From an in-depth discussion on the terms of copyright and translations in India to the recent UK Supreme Court’s order regarding the patentability of inventions by an AI, 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
The Evolution of Copyright and Translation Terms in India: Part I- Framing the Debate
Discussing the history of the terms of copyright and translations in Independent India by sifting through the Parliamentary Debates, we are pleased to bring you this three-part post by Prachi Mathur. In part 1 of the post, Prachi discusses the relevant socio-economic context surrounding the parliamentary debates on the term of copyright.
Continuing the discussion on the terms of copyright, in Part II Prachi Mathur details the different perspectives among the parliamentarians on the terms of copyright considering the benefits for the author v. the larger public interest in assuring early access to the work.
After an in-depth discussion on the terms of copyright in India, Prachi Mathur writes about the evolution of the terms of translation in India highlighting the debate regarding the reduction of the term for translations from 25 years to 10.
Other Posts
Journey Through “Novembers” on SpicyIP (2005 – Present)
Sift through the pages of November(s) posts on SpicyIP in another round of SpicyIP flashbacks by Lokesh. In this month’s edition, he looks into topics including the Plant Variety Registry, different tales of/ takes on personality rights, and multiple leaks of key documents and their contribution in law-making.
UK Supreme Court Confirms No Patent for “AI-invented” Inventions
On December 20, the UK Supreme Court affirmed its previous decision to deny registration to inventions by Dr. Stephen Thaler’s AI DABUS, holding that an AI software cannot be listed as an inventor. SpicyIP intern Vedika discusses this development.
In a significant ruling concerning GIs, the MPHC clarified that a Registered Proprietor is not required to implead an Authorised User to file a GI infringement suit. For this, the court took an in-depth assessment of India’s obligations under TRIPS and the scheme of the GI Act. Read Jyotpreet Kaur’s post to know more.
In a recent ruling, the Delhi High Court held that the plaintiff prima facie cannot claim exclusivity over the words “Institute of Directors” holding it to be descriptive and refused to restrain the defendants from using the mark “Directors’ Institute”.
Case Summaries
M/s Blue Heaven Cosmetics Pvt. Ltd. vs Mr. Anish Jain Trading as M/s Navkar Cosmo on December 20, 2023 (Delhi High Court)
The Plaintiff contended that the Defendants had adopted identical packaging of its products, including eyeliner, kajal and mascara, and had only replaced the Plaintiff’s ‘GET BOLD’ mark with ‘NEW BOLD’, keeping the writing style and artwork identical. The court noted that the products involved are cosmetics, making it likely to deceive consumers, and held that a prima facie case was made out for grant of an ad interim injunction.
BSA Business Software Alliance Inc. vs Tube Investments of India Ltd. & Anr. on December 21, 2023 (Delhi High Court)
The Appellant filed an appeal against the order of the Trademark Registry allowing the opposition against the Appellant’s ‘BSA’ mark. The Respondent/ Opponent was a well-known Chennai based company using its registered BSA mark for selling bicycles and related goods. The Court allowed the appeal and permitted the Appellant to obtain registration of the mark after the parties agreed to a clear delineation between their goods and services in the various classes under which registration was being sought.
Inventprise Inc. vs The Controller of Patents & Anr. on December 20, 2023 (Delhi High Court)
The Petitioner, a US-based company, filed for patent over its ‘Heat Stable Liquid Rotavirus Vaccine’, but the National Biodiversity Authority communicated to it that prior permission of the NBA is necessary in cases where a patent is being sought for an invention based on any research or information on a biological resource obtained from India. The NBA subsequently approved the application with a higher benefit sharing component as it held that the Petitioner had violated S. 6 of the Biological Diversity Act. The Petitioner contended that the subject matter of the application did not qualify as ‘biological resource’ in the first place. The Court directed the NBA to determine whether the invention relates to biological resource with a reasoned order. If the Expert Committee, so opines, any senior official may be contacted from CGPDTM, who may also be present before the Exert Committee for rendering assistance.
Novartis AG vs Novotas Pharmaceuticals Pvt. Ltd. on December 20, 2023 (Delhi High Court)
The Plaintiff contended that a website run by Novotas Biotech, the erstwhile company, used a logo in similar colour scheme as the Plaintiff’s registered mark was active even though its status in the Registrar of Companies was struck off. The Plaintiff issued a cease and desist letter against the use of such marks and the Defendant agreed to settle the claim, but not to discontinue the use of its erstwhile company name. The Court decided that the names Novotas and Novartis are phonetically similar and could lead to deception of the consumer, and granted an ad interim injunction restraining the Defendant from using the mark as well as the colour combinations and packaging identical or similar to those of the Plaintiff’s products.
