Here is our recap of last week’s top IP developments including summaries of posts on the Law Commission’s Report on Trade Secrets and Economic Espionage, DHC’s decisions on working examples, writ jurisdiction of the pre-grant oppositions, and the Viagra-Vigoura trademark dispute. 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
Announcing the 2024 Shamnad Basheer Essay Competition on Intellectual Property Law
On the occasion of Prof. Shamnad Basheer’s 48th birth anniversary, we announced the 2024 Shamnad Basheer Essay Competition on IP Law! As always, the topic is open ended, so long as it is related to IP law. We are thrilled to announce the judges for this edition: Prof. (Dr.) Mrinalini Kochupillai, Mr Murali Neelakantan, and Justice Gautam S. Patel! There are also prizes of 50k to be split between the winners! Please click above for details about the submission guidelines, and please do share this widely!
Law Commission’s 289th report- Trade Secret and Economic Espionage
Protecting Trade Secrets: Law Commission shows the way. The draft bill proposed by the Commission provides a separate legal framework, which recognising and enforces Trade Secrets. But does it go far enough? Read the post on this by Yogesh Byadwal below to know more.
In a short and crisp decision, the DHC clarified that the extraordinary writ jurisdiction cannot ordinarily be invoked against a Controller’s decision rejecting a pre grant opposition. In clarifying so, the Court also streamlined the future course of action for the aggrieved opponent in such cases. Read on to know more.
After 19 Years, Delhi High Court Passes the Judgement in the Viagra-Vigoura Trademark Dispute
For a drug known to offer quick results, the Viagra-Vigoura dispute surely took its time to conclude. Read this post by Surabhi where she raises interesting questions about “Viagra”‘s dilution, “Vigoura”‘s faulty strategy, and the eventual relief offered by the Court.
Other Posts
Leaving Out the Working Examples?
DHC’s recent ruling in Bayer v. The Controller on working examples is surely going to interest patent lawyers. Remanding the matter back to the Patent Office, the Court clarified that a working example does not define the patent’s scope. Dhruv Vatsyayan raised some concerns with this finding in his guest post.
SpicyIP Tidbit: Delhi High Court grants an Ex-parte Ad interim Injunction to Designer Gaurav Gupta
On DHC’s recent interim injunction to designer Gaurav Gupta, Surabhi highlights the problem with the Court’s one glove fits all approach in this tidbit. Read on to know more.
What’s in a Name? Taking a look at IPO’s Interesting Observations on Benami Pre-Grant Oppositions
Putting a halt on the debate over a pre grant opponent’s identity, the IPO in Suman Das v. Arcelormittal has rightfully clarified that the substance of pre grant oppositions is what matters, and not the identity of who is putting forward the opposition. Read on to know more.
Offering a critique of the 2023 DHC and Supreme Court decision in the Google Ad words cases, Malak Sheth shared his two part post. In the first part, Malak argues against the Supreme Court’s observation on the lack of likelihood of confusion in using a trademark as a keyword.
Continuing the discussion on the 2023 Google AdWords cases, Malak argues against the Courts’ approach in establishing trademark use vis-à-vis keywords. In Part II of the post, he explains how the use of a trademark in the digital world cannot be viewed through the same lens as assessing their use in the physical world.
Case Summaries
Dolphin Mart Private Limited v. Avenue Supermarts Limited & Anr. on 10 May, 2024 (Delhi High Court)
The defendant filed an application seeking cost of litigation from the plaintiff. The plaintiff sought to withdraw the case in light of the death of its founder and internal restructuring. The defendant claimed that the trademark infringement suit filed by the plaintiff, only to withdraw it later costed the defendant huge sums of money. The Court, while disposing of the application held that firstly, if plaintiff is not allowed to withdraw the suit it would lead to unnecessary litigation and secondly, if costs are imposed parties would be discouraged to settle disputes or withdraw from litigation.
Nokia Technologies Oy vs Amazon Seller Services Private Limited on 13 May, 2024 (Delhi High Court)
The defendant filed an application seeking deletion from the array of parties. The defendant argued that it only sells and offers to sell the impugned devices, and has no role in their manufacturing the same. It agreed to abide by the Court orders and argued that it is not a necessary party as per Vidur Impex & Traders v. Tosh Apartments. The plaintiff however contended that under Section 48 of the Patents Act, 1970 it is the right of the patentee to prevent manufacturing, using, selling and offering for sale of the infringing products. The Court agreed to the arguments of the plaintiff and held that the deletion cannot be permitted.
