Here is our recap of final week’s high IP developments together with abstract of the posts on DPIIT’s determination to take over the IT division of CGPDTM, BHC at Goa’s determination to scrap the Goa govt.’s round on Section 52(1)(za), MHC’s clarification on whether or not a counterclaim might be filed in opposition to a trademark rectification petition, and DHC interim injunction order in opposition to infringement of the IP rights of the makers of “Taarak Mehta ka Ooltah Chashmah” sitcom. This and much more on this week’s SpicyIP Weekly Review. Anything we’re lacking out on? Drop a remark beneath to tell us.
Highlights of the Week
SpicyIP Tidbit: CGPDTM in Spotlight- DPIIT Head takes over CGPDTM IT Division
In the background of a writ petition by AIPOWA pending earlier than the DHC, alleging large-scale arbitrary reallocation of issues throughout the Indian Patent Office, the DPIIT has seemingly taken issues into its personal fingers by appointing one in every of its administrators, Subhash Chandra Karol, because the IT head for CGPDTM. Yogesh Byadwal dives into the details of this writ petition, other instances where AIPOWA has locked horns with the CGPDTM, and the numerous recent administrative and other issues within the o/o CGPDTM in this tidbit.
Goa Circular on the Unauthorized Use of Sound Recordings During Weddings Hits a Wrong Note!
BHC turns down the quantity of wedding ceremony bells in Goa! The BHC lately put aside the state authorities’s round that allowed the usage of sound recordings with out an NOC from copyright house owners throughout wedding ceremony festivities. Gaurangi Kapoor discusses this decision, explaining the longstanding squabble between the executive and the judiciary regarding the interpretation of Section 52(1)(za).
With instructions to rethink whether or not the invention, as specified within the full specification, can be non-obvious, the MHC has remanded a patent utility again to the IPO. Curiously, the IPO had already rejected the applying on the grounds that its claims fall underneath prior artwork. Discussing this paradoxical cycle of occasions, Md Sabeeh Ahmad writes about this judgment.
Other Posts
Can a counterclaim be filed in opposition to a TM rectification petition? The MHC addresses this seemingly novel query by treating the counterclaim as a recent petition. Read Tejaswini Kaushal’s post on this development.
Underlining the distinction between product and course of patents, the MHC, in back-to-back orders, has clarified {that a} product patent utility can’t be rejected on the grounds that the related course of has already been patented. Read Tejaswini Kaushal’s discussion on these orders.
Who really owns the attributes of fictional characters? the DHC interim injunction in favor of makers of the Indian sitcom “Taarak Mehta ka Ooltah Chashma” makes a powerful case for the makers of the present. SpicyIP intern Samridhi Chugh discusses this order.
Case Summaries
Nippon Steel Corporation vs Controller General Of Patents, Designs on 29 August, 2024 (Delhi High Court)
An attraction was filed in opposition to the impugned order by the respondent rejecting the appellant’s patent utility for missing novelty and creative step. It was alleged that the controller gave no reasoning or justification for the order and the order was cryptic. The Court determined to put aside the impugned order and ordered the controller to resolve the applying on deserves.
Impresario Entertainment vs Star Hospitality on 27 August, 2024 (Delhi High Court)
The High Court handed an interim injunction in opposition to the defendant, restraining them from utilizing the “Social” mark. The defendant was utilizing the impugned mark “Social Affair” for comparable providers as that of the plaintiff. The plaintiff is the prior adopter of the mark “Social”. The Court held that the competing marks are deceptively comparable and use of the impugned mark by the defendants may trigger public confusion or deception.
M/S Prakash Pipes Limited vs M/S Jaiswal Traders on 29 August, 2024 (Delhi High Court)
The Court granted a everlasting injunction and decree to the plaintiff in opposition to the defendant restraining them from utilizing the marks “PRAKASH/PRAKASH GOLD”. The plaintiff makes use of the mark “PRAKASH” and has constantly used it since 1980 to construct goodwill available in the market. Considering that each the Plaintiff and the Defendants had been within the an identical line of enterprise and discovering that the competing marks are deceptively comparable, the Court handed the injunction order.
HT Process Controls Pvt. Ltd. v Ankur Gupta & Ors. on 15 July, 2024 (Delhi High Court)
The Plaintiff sought an ex parte advert interim injunction order from the courtroom in opposition to the defendant to guard its confidential info, commerce secrets and techniques and technical know-how. The plaintiff alleged that the defendant, who’s an ex-employee of the plaintiff, has transmitted confidential info earlier than leaving their employment from hist official id to his private id. They additional alleged that the next employer of the defendant and one other enterprise, appearing in collusion with them, filed pre grant oppositions in opposition to the plaintiff’s patent utility counting on the above confidential info. The Court discovered a prima facie case in opposition to the defendant and his employer and handed an ex-parte advert interim injunction order in opposition to them.
