(This post has been co-authored with SpicyIP Intern Aditi Agrawal)
Here is our recap of last week’s top IP developments including summary of the post on the analysis of Delhi HC’s judgment in Master Arnesh Shaw, a letter by MP Haris Beeran to the Government urging to invoke Section 100, Patents Act for rare disease medicine, and the statutory duty under Section 151 of Patents Act. 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
The Delhi HC passed a slew of directions to the Union of India including directing the Union Government to allocate ₹974 crore to the National Fund for Rare Diseases (NFRD). Are the Court’s directive in the case judicial overreach? Or the public health necessity in the case called for such directives? Sunidhi Das discusses the Court’s directions, exploring these questions further!
MP Haris Beeran has written to the Minister of Health and Family Welfare urging the government to invoke Section 100 of the Patents Act, seeking local production of the rare disease medicine Risdiplam. The letter has raised several questions concerning pricing and availability of rare disease medicines in India. Discussing this development in light of ongoing litigations concerning rare diseases treatments, Md Sabeeh Ahmad writes on accessibility of these drugs and whether Section 100 is a viable solution for the problem.
Who “Notices” When Patents Are Revoked/Invalidated? Examining Section 151, Patents Act
Has the statutory duty of updating the register of patents under S. 151(1) been discharged? Are supplemental records as required under S. 151(2) being maintained? Following up on his discussion of Macleods Pharmaceuticals v. The Controller, Bharathwaj Ramakrishnan discusses the statutory duty under S. 151 of the Patents Act to record revocations or invalidations.
Other Posts
Is a revocation petition sustainable if the defence of invalidity has been taken in an infringement suit? Is a revocation petition sustainable when the patent in question has expired? What is the purpose of the supplementary record? Bharathwaj Ramakrishnan looks at these questions as he discusses the Court’s judgment in Macleods Pharmaceuticals v. The Controller!
Is a Script a Dramatic or a Literary work? And what impact does this categorisation have on royalties? Lokesh Vyas dwells on these questions in his post in the aftermath of SRAI’s registration!
The Centre for Art and Law Initiatives in Collaboration with RFKN Legal and the German Institute for Art and Law is hosting its Inaugural Conference – “Art Meets Law” on 31st January 2025, at the India International Centre, New Delhi. The conference will consist of four distinguished lectures, keynote and special guest address, and a panel discussion.
Case Summaries
The plaintiff, trading as Leela Cosmetics, alleged that his brother operating under Devi Leela Cosmetics, infringed upon his trademarks “ROOP LADY” and “ROOP LEELA,” as well as the design of his sindoor stick bottles. The plaintiff claimed to have adopted the trademarks in 2006, acquired a registered design in 2019, and built significant goodwill for his products. The defendant countered by claiming that the cosmetics business was originally started by their father and that he had legitimate rights to operate his own business. He argued that he had obtained proper business licenses and trademark registrations and that there were significant differences in their product logos. The Court found that the defendant’s trademarks were phonetically and visually similar to the plaintiff’s, causing potential confusion among consumers. The plaintiff’s claims regarding his trademarks and registered designs were upheld. The Court granted a permanent injunction against the defendant from using deceptively similar marks or designs.
KRBL Limited vs Praveen Kumar Buyyani & Ors. on 15 January, 2025 (Delhi High Court)
This case revolved around a trademark dispute where KRBL Limited, the registered owner of the “INDIA GATE” trademark, alleged infringement, passing off seeking injunction against the respondents, who sold rice under the mark “BHARAT GATE.” KRBL sought an injunction, which was initially granted by the Commercial Court in 2020 but later vacated in 2024. The Commercial Court found no similarity between the marks, deemed “India” and “Gate” publici juris, and cited differences in packaging and target consumer segments to justify its decision. KRBL Limited appealed to the Delhi HC, arguing that the Commercial Court’s findings were erroneous. On appeal, the Delhi High Court overturned this decision, finding that “BHARAT GATE” was phonetically and conceptually similar to “INDIA GATE.” The Court emphasized that “Bharat” is a synonym for “India,” and the depiction of the India Gate monument on the respondent’s packaging was likely to mislead consumers into associating the products. It noted that there was no plausible explanation for the use of “BHARAT GATE” for rice when KRBL’s well-known “INDIA GATE” trademark was already in existence, indicating an intent to capitalize on the goodwill of the established mark. The Delhi HC quashed the Commercial Court’s order, restored the original ad interim order dated 9 October 2020, and allowed the appeal.
