[This Weekly Review is co-authored with SpicyIP Intern Sidhi Pramodh Rayudu. Sidhi is a final year B.A. LL.B (Hons) student at Hidayatullah National Law University, Raipur. He is interested in IP law, and commercial and criminal litigation.]
From different arguments on AI as a co-author of a work to the type of applications filed abroad for which information is required to be filed u/s 39, we had some engaging posts on this blog this week. To read these, along with a round up of IP developments around the country, and world, read on below.
Highlights of the Week
Following the cancellation of the preliminary exams conducted by the QCI, the recruitment of 553 patent examiners has been re-notified, this time with the assistance of NTA. But why did this change in organizers occur, and how were examiners recruited previously? Read this post by Praharsh and Swaraj to find out more.
Delhi High Court Comes Down Heavily on the Patent Office for Delay in Passing the Order
DHC comes down on the Patent Office for a four-year delay in issuing an order. Read this post by SpicyIP intern Jyotpreet on what this means for the delays in patent prosecution timelines.
Can AI (co)author art? US Copyright Office says no to “RAGHAV”s work, even as the same work remains registered as a copyright in India. Read this post by SpicyIP intern Vedika, to know more.
Can AI Generated works be regarded as “works” capable of protection under copyright law? Dr. Anson Jose undertakes an in depth discussion on this based on existing scholarly literature.
Other Posts
MHC Interprets Section 39’s Interplay with Patent of Addition Applications
Is it necessary to keep the Patent office in the loop about patent of addition applications filed abroad? Recently, the MHC clarified its position on this. Read Yogesh’s post on this.
Highlighting the role of behavioral science in trademark litigations, Mathews argues that the terms “make” and “dial” invoke different emotions and thus do not cause confusion.
NALSAR’s Indian Journal of Intellectual Property Law (IJIPL) is inviting submissions for its 14th Volume. The last date for submission of entries is February 29, 2024. Visit this post for further details and submission guidelines.
Case Summaries
Ajay Polymers vs Vibhor Aggarwal Trading As Feenulax Hitech Amritsar on 7 December, 2023 (Delhi High Court)
The plaintiff filed a suit against the defendant alleging trademark infringement over their use of “UNNATRAVINDRA” for similar pipes and pipeline products. The plaintiff argued that the defendant’s mark was deceptively similar to their “RAVINDRA” mark. However, the plaintiff had not discloses the fact that they have filed two prior related suits in Hisar, Haryana, seeking similar relief. The court found the plaintiff guilty of concealing material facts and imposed a cost of INR 1 Lakh on them.
Calvin Klein Trademark Trust & Anr vs M/S Guru Nanak International & Ors. on 8 December, 2023 (Delhi High Court)
The plaintiff filed a suit against the defendant alleging trademark infringement and selling counterfeit products bearing ‘Calvin Klein’ and ‘Tommy Hilfiger’ marks. The court had granted an ex parte ad interim injunction in 2020. Later, the plaintiff settled the dispute with other defendants, except Defendant No.5, who was still found to be manufacturing the impugned products. The court appointed a local commissioner to execute a commission on the premises of Defendant no. 5 and on the basis of the report calculated and imposed notional damages worth INR 10 Lakhs and imposed INR 1 Lakhs as costs.
Emerson Process Management Power and Water Solutions Inc. vs Controller Of Patents on 8 December, 2023 (Delhi High Court)
Emerson’s appeals under Section 117A of the Patents Act, 1970, contest the rejection of patent applications (Nos. 1253/DEL/2006 and 4197/DEL/2015) related to computer software based on earlier guidelines of the patent office. The rejection was based on the argument that the associated hardware lacked novelty and inventiveness. The court acknowledged that the requirement of novelty of the associated hardware has been omitted in the latest CRI guidelines and thus set aside the impugned orders. The court also remanded both applications for reconsideration.
Dabur India Limited vs Mi Lifestyle Marketing Global Pvt. Ltd. on 8 December, 2023 (Delhi High Court)
The dispute pertained to the alleged similarity between the trade dresses of the plaintiff’s “DABUR RED” toothpaste and the defendant’s “ELEMENTS RED HERBAL” toothpaste. The defendants proposed a new packaging, asserting that it doesn’t infringe the plaintiff’s trademarks. The court assessed the similarity of the proposed labels under s.17, 29(2)(b) and applied the anti-dissection rule and consequently, found them to be distinct.
