Monthly Round UP-January 2021
A. Notable Developments:
1. The Designs (Amendment) Rules, 2021
The Government of India, on January 25, 2021, issued a gazette notification to formalize and introduce the Designs (Amendment) Rules, 2021. The new amendment rules have come into force with effect from January 25, 2021 and have been covered by us here.
B. Notable Cases:
1. In an appeal filed against the order of the Assistant Controller of Patents & Designs refusing to grant a patent, the IPAB set aside the order of the Respondent on the ground that it was wholly void of reasoning and remanded the matter back to the Respondent to decide the matter on merit, within 3 months of issuance of this order.[1]
2. In an appeal filed against the order of the Assistant Controller of Patents & Designs refusing to grant a patent, the IPAB set aside the order of the Respondent and directed the Respondent to grant patent to the Appellant on the amended set of claims 1-7, within 3 weeks from the date of submission of the amended set of claims by the appellant. The IPAB also directed the Appellant to submit an auxiliary set of claims sufficiently defining the invention.[2]
3. The IPAB has directed the Registrar to delete the entry of the registered mark “beautybay (label)” from the Register under the provisions of Section 47(1)(a) and (b) and Section 57 of the Trade Marks Act, 1999. It was found that the impugned mark is deceptively similar to the prior used and registered “BEAUTYBAY” trade mark for same and similar goods/services, is devoid of any distinctive character and is not capable of distinguishing the goods/services of the Respondent. Further, the Respondent has never used nor has had any bona fide intention to use the impugned mark as more than 7 years had passed since the impugned mark was granted registration. It was also found that the existence of the impugned registration was wrongly granted and is prejudicial to the Applicant’s interests.[3]
4. The Delhi High Court has passed an ex parte ad-interim order restraining the Defendant from using the mark “VOLVO” or any other identical/deceptively similar trade mark, on the basis of identity and similarity with the Plaintiff’s well-known VOLVO mark in relation to online booking of bus tickets, live tracking of buses, telephonic booking of bus tickets or in relation to any other goods or services, in any manner, including the domain name, <vaishalivolvo.com>, meta-tags associated with the domain name, as a part of the email id vaishalivolvo35@gmail.com, third party listings, references in social media and/or any representation made by the Defendant.[4]
5. The Delhi High Court has restrained the Defendant from permanently using, selling, offering for sale, issuing or allocating 13-digit barcode numbers starting with '890' or any deceptively similar marks for any goods or services leading to confusion as to origin or association as to certification regarding compliance with GS1 standards. The Court held that the Defendant “is bent on carrying on its illegal activities by mischievously and falsely allocating bar codes starting from '890' illegally to innocent third parties”. The Plaintiff is a society registered under the Societies Registration Act. The Plaintiff is named GS1 India and has been allocated the code '890' which is used for further allocation along with ten other digits to various manufacturers, suppliers who want their products to be certified with a barcode so as to ascertain the country of origin as also the manufacturing, supplying units of the product.[5]
6. The Delhi High Court has passed an ex-parte ad-interim order restraining the Defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in machines, electronic, electrical, parts and fittings or any other products under the impugned trade mark "N-GUARD”/domain name <nguard.in>, any other trade mark/trade name/trade dress/domain name/designs which may amount to infringement of the Plaintiff’s mark “V-GUARD”. The Plaintiff averred that the Defendant has also copied the distinctive design of the Plaintiff’s products by imitating the overall shape, get-up, layout and colour combination and is also using similar sub-brands and models which are identical/deceptively similar to the Plaintiff’s sub-brands and mode.[6]
7. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from reproducing, distributing or using for any kind of computer related activities, any pirated/unlicensed/unauthorized software programs in contravention of the terms of the End User License Agreement(s) (EULA)/Customer License and Online Services Agreement (CLOSA), or infringing the copyright of the Plaintiff in its SOLIDWORKS software and its various versions or any other software programs developed by the Plaintiff. The Court also restrained the Defendant from directly or indirectly formatting the computer systems and/or erasing any data, log files, installations, etc. pertaining to assisting others to infringe the copyrights of the Plaintiff subsisting in its software programs.[7]
8. The Delhi High Court has vacated an ad-interim order restraining the Defendant from manufacturing, selling or operating in food items such as corn flakes, cereals, muesli, etc. under the mark “8AM” or any other similar mark, amounting to infringement and passing off its goods as that of the Plaintiff. The Court held that once the Plaintiff is found to have concealed material facts while obtaining an ex parte injunction, the Plaintiff cannot be said to have approached the Court with clean hands, which disentitles the Plaintiff from equitable relief of injunction. Further, the Court also held that the Plaintiff is not the prior user of the mark and also does not satisfy the essential ingredient of prima facie case to be entitled to interim injunction. The Court further held that use by the Defendant of the mark “8AM” in conjunction with “Mohun’s” also distinguishes the product of both the parties.[8]
