Last week was full of exciting discussions on the blog. Lokesh wrote a post on the 2023 amendments to the Cinematograph Act, 1952 and put out the second post in our ‘SpicyIP Flashback’ series. Praharsh discussed an interesting development in Karnataka where a Court granted an interim injunction to a law student against 2 law assistant professors, on copyright infringement claims.
Anything important we’re missing out on? Drop us a comment below!
Highlights of the Week
Cinematograph (Amendment) Act, 2023: Of Piracy and Penalties
Focusing on curbing piracy, the Act introduces stricter punishments and has enabled aggrieved persons to seek remedies for copyright infringement and computer-related offenses. Discussing the key amendments within the 2023 Act, Lokesh highlights the contentious issues within the law and how they may warrant clarification in the future.
Recently, a Court in Bengaluru granted an ex-parte interim injunction to a law student alleging copyright infringement against 2 law professors. In this short post, Praharsh discusses the allegations made by the student and the findings of the Court.
Other Posts
Journey Through “Julys” on SpicyIP (2005 – Present)
In this second post of SpicyIP Flashbacks, Lokesh sifts through the pages of posts published in July(s), touching upon the India-Pak Basmati GI wars, whatever happened with the Indian Bayh Dole Act, and the National Biotechnology Regulatory Authority (NBRA) Bill, and India’s lost IP legends.
We are pleased to inform you that the Centre for Innovation, IP and Competition (CIIPC), National Law University, Delhi is inviting applications for the position of Research Programme Coordinator. The last date to apply is August 12, 2023.
Case Summaries
Patents
Delhi High Court clarifies that ‘revocation petitions’ are not ‘suits’ for the purpose of Section 10 CPC.
The order sought to address the question of whether a revocation petition can be regarded as a suit for the purpose of Section 10, CPC. A revocation petition was filed by the petitioner against the respondent’s Empagliflozin patent and parallelly, the respondent had filed an infringement suit against the petitioner before the Himachal Pradesh High Court. The present application was moved by the respondent before the Delhi High Court seeking a stay of the proceedings in the revocation petition. The Court relied on earlier decisions of the Supreme Court and especially Raju Jhurani v. Germinda Pvt. Ltd. and held that a revocation petition cannot be regarded as a suit. It further clarified that merely because the petitioner has sought a decree in the revocation proceedings, it does not mean that the instituted petition is a suit.
Trademark
A Division Bench of the Delhi High Court clarifies that a Division Bench is not restricted by the limitations on intra-court appeals u/s 13 of the Commercial Courts Act while hearing a letter patents appeal against an order passed u/s 57.
Case: VR Holdings v. Hero Investocorp Ltd. & Anr. on 4 August, 2023 (Delhi High Court)
The issue here was with regard to the maintainability of a letters patent appeal against an order to rectify the trademark register, passed under Section 57. The respondents argued that though this issue was raised before a coordinate bench in Resilient Innovations v. Phonepe Pvt. Ltd. and Anr., however no findings on the restriction on letters patent appeals u/s 13 of the Commercial Court Act was made in that case. The Court held that though the coordinate bench failed to discuss the impact of Section 13, its conclusion would still hold good. The Court observed that there is no provision in the Trademark Act, 1999, which expressly excludes the applicability of the provision for appeal provided under Clause 10 of the Letters Patent. It further clarified that the special powers which a Commercial Court or the Commercial Division may discharge under the Trademark Act, cannot be equated to the original civil jurisdiction which are bound by section 13(2) of the Commercial Courts.
Bombay High Court to decide whether the Trademark Registry is empowered to carry typographical corrections within registered marks.
Case:Ms. Sabu Trade Private Limited vs The Registrar Of Trade Marks on 2 August, 2023 (Bombay High Court)
The dispute pertained to the question of whether the Trademark Registry can make “typographical corrections” in registered trademarks? The plaintiff’s registered mark was “Sago Preparations” however, by representation made by the 3rd Respondent, the Registrar of Trademarks inserted a comma in between the two terms making it “Sago, Preparations”. The Court observed “At this rate, we are in risk of lapsing into a comma” and restrained the 3rd Respondent from using the “Sago, Preparation” mark till the next date of hearing.
Delhi High Court finds “Wow! China Bistro” to be deceptively similar to “China Bistro.”
The dispute pertained to the defendant’s use of the impugned mark “Wow China Bistro” which was alleged to be deceptively similar to the plaintiff’s “China Bistro” mark. The defendant’s mark originally was Wow! China, however in 2019 it modified it to “Wow! China Bistro”. The Court observed that the two marks are deceptively similar, and there exists a likelihood of confusion. Furthermore, it was argued that the plaintiff has disclaimed exclusivity for the words “China” and “Bistro” in its initial application and the same disclaimer would extend mutatis mutandis on the subsequent applications for latter marks. However, the Court rejected this argument and held that the disclaimers are attached only to the concerned registrations and not future registrations.
