Monthly IPR Updates – October 2023
No Interim Relief to Blenders Pride
The Hon’ble Supreme Court declined to get in the way of the Punjab and Haryana High Court’s order and rejected the interim relief to Blenders Pride, owned by Pernod Ricard India, in the Trademark Dispute whiskey brand against Royal Challengers American Pride, owned by United Spirits. The Division Bench comprising Justice SK Kaul and Justice Sudhanshu Dhulia noted that since the High Court order under challenge was an interlocutory application, thus, refused to interfere. However, it directed the Mohali Trial Court to hear the Trademark suit and decide the case within six months.
DHC refuses to restrain use of Policy Bazaar Trademark on Google AdWords program
In the present case the Plaintiff Policybazaar against Coverfox Insurance Broking Pvt Ltd and Acko General Insurance Ltd, claimed that the defendant companies were using keywords identical to the “Policybazaar” with an intent to divert business from its website and thus causing confusion. The Hon’ble
Delhi High Court rejected the plea which seeks to restrain use of such keywords on Google by other entities, on the ground that prima facie no case of infringement was made out. The search results showed the website which appeared only as a “sponsored link”
Governance and Supervision of Trademark and Patent Agents
The Hon’ble Delhi High Court highlighted the importance of supervision and governance of patent and trademark agents. In the present case, a writ petition was filed challenging the abandonment of a patent application and praying for its restoration. The Petitioner hired Mr. Naveen Chaklan of M/s Delhi Intellectual Property LLP to deal with his patent application, who failed to submit a response to First ER despite several reminders. Due to the lack of any supervisory or governing body for such agents, the Court instructed the learned Central Government Standing Counsel, to seek guidance from
the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the regulation such agents and submit them in the next hearing.
AAJTAK trademark infringement by websites restrained
The present issue revolved around the unauthorised use of trademarks by the defendants, alleged to have been infringing upon the rights of the plaintiffs, Living Media India Limited and Anr.. The defendants 1-12 and 20-30 did not contest the case, and were found to be liable for trademark infringement.
Justice C. Hari Shankar, presiding over the case, restrained the entities from using the marks having deceptive similarity to Plaintiff’s “Aaj Tak” mark and its derivatives without the prior authorization. The defendants were using the suffix “Tak” in services identical to the Plaintiff and these marks were prima
facie infringing upon Plaintiff’s registered trademark. The other defendants were directed to take down websites and social media pages featuring the infringing mark. The Hon’ble Court opined that “Tak” became source identifier for Plaintiff’s marks, forming a family of marks. The present case sets the principle that even if the composite mark hasn’t been separately registered, the dominant part can be protected against infringement. the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the regulation such agents and submit them in the next hearing.
No ad interim injunction without the issuance of the notice to the Defendants
The Hon’ble Delhi High Court after relying on the Division Bench’s order in Dabur v. Emami Ltd., refused to file an ad interim injunction without issuing a notice to the defendant. The court opined that the defendants have been in the market, and the present matter before the court is not any other case of counterfeiting but of allegedly deceptively similar trademarks. Therefore, it is appropriate that the defendant is given an opportunity to respond against the ad interim injunction application.
Dispute between Theos and Theobroma now comes to an end
The Hon’ble Delhi High Court disposed off Trademark Infringement lawsuit between Theos and Theobroma after the settlement between the two. Theobroma will now be allowed to expand its outlets across the country under the name “THEOBROMA”. The Hon’ble court was of the opinion that there was no ambiguity and the defendant could not be restricted from using the mark “THEOS/THEO’S”. Justice Pratibha M. Singh dictated the terms of settlement for the issues in dispute and the parties agreed to abide by the same and the dispute was brought to a conclusion.
Morgan and Morgan Trademark #LAW to be restored
Morgan and Morgan, famous U.S. law firm agreed to drop lawsuit against USPTO after PTO approved that it will accept the Plaintiff’s application to register the trademark “#LAW” after receiving new supporting evidence. As per lawsuit, the trademark meant a telephone number and the term became eligible for registration when the firm spent millions of dollars on its advertisement and it became an identifier for the firm’s services. Earlier it was refused on the ground by PTO’s Trademark Trial and Appeal Board that it is a “commonly used hashtag in the legal field” and that no one would associate it with the Morgan & Morgan trademark.
JPO Cancelled the Trademark “Bordeaux Wave” being contrary to public policy and accepted principles of morality
KAO Corporation, a Japanese company dealing with household products like cosmetics and detergents, filed a trademark application for the wordmark “BORDEAUX WAVE” with its transliteration written in Japanese Katakana character to be used on soaps and detergents, cosmetics, perfume and flavor materials, incense in class 3. An opposition was filed on the ground that the mark misleads as to origin known products, since it used GI “Bordeaux” known for French wine. The board opined that the “Bordeaux” has now acquired a high level of popularity among Japanese consumers, and it is likely that consumers will connect “BORDEAUX” in the mark with wine.
General Court upholds the likelihood of confusion between TRUE SKIN and SKIN
In the present case, it was held that while assessing the likelihood of confusion, where one of the marks has a meaning from the perspective of the general public and the other mark does not, it must be held that marks are conceptually different. The applicant filed the present case seeking the annulment of decision of Board of Appeal, of the EUIPO, in which it was held that there was a likelihood of confusion on the significant part of the Spanish speaking public. The word ‘true’ has been included in its entirety in the mark applied for and is liable to create strong visual and phonetic similarity between the marks in issue.
INTA files Amicus Brief in Iceland Trademark Dispute
The International Trademark Association (INTA) filed an amicus brief before the General Court of the European Union highlighting the registrability of country names as EU trademarks. The trademarks in the case were registered in the EU by a British supermarket chain called Iceland, but the Icelandic
government filed for a cancellation of the trademark. The INTA argued that state names should not be denied from the trademark registration and asked the court to determine the same on the case-to-case basis, i.e., if a specific state or geographical name is descriptive or non-distinctive with respect to
the trademark’s specific designated goods/service
EUIPO declines to register Porsche’s Acceleration sound mark
The German Automotive manufacturer applied for the registration of an audio file of the sound of the artificial acceleration. The luxury brand applied to protect the sound in relation to the vehicles, models, toy vehicles as well as NFTs related to goods and services. However, the EUIPO declined the application on the basis that the sound did not meet the distinctiveness for the registration. Furthermore, the tone lacked any complexity and was not generated by the electrical vehicles themselves. Government filed for a cancellation of the trademark. The INTA argued that state names should not be denied from the trademark registration and asked the court to determine the same on the case-to-case basis, i.e., if a specific state or geographical name is descriptive or non-distinctive with respect to the trademark’s specific designated goods/service
Tesla and Elon Musk won Trademark Dispute in China against Beer Company
Elon Musk won a trademark dispute against a Chinese owned Beer company, Sino Drinks Food Company, and protected his Tesla brand in China. Sino started to brew and sell its beer under the name “TESILA” with the “T” mirrored like the Tesla logo. The company also had trademarks for a series of Tesla Soda and other varieties of beverages on the line of the Tesla Brand, but were not associated with Tesla itself. Tesla immediately filed a suit wishing to defend its well-known logo and reputation, since it was evident that the Beer company aimed to use Tesla’s name to mislead consumers. It was ordered to cease infringing Tesla’s exclusive rights, stop unfair competition practices, make a public statement clarifying the facts of the case and ordered to pay compensation worth ¥5 million, roughly USD 690,000.
Recorded Evidence by Live transcription
India for the first time in the trial before the Hon’ble Delhi High Court, recorded the evidences and arguments with live transcription in Communication Components Antenna Inc. v. Rosenberger
Hochfrequenztechnik GMBH & Co KG & Ors, which is the patent infringement suit. However, the cost of this live transcription is to be borne equally by the parties to the suit.
Capability of India to issue patents to improve with hiring of new Patent Officers
Sanjeev Sanyal, Member of Economic Advisory Council to Prime Minister said India will soon have the capacity to issue 1,00,000 patents a year in the next 18 months. The same will come into effect not only with changes in the processes but also with hiring of around 500 new Patent Officers, thus,
increasing efficiency in the system.
Novartis and Eli Lilly oppose compulsory licences for Breast Cancer Drugs
A writ petition was moved in the Kerala High Court for the compulsory licensing of HER2- Negative breast cancer drugs of the multinational pharmaceuticals giants, Novartis (based in Switzerland) and Eli Lilly (based in the US). However, the companies opposed any move for the issuance of the
compulsory licence under Indian Patents Act, 1970, which will allow the generic versions to be made available and lowers the cost of the drug. The companies, further, informed the Hon’ble Kerala High Court that despite how high their prices are, the sales are up as seen in India.increasing efficiency in the system.
Delhi High Court allows Divisional Application under Section 16 Patents Act, if plurality of invention is disclosed in the Specifications, overruled Boehringer Decision
The Division Bench of the Hon’ble Delhi High Court, presided over by Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, in the context of Section 16 of the Patents Act, 1970. This section allows filing of a divisional application in addition to the invention disclosed in the specifications of the prior patent application.
