India Monthly News Roundup – September 2024
IP Saarthi: Al-Powered Trademark Search Module for Efficient Results
On September 18, 2024, Piyush Goyal, the Union Minister for Commerce and Industry, announced the introduction of a cutting-edge Trade Mark Search Technology powered by Artificial Intelligence and Machine Learning (AI/ML), alongside the launch of the IP Saarthi Chatbot. This initiative is intended to improve the efficiency and precision of the trade mark application process in India, offering businesses a more streamlined method for managing their intellectual property. The announcement was made in New Delhi.
The newly developed Trade Mark Search Technology aims to expedite the clearance of trademark applications, responding to the increasing demands of a competitive business environment. This technology is expected to provide accurate trade mark identification and enhanced protection capabilities, benefiting both domestic and international businesses. Furthermore, the IP Saarthi Chatbot acts as a digital assistant, delivering immediate support to users as they navigate the registration process. Mr. Piyush Goyal underscored the importance of integrating official languages into the new platform to promote inclusivity and accessibility in the realm of intellectual property management. He reiterated the government’s dedication to minimizing bureaucratic delays and improving the ease of conducting business in India.
DGGI Issues Notices to Over a Dozen Food & Beverage Companies for Trademark Usage Violations
The Directorate General of Goods and Services Tax Intelligence (DGGI) has issued show cause notices to over a dozen food and beverage companies regarding the use of trademarks by their franchises and outlets located in states other than their registered offices. The DGGI asserts that these franchises and outlets, which are registered separately outside the companies’ home states, are obligated to pay GST for the utilization of the trademark. “Tax must be remitted for the use of trademark services.” Although franchise holders and vendors have been compensating the companies for brand usage, they have not been remitting GST on these transactions. According to the Central GST legislation (Schedule 1, Entry 2), transactions involving goods or services between distinct entities different registrations of the same legal entity are subject to taxation, even in the absence of a monetary exchange. Tax authorities maintain that the use of a brand by a franchise or branch in a different state constitutes a service rendered by the head office. However, industry experts caution that this interpretation may lead to a substantial increase in compliance obligations for businesses operating across various jurisdictions.
Flipkart's 'Latching-On' Feature Can't Be Used To Sell Counterfeit Products: Delhi High Court
In the case of Modern Mold Plast Pvt. Ltd. & Anr. v. Flipkart Internet Pvt. Ltd. & Ors., the Delhi High Court examined the issue of unauthorized sellers exploiting the listings of trademark owners on eCommerce platforms. The Plaintiffs, Modern Mold Plast, are manufacturers and vendors of products associated with various “MAHARAJA” trademarks, such as “MODERN MAHARAJA,” “MUKUT MAHARAJA,” “METRO MAHARAJA,” and “OMAHARAJA.” They initiated legal proceedings seeking a permanent and mandatory injunction against Flipkart and two additional sellers (defendant nos. 2 and 3) for trademark infringement and passing off. Modern Mold Plast alleged that third-party sellers, specifically AKS Trading (defendant no. 2) and NS Marketing (defendant no. 3), had appropriated their listings on Flipkart, marketing their products as if they were produced by Modern Mold Plast.
Upon reviewing the evidence, the court recognized that the Plaintiffs were the original users of the “MAHARAJA” trademarks, with their common law rights acknowledged in prior cases. The court determined that the practice of unauthorized sellers capitalizing on the Plaintiffs’ listings constituted passing off. As a result, the court ruled that such actions were unacceptable and instructed Flipkart to activate its “brand gating” feature to prevent unauthorized sellers from exploiting the Plaintiffs’ listings. The Plaintiffs expressed their contentment with the court’s directives and opted not to seek any further relief. The case was concluded with the court’s order for Flipkart to ensure that only authorized sellers are permitted.
Delhi High Court Awards Damages Against Defendant for Trademark Infringement in TAJ Case
The Delhi High Court delivered a significant ruling in favor of The Indian Hotels Company Limited (plaintiff), granting a permanent injunction against the defendant, Manoj, for infringing on the company’s registered trademarks and copyrights. The plaintiff, part of the Tata Group, owns several registered trademarks including “TAJ”, which has been in use since 1903 in the hospitality industry. The court found that the defendant had unauthorizedly used the plaintiff’s trademarks, content, and photographs on their website and business operations.
The court noted that the plaintiff had established its goodwill and reputation in the “TAJ” mark over decades, spending substantial amounts on advertising and promotion. The defendant’s use of the plaintiff’s marks was deemed malicious, deliberate, and intentional, constituting infringement. The court emphasized that the defendant’s actions were likely to confuse consumers, leading them to believe the defendant’s services originated from the plaintiff.
Given that the defendant did not appear to defend the case, the court granted summary judgment in favor of the plaintiff. The court awarded damages of ₹10 lakhs and costs of ₹5 lakhs to the plaintiff. Additionally, the court directed the transfer of the domain www.tajiconicmembership.com to the plaintiff. The judgment underscores the importance of protecting intellectual property rights and the potential consequences for those who engage in trademark infringement and copyright violations.
Case of Aktiebolaget Volvo v. M/S Grasp Engineering and Solutions on 11 September, 2024 (Delhi High Court)
The plaintiffs sought legal action against the defendant for violating their trademark “VOLVO.” They claimed that the defendant was unlawfully producing, selling, and distributing pumps under the name “VOLVO Pumps.” Despite receiving a cease-and-desist letter, the defendant persisted in using the trademark, resulting in confusion among consumers and dilution of the market. The plaintiffs contended that this situation negatively impacted their brand’s reputation and business, particularly due to the inferior quality of the defendant’s products. Acknowledging the trademark’s status as “well-known,” the Court granted an ex-parte ad-interim injunction to prevent the defendant from using “VOLVO Pumps” or any similar designation.