The plaintiff approached the Court searching for refund of courtroom charges after that they had withdrawn a previous swimsuit contending trademark infringement. However, the plaintiff had made incorrect and deceptive averments of their earlier plaint. The Court held that the place a celebration is discovered responsible of constructing dishonest averments, then the Court can dismiss the applying with out motive as that they had approached the courtroom with unclean fingers. Accordingly, the Court dismissed the applying with prices of Rs. 50,000/-.
DKH Retail Limited vs Jay on 27 August, 2024 (Tis Hazari Courts, Delhi)
The plaintiff was the proprietor of the registered trademark “SUPERDRY” and was concerned within the clothes enterprise. The plaintiff submitted that the defendant was operating a warehouse engaged within the enterprise of storing, distributing and promoting items that falsified the trademark of the plaintiff. Previously, a Local Commissioner was appointed for execution of a fee whereby a number of articles of counterfeit items containing the falsified trademark had been found from the defendant’s premises. Accordingly, the Court held in favour of the plaintiff and restrained the defendants from utilizing the involved trademark by way of a everlasting injunction and hand over all seized merchandise. They additionally imposed damages of Rs. 3,00,000/- on the defendant.
Grass Valley K K vs Ashok Kumar(S) & Ors on 21 August, 2024 (Delhi High Court)
The plaintiff sought an ex-parte advert interim injunction in opposition to Ashok Kumars/ John Does for infringing its copyright in its EDIUS software program. It alleged that majority of the customers of its software program in India use unlicensed/ pirated model of the software program and after appreciable efforts they’ve recognized IP addresses of customers utilizing unlicensed/ pirated model of the software program and have collated the crack customers’ information, primarily based on the invalid/ incorrect requests it has acquired. The Court held that such providing and promoting of pirated software program is illegitimate and unethical and handed an ex-parte advert interim injunction order in opposition to the defendants.
The plaintiff alleged that the defendant used its distinctive logos, “VIVO” and different formative marks, in a way that was an identical or deceptively comparable, resulting in confusion amongst customers and thus sought a everlasting injunction in opposition to them. Earlier, the defendant had filed a trademark utility for “VIVO +Plus Adhesive” in Class 01, and the plaintiff found this in April 2021. Despite a stop and desist discover despatched by the plaintiff, the defendant continued utilizing the impugned marks. The Court had additionally issued an ex-parte injunction in October 2021, restraining the defendant from utilizing them. Recognising the plaintiff’s extant popularity and goodwill as a result of its important presence available in the market, promoting and sponsorships of main occasions, the Court discovered that the defendant’s use of the “VIVO” mark was dishonest and constituted infringement and passing off. Declaring “VIVO” to be a well known mark, the Court granted the everlasting injunction in opposition to the defendants and imposed prices to the tune of Rs. 3,01,000.
The plaintiff filed a petition searching for cancellation of the defendant’s trademark “INDO AIR” in Class 11. Arguing that this use, not being sincere or bonafide, constituted infringement, the petitioner argued that the respondent’s trademark, registered in 2018, was marked as “proposed to be used,” and there was no proof of its prior use. The Court discovered that the respondent’s mark, being registered for a similar class of products, was deceptively much like the petitioner’s mark “INDO” and was not adopted actually, resulting in potential confusion amongst customers. Consequently, the Court ordered the cancellation of the respondent’s registration and directed the Trademarks Registry to rectify its information and subject a notification accordingly.
Tractors & Farm Equipment Limited v. Bhavya Pipe Industry on 27 August, 2024 (Madras High Court)
The appellant filed an attraction in opposition to an order by the Principal Commercial Court, Egmore, Chennai, which returned its plaint underneath, directing it to be introduced earlier than the Commercial Division of the Madras High Court. Originally, the appellant had filed a swimsuit in opposition to the defendant searching for declarations that sure logos had been deserted by them in India and different injunctive reliefs in opposition to them. The current attraction centered on whether or not the Commercial Court was appropriate in returning the plaint. The Court concluded that the primary proviso to Section 7 of the Commercial Courts Act (CCA) particularly pertains to IPR disputes, that are solely heard by the Commercial Division, whatever the specified worth in High Courts with authentic civil jurisdiction. Following this, the Court upheld the validity of the choice of the Commercial Court, confirming that it accurately interpreted the CCA and dismissed the attraction.
The petitioner filed an attraction in opposition to the refusal of its patent utility titled “Administration of Wireless Systems,” initially filed in 2008, which concerned a system for managing conflicts between a number of wi-fi servers that configure wi-fi gadgets. The Indian Patent Office had objected to the applying primarily based on an absence of creative step and non-patentability underneath Section 3(ok) of the Act, primarily claiming that the invention was directed in direction of units of directions or software program, missing creative {hardware} options. The petitioner argued that the IPO ignored the technical impact of its patent which concerned battle decision between wi-fi servers, offering an answer by evaluating and prioritising insurance policies from main and secondary servers, and concerned {hardware} components like servers and cell gadgets. The Court discovered weight within the arguments of the Assistant Controller of Patents and dismissed the attraction, holding that whereas the invention supplied a structured strategy to managing wi-fi techniques, it essentially relied on algorithmic processes with none substantial technical {hardware} contribution, and, therefore, not qualifying for patent safety in India.