Keep up with the ever changing world of IP with SpicyIP’s Weekly Review! A quick glance at last week – analysis of a Delhi HC judgment on the patentability of genetically modified salmonella bacteria, a look at the Philips DVD Case where the Court imposed heavy damages and costs, and a post-grant opposition leading to a revocation of Optimus’ Linelizoid patent. 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
Delhi High Court Stirs the Pot for Biotech Patent Applicants in India
On the recent Delhi High Court judgement concerning a genetically modified salmonella bacteria, Prashant Reddy explains how the Court erred by applying Section 3 on a microorganism and incorrectly applied the disclosure requirement under Section 10. Read for his in-depth post on the case.
The Philips DVD SEP Case: Looking at the DHC’s Decision on Foreign Applications and Damages
While the DHC’s decision to impose heavy (and questionable?) damages and costs in the Philips DVD SEP case contributes towards making India a favorable destination for SEP holders, it highlights another instance where a patent agent missed timely filings of crucial documents. Praharsh Gour writes on this development.
Chalo Delhi! Office of CGPDTM Moves to New Delhi
Ministry of Commerce has officially announced the shifting of CGPDTM headquarters along with the Establishment and Finance Division to New Delhi with immediate effect.
Other Posts
Amazon Owns Your E-Books and Wants More
As of 26th February, 2025, Kindle users will no longer be able to use the feature ‘Download or Transfer via USB’, for Kindle Purchased books, as Amazon is discontinuing the feature. This move may seem innocuous but increases their control over the ebooks downloaded in the devices. In light of this Arnav Kaman discusses a range of issues like DRMs, rights of users, and the future of ebooks.
Optimus’ Linezolid Patent Revoked After Post-Grant Opposition
The patent office has revoked Optimus’ Linezolid patent after a post-grant opposition by Symed Labs. The office has come out with a well-reasoned and straightforward decision on the patent lacking obviousness/inventive step and patentability under 3(d). However, some questions on scrutiny of patent applications by the office during the patent grant stage are raised. Md Sabeeh Ahmad writes on the revocation and the grounds involved.
‘Star’ring In Conflict: Rogue IPTV Players Meet Star India In IP Battle
Though cost-effective in accessing audio visual content, the use of IPTV technologies is clouded by legal challenges including piracy and illegal transmission. Tanishka Goswami discusses the utility of DRM and strong policy frameworks in safeguarding broadcasters and copyright owners.
Case Summaries
Lifestyle Equities Cv & Anr. vs Amazon Technologies, Inc. on 25 February, 2025 (Delhi High Court)
The High Court imposed damages worth INR 339.25 Crores on Amazon Technology Inc for infringement of the plaintiff’s “Beverly Hills Polo Club” trademark. The plaintiff had alleged that defendant no. 2’s “Symbol” trademark which is available on Amazon’s e-commerce platform infringed its mark. The Court held that the triple identity test has been fulfilled here and a case of infringement has been made out. The Court also observed that Amazon is a dominant player in the e-commerce space and can leverage that to dilute the plaintiff’s marks by heavily discounting its products with similar marks. On the relationship between Amazon and other defendants, the Court noted that Amazon deliberately chose not to disclose its relationship with the other defendants and suffer permanent injunction. The Court attributed as an intent to withhold crucial information and imposed heavy costs on the e-commerce platform.
Mahesh Edible Oil Industries Ltd vs Hd Oil Mill on 25 February, 2025 (Delhi High Court)
The plaintiff alleged that the defendant’s “Saloni Gold” mark is similar to its “Saloni” trade mark and filed a case alleging infringement and passing off. After the trial, the Court held that the marks were similar and that the defendant did not lead any evidence to discharge its onus. Decreeing the suit in favor of the defendant, the Court granted INR 5 Lakhs as damages to the plaintiff and a permanent injunction against the defendant’s use of a similar mark.