Case of Amba Shakti Steels Ltd. v. Sequence Ferro Private Limited on 3 September, 2024 (Delhi High Court)
The Delhi High Court has issued an interim injunction in favor of Amba Shakti Steels Ltd. in its ongoing trademark litigation against Sequence Ferro Private Ltd. This ruling overturned a previous decision made by the Commercial Court on January 18, 2024, which had denied Amba Shakti’s request for interim relief. The dispute centers on Amba Shakti Steels’ claims that Sequence Ferro Private Ltd. is infringing on its registered trademark “AMBA” by utilizing a confusingly similar trademark, “AMMAJI,” for its steel bars and related products. As a prominent entity in the steel sector, Amba Shakti is pursuing a permanent injunction against Sequence Ferro for trademark, copyright, and passing off.
The Delhi High Court issued an interim injunction in favor of the Appellant, determining that the respondent’s use of the trademark ‘AMMAJI’ was likely to cause confusion with the Appellant’s registered trademarks, such as ‘AMBA.’ The Court concluded that the Commercial Court had made a mistake by concentrating on the individual components of the two marks instead of considering the overall commercial impression, which was likely to be identical due to the phonetic, structural, and literal similarities between the two trademarks.
Delhi High Court Passes ‘Dynamic+’ Injunction to Protect Copyrighted Works of Warner Bros, Netflix & Others
The Delhi High Court has recently issued a significant injunction aimed at safeguarding the copyrighted materials of Warner Bros, Netflix, Disney, and other international entertainment firms. A new lawsuit was initiated by these global entities against 45 unauthorized websites, seeking to prevent them from hosting and streaming their copyrighted content from various films and television shows. The lawsuit was brought forth by Warner Bros. Entertainment Inc., Columbia Pictures Industries, Inc., Disney Enterprises, Inc., Netflix US, LLC, SBS Co. Ltd., SLL Joongangng Co. Ltd., and CJ ENM Co. Ltd. The complaint asserted that the infringing websites were distributing copyrighted content without any license or permission from the respective entertainment companies.
Justice Saurabh Banerjee characterized the situation as a quintessential example of the emergence of “hydra-headed” DNRs, or websites that stream and make available copyrighted content to the public without the necessary licensing. The court emphasized that the proliferation of these rogue websites, coupled with their overtly exploitative activities for ulterior motives, must not be permitted to persist. The court granted an ex parte ad interim injunction, prohibiting the unauthorized websites from streaming or hosting the plaintiffs’ copyrighted works. Additionally, it mandated that internet service providers block access to these infringing websites.
Jasleen Royal files a lawsuit against Guru Randhawa in Bombay High Court for unauthorized use of her music
Singer Jasleen Royal has initiated legal proceedings in the Bombay High Court against the prominent label T-Series, lyricist Raj Ranjodh, and well-known artist Guru Randhawa. The lawsuit revolves around claims of copyright infringement and the unauthorized utilization of Jasleen’s original musical works. The central issue pertains to a track titled “All Right” from the album “G Thing,” which Jasleen asserts was released without her authorization and includes her original material.
The lawsuit states that the infringement relates to musical compositions created by Jasleen in 2022, which were originally intended for promotional activities associated with the Ajay Devgn film Runway 34. The significant issue arose in 2023 when Jasleen learned that her music had been incorporated into the song “All Right,” which was released by T-Series and featured Randhawa’s vocals. To her dismay, the song appeared to reflect her original compositions without any recognition or credit. In response, Jasleen took swift action to safeguard her intellectual property by filing a lawsuit to prevent further misuse of her work. Jasleen has filed suit, accusing the defendants of infringing on her copyright and violating her moral rights. Her legal team has successfully obtained an interim court order requiring T-Series to remove the song from all streaming services.
Case of Bentley Systems Inc. & Anr vs SMEC India Private Limited & Anr on 18 September 2024 (Delhi High Court)
The Delhi High Court granted an ex parte interim injunction against SMEC India Private Limited and its director for using unauthorized versions of Bentley Systems’ copyrighted software programs. The plaintiffs allege that the defendants have been using unauthorized versions of their software programs, including Openrail Designer, Openroads Designer, Openflows WaterGEMS, Openflows Sewergems, Openflows Hammer, STAAD.Pro, Plaxis 2D, RAM Concept, and OpenBridge Modeler, without obtaining proper licenses from the plaintiffs.
The court found that the defendants were using pirated copies of Bentley’s software without proper authorization, causing harm to the plaintiffs and resulting in unjust enrichment. The order restrains the defendants from copying, reproducing, storing, installing, or using unauthorized versions of the software programs until the next hearing date. The court directed the plaintiffs to serve notice on the defendants and set a schedule for further proceedings, including filing replies and rejoinders. The case will be listed before the Joint Registrar on December 17, 2024, and before the court on January 23, 2025. The court has granted an interim injunction restraining the defendants from using the plaintiffs’ copyrighted software programs until the next hearing.
Controller Ruling on Patent Claim Amendments Sets Clear Boundaries
In a significant order regarding claim amendments, Controller Dr. S. P. Subramaniyan addressed patent application 9790/CHENP/2011 filed by M/s. Nippon Shinyaku Co. Ltd. The ruling clarified that any new amendments to claims cannot exceed the scope of the last amended claims. Initially, the applicant submitted 11 claims, which were subsequently reduced to 2 after a First Examination Report (FER). Following a hearing notice, the applicant attempted to expand the claims to 7, including method claims previously deleted. The Controller pointed out that the applicant had effectively renounced the method claims, and reintroducing them required justifiable reasons under Section 57(2). This decision adds to the evolving interpretation of claim amendments, emphasizing that applicants cannot revert to broader scopes after limiting their claims. The ruling reinforces the need for clarity in the amendment process and sets a precedent for future patent applications.
