[This SpicyIP Weekly Review is authored by Kevin Preji. Kevin is a second-year law student at NLSIU Bangalore. His passion lies in understanding the intersection of economics and public health with intellectual property rights. His previous posts can be accessed here.]
After a busy week at the blog, here is our recap of last week’s top IP developments including summaries of posts on the Patent Office’s disposal of 1500+ patent applications in one day, Delhi High Court’s decision in Interdigital v Oppo, Supreme Court’s order in the Google Adwords case, and the 2024 Patent (Amendment) Rules. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Indian Patent Office Puts out 1532 Orders in One Day!
The Indian Patent Office put out 1532 decisions yesterday! Looking a bit further into this, it appears that the daily number of decisions being put out may have increased by 4-5 times over the last year. How is this happening though? Swaraj asks this question, while noting that it doesn’t appear that the number of controllers or examiners has increased in the same time period.
Patent Rules Published: A Quick Look
A quick look at the Patent (Amendment) Rules that were released yesterday! Read on below to know more about the amendments made to time limits, pre-grant oppositions, working requirements, and more.
Imputing Bad Faith in Trademark Infringement Disputes: Analysing DHC Nova v. Novya Judgement
When and how can Bad Faith be incorporated into trademark infringement analysis? SpicyIP Intern Kevin Preji explores these questions as he analyses the recent DHC decision in the Nova v. Novya case.
Analysis of February 2024 Delhi High Court Judgment in InterDigital v. Oppo – I
Mathews shares his views on the DHC’s direction to Oppo for making an interim deposit in an SEP dispute with interdigital. This is the first part of the series, don’t forget to read Part 2!
Analysis of February 2024 Delhi High Court Judgment in InterDigital v. Oppo – II
Continuing his discussion on the Interdigital v. Oppo SEP dispute, in part 2 of the post, Mathews raises some pressing questions on DHC’s refusal to accept bank guarantees and argues for a framework to handle SEP disputes.
Other Posts
Mere use of Adwords will not amount to trademark infringement, confirms the SC. Looking beyond the SC’s 3-line order in the Google Adwords trademark dispute, Aarav writes on the arguments that transpired before the Court in this tidbit. Read on below to know more.
Workshop on Patent Oppositions in the Pharmaceutical Field [Kochi, April 26-30]
We are pleased to announce that the Inter-University Centre for IPR Studies (IUCIPRS), CUSAT, and Third World Network are jointly organizing a workshop on ‘Patent Opposition in the Pharmaceutical Field’ between April 26-30, 2024. The last date to apply for the workshop is March 24, 2024.
SpicyIP Tidbit: Book on Patent Law by DHC Justice Prathiba M Singh Launched
Commentary on Patents Law by Justice Prathiba M Singh has been released! In perhaps a first of its kind, the book has been authored by a sitting judge of a High Court and is supposedly relevant for both Indian and international audiences. Read this quick tidbit by Tejaswini about the book and the recent launch event.
SpicyIP Tidbit: Error 404! DHC addresses the Out-of-Order Condition of Trademark Registry’s Website
The TM Website Woes Strike Again. Last month, the TM Registry claimed it had fixed its E-Register and Public Search Features. Yet this month it once again finds itself called to Court, to answer as to why there are continuing problems with the website’s payment gateway, and difficulty in accessing First Examination Reports, Counter-Statements, and Hearing Notices. Tejaswini writes on this recent misadventure.
Case Summaries
Times Drugs And Pharmaceuticals(P) Ltd v. Galpha Laboratories Ltd
The plaintiff, the registered proprietor of the “DPS” trademark for pharmaceutical products, served a cease and desist notice to the defendant who was using the same mark. The defendant contended honest use, however, the Delhi High Court noted that the prudent user of a mark is expected to conduct thorough searches of the Trademarks Registry before adoption. Had the defendant undertaken such due diligence, they would have undoubtedly discovered the Plaintiff’s pre-existing registration. The Court concluded that the defendant’s subsequent adoption of an identical mark to the plaintiff’s registered trademark strongly suggests an intent to capitalise on the Plaintiff’s established goodwill and reputation in the market. This deliberate action by the defendant not only misleads the public but also falsely associates their products with the plaintiff’s, constituting an act of passing off of Plaintiff’s trademark “DPS”. The court further awarded damages to the plaintiff.
