Here is our recap of last week’s top IP developments including summaries of posts on DHC’s decision in Seagate v. Daichi, Genus-Species patents, and GI inspection mechanism in India. This and much more in last week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Genus-Species Disputes: Where From Here?
Taking a look at some of the important decisions in genus-species patent cases, Dr. Victor Vaibhav Tandon discusses what can be the future course of action for patentees in such situations.
Recently, the DHC in Seagate v. Daichi held that a refurbisher must fully disclose changes made to a product- re its original owner, that the product is not original and has been previously used. Taking a look at this development, Yogesh in this two part post, discusses the Court’s directions and its implications, opining that it brings stability and certainty in the refurbishment industry in India. In part 1 of the post, he discusses the findings on impairment under S. 30 (4) of the TM Act and the Court’s direction for refurbishers to make full disclosure.
Continuing the discussion on DHC’s judgement in Seagate v. Daichi, Yogesh highlights the Court lack of discussion on the difference between ‘Simple’ and ‘Substantial’ repairs and how it could have impacted the Court’s finding on impairment.
Other Posts
An Assessment of Inspection Mechanism in the Indian GI Regime
An Assessment of Inspection Mechanism within the Indian GI Regime. In this post, SaksheeSahay takes a look at an under discussed aspect of the Indian GI regime- inspection mechanism, and highlights some key loopholes in it. Read on and share your comments below.
In light of the recent WIPO treaty on GR and TK, take a look at the first part of Dr. Anson CJ’s post as he assesses how does the mandatory disclosure of source requirement compare to the existing literature.
In part II of his discussion on the WIPO treaty, Dr. Anson CJ discusses its probable implications on India and other developing nations.
Case Summaries
Rishabh Plast India Pvt. Ltd. v. Swastik Industries & Anr. on 30th May 2024 (Delhi High Court)
Plaintiffs sought an injunction against the defendants who were infringing the plaintiff’s registered design and trademarked name ‘Jony Vintage’ to produce storage containers. The plaintiffs issued a cease and desist notice to the defendants, and in response were assured that they shall discontinue the infringing product ad destroy related moulds, dies, and apparatus. However the defendants continued marketing and selling the infringing product and hence the court granted an ex-parte ad interim injunction in favour of the plaintiffs.
The petitioners complained of “large scale violation” of s. 73 (4) of the Patents Act, 1970. They claimed the IT Division of the Patent Office arbitrarily reallocated patent applications, review applications were withdrawn from concerned controllers and allocated to others, and certain rejected applications were revived while orders of refusals went missing from the official website. Standing counsel for the Controller General’s office was given time to reply.
Ambuja Cements Ltd. v. Sudheer Cements & Ors. on 29th May 2024 (Delhi High Court)
The plaintiffs (Ambuja Cement) sought an injunction against the defendants who created various websites that falsely presented to be associated with the plaintiffs. These websites contained the logo, and trademarked name and design of Ambuja Cement along with deceptive domain names, leading unsuspecting customers to believe they were dealing with the plaintiffs. The website was used to dupe customers into remitting money without any delivery of product claiming to be sold. The Court granted an ex-parte ad interim injunction and directed the fraudulent websites be de-listed domain names be suspended.
Chrys Capital Advisors LLP. v. Ms. Raj Lal Kumari & Ors. on 29th May 2024 (Delhi High Court)
The plaintiffs sought immediate relief against the defendants who they alleged were infringing the trademark of Chrys Capital and its registered design. The defendants ran various websites and WhatsApp groups where they falsely associated themselves with the plaintiff by using the plaintiff’s trademark to lend legitimacy to fraudulent financial services being offered. The Court was satisfied with the allegations to grant an ex-parte ad interim injunction.
Dominoes IP Holder LLC & Anr. v. MG Foods & Anr. on 31st May 2024 (Delhi High Court)
The plaintiffs alleged that the defendants were using a logo and name that infringed the trademark held by dominoes over its name and design. The defendants ran a pizza shop under the name ‘Donito’s’ which had physical locations as well as social media presence. Plaintiffs alleged that the name and logo used by the defendant are deceptively similar and infringe its trademarks while exploiting its goodwill. The Court was prima facie satisfied to grant an ex-parte ad interim injunction.