Panacea Biotec Hits 52-Week High Following Patent Dispute Settlement with Sanofi
Panacea Biotec’s stock surged to a 52-week high of ₹349.79 per share on the NSE, gaining 5% after announcing a settlement with Sanofi Healthcare India over a patent infringement dispute related to a hexavalent vaccine. The stock was locked in the upper circuit on Tuesday, reflecting a remarkable 46.51% increase over the past eight trading days. The settlement was confirmed by the Delhi High Court on September 13, 2024, which stated that Sanofi will not launch its hexavalent vaccine, Shan6, in India. As part of the agreement, Panacea Biotec has also decided to forego claims for damages. The company’s shares have delivered multibagger returns of 102.46% in 2024 so far.
Anna University gets patent for path-breaking drone technology
Researchers at the Madras Institute of Technology, Anna University, have developed a groundbreaking technology for mini-Unmanned Aerial Vehicles (UAVs), which has been granted a patent by the Indian Patent Office. This airborne-based intelligent autonomous landing system allows UAVs to accurately identify and land on diverse terrain, including uneven and hilly surfaces, using AI and deep learning algorithms. The system enhances precision by identifying specific markers, such as colors or QR codes, making it suitable for defense applications like delivering supplies to remote border locations. This innovation also holds potential for civilian use, including organ delivery in healthcare and e-commerce package delivery, marking a significant leap in drone technology.
Meghalaya Secures GI Tag for Lakadong Turmeric
On March 30, 2024, the Government of Meghalaya proudly announced that Lakadong Turmeric has been awarded the prestigious Geographical Indication (GI) tag. This achievement is the result of a four-year journey initiated in October 2019, guided by the Meghalaya Farmers (Empowerment) Commission. Under the leadership of various officials, including Shri K.N. Kumar and Smti. M.N. Nampui, a committee was formed to oversee the application process. The collective efforts of the Directorate of Horticulture, District Horticulture Officers, farmer representatives, and Project Officer Shri. Demandson Lyngdoh were crucial in securing this honor.
Calcutta High Court Notifies IPD Rules
The Calcutta High Court has introduced its own Intellectual Property Division (IPD) Rules, published in the Kolkata Gazette on September 20, 2023. These rules align with similar IP divisions in Delhi and Madras, following the dissolution of the Intellectual Property Appellate Board under the Tribunal Reforms Act, 2021. While sharing common procedural structures with the Delhi and Madras courts, the Calcutta High Court IPD Rules differ in several areas, including court fees, the handling of disputes involving customs authorities, and the absence of explicit provisions for interventions by subject matter experts. Notably, the final rules include provisions for accessibility, such as reasonable accommodations for persons with disabilities and electronic filing requirements. Changes from the draft version also address concerns about translation accuracy and extend the timeframe for serving pleadings to four days.
Delhi High Court Restrains T-Series from Using "Aashiqui" Title in Upcoming Film
The Delhi High Court (DHC) delivered a judgment, Vishesh Films Private Limited v Super Cassettes Industries Limited, restraining T-Series from using the title “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” or any other title that includes the mark “Aashiqui” for their proposed film. Vishesh Films, which co-produced the hit films “Aashiqui” (1990) and “Aashiqui 2” (2013) with T-Series, asserted ownership over the trademarks “Aashiqui” and “Aashiqui Ke Liye” and sought to block T-Series from releasing a proposed film with a similar title, fearing public confusion and brand dilution. The court analyzed the principles of trademark law and determined that the “Aashiqui” mark is distinctive and has acquired secondary meaning, making it eligible for protection. The court also found that the defendant’s proposed title is deceptively similar to the plaintiff’s trademark, as the dominant element “Aashiqui” is likely to cause confusion and mislead the audience. The court rejected the defendant’s arguments that the plaintiff had waived its rights by not objecting to the release of “Chandigarh Kare Aashiqui,” as the court found that the distinctive term “Chandigarh” significantly alters the title’s overall impression, reducing confusion with the “Aashiqui” franchise.
India Monthly News Roundup – September 2024
NEWSLETTER GLOBAL –AUGUST
India Monthly News Roundup – June & July, 2024
Monthly Roundup | Japan-USA-India | KAFOCUS
India Monthly News Roundup – September 2024
IP Saarthi: Al-Powered Trademark Search Module for Efficient Results
On September 18, 2024, Piyush Goyal, the Union Minister for Commerce and Industry, announced the introduction of a cutting-edge Trade Mark Search Technology powered by Artificial Intelligence and Machine Learning (AI/ML), alongside the launch of the IP Saarthi Chatbot. This initiative is intended to improve the efficiency and precision of the trade mark application process in India, offering businesses a more streamlined method for managing their intellectual property. The announcement was made in New Delhi.
The newly developed Trade Mark Search Technology aims to expedite the clearance of trademark applications, responding to the increasing demands of a competitive business environment. This technology is expected to provide accurate trade mark identification and enhanced protection capabilities, benefiting both domestic and international businesses. Furthermore, the IP Saarthi Chatbot acts as a digital assistant, delivering immediate support to users as they navigate the registration process. Mr. Piyush Goyal underscored the importance of integrating official languages into the new platform to promote inclusivity and accessibility in the realm of intellectual property management. He reiterated the government’s dedication to minimizing bureaucratic delays and improving the ease of conducting business in India.
DGGI Issues Notices to Over a Dozen Food & Beverage Companies for Trademark Usage Violations
The Directorate General of Goods and Services Tax Intelligence (DGGI) has issued show cause notices to over a dozen food and beverage companies regarding the use of trademarks by their franchises and outlets located in states other than their registered offices. The DGGI asserts that these franchises and outlets, which are registered separately outside the companies’ home states, are obligated to pay GST for the utilization of the trademark. “Tax must be remitted for the use of trademark services.” Although franchise holders and vendors have been compensating the companies for brand usage, they have not been remitting GST on these transactions. According to the Central GST legislation (Schedule 1, Entry 2), transactions involving goods or services between distinct entities different registrations of the same legal entity are subject to taxation, even in the absence of a monetary exchange. Tax authorities maintain that the use of a brand by a franchise or branch in a different state constitutes a service rendered by the head office. However, industry experts caution that this interpretation may lead to a substantial increase in compliance obligations for businesses operating across various jurisdictions.