In this case, the Appellant made an application to the Controller in respect to an invention pertaining to an agrochemical concentrate and while the application was pending, a divisional application had been filed by Syngenta seeking to amend their claim(s). The original application was granted, however, the divisional application was rejected on the ground that the Divisional Application filed ought to have disclosed more than one invention in the parent application. Thus, an appeal was filed against this
order before the Single Bench of Justice C. Hari Shankar in which it was held that the stand in Boehringer Ingelheim, which held that the doctrine “what is not claimed is disclaimed”, is required to be revisited. Held, that it was sufficient that for plurality of inventions to be mentioned in provisional or complete specifications and, that the requirement of plurality of inventions being present in the parent application does not apply when a divisional application is filed suo motu.
In the proceedings before the Division Bench, the court opined that the doctrine had no application to divisional filing and claim drafting. Furthermore, the court stated that in case of a provisional filing the claims need not to be stated at all. The Bench interpreted that Section 16 clearly enables the filing of divisional application, provided that the plurality of inventions is disclosed in provisional or complete specifications.
Syngenta Limited v. Controller of Patents and Designs in C.A. (COMM. IPDPAT) 471/2022
Grey Mantra Solutions restrained from manufacturing tea products in trade dress identical to ‘CHAAYOS’
The Hon’ble Delhi High Court restrained the defendant from making any fresh manufacture of their tea products in their impugned trade dress packaging which was a colorable imitation of plaintiff’s product whereby they copied distinctive elements. ‘CHAAYOS’ , which was adopted in 2012 and has had a registration since 2017, uses the brand name in respect of tea and related products.
The Court opined that although the packaging and listings showed that plaintiff’s and defendant’s packaging was in the form of paper and plastic containers respectively, there was resemblance between the two. The distinctive elements were copied and the expressions/language used showed the mala fide intention of the defendant.
The court directed that the listings be taken down by the defendant and as far as the already manufactured products were concerned, the court ordered that the details of the inventory be placed on record along with their monetary value.
Sunshine Teahouse (P) Ltd. v. Grey Mantra Solutions, 2023 SCC OnLine Del 6828.
Agra based Shoe Manufacturer ordered the Delhi High Court to pay damages to PUMA for selling counterfeit shoes
The Delhi High Court ordered the shoe manufacturer based in Agra to pay ₹10 lakhs as damages to PUMA for selling counterfeit shoes using their trademark ‘PUMA’ and the stylized silhouette of ‘leaping cat’, the device mark.
The plaintiff, PUMA, approached alleging that various counterfeit products
under their mark were being sold in Uttar Pradesh, Delhi and Haryana. The matter was presided over by Justice Pratibha M. Singh who opined that the defendant was well aware of brand equity and was relishing over the Plaintiff’s positive goodwill and reputation. The defendant, as revealed by the
report of the Local Commissioner, was running a full scale manufacturing unit manufacturing counterfeited PUMA shoes and made a profit of around 19 lakhs, thus the suit was liable to be decreed in favor of the Plaintiff.
The court further held that such usage of logo on the products of inferior quality would not only violate legal rights of PUMA but would also result in deterioration of brand reputation. Puma Se v. Ashok Kumar Trading as Exposure Style 2023 SCC OnLine Del 2440
Delhi High Court ruled in favor of Red Bull in a trademark dispute
In a recent matter, the Delhi High Court ruled in favour of Red Bull in a trademark dispute against Rohidas Popat Kapadnis. The suit sought a direction for the disposal of unfilled cans of the defendants, since they were manufacturing the energy drink, ‘SEVEN HOURS’, using the identical silver and blue colour combination for the cans. Red Bull, a well-known Swiss company, adopted the ‘RED BULL’ mark in 1982 and argued that the blue and silver colour combination is a distinctive arrangement which is associated with the Plaintiff.
Justice Pratibha M. Singh directed for the disposal of the unfilled cans during the usual course of business till 31-01-2024, subject to the payment of the damages to the Plaintiff and if the same were not disposed off, the same shall be destroyed by the defendants. The defendants were held to be liable to pay damages for a sum of ₹13 lakhs to the plaintiff on or before 31-01-2024
RED BULL AG VS. ROHIDAS POPAT KAPADNIS & ANR. 2023 SCC OnLine Del 6595
Email ID in the Notice of Opposition is ‘Address for Service’ under Section 143 of Trade Marks Act, 1999, held Delhi High Court
The Delhi High Court held that providing an email ID in the application or the notice of opposition, where official communications are sent by the Registry of Trade Marks, is ‘Address of Service’ under Section 143 of Trade Marks Act, 1999. Justice C Hari Shankar further added that the Registry has liberty to effect service of documents by email where the party has provided an email ID. Thus, when the Applicant provides the Email ID, they clearly undertake that the communications be addressed at the said email address.
Section 143, Trade Marks Act stipulates that “an address for service stated in an application or notice of opposition shall be deemed to be the address of the Applicant or Opponent, and all the documents may be served by leaving them at or sending them by post to the address for service of the Applicant or Opponent, as the case may be.”
Justice Shankar highlighted the words ‘leaving them at’ stated in the provision should be read to cover service by email ID provided by the Applicant or the Opponent. Therefore, it would not be open for the Applicant to argue that no service has been made under Section 143 of the Act
In the present case, the Petitioner failed to provide any email address for communication in its notice of opposition and it is undisputed that counter statement was dispatched to Petitioner by email, held, it cannot be said that the there was proper service of the Counter Statement, as stipulated under
Section 143 of the Act.
M/S Mex Switchgears Pvt. Ltd. vs Vikram Suri Trading As M/S Armex Auto Industries in C.A.(COMM.IPD-TM) 69/2022
G-Shock Granted Trademark Registration by JPO
CASIO COMPUTER CO., LTD. (“CASIO”) which is the manufacturer of the famous watch series “G-SHOCK”, filed the 3D shape with the JPO on April 28, 2021, as a 3D trademark covering “wristwatches” in International Class 14. Earlier, the Examiner at the examination phase notified refusal due to lack of
distinctiveness. Later, CASIO asserted in its argument about the unique shape of G- Shock watches as a whole not only in Japan but also all around the world, thus acquiring a ‘secondary meaning’
Injunction against Indian Companies from using the logo similar to Japan Patent Office
The Japan Patent Office (JPO) filed a suit seeking an injunction against the defendants, A2Z Glass and Glazing Co. and its sister companies, who were allegedly using an identical logo to the JPO’s for manufacturing and selling tools and kits in India. The court, presided over by Justice Prathiba M Singh,
granted an ex-parte injunction, restraining the defendants from using the JPO mark, logo, the word mark ‘JPO PLATINUM,’ or any similar mark in connection with products or services. The JPO, a Japanese governmental agency overseeing industrial property rights affairs in Japan, had its logo created in 2011. The defendants’ unauthorised use of the JPO’s logo was deemed copyright infringement, causing harm to the JPO’s reputation and brand equity, making it necessary to grant an ex-parte injunction to protect
the plaintiff’s rights and goodwill.distinctiveness. Later, CASIO asserted in its argument about the unique shape of G- Shock watches as a whole not only in Japan but also all around the world, thus acquiring a ‘secondary meaning’.
Japan Patent Office v A2Z Glass and Glazing Co., 2023 SCC OnLine Del 6414
Open Licencing of Patents in progress as announced by CNIPA
China sees over 8000 Patent Open Licence Agreements since the Trial Program on Patent Open Licence launched by China National Intellectual Property Administration (CNIPA). The Trial Program was launched with an objective to promote implementation of its Patent Open Licence System introduced by the revised Chinese Patent Law in 2020. Therefore, anyone who wishes to exploit his/her patent can obtain the licence for exploitation by paying the specified licence fees through the patent grant department under CNIPA.
No copyright in religious scriptures but dramatic or adaptive works based on them can be copyrighted: Delhi High Court.
“There can be no copyright claimed in the Scriptures. However, any adaptations of the said work including providing explanation, summary, meaning, exegesis/interpretation or creating any audio-visual works for eg, television series like Ramanand Sagar’s Ramayana or BR Chopra’s Mahabharata; dramatic works created by drama societies based on scriptures etc, being transformative works, would be entitled to copyright protection -being original works of the Authors themselves,” the Court said.
Delhi High Court issues summons to 'People of India' in copyright infringement suit by 'Humans of Bombay'
The Delhi High Court has issued summons to an Instagram handle called ‘People of India’ in a copyright infringement suit filed by storytelling platform ‘Humans of Bombay’ The Humans of Bombay (HoB) has filed in the Delhi High Court that the People of India (PoI) has copied its content in multiple
ways. Based on the allegation, the HoB has sought an injunction against PoI. The HoB has argued that the PoI has “started an identical portal/service having identical content. In their lawsuit, the HoB has further said that the PoI has “completely replicated” their business model and also stories. In the lawsuit, the HoB has shared a table showing their original posts on one side and PoB’s posts on the other side. The PoB’s posts are nearly-identical in all cases.
A row has broken out after the founder of popular photo blog Humans of New York criticised a similar Indian platform’s take on copyright.Humans of Bombay, which follows the same format as Brandon Stanton’s New York blog, started in Mumbai in 2014.It recently filed a suit against People of India, which started a few years later, of copyright infringement. All three tell stories of people in the form of interviews or posts alongside their photos.
