• Tue. Jun 6th, 2023

SpicyIP Weekly Review (February 20 – February 26)


Feb 27, 2023

[The weekly review is co-authored by SpicyIP Interns Hiranya Bhandarkar, Niyati Prabhu, Amisha Mittal and Tanvi Agarwal.]

As February comes to an end, another month goes by with some interesting IP developments. Here are the quick summaries of 4 posts, 8 case summaries and other IP developments that took place last week. 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  

Spill the Tee M: Discussing the Delhi High Court’s Order on Transborder Reputation in Toyota v TechSquare

6 years after the Toyota v. Prius ruling on transboundary reputation by the Supreme Court, Delhi High Court reiterated that the claims of transboundary reputation have to be backed by substantial evidence. Coincidentally, this time too the petitioner was the Japanese car manufacturer Toyota. Read Praharsh and Hiranya’s post on this.

Battle of the Firms – The Irony of IP Law Firms Being Sued for Trademark Infringement

IP firms sue others for infringement all the time, but it’s surely interesting when they themselves are involved in suits over their own IP. SpicyIP intern Niyati Prabhu highlights a few such litigations between some of the well-known IP firms in the country.

Other Posts

Informal innovation: The re-emergence of ‘informal’ washing machines

Grass-root technological innovations! The recently awarded hand-cracked washing machine by Navjot Sawhney seeks to resolve the back-breaking problem of hand-washing clothes. While pointing out that its been 20 years since 10th standard Remya Jose did something similar, Aparajita Lath highlights the problems faced by such innovators in successfully commercializing their “informal” inventions.

Needs No Fixing if it’s Not Broken: Delhi High Court Refused to Import Provisions of Original Side Rules in the IPD Rules for the Consequences of a Delayed Rejoinder

Don’t fix it if it’s not broken! Delhi High Court refuses to read provisions of Original Side Rules into the IPD Rules for consequences of delayed filing of Rejoinder. Praharsh highlights the key points from the order.

Case Summaries

Delhi High Court holds ‘Novaegis’ to prima facie be deceptively similar to ‘Novartis’

Case:  Novartis Ag & Anr. Vs. Novaegis (India) Private Limited on 20.02.2023 (Delhi High Court)

The Delhi High Court recently heard a case alleging ‘NOVAEGIS’ to be deceptively similar to that of the plaintiff’s mark ‘NOVARTIS.  In this order, the High Court of Delhi observed that phonetic similarity of the two marks at a prima facie is not coincidental and further said that an average customer can be deceived by this similarity. The court also stated that there is a lot of visual similarity in the marks (the size of mark, colour scheme) which can be confusing for the customers and it is easy to pass off the defendant’s products as that of the plaintiff. Relying on Section 29(5), this case fell within the four corners mentioned in 29(2) (b) of the Trademarks Act, and was a prima facie case of infringement. The plaint was subsequently registered as a suit and it was observed that, till the next date of hearing, the defendant, and all others acting on its behalf, shall stand restrained from using the mark NOVAEGIS.

Delhi High Court refuses to grant an interim injunction over Defendant’s use of generic marks like “CPVC” and PRO”.

Case: Astral Ltd. v. Ashirvad Pipes Pvt. Ltd., on 23.02.2023 (Delhi High Court) 

The plaintiff who was engaged in the business of pipes, plumbing and the likes had obtained various registrations in respect of the ‘CPVC PRO’ and ‘CPVC PRO’ formative trademarks prior to launching Chlorinated Polyvinyl Chloride (CPVC) piping systems in India. The grievance of the plaintiff is with regard to the impugned mark ‘CPVC FLOWPRO’, wherein ‘CPVC’ and ‘PRO’ are being used together, and the same is similar to the trademark of the plaintiff, ‘CPVC PRO’. The Court observed that the usage of the distinctive house marks of the parties negates any possibility of deception or confusion in the marks and that prima facie it cannot be said that there is a possibility of confusion or deception being caused among the customers of the two products. The Court also noted that at the interlocutory stage, the plaintiff cannot claim monopoly over the words ‘CPVC’ or ‘PRO’ (upon which conditions were imposed by the Trademarks Registry) either individually or in conjunction with each other/other words and these registrations cannot be relied upon by the plaintiff in the present suit for infringement.

Delhi High Court clarifies that the sporadic use of the trademark will not qualify as “continuous use” under Section 34 of the Trademarks Act.

