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SpicyIP Weekly Review (May 15- May 20)


May 22, 2023

[This Weekly Review has been co-authored with Surmayi Khatana. Surmayi is a second year student pursuing LL.B from Government Law College, Mumbai. Her previous post can be accessed here.]

Here are the quick summaries of the 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 different High Courts? Please let us know so we can include them!

Highlights of the Week

DHC’s IPD Annual Report a Positive Step for Transparency – Here’s How It Could Go Further

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To mark the occasion of World IP Day, Delhi High Court’s IPD released its annual report 2022-23 on April 24, 2022. Among other things like comments from who’s who of the IP world and summaries of landmark orders, the report also had a dedicated chapter on the performance of the IPD in the past 1 year. Praharsh Gour writes about this chapter, analyzing the given data on cases filed, disposed of, and pending before the IPD and comments on the existing ambiguities therein.

Special 301 Report 2023: Reflections from Public Health Perspective

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USTR places India on the ” Priority Watch List” Again! On April 26, 2023, USTR released its Special 301 Report, placing India on the “Priority Watch List” and thus, under threat of a unilateral trade sanction. One of the long-time ask of the US from India is to amend its patent laws with respect to certain safeguards like Section 3(d) and oppositions and the USTR has consistently cited these as a few of the major reasons for placing India in the above list. In this guest post, Prof. Prabhat Kumar Saha discusses what were the key reasons for placing India on the list this time around, and assesses if the same were justified from a public health perspective.

Other Posts

Understanding the International Guide to Patent Case Management for Judges by WIPO

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A look into the India chapter of WIPO’s new patents case management guide. Recently, WIPO released a bulky International Guide to Patent Case Management for Judges with insights from judges of 10 patent-heavy jurisdictions including India. The chapter on India has been authored by J. Madan Lokur, J. Gautam Patel, J. Pratibha Singh and J. Manmohan Singh. While the report lucidly discusses the technical and complex aspects of the Indian patent regime and the court proceedings involved therein. SpicyIP Intern Devanshu Agrawal writes that it could have benefitted from discussions around key issues like loosely granted interim injunctions, and the issues in disposing of applications by the Patent Office.

SCOTUS Sundae: Large Scoops of Weekend IP Reading!

Prompt to OpenArt: Pop art of the Supreme Court of USA

As a special treat for our readers to beat the summer heat, Gaurangi Kapoor highlights some interesting commentaries on the landmark IP decisions passed last week by the SCOTUS in Andy Warhol Foundation for Visual Arts, Inc vs Goldsmith, Amgen vs Sanofi, Twitter vs Taamneh and Gonzalez vs Google.

Case Summaries

Delhi High Court passes a permanent injunction restraining use of ‘Betnol’ mark by Defendant and also imposes costs of 5 lakhs on them. 

Case: Glaxo Group Limited vs Biogen Serums Private Limited on 10 May, 2023 (Delhi High Court)

The Delhi High Court granted an ex-parte permanent injunction to the plaintiff, restraining the defendant from using the impugned mark ‘Betnol’ and imposed INR 5 Lakhs as costs on them. The plaintiff, proprietor of the “Betnesol ” mark, filed the present suit arguing that despite serving a cease and desist notice the defendant is using the impugned mark. The court compared the competing marks and held that the defendant was using the impugned mark to springboard its business and thus the adoption of impugned mark not only infringes the plaintiff’s mark but also amounts to passing off.

Delhi High Court sets aside the impugned order holding that the amendment by the applicant does not increase the scope of the claim but rather makes it clearer.

Case: Sony Group Corporation vs Assistant Controller Of Patents on 8 May, 2023 (Delhi High Court)

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The court set aside the impugned order holding that the addition of a separate feature to the original claim is beyond the scope of original claim. The court further held that the addition in the principle claim is an additional limitation to the said claim, making the claim more specific and clearer. The court further clarified that the appellant having filed the subject application in respect of two inventive concepts, which was permissible in terms of Section 10(5) of the Act, was at full liberty to give up claims in respect of one of the inventions and only pursue one of them that corresponded with the divisional application of the European patent.

The Delhi High Court sets aside an order pertaining to rejection of Trademark on basis of lack of inventiveness and name of a geographical location.

Case: Abu Dhabi Global Market vs The Registrar Of Trademarks, Delhi on 18 May, 2023 (Delhi High Court)

The Delhi High Court set aside the impugned order rejecting the trademark application on the grounds that the subject application was not coined nor invented and used a geographical name. The court held that distinctiveness is a prerequisite for registration of a mark but inventiveness is not, as per Sections 9 and 11. The court further held that the subject mark was distinctive since the appellant’s logo is registered already. With regard to the use of geographical location, the court assessed the mark overall and held that “Abu Dhabi” is only a part of the composite mark and set aside the impugned order. 

Delhi High Court clarifies that the inaction at the time of advertisement of the trademark will not divest a party from seeking relief of rectification u/s 57. 

Case: Fybros Electric Pvt Ltd vs Mukesh Singh & Anr. on 18 May, 2023 (Delhi High Court)

The Delhi High Court allowed a rectification petition by the petitioner, proprietor of “Fybros” seeking the removal of the respondent’s “Pbros” mark. The court held that both the marks are phonetically similar and also considered that the marks are used for identical goods. On the respondent’s argument that the petitioner did not oppose its mark after it was advertised, the Court clarified that inaction at the time of advertisement does not divest the petitioner’s right to seek rectification.