Flipkart's 'Latching-On' Feature Can't Be Used To Sell Counterfeit Products: Delhi High Court
In the case of Modern Mold Plast Pvt. Ltd. & Anr. v. Flipkart Internet Pvt. Ltd. & Ors., the Delhi High Court examined the issue of unauthorized sellers exploiting the listings of trademark owners on eCommerce platforms. The Plaintiffs, Modern Mold Plast, are manufacturers and vendors of products associated with various “MAHARAJA” trademarks, such as “MODERN MAHARAJA,” “MUKUT MAHARAJA,” “METRO MAHARAJA,” and “OMAHARAJA.” They initiated legal proceedings seeking a permanent and mandatory injunction against Flipkart and two additional sellers (defendant nos. 2 and 3) for trademark infringement and passing off. Modern Mold Plast alleged that third-party sellers, specifically AKS Trading (defendant no. 2) and NS Marketing (defendant no. 3), had appropriated their listings on Flipkart, marketing their products as if they were produced by Modern Mold Plast.
Upon reviewing the evidence, the court recognized that the Plaintiffs were the original users of the “MAHARAJA” trademarks, with their common law rights acknowledged in prior cases. The court determined that the practice of unauthorized sellers capitalizing on the Plaintiffs’ listings constituted passing off. As a result, the court ruled that such actions were unacceptable and instructed Flipkart to activate its “brand gating” feature to prevent unauthorized sellers from exploiting the Plaintiffs’ listings. The Plaintiffs expressed their contentment with the court’s directives and opted not to seek any further relief. The case was concluded with the court’s order for Flipkart to ensure that only authorized sellers are permitted.
Delhi High Court Awards Damages Against Defendant for Trademark Infringement in TAJ Case
The Delhi High Court delivered a significant ruling in favor of The Indian Hotels Company Limited (plaintiff), granting a permanent injunction against the defendant, Manoj, for infringing on the company’s registered trademarks and copyrights. The plaintiff, part of the Tata Group, owns several registered trademarks including “TAJ”, which has been in use since 1903 in the hospitality industry. The court found that the defendant had unauthorizedly used the plaintiff’s trademarks, content, and photographs on their website and business operations.
The court noted that the plaintiff had established its goodwill and reputation in the “TAJ” mark over decades, spending substantial amounts on advertising and promotion. The defendant’s use of the plaintiff’s marks was deemed malicious, deliberate, and intentional, constituting infringement. The court emphasized that the defendant’s actions were likely to confuse consumers, leading them to believe the defendant’s services originated from the plaintiff.
Given that the defendant did not appear to defend the case, the court granted summary judgment in favor of the plaintiff. The court awarded damages of ₹10 lakhs and costs of ₹5 lakhs to the plaintiff. Additionally, the court directed the transfer of the domain www.tajiconicmembership.com to the plaintiff. The judgment underscores the importance of protecting intellectual property rights and the potential consequences for those who engage in trademark infringement and copyright violations.
Case of Aktiebolaget Volvo v. M/S Grasp Engineering and Solutions on 11 September, 2024 (Delhi High Court)
The plaintiffs sought legal action against the defendant for violating their trademark “VOLVO.” They claimed that the defendant was unlawfully producing, selling, and distributing pumps under the name “VOLVO Pumps.” Despite receiving a cease-and-desist letter, the defendant persisted in using the trademark, resulting in confusion among consumers and dilution of the market. The plaintiffs contended that this situation negatively impacted their brand’s reputation and business, particularly due to the inferior quality of the defendant’s products. Acknowledging the trademark’s status as “well-known,” the Court granted an ex-parte ad-interim injunction to prevent the defendant from using “VOLVO Pumps” or any similar designation.
Case of Amba Shakti Steels Ltd. v. Sequence Ferro Private Limited on 3 September, 2024 (Delhi High Court)
The Delhi High Court has issued an interim injunction in favor of Amba Shakti Steels Ltd. in its ongoing trademark litigation against Sequence Ferro Private Ltd. This ruling overturned a previous decision made by the Commercial Court on January 18, 2024, which had denied Amba Shakti’s request for interim relief. The dispute centers on Amba Shakti Steels’ claims that Sequence Ferro Private Ltd. is infringing on its registered trademark “AMBA” by utilizing a confusingly similar trademark, “AMMAJI,” for its steel bars and related products. As a prominent entity in the steel sector, Amba Shakti is pursuing a permanent injunction against Sequence Ferro for trademark, copyright, and passing off.
The Delhi High Court issued an interim injunction in favor of the Appellant, determining that the respondent’s use of the trademark ‘AMMAJI’ was likely to cause confusion with the Appellant’s registered trademarks, such as ‘AMBA.’ The Court concluded that the Commercial Court had made a mistake by concentrating on the individual components of the two marks instead of considering the overall commercial impression, which was likely to be identical due to the phonetic, structural, and literal similarities between the two trademarks.
Delhi High Court Passes ‘Dynamic+’ Injunction to Protect Copyrighted Works of Warner Bros, Netflix & Others
The Delhi High Court has recently issued a significant injunction aimed at safeguarding the copyrighted materials of Warner Bros, Netflix, Disney, and other international entertainment firms. A new lawsuit was initiated by these global entities against 45 unauthorized websites, seeking to prevent them from hosting and streaming their copyrighted content from various films and television shows. The lawsuit was brought forth by Warner Bros. Entertainment Inc., Columbia Pictures Industries, Inc., Disney Enterprises, Inc., Netflix US, LLC, SBS Co. Ltd., SLL Joongangng Co. Ltd., and CJ ENM Co. Ltd. The complaint asserted that the infringing websites were distributing copyrighted content without any license or permission from the respective entertainment companies.