Passing a summary judgement, the Delhi High Court restrains the Defendant from using ‘Whitehat Sr.” mark and imposes costs of INR 9,24,000/- on them.
Case: Whitehat Education Technology vs Vinay Kumar Singh on 2 August, 2023 (Delhi High Court)
The Delhi High Court passed a summary judgement restraining the defendants from using the impugned mark “Whitehat Sr.” and decreed the suit in favor of the plaintiff. The request for a summary judgement was made by the plaintiff after relying on an email by the defendant stating its intent to not use the impugned mark. The Court further relied on the decision of the Supreme Court in Uflex Ltd. v. Govt. of Tamil Nadu to reiterate that “costs should ordinarily follow in commercial matters, and should serve the purpose of curbing frivolous and vexatious litigation” imposed a cost of INR 9,24,000/- on the defendant.
Passing a summary judgement, the Delhi High Court restrains the defendant from using “Soxplat” mark and imposes costs of INR 5,00,000/- on them.
Case: Sun Pharma v. Mylan Laboratories Ltd. on 2 August, 2023 (Delhi High Court)
The Delhi High Court passed a summary judgement restraining the defendant from using the ‘Soxplat’ mark and decreed the suit in favor of the plaintiff. The competing marks were ‘Oxiplat’ and ‘Soxplat’ and earlier they were registered in favor of the plaintiff and the defendant respectively. However, via a 2020 IPAB order, the defendant’s registration for ‘Soxplat’ was canceled after which it gave up its use of the above mark and thus the plaintiff sought a summary judgement in the matter. While passing the present order, the Court also observed that no interim injunctions were granted to the plaintiff and the defendant immediately stopped using the mark after the IPAB order, however, to serve the “interest of the plaintiff”, the Court awarded costs of INR 5 lakhs.
Delhi High Court restrains the defendants from using Puma’s RS-X 3D trade dress and imposes INR 50,000 as costs on each defendant.
Case: Puma Se vs Girish Vohra and Anr. on 27 July, 2023 (Delhi High Court)
The dispute pertained to the defendant’s imitation of the plaintiff’s RS-X 3D trade dress of sports shoes. Assessing the material on the record, the Court held that the plaintiff has established its goodwill and reputation in the Indian market and has made out a case of passing off as there is a likelihood of confusion. Since the defendants neither appeared nor filed a written statement the Court decreed the suit in favor of the plaintiff, imposing punitive damages of INR 50,000/- on each of the defendants.
In a long-standing trademark infringement dispute, Calcutta High Court restrained the defendant from using “Kit Kat” for chanachur (a type of snack).
Marking the end of a two decade+ old legal battle, the Calcutta High Court decreed the suit in favor of the plaintiff and passed an order of permanent injunction, restraining the defendant from using the mark “Kit Kat”. The defendant was using the mark “Kit Kat” with respect to chanachur and other snacks and argued that the products of both parties were different. However, the Court relied on the documents produced by the plaintiff and an earlier IPAB order on the same dispute to hold that the defendant’s mark is deceptively similar and passed the present order.
Delhi High Court sets aside a non-speaking order from the Trademark Registry.
Case: Ravi Manchanda vs The Registrar Of Trade Marks on 3 August, 2023 (Delhi High Court)
Delhi High Court allowed an appeal against a non speaking order, rejecting the trademark application. The impugned order simply stated-
“where the application is refused a request may be made in form no TM-M along with the prescribed fee to communicate in writing the grounds of decision and materials used by the Registrar in arriving at his decision to refuse the said application. The said request on form TM-M should be tendered within 30 days of receipt of the order of refusal.”
While assessing the above order, the Court humorously observes that “The part of the above communication which is supposed to contain the “order” is, therefore, gloriously blank” and “inasmuch as there is no order at all, passed by the Senior Examiner of Trade Marks, I am really at a loss as to what to set aside.”
Copyright
Principal City Civil and Sessions Judge, Bengaluru grants an interim injunction to a law student, in a copyright infringement dispute, against 2 law assistant professors.
Case: Aathira Mannath A v. Lloyd Law College on 31 July, 2023 (City Civil and Sessions Judge, Bengaluru)
The Principal City Civil and Sessions Judge passed an interim injunction order in favor of the plaintiff, a law student, and restrained the defendants from infringing her literary work “The Challenges of Providing Humanitarian Assistance in Non-permissive Environments.” The plaintiff argued that the above work was presented by her in a conference at Lloyd Law College, Noida and later she discovered that it was published under the same title in a journal under the name of two professors from Lloyd Law College. The Court passed the present order under the condition that in case she fails in the suit, she will compensate the defendant in actual cost and pay the mesne profits.
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- Source: https://spicyip.com/2023/08/spicyip-weekly-review-july-31-august-6-2.html