Ims Learning Resources Private vs Young Achievers on 20 January, 2025 (Delhi High Court)
In this case, the Delhi High Court granted a permanent injunction in favour of IMS Learning Resources Pvt. Ltd. against Young Achievers, restraining the latter from using the trademark “IMS” or any deceptively similar mark. The Court held that the defendant’s continued use of the trademark “IMS Young Achievers” after the termination of its licensing agreement constituted infringement, passing off, and dilution of the plaintiff’s goodwill. The Court emphasized that the plaintiff, a well-established coaching institute, had exclusive rights over the trademark “IMS,” which was integral to its identity and business. Despite signing an Exit Paper in 2011 agreeing to cease using the mark, the defendant allegedly continued unauthorized use, misleading the public into believing an affiliation still existed. The Court rejected the defendant’s argument that “IMS” was a generic term and found that the defendant’s actions were not only dishonest but also aimed at unfairly capitalizing on the plaintiff’s reputation. The Delhi HC awarded Rs. 30 Lacs towards costs and damages payable by the defendant to the plaintiff.
Aktiebolaget Volvo & Ors. vs R. Venkatachalam And Anr. on 20 January, 2025 (Delhi High Court)
The suit was filed by the plaintiffs seeking a permanent injunction to restrain the defendants from infringing the plaintiffs’ trademarks “PENTA” and “VOLVO PENTA”. The plaintiffs alleged that the defendants’ use of the mark “PENTA” for their machine tools and equipment business was deceptively similar to the plaintiffs’ trademarks, which had been in continuous use globally since 1913 and registered in India since 1970. The defendants contended that “PENTA” was a generic term and could not be monopolized. They argued that their business, dealing in machine tools, was unrelated to Volvo’s marine and industrial engines, and there was no likelihood of confusion. The defendants also questioned the Delhi High Court’s jurisdiction over the matter. The Court addressed these issues and it rejected the defendants’ claim that “PENTA” was generic and found that their use of the mark was deceptively similar, causing consumer confusion and diluting Volvo’s brand. In light of these findings, the Court ruled in favour of the plaintiffs, granting a permanent injunction restraining the defendants from using the “PENTA” mark.
Broad Peak Investment Holdings Ltd. And vs Broad Peak Capital Advisors Llp And Anr on 20 January, 2025 (Delhi High Court)
The Delhi High Court dismissed the plaintiff’s interim injunction application to restrain the defendants from using the “BROAD PEAK” mark, alleging trademark infringement and passing off. The plaintiffs failed to establish substantial goodwill and reputation in India. While they had some business activities in India between 2008-2016, the Court held that these were limited transactions that did not demonstrate significant market presence. The Court emphasized the territoriality principle, noting that international reputation does not automatically translate to Indian market recognition. The Court observed the defendant’s bona fide adoption of the mark, their prior domain registration, and the sophisticated nature of the parties’ clients – private equity investors and financial professionals – suggesting that such clients are unlikely to be confused between the two entities.
Dcm Shriram Limited vs Mr Amreek Singh Chawla & Ors. on 17 January, 2025 (Delhi High Court)
The Delhi High Court ruled on a trademark infringement claim filed by DCM Shriram Limited against the defendants, who were accused of selling wheat seeds under the marks “Sartaj 303” and “Sartaj 404,” allegedly infringing upon DCM’s marks “Shriram Super 303” and “Shriram Super 404.” The plaintiff sought an injunction, claiming that the defendants’ packaging was deceptively similar, causing consumer confusion. Initially, an ex parte ad interim injunction was granted to the plaintiff on November 8, 2024. However, the defendants sought to vacate the injunction, arguing that the plaintiff had suppressed material facts and was aware of the alleged infringement since 2018. The defendants also showed evidence of prior use of the marks “303” and “404” since 2014, predating the plaintiff’s introduction of its marks. The Court observed that the plaintiff had failed to disclose these facts in violation of Order XI of the CPC, which mandates full disclosure of all relevant documents. It held that trademarks “303” and “404” referred to widely recognized seed varieties, and the plaintiff could not claim exclusivity over them. Based on the evidence, the Court vacated the injunction, allowing the defendants to continue selling their products. The Court has referred the parties to resolve disputes over trade dress similarity through mediation.
