Last week on the blog we featured posts with nuanced discussions on burning issues surrounding patents, trademarks, and copyright. Here are the quick summaries of the 7 blog posts, along with 12 case summaries and other IP developments. Important IP cases that we’re missing out on? Especially from other High Courts? Please let us know so we can include them!
Highlights of the Week
SpicyIP Tidbit: Madras High Court Directs the State Government to Issue a Notification for Establishing Intellectual Property Division
IPD for Madras HC! The court recently directed the State Govt. to notify the inauguration of the specialized division to hear IP matters. In this post, Lokesh highlights this development.
What if? Discussing the Elsevier Ltd. And Ors v Alexandra Elbakyan and Ors in the Multiverse of Substantive Copyright Arguments
The Sci-hub case! SpicyIP intern Tanvi Agarwal brings us up to date on the last two orders regarding amendments that the defendants wanted in the written statement, and the dismissal of the application to reject the plaint. In the context of certain questions that arose in the proceedings, Tanvi then brings up an interesting hypothetical i.e. what if the defendants had challenged the ownership of the copyright early on, instead of the attempt to amend it later on?
Interplay Between Sections 124, 47 and 57 of the Trade Marks Act, 1999: The Fault in Our Interpretations
Recently, Delhi High Court revisited the interplay between the right to seek rectification u/s 57 vis-a-vis the right to stay infringement proceedings u/s 124 in the Anubhav Jain case, after the same was seemingly settled by the Supreme Court in the Patel Field Marshall case. Pratham Malhotra and Rajat Jain discuss this order and analyze it in the context of the settled understanding envisaged by the Supreme Court above.
Sci-Hub and Public Libraries: Legal Deposit under The Delivery of Books and Newspaper (Public Libraries) Act 1954
Is India’s Research exception a paper tiger provision? Aside from the question of Sci-hub’s legality or not, it may be time to start paying more attention to the context of looking into “why” a sci-hub or libgen is needed at all. SpicyIP Intern Amisha Mittal digs into the concept of Legal Deposit under The Delivery of Books and Newspaper (Public Libraries) Act 1954.
Claim Amendments u/s 59(1): Confusingly Evolving Landscape in India- Part I
Recently Delhi High Court in Allergan v. Controller of Patents allowed the Appellant to amend its
claims from ‘method’ claims to ‘product’ claims, notably citing difference in the laws of India and the Appellant’s home country (the USA). Discussing this order in a 2 part post, Amit Tailor highlights the key issues and findings of the court in this case in Part 1. He argues that the rationale to allow such an amendment because of the difference in laws is misplaced and draws attention to the Appellant’s failure to include product claims along with method claims in the PCT application, despite having the liberty to do so in the first place.
Claim Amendments u/s 59(1): Confusingly Evolving Landscape in India- Part II
After reviewing the Allergan v Controller in part 1, Amit Tailor continues in this post to review the position of allowable claim amendments, as laid down in the similar ‘Boehringer’ and ‘Nippon’ cases to show that there has been a lack of consistency in positions on the issue. In his assessment, he highlights “Counterintuitively though, when these three are read together, they appear to create more confusion than providing any clarity on the issue.” Read the post for the full take.
Numeral Marks, Passing off, Trademark Infringement – Delhi High Court’s All-in-One Approach?
Is “99” similar to “91”? Delhi High Court’s recent order says yes, since the common factor is “9”. TM suits on numbers are common, but the circular reasoning of the court regarding infringement and passing off are somethings that are not. In an instance featuring both the above elements, the court in Alphavector India v. Sach Industries passed an extremely convoluted order, argues Lokesh in this post.
After Delhi High Court, Bombay High Court interprets Section 124 of Trademarks Act.
Case: Macleods Pharmaceuticals Ltd. vs Union Of India And 3 Ors on 15 February, 2023 (Bombay High Court)
In another case concerning interpretation of Section 124 after the recently covered Anubhav Jain case, Bombay High Court dismissed a writ petition emphasizing on the satisfaction of the court regarding prima facie tenability of the plea of invalidity. The court stated that “satisfaction of the Court contemplated under Order XIV, Rule 1 of CPC is merely from the point of view that a particular issue arise in the suit whereas satisfaction contemplated under Section 124(1)(b)(ii) of the 1999 Act is from the point of view that the plea regarding the invalidity of the registration of the trade mark in question is prima facie tenable.” The petition was filed against the impugned order of the IPAB cancelling the registration granted to its “Oflomac” mark. Apart from the ruling on Section 124, the court revisited the precedents on the need for a higher standard to compare marks of medicinal goods.