Bentley Systems Inc & Anr vs Pnc Infratech Limited & Ors on 13 May, 2024 (Delhi High Court)
The plaintiff instituted the present copyright infringement suit against the defendant for continuing to use the plaintiff’s software after the expiry of its license. The defendants however, argued that perpetual licenses were procured by the defendants for the use of said software programs and that they are willing for their computer systems to be inspected by a Local Commissioner, to which the plaintiffs agreed. The Court, thus, appointed a Local Commissioner and restrained the defendants from formatting or deleting any software from their computer systems.
Reckitt & Colman (Overseas) Hygiene vs Bhateshra Bechara Hirabhai on 13 May, 2024 (Delhi High Court)
The plaintiffs filed the present suit against the defendant’s use of the marks ‘Airwick’ and “Airwoc’. The plaintiffs alleged that the defendant’s mark are deceptively similar to its “Air Wick” trademark. It’s alleged that the defendant’s deceptively similar mark is also used in its websites for their products which have attracted negative reviews and comments. The plaintiff argued that the negative feedback is harming the plaintiff’s reputation. The Court ruled that the defendants have tried to slavishly copy the plaintiffs’ trademark by adopting a visually, structurally and phonetically similar trademark. The Court passed an ex-parte ad interim injunction restraining the defendants from manufacturing, selling products under the impugned trademarks till October 4, 2024.
The plaintiff filed a trademark infringement suit against the use of a deceptively similar trademark and identical trade dress by the defendant. The plaintiff alleged that the defendant not only manufactures the impugned product but also promotes the same on social media. Even though the plaintiff’s Super-T has been disclaimed, the Court held that a prima facie case of infringement has been made out by the plaintiffs and thus, the defendant was restrained from using deceptively similar trade dress/ trademark from May 31, 2024.
Warner Bros. Entertainment Inc. & Ors vs Doodstream.Com & Ors on 13 May, 2024 (Delhi High Court)
The plaintiff, in the present suit, argues that the defendant has consecutively disobeyed orders of the Joint Registrar regarding disabling infringing links from the website. The doodstream website, as contended by the plaintiff is a library of infringing content which allows the users to access remote hosts and copy the link to the website, the website then creates a doodstream link for the infringing content. The defendant however argued that the directions have been complied with and that the plaintiff has sent over 5 lac links in a .pdf file that requires some time for takedown. The Court however, opined that the amount of infringing content on defendant website is huge and the current architecture of the website allows users to upload content easily. The Court held that the defendant cannot claim the intermediary liability exceptions under the IT Act and relevant Rules. It further held that the defendant’s website is a cyberlocker website and thus, in light with the Universal City Studios LLC & Ors. vs. Mixdrop. the Court restrained defendant no. 5 and 6 from operating Doodstream website, the impugned domain names, or any other platforms for uploading the impugned content infringing the plaintiff’s copyright.
M/s Vans Inc. USA v. FCB Garment Tex India (Pvt.) Ltd. on May 2, 2024 (Delhi High Court)
The petitioner filed rectification petition to remove two trademarks from the register- ‘IVANS’ AND ‘ IV ANS NEXT’ used for trade in identical goods. The plaintiff has a registered well known mark “Vans” and it alleged that the defendant’s mark are deceptively similar to its well-known mark. The plaintiff also alleged that the examination of impugned trademarks was faulty, registration should have been denied under Section 11(1)(b) of Trade Marks Act, 1999. The defendant however contented that the marks are not deceptively similar to the plaintiff’s “Vans” mark. They further contented that they are the first users of the impugned marks in India. The Court agreed with the defendant and observed that “Declaration of a well-known trademark cannot give an automatic, unabridged, and unmitigated right to a proprietor to apply for rectification of all the marks which have subsisted on the Register for years prior and in different classes” and dismissed the rectification petitions.
Beiersdorf AG v. Hindustan Unilever Ltd. on May 9, 2024 (Delhi High Court)
The plaintiff alleged disparagement of its “Nivea” mark by the defendant via through their comparative ad campaign for their “Pond’s” product. The plaintiff claimed that their blue coloured product trade dress is iconic and distinctive and Nivea is a well-known trademark. The defendant claimed defence under comparative advertising, that it does lead to disparagement and that the plaintiff does not hold registration over the blue colour in question. The Court analysed the jurisprudence of comparative advertisement, ‘overall effect’ test and referred to multiple case laws to conclude that the act of the defendants mislead and disparage the plaintiff’s products due to strong association of blue colour with the plaintiff’s products among the public. The Court restrained the defendant from performing impugned acts and comparing the plaintiff’s products to those of the defendant’s that would lead to disparagement or denigration of the plaintiff’s products.
