Here is our recap of last week’s top IP developments including summaries of posts on the DHC directives to resolve issues arising out of TM registry website, DHC decision on non literal patent infringement, and Govt. of Goa’s circular on 52(1)(za). Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Delhi High Court Imposes Damages Worth INR 244 Crores on Lava in the Ericsson-Lava SEP Dispute
In an important SEP development this year, DHC imposed INR 244 Crores in damages on Lava in its 9-year-old SEP dispute with Ericsson. Read on to know more!
An End to IP Attorneys Association’s Struggle with the Trade Mark Registry’s Portal?
In a significant order, the Delhi High Court recently issued interim directions to the Trademark Registry to minimize the inconvenience caused by the outage of the Registry’s website. SpicyIP intern Aarav Gupta writes about this development.
Non-literal Infringement: Clarity or Confusion?
Recently, the Delhi High Court passed an important order regarding non-literal patent infringement. Analyzing the decision, SpicyIP intern Vishno argues that the Court’s rationale of combining the doctrine of pith and marrow with the doctrine of equivalents causes more confusion than clarity.
In an interesting development, the English Patent Court explained the distinction between the Scientific Advisers and Expert Evidence. Discussing the Court’s findings, Malobika Sen explores the relevant provisions and significance of expert evidence in IP litigation in India.
Other Posts
Mischief, Manifestation, and the Michelin Trademark!
Mischief, Manifestation, and the Michelin Mark! In light of the recent controversy surrounding a Delhi-based restaurant’s unauthorized use of the coveted Michelin plaque, Dr. Sunanda Bharti discusses the trademark issues involved here.
Goa Circular, Permission for Music at Weddings, Police Sensitization: Anything New? Yes
The recent circular by the Goa Government adds a fresh twist to the controversy surrounding the unauthorized use of sound recordings during wedding ceremonies by suggesting police set up “field units” to address complaints against parties demanding royalties for such use. In this short post, Lokesh takes a quick look at the circular.
National Law University, Jodhpur’s Journal of Intellectual Property Studies (JIPS) is inviting original, unpublished manuscripts for publication for its upcoming issue (Volume VIII, Issue II). The last date for submissions is June 20, 2024.
Case Summaries
The court ordered an ad interim injunction in favor of the plaintiff, restraining defendants from using the mark “Western Choice” or similar to plaintiff’s “Officer’s Choice” trademarks.
Poly Medicure Limited vs Assistant Controller Of Patents And Design on 21 March, 2024 (Delhi High Court)
The appellant, citing a prior patent, sought to convert the subject patent application into a patent of addition. The court permitted withdrawal of the appeal, granting liberty for the conversion application. The Patent Office will conduct a fresh hearing, considering previous determinations.
Elegance Services Pvt Ltd vs Registrar Of Trade Marks on 21 March, 2024 (Delhi High Court)
The appellant challenged the rejection of their trademark application under Section 91 of the Trade Marks Act, 1999. They argue that the application for deletion of conflicting goods was not considered due to system downtime. Additionally, discrepancies in the cited mark’s status and the appellant’s ownership of the same mark in another class were highlighted. The court ordered a fresh examination, considering these submissions, and disposed of the appeal accordingly.
Sulphur Mills Limited vs Dharmaj Crop Guard Limited & Anr. on 18 March 2024 (Delhi High Court)
The case revolved around the plaintiff’s patent concerning an agricultural composition involving sulphur and a dispersing agent. The plaintiff sought injunctions against the defendants for infringing the patent. The patent addressed issues with existing sulphur-containing fertilizers, such as leaching and slow conversion to sulphate. The patented composition aimed to overcome these drawbacks by providing a formulation that converts sulphur to its sulphate form instantly and delivers it effectively to the soil. The defendants contested the validity of the patent, arguing that the claimed composition was obvious from prior art. The comparison between the patented invention and prior art revealed overlapping features and processes. Ultimately, the court dismissed all applications for interim injunctions, stating that the defendants had succeeded in presenting a credible challenge to the patent’s validity on the grounds of obviousness. Therefore, the plaintiff could not be granted the injunction it sought.