The Plaintiff owned 5 Standard Essential Patents (SEPs) relating to wireless communication technology which the Defendants were allegedly using in their mobile phones being sold under the brand name of OnePlus without the license to do so. The Plaintiff demonstrated several instances of communication to the Defendant regarding the same, but the Defendant adopted a ‘do not know’ position with respect to the technology in the chips, stating that they had procured them from a third party, Qualcomm Inc and only Qualcomm can confirm or deny these allegation. The Plaintiff sought a pro-tem order pending an application for injunction. The Court in order to balance the equities, directed the defendants to deposit Rs. 53.25 crores, which was 3/4th of the total claimed amount, as a pro-tem deposit.
Pharmacyclics LLC & Anr. vs Hetero Labs Limited & Ors. on December 21, 2023 (Delhi High Court)
The Plaintiffs were the licensees of a drug named Ibrutinib, which was also being manufactured and sold by the Defendants under various brand names. Following a post-grant opposition, the patent of the Plaintiffs was revoked, but this order was subsequently set aside by a judgement of the IPAB. The Defendants argued that the suit patent was invalid and that the Chairman of the IPAB who authored the judgement setting the said order aside was not competent to hold office since his tenure had expired. In opposition to this, the Plaintiffs sought to invoke the de facto doctrine and the Court agreed to uphold the validity of the IPAB judgement. On merits as well, the Court held that there was no ground for stay of the operation of the IPAB judgement, and the Plaintiffs’ suit patent was valid. The Court restrained the Defendants from manufacturing and marketing the drug, but given the importance of the drug in treating diseases such as cancer, allowed the Defendants to exhaust the stock available with them.
Institute Of Directors vs Worlddevcorp Technology and Business Solutions on 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 a 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. on 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 on 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. on 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 had 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 the 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 the 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 had 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 from 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 its “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 had not approached the court with clean hands by concealing an NCLT proceeding between the parties and that the defendant’s use of the mark would 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”.
Himalaya Wellness Company & Ors. vs Prk Productions Llp on 15 December, 2023 (Delhi High Court)
Himalaya Wellness Company filed a suit against the producers and distributors of the Kannada film ‘Aachar & Co. for unauthorized depiction and distortion of TM of its products. The defendant proposed an alternative which was accepted by the Plaintiff. On the basis of this agreement, the Delhi High Court directed to obscure the logo for some portion and delete certain scenes featuring the product. While disposing the suit, the court directed that the new version of the film should be submitted to the Censor Board for approval and certified new version shall replace the current version before 15th March 2024.
Societe Des Produits Nestles.A vs Mohd Zahid And Sons & Ors on 15 December, 2023 (Delhi High Court)
This lawsuit for counterfeit sale, initiated by Nestle Group in 2014, has now expanded to over 200 defendants. Under the 2014 order, over 212 defendants have been decreed against and paid Rs.6,000/- as damages. Given that over a decade has passed and the list of defendants kept on increasing, the order acquired status of a John Doe order. The court observed the ineffectiveness of the process so far and has permanently restrained all defendants from selling counterfeit Nescafe products. The court also kept the option of impleading more defendants open by directing the Plaintiff to file an affidavit before the joint registrar thereafter a local commission may be executed upon the satisfaction of the joint registrar. The matter is listed for May 2024 next to consider whether the suit needs to be continued or not.
New Balance Athletics Inc. vs Jitender Kumar on 12 December, 2023 (Delhi High Court)
In a dispute concerning allegation of infringement of the Plaintiff’s New Balance “N” logo, the defendant agreed to withdraw its trademark applications for the impugned mark and modify/ restrict the use to only the mark “Earth Step”. The court decreed the suit on above terms restraining the defendant from using the N mark, directing them withdraw applications for the deceptively similar marks and imposed a cost of INR 2 lakhs. Furthermore, the court declared the defendant’s ‘N’ mark as a well-known mark.
Jockey International Inc vs Domain Administrator & Ors on 13 December, 2023(Delhi High Court)
In this dispute, the Plaintiff Jockey International Inc alleges disobedience by Defendant 9 against earlier court orders that restrained the use of specific domain names, including www.jockeystorefranchise.com. The defendant claims that they are only facilitating transfer of domain names and not engaging in any other commercial use of the domain. Interpreting “use of a mark” and section 29 of TM Act, the court held ruled that such facilitating domain transfer also falls under form of use and hence, barred by earlier orders.
Hi Tech Arai Private Limited vs Paul Components Private Limited on 19 December, 2023 (Delhi High Court)
The Plaintiff, claiming to be the prior user, alleged passing off by the defendant via using a similar packaging for its “HTA oil seals” product. The defendant has registration over the “HTA Oil Seals” mark but agreed that till the next date of hearing it will not use the impugned outer packing. With regard to the inner packing of the product, the Plaintiff argued that the defendant has never used its logo with the words “HTA Oil Seals” written in red and the concentric circles in which the words are encased. The court observed that there was no argument in the plaint that the product is available loose, within just the inner packing. However, the Plaintiff argued that given the nature of the product and details noted in the inner packing, there is a possibility that the products are sold loose. Considering the above, the court held that the defendants are entitled to file a response before any interim injunctive orders are passed.