The present appeal was filed under Section 117A of Patents Act, 1970 against an order rejecting the patent application for ‘crop safeners’. The patent was rejected by the Deputy Controller on the grounds that the application did not provide exact ratio pesticide and safener being used and for lack of inventive steps. On the request of the appellant to amend the claim to include ratio and on exhibition of benefits of the invention/ the inventive step incorporated in the invention, the Court ruled that the patent application be remanded back for a de novo hearing by the Controller.
Intergrow Brands Pvt. Ltd vs Wipro Enterprises Private Limited on 10 May, 2024 (Kerala High Court)
The present hearing was against an ad hoc interim injunction passed by a District Court. The appellant argued that under Section 135(2) of Trade Marks Act, 1999, a list of instances when injunctions can be granted is mentioned and the impugned order is legally impermissible for being outside the scope of the provision. Reliance was also placed on the decision of Single Bench in G.M.Sheik and Others v. Raja Biri Private Ltd and Others wherein the same Court has held that interlocutory injunctions cannot be passed in matters beyond the scope of Section 135(2) subject to exceptions under Section 135(3). In absence of precedents from Division bench or Apex Court and due to paucity of time, the matter has been listed on 21.05.2024 to decide the legality of the impugned order.
Hmd Mobile India Private Limited vs Mr Rajan Aggarwal & Anr on 14 May, 2024 (Delhi High Court)
The present suit arose when Nokia launched an advertisement on YouTube regarding a new product which comprised of words ‘coming soon’ and the respondent filed a copyright infringement suit in District Court claiming their rights over ‘coming soon’, which was registered with statement titled ‘advertisement’. In response, the present rectification petition was filed to remove the subject registration. The Court was convinced that the registration of the said subject was full of procedural lapses including non-reply of a ‘Discrepancy Report’ from the Registrar asking how can an idea be copyrighted. The Court held that the impugned copyright is a generic idea explaining concept behind advertisements, it is devoid of originality, there is no degree or modicum of creativity and even if it is considered to be an expression of the idea there are not many alternate ways to express the idea. On the above grounds, the Court removed the impugned registration from the register.
Alimentary Health Ltd. v. Controller of Patents on May 14, 2024 (Delhi High Court)
A patent application for a formulation of probiotic was rejected. The key questions in the suit were whether the subject patent is distinct from prior art and whether it demonstrates a significant technical advancement.The Court relied on Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries Ltd. and Hoffmann-La Roche Ltd & Anr. v Cipla Ltd., emphasizing on person skilled in the art. The five-step inquiry into inventive step, as outlined in the latter case was also referred. The Court further held that the order was a non-speaking one and remanded it back for fresh consideration.
Vodafone Idea Limited vs Saregama India Limited & Anr on 17 May, 2024 (Calcutta High Court)
The order was passed jointly in three suits. The present dispute pertained to Vodafone’s use of sound recordings as “Caller Ring Back Tone”. IPRS argued that Vodafone’s use of the sound recordings infringed the copyright of authors of the underlying literary and musical works. Vodafone on the other hand argued that the memorandum of settlement (MoS) it executed with Saregama permitted it to use the sound recordings in question. The Court interpreted the MoS and held that the same does not authorise Vodafone to use the recordings in the above manner. The Court further held that the 2012 amendment has radically changed legal framework pertaining to rights of authors and has granted right to claim royalties for every occasions where their work is communicated to the public. The Court expressly held that ownership of copyright by producers does not limit the composers copyright.
The present suit was filed by the plaintiff, a Hindi film actor, alleging infringement of his personality rights, trademarks, and copyright by different defendants. The suit was instituted against different defendants alleged to be selling merchandises, autographed posters, create misleading contents using his image, name and likeness, using his image and persona for creating content via Gen AI, host his unlicensed chatbox, use his clippings for making memes. The Court recognized the personality right of the plaintiff and granted ad interim injunction in respect of some of the defendants, while some defendants undertook to remove the impugned content/ products from their websites. Regarding one Youtube video titled “JACKIE SHROFF IS SAVAGE (*) JACKIE SHROFF THUG LIFE!” on defendant no. 5’s Youtube account, the Court disagreed with the plaintiff’s argument that the same portrays him in a derogatory manner and instead held that it is a tribute to his assertive demeanour. Interpreting the phrase “Thug life”, the Court held that the video is an artistic expression and restraining the same may have far reaching consequences and thus refused to grant an ex-parte interim injunction against defendant no.5.
Other IP Developments
- Director of Malayalam film Vazhakku removed the movie from online streaming platform after copyright infringement by co-producer.
- Epson recognized as well-known trademark in India.