Eveready Industries India Limited vs Ksc Industries & Ors on 21 March 2024 (Delhi High Court)
The Plaintiff, Eveready Industries India Limited, sought an interim injunction against Defendants’ use of the mark “EVERYDAY” for electric gas lighters, deceptively similar to Plaintiff’s “EVEREADY” trademark. The Court, after considering contentions and comparing the marks, found prima facie evidence of dishonest adoption by the Defendants. Consequently, the Court granted an interim injunction restraining Defendants from dealing in goods under the impugned mark, emphasizing potential irreparable harm to Plaintiff and the balance of convenience. The Defendants were directed to comply with procedural requirements, and the case was scheduled for further hearing on August 20th, 2024.
The Plaintiff filed a suit seeking to restrain the Defendant from infringing their registered trademark “SOCIAL.” The infringement claim arises from the Defendant’s use of “SOCIAL CHAI”. The court, upon examination, found prima facie evidence indicating deceptive similarity between the Plaintiff’s mark and the Defendant’s marks. Consequently, an interim injunction was granted, restraining the Defendant from using the impugned marks. Additionally, the court directed compliance with procedural requirements and scheduled the case for further hearing.
Viacom 18 Media Private Limited vs John Doe & Ors on 22 March 2024 (Delhi High Court)
The Court order concerns the unauthorized dissemination of content related to the Indian Premier League (IPL). Viacom 18 Media Private Limited, the plaintiff, owns media rights for various sporting events, including the IPL, and has entered into agreements with the Board of Control for Cricket in India (BCCI) for exclusive digital media rights. Defendants named in the case include rogue websites hosting illegal and pirated content. The plaintiff sought urgent relief to prevent unauthorized dissemination of IPL matches, citing past instances of infringement and the likelihood of further illegal activities during the IPL events. The court granted a ‘Dynamic +’ injunction to prevent future infringement and ensures compliance with procedural rules regarding filing documents and service of notices.
Baxter International Inc vs John Doe & Ors on 22 March 2024 (Delhi High Court)
Baxter International INC, alleged that Defendant No. 1 is engaging in fraudulent activities by falsely associating with the plaintiff’s trademark “BAXTER” and using it in an online investment scheme, leading to financial losses for the public. Baxter asserted that Defendant No. 1 is operating under the impugned domain name “www.baxvip.com” and promoting investment schemes using the plaintiff’s trademark without authorization. The court granted an ad-interim ex-parte injunction against Defendant No. 1, restraining them from using the plaintiff’s trademarks or communicating the plaintiff’s cinematograph works as their own. Additionally, directions were issued to other defendants, including YouTube, Telegram, WhatsApp, and the domain registrar, to block/delete/takedown the infringing content and provide information about the account holders associated with the infringing activities.
Ceat Limited vs The Registrar Of Trade Marks on 20 March 2024 (Delhi High Court)
The appellant filed an appeal under Section 91 of the Trade Marks Act, 1999, challenging the order dated 30th August 2019, passed by the Registrar of Trade Marks, which rejected Trademark Application No. 3324395 for the mark “FARMAX” in Class 12. The appellant’s application was for various automobile-related goods, and it was originally filed by CEAT Specialty Tyres Ltd., which later merged with the appellant. The appeal was based on the grounds of similarity of marks and delay in filing the appeal. The appellant argued that the cited marks were structurally, visually, and phonetically different and were for different goods. However, the court found the delay in filing the appeal unjustified and the explanation provided by the appellant insufficient. On the merits, the court held that the cited marks “FORMAX” and “FARMOX”, were similar to the appellant’s mark “FARMAX” and were registered for similar goods, leading to a likelihood of confusion. The court dismissed the appeal, stating that the appellant’s mark could not be registered based on the existing marks on the register.