Prasar Bharti v. Dish TV India Ltd
The respondent, proprietor of of ‘Dish TV’ trademark, filed a suit for injunction under Section 29(1) of the TM Act, claiming that the appellant’s use of ‘DD Dish TV’ was similar to their registered trademark and could cause confusion. The dispute revolves around whether ‘Dish TV’ and ‘DD Free Dish’ are similar. The court observed that while both marks contain ‘Dish,’ other elements differ. The Court, while referring to Section 17 of the TM Act, observed that law confers exclusive rights on the whole trademark, not its parts. The court must assess similarity by considering the marks as a whole. It is not permissible to hold a mark as deceptively similar by examining a portion of the mark and comparing it with the portion of another mark when the marks if compared as a whole are not similar. Both marks use common, generic words related to DTH services. The appellant’s mark includes a well-known mark ‘DD,’ indicating its distinct origin. The court disagreed with the impugned judgment that ‘Dish’ was not generic to DTH services and that the marks were similar and set aside the impugned judgment.
AB Mauri India Private Limited vs Vicky Aggarwal & Ors.
The plaintiff is the proprietor of various trademarks in Classes 1, 2, 29 and 30 under the name “TPWER”. The court, considering an application under Order XXXIX Rules 1 and 2 of the CPC, deliberated on whether the defendants could use the mark “TOWER” for dry fruits. The court emphasized the undertaking restricting the defendants’ use of the mark to specific goods. Despite the defendants’ contentions, the court found the undertaking binding and held that dry fruits fell under Class 29, covered by the undertaking. Even interpreting the undertaking expansively, the court concluded that dry fruits could not be excluded. Additionally, the court noted that under Section 29(2) of the Trade Marks Act, the defendants’ use of the mark for dry fruits constituted infringement, likely to confuse consumers. Consequently, the court granted an interlocutory injunction restraining the defendants from using the mark “TOWER” for dry fruits.
SNPC Machines Private Limited & Ors. v. Mr. Vishal Choudhary
The plaintiffs filed an application under Order XXXIX Rules 1 and 2 of the CPC, seeking an interim injunction against the defendant to prevent the use, manufacture, sale, or importation of brick making machines similar to those protected under the plaintiffs’ patents. The plaintiffs claimed to be pioneers in revolutionizing brick making with patented, fully automated machines. They alleged that the defendant’s machines infringed their patents and copyrights. The court analyzed previous decisions and established principles for assessing patent infringement, emphasizing the importance of essential elements and the doctrine of equivalents. Despite differences cited by the defendant, the court found the fundamental aspect of mobility crucial, concluding that the defendant’s machines infringed on the plaintiffs’ patents. Additionally, the court addressed jurisdictional objections, estoppel, and delay, ultimately granting the plaintiffs’ application for an interim injunction.
Wings Pharmaceuticals P. Ltd v. Khatri Healthcare P. Ltd. & Anr
The plaintiff alleges that the defendants have used the mark “JUNASHAK,” which they claim is deceptively similar to their mark “जूँ नाशक” / “JU NASHAK” for an anti-lice cream shampoo, packaged similarly to the plaintiff’s product.The plaintiff contends that their mark and trade dress have acquired distinctiveness and goodwill among consumers. The defendants assert that their registration for the trademark “JUNASHAK” grants them the sole right to use it for their product. The court finds that the plaintiff’s claim for passing off lacks merit. They emphasize that the plaintiff primarily uses the term “जूँ नाशक” / “JU NASHAK” descriptively and that it does not serve as a distinctive trademark. Additionally, the court notes differences in the trade dress of the two products, undermining the plaintiff’s passing-off claim. In conclusion, the court dismisses the plaintiff’s application.