Justice Saurabh Banerjee characterized the situation as a quintessential example of the emergence of “hydra-headed” DNRs, or websites that stream and make available copyrighted content to the public without the necessary licensing. The court emphasized that the proliferation of these rogue websites, coupled with their overtly exploitative activities for ulterior motives, must not be permitted to persist. The court granted an ex parte ad interim injunction, prohibiting the unauthorized websites from streaming or hosting the plaintiffs’ copyrighted works. Additionally, it mandated that internet service providers block access to these infringing websites.
Jasleen Royal files a lawsuit against Guru Randhawa in Bombay High Court for unauthorized use of her music
Singer Jasleen Royal has initiated legal proceedings in the Bombay High Court against the prominent label T-Series, lyricist Raj Ranjodh, and well-known artist Guru Randhawa. The lawsuit revolves around claims of copyright infringement and the unauthorized utilization of Jasleen’s original musical works. The central issue pertains to a track titled “All Right” from the album “G Thing,” which Jasleen asserts was released without her authorization and includes her original material.
The lawsuit states that the infringement relates to musical compositions created by Jasleen in 2022, which were originally intended for promotional activities associated with the Ajay Devgn film Runway 34. The significant issue arose in 2023 when Jasleen learned that her music had been incorporated into the song “All Right,” which was released by T-Series and featured Randhawa’s vocals. To her dismay, the song appeared to reflect her original compositions without any recognition or credit. In response, Jasleen took swift action to safeguard her intellectual property by filing a lawsuit to prevent further misuse of her work. Jasleen has filed suit, accusing the defendants of infringing on her copyright and violating her moral rights. Her legal team has successfully obtained an interim court order requiring T-Series to remove the song from all streaming services.
Case of Bentley Systems Inc. & Anr vs SMEC India Private Limited & Anr on 18 September 2024 (Delhi High Court)
The Delhi High Court granted an ex parte interim injunction against SMEC India Private Limited and its director for using unauthorized versions of Bentley Systems’ copyrighted software programs. The plaintiffs allege that the defendants have been using unauthorized versions of their software programs, including Openrail Designer, Openroads Designer, Openflows WaterGEMS, Openflows Sewergems, Openflows Hammer, STAAD.Pro, Plaxis 2D, RAM Concept, and OpenBridge Modeler, without obtaining proper licenses from the plaintiffs.
The court found that the defendants were using pirated copies of Bentley’s software without proper authorization, causing harm to the plaintiffs and resulting in unjust enrichment. The order restrains the defendants from copying, reproducing, storing, installing, or using unauthorized versions of the software programs until the next hearing date. The court directed the plaintiffs to serve notice on the defendants and set a schedule for further proceedings, including filing replies and rejoinders. The case will be listed before the Joint Registrar on December 17, 2024, and before the court on January 23, 2025. The court has granted an interim injunction restraining the defendants from using the plaintiffs’ copyrighted software programs until the next hearing.
Controller Ruling on Patent Claim Amendments Sets Clear Boundaries
In a significant order regarding claim amendments, Controller Dr. S. P. Subramaniyan addressed patent application 9790/CHENP/2011 filed by M/s. Nippon Shinyaku Co. Ltd. The ruling clarified that any new amendments to claims cannot exceed the scope of the last amended claims. Initially, the applicant submitted 11 claims, which were subsequently reduced to 2 after a First Examination Report (FER). Following a hearing notice, the applicant attempted to expand the claims to 7, including method claims previously deleted. The Controller pointed out that the applicant had effectively renounced the method claims, and reintroducing them required justifiable reasons under Section 57(2). This decision adds to the evolving interpretation of claim amendments, emphasizing that applicants cannot revert to broader scopes after limiting their claims. The ruling reinforces the need for clarity in the amendment process and sets a precedent for future patent applications.
Panacea Biotec Hits 52-Week High Following Patent Dispute Settlement with Sanofi
Panacea Biotec’s stock surged to a 52-week high of ₹349.79 per share on the NSE, gaining 5% after announcing a settlement with Sanofi Healthcare India over a patent infringement dispute related to a hexavalent vaccine. The stock was locked in the upper circuit on Tuesday, reflecting a remarkable 46.51% increase over the past eight trading days. The settlement was confirmed by the Delhi High Court on September 13, 2024, which stated that Sanofi will not launch its hexavalent vaccine, Shan6, in India. As part of the agreement, Panacea Biotec has also decided to forego claims for damages. The company’s shares have delivered multibagger returns of 102.46% in 2024 so far.
Anna University gets patent for path-breaking drone technology
Researchers at the Madras Institute of Technology, Anna University, have developed a groundbreaking technology for mini-Unmanned Aerial Vehicles (UAVs), which has been granted a patent by the Indian Patent Office. This airborne-based intelligent autonomous landing system allows UAVs to accurately identify and land on diverse terrain, including uneven and hilly surfaces, using AI and deep learning algorithms. The system enhances precision by identifying specific markers, such as colors or QR codes, making it suitable for defense applications like delivering supplies to remote border locations. This innovation also holds potential for civilian use, including organ delivery in healthcare and e-commerce package delivery, marking a significant leap in drone technology.
Meghalaya Secures GI Tag for Lakadong Turmeric
On March 30, 2024, the Government of Meghalaya proudly announced that Lakadong Turmeric has been awarded the prestigious Geographical Indication (GI) tag. This achievement is the result of a four-year journey initiated in October 2019, guided by the Meghalaya Farmers (Empowerment) Commission. Under the leadership of various officials, including Shri K.N. Kumar and Smti. M.N. Nampui, a committee was formed to oversee the application process. The collective efforts of the Directorate of Horticulture, District Horticulture Officers, farmer representatives, and Project Officer Shri. Demandson Lyngdoh were crucial in securing this honor.
