SpicyIP Weekly Review (February 05- February 11)

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After an eventful week, here is our recap of its top IP developments. Last week we published 9 posts on topics such as our comments on the proposed Trademarks (1st Amendment) Rules, the Madras High Court’s decision with respect to patentability of business methods, and Union Minister of State for Commerce’s response on ability of the current IPR regime to cater concerns arising out of AI generated work. Don’t forget to check them out on the blog too! This Weekly Review is co-authored with SpicyIP Intern Kevin Preji. Kevin is a second-year law student at NLSIU Bangalore. His passion lies in understanding the intersection of economics and public health with intellectual property rights.

Highlights of the Week

SpicyIP Tidbit: Union Minister of State for Commerce and Industry clarifies Current IPR Regime Sufficient for AI Works Protection

Responding to a starred question in Rajya Sabha today, Union Minister Som Prakash stated that the Indian IP Regime is sufficient to address issues concerning AI-generated works. Tejaswini brings us a quick update, along with some questions of her own.

A Relook at Business Methods in light of Madras High Court’s Decision in Priya Randolph v. Deputy Controller 

MHC’s decision in Priya Randolph v. Deputy Controller will have major implications on the patentability of business methods, in the future. Read Yogesh’s critique of the judgement in light of DHC’s OpenTV decision and the CRI 2017 Guidelines. 

Comments on the Proposed Trademarks (1st Amendment) Rules, 2024 

The recently proposed Trademark Rules amendments were open for comments in a period ending today. Introduced to incorporate the Jan Vishwas Act amendments within the Trade Marks Act, the proposed Rules prescribe an adjudication mechanism to hear complaints alleging false representation of a mark as a registered trademark. While the intent to have a separate mechanism to address these complaints is laudable, the proposed Rules are replete with ambiguities and possible errors. Read the detailed comments authored by Pranav, Praharsh, Swaraj, and Reva on these Rules.

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A SARAL Analysis of the Proposed Trade Marks (1st Amendment) Rules, 2024 

Just Keep it Simple! The proposed TM (Amendment) Rules are full of ambiguities and should have been more SARAL (simple), suggest Pragya Singh and Lakshita Handa. Read the guest post assessing the proposed rules from the principles of Simplicity, Accessibility, Rationality and Actionability of Laws.

Orange Book & Inaccurate Patents: US Federal Trade Commission in Action 

Tightening the noose around the inaccurate listing of patents in the Orange Book, the US FTC challenges more than 100 patents listed in the Orange Book. Read more in this post by Pranav and Swaraj to understand how this system could be getting exploited by pharmaceutical companies and why this is a big move by the FTC, furthering access to important medicines in the US.

Other Posts

A Case of ‘Smart Copying’: ‘Peace Maker’ Restrained from Imitating ‘Officer’s Choice’ 

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Do you enjoy your whiskey? Would you mix up these two labels: Officers Choice and Peace Maker? Well, it appears the courts think most consumers would. Read Tejaswini’s post on the recent DHC order concerning these two liquor brands.

Wedding Bells or Warning Bells? PPL Refuses to Give an NOC to Play its Sound Recordings at Sangeet, Cocktail Party 

Wedding Bells or Warning Bells? PPL refuses to provide NOC to play sound recordings at Sangeet, cocktail party. Will we be seeing another round jugalbandi between the Judiciary and Executive on the use of sound recordings for wedding festivities? Read Reva’s post to know more! 

Semiconductors, IP & India: A Road Less Travelled 

The increasingly vital semiconductor industry is one that hasn’t received sufficient attention in India. Following some extremely interesting insights from a compelling talk by Prof A. Paulraj at IIC, SpicyIP Intern Pranav takes a look at the IP regime surrounding semiconductors and India’s standing in this arena. Read on for more!

‘Plausibility’ and Admissibility of Post-Published Data in India 

In May 2023, the UK Court of Appeal upheld the invalidity of Bristol-Myers Squibb’s Apaxiban patent for lacking “plausibility”. But how does this finding interact with the position of relevant laws in India? Responding to this question, Amit Tailor discusses whether the “plausibility” requirement is embedded within the Patent Act.