Skywood Interior Solutions V. Union of India
The Respondent contested the validity of the ongoing petitions, citing a lawsuit against the Petitioner concerning a disputed trademark. The absence of court leave under Section 124 of the Trade Marks Act, 1999, rendered these petitions, in the Respondent’s view, unsustainable. A key development emerged: Respondent No. 2’s suit was returned under Order VII Rule 10 of the Code of Civil Procedure, 1908, with directions to file it in the suitable Ghaziabad court. The Respondent contended that this was inconsequential, as this Court exclusively handled the case. They stressed that the lawsuit’s return would not impact the ongoing proceedings’ legality, highlighting that a decision under Order VII Rule 10 of CPC needs to evaluate the case’s merits. Concluding, the Court accepted the Respondent’s arguments, deeming the rejection of the rectification petitions as having no legal impact other than delaying the ongoing proceedings. Despite dismissal due to a technicality, the Petitioner recognized as an “aggrieved person” under Section 57 of the Act, retained the right to pursue cancellation or rectification of the disputed mark, though they would need to file fresh petitions for this purpose.
Cabcon India Limited vs Godha Cabcon And Insulation Limited on 11 March 2024
The plaintiff has filed a petition for a temporary injunction to prevent the defendant from using the trademark “CABCON” or “GODHA CABCON” or http://www.godhacabcon.com. The plaintiff, registered in 1991, uses the mark for aluminum wires, cable, wires, chains of metal, brass wires, and allied products to distinguish them from other manufacturers, distributors, and sellers. In October 2023, the plaintiff discovered that the defendant is manufacturing and dealing with the trademark under the name and style of “GODHA CABCON” similar to the materials it produces and supplies. The plaintiff has relied on Sections 28 and 29 of the Trade Mark Act, 1999, which provide exclusive rights to the registered trademark proprietor. The court found that the plaintiff has a good prima facie case and the balance of convenience and inconvenience favors the plaintiff. The defendant and its agents and assignees are restrained from using, selling, manufacturing, distributing, and advertising the goods under the mark “CABCON” or “GODHA CABCON” or using the domain http://www.godhacabcon.com or using the registered trademark of the petitioner “CANCON” as part of the defendant’s trade name until the next hearing on April 24, 2024.
Nababuddin Ahmed vs The Registrar Of Trademarks Kolkata
The petitioner’s counsel argued that their Registered Trademark, no. 2310588, was removed by the Registrar of Trademarks without proper notice under Section 25 of the Trade Marks Act, 1999. The respondent authorities claimed notice was sent but undelivered, uploaded on the website. The court ruled that website notice alone does not comply with Section 25. It was emphasized that the petitioner’s notice served a dual purpose, not solely as a call for remedial action, but also as a preventative measure against the trademark’s removal in case the proprietor fails to respond, and hence the removal was invalidated. WPO 140 of 2024 was granted, reinstating the trademark. The respondent must now issue a formal notice for rectification.
Eli Lilly And Company Private Limited vs Eskayef Pharmaceuticals Limited & Ors
The plaintiff alleged that the defendants are manufacturing the infringing, generic version of its Abemaciclib drug and have been importing the same from Bangladesh. The Court observed that not only this prima facie infringe the suit patent, but it also bypasses the rigors of drug regulatory mechanisms and passed an ex-parte ad interim injunction order against the defendant.
Sabu Trade Pvt Ltd vs Sh Raj Kumar Sabu And Ors
STC sought an interim injunction to restrain the defendants from dealing with any product under the SACHAMOTI marks or any deceptively similar mark. STPL sought an injunction to restrain RKS/STC from using the SACHAMOTI trademark for manufacturing or selling sabudana or any related product. The court, considering the submissions and evidence presented, noted that RKS/STC held the trademark and copyright registrations for SACHAMOTI. As per the Trade Marks Act, 1999, and Copyright Act, 1957, any use of the SACHAMOTI mark without authorization constitutes infringement. The defendants claimed prior use of the mark, predating RKS/STC’s registration. However, the court found that RKS/STC had established prima facie ownership of the SACHAMOTI mark through evidence, including sales records, invoices, and correspondence. The defendants’ evidence was not deemed strong enough to challenge the validity of RKS/STC’s registration. Consequently, the court allowed RKS/STC’s application for an interim injunction and dismissed STPL’s application
Cinni Foundation vs Anjan Narayan Singh
The rectification petition under Section 50 of the Copyright Act, 1957, seeks removal of copyright registration of artwork belonging to CINNI Foundation. Disputes arise over trustee legitimacy between Dipak Kumar Sah and Anjan Narayan Singh. The court, acknowledging the Foundation as the copyright owner, directs the Registrar to rectify the registration in the Foundation’s name. The decision avoids delving into trustee disputes and emphasizes the court’s limited role in rectification proceedings, focusing solely on copyright ownership. Pending applications become moot, and the court refrains from making observations on trustee disputes beyond its jurisdiction.