9. The Delhi High Court has refused to grant an interim injunction staying the release of the film "The White Tiger". The Court relied on the principle that where the loss occasioned to the Plaintiff is capable of being adequately compensated in monetary terms, an injunction, especially of release of a cinematographic film, ought not to be granted. The Court also directed the Defendant to keep detailed accounts of the earnings made from the film so that, at any later stage, was the Plaintiff to succeed, award of damages or monetary compensation, should the Court so deem, be facilitated. It was averred that by virtue of a Literary Option/Purchase Agreement dated 4th March 2009, the Plaintiff was vested with exclusive copyright to make a movie adaptation of the book "The White Tiger" authored by Mr. Aravind Adiga, which continues till date and is unchallenged.[9]
10. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from offering for sale, selling, packaging, displaying, advertising, marketing, skin creams containing the ingredients Betamethasone Valerate and Neomycin and any other medicinal, pharmaceutical and cosmetic products that are packaged in a packaging that is similar to the Plaintiff's packaging. It was submitted that since 2003, the Plaintiff has been selling its product/skin cream in packaging that features distinctive get-up and layout and the said packaging has become a source-identifier in relation to the Plaintiff's "BETNOVATE" skin creams. It is also contended that the Defendant is manufacturing, selling, exporting and marketing skin creams in a packaging which is deceptively similar to the Plaintiff's packaging.[10]
11. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from marketing, offering for sale, selling, advertising, or dealing in goods and services bearing the impugned mark "ZENITH" and/or any other marks identical and/or deceptively similar to the Plaintiff's trade mark "ZENITH" so as to result in an act of passing off its goods and services as those of Plaintiff or doing business in a manner as may suggest a connection or association with the Plaintiff or which may result in infringement of Plaintiff's trade mark. The Court also directed the Defendant to remove all social media pages and online references with the mark "ZENITH". The Plaintiff averred that it has been using its mark since 1997.[11]
12. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from making, selling, offering for sale, advertising and in any manner dealing in any goods using the trade dress/colour combination/writing style/packaging/copyright or any trade mark/trade dress/colour combination/writing style/packaging/get-up which is identical or deceptively similar to the Plaintiff's registered "BH" logo/label and "BLUE HEAVEN" label/logo/device and from doing any other thing, whereby passing off its goods as and for the goods of the Plaintiff. It was submitted that the Plaintiff’s marks date back to 1972.[12]
13. The Delhi High Court dismissed the suit of the Plaintiff by passing a decree, in favour of the Plaintiff and against the Defendant, restraining the Defendant from using the mark “BOSS” without using the prefix Hi-Tone, as is presently being done and in the manner as shown in the said catalogue and to not expand its business in the goods under the said mark beyond the jurisdictions where the same is presently being carried on.[13]
14. The Delhi High Court has restrained the Defendant from manufacturing, marketing, supplying, selling and offering for sale including online, advertising, directly or indirectly medicinal and pharmaceutical preparations under the trade mark 'OMEZ' or any other mark identical or deceptively similar to the Plaintiff's marks 'OMEZ'. The Plaintiff has claimed use of the mark since 1990.[14]
15. A District Court in Delhi has restrained the Defendant from permanently selling, offering for sale, marketing, advertising, distributing or dealing in/under the trade mark "BURBERRY EQUESTRIAN KNIGHT LOGO, CHECK" or any other identical/deceptively similar trade mark to the Plaintiff's trade mark "BURBERRY". The Court also directed the Defendant to pay compensatory damages to the Plaintiff to the tune of INR One lakh (about USD 1370) apart from costs towards litigation expenses amounting to INR 33,000 (about USD 450).[15]
16. A District Court in Delhi has restrained the Defendant from selling, offering for sale, marketing, advertising, distributing or dealing in/under the impugned trade mark "LEVI's” with or without the "Two Horse Logo" or any other identical/deceptively similar trade mark to the Plaintiff's trade mark " Levi's". The Court also directed the Defendant to pay compensatory damages to the Plaintiff to the tune of INR One lakh (about USD 1370) apart from costs towards litigation expenses amounting to INR 33,000 (about USD 450).[16]
17. A District Court in Pune has held that the Plaintiff is not entitled for interim injunction since the Plaintiff had failed to make out a prima facie case and the trinity of the passing off a trade mark i.e., goodwill of the Plaintiff, misrepresentation by the Defendant and damages to the Plaintiff was not met. The Plaintiff averred that the Defendant and Plaintiff are trading in the common field of activity and the Defendant is using the same trade mark ‘Covishield’, which was first used by the Plaintiff.[17]
18. The Delhi High Court, in a suit where the Plaintiff has claimed relief of permanent injunction restraining the Defendant from broadcasting/communicating to the public, the literary and/or musical works in which the Plaintiff has a copyright, on the grounds that the broadcast of music by the Defendant, in three new cities, without obtaining permission of the Plaintiff, amounts to infringement of the public performance rights of the Plaintiff, has held that in case the Defendant wishes to perform the sound recordings in public, i.e. play them, a license from PPL is essential; (ii) in case the musical works are to be communicated or performed in the public, independently, through an artist, the licence of IPRS is essential; (iii) in case the Defendant wishes to hold an event involving performances or communication of works of both kinds to the public, the licence or authorisation of both, PPL and IPRS is essential; and has also granted permanent injunction restraining the Defendant from acting contrary to the aforesaid directions.[18]
C. Notable mentions:
1. Vide Application Number 737, the Borderless World Foundation, has sought registration for Doda Gucchi Mushroom as a GI.[19]
2. Vide Application Number 734, the Kaamayam Thiratchai Vivasayigal Sangam, has sought registration for Cumbum Panneer Thratchai as a GI (for grapes).[20]
.