Gs1 India v. M/s One Care Certification on 30 May, 2024 (Delhi High Court)
The plaintiff has been given the exclusive license to issue barcodes and allocated numbers in India starting with ‘890’, and the plaintiff has a registration to the same effect. The plaintiff’s grievance is that the defendants are issuing 13-digit barcodes starting with 890 even though they have no connection with the plaintiff and have not been authorised to allocate these barcodes. Since barcodes starting with 890 can only be issued by the plaintiff, the defendant’s acts of selling barcodes beginning with 890 can mislead customers into thinking the barcode originates from the plaintiff and are compliant with Gs1 standards. The plaintiff hence alleges a case of trademark infringement and passing off. The court was prima facie satisfied to grant an ex-parte ad interim injunction.
The plaintiffs, the proprietors of the trademark of Hell energy drink, allege that the defendants have used its registered trademarks to create false websites with an impression of legitimacy and to exploit its goodwill. They also alleged that the defendants are using the website to dupe investors into signing up for false distributorship agreements due to which many people have lost significant amounts of money. The Court was prima facie satisfied to grant an ex-parte ad interim injunction.
INCYTE Holdings Corp. & Ors. v. Alembic Pharmaceuticals Ltd. on 30th May 2024 (Delhi High Court)
The plaintiffs contend that the defendants are about to engage in the sale and manufacturing of the patented compound ‘Ruxolitinib’ and hence filed a quia timet action. ‘Ruxolitinib’ is a novel salt used in the manufacturing of prescribed medicines, it has been designated by the WHO as a new Active Pharmaceutical Ingredient (‘API’) and has been given an International Non-Proprietary name. The defendant submitted that no product containing Ruxolitinib has been commercialised nor is there an intention to commercialise the same by the defendant. The plaintiff agreed to the suit being disposed of if the defendants would be bound to their statement.
Kathakaar Film Production House v. Shane Ali & Ors. on 27th May 2024 (Delhi High Court)
The appellant is appealing against an order restricting them from issuing, broadcasting, publishing, and screening videos or trailers of the film ‘MAIN LADEGA’ as it bears the logo of the National Boxing Championship. The appellant argued that there is no infringement as the logo was not used as a trademark but merely depicted in a scene as part of a storyline which has no connection to the respondents. The appellant contends that no copyright infringement has occurred as the inclusion of copyrighted content in a film or other artistic work is protected under s. 52 (1) (u) (ii) of the Copyright Act, 1957. The Court did not pass any interim measures on the appeal and decided to hear it on merits on July 15.
Malhotra Surgical Industries v. Dharam Pal Singh Bhatia & Ors. on 31st May 2024 (Delhi High Court)
The plaintiff sought permanent injunction against the defendants for infringing their trademark of ‘Microstone Stethoscope’ by selling stethoscopes on amazon without authorization. The product sold by the defendant was bearing a name that was deceptively similar to the registered trademark of the plaintiff. The court was prima facie satisfied to grant an ex-parte ad interim injunction and directed the defendants to restrain from manufacturing, selling, promoting, or dealing in any manner with goods related to the impugned trademark.
Radico Khaitan Ltd. v. Superior Industries Ltd. on 31st May 2024 (Delhi High Court)
The plaintiff is the proprietor of the trademark ‘MASTIH’ which they use to brand and sell alcoholic beverages. The defendants have used the mark ‘GREAT GRAND MASTIH’ for the sale of their alcoholic beverages along with similar trade dress and design as the plaintiff. The Court found the defendant’s mark to be prima facie deceptively similar to that of the plaintiff and was satisfied to grant an ex-parte ad interim injunction especially since the product sold by both companies were in the same category (alcoholic beverages).
The plaintiffs possess the trademark to ‘Singh & Singh’ as well as ‘Singh & Singh advocates’, which they assert is being infringed by the defendants who use the mark ‘Singh and Singh Attorneys’. While the defendants are based out of South Africa and the plaintiffs are based out of India, owing to the plaintiff’s international presence, the Court held that usage of similar marks within the same area of practice can be misleading. In a prima facie view of the Court, the marks used by the firms were deceptively similar and targets the same segment of consumers, hence an ex-parte ad interim injunction was granted.
Tata SIA Airlines Ltd. v. Vistara Property Services LLP on 30th May 2024 (Delhi High Court)
The plaintiff sought permanent injunction against the defendants for usage of name and mark deceptively similar to the plaintiff’s registered trademark ‘VISTARA’. The defendant’s marks ‘VISTARA GETAWAYS’ and other variations of the same were registered on a proposed to be used basis. The defendants used these marks to market their holiday packages and flights on their website and Instagram handle. The Court in a prima facie view was satisfied to grant an ex-parte ad interim injunction in favour of the plaintiff.
Other IP Developments
Other International IP Developments
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- Source: https://spicyip.com/2024/06/spicyip-weekly-review-june-3-june-9.html