Castrol Limited vs Kapil & Anr. on 18 February, 2025 (Delhi High Court)
The Delhi High Court granted permanent injunction in favor of the plaintiff and awarded INR 20 Lakhs as costs and damages to it. The plaintiff had alleged that the defendant had been manufacturing and selling engine oils and lubricants bearing the “Active” mark which is similar to its “Activ” mark. The Court held that the overall get up and colour scheme of the competing products are same and that the defendant has merely added an “E” in the impugned mark with identical font and passed the judgement in the plaintiff’s favor.
Adyar Gate Hotels Limited vs Itc Limited & Anr. on 24 February, 2025 (Delhi High Court)
A Division Bench of the Delhi High Court stayed the ex parte ad interim order issued against the appellant’s use of the mark “Dakshin”. The Court held that the Single judge failed to appreciate that the appellant has been using the mark since 2015 and nor did the respondent argue that irreparable harm will be caused if the injunction is not granted. The Court listed the matter on 18th March before the Single Judge.
The plaintiff filed a trademark infringement suit against the defendant for manufacturing and selling counterfeit Levi’s jeans in Delhi, India. The Local Commissioners seized over 35 jeans from Ojha and 1,416 jeans, 803 tags, and other materials from Kumar and Ram. Ojha settled his due by paying ₹1,50,000 in damages. The Court found that Levi’s owned valid trademark registrations, thus Kumar and Rams manufactured counterfeits that used identical replicas of Levi’s marks without authorization, and copied the entire design elements of Levi’s products. The court granted a permanent injunction against the defendants and awarded ₹3,00,000 in damages, as well as ordered the defendants to destroy all seized goods. The Court applied the standards for damages from the ‘Koninklijke Philips case’, categorizing the defendants as “first-time knowing infringers”. This resulted in them meriting just partial costs.
The petitioner sought cancellation of the respondent’s “PFC” mark alleging the same to be similar to its mark. The Court compared the two marks and, considering that the plaintiff’s mark is a prior registered mark cancelled the respondent’s mark.
A revocation petition was filed against the mark of the respondent. Despite being served with the notice, the respondent didn’t appear. It was alleged that the mark of the respondent “BSB Myron” was deceptively similar to the “Kyron” trademark of the petitioner. It was also submitted that the petitioner’s mark was prior (2012) to the defendant’s mark which was registered in 2020. The Court held the marks to be deceptively similar and cancelled the registration of the impugned marks.
Bheru Singh vs Parbat Singh on 21 February, 2025 (Delhi District Court)
Originally filed as a case asserting infringement and passing off by the defendant, the plaintiff withdrew the claims asserting infringement and pressed issues of passing off. It was alleged that the defendant’s registered mark was passing off its products as the plaintiff’s. However, the plaintiff was not able to establish its goodwill. The Court held that the both the competing goods are different and the trade channels of the products are different and thus dismissed the suit.
State vs Raj Kumar on 17 February, 2025 (Delhi District Court)
The police seized 1,100 of what was deemed ‘allegedly counterfeit’ books from Raj Kumar and Ravinder Kumar Sharma in Delhi on July 2, 2015. They were charged under Section 63 of the Copyright Act. The Court essentially had to determine whether the accused were guilty of copyright infringement by printing and selling these duplicate books without prior permission. Eventually, both members were acquitted as the prosecution failed to prove guilt beyond reasonable doubt due to inconsistent witness testimonies, holes in the procedural regularities when it came to documentation, and lack of thorough forensic examination and expert testimony to verify the books were counterfeit.
This case involved a trademark dispute over the name brand “Shrinath” between the plaintiff, which has used the mark since 1978, and the defendant, who registered an allegedly deceptively similar mark in the year 2021. The applicant argued on a multi-pronged ground, focusing on principles of prior use, goodwill, and deceptive similarity, by citing a Delhi High Court injunction in its favor. On the other hand, the respondent claimed prior use since 2014, delay in objection by the applicant, and fair market competition, relying on trademark registry approval. The Court essentially ruled that the applicant was the prior user, and the similarity between the marks could eventually mislead their consumers, thus reaffirming the Delhi High Court’s injunction. Thereafter, the respondent’s trademark registration was canceled under Section 57 of the Trade Marks Act, 1999, and the applicant’s exclusive rights over the title term “Shrinath” were upheld, emphasizing the need to prevent deceptive trademark adoption in public interest.