M/S Loreal S.A vs Ravi Gandhi & Anr on 7 December, 2023 (Delhi High Court)
The appellant challenged the modification of an injunction allowing the defendants to use the word “MABELLE” in their company name and business communications. The Division Bench observed the District Judge proceeded on the premise that the word “MABELLE” can be used as a corporate name, but clarified that under Section 16 of the Companies Act, such a blanket protection is not permitted. The court further held that the use of “MABELLE” will fall under the ambit of Section 29 (6)(d) of the Act and thus set aside the impugned order.
Kd Gold And Diamonds Private vs M/S.Khimji & Sons on 11 December, 2023 (Orissa High Court)
An appeal was filed against the order of the District Judge granting the respondent an interim injunction and restraining the appellant to use “Khimji Jewels” and “Khimji” marks. The parties are cousins and in 1999 had agreed earlier that they can use the word “Khimji” with addition or deletion of words for their respective businesses. The plaintiff- respondent started using “Khimji” / “Khimji & Sons” therefrom and registered the same as trademarks. On the other hand the defendant-appellant started using “M/S. Khimji Dayabhai Co.”, without any registration and later in 2020, they applied to register “Khimji Jewels”. The court held that the plaintiff-respondent has been the prior and continuous user of the mark “Khimji” and the defendant has been using the mark “Khimji Dayabhai Co.” and thus cannot claim rights over the word “Khimji” independently.
Institute Of Directors vs Worlddevcorp Technology and Business Solutions, 11 December, 2023 (Delhi High Court)
The plaintiff had registered its device mark containing the words “Institute of Directors Building Tomorrow’s Boards”, and claimed that the Defendant’s use of the words “Director’s Institute” in its logo was deceptively similar to its mark. The defendant highlighted an admission by the plaintiff during the trademark prosecution that the words in the mark were “common English words” of descriptive nature. The Court held this to be a valid admission that would, at the prima facie stage, act against the plaintiff, though it may be contested at the trial stage and thus refused to grant an interim injunction.
Henry Harvin India Education Llp vs Abhishek Sharma & Ors., 11 December, 2023 (Delhi High Court)
The petitioner alleged that the respondents, who had previously been employed by the Petitioner, were using their user databases constituting trade secrets, and their course modules which are protected under copyright. The petitioner also contended that the defendant violated the non compete clause of their employment agreement by setting a rival firm and was also poaching their clients. The Court observed that there is a need to balance the necessity of granting the interim relief with the principles governing non-compete clauses. Therefore, the court granted an interim injunction restricting the defendant from using any confidential information or course materials allegedly obtained during their employment with the Petitioner, and from contacting the Petitioner’s clients for competitive purposes. The court admitted that the non-compete clauses post termination should be assessed carefully and thus ruled that the interim injunction will not prohibit the professional activities of the respondent but is aimed at preventing the alleged actions that directly impacts the petitioner’s copyright information and client relations.
Google Llc vs Makemytrip (India) Private 14 December, 2023 (Delhi High Court)
A Single Judge bench of the Court had previously held that the use of trademarks ‘MakeMyTrip’ and ‘MMT’ of the Respondent as keywords by Google in its advertising services would constitute infringement of the Respondent’s mark. Setting this decision aside and reiterating the decision in Google LLC v. DRS Logistics (P.) Ltd. and Ors., the Court held that such usage would amount neither to infringement of the trademark, nor taking of unfair advantage of the Respondent’s mark.
Body Cupid Pvt Ltd vs Ms Vbro Skincare Pvt & Ors., 13 December, 2023(Delhi High Court)
The plaintiff was engaged in selling personal care products under the registered trademark ‘WOW’ and it was alleged that the defendant was selling similar products under the marks ‘VBRO’ and ‘WQVV’ with identical trade dress, colour combinations etc. as the plaintiff’s mark. The Court held that the way of depiction of the defendant’s marks was deceptively similar to that of the plaintiff, and restrained the defendant from using the same by passing the interim injunction order.
Ralson India Limited vs Sham Lal M/S Ramesh Lal And Sons And on 8 December, 2023 (Delhi High Court)
An appeal was filed against the order of the Trademark Registry, dismissing the opposition filed by the appellant. The opposition was dismissed for non filing of evidence in support of the opposition however the applicant argued that they have not received the counter statement at the address of service. Contrary to this, the respondent argued that the service took place via email given in the relevant TM-M. The court interpreted Section 145 and Rules 17-19 to rule that address for service would include a valid e-mail address and service through e-mail communication shall be deemed to be service.
