appeal holding that prima facie the appellants have only taken two prominent parts of the marks and combined them together so as to create a facade of distinction.
This appeal was filed against the respondent’s decision to refuse the appellants patent titled ‘VACCINE FOR LIVESTOCK PRODUCTION SYSTEMS’. The respondents had refused the application on the basis of insufficient disclosure made by the appellant, not fulfilling the requirements under Section 10(4) and 10(5) and ineligibility for patent protection under Section 3(c) of the Patents Act. The Court held that the appellants failed to meet the disclosure requirements under Section 10(4) and 10(5). Furthermore, the court clarified that since the recombinant Salmonella claimed in the patent application was a modified bacteria, it needs to be deposited in a recognised depository, and no exemption was allowed. In its conclusion, the Court held that the said invention was hit by Section 3(c) and upheld the rejection by the Controller.