Case Summaries

Gujarat Cooperative Milk Marketing v. Sujay Kumar & Ors on 2 February 2024 (Delhi High Court) 

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The order concerns with the identification of the defendant no. 5, referred to as “WIDEOPEN” in a suit alleging disparagement of the plaintiff’s company and trademark “AMUL.” The order notes that while other defendants have been injuncted, Google has refused to disclose the identity of “WIDEOPEN”, citing the General Data Protection Regulation (GDPR) rules of the European Union and thus has hindered the progress of the trial. The court noted the absence of a Mutual Legal Assistance Treaty (MLAT) between India and Ireland as a barrier to obtaining the data. Two options were presented by the court : issuing a Letters Rogatory through the government of India or directing Google Ireland to seek orders from Irish Courts. The Court expressed its preference towards the latter option however, counsel for Google sought time to file a response after seeking instructions. 

M/S Zari Silk (India) Pvt. Ltd v. Ms. Surbhi Munjal on 1 February 2024 (Delhi High Court) 

The Petitioner filed the present suit to restrain the defendant from using an allegedly identical “Zari” device. The petitioner submitted that the TM Registry has raised an objection against the defendant’s mark considering it to be similar to the plaintiff’s mark and  argued that the competing marks are “phonetically and absolutely identical”. Considering the above, the court passed an ex-parte ad interim injunction order in favor of the plaintiff.   

Rajesh Sultania And Anr v. Arun Kumar Murarka on 30 January 2024 (Delhi High Court) 

A writ petition was filed by the petitioner against the order of the Trial court rejecting its application for rejection of a plaint filed by the respondent. The plaint was filed seeking permanent injunction against the respondent’s use of trademarks “YEH KHILA YEH KHILA” and “TIN TIN,” alleging trademark infringement, passing off, and copyright violations. The Respondent operates his business through two incorporated entities and claims ownership of the trademark via the permitted use by the two incorporated entities. Petitioner contends that the Respondent is neither the registered proprietor nor the registered user of “YEH KHILA YEH KHILA”. The Court chose not to interfere with the Trial Court’s holding that the Respondent was related to the proprietors of the trademark, he has a legitimate basis for filing lawsuit. The Court observed that the Respondent has dual status as the copyright holder of the label embedding the trademarks and the registered proprietor of the “TIN TIN”. This dual ownership confers upon the Plaintiff a legitimate basis to initiate actions against both copyright and trademark infringements. 

Ajay Goyal vs Anil Verma & Anr on 31 January, 2024 (Delhi High Court)

The Plaintiff is the proprietor of the mark ‘SUFIYANA’ and has a registered logo. They filed a suit alleging copyright and trademark infringement against the defendant after discovering that they were selling household products under the name, ‘SUFIYAMA’, using a similar trade dress and artistic work. It was submitted that the Defendant’s mark has not been registered yet, and application has been filed in 2023 on a proposed-to-be-used basis. The plaintiff submitted that though their “Sufiyana” mark has not been registered, they have been using the same since 2014/ 2018 and thus have gathered a substantive goodwill in the market. Assessing the above, the Court passed an ex-parte ad interim injunction. 

Tata Sons Private Limited & Anr vs Mohan Kumar Kotana on 31 January, 2024 (Delhi High Court)

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Plaintiffs (having a registered trademark ‘TATA COPPER WATER’ and have applied for ‘TATA COPPER + WATER’)  filed a suit against the defendant for marketing and selling water bottle products using a similar name-‘VIZAG GOLD’S COPPER+ WATER’ and  the same trade dress of their water bottle products. Furthermore, upon an investigation the plaintiff had also found a number of its own water bottles in the defendant’s factory premises. Court found that the plaintiff had sufficiently satisfied the three-pillar test and passed an ex-parte ad interim injunction against the defendant restraining the disposal of any of the infringing products.

Sap Se vs Vtech Soft Solutions & Ors. on 29 January, 2024 (Delhi High Court)

The plaintiff- SAP SE (registered as a trademark, as well as a number of other variations) provides end-to-end software applications. It was argued that despite several warnings by the plaintiff, and an ad interim injunction against them, the defendant was offering pirated software with remote SAP server access through a website and actively promoted its infringing material on social media. Despite being served with the notice, the defendants did not appear before the court and thus the Court passed a permanent injunction against the defendant. The bench found that the defendants had indeed been dishonestly dealing in SAP products/ services consisting of Plaintiff’s trademarks and copyrights, including providing remote server access and pirated copies of Plaintiff’s software. 