Sgs Pharmaceuticals Private Limited vs Dr. Reddys Laboratories Limited
The respondent sued, seeking an injunction against the appellant from selling a product with packaging resembling theirs, specifically the drug ‘Cyproheptadine’. Although the drug names differ, packaging similarities, including color and layout, were noted. The appellant argued that since the drugs are prescription-based, confusion is unlikely, but the court disagreed. The appellant’s comparison to another case involving drug names was deemed irrelevant, leading to the dismissal of the appeal and pending application.
Super Cassettes Industries Private vs Music Broadcast Limited
The plaintiff filed applications under Order XXXIX Rule 2A of the CPC alleging violation of an interim injunction regarding copyright infringement of sound recordings by FM radio channels. The dispute revolves around compliance with statutory licensing provisions under Section 31D of the Copyright Act. The court evaluated the defendants’ notices for broadcast, finding partial compliance with Rule 29(4), particularly regarding program details. Defendants agreed to provide additional information. The court emphasized the plaintiff’s right to inspect broadcast records for reconciliation.
Audertec Solutions Llp vs Controller General Of Patents, Designs
The appellant’s patent application for a road anomaly detection system was rejected for lack of inventive step compared to prior art D-2. Despite arguments on distinguishing features, the court found D-2 comprehensively covered the claimed features. The judgment emphasized that an inventive step must be assessed from the perspective of a skilled person in the field, and concluded that the appeal lacked merit, upholding the rejection of the patent application.
Crompton Greaves Consumer Electricals vs V Guard Industries Limited
The dispute centered around the use of the mark “PEBBLE” by Crompton for electric irons, which was alleged by V Guard to infringe upon its rights obtained for marketing water heaters under the same mark. The learned Single Judge, however, found that while the goods were not similar, the marks “PEBBLE” and “CROMPTON PEBBLE” were visually, phonetically, and structurally identical, with “PEBBLE” being the dominant part of both marks. The judge also noted that V Guard’s mark had acquired reputation and goodwill in India, and Crompton’s use of the mark was deemed to take unfair advantage of this reputation. Based on these findings, the judge held that Crompton’s use of the mark constituted infringement under Section 29(4) of the Trade Marks Act,
Niranjan Arvind Gosavi And Ors vs Innovatiview India Private Limited
The Delhi High Court adjudicated on a patent infringement dispute involving a Patent for a method and system related to generating and validating documents using machine-readable barcodes. The plaintiff claimed infringement by the defendant in a government tender. The defendant argued potential insulation under Section 47 of the Patents Act. The Court declined immediate injunction but allowed plaintiffs to inform the National Testing Agency (NTA) about the patent issue.
Mitsui Chemicals Inc vs Controller Of Patents
The Delhi High Court set aside the refusal of the patent application concerning an insecticidal composition. The Court found procedural errors in the assessment by the Assistant Controller of Patents, emphasizing the need for a proper comparison between the original PCT claims and the amended claims filed during the national phase entry. Additionally, it directed a re-evaluation of objections under Section 3(h) of the Patents Act, emphasizing a detailed analysis and consideration of relevant case law. The matter was remanded to the Respondent for reconsideration, granting the Appellant a hearing and setting a timeframe for decision.
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- Source: https://spicyip.com/2024/03/spicyip-weekly-review-march-11-march-17.html