Hero Investcorp Pvt Ltd vs Bhura Ram on 25 February, 2025 (Delhi District Court)
The plaintiffs instituted a suit against the defendant for passing off trademark and copyright infringement, and further filed for damages for selling spurious spare parts under the coveted ‘Hero’ brand in Karol Bagh, Delhi. The defendant was found selling spurious brake shoes, clutch discs, and spark plugs, which were indistinguishable from real Hero products. Eventually, a Local Commissioner confiscated counterfeit merchandise valued at lakhs. The defendant eventually tried to compromise but eventually did not attend the hearings nor furnish a written statement. The Court established that the defendant’s actions resulted in eventual consumer confusion, establishing infringement and passing off.
The plaintiff filed a commercial suit against Aviaki Polymers and others brands, alleging trademark infringement and due to the use of their GOLDSTAR brand. The plaintiffs, who had been exporting footwear to India since 1997, stated that the defendants were selling counterfeit products under similar names like GOODSTAR, GOLBSTAR, and GLOWSTAR, which could hamper their business and confuse consumers. The court granted an ex-parte interim injunction on 23.01.2018 and appointed a Local Commissioner, who later seized counterfeit goods from the defendants’ premises in Madhya Pradesh. The court ruled in favor of the plaintiffs, granting a permanent injunction and ordered the delivery of the seized infringing goods. The plaintiffs also sought ₹20,00,000 in damages from each of the defendants, however, failed to provide a very precise calculation.
Gagan Singhal vs Virender Hans on 13 February, 2025 (Delhi District Court)
A suit was filed under Section 142 of the Trademarks Act seeking permanent injunction restraining the defendant from hampering the business of the plaintiff or issuing groundless threats to the plaintiff in respect of plaintiff’s use of the marks. The defendant stated they had exclusive rights over terms “Phool” and “Loban”, and had sent legal notices and filed a rectification petition against the plaintiff’s mark. The court ruled that these terms are common trade words and cannot be monopolized, dismissing the defendant’s claims. A permanent injunction was issued against the defendant, along with ₹1,00,000 in damages and ₹22,000 in costs. The court also directed the Registrar of Trademarks to disclaim exclusivity over “Phool” and “Loban”.
Daikin Industries Ltd vs Union of India And Ors on 26 February, 2025 (Calcutta High Court)
An appeal was filed against the rejection of a patent application on the ground of lacking inventive steps. The Court noted that the prior art relied upon have been mechanically produced without any discussion. Furthermore, the Court noted that there has been no independent application of mind by the Controller in passing the order. The Court remanded the order back to the Controller for fresh adjudication.
M/S Mysore Deep Perfumery House vs Sant Singh And Anr on 28 February, 2025 (Delhi District Court)
The plaintiff was a registered partnership firm and sold incense sticks and perfumes. The plaintiff had been marketing under a “ZED BLACK” trademark since 1992 and subsequently launched “ZED BLACK 3 IN 1” in 1998. The defendant was found selling incense sticks under a similar brand name -“KESHAV GOLD 3 IN 1”. The court held that the defendant had intentionally imitated the logo and branding of the plaintiff, resulting in misappropriation of goodwill. The court granted a permanent injunction, restrained additional sales, and ordered delivery-up of all infringing products. As the extent of infringement could not be ascertained, damages of ₹3,00,000 were granted.
Upl Limited vs Astec Lifeciences Limited And Anr on 20 February, 2025 (Calcutta High Court)
The appeal was filed against an order dated whereby the pre grant objection filed has been allowed. The Court noted that the impugned order was a mechanical reproduction of the submission by the respondents without any application of mind. Reiterating the importance of adhering to statutory timelines, and discussing the duty of the Controller in patent grant procedures, the Court set aside the impugned order remanding it to a different officer for adjudication.