Roppen Transportation Services vs Mr. Nipun Gupta & Anr. on 15 January, 2025 (Delhi High Court)
In this case, Roppen Transportation Services Private Limited, operating under the well-known trademark “RAPIDO” since 2015, filed rectification petitions against Nipun Gupta, who had registered the identical mark “RAPIDO” in Classes 12, 25, 39, and 42 on a “proposed to be used” basis in 2020. The Court noted that the respondent failed to appear or provide a response, effectively admitting the petitioner’s claims. It observed that the respondent’s registrations were identical to the petitioner’s mark, covered similar goods and services, and targeted overlapping consumer segments, fulfilling the Triple Identity Test. It also noted that the impugned mark has been adopted by the respondent no.1 dishonestly to trade upon the goodwill and reputation of the petitioner under the RAPIDO marks and to associate itself with the petitioner. Thus, the Delhi High Court held that the respondent’s registrations were in violation of Section 11 of the Trade Marks Act, 1999, and directed the Trade Marks Registry to remove the impugned marks from its records.
Pratibha Prop. La-Med India vs M/S Ortis Infratech Llp And Ors on 21 January, 2025 (Delhi District Court)
The present suit was filed by the plaintiff, Mrs. Pratibha, owner of M/s LAMED INDIA, seeking relief of permanent injunction restraining the defendants, M/s Zydillac Dermaceuticals, from infringing the plaintiff’s trademark and passing off. The plaintiff alleged infringement of its registered trademark “UV-KOT” by the defendant’s use of the mark “UV-COTE” for cosmetic products. The Court found that the defendant’s mark was deceptively similar to the plaintiff’s trademark, which had been in continuous use since 2006. Key observations included the phonetic similarity between the marks and the defendant’s apparent intent to create market confusion. The Court noted that the parameters laid down in the Cadila Healthcare Limited V/s Cadila Pharmaceuticals Limited are duly complied with in the present case. The Court, thus, ruled in favour of the plaintiff, granting a permanent injunction restraining the defendant from using the “UV-COTE” mark, directed delivery of infringing materials, and awarded damages of Rs. 5,00,000 along with costs of Rs. 22,000.
The suit was filed by First Fiddle F & B Private Limited against Big Fish Ventures and other defendants concerning trademark infringement and breach of franchise agreement. The plaintiffs, creators of the brand “The Lord of the Drinks”, entered into a franchise agreement with the defendants on 25.10.2019, granting them a non-exclusive right to operate a restaurant in Lucknow. The case arose after defendants organized a controversial “Mujra night” involving allegedly obscene activities that went viral on social media platforms and newspapers. These events raised concerns about licensing violations and caused significant damage to the plaintiffs’ reputation. Following these incidents, the plaintiffs issued a termination-cum-legal notice on 20.11.2023, but the defendants continued to use the brand name and operational services. The Court, proceeding ex parte, granted a decree in favour of the plaintiff, preventing defendants from using “The Lord of the Drinks” brand name, directing the return of operational materials, and awarding Rs. 3,00,000 in damages.
Hero Investcorp Private Limited vs Ashok Kumar(John Doe) on 22 January, 2025 (Delhi District Court)
The plaintiffs, Hero Investcorp Pvt. Ltd. and Hero Motocorp Ltd., filed a suit against the defendant seeking permanent injunction to restrain trademark infringement and unfair trade competition. They alleged that the defendant had unauthorizedly used the “HERO” trademark and logo on industrial oils and lubricants, which resulted in the misappropriation of reputation and goodwill of the plaintiff, resulting in loss and damages to the plaintiff. The Court found substantial evidence supporting the plaintiffs’ claims after a local commissioner’s investigation uncovered counterfeit materials at the defendant’s premises. As the defendant failed to appear or contest the proceedings, the court granted a summary judgment in favour of the plaintiffs restraining the defendant from manufacturing, selling, or marketing products under the “HERO” trademark. The Court also awarded damages of Rs. 10 lakhs to the plaintiffs.