Warning by Google on downloading an app is not wrong and is mandated by the IT Act, clarifies Delhi High Court.
Case: Winzo Games Private Limited vs Google Llc; Ors. on 14 February, 2023 (Delhi High Court)
In a recent order, the Delhi High court dismissed a plea by online gaming application named Winzo, against a policy of Google’s search engine that forewarned its users against the download of the defendant’s application. The court observed that the petitioner was not singled out and that such warning measures are industry practices. Furthermore, it was also observed that, such warnings were mandated under the Information Technology Rules, 2021 to guard internet users against potential risks and threats and several other internet browsers besides Goggle followed the same.
Kantara-Vaharoopam controversy! Kerala High Court sets aside the District Court’s order returning the plaint.
Case: Thaikkudam Bridge vs Hombale Films, on 10 February, 2023 (Kerala High Court)
Fresh in Kantara-Vaharoopam controversy, the Kerala High Court overturned a ruling of the District Court that had returned the plaint. While doing so, it recognized two issues –
‘Whether Section 62 takes away right of the plaintiff to institute a suit at a place
where cause of action has arisen?’
‘Whether it should be filed in a commercial court?’
On the first issue, referring to the Supreme Court’s analysis in Indian Performing Rights Society Limited v. Sanjay Dalia and Anr, the High Court stated that Section 62 of the Copyright Act does not preclude the plaintiff from filing a suit in another jurisdiction where a portion of the cause of action has arisen. Section 20 (c) of the CPC, which permits a plaintiff to file a suit in a location where a portion of the cause of action has developed, is unaffected by Section 62. On the second issue, the Court decided that the subject matter of the claim might be considered under Section 2(c)(17) of the Commercial Courts Act.
Delhi High Court cancels registration to ‘VNow’ mark for being deceptively similar to Bennet Coleman’s ‘Now’ family of marks.
Case: Bennet, Coleman And Company vs Vnow Technologies Private Ltd. on 14 February, 2023 (Delhi High Court)
In a case concerning the rectification of the trademark register, the Delhi High court held that Section 11(2) and Section 11(3) cannot be used by the applicant in the present proceedings when the provisions were not used during the opposition proceedings of the subject mark. The court relied on Section 11(5) for this understanding which it considered to be a proviso to Section 11(2) and 11(3). Regardless, the court did allow rectification of the register based on Section 11 (1)(b) holding that the impugned mark “V Now” is deceptively similar to the “Now” family marks of the applicant.
Delhi High Court clarifies that counterclaims to cancel registered designs are to be filed before the Controller.
Case: Novateur Electrical & Digital Systems vs V-Guard Industries Ltd on 8 February, 2023 (Delhi High Court)
The court, relying on the Supreme Court’s decision in S.D. Containers Indore v. Mold-Tek Packaging Ltd reiterated that counterclaim seeking cancellation of registered design should be filed before the controller and not the High Court.
Delhi High Court partially allows the application for rectification of the register in the Anubhav Jain-Section 124 controversy.
Case: Anubhav Jain vs Satish Kumar Jain & Anr. on 8 February, 2023 (Delhi High Court)
Subsequent to the previous order on an application for rectification of the trademark register (covered here on the blog), the Court partially allowed the application for rectification of the mark and directed the Registrar to reexamine the registration on two points- response by the Respondent to objections raised u/s 11 in the FER and; date of prior use of the mark by the Respondent. The court further clarified that till the time the Registrar passes an order on the above points, the Respondent can use the mark however it cannot assert any rights on it in any pending judicial proceedings. It is pertinent to note that in another order in this matter, it was noted that an infringement proceeding initiated by the Respondent is pending adjudication.
Hermes ‘H’ Mark declared well known by the Delhi High Court.
Case: Hermes International & Anr. vs Crimzon Fashion Accessories Pvt. Ltd. on 8 February, 2023 (Delhi High Court)
Holding that the Hermes H mark fulfills the criteria under Section 11(6) r/w Section 11(7), Delhi High Court declared it as a well-known mark.
Judicial Orders like summoning the accused in Copyright infringement suits needs application of judicial mind, holds Allahabad High Court.