Delhi High Court sets aside the impugned order rejecting the patent application u/s 3(k), clarifies that technical effect and contribution of the claimed invention must be considered while reading CRI applications.

Case: Microsoft Technology Licensing LLC vs The Assistant Controller Of Patents and Design on 15 May, 2023 (Delhi High Court)

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The Delhi High Court set aside the impugned order rejecting the patent on an invention titled “Methods and Systems for authentication of a user for sub-locations of a network location” and remanded the matter back for reconsideration.  The respondent had rejected the application u/s 3(k) holding the same to be an algorithm. The court disagreed with the understanding of the respondent and held that the rejection stems from an oversight of the technical effect and contribution of the claimed invention. The court held that the invention offers a novel and inventive technical solution to a security problem and not only provides a two-tier authentication process but also improves the user experience. 

Delhi High Court passed an ex parte interim order, restraining the owner of Sartaaj Singh’s “Jalsa” song from issuing any threats of legal proceedings or copyright strikes to the plaintiff.

Case: Saga Music Private Limited & Anr vs Sony Music Entertainment India on 15 May, 2023 (Delhi High Court) 

The dispute pertained to the plaintiff’s use of the work titled “Sydney Opera House Live Concert by Sartaaj Singh” which inter alia contains a work titled “Jalsa”. The defendants, who alleged to own the rights in “Jalsa”,  issued notice to the plaintiff threatening them against the use of their “Sydney Opera House Live.. ” work. After assessing the case, the court passed an ex-parte interim injunction, restraining the defendants from issuing any groundless threats of copyright strikes or initiating legal proceedings against the plaintiff.

Delhi High Court vacates the ex-parte interim injunction granted to Mr. Dhananjay Rathi, and imposes costs of INR 5 Lakhs on the plaintiff for pecuniary loss and prejudice to the reputation of the defendant.

Case: Mr. Dhananjay Rathi vs Shree Vasu Steels Private Limited & Ors on 15 May, 2023 (Delhi HC)

The Delhi High Court vacated the ex-parte interim injunction restraining the defendants from using Rathi marks. The defendants are the authorized users, who were assigned to use the Rathi marks by Rathi Research Center (a trust established by the 2nd MoU executed by different members of Rathi Family) whereas, the plaintiff is a member of the Rathi Foundation which is a Trust established by 1st MoU between the Rathi Family members. The court considered that both the competing parties enjoy trademark registrations on “Rathi” marks and in light of sections 28(3) and 30(2)(e) of the Act, the use of the registered trademark by one of the registered proprietors wouldn’t amount to infringement. The court further imposed costs of INR 5 lakhs on the plaintiff for causing pecuniary loss and prejudice to the reputation of the defendant.

Delhi High Court clarifies that infringement proceedings can be instituted in the pendency of a post-grant opposition.

Case: Astrazeneca Ab & Anr. vs Westcoast Pharmaceutical Works Limited on 15 May, 2023 (Delhi High Court)

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The dispute pertained to the alleged infringement of Osimertinib by the defendant. The defendant inter alia relied on the Supreme Court’s decision in Aloys Wobben v. Yogesh Mehra to argue that until the pending post-grant oppositions are disposed of, the plaintiff cannot file an infringement suit. Rejecting the defendant’s argument, the court held that the Aloys Wobbens case pertained to a separate matter of facts and was not concerned with post-grant oppositions. The court further ruled that if the above interpretation is allowed then the protection granted to the patentee against the infringement will be ineffective till the post-grant opposition are disposed of.

IP Development

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First in the country: Facilitation Centre for protecting traditional art forms through GI tagging

Delhi High Court Orders Permanent Injunction Against Use Of ‘Miss India’ Mark by Planet Media Group In Case Filed By Times Group

Supreme Court dismisses the appeal against a Delhi High Court’s Division Bench order restraining the use of the mark “Dil Afza.”

UP follows Tamil Nadu with the second most GI tags in the country

Indian IT minister asserts the need to bring a cooperative framework to regulate generative AI platforms. 

Kangra tea becomes the second Indian product to enjoy GI tag in the EU.

Delhi High Court relies on the Wayback Machine to hold the defendant liable in the Sugen Crizotinib  patent case.

Holding “similarity of one word cannot be taken as infringement or passing off” Punjab and Haryana High Court dismisses Pernod Ricard’s request for an injunction against United Spirits’ use of “Royal Challenger American Pride.”

International IP Development

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G7 calls for adoption of international technical standards for AI.

US Supreme Court rejects Teva challenge to $235 million GSK award in patent dispute

Ed Sheeran wins second copyright case on “Thinking out loud”.

Taco Bell files a petition before the US Trademark Office to cancel Taco John’s “Taco Tuesday” trademark. 

Danish Supreme Court sets aside the orders of two lower courts, holds that the depiction of the Little Mermaid statue in The Berlingske newspaper does not infringe the former’s copyright

Seoul Semiconductor Obtains Permanent Injunction Against Various LED Products For Patent Infringement In Europe.

CureVac files expanded patent lawsuit against Pfizer/BioNTech over mRNA technology

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