Here is our recap of last week’s top IP developments including summaries of posts by Lokesh on his ATRIP Winning Essay, the Delhi High Court’s decision in Vans v. FCB and the Delhi High Court’s decision awarding Rs. 200 crore damages in a patent infringement suit. 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
ATRIP Winning Essay 2023: Whither Global South’s Copyright Scholars: Lost in the “Citation Game”?
A very big congratulations to Lokesh from our SpicyIP team, for winning the prestigious 2023 ATRIP Essay Competition for Young Researchers in IP! In this post, Lokesh discusses the idea put forth in that essay, including raising the questions of how the “Citation Game” is played, and what effects it has on IP discourse dynamics. Read on for more on this thought provoking essay!
DHC Imposes INR 217 Crores as Damages in a Patent Dispute, Mostly Relying on Estimates
DHC’s recent decision imposing INR 217 Cr. for patent infringement seems to be big on numbers but low on considering key factors while calculating the damages. Praharsh highlights how the decision is based mostly on estimates instead of actuals.
Other Posts
[Sponsored] Deadline Extended! Apply Now for the WIPO-NLUD-IPO Joint Masters/LL.M. at NLU Delhi
We are pleased to inform our readers that the deadlines to apply for the WIPO-NLUD-IPO joint Masters/ LL.M. programme has now been extended. The last date to apply is 10th June, 2024 (Indian Nationals) and 28th June, 2024 (Foreign Nationals). For more detail please read the announcement above.
The DHC recently opined that recognition of Vans as a well-known trademark will not give its proprietor an automatic, unabridged right to apply for rectification of FCB’s prior “IVANS” mark. What could this observation mean for the proprietors of prior registered marks and well-known trademarks? Read Surabhi’s post for this below!
Case Summaries
Casablanca Apparels Pvt. Ltd. v. Polo Lauren Company LP on 21 May 2024 (Delhi High Court)
The petitioner, Casablanca Apparels had filed a rectification petition seeking rectification of the respondent, Polo Lauren’s registered mark ‘Polo’. Previously, the respondent had filed a suit before the District Court and obtained an ex parte ad-interim injunction against the petitioner. Meanwhile, the petitioner moved an application under Section 124(1)(b)(ii) of Trade Marks Act, 1999 pleading invalidity of the respondent’s mark. The trial court posted the matter for arguments on July 8, 2024, thus raising the question of maintainability of present petition. The Court noted that no leave was granted by the District Judge and considering that the application under Section 124 is pending, the Court dismissed the petition with liberty to the petitioner to pursue the application before the Trial Court.
Hygieia Inc. v. Assistant Controller of Patents and Designs on 12 March 2024 (Madras High Court)
Hygieia filed an appeal against an order of the respondent rejecting patent application for invention ‘System, Methods and Devices for Achieving Glycemic Balance’, a method for treating diabetes, under Section 59, Patents Act 1970. The application, originally filed under PCT, when extended to India the appellant had to amend the claims since methods cannot be patented under Section 3(i). The Controller rejected the application on the grounds that amended claims exceeded original specifications. The Court relied on Allergan Inc v. The Controller of Patents wherein the Court had held that dichotomizing claims and accompanying specifications is against patent regime and accordingly, allowed the appeal. The Court set aside impugned order and remands the patent application for de novo consideration.
Paresh Ajitkumar Kapoor v. Controller of Patents and Designs on 24 May 2024 (Calcutta High Court)
An appeal was filed against the respondent’s order cancelling the appellant’s registered design for ‘air coolers’. Respondent no. 3, engaged in similar business, had similar designs registered and both parties have an acrimonious history of litigation. In the extension of the same, Respondent no. 3 had filed an application under Section 19, Designs Act, 2000 seeking cancellation of the appellant’s design on the grounds that China National Intellectual Property (CNIP) website has published a prior publication. The Controller accepted the application and cancelled the appellant’s design. The Court, held that “In order, to constitute prior publication, an image or design must be published in such a way that a person possessing ordinary knowledge of the subject is able to apply the design, to the article or see the design to the article or to see the design to the eye of the mind” which was not the case with snapshot of CNIP website, cited as prior art. The Court thus set aside the impugned order and remanded the cancellation application for fresh consideration.