This suit for copyright infringement by was filed by Bentley Systems Inc. and Bentley Systems India Pvt. Ltd against the defendants for use of pirated versions of structural engineering software, PLAXIS 2D and PLAXIS 3D. The Plaintiffs confirmed 36 pirated software versions being used through `phone home’ technology, a cyber-security mechanism that ensures compliance with End User License Agreement (‘EULA’) despite the defendants evading detection through VPN. The Plaintiffs have issued notices and reached out for mediation which failed, thus this suit for interim injunction. The court found prima facie case against the defendants passed injunction restraining use of said tools.
Bennett, Coleman And Company vs Fashion One Television Llc 820 on 18 December, 2023 (Delhi High Court)
The petitioner challenged the registration of defendants TM ending with “NOW” asserting it infringes the family of marks owned by the Plaintiff. The court relied on a catena of precedents and S. 17(2)(a), applying the anti-dissection rule and concluded that “Now” was dominant part of the mark, and quashed the respondent’s registration under class 38.
The Plaintiff is a hotel company holding the trademark “GINGER”. The Plaintiff alleges that domains such as www.gingerhotelmumbai.info, run by unknown defendant cause confusion and deceive consumers. Thus, they sought an injunction against various ancillaries to the defendants such as the registrant, domain registrar such as NameCheap, banks and telecom service providers. The court issued interim orders against the defendants, directing to suspend the infringing domain names, freeze bank accounts of the defendants and block the phone numbers of the registrant of the domain name.
Apollo Tyres Limited vs M/S Jay Polymers & Ors. on 14 December, 2023 (Delhi High Court)
The Plaintiff sought an injunction against the use of the Defendant’s registered trademark ‘POULLO’, which is claimed to be deceptively similar to its own mark, ‘APOLLO’. The Court, noting that there is a statutory presumption in favour of the validity of the registered trademark, proceeded to register the plaint as a suit and refused to issue an ex-parte interim injunction.
Castrol Limited vs Pawan Kumar, Trading As Bluextar on 18 December, 2023 (Delhi Hight Court)
Castrol Ltd. was previously granted an interim injunction against the Defendant’s use of marks such as ‘ACTIVE’, ‘ACTIVEBOND’, ‘ULTRA’ and other marks, in the sale of motor oils, coolants and related goods, that were deceptively similar to the registered trademarks of Castrol. The Court granted a permanent injunction to the same effect, and also restrained the Defendant from selling any such goods in similar trade dress as the Plaintiff, and imposed a cost of Rs. 2 lakh on the Defendant.
M/S Dandi Salt Pvt. Limited vs M/S Indo Brine Industries Limited on 18 December, 2023 (Delhi High Court)
A review petition was filed against the order of the Copyright Board rejecting an appeal against an earlier order rejecting the petitioner’s objections to the respondent’s application for registration of an artistic work. The appeal was rejected for being time barred, but the petitioner argued that an extension was sought by them and the rejection is not tenable. The petitioner also argued that the Respondent was employed by them and was a job worker packing salt for them and used their art work. Considering the above, the court ordered fresh consideration of the application and the objections, setting aside the impugned order.
Broadcom Inc. vs Texasldpc Inc. on 13 December, 2023 (Andhra Pradesh High Court)
The petition was filed for appointment of a Commissioner for investigation, after a Letter of Request was received from the Delaware Court seeking judicial assistance in recovery of evidence in a copyright and patent dispute, under the Hague Convention. The Court exercised its power under Section 78 read with Order XXVI Rules 19 to 22 of the CPC and appointed the Principal District Judge, Vizianagaram district, as Commissioner for the specified purposes.
Scotch Whisky Association vs J.K. Enterprises on 18 December, 2023 (Madhya Pradesh High Court)
The Plaintiff, being the Registered Proprietor (RP) on the instance of whom the Geographical Indication (GI) of Scotch Whisky was granted, contended that the RP alone, without the Authorised User (AU) being impleaded, could successfully file a suit. The court agreed, noting that the RP is an independent entity under the GI Act and is not subordinate to the AU.
Devans Modern Breweries Limited vs Jagpin Breweries Limited on 18 December, 2023(Delhi High Court)
The Plaintiff discovered that its bottles carrying the registered ‘DEVANS’ mark, which also had design registration, were also being used to sell the Defendant’s product, possibly after recirculation in the market. The Defendant contested that the bottles were not selectively obtained and it was using recycled bottles due to shortage. Noting that an interim injunction had earlier been granted in the case, and highlighting other cases where the use of recycled bottles had been held to be infringement of registered marks, the Court granted a permanent injunction and imposed costs of Rs. 2 lakhs on the Defendant.
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- Source: https://spicyip.com/2023/12/spicyip-weekly-review-december-18-december-24.html