Case: TTK Prestige Ltd. v. KK and Company Delhi Pvt. Ltd. and Ors., 2023/DHC/001280

The plaintiff which was involved in the kitchen home appliances industry has had several registrations of the trademark ‘PRESTIGE’ in various Classes since 1955 and had filed a suit seeking a decree of permanent injunction against the defendant which is engaged in the business of ‘gas stoves’. The defendant on the other hand argued that they have been using the mark since 1981. However, the Court was of the view that the defendant has at best shown sporadic use of the impugned trademark, which would not qualify it as a ‘continuous user’ in terms of section 34 of the Trademarks Act. The Court observed that the use of the trademark ‘PRESTIGE’ by the defendant in respect of ‘gas stoves’ is likely to cause confusion in the market as the public at large would associate the said products of the defendant with the plaintiff and a prima facie case of infringement as well as passing off is made out on behalf of the plaintiff.

Delhi High Court modifies the impugned order taking away the permission to the defendant to inter alia cross-examine the plaintiff’s witness despite not filing the written submission.  

Case: Central Park Estates Pvt. Ltd. vs Provident Housing Limited on 14.02.2023 (Delhi High Court) 

The Plaintiff sought a review of the impugned order in so far the opportunity to file a list of witnesses and lead, despite its failure to file the written statement. The court observed that in the absence of written statement, under the guise of cross-examination and purported demolition of Plaintiff’s case, the Defendant would not be entitled to lead any evidence of his own nor can his cross-examination be permitted to traverse beyond the very limited objective of pointing out the falsity or weaknesses of Plaintiff’s case.

Considering the nature of services provided by the Respondent, Delhi High Court grants it an opportunity to defend against the request for interim injunction.

Case: Birla Institute Of Technology And Science, Pilani vs Maa Bhagwati Educational Society And Anr., on 22. 02. 2023 (Delhi High Court)

 The plaintiff, BITS Pilani, holds certain registrations under the Trade Marks Act, 1999 including that  of the acronym ‘BITS PILANI’. They were aggrieved by the defendants’ use of the device mark ‘BITS Ghaziabad’ (an acronym of Bhagwati Institute of Technology and Science). The Plaintiff had filed suit in the Delhi High Court since the brochure of the defendants’ institution specifically indicated that the defendants are targeting the Delhi NCR region. In 2011, a First Examination Report (FER) issued by the Trade Marks Registry had objected to the defendants’ application for registration of the device mark BITS PILANI, subsequent to which the application was rejected. The Court noted that there was a prima facie case of infringement but owing to the fact that the defendant is an educational institution that involves the welfare of students permitted the defendants to file the written statement to respond to the application seeking stay before taking a decision thereon.

Delhi High Court passes an ex-partie interim injunction restricting the Defendant from suing ‘American International School’ mark.

Case: American International School Chennai vs American International School Greater Noida and Ors. on 16.02.2023 (Delhi High Court)   

In this case, the Delhi High Court prima facie held that the use of the trade name ‘American International School’ by the defendant amounted to infringement of the registered trademarks and device marks of the plaintiff and passing off the business of the defendants as that of the plaintiff’s. The Court also observed that the balance of convenience was in favour of the plaintiff and that irreparable harm would be caused not only to the plaintiff but also to the public if an ex parte ad interim injunction as sought is not granted in their favour.

A Division Bench of Delhi High Court stays the Single Judge order passed in Anubhav Jain v. Satish Kumar Jain on Section 124.

Case: Satish Kumar Jain vs Anubhav Jain & Anr, on 17. 02. 2023 (Delhi High Court)

The appellant approached the court arguing that the single judge’s order remanding the rectification application of the Respondent no. 1 under Section 125 and Section 57, was based on an erroneous interpretation of the Trademarks Act.  The division bench issued notice to the respondent and stayed the operation of the stay order. The single judge was discussed on the blog here.

Delhi High Court refuses to grant interim injunction to BOLT Technology Ou for lack of transborder reputation.  

Case: BOLT Technology Ou vs. UJOY Technology Private Limited & Anr. on 24.02.2023 (Delhi High Court)

The Delhi High Court refused to grant interim injunction in favour of the plaintiff for use of the mark ‘Bolt’ in electronic vehicle charging stations in India by the defendant. The court considered that the plaintiff does not have any presence in India and does not enjoy a transborder reputation in the country.

Other IP Developments

India ranks 42 in 55 countries on International IP Index released by the US Chambers of Commerce.
Indian Pharmaceutical Alliance asks USTR to keep India out of ‘Priority Watch List.’
Delhi HC restrains freelance reporter from using ‘Kesari TV’ logo.
Supreme Court refuses to interfere with the EC order allocating Shiv Sena name, symbol to Eknath Shinde  led group.
Supreme Court begins live transcription of proceedings, with the help of AI, for first time.
NIPER Hyderabad bags patent for nano formulation of lung cancer drug osimertinib.
Patent office grants patent to MSD for HCV drug, rejecting pre-grant opposition of Natco.

International IP Development

US Federal Judge rejected Meta’s request to throw out a USD 175 Million jury patent verdict for walkie talkie app. Maker Voxer.
North Carolina jury hit Vivint with $189.7 million verdict for stealing CPI Security Systems Inc’s customers.

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