Calcutta High Court Notifies IPD Rules
The Calcutta High Court has introduced its own Intellectual Property Division (IPD) Rules, published in the Kolkata Gazette on September 20, 2023. These rules align with similar IP divisions in Delhi and Madras, following the dissolution of the Intellectual Property Appellate Board under the Tribunal Reforms Act, 2021. While sharing common procedural structures with the Delhi and Madras courts, the Calcutta High Court IPD Rules differ in several areas, including court fees, the handling of disputes involving customs authorities, and the absence of explicit provisions for interventions by subject matter experts. Notably, the final rules include provisions for accessibility, such as reasonable accommodations for persons with disabilities and electronic filing requirements. Changes from the draft version also address concerns about translation accuracy and extend the timeframe for serving pleadings to four days.
Delhi High Court Restrains T-Series from Using "Aashiqui" Title in Upcoming Film
The Delhi High Court (DHC) delivered a judgment, Vishesh Films Private Limited v Super Cassettes Industries Limited, restraining T-Series from using the title “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” or any other title that includes the mark “Aashiqui” for their proposed film. Vishesh Films, which co-produced the hit films “Aashiqui” (1990) and “Aashiqui 2” (2013) with T-Series, asserted ownership over the trademarks “Aashiqui” and “Aashiqui Ke Liye” and sought to block T-Series from releasing a proposed film with a similar title, fearing public confusion and brand dilution. The court analyzed the principles of trademark law and determined that the “Aashiqui” mark is distinctive and has acquired secondary meaning, making it eligible for protection. The court also found that the defendant’s proposed title is deceptively similar to the plaintiff’s trademark, as the dominant element “Aashiqui” is likely to cause confusion and mislead the audience. The court rejected the defendant’s arguments that the plaintiff had waived its rights by not objecting to the release of “Chandigarh Kare Aashiqui,” as the court found that the distinctive term “Chandigarh” significantly alters the title’s overall impression, reducing confusion with the “Aashiqui” franchise.
India Monthly News Roundup – September 2024
NEWSLETTER GLOBAL –AUGUST
India Monthly News Roundup – June & July, 2024
Monthly Roundup | Japan-USA-India | KAFOCUS
India Monthly News Roundup – September 2024
IP Saarthi: Al-Powered Trademark Search Module for Efficient Results
On September 18, 2024, Piyush Goyal, the Union Minister for Commerce and Industry, announced the introduction of a cutting-edge Trade Mark Search Technology powered by Artificial Intelligence and Machine Learning (AI/ML), alongside the launch of the IP Saarthi Chatbot. This initiative is intended to improve the efficiency and precision of the trade mark application process in India, offering businesses a more streamlined method for managing their intellectual property. The announcement was made in New Delhi.
The newly developed Trade Mark Search Technology aims to expedite the clearance of trademark applications, responding to the increasing demands of a competitive business environment. This technology is expected to provide accurate trade mark identification and enhanced protection capabilities, benefiting both domestic and international businesses. Furthermore, the IP Saarthi Chatbot acts as a digital assistant, delivering immediate support to users as they navigate the registration process. Mr. Piyush Goyal underscored the importance of integrating official languages into the new platform to promote inclusivity and accessibility in the realm of intellectual property management. He reiterated the government’s dedication to minimizing bureaucratic delays and improving the ease of conducting business in India.
DGGI Issues Notices to Over a Dozen Food & Beverage Companies for Trademark Usage Violations
The Directorate General of Goods and Services Tax Intelligence (DGGI) has issued show cause notices to over a dozen food and beverage companies regarding the use of trademarks by their franchises and outlets located in states other than their registered offices. The DGGI asserts that these franchises and outlets, which are registered separately outside the companies’ home states, are obligated to pay GST for the utilization of the trademark. “Tax must be remitted for the use of trademark services.” Although franchise holders and vendors have been compensating the companies for brand usage, they have not been remitting GST on these transactions. According to the Central GST legislation (Schedule 1, Entry 2), transactions involving goods or services between distinct entities different registrations of the same legal entity are subject to taxation, even in the absence of a monetary exchange. Tax authorities maintain that the use of a brand by a franchise or branch in a different state constitutes a service rendered by the head office. However, industry experts caution that this interpretation may lead to a substantial increase in compliance obligations for businesses operating across various jurisdictions.
Flipkart's 'Latching-On' Feature Can't Be Used To Sell Counterfeit Products: Delhi High Court
In the case of Modern Mold Plast Pvt. Ltd. & Anr. v. Flipkart Internet Pvt. Ltd. & Ors., the Delhi High Court examined the issue of unauthorized sellers exploiting the listings of trademark owners on eCommerce platforms. The Plaintiffs, Modern Mold Plast, are manufacturers and vendors of products associated with various “MAHARAJA” trademarks, such as “MODERN MAHARAJA,” “MUKUT MAHARAJA,” “METRO MAHARAJA,” and “OMAHARAJA.” They initiated legal proceedings seeking a permanent and mandatory injunction against Flipkart and two additional sellers (defendant nos. 2 and 3) for trademark infringement and passing off. Modern Mold Plast alleged that third-party sellers, specifically AKS Trading (defendant no. 2) and NS Marketing (defendant no. 3), had appropriated their listings on Flipkart, marketing their products as if they were produced by Modern Mold Plast.
Upon reviewing the evidence, the court recognized that the Plaintiffs were the original users of the “MAHARAJA” trademarks, with their common law rights acknowledged in prior cases. The court determined that the practice of unauthorized sellers capitalizing on the Plaintiffs’ listings constituted passing off. As a result, the court ruled that such actions were unacceptable and instructed Flipkart to activate its “brand gating” feature to prevent unauthorized sellers from exploiting the Plaintiffs’ listings. The Plaintiffs expressed their contentment with the court’s directives and opted not to seek any further relief. The case was concluded with the court’s order for Flipkart to ensure that only authorized sellers are permitted.