Sumil Chemical Industries Pvt Ltd v. UK Crop Sciences Pvt Ltd on 24 May 2024 (Delhi High Court)
The plaintiff, engaged in the business of agrochemical products, is the registered proprietor of trademarks ‘cosamil’, ‘cosamil-DF’, ‘cosamil-gold’. The suit was filed against the defendant’s use of deceptively similar mark ‘cosamin’, allegedly causing consumer confusion and thereby infringing the plaintiff’s mark. The Court held that the parties are dealing with identical products and the marks have visual, phonetic and structural similarity. Thus, ruling that the defendant’s mark is prima facie infringing the plaintiff’s mark, and granted an ex parte ad-interim injunction in favour of the plaintiff.
M/s Escorts Ltd. v. Sudhir Kumar and Another on 20 May 2024 (Delhi High Court)
The plaintiff has filed a suit apprehending infringement of his registered design for ‘AAR-H type coupler’. The defendant is an ex-employee of the plaintiff company and during employment, had access to its designs and data. On both parties applying for a coupler tender, the plaintiff apprehended the use of his design by the defendant and sought an ex parte ad-interim injunction and appointment of a Local Commissioner for enquiry. The ex parte ad interim injunction was granted on July 5, 2018. Later, the Local Commissioner and the plaintiff’s expert submitted photos of allegedly infringing designs. The Court recognizing that the ex-parte ad-interim injunction was granted on a quia-timet action, observed that there has been a lapse of nearly six years without the plaintiff prima facie establishing prima facie infringement. The Court observed that the plaintiff has not explained how the impugned designs are infringing and thus vacated the quia timet interim injunction.
Lighthouse Learning Pvt. Ltd. v. Manju Malhotra and Ors on 17 May 2024 (Delhi High Court)
The plaintiff, engaged in running pre-schools under brand ‘Eurokids’, filed an application seeking ex parte ad-interim injunction against the defendant who is an erstwhile franchisee of the plaintiff’s brand. After the expiration of the franchisee agreement, the defendant adopted the ‘EURO kindergarten’ mark and continued to use it without cooperating with the plaintiff with regards to settlement agreement. Meanwhile, the plaintiff appointed another franchise nearby, now causing confusion among the public between the defendant and the new franchisee. The Court observed that the defendant’s adoption of the mark is dishonest and mala fide and granted an interim injunction to the plaintiff.
Himalaya Global Holdings Ltd. v. Rajasthan Aushdhalaya Pvt. Ltd. on 24 May 2024 (Delhi High Court)
The plaintiff, engaged in business of ayurvedic medicines under brand ‘Himalaya’ has a registered trademark Liv.52. for a herbal drug. The present application was filed for grant of permanent injunction against use of Liv.333 by the defendant. The plaintiff has relied upon previous decisions wherein their mark has been enforced- Himalaya Drug Company v. SBL Limited (against LIV-T) and Himalaya Wellness Company v. Abony Healthcare Ltd. (against LIV.55 and LIV.999) The plaintiff has also alleged that the defendant’s device mark uses similar elements as plaintiff. The Court has held that plaintiff has made a prima facie case and passed an ex parte ad-interim injunction in favour of the plaintiff.
Galactus Funware Technology Pvt. Ltd. v. M/s MLP and Others on 27 May 2024 (Delhi High Court)
The plaintiff has filed an application seeking permanent injunction against use of plaintiff’s registered trademarks MPL, Mobile Premier League, and device mark in defendant’s impugned websites. The plaintiff argued that the website content is a substantial copy of the plaintiff’s content. On the prima facie case made by the plaintiff, the Court passed an ex parte ad-interim injunction in favour of the plaintiffs.