M/S Prakash Pipes Limited vs M/S Prakash Industries on 2 February, 2024 (Delhi High Court)

Plaintiff is in the business of manufacturing and selling polyvinyl chloride (“PVC”) pipes and fittings under the registered trademark ‘PRAKASH’. In January, 2024, the plaintiffs found that the defendants were selling identical products (UPVC, CPVC, pipe fittings and bath fittings) under the mark ‘PRAKASH’ and that there was no registration in favour of the defendant. Defendant also used an identical mark as the plaintiff, and the logo used by the defendant was also in the same colour combination as that of the plaintiff. Since there was no appearance or written reply by the defendant, the court passed an ex-parte ad interim injunction against them restraining them from using the trademark name (or any name deceptively similar to) ‘PRAKASH’. 

70-Mm Talkies Private Limited vs Legend Studios Private Limited on 18 January, 2024 (Bombay High Court)

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The Plaintiff filed an interim application for injunction against the release of the biopic on Shri Atal Bihari Vajpayee. The plaintiff alleged that the defendants movie was based on the book on which the plaintiff had exclusive right on and thus, due credit must be provided to the Plaintiff. However, the Court held that the plaintiff has failed to establish that the movie is based on the book and hence, interim injunction was denied against the defendant.

Samya International Thr. Its Partner vs Relaxo Domeswear Llp Thr.Its Abdullah on 18 January, 2024 (Bombay High Court)

An appeal was filed against the District court order of interim injunction against the defendant in the original suit. The dispute pertains to the registered trademark of the Respondents which is a home insecticide brand ‘Dengue Don’. The High Court upheld the order of the District court on the grounds that deceptive similarity between the marks of the respondents and the applicants exists.

V.R. Industries Private Ltd. vs Rajesh Kejriwal on 31 January, 2024 (Delhi HC)

The Appellant filed an appeal against the interim injunction as granted by the Commercial Court in a trademark infringement dispute. The Commercial Court held that the trademark ‘GOLDEN GATE’ was duly registered by the plaintiff in the original suit, Rajesh Kejriwal and the defendant by using the same mark has caused trademark infringement and thus, interim injunction was granted in favor of the plaintiff. The division bench of the Delhi High Court upheld the order of the Commercial Court and continued the interim injunction against the appellant.

Ttk Prestige Ltd vs Arjun Ram & Anr on 31 January, 2024 (Delhi High Court)

The plaintiff had filed a design and trade dress infringement suit against the defendant for its brand ‘Prestige’. The court, on an earlier occasion, had granted an interim injunction in favor of the plaintiff on the grounds that the defendant had the same pressure cooker design as the plaintiff and the trade dress of the defendant’s mark was also similar to the plaintiff’s mark. Despite being served with the suit papers the defendant did not appear and hence, the Court passed a decree in the favor of the plaintiff. 

Akshay Tanna vs John Doe & Ors on 5 February, 2024 (Delhi High Court)

The Plaintiff filed an application for interim injunction on the grounds that certain unknown entities had been infringing the personality and publicity rights of the Plaintiff. The Plaintiff has alleged that these unknown entities have been falsely representing themselves as the agents of Plaintiff and securing clients on the basis of his reputation without any proper authorization. As the prima facie case was established, the Court granted a John Doe order, dynamic injunction, in favor of the Plaintiff and directed the government and Social media platform to remove such fake accounts. 

Frankfinn Aviation Services (Pvt.) Ltd vs Fly- Hi Maritime Travels Private on 5 February, 2024 (Delhi High Court)

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The Plaintiff, a renowned aviation training institution, filed an application for ad-interim injunction against the Defendant on the usage of the infringed trademark. The Plaintiff has been using the infringed trademark ‘FLY HIGH’ since 2004. The said mark has been allegedly infringed by the Defendant’s mark, ‘FLY HI’. The Defendant argued that the Plaintiff is engaged in a different arm of aviation and thus, no deception can be caused. However, the Court opined otherwise and held that the Defendant’s mark is highly similar to the Plaintiff’s mark and will cause confusion to an average consumer. Therefore, an interim injunction was granted in the favor of the Plaintiff. 

