Here is our recap of last week’s top IP developments including summaries of the posts on Madras HC’s setting aside another IPO order for being unreasoned, the use of name of the late singer M.S. Subbulakshmi on an award posthumously against the expressions in her will, and the Swiss Senate approval of FTA with 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
In Signal Pharmaceuticals vs Deputy Controller of Patents, the Madras High Court set aside the impugned order by the Indian Patent Office for being a non-speaking one. Analysing the Court’s decision, Bharathwaj discusses when an order is regarded as non-speaking and assesses the probable reasons for such orders.
Can someone’s wishes expressed in their Will overcome the precedents on descendability of publicity rights? Bharathwaj explores this question in light of the recent controversy surrounding the use of late singer M.S Subbulakshmi’s name as part of an award.
Other Posts
Discussing the Punjab and Haryana High Court order quashing the charges of copyright and trademark infringement on substantive and procedural grounds, SpicyIP intern Bharathwaj Ramakrishnan assesses the Court’s findings on copyright infringement and explains the procedural requirement under Section 115 of the Trademarks Act.
Swiss Senate approves FTA with India: What’s at stake for patents? – SpicyIP
On December 3, the Swiss Senate (Council of States) overwhelmingly approved an FTA, the Trade and Economic Partnership Agreement, between India and the European Free Trade Association (EFTA). With a unanimous 41 votes in favour and 3 abstentions in the Senate, the agreement will now await the approval of the National Council. Read Samridhi Chugh’s post on this development!
Case Summaries
Philip Morris Brands Sarl vs M/S Rahul Pan Shop & Ors. on 26 November, 2024 (Delhi High Court)
The suit was filed seeking relief of permanent injunction restraining the defendants from infringing the trademark and copyright of the plaintiff, passing off their goods as that of the plaintiff. The plaintiff has the registered trademark of ‘MARLBORO’. The plaintiff came across the counterfeit ‘MARLBORO ADVANCE COMPACT’ cigarette packs sold by the defendants. The counterfeit cigarette packs purchased by the plaintiff bore the same code which seemed to be incorrect because the genuine products of the plaintiff bear a unique code on each cigarette pack. The Defendants did not participate in the proceedings and therefore on the basis of the averments made in the Plaint, the Court passed a decree of permanent injunction in favour of the plaintiff.
New Balance Athletics Inc. vs Ashok Kumar & Ors. on 27 November, 2024 (Delhi High Court)
The Plaintiff (New Balance) sought permanent injunction restraining trademark infringement, passing off of trademark, acts of unfair competition and other reliefs against the Defendants. The Plaintiff alleged that the defendants on their website admit the products sold by them as not original and “high quality products which look similar to the originals”. The defendants allegedly sold counterfeit of plaintiff‟s products, as well as other well-known brands. The Court noted that the statements Website is sufficient admittance on its own by the defendants, and prima facie amounts to the acts of infringement and passing off of the plaintiff’s marks. The suit was therefore decreed in favour of the Plaintiff with cost imposed amounting to Rs. 14,51,670.
Gautam Bhatia vs Vinayak Enterprises on 25 November, 2024 (Delhi High Court)
In the main Plaintiff sought relief of permanent injunction restraining the defendant from infringing the plaintiff’s patent. A counterclaim was also filed on behalf of the defendant for revocation of the subject patent. In the current application before the HC, the Plaintiff sought to amend their claims in the patent application. The Defendant had alleged that the amendments requested were to cover up the lacuna in the original application. The Court in its order noted that the amendments in fact narrow down the scope of the claims. The Court also made a reference to the reply by the Controller of Patents which reiterated the same stance. The Court therefore allowed the amendments in the claims sought in the application.
Ganesh Grains Ltd. vs Dharmendra Kumar Gupta on 22 November, 2024 (Delhi High Court)
The Plaintiff sought cancellation/removal of the trademark “GANESH HARA MATAR” used by the Defendant. The Petitioner applied for its first trade mark application in the 1950s and since then the Petitioner has obtained over 85 trade mark registrations in its favour for the mark “GANESH” and the “GANESH” formative variants. The Defendant did not participate in the proceedings. The Defendant did not file any invoices or any other documents evidencing the user of the mark either. The Court held that the mark has been adopted by Defendant dishonestly to trade upon and to project itself to be associated with the Petitioner. The Court allowed the petition and ordered the removal of the trademark registration from the Register of TradeMarks.
Jay Switches India Pvt Ltd vs Sandhar Technologies Ltd & Ors. on 2 December, 2024 (Delhi High Court)
The suit was filed seeking relief of permanent injunction restraining the defendants from infringing the plaintiff’s registered patent titled as “Air Tight Fuel Cap”. Three pre-grant oppositions were filed out of which, two were filed by the defendants. All three oppositions were filed on the similar grounds i.e., lack of novelty, lack of inventive step and insufficient description. After dealing with the aforesaid oppositions and replies, the Deputy Controller of Patents and Designs dismissed the pre-grant oppositions and granted the Suit Patent. The Court held that the claims in the Suit Patent suffer from an element of ambiguity which is also reflected from the various amendments filed by the plaintiff. The Court said that it cannot conclusively determine the scope of the patent at the stage of consideration of application for an interim injunction. Therefore, the plaintiff has failed to make out a prima facie case for grant of interim injunction and the application was dismissed.
Lumax Industries Limited And Ors vs Hindustan Auto Industries on 6 December, 2024 (Delhi District Court)
The Plaintiff filed this suit for permanent injunction restraining infringement of trademark, passing off. The trademark LUMAX was coined and was registered in class 12 on 15.09.1969. The plaintiff alleged that the defendant launched a brand by the name ‘YUCOMAX’ which was done by adding the word ‘MAX’ at the end of its registered trademark ‘YUCO’ to create confusion and show association with the Plaintiffs. The Defendant submitted that the mark and device are entirely different and distinct phonetically. The Defendant also argued that ‘MAX’ forming part of the trademark of the plaintiff is descriptive and generic in nature. The Court held that the defendant has been in the business since 1995 whereas the plaintiffs are manufacturing such lights since 1969. And that the defendant would be well aware in 2019 that the word mark YUCOMAX adopted by him in 2022 was similar to the trademark LUMAX, TECHMAX and TECHNOMAX of the plaintiff and hence, adoption of that trademark by defendant in these circumstances can be said to be dishonest adoption. The Court decided the issue in favour of the Plaintiff permanently injuncting the Defendant and awarding a damage of Rs. 2 lakhs.
Other IP Developments
Bombay HC restrains Chrome21 India from infringing Hind Rectifiers’s mark ‘HIRECT’
Delhi HC upholds AstraZeneca’s Tagrisso Patent in summary judgment against Westcoast Pharmaceutical