Statutory license under copyright law only applicable to play songs on radio and TV, not internet: Bombay High Court
The Bombay High Court, in the case of Wynk Ltd & Anr. v. Tips Industries Ltd., recently rendered a judgement concerning the application of compulsory licences with respect to copyrighted songs, specifically highlighting the limitation that such licences can only be invoked for traditional broadcasting platforms, excluding internet-based services. To elucidate, the court clarified
that the provision for compulsory statutory licences as per Section 31D of the Copyright Act is confined to conventional non-internet-dependent broadcasting mediums such as radio, television, and stage performances. Internet-based services, by contrast, do not fall within the purview of this
provision.
In the judgment, a division bench comprising Justices GS Patel and Gauri Godse upheld a prior ruling by a single judge. This ruling affirmed that Wynk Limited, a digital music application owned by Airtel, cannot utilise music owned by Tips Industries without the latter’s consent. Under certain
circumstances, Section 31D permits individuals to publicly broadcast content, provided they inform the copyright holder (through a notice) and pay the royalties prescribed by the Copyright Appellate Board.
Delhi HC Orders Blocking of Telegram Channels, Deactivation of WhatsApp Numbers Illegally Sharing Course Materials of ‘Apna College’ Platform
In a case wherein, an application was filed under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908 (‘CPC’) seeking temporary injunction against the defendants to restrain them from unlawfully sharing copyrighted materials, Pratibha M. Singh J., opined that if the defendants were not blocked from disseminating the plaintiff’s copyrighted material, the plaintiff would suffer enormous monetary loss including loss of subscribers and goodwill. Thus, the Court opined that a case had been established for grant of an injunction to prevent further distribution of the plaintiff’s copyrighted material and accordingly restrained the defendants from downloading, uploading, storing, sharing, transmitting, selling, offering for sale, storing or utilizing any of the plaintiff’s courses.
[Jainemo Pvt. Ltd v. Rahul Shah, 2023 Delhi High Court OnLine Del 6136, Order dated 27-09-2023]
What the latest US court ruling means for AI-generated art's copyright status
In the ruling, United States District Court Judge Beryl A. Howell upheld a prior refusal to grant copyright protection to requests made by inventor Stephen Thaler on behalf of his artificial intelligence engine, citing the absence of a “guiding human hand” in the AI-generated artwork’s creation. The article explores whether the US Copyright Act of 1976 is suitably adapted to deal with AI-generated content. Citing the Copyright Act clause that provides “Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed” as evidence
of its flexibility, Hanson emphasizes that the “underlying policy, [the] objective, of copyright law is to incentivize creative human expression.”
‘Biggest act of copyright theft in history’: thousands of Australian books allegedly used to train AI model
The Australian Publishers Association confirmed to Guardian Australia on Wednesday that as many as 18,000 fiction and nonfiction titles with Australian ISBNs (unique international standard book numbers) appeared to be affected by the copyright infringement, although it is not yet clear what proportion of these are Australian editions of internationally authored books. “They’re still working through [the data] to work out the impact in terms of Australian authors,” APA spokesperson Stuart Glover said. “This is a massive legal and ethical challenge for the publishing industry and for authors globally.”
Gola Sizzler and Sandoz temporarily restrained from using the Phonographic Performance Limited music
The Hon’ble Delhi High Court has issued a temporary restraining order against Sandoz and Gola Sizzlers, preventing them from playing sound recordings owned by Phonographic Performance Limited (PPL) in response to copyright infringement allegations by the organisation. Additionally, Tim Hortons was bound by a statement from its counsel, committing not to play any of the sound recordings from PPL’s repertoire without a proper licence. PPL, a public performance rights organisation which owns and controls radio broadcasting had filed copyright infringement suits against these food outlets, claiming they were using its recordings without authorization. Justice C. Hari Shankar, presiding over the case, granted an ex-parte ad-interim injunction, considering the prima facie case is made out from the plaintiff’s complaint.
Phonographic Performance Limited v. Gola Sizzlers Private Limited & Ors. 2023 SCC OnLine Del 6829
Delhi High Court flags need to regulate trademark and patent agents, seeks report from IP authority
The Delhi High Court has asked the Controller General of Patents, Designs and Trade Marks (CGPDTM) to reveal how it intends to regulate or supervise the functioning of trademark and patent agents in the country.
[Saurav Chaudhary v. Union of India and Anr]
India’s IP office seeks comments, suggestions for manuals revision
On August 30, 2023, India’s Office of the Controller General of Patents, Designs and Trade Marks released a public notice inviting patent and trademark holders, designers, legal experts, academics, professionals in industries governed by intellectual property laws and other stakeholders to submit their feedback and suggestions regarding the revision of manuals and guidelines for different IP rights. These are patents, designs, trademarks, geographical indications and copyright. Comments and suggestions will be
reviewed by expert committees for consideration.
India introduces Digital Personal Data Protection Act, 2023
After receiving approval from both houses of Parliament and obtaining the President’s assent, the Digital Personal Data Protection Bill of 2022 has officially become the Digital Personal Data Protection Act of 2023. This Act is now in effect and governs the processing of digital personal data in India,
regardless of whether the data was originally collected in digital or nondigital format and subsequently digitized. Under the DPDP Act, state agencies may be exempted from its provisions at the government’s
discretion. This legislation is designed to bolster data protection and accountability for entities such as internet companies, mobile apps, and businesses that handle citizens’ data. Furthermore, it’s worth noting that the DPDP Act will have implications for India’s trade negotiations with other
nations. It aligns with global data protection standards, taking inspiration from models like the EU’s GDPR and China’s PIPL.
China issues rules for regulating generative AI
The rapid development of generative artificial intelligence has raised concerns about the necessity of legal governance, and China has recently become one of the first jurisdictions to do so. Together with six other Chinese regulators, the Cyber Administration of China issued the Interim Measures for
the Management of Generative Artificial Intelligence Services, which came into force on August 15. Ian Liu, a partner at Deacons in Hong Kong, said AI service providers shall comply with the laws in pre-training and optimization training under the Interim Measures. The scope of compliance includes: the
use of data and foundation models shall have lawful sources; data used shall not infringe against a third party’s IP rights; and measures should be employed to enhance the quality of training data.
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Monthly IPR Updates – October 2023
No Interim Relief to Blenders Pride
The Hon’ble Supreme Court declined to get in the way of the Punjab and Haryana High Court’s order and rejected the interim relief to Blenders Pride, owned by Pernod Ricard India, in the Trademark Dispute whiskey brand against Royal Challengers American Pride, owned by United Spirits. The Division Bench comprising Justice SK Kaul and Justice Sudhanshu Dhulia noted that since the High Court order under challenge was an interlocutory application, thus, refused to interfere. However, it directed the Mohali Trial Court to hear the Trademark suit and decide the case within six months.
DHC refuses to restrain use of Policy Bazaar Trademark on Google AdWords program
In the present case the Plaintiff Policybazaar against Coverfox Insurance Broking Pvt Ltd and Acko General Insurance Ltd, claimed that the defendant companies were using keywords identical to the “Policybazaar” with an intent to divert business from its website and thus causing confusion. The Hon’ble
Delhi High Court rejected the plea which seeks to restrain use of such keywords on Google by other entities, on the ground that prima facie no case of infringement was made out. The search results showed the website which appeared only as a “sponsored link”
Governance and Supervision of Trademark and Patent Agents
The Hon’ble Delhi High Court highlighted the importance of supervision and governance of patent and trademark agents. In the present case, a writ petition was filed challenging the abandonment of a patent application and praying for its restoration. The Petitioner hired Mr. Naveen Chaklan of M/s Delhi Intellectual Property LLP to deal with his patent application, who failed to submit a response to First ER despite several reminders. Due to the lack of any supervisory or governing body for such agents, the Court instructed the learned Central Government Standing Counsel, to seek guidance from
the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the regulation such agents and submit them in the next hearing.
AAJTAK trademark infringement by websites restrained
The present issue revolved around the unauthorised use of trademarks by the defendants, alleged to have been infringing upon the rights of the plaintiffs, Living Media India Limited and Anr.. The defendants 1-12 and 20-30 did not contest the case, and were found to be liable for trademark infringement.
Justice C. Hari Shankar, presiding over the case, restrained the entities from using the marks having deceptive similarity to Plaintiff’s “Aaj Tak” mark and its derivatives without the prior authorization. The defendants were using the suffix “Tak” in services identical to the Plaintiff and these marks were prima
facie infringing upon Plaintiff’s registered trademark. The other defendants were directed to take down websites and social media pages featuring the infringing mark. The Hon’ble Court opined that “Tak” became source identifier for Plaintiff’s marks, forming a family of marks. The present case sets the principle that even if the composite mark hasn’t been separately registered, the dominant part can be protected against infringement. the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the regulation such agents and submit them in the next hearing.
No ad interim injunction without the issuance of the notice to the Defendants
The Hon’ble Delhi High Court after relying on the Division Bench’s order in Dabur v. Emami Ltd., refused to file an ad interim injunction without issuing a notice to the defendant. The court opined that the defendants have been in the market, and the present matter before the court is not any other case of counterfeiting but of allegedly deceptively similar trademarks. Therefore, it is appropriate that the defendant is given an opportunity to respond against the ad interim injunction application.