Cipla Health Limited v. Glister Pharmaceuticals on 27 May 2024 (Delhi High Court)
The present suit was filed to restrain the defendant from infringing and passing off mark omnigel, device mark, copyright and trade dress (red base with white and blue). The defendant, like plaintiff, is a pharmaceutical company using mark ‘Olnigel gel’. The Court held that 1.) trademarks Omnigel and Olnigel are deceptively similar 2.) impugned products are similar and serve identical purposes- pain relief 3.) similarity of the nature of goods, nature of purchase and class of consumers is bound to create confusion. Thus, an ex-parte ad-interim injunction was granted in favour of the plaintiff.
Star India Pvt. Ltd. & Anr. v. STREAM2WATCH.PK & Ors. On May 28, 2024 (Delhi High Court)
The plaintiffs, which owns the exclusive media & broadcasting rights over the T20 World Cup 2024, sought a “dynamic+” injunction to pre-emptively restrain rogue websites from streaming T20 matches in real time. While some of these websites are identified by the plaintiff, the injunction was issued against all existing and future websites that mirror and illegally stream matches. The plaintiffs were placed at liberty to intimate the DoT and MeitY along with Internet Service Providers (ISPs) to block these rogue websites without considerable delay, as any lag in doing so can lead to severe monetary damages for the plaintiffs.
Network 18 Media and Investments Ltd. & Anr. v. www.brawlersfightclub.com & Ors. on 28 May, 2024 (Delhi High Court)
The plaintiffs sought an injunction restraining the defendant and other alleged rogue websites from infringing their copyright and intellectual property. The defendant had created a fraudulent website imitating a news article that used the “CNBCTV18” logo, registered trademark, and a screenshot from an exclusive interview of Anant Ambani. The website claimed that in an interview with CNBCTV-18, Anant Ambani revealed that investing in a particular cryptocurrency platform can yield results of 4000% return, which was evidently a fraudulent claim. The website also allegedly used the name, likeness, image, and reputation of Mr. Anand Narasimhan who was shown in conversation with Anant Ambani in the screenshot uploaded on the website. The Court, satisfied that a prima facie case of copyright and intellectual property infringement was made, and issued an interim injunction.
Federated Hermes Ltd. v. John Doe & Ors. on 28 May, 2024 (Delhi High Court)
The plaintiff sought to restrain unknown person(s) from using the trademark and logo of Federated Hermes (a renowned investment bank). The defendant(s) used the name and logo of Federated Hermes to dupe unsuspecting investors by promising abnormal returns. The defendant via whatsapp groups marketed himself as a representative of the plaintiff, and conducted classes on investing in the stock market. The defendant also created an app and offered “VIP trading accounts” which also appeared to bear the name and logo of Federated Hermes. The Court was satisfied that the unknown defendant(s) misused the logo and name of the plaintiff to lend credibility and legitimacy to a fraudulent scheme. An ex-parte ad-interim injunction was granted to the plaintiff.
The dispute was over the use of the mark ‘JINDAL’ on PVC pipes under class 17. While the plaintiffs had registered the mark in April 2006, there was no evidence of its use until 2022, on the other hand the defendants had been using the mark since 2010 at least. The plaintiffs also did not have exclusivity over the ‘JINDAL’ mark, since they admitted to shared reputation in the category of steel pipes. Further, the defendants were using their family name ‘Jindal’ which is protected under section 35 of the Indian Trademarks Act, 1999. The Court found that the balance of convenience lies in favor of the defendant and vacated the earlier interim injunction.
The plaintiff produces structure modelling software, and licensed 106 units of the software to the defendant. Under suspicion that the defendant is using unlicensed/pirated versions of the software as well, the plaintiff hired private investigators to uncover the same. Based on the report of the investigators, the plaintiffs allege that the defendants have been using unlicensed software, and sought for a local commissioner to be appointed to investigate the matter. While the defendants maintain that unlicensed software is not being used, the Court directed the plaintiff to submit an undertaking that in the event of no unlicensed software being discovered by the local commissioner, the plaintiff shall compensate the defendants as the Court deems fit. The plaintiff agreed, and a local commissioner was appointed at the expense of the plaintiff.