It’s been another IP heavy week for the Indian IP landscape! Here is the last week’s review, discussing the 5 posts published on the blog along with summaries of 16 IP cases from Delhi High Court and a few national and international 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

Copyright and Classical Music: Not the Best Fusion?

Akshat Agrawal, in the guest post, writes about the recent Kantara Copyright controversy and argues how it’s a classic case for application of doctrine of  scenes a faire. He explains that similarity between the two songs are similarity of the essential elements and common elements of classical music on which no copyright can be granted.

Book Review: ‘The Truth Pill: The Myth of Drug Regulation in India’

Aparajita Lath, reviewed the book titled ‘The Truth Pill: The Myth of Drug Regulation in India” co-authored by Dinesh S. Thakur and Prashant Reddy T. The post was  originally published on Bill of Health, the blog of Petrie-Flom Center at Harvard Law School.

Other Posts

Copyrighting The Uncopyrightable – The NSE Saga

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Kartik Sharma and Aditya Singh, in this guest post, discuss the copyright questions arising from National Stock Exchange (NSE)’s move to issue cease and desist notice to various stock gaming app. They assess the above question from the lens of ‘Modicum of Creativity’, ‘Merger Doctrine’ and ‘Functionality’ to see if the move is justified and if the NSE can actually claim any copyright over the dataset.

SpicyIP Tidbits: Request for an Interim Order in Nokia-Oppo SEP Case Refused; Unclean Hands Doctrine Used in Medicinal Product Trademark Case

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Writing on two recent IP developments, Swaraj and I highlighted the Delhi High Court’s order refusing to grant an interim order in the ongoing Nokia v. Oppo litigation. We then discussed another order by the Delhi High Court, where despite holding that the Plaintiff appeared with ‘unclean hands’, the court confirmed the ex-parte injunction on public interest grounds.

Forzest v. Folzest: DHC’s Quest for Setting the Balance Right

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I write about the recent Delhi High Court’s order granting interim injunction to the Plaintiff despite holding it guilty of approaching the court with ‘unclean hands’. In this regard, I discuss court’s deference to public interest while comparing trademarks of medicinal goods and its interpretation of ‘family of marks’ principle and its application as a defense to the Defendant.

Case Summaries

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Delhi High Court passed an ex-parte interim injunction in favor of the Plaintiff, restraining the Defendant from using marks deceptively similar to ‘Dream 11’ and ‘FanCode’, which are registered in favor of the Plaintiff. The court inter alia considered the registration of the Plaintiff’s marks, magnitude of mobile installations for the applications bearing the above trademarks and the partnerships that the Plaintiff has entered into with other sports associations, to pass the injunction order.

The court rejected the Plaintiff’s application seeking leave to file additional documents, holding that the additional documents pertain to the period before the filing of the suit.  The court opined that if the plaintiff is allowed to file these documents, it shall be antithetical to the legislative mandate of the Commercial Courts Act which is to expedite disposal of suits.

Commercial Court in Mansa granted the Plaintiff an interim injunction, restraining the Defendants from releasing or publishing the song ‘Jaandi Vaar’ which was composed by the former’s son- late Sidhu Moosewala. The Plaintiff alleged that the song was composed and sung by their deceased son in 2018 and there was no agreement between him and the Defendant regarding transfer of ownership. The Defendants argued that late Sidhu Moosewala’s work was co-authored by him and Afsana Khan (a non-party to the suit) and thus no exclusive ownership lies with the former. The court held that the Defendant at this stage did not establish that they had employed the deceased singer or Ms. Afsana Khan to compose the original song and prima facie found that the new song to be similar to the old one. The court further held that after the singer’s demise, the ownership of the copyright lies with his parents.

Delhi High Court passed a summary judgement, under Order XIIIA CPC, in favor of the Plaintiff, injuncting the Defendant from using the mark ‘Shopibay’ without holding a trial. The Defendant did not appear in the hearings nor did it file any written submissions and thus, the court decided the case to be fit for proceeding ex-parte and passing summary judgement. The court in its assessment held the Defendant’s mark to be deceptively similar to the Plaintiff’s mark ‘Ebay’.

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Delhi High Court passed a summary judgement, under Order XIIIA CPC, in favor of the Plaintiff, injuncting the Defendant from using an identical mark ‘Frappuccino’. The Defendant did appear once but did not turn up in subsequent proceedings nor filed any written submissions. And thus, the court deemed the matter fit to proceed ex-parte, injuncting the Defendant from using a mark that is identical to the Plaintiff’s mark ‘Frappuccino’.

The Plaintiff had sought injunction against 12 Defendants, from using similar marks as its registered mark ‘Volvo’. The suit was previously settled and decreed with regard to Defendant no. 1 to 3, 8, 10, 11 and 12 and the suit survived against Defendants 4 to 7 and 9. The above five Defendants remained ex parte. The Plaintiff was unable to show infringement by Defendant 4, 5 and 9 and thus, the suit with regard to these Defendants failed. With regard to Defendant 6 and 7, the Plaintiff was able to show that the Defendants were using deceptively similar mark ‘VOIVO’ and ‘VLCVC’ and since Defendant 6 and 7 were ex-parte, the court granted the injunction in favor of the Plaintiff.