Dispute between Theos and Theobroma now comes to an end
The Hon’ble Delhi High Court disposed off Trademark Infringement lawsuit between Theos and Theobroma after the settlement between the two. Theobroma will now be allowed to expand its outlets across the country under the name “THEOBROMA”. The Hon’ble court was of the opinion that there was no ambiguity and the defendant could not be restricted from using the mark “THEOS/THEO’S”. Justice Pratibha M. Singh dictated the terms of settlement for the issues in dispute and the parties agreed to abide by the same and the dispute was brought to a conclusion.
Morgan and Morgan Trademark #LAW to be restored
Morgan and Morgan, famous U.S. law firm agreed to drop lawsuit against USPTO after PTO approved that it will accept the Plaintiff’s application to register the trademark “#LAW” after receiving new supporting evidence. As per lawsuit, the trademark meant a telephone number and the term became eligible for registration when the firm spent millions of dollars on its advertisement and it became an identifier for the firm’s services. Earlier it was refused on the ground by PTO’s Trademark Trial and Appeal Board that it is a “commonly used hashtag in the legal field” and that no one would associate it with the Morgan & Morgan trademark.
JPO Cancelled the Trademark “Bordeaux Wave” being contrary to public policy and accepted principles of morality
KAO Corporation, a Japanese company dealing with household products like cosmetics and detergents, filed a trademark application for the wordmark “BORDEAUX WAVE” with its transliteration written in Japanese Katakana character to be used on soaps and detergents, cosmetics, perfume and flavor materials, incense in class 3. An opposition was filed on the ground that the mark misleads as to origin known products, since it used GI “Bordeaux” known for French wine. The board opined that the “Bordeaux” has now acquired a high level of popularity among Japanese consumers, and it is likely that consumers will connect “BORDEAUX” in the mark with wine.
General Court upholds the likelihood of confusion between TRUE SKIN and SKIN
In the present case, it was held that while assessing the likelihood of confusion, where one of the marks has a meaning from the perspective of the general public and the other mark does not, it must be held that marks are conceptually different. The applicant filed the present case seeking the annulment of decision of Board of Appeal, of the EUIPO, in which it was held that there was a likelihood of confusion on the significant part of the Spanish speaking public. The word ‘true’ has been included in its entirety in the mark applied for and is liable to create strong visual and phonetic similarity between the marks in issue.
INTA files Amicus Brief in Iceland Trademark Dispute
The International Trademark Association (INTA) filed an amicus brief before the General Court of the European Union highlighting the registrability of country names as EU trademarks. The trademarks in the case were registered in the EU by a British supermarket chain called Iceland, but the Icelandic
government filed for a cancellation of the trademark. The INTA argued that state names should not be denied from the trademark registration and asked the court to determine the same on the case-to-case basis, i.e., if a specific state or geographical name is descriptive or non-distinctive with respect to
the trademark’s specific designated goods/service
EUIPO declines to register Porsche’s Acceleration sound mark
The German Automotive manufacturer applied for the registration of an audio file of the sound of the artificial acceleration. The luxury brand applied to protect the sound in relation to the vehicles, models, toy vehicles as well as NFTs related to goods and services. However, the EUIPO declined the application on the basis that the sound did not meet the distinctiveness for the registration. Furthermore, the tone lacked any complexity and was not generated by the electrical vehicles themselves. Government filed for a cancellation of the trademark. The INTA argued that state names should not be denied from the trademark registration and asked the court to determine the same on the case-to-case basis, i.e., if a specific state or geographical name is descriptive or non-distinctive with respect to the trademark’s specific designated goods/service
Tesla and Elon Musk won Trademark Dispute in China against Beer Company
Elon Musk won a trademark dispute against a Chinese owned Beer company, Sino Drinks Food Company, and protected his Tesla brand in China. Sino started to brew and sell its beer under the name “TESILA” with the “T” mirrored like the Tesla logo. The company also had trademarks for a series of Tesla Soda and other varieties of beverages on the line of the Tesla Brand, but were not associated with Tesla itself. Tesla immediately filed a suit wishing to defend its well-known logo and reputation, since it was evident that the Beer company aimed to use Tesla’s name to mislead consumers. It was ordered to cease infringing Tesla’s exclusive rights, stop unfair competition practices, make a public statement clarifying the facts of the case and ordered to pay compensation worth ¥5 million, roughly USD 690,000.
Recorded Evidence by Live transcription
India for the first time in the trial before the Hon’ble Delhi High Court, recorded the evidences and arguments with live transcription in Communication Components Antenna Inc. v. Rosenberger
Hochfrequenztechnik GMBH & Co KG & Ors, which is the patent infringement suit. However, the cost of this live transcription is to be borne equally by the parties to the suit.
Capability of India to issue patents to improve with hiring of new Patent Officers
Sanjeev Sanyal, Member of Economic Advisory Council to Prime Minister said India will soon have the capacity to issue 1,00,000 patents a year in the next 18 months. The same will come into effect not only with changes in the processes but also with hiring of around 500 new Patent Officers, thus,
increasing efficiency in the system.
Novartis and Eli Lilly oppose compulsory licences for Breast Cancer Drugs
A writ petition was moved in the Kerala High Court for the compulsory licensing of HER2- Negative breast cancer drugs of the multinational pharmaceuticals giants, Novartis (based in Switzerland) and Eli Lilly (based in the US). However, the companies opposed any move for the issuance of the
compulsory licence under Indian Patents Act, 1970, which will allow the generic versions to be made available and lowers the cost of the drug. The companies, further, informed the Hon’ble Kerala High Court that despite how high their prices are, the sales are up as seen in India.increasing efficiency in the system.
Delhi High Court allows Divisional Application under Section 16 Patents Act, if plurality of invention is disclosed in the Specifications, overruled Boehringer Decision
The Division Bench of the Hon’ble Delhi High Court, presided over by Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, in the context of Section 16 of the Patents Act, 1970. This section allows filing of a divisional application in addition to the invention disclosed in the specifications of the prior patent application.
In this case, the Appellant made an application to the Controller in respect to an invention pertaining to an agrochemical concentrate and while the application was pending, a divisional application had been filed by Syngenta seeking to amend their claim(s). The original application was granted, however, the divisional application was rejected on the ground that the Divisional Application filed ought to have disclosed more than one invention in the parent application. Thus, an appeal was filed against this
order before the Single Bench of Justice C. Hari Shankar in which it was held that the stand in Boehringer Ingelheim, which held that the doctrine “what is not claimed is disclaimed”, is required to be revisited. Held, that it was sufficient that for plurality of inventions to be mentioned in provisional or complete specifications and, that the requirement of plurality of inventions being present in the parent application does not apply when a divisional application is filed suo motu.
In the proceedings before the Division Bench, the court opined that the doctrine had no application to divisional filing and claim drafting. Furthermore, the court stated that in case of a provisional filing the claims need not to be stated at all. The Bench interpreted that Section 16 clearly enables the filing of divisional application, provided that the plurality of inventions is disclosed in provisional or complete specifications.
Syngenta Limited v. Controller of Patents and Designs in C.A. (COMM. IPDPAT) 471/2022
Grey Mantra Solutions restrained from manufacturing tea products in trade dress identical to ‘CHAAYOS’
The Hon’ble Delhi High Court restrained the defendant from making any fresh manufacture of their tea products in their impugned trade dress packaging which was a colorable imitation of plaintiff’s product whereby they copied distinctive elements. ‘CHAAYOS’ , which was adopted in 2012 and has had a registration since 2017, uses the brand name in respect of tea and related products.
The Court opined that although the packaging and listings showed that plaintiff’s and defendant’s packaging was in the form of paper and plastic containers respectively, there was resemblance between the two. The distinctive elements were copied and the expressions/language used showed the mala fide intention of the defendant.
The court directed that the listings be taken down by the defendant and as far as the already manufactured products were concerned, the court ordered that the details of the inventory be placed on record along with their monetary value.
Sunshine Teahouse (P) Ltd. v. Grey Mantra Solutions, 2023 SCC OnLine Del 6828.
Agra based Shoe Manufacturer ordered the Delhi High Court to pay damages to PUMA for selling counterfeit shoes
The Delhi High Court ordered the shoe manufacturer based in Agra to pay ₹10 lakhs as damages to PUMA for selling counterfeit shoes using their trademark ‘PUMA’ and the stylized silhouette of ‘leaping cat’, the device mark.
The plaintiff, PUMA, approached alleging that various counterfeit products
under their mark were being sold in Uttar Pradesh, Delhi and Haryana. The matter was presided over by Justice Pratibha M. Singh who opined that the defendant was well aware of brand equity and was relishing over the Plaintiff’s positive goodwill and reputation. The defendant, as revealed by the
report of the Local Commissioner, was running a full scale manufacturing unit manufacturing counterfeited PUMA shoes and made a profit of around 19 lakhs, thus the suit was liable to be decreed in favor of the Plaintiff.
The court further held that such usage of logo on the products of inferior quality would not only violate legal rights of PUMA but would also result in deterioration of brand reputation. Puma Se v. Ashok Kumar Trading as Exposure Style 2023 SCC OnLine Del 2440
Delhi High Court ruled in favor of Red Bull in a trademark dispute
In a recent matter, the Delhi High Court ruled in favour of Red Bull in a trademark dispute against Rohidas Popat Kapadnis. The suit sought a direction for the disposal of unfilled cans of the defendants, since they were manufacturing the energy drink, ‘SEVEN HOURS’, using the identical silver and blue colour combination for the cans. Red Bull, a well-known Swiss company, adopted the ‘RED BULL’ mark in 1982 and argued that the blue and silver colour combination is a distinctive arrangement which is associated with the Plaintiff.