Vgx Pharmaceuticals Inc vs The Controller General Of Patents on 18 February, 2025 (Delhi High Court)
An appeal was filed against the patent refusal order by the Asst. Controller of Patents. The appellant contended that the prior art objection was not taken in the FER and was only referred to for the first time in the hearing notice. The Court noted that no reasoning or any justification has been given as to how the aforesaid prior arts would cover the subject invention. The Court held the conclusion in the impugned order has been made in a cryptic manner by the Assistant Controller, therefore setting aside the order and remanding it back to the patent office for fresh consideration.
Upl Limited vs Union Of India & Ors on 25 February, 2025 (Calcutta High Court)
The writ petition was filed against the communication issued by the respondent adjourning the hearing of the subject patent application. The hearing pertained to a pre-grant opposition in which the documents cited fell within the citations of a previous pre-grant opposition. The petitioner alleged that there has been no prima facie finding in the pre-grant opposition. The Court noted that the matter has been kept pending by the Hearing Officer for a long period of time and repeated adjournments have been granted. The Court directed the matter to be assigned to a different controller and consider the patent application as well as the previous pre-grant opposition afresh. For the second pre-grant opposition the Court directed to follow provision of Rule 55(3) of the Patent Rules and record prima facie reasons for consideration of the same.
The plaintiff filed a suit for permanent injunction restraining infringement of his registered trademark and copyrighted label SHUDH PLUS ULTRA. The plaintiff alleged that the defendant in a similar line of business as the plaintiff has adopted and intends to use the mark SHUDH PLUS GOLD. The plaintiff sought a summary judgment as the defendant did not appear before the Court nor filed written statements even after summons. The Court concluded that the defendant’s mark is almost identical to that of the plaintiff’s. The Court in a summary judgment passed a decree of permanent injunction from using the aforesaid mark ‘ShudhPlus gold’ or any mark deceptively similar variant of the Plaintiff’s trademark. The Court also granted damages for the sum of Rs. 5,00,000.
Mankind Pharma vs Lemford Biotech Pvt Ltd. on 18 February, 2025 (Delhi High Court)
The rectification petition was filed seeking removal of the trademark ‘LENOKIND’. The petitioner has more than 300 registered trademarks wherein the word ‘MANKIND’ and/or ‘KIND’ forms a part of its trademarks. The petitioner submitted that the word ‘KIND’ given its long use has been exclusively associated with the petitioner and therefore use of the mark in relation to similar goods is likely to cause confusion in the market. The respondents did not file its reply in the case. The Court noted that the petitioner has established it is the prior user of the mark ‘MANKIND’ and ‘KIND’ family of marks. The Court therefore directed the removal of the trademark ‘LENOKIND’.
The present application was filed seeking interim relief in a suit of passing off. The petitioner is the owner of the registered mark ‘METRAVI’. The respondent has registered the mark ‘METERIVA’ and is engaged in a similar line of business. The petitioner alleged phonetic, structural and visual similarity of the defendant’s mark to its own. The defendants contended that the rival products are dissimilar to each other and there is neither phonetic nor visual similarity. The Court noted that the defendant was aware of the petitioner’s mark owing to previous business dealings between them. The Court concluded that the petitioner established a strong case on merits and the balance of convenience are also in favour of the petitioner, thereby confirming the Court’s previous order dated April 8, 2024.
The present suit was filed seeking permanent injunction restraining the defendant from infringing the plaintiff’s registered trademark ‘SAFI’. The plaintiffs alleged that the defendants have adopted a deceptively similar mark M SAFI for a similar line of product. Finding deceptive similarities in both the packaging, the Court passed a decree of permanent injunction in favour of the plaintiffs and also awarded a sum of Rs. 5,00,000 as damages against the defendant.
Other IP Developments
International IP Developments
(Thanks to Praharsh and Diya for the case summaries)