Fever Labs Inc vs Festival House Immersive Exhibit India on 5 February, 2024 (Delhi High Court)

The Plaintiff, a globally known entertainment company, filed a suit for permanent injunction to refrain the Defendants from illicitly using the Plaintiff’s internationally registered mark, ‘Candlelight’. The Court, while dealing with an application of interim injunction, held that the defendants has prima facie infringed the Plaintiff’s mark and shall be restrained from using the mark till further proceedings. Additionally, the Defendants are further restrained from organizing any further events under the Plaintiff’s mark.

Bennett Coleman And Company Limited vs Timespro Consulting Llp & Ors on 5 February, 2024 (Delhi High Court)

An ex-parte ad interim injunction was passed against the defendants, who further failed to appear before the Court on multiple dates and did not submit their written submissions within the statutory period. The plaintiff submitted that the defendant’s trademark ‘TIMESPRO’ and device ‘TIMESPRO’ were similar to its mark ‘TIMES’ formative mark. The court permanently injuncted the defendants and their affiliates from using any trade mark/trade name/domain name similar to the plaintiff’s trademarks TIMES, TIMESPRO, TIMES PROPERTY and TIMES formative marks for the purpose of any business/services/goods/domain name, email and social media platforms. 

Hero Investcorp Private Limited And Anr vs Diamond Autos on 5 February, 2024 (Delhi High Court)

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The plaintiffs is the proprietor of the trademark ‘HERO’ and alleged that the defendant was selling counterfeit products. The plaintiffs also alleged that not only did the defendants copy the trademark, trade dress, get up, and style, but also the name of the manufacturing company of the plaintiff- Hero MotoCorp Limited at the front and back of the packaging. Upon comparing the physical products of both the parties and considering the submissions- the court held that the plaintiff had satisfied the three-pillar test and passed an ex-parte ad interim injunction against the defendant’s use of the plaintiff’s trademark  and trade dress. 

The Regents Of The University Of California vs Controller General Of Patents (Delhi High Court)

The appellant challenged the rejection of their patent application under Section 117A of the Patents Act. The dispute centered on amendments made to the claims, with the appellant arguing that the changes were within the permissible scope of Section 59(1), aimed at clarification, and did not introduce new substance. The Controller contended that the amendments exceeded the original claims and introduced new matters. The court, after a detailed analysis, disagreed with the Controller’s interpretation. It found that the amendments, including the use of “method of marketing,” (which was also the initial claim) were consistent with the original claims and served as explanations. The court held that the amendments did not introduce new substances and set aside the rejection. The appeal was allowed, and the patent application was remanded for fresh consideration with the amendments. 

Astrazeneca Ab & Anr vs Azista Industries Pvt Ltd & Ors on 6 February, 2024 (Delhi High Court)

The plaintiffs alleged that the defendants are manufacturing and selling infringing versions of their patented drug, Osimertinib, under the brand OSITAB. The plaintiff alleged that the defendants are manufacturing the drug in India and then packing it in Bhutan and then smuggling it back in India. Defendant no. 1-5 denied the allegations and asserted that the drugs are imported legally after complying with the Rule 36 of the Drugs and Cosmetics Rules, 1945 (“Rules”) which permits importation of prohibited drugs for personal use after complying with some conditions. Defendant no. 8, a separate pharma company, also assured that they do not have any stock of the impugned product nor have they made any listings on defendant no. 7, an e-commerce platform. Despite service of summons defendant no 6 and9 did not appear. The court directed defendant no. 7 to delist and delete all listings of the impugned product on its platform and issued an ex-parte interim injunction order against defendant no. 6 and 9.   

Sequoia Capital Operations Llc & Ors vs John Doe And Others on 5 February, 2024 (Delhi High Court)

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The Delhi High Court granted an ex-parte ad-interim injunction in favor of Sequoia Capital, restraining Defendant No. 1 from using their trademarks “SEQUOIA” and “PEAK XV PARTNERS”. Defendant No. 1 was accused of fraudulent activities, including running a fake investment business using Plaintiff No. 2 and 3’s trademarks (“PEAK XV,” “PEAK XV PARTNERS”) and impersonating Mr. Chinmaya Golecha of Sequoia Capitala. It was further alleged that they were allegedly operating a stock market investment learning platform ‘SEQUOIA CAPITAL BUSINESS SCHOOL’ through webinars, wherein they share apparently fake and fraudulent stock trading and investment information, using SEQUOIA trademarks.