Justice Pratibha M. Singh directed for the disposal of the unfilled cans during the usual course of business till 31-01-2024, subject to the payment of the damages to the Plaintiff and if the same were not disposed off, the same shall be destroyed by the defendants. The defendants were held to be liable to pay damages for a sum of ₹13 lakhs to the plaintiff on or before 31-01-2024
RED BULL AG VS. ROHIDAS POPAT KAPADNIS & ANR. 2023 SCC OnLine Del 6595
Email ID in the Notice of Opposition is ‘Address for Service’ under Section 143 of Trade Marks Act, 1999, held Delhi High Court
The Delhi High Court held that providing an email ID in the application or the notice of opposition, where official communications are sent by the Registry of Trade Marks, is ‘Address of Service’ under Section 143 of Trade Marks Act, 1999. Justice C Hari Shankar further added that the Registry has liberty to effect service of documents by email where the party has provided an email ID. Thus, when the Applicant provides the Email ID, they clearly undertake that the communications be addressed at the said email address.
Section 143, Trade Marks Act stipulates that “an address for service stated in an application or notice of opposition shall be deemed to be the address of the Applicant or Opponent, and all the documents may be served by leaving them at or sending them by post to the address for service of the Applicant or Opponent, as the case may be.”
Justice Shankar highlighted the words ‘leaving them at’ stated in the provision should be read to cover service by email ID provided by the Applicant or the Opponent. Therefore, it would not be open for the Applicant to argue that no service has been made under Section 143 of the Act
In the present case, the Petitioner failed to provide any email address for communication in its notice of opposition and it is undisputed that counter statement was dispatched to Petitioner by email, held, it cannot be said that the there was proper service of the Counter Statement, as stipulated under
Section 143 of the Act.
M/S Mex Switchgears Pvt. Ltd. vs Vikram Suri Trading As M/S Armex Auto Industries in C.A.(COMM.IPD-TM) 69/2022
G-Shock Granted Trademark Registration by JPO
CASIO COMPUTER CO., LTD. (“CASIO”) which is the manufacturer of the famous watch series “G-SHOCK”, filed the 3D shape with the JPO on April 28, 2021, as a 3D trademark covering “wristwatches” in International Class 14. Earlier, the Examiner at the examination phase notified refusal due to lack of
distinctiveness. Later, CASIO asserted in its argument about the unique shape of G- Shock watches as a whole not only in Japan but also all around the world, thus acquiring a ‘secondary meaning’
Injunction against Indian Companies from using the logo similar to Japan Patent Office
The Japan Patent Office (JPO) filed a suit seeking an injunction against the defendants, A2Z Glass and Glazing Co. and its sister companies, who were allegedly using an identical logo to the JPO’s for manufacturing and selling tools and kits in India. The court, presided over by Justice Prathiba M Singh,
granted an ex-parte injunction, restraining the defendants from using the JPO mark, logo, the word mark ‘JPO PLATINUM,’ or any similar mark in connection with products or services. The JPO, a Japanese governmental agency overseeing industrial property rights affairs in Japan, had its logo created in 2011. The defendants’ unauthorised use of the JPO’s logo was deemed copyright infringement, causing harm to the JPO’s reputation and brand equity, making it necessary to grant an ex-parte injunction to protect
the plaintiff’s rights and goodwill.distinctiveness. Later, CASIO asserted in its argument about the unique shape of G- Shock watches as a whole not only in Japan but also all around the world, thus acquiring a ‘secondary meaning’.
Japan Patent Office v A2Z Glass and Glazing Co., 2023 SCC OnLine Del 6414
Open Licencing of Patents in progress as announced by CNIPA
China sees over 8000 Patent Open Licence Agreements since the Trial Program on Patent Open Licence launched by China National Intellectual Property Administration (CNIPA). The Trial Program was launched with an objective to promote implementation of its Patent Open Licence System introduced by the revised Chinese Patent Law in 2020. Therefore, anyone who wishes to exploit his/her patent can obtain the licence for exploitation by paying the specified licence fees through the patent grant department under CNIPA.
No copyright in religious scriptures but dramatic or adaptive works based on them can be copyrighted: Delhi High Court.
“There can be no copyright claimed in the Scriptures. However, any adaptations of the said work including providing explanation, summary, meaning, exegesis/interpretation or creating any audio-visual works for eg, television series like Ramanand Sagar’s Ramayana or BR Chopra’s Mahabharata; dramatic works created by drama societies based on scriptures etc, being transformative works, would be entitled to copyright protection -being original works of the Authors themselves,” the Court said.
Delhi High Court issues summons to 'People of India' in copyright infringement suit by 'Humans of Bombay'
The Delhi High Court has issued summons to an Instagram handle called ‘People of India’ in a copyright infringement suit filed by storytelling platform ‘Humans of Bombay’ The Humans of Bombay (HoB) has filed in the Delhi High Court that the People of India (PoI) has copied its content in multiple
ways. Based on the allegation, the HoB has sought an injunction against PoI. The HoB has argued that the PoI has “started an identical portal/service having identical content. In their lawsuit, the HoB has further said that the PoI has “completely replicated” their business model and also stories. In the lawsuit, the HoB has shared a table showing their original posts on one side and PoB’s posts on the other side. The PoB’s posts are nearly-identical in all cases.
A row has broken out after the founder of popular photo blog Humans of New York criticised a similar Indian platform’s take on copyright.Humans of Bombay, which follows the same format as Brandon Stanton’s New York blog, started in Mumbai in 2014.It recently filed a suit against People of India, which started a few years later, of copyright infringement. All three tell stories of people in the form of interviews or posts alongside their photos.
Statutory license under copyright law only applicable to play songs on radio and TV, not internet: Bombay High Court
The Bombay High Court, in the case of Wynk Ltd & Anr. v. Tips Industries Ltd., recently rendered a judgement concerning the application of compulsory licences with respect to copyrighted songs, specifically highlighting the limitation that such licences can only be invoked for traditional broadcasting platforms, excluding internet-based services. To elucidate, the court clarified
that the provision for compulsory statutory licences as per Section 31D of the Copyright Act is confined to conventional non-internet-dependent broadcasting mediums such as radio, television, and stage performances. Internet-based services, by contrast, do not fall within the purview of this
provision.
In the judgment, a division bench comprising Justices GS Patel and Gauri Godse upheld a prior ruling by a single judge. This ruling affirmed that Wynk Limited, a digital music application owned by Airtel, cannot utilise music owned by Tips Industries without the latter’s consent. Under certain
circumstances, Section 31D permits individuals to publicly broadcast content, provided they inform the copyright holder (through a notice) and pay the royalties prescribed by the Copyright Appellate Board.
Delhi HC Orders Blocking of Telegram Channels, Deactivation of WhatsApp Numbers Illegally Sharing Course Materials of ‘Apna College’ Platform
In a case wherein, an application was filed under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908 (‘CPC’) seeking temporary injunction against the defendants to restrain them from unlawfully sharing copyrighted materials, Pratibha M. Singh J., opined that if the defendants were not blocked from disseminating the plaintiff’s copyrighted material, the plaintiff would suffer enormous monetary loss including loss of subscribers and goodwill. Thus, the Court opined that a case had been established for grant of an injunction to prevent further distribution of the plaintiff’s copyrighted material and accordingly restrained the defendants from downloading, uploading, storing, sharing, transmitting, selling, offering for sale, storing or utilizing any of the plaintiff’s courses.
[Jainemo Pvt. Ltd v. Rahul Shah, 2023 Delhi High Court OnLine Del 6136, Order dated 27-09-2023]
What the latest US court ruling means for AI-generated art's copyright status
In the ruling, United States District Court Judge Beryl A. Howell upheld a prior refusal to grant copyright protection to requests made by inventor Stephen Thaler on behalf of his artificial intelligence engine, citing the absence of a “guiding human hand” in the AI-generated artwork’s creation. The article explores whether the US Copyright Act of 1976 is suitably adapted to deal with AI-generated content. Citing the Copyright Act clause that provides “Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed” as evidence
of its flexibility, Hanson emphasizes that the “underlying policy, [the] objective, of copyright law is to incentivize creative human expression.”
‘Biggest act of copyright theft in history’: thousands of Australian books allegedly used to train AI model
The Australian Publishers Association confirmed to Guardian Australia on Wednesday that as many as 18,000 fiction and nonfiction titles with Australian ISBNs (unique international standard book numbers) appeared to be affected by the copyright infringement, although it is not yet clear what proportion of these are Australian editions of internationally authored books. “They’re still working through [the data] to work out the impact in terms of Australian authors,” APA spokesperson Stuart Glover said. “This is a massive legal and ethical challenge for the publishing industry and for authors globally.”
Gola Sizzler and Sandoz temporarily restrained from using the Phonographic Performance Limited music
The Hon’ble Delhi High Court has issued a temporary restraining order against Sandoz and Gola Sizzlers, preventing them from playing sound recordings owned by Phonographic Performance Limited (PPL) in response to copyright infringement allegations by the organisation. Additionally, Tim Hortons was bound by a statement from its counsel, committing not to play any of the sound recordings from PPL’s repertoire without a proper licence. PPL, a public performance rights organisation which owns and controls radio broadcasting had filed copyright infringement suits against these food outlets, claiming they were using its recordings without authorization. Justice C. Hari Shankar, presiding over the case, granted an ex-parte ad-interim injunction, considering the prima facie case is made out from the plaintiff’s complaint.
