Here is our recap of last week’s top IP developments including summary of the post on DHC’S observation in Sun Pharma v. Dabur India. Anything we are missing out on? Drop a comment below to let us know.
Highlight of the Week
The DHC’s observation about the Applicant’s responsibility to serve the Counter Statements instead of the TM Registry is perhaps one of the most under-discussed aspects of the Sun Pharma v. Dabut case. Highlighting the legislative history behind the service of Counter Statements, Anurathna Mathivanan and Nivrati Gupta explain the implications of this decision. The post will surely be of interest to TM prosecution attorneys.
Case Summaries
The plaintiff, registered proprietor of marks ‘Vivanta’ and ‘Vivanta by Taj’, filed a suit against the use of the defendant’s unregistered mark ‘Vivanta’. The Court found that the use of the impugned mark for related services is a conscious attempt by the defendant to mislead the customers. Given the identical nature of marks and overlapping target audience, a prima facie case for infringement and passing off was made out and the Court granted an ex-parte ad-interim injunction against the use of the defendant’s trademark.
An appeal under Section 117A of the Patents Act, 1970 was filed by the petitioner against an order dated September 16, 2021. The impugned order was passed under Section 21(1) of the Act assuming abandonment of the patent on the grounds that the petitioner had not complied with the requirements of reply to First Examination Report within stipulated time. The respondent argued that Section 117A does not include an appeal against order passed under Section 21. The Court has agreed with the respondent’s argument and has held that the impugned order was rightly passed under Section 21(1) and that no appeal lies under Section 117A against an order under Section 21. The petition was accordingly dismissed.
M2P Solutions Private Limited vs Ashok Kumar on May 7, 2024 (Delhi High Court)
The present suit has been filed against two unknown defendants operating the website that allegedly infringed plaintiff’s trademark ‘M2P Fintech’. Plaintiff operates the website www.m2pfintech.com and has alleged infringement by the owners of website www.m2pcapital.com on the grounds of similar name, substantially copied colour scheme, and icon placement. The plaintiff also argues that the computer programme that created its website is both ‘artistic’ and ‘literary’ work and is protected under the Copyrights Act. The Court held that the plaintiff had made a prima facie case of trademark infringement and copyright violation and thus, passed an ex-parte ad interim injunction in favour of the plaintiff.
Great Galleon Ventures Limited vs Champa Prema Tandel on 1 May, 2024 (Delhi High Court)
The plaintiff alleged copyright infringement and passing off by the Defendant’s use of deceptively similar “Goa” label for their whiskey. The defendant inter alia argued that the Delhi High Court lacks the territorial jurisdiction to entertain the matter. The Court compared the competing labels and held that the defendant has slavishly imitated the plaintiff’s label. The Court also held that the defendant’s products are available in Delhi via some peddlers and considering that the plaintiff has a subordinate office in Delhi, it possesses the required jurisdiction. On the basis of the above, the Court passed an ad interim injunction in favor of the plaintiff, restraining the defendant from using the impugned label.
Kei Industries Limited vs Mr. Bharat Singh & Anr on 30 April, 2024 (Delhi High Court)
The Delhi High Court ex-parte decreed the suit in favor of the plaintiff holding that the defendant’s use of its “Kie Cabbil” mark was dishonest, with the intent to ride on the goodwill of the plaintiff. Despite being served with summons, the defendant did not appear not it filed any written statement. The Court granted a permanent injunction to the plaintiff and awarded INR 3 Lakhs as nominal damages and INR 7,17,500/- as costs.
Other IP Development
- Calcutta High Court dismisses a writ challenging the legality of the provision calculating the term of a patent from the date of application.
- INTA filed an intervention on interpretation of the term “Article” under the Indian Designs Act.
- Shark Tank India sends legal notice to participants for using clips from their pitch in the show.
- Rajnikanth responds to Illaiyaraaja’s copyright notice, states that the producer and the composer should resolve the issue.
International IP Development
- Microsoft directed to pay USD 242 millions to IPA Technologies, by a US federal jury in Delaware.
- US Supreme Court held that Sherman Nealy is eligible to seek more than a decade’s worth of damages for copyright infringement of his sample used in Flo Rida’s “In the Ayer” song.
- Amazon, MGM, and United Artists counter sue R. Lance Hill, the scriptwriter, in the “Road House” copyright dispute.
Please also cover the decision of the Delhi High Court in Vans Inc. v. Fateh Chand Bhansali decided on 02/05/2024. It deals with prior registration and whether the benefit of S. 34 will be available as also the relevance of being a well known mark.