Bawa Masala Co Pvt Ltd vs Bawa Masala Co & Anr on 22 January, 2024 (Delhi High Court)

The order clarifies that mere servicing documents on the correct email address will not constitute service and that the presumption of service is open to rebuttal  by the defendants establishing that they haven’t received the mail. In the present case the appellant argued that the Registry has erred in holding that the service via email was not proper, whereas the respondent/ opponent argued that the mail was not received by them. The court dismissed the appeal on the above reasoning. 

Ahuja Radios vs M/S. Rohini Electronics & Ors. on 25 January, 2024 (Delhi High Court) 

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The High Court decreed the suit in the favor of the plaintiff. The dispute concerned allegations of trademark infringement and sale of counterfeit products. The plaintiff argued that they conducted a survey regarding the availability of counterfeit products in the market and also made dummy purchases from the defendants. Earlier an ex parte interim injunction was granted by the court and a direction for execution of local commission was passed. Despite service of the suit paper book, the defendant did not appear and thus the court decreed the suit in favor of the plaintiff.   

R Indira Devi vs G Satyaki on 25 January, 2024 (Telangana High Court) 

The plaintiff asserted ownership of the copyright works of his late father, Sri G.Seshendra Sharma, based on a letter dated 02.12.1989 (Ex.A2). The plaintiff contended that all literary rights were transferred to him, and he has been publishing his father’s works since then. The defendant argued that Sri G.Seshendra Sharma, during his lifetime, transferred rights to the 2nd defendant through a letter dated 05.01.2006. The dispute centers on the authenticity of Ex.B3 (Ex.B6), the document supposedly revoking copyrights and reassigning them to the 2nd defendant. The court considered Ex.A2 as a valid assignment of copyrights, emphasizing its authenticity in the author’s handwriting and his signatures. Thus, the court concluded that the plaintiff was the owner of the copyright works, as per Ex.A2, and dismissed the credibility of Ex.B3 (Ex.B6) in revoking and reassigning copyrights.

Godrej Agrovet Limited vs Manisha Agro Sciences on 18 January, 2024 (Bombay High Court) 

Godrej Agrovet Limited filed a Contempt Petition against Manisha Agro Sciences, alleging a violation of undertakings made in “Consent Terms” during a trademark infringement suit. The petitioner claimed the respondents resumed using the impugned product ‘Diamore or Diamore Plus’ despite the court order, seeking contempt action and providing evidence of ongoing violations. The court issued a show-cause notice to the respondents, asking why contempt proceedings should not be initiated against them.

The Hershey Company vs Dilip Kumar Bacha, Trading As Shree Ganesh Namkeen on 9 February, 2024 (Delhi High Court)

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A batch of petitions raised the question regarding the interpretation of the term “The High Court” u/s 57 of the Trademark Act in the context of rectification application. The issue was whether the High Court under whose territory the relevant office of the registry falls, would have the jurisdiction to hear these petitions, or not. The Court scrutinized the position of law set up by Girdhari Lal Gupta v. K. Gian Chand Jain, considering the fact that the judgement was passed with respect to the Designs Act, 1911 which unlike the Trademark Act 1999, didn’t provide for similar rights and the establishment of the IPAB. Nevertheless the court referred the following questions to a higher bench-

Whether the decision of the ld. Full Bench in Girdhari Lal Gupta v K Gian Chand Jain rendered under the Designs Act, 1911, would be applicable in the context of the Trade Marks Act, 1999 as amended by the Tribunal Reforms Act, 2021, for determining jurisdiction of a High Court under Section 57 of the Trade Marks Act?

Whether the jurisdiction of the High Court under Section 57 of the Trade Marks Act, 1999 would be determined on the basis of the Appropriate office of the Trade Mark Registry, which granted the impugned trade mark registration?

Whether the expression ‘the High Court’ can be differently construed in Sections 47, 57 and 91 of the Trade Marks Act?

Vifor International v. MSN Laboratories Pvt. Ltd. on 07 February, 2024 (Delhi High Court)

 A Division bench of the Delhi High Court has set aside a Single Judge order on the interpretation of “Product by Process” patentability claims in India. The court disagreed with the Single Judge’s interpretation and held that the Single Judge has erred by understanding “product by process” claim to be limited to a product obtained through a specific product feature. 

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