For any questions, please write to the author, Ms. Saumya Kapoor, Senior Associate, at saumya.kapoor@iprattorneys.com
[1] Wisig Networks Pvt Ltd v. Controller Of Patents And Designs [OA/11/2020/PT/CHN], accessible at https://ipab.gov.in/ipab_orders/chennai/OA-11-2020-PT-CHN.pdf [2] Asthristis Relied Plus Ltd v. Controller Of Patents And Designs [OA/16/2016/PT/KOL], accessible at https://ipab.gov.in/ipab_orders/kolkata/OA-16-2016-PT-KOL.pdf [3] Dotcom Retail Ltd. v. The Registrar of Trademarks [ORA/42/2019/TM/CHN], accessible at https://ipab.gov.in/ipab_orders/chennai/ORA-42-2019-TM-CHN.pdf [4]Aktiebolaget Volvo & Ors vs Vaishali Travels & Anr [CS(COMM)6/2021], accessible at https://indiankanoon.org/doc/196268262/ [5]Gs1 India vs Global Barcodes Sl & Ors [CS(COMM) 147/2020], accessible at https://indiankanoon.org/doc/79195393/ [6]V Guard Industries Ltd vs Sukan Raj Jain & Anr [CS(COMM) 25/2021], accessible at https://indiankanoon.org/doc/4031047/ [7] Dassault Systemes Solidworks vs Spartan Engineering Industries [CS(COMM) 34/2021], accessible at https://indiankanoon.org/doc/21554764/ [8]V R Industries Private Limited vs Mohan Meakin Ltd. & Anr. [CS(COMM) No.485/2018], accessible at https://indiankanoon.org/doc/25649602/ [9]Mr. John Hart Jr & Anr. vs Mr. Mukul Deora [CS(COMM) 38/2021], accessible at https://indiankanoon.org/doc/155648023/ [10] Glaxo Group Limited vs Zuche Pharmaceuticals Private [CS(COMM) 37/2021], accessible at https://indiankanoon.org/doc/146220629/ [11] Zenith Dance Institute Pvt. Ltd vs Zenith Dancing And Music [CS(COMM) 36/2021], accessible at https://indiankanoon.org/doc/157906646/ [12] Blue Heaven Cosmetics Pvt. Ltd. v. BHCosmetics LLC [CS(COMM) 11/2021], accessible at https://indiankanoon.org/doc/3376951/ [13] Roland Corporation vs Mr. Sandeep Jain [CS(COMM) 565/2018 & CC (COMM) NO.6/2018], accessible at https://indiankanoon.org/doc/47273648/ [14]Dr.Reddys Laboratories Limited vs Ridgecure Pharma [CS(COMM) 5/2021], accessible at https://indiankanoon.org/doc/54696066/ [15]Burberry Limited vs Dinesh [CS (COMM) 255/2019], accessible at https://indiankanoon.org/doc/181167697/ [16]Levi Strauss & Co vs Dinesh [CS (Comm.) 254/19], accessible at https://indiankanoon.org/doc/24054112/ [17] Cutis Biotech Vs. Serum Institute of India Pvt. Ltd. [Commercial Suit No.1/2021 (CNR No.: MHPU010001072021)], accessible at https://drive.google.com/viewerng/viewer?url=https://www.livelaw.in/pdf_upload/serum-institute-cutis-biotech-trademark-suitjan30-388404.pdf [18] Indian Performing Right Society v. Entertainment Network (India) Ltd. [CS(OS) 666/2006], accessible at https://indiankanoon.org/doc/164962814/ [19] Accessible at http://ipindiaservices.gov.in/GIRPublic/Application/Details/737 [20] Accessible at http://ipindiaservices.gov.in/GIRPublic/Application/Details/734