Phonographic Performance Limited v. Gola Sizzlers Private Limited & Ors. 2023 SCC OnLine Del 6829
Delhi High Court flags need to regulate trademark and patent agents, seeks report from IP authority
The Delhi High Court has asked the Controller General of Patents, Designs and Trade Marks (CGPDTM) to reveal how it intends to regulate or supervise the functioning of trademark and patent agents in the country.
[Saurav Chaudhary v. Union of India and Anr]
India’s IP office seeks comments, suggestions for manuals revision
On August 30, 2023, India’s Office of the Controller General of Patents, Designs and Trade Marks released a public notice inviting patent and trademark holders, designers, legal experts, academics, professionals in industries governed by intellectual property laws and other stakeholders to submit their feedback and suggestions regarding the revision of manuals and guidelines for different IP rights. These are patents, designs, trademarks, geographical indications and copyright. Comments and suggestions will be
reviewed by expert committees for consideration.
India introduces Digital Personal Data Protection Act, 2023
After receiving approval from both houses of Parliament and obtaining the President’s assent, the Digital Personal Data Protection Bill of 2022 has officially become the Digital Personal Data Protection Act of 2023. This Act is now in effect and governs the processing of digital personal data in India,
regardless of whether the data was originally collected in digital or nondigital format and subsequently digitized. Under the DPDP Act, state agencies may be exempted from its provisions at the government’s
discretion. This legislation is designed to bolster data protection and accountability for entities such as internet companies, mobile apps, and businesses that handle citizens’ data. Furthermore, it’s worth noting that the DPDP Act will have implications for India’s trade negotiations with other
nations. It aligns with global data protection standards, taking inspiration from models like the EU’s GDPR and China’s PIPL.
China issues rules for regulating generative AI
The rapid development of generative artificial intelligence has raised concerns about the necessity of legal governance, and China has recently become one of the first jurisdictions to do so. Together with six other Chinese regulators, the Cyber Administration of China issued the Interim Measures for
the Management of Generative Artificial Intelligence Services, which came into force on August 15. Ian Liu, a partner at Deacons in Hong Kong, said AI service providers shall comply with the laws in pre-training and optimization training under the Interim Measures. The scope of compliance includes: the
use of data and foundation models shall have lawful sources; data used shall not infringe against a third party’s IP rights; and measures should be employed to enhance the quality of training data.
India Monthly News Roundup – September 2024
NEWSLETTER GLOBAL –AUGUST
India Monthly News Roundup – June & July, 2024
Monthly Roundup | Japan-USA-India | KAFOCUS
Monthly IPR Updates – October 2023
No Interim Relief to Blenders Pride
The Hon’ble Supreme Court declined to get in the way of the Punjab and Haryana High Court’s order and rejected the interim relief to Blenders Pride, owned by Pernod Ricard India, in the Trademark Dispute whiskey brand against Royal Challengers American Pride, owned by United Spirits. The Division Bench comprising Justice SK Kaul and Justice Sudhanshu Dhulia noted that since the High Court order under challenge was an interlocutory application, thus, refused to interfere. However, it directed the Mohali Trial Court to hear the Trademark suit and decide the case within six months.
DHC refuses to restrain use of Policy Bazaar Trademark on Google AdWords program
In the present case the Plaintiff Policybazaar against Coverfox Insurance Broking Pvt Ltd and Acko General Insurance Ltd, claimed that the defendant companies were using keywords identical to the “Policybazaar” with an intent to divert business from its website and thus causing confusion. The Hon’ble
Delhi High Court rejected the plea which seeks to restrain use of such keywords on Google by other entities, on the ground that prima facie no case of infringement was made out. The search results showed the website which appeared only as a “sponsored link”
Governance and Supervision of Trademark and Patent Agents
The Hon’ble Delhi High Court highlighted the importance of supervision and governance of patent and trademark agents. In the present case, a writ petition was filed challenging the abandonment of a patent application and praying for its restoration. The Petitioner hired Mr. Naveen Chaklan of M/s Delhi Intellectual Property LLP to deal with his patent application, who failed to submit a response to First ER despite several reminders. Due to the lack of any supervisory or governing body for such agents, the Court instructed the learned Central Government Standing Counsel, to seek guidance from
the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the regulation such agents and submit them in the next hearing.
AAJTAK trademark infringement by websites restrained
The present issue revolved around the unauthorised use of trademarks by the defendants, alleged to have been infringing upon the rights of the plaintiffs, Living Media India Limited and Anr.. The defendants 1-12 and 20-30 did not contest the case, and were found to be liable for trademark infringement.
Justice C. Hari Shankar, presiding over the case, restrained the entities from using the marks having deceptive similarity to Plaintiff’s “Aaj Tak” mark and its derivatives without the prior authorization. The defendants were using the suffix “Tak” in services identical to the Plaintiff and these marks were prima
facie infringing upon Plaintiff’s registered trademark. The other defendants were directed to take down websites and social media pages featuring the infringing mark. The Hon’ble Court opined that “Tak” became source identifier for Plaintiff’s marks, forming a family of marks. The present case sets the principle that even if the composite mark hasn’t been separately registered, the dominant part can be protected against infringement. the Office of the Controller General of Patents, Designs, and Trademarks (CGPDTM) regarding the regulation such agents and submit them in the next hearing.
No ad interim injunction without the issuance of the notice to the Defendants
The Hon’ble Delhi High Court after relying on the Division Bench’s order in Dabur v. Emami Ltd., refused to file an ad interim injunction without issuing a notice to the defendant. The court opined that the defendants have been in the market, and the present matter before the court is not any other case of counterfeiting but of allegedly deceptively similar trademarks. Therefore, it is appropriate that the defendant is given an opportunity to respond against the ad interim injunction application.
Dispute between Theos and Theobroma now comes to an end
The Hon’ble Delhi High Court disposed off Trademark Infringement lawsuit between Theos and Theobroma after the settlement between the two. Theobroma will now be allowed to expand its outlets across the country under the name “THEOBROMA”. The Hon’ble court was of the opinion that there was no ambiguity and the defendant could not be restricted from using the mark “THEOS/THEO’S”. Justice Pratibha M. Singh dictated the terms of settlement for the issues in dispute and the parties agreed to abide by the same and the dispute was brought to a conclusion.
Morgan and Morgan Trademark #LAW to be restored
Morgan and Morgan, famous U.S. law firm agreed to drop lawsuit against USPTO after PTO approved that it will accept the Plaintiff’s application to register the trademark “#LAW” after receiving new supporting evidence. As per lawsuit, the trademark meant a telephone number and the term became eligible for registration when the firm spent millions of dollars on its advertisement and it became an identifier for the firm’s services. Earlier it was refused on the ground by PTO’s Trademark Trial and Appeal Board that it is a “commonly used hashtag in the legal field” and that no one would associate it with the Morgan & Morgan trademark.
JPO Cancelled the Trademark “Bordeaux Wave” being contrary to public policy and accepted principles of morality
KAO Corporation, a Japanese company dealing with household products like cosmetics and detergents, filed a trademark application for the wordmark “BORDEAUX WAVE” with its transliteration written in Japanese Katakana character to be used on soaps and detergents, cosmetics, perfume and flavor materials, incense in class 3. An opposition was filed on the ground that the mark misleads as to origin known products, since it used GI “Bordeaux” known for French wine. The board opined that the “Bordeaux” has now acquired a high level of popularity among Japanese consumers, and it is likely that consumers will connect “BORDEAUX” in the mark with wine.
General Court upholds the likelihood of confusion between TRUE SKIN and SKIN
In the present case, it was held that while assessing the likelihood of confusion, where one of the marks has a meaning from the perspective of the general public and the other mark does not, it must be held that marks are conceptually different. The applicant filed the present case seeking the annulment of decision of Board of Appeal, of the EUIPO, in which it was held that there was a likelihood of confusion on the significant part of the Spanish speaking public. The word ‘true’ has been included in its entirety in the mark applied for and is liable to create strong visual and phonetic similarity between the marks in issue.