Delhi High Court Awards Damages Against Defendant for Trademark Infringement in TAJ Case
The Delhi High Court delivered a significant ruling in favor of The Indian Hotels Company Limited (plaintiff), granting a permanent injunction against the defendant, Manoj, for infringing on the company’s registered trademarks and copyrights. The plaintiff, part of the Tata Group, owns several registered trademarks including “TAJ”, which has been in use since 1903 in the hospitality industry. The court found that the defendant had unauthorizedly used the plaintiff’s trademarks, content, and photographs on their website and business operations.
The court noted that the plaintiff had established its goodwill and reputation in the “TAJ” mark over decades, spending substantial amounts on advertising and promotion. The defendant’s use of the plaintiff’s marks was deemed malicious, deliberate, and intentional, constituting infringement. The court emphasized that the defendant’s actions were likely to confuse consumers, leading them to believe the defendant’s services originated from the plaintiff.
Given that the defendant did not appear to defend the case, the court granted summary judgment in favor of the plaintiff. The court awarded damages of ₹10 lakhs and costs of ₹5 lakhs to the plaintiff. Additionally, the court directed the transfer of the domain www.tajiconicmembership.com to the plaintiff. The judgment underscores the importance of protecting intellectual property rights and the potential consequences for those who engage in trademark infringement and copyright violations.
Case of Aktiebolaget Volvo v. M/S Grasp Engineering and Solutions on 11 September, 2024 (Delhi High Court)
The plaintiffs sought legal action against the defendant for violating their trademark “VOLVO.” They claimed that the defendant was unlawfully producing, selling, and distributing pumps under the name “VOLVO Pumps.” Despite receiving a cease-and-desist letter, the defendant persisted in using the trademark, resulting in confusion among consumers and dilution of the market. The plaintiffs contended that this situation negatively impacted their brand’s reputation and business, particularly due to the inferior quality of the defendant’s products. Acknowledging the trademark’s status as “well-known,” the Court granted an ex-parte ad-interim injunction to prevent the defendant from using “VOLVO Pumps” or any similar designation.
Case of Amba Shakti Steels Ltd. v. Sequence Ferro Private Limited on 3 September, 2024 (Delhi High Court)
The Delhi High Court has issued an interim injunction in favor of Amba Shakti Steels Ltd. in its ongoing trademark litigation against Sequence Ferro Private Ltd. This ruling overturned a previous decision made by the Commercial Court on January 18, 2024, which had denied Amba Shakti’s request for interim relief. The dispute centers on Amba Shakti Steels’ claims that Sequence Ferro Private Ltd. is infringing on its registered trademark “AMBA” by utilizing a confusingly similar trademark, “AMMAJI,” for its steel bars and related products. As a prominent entity in the steel sector, Amba Shakti is pursuing a permanent injunction against Sequence Ferro for trademark, copyright, and passing off.
The Delhi High Court issued an interim injunction in favor of the Appellant, determining that the respondent’s use of the trademark ‘AMMAJI’ was likely to cause confusion with the Appellant’s registered trademarks, such as ‘AMBA.’ The Court concluded that the Commercial Court had made a mistake by concentrating on the individual components of the two marks instead of considering the overall commercial impression, which was likely to be identical due to the phonetic, structural, and literal similarities between the two trademarks.
Delhi High Court Passes ‘Dynamic+’ Injunction to Protect Copyrighted Works of Warner Bros, Netflix & Others
The Delhi High Court has recently issued a significant injunction aimed at safeguarding the copyrighted materials of Warner Bros, Netflix, Disney, and other international entertainment firms. A new lawsuit was initiated by these global entities against 45 unauthorized websites, seeking to prevent them from hosting and streaming their copyrighted content from various films and television shows. The lawsuit was brought forth by Warner Bros. Entertainment Inc., Columbia Pictures Industries, Inc., Disney Enterprises, Inc., Netflix US, LLC, SBS Co. Ltd., SLL Joongangng Co. Ltd., and CJ ENM Co. Ltd. The complaint asserted that the infringing websites were distributing copyrighted content without any license or permission from the respective entertainment companies.
Justice Saurabh Banerjee characterized the situation as a quintessential example of the emergence of “hydra-headed” DNRs, or websites that stream and make available copyrighted content to the public without the necessary licensing. The court emphasized that the proliferation of these rogue websites, coupled with their overtly exploitative activities for ulterior motives, must not be permitted to persist. The court granted an ex parte ad interim injunction, prohibiting the unauthorized websites from streaming or hosting the plaintiffs’ copyrighted works. Additionally, it mandated that internet service providers block access to these infringing websites.
Jasleen Royal files a lawsuit against Guru Randhawa in Bombay High Court for unauthorized use of her music
Singer Jasleen Royal has initiated legal proceedings in the Bombay High Court against the prominent label T-Series, lyricist Raj Ranjodh, and well-known artist Guru Randhawa. The lawsuit revolves around claims of copyright infringement and the unauthorized utilization of Jasleen’s original musical works. The central issue pertains to a track titled “All Right” from the album “G Thing,” which Jasleen asserts was released without her authorization and includes her original material.
The lawsuit states that the infringement relates to musical compositions created by Jasleen in 2022, which were originally intended for promotional activities associated with the Ajay Devgn film Runway 34. The significant issue arose in 2023 when Jasleen learned that her music had been incorporated into the song “All Right,” which was released by T-Series and featured Randhawa’s vocals. To her dismay, the song appeared to reflect her original compositions without any recognition or credit. In response, Jasleen took swift action to safeguard her intellectual property by filing a lawsuit to prevent further misuse of her work. Jasleen has filed suit, accusing the defendants of infringing on her copyright and violating her moral rights. Her legal team has successfully obtained an interim court order requiring T-Series to remove the song from all streaming services.