Case: Shubham Munjwani vs State Of U.P. Thru. Secy. Home on 7 February, 2023 (Allahabad High Court)
In a case concerning sales of counterfeit medicines, Allahabad High Court remarked that passing orders by judicial officers on printed performa, “without application of mind is objectionable and deserves to be deprecated.” It was alleged that the appellant were selling fake Betnovate-C cream, and consequently criminal proceedings were initiated against them u/s 63 and 65 of the Copyright Act. The appellant argued that they have been falsely implicated and further submitted that the summon issued by the magistrate does not state any reasons and mechanically summons them for facing the trial. The court came heavily on the prosecution and held that summoning an accused in a criminal case is a serious matter which requires application of mind by the judicial officer on the facts and on the law. The court thus set aside the impugned summoning order and directed the Add. Chief Judicial Magistrate to decide the matter afresh with a reasoned order.
Delhi High Court clarifies application of Section 15(1)(b) of the Designs Act.
Case: Trodat Gmbh & Anr vs Addprint India Enterprises Pvt Ltd. on 13 February, 2023 (Delhi High Court)
The respondent filed an application under order VII rule 11 for rejection of the plaint on the ground that the same is barred by Section 15 (1)(b) of the Designs Act. In order to substantiate on this application the respondent relied on Bombay High Court’s order in Herbertsons Ltd. v. Crag Martin Distillery. The Delhi High Court however, held that whether Section 15(1)(b) will be applied in the present case or not has to be seen from the contents of the plaint. Furthermore, assuming that the plaintiff defaulted in delivering the article, to which despite applying the registered design, there is no marking regarding the registration of the design (and thus inviting application of Section 15(1)(b)), the proprietor will still be entitled to claim damages if it is shown that the infringement took place after the infringer received the “notice of existence of copyright in the design.” On the above grounds, the court rejected the application.
Records of a rectification petition from IPAB goes missing.
Case: Gopika Industries vs The Registrar Of Trade Marks, on 13 February, 2023 (Delhi High Court)
In an interesting case about issues regarding case (mis)management by the IPAB, the Plaintiff filed a writ petition seeking cancellation of the respondent no. 2’s trademark. The concerned respondent argued that the correct way to go about it is by filing a rectification petition. To this, the plaintiff responded that it had filed a rectification petition before the IPAB in 2016, in which defects were raised by the IPAB in 2017. However, order notes that “records of the same cannot be traced out by the IPAB and thus the petition was not transferred to the high court after the TRA, 2021.” The court has issued notice in the matter and has listed it for 20th April, 2023.
Delhi High Court allows application to register “Robotics Today”.
Case: Robotics Today B.V vs Registrar Of Trade Marks on 8 February, 2023 (Delhi High Court)
In allowing an appeal against the order of the respondent, the Delhi High Court held that the composite mark “Robotics Today” “has no dictionary meaning, and when used for advertising/ marketing and providing information in the field of the robotics industry, it alludes to the purpose, without explicitly stating it,” Holding that the mark is suggestive at best, the court rejected the objections under Section 9(1)(b). The court then did an overall assessment with allegedly similar mark to told that the marks only share a common word- “Robotics” furthermore, relying on the registrations abroad, the court set aside the objections under Section 11and thus directed the respondent to advertise the mark in the journal.
Delhi High Court allows application to register the mark ‘Louis Moinet’.
Case: Les Ateliers Louis Moinet Sa vs The Registrar Of Trade Marks on 8 February, 2023 (Delhi High Court)
Delhi High Court set aside the impugned order of the respondent wherein the mark “LOUIS MOINET” was rejected on the objections under Section 9(1)(a) and Section 11. The court held that the mark is derived from the founder of the proprietor and has no direct connection with the goods to which it is applied to and thus rejected the objection under Section 9(1)(a). Furthermore, the court considered that the subject mark has been registered in other classes since 1994 and have been enjoying registration across the globe to reject the objection under Section 11.
Other IP Developments
Cross Border Copyright dispute: Youtube removes song ‘Pyaar ke mod pe’ by famous Pakistani qawwali singer Sher Miandad, after Nagpur University Urdu teacher stakes claims in it.
International IP Developments
Drake and 21 Savage settle fake Vogue cover trademark infringement lawsuit.
Skechers sues Hermès for infringement of IP on shoe soles.
“The U.S. government should face a patent lawsuit over Covid-19 vaccines, not vaccine maker Moderna Inc MRNA.O”- US. Dept. of Justice before the Delaware court.