INTA files Amicus Brief in Iceland Trademark Dispute
The International Trademark Association (INTA) filed an amicus brief before the General Court of the European Union highlighting the registrability of country names as EU trademarks. The trademarks in the case were registered in the EU by a British supermarket chain called Iceland, but the Icelandic
government filed for a cancellation of the trademark. The INTA argued that state names should not be denied from the trademark registration and asked the court to determine the same on the case-to-case basis, i.e., if a specific state or geographical name is descriptive or non-distinctive with respect to
the trademark’s specific designated goods/service
EUIPO declines to register Porsche’s Acceleration sound mark
The German Automotive manufacturer applied for the registration of an audio file of the sound of the artificial acceleration. The luxury brand applied to protect the sound in relation to the vehicles, models, toy vehicles as well as NFTs related to goods and services. However, the EUIPO declined the application on the basis that the sound did not meet the distinctiveness for the registration. Furthermore, the tone lacked any complexity and was not generated by the electrical vehicles themselves. Government filed for a cancellation of the trademark. The INTA argued that state names should not be denied from the trademark registration and asked the court to determine the same on the case-to-case basis, i.e., if a specific state or geographical name is descriptive or non-distinctive with respect to the trademark’s specific designated goods/service
Tesla and Elon Musk won Trademark Dispute in China against Beer Company
Elon Musk won a trademark dispute against a Chinese owned Beer company, Sino Drinks Food Company, and protected his Tesla brand in China. Sino started to brew and sell its beer under the name “TESILA” with the “T” mirrored like the Tesla logo. The company also had trademarks for a series of Tesla Soda and other varieties of beverages on the line of the Tesla Brand, but were not associated with Tesla itself. Tesla immediately filed a suit wishing to defend its well-known logo and reputation, since it was evident that the Beer company aimed to use Tesla’s name to mislead consumers. It was ordered to cease infringing Tesla’s exclusive rights, stop unfair competition practices, make a public statement clarifying the facts of the case and ordered to pay compensation worth ¥5 million, roughly USD 690,000.
Recorded Evidence by Live transcription
India for the first time in the trial before the Hon’ble Delhi High Court, recorded the evidences and arguments with live transcription in Communication Components Antenna Inc. v. Rosenberger
Hochfrequenztechnik GMBH & Co KG & Ors, which is the patent infringement suit. However, the cost of this live transcription is to be borne equally by the parties to the suit.
Capability of India to issue patents to improve with hiring of new Patent Officers
Sanjeev Sanyal, Member of Economic Advisory Council to Prime Minister said India will soon have the capacity to issue 1,00,000 patents a year in the next 18 months. The same will come into effect not only with changes in the processes but also with hiring of around 500 new Patent Officers, thus,
increasing efficiency in the system.
Novartis and Eli Lilly oppose compulsory licences for Breast Cancer Drugs
A writ petition was moved in the Kerala High Court for the compulsory licensing of HER2- Negative breast cancer drugs of the multinational pharmaceuticals giants, Novartis (based in Switzerland) and Eli Lilly (based in the US). However, the companies opposed any move for the issuance of the
compulsory licence under Indian Patents Act, 1970, which will allow the generic versions to be made available and lowers the cost of the drug. The companies, further, informed the Hon’ble Kerala High Court that despite how high their prices are, the sales are up as seen in India.increasing efficiency in the system.
Delhi High Court allows Divisional Application under Section 16 Patents Act, if plurality of invention is disclosed in the Specifications, overruled Boehringer Decision
The Division Bench of the Hon’ble Delhi High Court, presided over by Justices Yashwant Varma and Dharmesh Sharma recently overruled the judgment passed by a Single Bench in Boehringer Ingelheim International GMBH v. The Controller of Patents, in the context of Section 16 of the Patents Act, 1970. This section allows filing of a divisional application in addition to the invention disclosed in the specifications of the prior patent application.
In this case, the Appellant made an application to the Controller in respect to an invention pertaining to an agrochemical concentrate and while the application was pending, a divisional application had been filed by Syngenta seeking to amend their claim(s). The original application was granted, however, the divisional application was rejected on the ground that the Divisional Application filed ought to have disclosed more than one invention in the parent application. Thus, an appeal was filed against this
order before the Single Bench of Justice C. Hari Shankar in which it was held that the stand in Boehringer Ingelheim, which held that the doctrine “what is not claimed is disclaimed”, is required to be revisited. Held, that it was sufficient that for plurality of inventions to be mentioned in provisional or complete specifications and, that the requirement of plurality of inventions being present in the parent application does not apply when a divisional application is filed suo motu.
In the proceedings before the Division Bench, the court opined that the doctrine had no application to divisional filing and claim drafting. Furthermore, the court stated that in case of a provisional filing the claims need not to be stated at all. The Bench interpreted that Section 16 clearly enables the filing of divisional application, provided that the plurality of inventions is disclosed in provisional or complete specifications.
Syngenta Limited v. Controller of Patents and Designs in C.A. (COMM. IPDPAT) 471/2022
Grey Mantra Solutions restrained from manufacturing tea products in trade dress identical to ‘CHAAYOS’
The Hon’ble Delhi High Court restrained the defendant from making any fresh manufacture of their tea products in their impugned trade dress packaging which was a colorable imitation of plaintiff’s product whereby they copied distinctive elements. ‘CHAAYOS’ , which was adopted in 2012 and has had a registration since 2017, uses the brand name in respect of tea and related products.
The Court opined that although the packaging and listings showed that plaintiff’s and defendant’s packaging was in the form of paper and plastic containers respectively, there was resemblance between the two. The distinctive elements were copied and the expressions/language used showed the mala fide intention of the defendant.
The court directed that the listings be taken down by the defendant and as far as the already manufactured products were concerned, the court ordered that the details of the inventory be placed on record along with their monetary value.
Sunshine Teahouse (P) Ltd. v. Grey Mantra Solutions, 2023 SCC OnLine Del 6828.
Agra based Shoe Manufacturer ordered the Delhi High Court to pay damages to PUMA for selling counterfeit shoes
The Delhi High Court ordered the shoe manufacturer based in Agra to pay ₹10 lakhs as damages to PUMA for selling counterfeit shoes using their trademark ‘PUMA’ and the stylized silhouette of ‘leaping cat’, the device mark.
The plaintiff, PUMA, approached alleging that various counterfeit products
under their mark were being sold in Uttar Pradesh, Delhi and Haryana. The matter was presided over by Justice Pratibha M. Singh who opined that the defendant was well aware of brand equity and was relishing over the Plaintiff’s positive goodwill and reputation. The defendant, as revealed by the
report of the Local Commissioner, was running a full scale manufacturing unit manufacturing counterfeited PUMA shoes and made a profit of around 19 lakhs, thus the suit was liable to be decreed in favor of the Plaintiff.
The court further held that such usage of logo on the products of inferior quality would not only violate legal rights of PUMA but would also result in deterioration of brand reputation. Puma Se v. Ashok Kumar Trading as Exposure Style 2023 SCC OnLine Del 2440
Delhi High Court ruled in favor of Red Bull in a trademark dispute
In a recent matter, the Delhi High Court ruled in favour of Red Bull in a trademark dispute against Rohidas Popat Kapadnis. The suit sought a direction for the disposal of unfilled cans of the defendants, since they were manufacturing the energy drink, ‘SEVEN HOURS’, using the identical silver and blue colour combination for the cans. Red Bull, a well-known Swiss company, adopted the ‘RED BULL’ mark in 1982 and argued that the blue and silver colour combination is a distinctive arrangement which is associated with the Plaintiff.
Justice Pratibha M. Singh directed for the disposal of the unfilled cans during the usual course of business till 31-01-2024, subject to the payment of the damages to the Plaintiff and if the same were not disposed off, the same shall be destroyed by the defendants. The defendants were held to be liable to pay damages for a sum of ₹13 lakhs to the plaintiff on or before 31-01-2024
RED BULL AG VS. ROHIDAS POPAT KAPADNIS & ANR. 2023 SCC OnLine Del 6595
Email ID in the Notice of Opposition is ‘Address for Service’ under Section 143 of Trade Marks Act, 1999, held Delhi High Court
The Delhi High Court held that providing an email ID in the application or the notice of opposition, where official communications are sent by the Registry of Trade Marks, is ‘Address of Service’ under Section 143 of Trade Marks Act, 1999. Justice C Hari Shankar further added that the Registry has liberty to effect service of documents by email where the party has provided an email ID. Thus, when the Applicant provides the Email ID, they clearly undertake that the communications be addressed at the said email address.
Section 143, Trade Marks Act stipulates that “an address for service stated in an application or notice of opposition shall be deemed to be the address of the Applicant or Opponent, and all the documents may be served by leaving them at or sending them by post to the address for service of the Applicant or Opponent, as the case may be.”
Justice Shankar highlighted the words ‘leaving them at’ stated in the provision should be read to cover service by email ID provided by the Applicant or the Opponent. Therefore, it would not be open for the Applicant to argue that no service has been made under Section 143 of the Act
In the present case, the Petitioner failed to provide any email address for communication in its notice of opposition and it is undisputed that counter statement was dispatched to Petitioner by email, held, it cannot be said that the there was proper service of the Counter Statement, as stipulated under
Section 143 of the Act.
M/S Mex Switchgears Pvt. Ltd. vs Vikram Suri Trading As M/S Armex Auto Industries in C.A.(COMM.IPD-TM) 69/2022
G-Shock Granted Trademark Registration by JPO
CASIO COMPUTER CO., LTD. (“CASIO”) which is the manufacturer of the famous watch series “G-SHOCK”, filed the 3D shape with the JPO on April 28, 2021, as a 3D trademark covering “wristwatches” in International Class 14. Earlier, the Examiner at the examination phase notified refusal due to lack of
distinctiveness. Later, CASIO asserted in its argument about the unique shape of G- Shock watches as a whole not only in Japan but also all around the world, thus acquiring a ‘secondary meaning’
Injunction against Indian Companies from using the logo similar to Japan Patent Office
The Japan Patent Office (JPO) filed a suit seeking an injunction against the defendants, A2Z Glass and Glazing Co. and its sister companies, who were allegedly using an identical logo to the JPO’s for manufacturing and selling tools and kits in India. The court, presided over by Justice Prathiba M Singh,
granted an ex-parte injunction, restraining the defendants from using the JPO mark, logo, the word mark ‘JPO PLATINUM,’ or any similar mark in connection with products or services. The JPO, a Japanese governmental agency overseeing industrial property rights affairs in Japan, had its logo created in 2011. The defendants’ unauthorised use of the JPO’s logo was deemed copyright infringement, causing harm to the JPO’s reputation and brand equity, making it necessary to grant an ex-parte injunction to protect
the plaintiff’s rights and goodwill.distinctiveness. Later, CASIO asserted in its argument about the unique shape of G- Shock watches as a whole not only in Japan but also all around the world, thus acquiring a ‘secondary meaning’.