The Delhi High Court refused the request to pass an interim order in favor of the Plaintiff, under Order XXXIX Rule 10 r/w Section 151 of the CPC holding that the agreement between the parties was on a counter-licensing basis and does not indicate admission by the Defendant about any liability towards the Plaintiff. The Plaintiff had alleged that the Defendant is using its SEPs and therefore had sought directions from the court for the Defendant to deposit an amount which shall represent royalty at FRAND terms.  However, the court, deferring to the communications between the parties, refused to acknowledge that there was unequivocal admission regarding the subject patents to be SEPs or that the rate of royalty sought by the Plaintiff was on FRAND terms.

Delhi High Court decreed the suit in favor of the Plaintiff via summary judgement, restricting the

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Defendant from using the mark ‘Plus’ along with the similar trade dress as that of the Plaintiff’s product sold under the mark ‘Pulse’. The Court compared the marks and the trade dress of the products and relying on Mondelez Foods India Pvt. Ltd. and Another v. Neeraj Foods Products,  reiterated that when a product is an eatable, sold over the counter and is not expensive, the colour scheme plays an important role in making initial choice. And while the consumer can realize its mistake later, the initial confusion can give rise to a cause of action for the tort of passing off, by creating an impression that the products belong to same companies. The Defendant did not appear nor filed a written submission causing court to pass a summary judgement in the matter.

Delhi High Court passed an ex parte interim injunction against the Defendant, restraining it from using identical trademark ‘Vistara TV’ in any form, including its “variations in other vernacular languages like Kannada”. The Defendant was using the device ‘Vistara TV’ in English and Kannada. The court acknowledged that Vistara is a well-known mark and found that the case fulfils the three factors test for interim injunction.

Delhi High Court heard the Defendant’s application for interim injunction against the Plaintiff from using marks ’M.G’, ‘M.G.I’ or M.G (device) and passed an order in its favor. The Defendant argued that the Delhi High Court’s division bench in a separate case (H S Sahni vs Mukul Singhal & Anr on 10 November, 2022) had passed an injunction order restricting the Plaintiff from using the above marks. Paying deference to the order of the division bench and to the fact that the Defendant’s products have been sold in India on a large scale, the court passed the present order.

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Delhi High Court referred the parties for mediation, as the Defendant was willing to amicably resolve the dispute. The Plaintiff has alleged that by comparing its product with similar trade dress as that of the Plaintiff’s ‘Parle-G’ product, the Defendant has disparaged and infringed the former’s mark.

Delhi District Court decreed the suit in favor of the Plaintiff, and ordered a permanent injunction restraining the Defendant from using ‘Monster Energy’ and its formative marks. The Plaintiff had also instituted contempt proceedings against the Defendant for violating the terms of interim injunction which was previously passed by the court. However, the court ordered the Defendant to pay Rs. 25000 to the Plaintiff as compensation, considering that the Defendant had later filed an undertaking of compliance to its previous order.

The Plaintiff sought an adjudication over interim injunction application against the Defendant for

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using the mark ‘Bolt’. Earlier the parties had resorted to mediation but could not reach a solution. Later, the Defendant proposed to modify its mark to ‘Bolt.Earth’ however the Plaintiff argued that the mark will still be deceptively similar to its mark ‘Bolt’. Owing to insufficient board to hold a full hearing for the day, the court listed the matter for hearing on a later date and ordered the Defendant, without prejudice to its rights and contentions, to use its modified mark for future expansion.

Delhi High Court decreed the suit in favor of the Plaintiff and ordered a permanent injunction restraining the Defendants from using marks ‘John Deere’ and ‘Torq-Gard’. The Defendant had filed a written statement and did not appear before the court for any hearings. Rejecting the averments of the written submission for lacking in defense, and considering that the Defendant did not reply to the application for a summary judgement, the court determined that it does not have any real prospect of successfully defending its claim and proceeded ex parte.

The suit was originally filed by the Plaintiff against leak of newspapers on different groups on

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Telegram. The court had initially passed an injunction order and had directed the Defendant to share the basic subscriber information/identity of the users/owners of the channels who have been impleaded as the Defendant no.2, with it. The Defendant argued that the same cannot be shared as its servers are located in Singapore and not India. Delhi High Court, relying on decision passed by it in Neetu Singh and Anr. v. Telegram FZ LLC  and others held that identity of users by Telegram is no longer res integra and directed the Defendant to file the above information in a sealed cover.

• Bristol-Myers Squibb Holdings Ireland Unlimited Company & Ors. v. BDR Pharmaceuticals International Pvt. Ltd. & Anr on 18 November, 2022 (Delhi High Court) (pdf)

Delhi High Court issued a strict warning to the Defendants for violating its interim injunction order passed on January 30, 2020 and cautioned it to be careful in the future. The Plaintiff alleged that despite the January, 2020 order, the Defendant  participated in tender for sale of Apaxiban on multiple occasions. The Defendant argued that there was an inadvertent mistake on its end and the same cannot be construed as a willful disobedience of the court’s order. The court held that due care was not exercised by the Defendant. However considering the lockdown and internal disruption in functioning of the company it cannot be said that the violations were willful and issued the above warning to the Defendant to be careful in the future.

Other Developments

International Developments

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• Source: https://spicyip.com/2022/11/spicy-ip-weekly-review-november-22-november-28.html