The Court granted an interim injunction to the plaintiff alleging similarity between the “Lahori Zeera” trade dress of the plaintiff and “PNS Lahori Zeera” trade dress of the defendant. The court held that the labels are almost identical and the FSSAI no. on the defendant’s products are also fake. Relying on the decision in Dominos Ip Holder LLC & Anr. vs Ms Dominick Pizza & Anr. the court held that in case of food products/ beverages the courts must be vigilant and thus passed the present order restraining the defendants.
The plaintiff sought cancellation of the defendant’s “Boss” copyright registration alleging its similarity with its “Boss” trademarks. Though the trademark registry has earlier refused to grant a registration to the defendant’s “Boss” mark, it granted them a “No objection certificate” with a search certificate stating that no similar mark existed on the record of the Register of the Trade Marks. Relying on this, the defendant was able to obtain the impugned copyright registration. Discussing the interplay between trademark and copyright protections, the court inter alia held that the search report was clearly defective and allowed the petition directing to cancel the defendant’s registration.
M/S Suman International & Anr. vs Mahendra Gulwani & Anr. on 14 December, 2023 (Delhi High Court)
An appeal was filed against the decision of the Commercial Court granting an interim injunction to the respondent and restrained the appellant from using the mark “Sweet Rose Lollipop”, its trade dress, and the rose shape for its products, holding them to be deceptively similar to the respondent’s “Madhur Rose Pop Lollipops” marks and product. The High Court set aside the impugned order holding that the competing word marks and the trade dress are not deceptively similar. For the shape mark, the High Court held that “rose” shape for confectionary items is generic and thus held that the appellant cannot be restrained for using the same.
Berger Paints India Limited vs Jsw Paints Private Limited on 12 December, 2023 (Calcutta High Court)
The plaintiff sought an injunction against the use of “Halo Silk” mark by the defendant claiming the same to be deceptively similar to it’s “Silk” marks. The defendant argued that it was using the term “Silk” as a description and not as a mark. The court compared the two marks and held that the same are not deceptively similar. The court also observed that the term “Silk” was common among emulsion manufacturers as a description of their goods and thus refused to grant an injunction to the plaintiff.
The suit alleging trademark infringement was instituted by a director of the plaintiff against a fellow director, another company incorporated by the fellow director, former employees, and investors of the plaintiff. In the present order the court restrained its finding against the fellow director and the company incorporated by them. It was alleged that the above defendants were using the plaintiff’s mark “Brine” for similar services. The defendant alleged that the plaintiff has not approached the court with clean hands by concealing about a NCLT proceeding between the parties and that the defendant’s use of the mark will fall under the ambit of permitted use. The court granted an interim injunction to the plaintiff holding that the NCLT proceedings were not material and were instituted after the present suit and that the defendant has not substantiated its arguments regarding permissive use.
Khaitan India Limited vs Khaitar Industries Private Ltd. on 14 December, 2023 (Calcutta High Court)
The plaintiff sought an injunction against the defendant’s use of its trademark “Khaitar” which was alleged to be deceptively similar to the plaintiff’s “Khaitan” trademark. The court compared the two marks and held that they are phonetically, visually and structurally similar and granted an interim injunction in the favor of the plaintiff.
The Delhi High Court restrained the defendant from using “House of Pathology” mark and held it to be deceptively similar to the plaintiff’s “House of Diagnostics” mark. The court refused the defendant’s argument that the term “House of” is publici juris and held it to be arbitrary for diagnostic services.
An appeal was filed against the respondent’s order restraining the appellant from publishing its advertisement on the ground that the latter’s claim of its tooth paste being “world’s no. 1 ayurvedic toothpaste” is misleading. The court held that puffery in advertisements is allowed as long as the assertions made are reasonable. The court further held that the respondent should have given some credence to the evidence filed by the appellant before it, backing its above claim, and thus allowed the plaintiff to advertise its product with the modification ‘world’s leading ayurvedic paste” instead of “No. 1 ayurvedic paste”.
Other IP Development
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- Source: https://spicyip.com/2023/12/spicy-ip-weekly-review-december-11-to-december-17.html