Japan Patent Office v A2Z Glass and Glazing Co., 2023 SCC OnLine Del 6414
Open Licencing of Patents in progress as announced by CNIPA
China sees over 8000 Patent Open Licence Agreements since the Trial Program on Patent Open Licence launched by China National Intellectual Property Administration (CNIPA). The Trial Program was launched with an objective to promote implementation of its Patent Open Licence System introduced by the revised Chinese Patent Law in 2020. Therefore, anyone who wishes to exploit his/her patent can obtain the licence for exploitation by paying the specified licence fees through the patent grant department under CNIPA.
No copyright in religious scriptures but dramatic or adaptive works based on them can be copyrighted: Delhi High Court.
“There can be no copyright claimed in the Scriptures. However, any adaptations of the said work including providing explanation, summary, meaning, exegesis/interpretation or creating any audio-visual works for eg, television series like Ramanand Sagar’s Ramayana or BR Chopra’s Mahabharata; dramatic works created by drama societies based on scriptures etc, being transformative works, would be entitled to copyright protection -being original works of the Authors themselves,” the Court said.
Delhi High Court issues summons to 'People of India' in copyright infringement suit by 'Humans of Bombay'
The Delhi High Court has issued summons to an Instagram handle called ‘People of India’ in a copyright infringement suit filed by storytelling platform ‘Humans of Bombay’ The Humans of Bombay (HoB) has filed in the Delhi High Court that the People of India (PoI) has copied its content in multiple
ways. Based on the allegation, the HoB has sought an injunction against PoI. The HoB has argued that the PoI has “started an identical portal/service having identical content. In their lawsuit, the HoB has further said that the PoI has “completely replicated” their business model and also stories. In the lawsuit, the HoB has shared a table showing their original posts on one side and PoB’s posts on the other side. The PoB’s posts are nearly-identical in all cases.
A row has broken out after the founder of popular photo blog Humans of New York criticised a similar Indian platform’s take on copyright.Humans of Bombay, which follows the same format as Brandon Stanton’s New York blog, started in Mumbai in 2014.It recently filed a suit against People of India, which started a few years later, of copyright infringement. All three tell stories of people in the form of interviews or posts alongside their photos.
Statutory license under copyright law only applicable to play songs on radio and TV, not internet: Bombay High Court
The Bombay High Court, in the case of Wynk Ltd & Anr. v. Tips Industries Ltd., recently rendered a judgement concerning the application of compulsory licences with respect to copyrighted songs, specifically highlighting the limitation that such licences can only be invoked for traditional broadcasting platforms, excluding internet-based services. To elucidate, the court clarified
that the provision for compulsory statutory licences as per Section 31D of the Copyright Act is confined to conventional non-internet-dependent broadcasting mediums such as radio, television, and stage performances. Internet-based services, by contrast, do not fall within the purview of this
provision.
In the judgment, a division bench comprising Justices GS Patel and Gauri Godse upheld a prior ruling by a single judge. This ruling affirmed that Wynk Limited, a digital music application owned by Airtel, cannot utilise music owned by Tips Industries without the latter’s consent. Under certain
circumstances, Section 31D permits individuals to publicly broadcast content, provided they inform the copyright holder (through a notice) and pay the royalties prescribed by the Copyright Appellate Board.
Delhi HC Orders Blocking of Telegram Channels, Deactivation of WhatsApp Numbers Illegally Sharing Course Materials of ‘Apna College’ Platform
In a case wherein, an application was filed under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908 (‘CPC’) seeking temporary injunction against the defendants to restrain them from unlawfully sharing copyrighted materials, Pratibha M. Singh J., opined that if the defendants were not blocked from disseminating the plaintiff’s copyrighted material, the plaintiff would suffer enormous monetary loss including loss of subscribers and goodwill. Thus, the Court opined that a case had been established for grant of an injunction to prevent further distribution of the plaintiff’s copyrighted material and accordingly restrained the defendants from downloading, uploading, storing, sharing, transmitting, selling, offering for sale, storing or utilizing any of the plaintiff’s courses.
[Jainemo Pvt. Ltd v. Rahul Shah, 2023 Delhi High Court OnLine Del 6136, Order dated 27-09-2023]
What the latest US court ruling means for AI-generated art's copyright status
In the ruling, United States District Court Judge Beryl A. Howell upheld a prior refusal to grant copyright protection to requests made by inventor Stephen Thaler on behalf of his artificial intelligence engine, citing the absence of a “guiding human hand” in the AI-generated artwork’s creation. The article explores whether the US Copyright Act of 1976 is suitably adapted to deal with AI-generated content. Citing the Copyright Act clause that provides “Copyright protection subsists in original works of authorship fixed in any tangible medium of expression, now known or later developed” as evidence
of its flexibility, Hanson emphasizes that the “underlying policy, [the] objective, of copyright law is to incentivize creative human expression.”
‘Biggest act of copyright theft in history’: thousands of Australian books allegedly used to train AI model
The Australian Publishers Association confirmed to Guardian Australia on Wednesday that as many as 18,000 fiction and nonfiction titles with Australian ISBNs (unique international standard book numbers) appeared to be affected by the copyright infringement, although it is not yet clear what proportion of these are Australian editions of internationally authored books. “They’re still working through [the data] to work out the impact in terms of Australian authors,” APA spokesperson Stuart Glover said. “This is a massive legal and ethical challenge for the publishing industry and for authors globally.”
Gola Sizzler and Sandoz temporarily restrained from using the Phonographic Performance Limited music
The Hon’ble Delhi High Court has issued a temporary restraining order against Sandoz and Gola Sizzlers, preventing them from playing sound recordings owned by Phonographic Performance Limited (PPL) in response to copyright infringement allegations by the organisation. Additionally, Tim Hortons was bound by a statement from its counsel, committing not to play any of the sound recordings from PPL’s repertoire without a proper licence. PPL, a public performance rights organisation which owns and controls radio broadcasting had filed copyright infringement suits against these food outlets, claiming they were using its recordings without authorization. Justice C. Hari Shankar, presiding over the case, granted an ex-parte ad-interim injunction, considering the prima facie case is made out from the plaintiff’s complaint.
Phonographic Performance Limited v. Gola Sizzlers Private Limited & Ors. 2023 SCC OnLine Del 6829
Delhi High Court flags need to regulate trademark and patent agents, seeks report from IP authority
The Delhi High Court has asked the Controller General of Patents, Designs and Trade Marks (CGPDTM) to reveal how it intends to regulate or supervise the functioning of trademark and patent agents in the country.
[Saurav Chaudhary v. Union of India and Anr]
India’s IP office seeks comments, suggestions for manuals revision
On August 30, 2023, India’s Office of the Controller General of Patents, Designs and Trade Marks released a public notice inviting patent and trademark holders, designers, legal experts, academics, professionals in industries governed by intellectual property laws and other stakeholders to submit their feedback and suggestions regarding the revision of manuals and guidelines for different IP rights. These are patents, designs, trademarks, geographical indications and copyright. Comments and suggestions will be
reviewed by expert committees for consideration.
India introduces Digital Personal Data Protection Act, 2023
After receiving approval from both houses of Parliament and obtaining the President’s assent, the Digital Personal Data Protection Bill of 2022 has officially become the Digital Personal Data Protection Act of 2023. This Act is now in effect and governs the processing of digital personal data in India,
regardless of whether the data was originally collected in digital or nondigital format and subsequently digitized. Under the DPDP Act, state agencies may be exempted from its provisions at the government’s
discretion. This legislation is designed to bolster data protection and accountability for entities such as internet companies, mobile apps, and businesses that handle citizens’ data. Furthermore, it’s worth noting that the DPDP Act will have implications for India’s trade negotiations with other
nations. It aligns with global data protection standards, taking inspiration from models like the EU’s GDPR and China’s PIPL.
China issues rules for regulating generative AI
The rapid development of generative artificial intelligence has raised concerns about the necessity of legal governance, and China has recently become one of the first jurisdictions to do so. Together with six other Chinese regulators, the Cyber Administration of China issued the Interim Measures for
the Management of Generative Artificial Intelligence Services, which came into force on August 15. Ian Liu, a partner at Deacons in Hong Kong, said AI service providers shall comply with the laws in pre-training and optimization training under the Interim Measures. The scope of compliance includes: the
use of data and foundation models shall have lawful sources; data used shall not infringe against a third party’s IP rights; and measures should be employed to enhance the quality of training data.
India Monthly News Roundup – September 2024
NEWSLETTER GLOBAL –AUGUST
India Monthly News Roundup – June & July, 2024
Monthly Roundup | Japan-USA-India | KAFOCUS
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