Glaxo Group Limited vs Modi Life Care Industries Limited on 5 March, 2024(Delhi High Court)
Glaxo Group Limited, filed a lawsuit against the defendant for using trademarks “BETSONE”, “BETASON”, and “BETASONE” for pharmaceutical preparations in a silver-colored aluminum strip. The plaintiff claimed the defendant continues to operate under these marks despite being informed of their proprietary rights. The plaintiff commissioned an investigation firm to confirm that the defendant’s conduct demonstrates their intention to benefit from the plaintiff’s market position, thus constituting infringement and passing off of the plaintiff’s registered mark and subject packaging. The court granted an ex-parte ad interim injunction in favor of the plaintiff.
A.O. Smith Corporation And Anr. vs Star Smith Export Pvt. Ltd. on 22 March, 2024 (Delhi High Court)
A suit has been filed by plaintiffs, A.O. Smith Corporation and A.O. Smith India Water Products Pvt. Ltd., against defendants for using the mark “STAR Smith”, “STARSMITH”, and “BLUE DIAMOND”. The plaintiffs claim to have used the mark ‘A.O. SMITH’/ since 1874 and ‘BLUE DIAMOND’ for geysers, water heaters, purification systems, boilers, and related equipment. The court compared the marks and held the two to be deceptively similar and this made the previously granted ex-parte interim injunction absolute, thereby restraining the defendants from using the marks ‘STAR SMITH’/ ‘STARSMITH’ and ‘BLUE DIAMOND’ or any other mark deceptively similar to their marks.
Pidilite Industries Ltd. vs Sanjay Jain & Anr on 22 March, 2024 (Delhi High Court)
The petitioner filed a rectification application for the cancellation of the mark ‘POMA-EX KIWKHEAL’, which was granted to the respondent in 2014 after being applied for in 2011. The petitioner’s products are sold under well-known Indian trademarks, such as FEVIKWIK. The court ruled that the petitioner’s statutory right in its registered mark ‘FEVIKWIK’ does not grant an exclusive right over part of the mark in ‘KWIK’, as it is a limitation imposed by the Registrar of Trademarks.
The plaintiffs, who have been using VERIZON Trademarks since 2000, were aggrieved by the defendants’ dishonest use of the ‘VRIZON’ mark for household and kitchenware products. The Court ruled that the plaintiffs have proven their case meets all infringement criteria, stating that the defendant’s use of the ‘VRIZON’ mark is an attempt to capitalize on their well-established mark. They have established that the defendants’ “VRIZON” mark is similar to their trademarks and that their use of the mark in trade, specifically targeting household and kitchenware, satisfies the “use of the mark” requirement. Consequently, the Court decreed the suit in favor of the plaintiff and restrained the defendant from using the impugned mark.
Sun Pharma Laboratories Limited vs Narender Kumar & Ors on 21 March, 2024 (Delhi High Court)
The plaintiff filed a suit seeking a permanent injunction to prevent the defendants from manufacturing, selling, advertising, and dealing in pharmaceutical preparations under the defendants’ mark “CAFTADAY” or any other trademark deceptively similar to the plaintiff’s mark “CAFTA”. Previously, an ex-parte ad interim injunction was issued. Subsequently, the defendant argued that restraining them from using the word “CAFTA” would lead to the plaintiff monopolising over salt “ALCAFTADINE”. However, this argument was rejected. The Court also observed that the defendants’ product is priced slightly cheaper than the plaintiff’s, posing a risk of loss and damage. Consequently, the court restrained defendants from using the impugned marks.
The appellant’s patent application was refused under Section 15 of the Patents Act, 1970, due to the claims not meeting the criteria under Section 3(e) and 3(i) of the Act. The court accepted the appellant’s appeal and ruled that the hearing notice failed to address objections under Section 3(e), infringing on natural justice principles. The court found that Section 3(i) of the Act, which pertains to methods of treatment, does not apply to the case at hand.
Other IP Developments
International IP Developments
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- Source: https://spicyip.com/2024/04/spicyip-weekly-review-march-25-march-31.html
