From Poetry to changing definitions of Transborder Reputation – we had some interesting posts on the blog this week! To read these, along with a round up of IP developments around the country, and world, read on below.
Anything we’re missing out on? Please drop a comment and let us know.
Highlights of the Week
Bolt Technology v. Ujoy Technology: The Reputation and Goodwill Crossover
Reputation and Goodwill: Not Really ‘Tomato-Tomahto’? The DHC’s verbose order distinguishing between ‘goodwill’ and ‘reputation’ resets the debate on the fundamentals of transborder reputation claims in trademark litigation. Read Tejaswini’s post on this to know more!
Jab “We” Met: When Intellectual Property (IP) Met Public Interest (PI), a Poem
When IP met PI (Public Interest)! Ever wonder how they’d describe themselves to each other? Lokesh, in this lovely poem, describes how he’d imagine that conversation would happen, highlighting the overlap between the two. Click to read!
Other Posts
Is the Writing on the Wall? Decoding Street Art, Fair Use and Moral Rights
Is usage of Mural art, in commercial advertisements covered by Fair use? The DHC to explore this issue in light of Acko- St. Art Sassoon Dock mural controversy. Read Yogesh’s detailed post examining the issues concerning copyrightability, permanent fixation, and the mural’s setting.
Webinar on “Improving Drug Regulation for Greater Access to Biologics and Vaccines” [December 08]
Third World Network (TWN) organized a one-hour discussion (with Q&A) on improving the drug regulatory system to create better access to biologics and vaccines on December 08.
Case Summaries
The Delhi High Court granted an ad interim injunction to the plaintiff against the defendant’s use of “Tumotin” mark. The court held that the defendant’s mark is deceptively similar to the plaintiff’s “Tumorin” trademark. Concerning the contention of the defendant that the plaintiff’s trademark should not have been registered in the first place, the court held that Section 31(1) provides for a presumption of validity of a registered trademark and thus dismissed this argument in the context of determining the question of infringement. The court clarified that the above issue may be relevant in determining the relief.
The Delhi High Court issued a summon to the defendant, a co-founder of the plaintiff’s company for using an allegedly identical “Brine” mark.
Castrol Limited & Anr. vs Voltranic India Lubricants & Ors. on 30 November, 2023 (Delhi High Court)
The plaintiff filed a suit against the defendants alleging infringement of their trademarks “Activ” “Radicool”, “GTX”, “Power 1”, “Magnetic” and “Edge” which were used in conjunction with the defendant’s “Voltronic” mark. Previously an ex-parte interim injunction was granted by the court. However, the defendant entered an appearance later and agreed to suffer the decree. The court perused the images of the competing products and held that the defendant is engaging in manufacturing counterfeit products. Consequently, the court decreed the suit in favor of the plaintiff and directed the defendants to pay costs of INR 1 lakh to the plaintiff.
Frankfinn Aviation Services vs Tata Sia Airlines Ltd. on 4 December, 2023 (Delhi High Court)
The suit pertains to the defendant’s use of “Fly Higher” phrase. The plaintiff had alleged that the term “Fly Higher” infringes its “Fly High” mark. However, earlier the court had clarified that the defendant’s use of the term was not as a trademark but as a descriptive term. After the earlier order, the parties made a proposal wherein they agreed that the defendant wouldn’t file a trademark application for the term “Fly Higher” and the plaintiff shall not intervene in the use of the term as a keyword, in advertising or as a hashtag. The court held that the parties will be bound by the above terms and disposed of the suit.
Alkem Laboratories Ltd vs Medox Lifesciences & Ors on 4 December, 2023 (Delhi High Court)
The plaintiff filed the present suit alleging infringement of its trademark “A To Z” by the defendant’s use of “A 2 Z”. Relying on the Cadila principles for confusion in the case of pharmaceutical products, the court held that the competing marks are deceptively similar and granted an ad interim injunction to the plaintiff.
Hind Chemicals Ltd. vs Mr. Rajesh Chawla & Ors. on 1 December, 2023 (Delhi High Court)
The plaintiff filed the present suit alleging that the defendant had infringed its trademark ‘SU-MAG’ and copyright of the of its packaging by using deceptively similar ‘GUDMAG’ mark and a similar packing. An interim injunction was granted to the plaintiff in 2006 and the suit was pending for 17 years. After the conclusion of the trial, the court granted a permanent injunction to the plaintiff, holding the competing marks and packing to be deceptively similar and imposed INR 3 lakhs on the defendant relying on two factors- a) Profit earned by the infringing party, and b) Duration of income, as under Rule 20 of the IPD Rules.
Nif Private Limited vs Registrar Of Trade Marks on 5 December, 2023 (Delhi High Court)
The present appeal was filed against the orders of the respondent rejecting its trademark application. The impugned orders rejected the applications without any reason and directed the appellant to ask for reasons separately, under Rule 36. The court observed that Rule 36(1) violated due procedure and should be open to challenge. Regarding the impugned orders, the court held that though the orders state that the applications were rejected based on section 9(1)(a) and 9(1)(b), reasons behind the applicability of the said provisions was not given therein. Thus the court set aside the impugned order and directed to hear the matter afresh.
Indarmal M Solanki vs Rakesh Gupta And Anr on 1 December, 2023 (Delhi High Court)
The present application was filed by the plaintiff seeking cancellation of the respondent’s trademark ‘EL PASO’. The plaintiff argued that the defendant’s mark is similar to its registered ‘ELPASO’ trademark and the defendant has not renewed the impugned mark since 2017. The court held that the respondent’s mark was identical to the petitioner’s mark and since they target the same consumer base and are identical goods, the registration granted to the respondent would cause public confusion and thus directed for its removal/ cancellation.
Burger King Corporation vs Swapnil Patil & Ors on 4 December, 2023 (Delhi High Court)
The Delhi High Court granted a dynamic injunction against the use of plaintiff’s “Burger King” mark. The order directed DNRs and MEITY to block websites illegally offering fraud franchise of the plaintiff’s restaurant chain, whenever the details of the same are communicated to them by the plaintiff.
Other Developments
- Delhi High Court imposes costs worth 7 lakhs on City News Network for infringing CNN’s trademark.
- Delhi High Court appoints former Supreme Court Judge, (Retd.)Justice Nageswara Rao as a mediator in a ‘shapemark’ infringement case.
- End of patents’ term enabled Indian pharma companies to have higher growth rates in chronic and subchronic therapy segments- PharmaTrac.
- Telangana High Court upholds trial court’s decision in a copyright infringement case against director Koratala Siva pertaining to the film ‘Srimanthudu’.