Case of Bentley Systems Inc. & Anr vs SMEC India Private Limited & Anr on 18 September 2024 (Delhi High Court)
The Delhi High Court granted an ex parte interim injunction against SMEC India Private Limited and its director for using unauthorized versions of Bentley Systems’ copyrighted software programs. The plaintiffs allege that the defendants have been using unauthorized versions of their software programs, including Openrail Designer, Openroads Designer, Openflows WaterGEMS, Openflows Sewergems, Openflows Hammer, STAAD.Pro, Plaxis 2D, RAM Concept, and OpenBridge Modeler, without obtaining proper licenses from the plaintiffs.
The court found that the defendants were using pirated copies of Bentley’s software without proper authorization, causing harm to the plaintiffs and resulting in unjust enrichment. The order restrains the defendants from copying, reproducing, storing, installing, or using unauthorized versions of the software programs until the next hearing date. The court directed the plaintiffs to serve notice on the defendants and set a schedule for further proceedings, including filing replies and rejoinders. The case will be listed before the Joint Registrar on December 17, 2024, and before the court on January 23, 2025. The court has granted an interim injunction restraining the defendants from using the plaintiffs’ copyrighted software programs until the next hearing.
Controller Ruling on Patent Claim Amendments Sets Clear Boundaries
In a significant order regarding claim amendments, Controller Dr. S. P. Subramaniyan addressed patent application 9790/CHENP/2011 filed by M/s. Nippon Shinyaku Co. Ltd. The ruling clarified that any new amendments to claims cannot exceed the scope of the last amended claims. Initially, the applicant submitted 11 claims, which were subsequently reduced to 2 after a First Examination Report (FER). Following a hearing notice, the applicant attempted to expand the claims to 7, including method claims previously deleted. The Controller pointed out that the applicant had effectively renounced the method claims, and reintroducing them required justifiable reasons under Section 57(2). This decision adds to the evolving interpretation of claim amendments, emphasizing that applicants cannot revert to broader scopes after limiting their claims. The ruling reinforces the need for clarity in the amendment process and sets a precedent for future patent applications.
Panacea Biotec Hits 52-Week High Following Patent Dispute Settlement with Sanofi
Panacea Biotec’s stock surged to a 52-week high of ₹349.79 per share on the NSE, gaining 5% after announcing a settlement with Sanofi Healthcare India over a patent infringement dispute related to a hexavalent vaccine. The stock was locked in the upper circuit on Tuesday, reflecting a remarkable 46.51% increase over the past eight trading days. The settlement was confirmed by the Delhi High Court on September 13, 2024, which stated that Sanofi will not launch its hexavalent vaccine, Shan6, in India. As part of the agreement, Panacea Biotec has also decided to forego claims for damages. The company’s shares have delivered multibagger returns of 102.46% in 2024 so far.
Anna University gets patent for path-breaking drone technology
Researchers at the Madras Institute of Technology, Anna University, have developed a groundbreaking technology for mini-Unmanned Aerial Vehicles (UAVs), which has been granted a patent by the Indian Patent Office. This airborne-based intelligent autonomous landing system allows UAVs to accurately identify and land on diverse terrain, including uneven and hilly surfaces, using AI and deep learning algorithms. The system enhances precision by identifying specific markers, such as colors or QR codes, making it suitable for defense applications like delivering supplies to remote border locations. This innovation also holds potential for civilian use, including organ delivery in healthcare and e-commerce package delivery, marking a significant leap in drone technology.
Meghalaya Secures GI Tag for Lakadong Turmeric
On March 30, 2024, the Government of Meghalaya proudly announced that Lakadong Turmeric has been awarded the prestigious Geographical Indication (GI) tag. This achievement is the result of a four-year journey initiated in October 2019, guided by the Meghalaya Farmers (Empowerment) Commission. Under the leadership of various officials, including Shri K.N. Kumar and Smti. M.N. Nampui, a committee was formed to oversee the application process. The collective efforts of the Directorate of Horticulture, District Horticulture Officers, farmer representatives, and Project Officer Shri. Demandson Lyngdoh were crucial in securing this honor.
Calcutta High Court Notifies IPD Rules
The Calcutta High Court has introduced its own Intellectual Property Division (IPD) Rules, published in the Kolkata Gazette on September 20, 2023. These rules align with similar IP divisions in Delhi and Madras, following the dissolution of the Intellectual Property Appellate Board under the Tribunal Reforms Act, 2021. While sharing common procedural structures with the Delhi and Madras courts, the Calcutta High Court IPD Rules differ in several areas, including court fees, the handling of disputes involving customs authorities, and the absence of explicit provisions for interventions by subject matter experts. Notably, the final rules include provisions for accessibility, such as reasonable accommodations for persons with disabilities and electronic filing requirements. Changes from the draft version also address concerns about translation accuracy and extend the timeframe for serving pleadings to four days.
Delhi High Court Restrains T-Series from Using "Aashiqui" Title in Upcoming Film
The Delhi High Court (DHC) delivered a judgment, Vishesh Films Private Limited v Super Cassettes Industries Limited, restraining T-Series from using the title “Tu Hi Aashiqui”/ “Tu Hi Aashiqui Hai” or any other title that includes the mark “Aashiqui” for their proposed film. Vishesh Films, which co-produced the hit films “Aashiqui” (1990) and “Aashiqui 2” (2013) with T-Series, asserted ownership over the trademarks “Aashiqui” and “Aashiqui Ke Liye” and sought to block T-Series from releasing a proposed film with a similar title, fearing public confusion and brand dilution. The court analyzed the principles of trademark law and determined that the “Aashiqui” mark is distinctive and has acquired secondary meaning, making it eligible for protection. The court also found that the defendant’s proposed title is deceptively similar to the plaintiff’s trademark, as the dominant element “Aashiqui” is likely to cause confusion and mislead the audience. The court rejected the defendant’s arguments that the plaintiff had waived its rights by not objecting to the release of “Chandigarh Kare Aashiqui,” as the court found that the distinctive term “Chandigarh” significantly alters the title’s overall impression, reducing confusion with the “Aashiqui” franchise.
India Monthly News Roundup – September 2024
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