• Saumya Kapoor

Monthly Round UP-October, 2020

A. Notable Developments:

1. Annual Report 2018-2019[1]

An overall increase of 15% in the filing of applications for various IPRs as compared to the previous year, specifically an increase of about 5.9 % in patent applications filed, about 6.3 % in design applications filed, about 5.3 % in trademarks registered.

2. Request for waiver from certain provisions of the TRIPS Agreement[2]

In a joint communication by India and South Africa, the nations had requested the WTO for waiver from implementation, application and enforcement of Sections 1, 4, 5, and 7 of Part II of the TRIPS Agreement in relation to prevention, containment or treatment of COVID-19 for a certain period. The said proposal has been supported by WHO.

3. Launch of “KAPILA” - Kalam Program for IP Literacy and Awareness Education campaign[3]

The Union Education Minister Ramesh Pokhriyal ‘Nishank’ declared October 15th to 23rd as “Intellectual Property Literacy Week”, wherein various online awareness activities were organized. The Institution Innovation Council (IIC 2.0) annual report was also presented on the occasion and the website of IIC 3.0 was launched. The Institution Innovation Council was established by the Ministry of Education in 2018 and so far, IICs have been established in about 1700 higher educational institutions.

B. Notable Cases:

1. Anti Anti Suit Injunction passed by the Delhi HC restraining Xiaomi from enforcing Wuhan Court's Anti Suit Injunction order against Interdigital in an alleged infringement dispute [4]

2. Injunction granted by the Madras HC restraining the Defendant from promoting or using the mark “Tirumalaa Daairy” or any other similar mark basis the Plaintiff’s registered marks “Thirumala” and “Thirumala Milk” for identical/similar products.[5]

3. Delhi HC vacated an interim injunction and thereby permitting the use of the trade mark ‘DELIVER-E’ by the Respondent and held that the Plaintiff’s mark ‘DELHIVERY’ is connectible to the word ‘delivery’ and is a phonetically generic mark and thus, cannot be registered so as to seek benefit of statutory rights.[6]

4. Hyderabad City Civil Court ruled in favour of MagFast and against Pepsico and held that since the defendant is prior user and adopter of the trade mark “Mountain Dew”, the defendant cannot be held to have violated the trade mark rights of the plaintiff.[7]

5. Injunction granted by the Delhi HC restraining the Defendant from using the horse device mark, which was held to be similar to the Plaintiff Exxon’s Pegasus mark in the same field of business, i.e., manufacture and sale of lube oils.[8]

6. Injunction granted by the Delhi HC restraining the Defendant from manufacturing, marketing, distributing or selling beer under the mark “CRAFTY MONK” on the basis of deceptive similarity with the Plaintiff’s mark “OLD MONK” for rum and other alcoholic beverages.[9]

7. Interim Injunction granted by the Delhi HC restraining the Defendant from using the mark 'NEWS HOUR' or any other mark which is deceptively similar to the trade mark 'NEWS HOUR' of the Plaintiff.[10]

8. Injunction granted by the Bombay HC restraining the Defendant from using similar packaging as the Plaintiff’s packaging and ordered seizure of the infringing goods and held that the similarity in packaging is not mere coincidence. Plaintiff is the proprietor of the renowned products MONACO, KRACKJACK and HIDE & SEEK whereas the defendant was using nearly identical packaging and trade dress for its products CRACKO, KRACKER KING and PEEK-A-BOO.[11]

9. Ex-parte ad-interim Injunction granted by the Delhi HC restraining the Defendant from using the mark “OZOWAX” on the basis of similarity with the Plaintiff’s mark “OZOMAX” for identical products and also basis similarity in packaging.[12]

10. Ad-interim Injunction granted by the Delhi HC restraining the Defendant from using the mark “SIGGNATURE” for pan masala on the basis of similarity with the Plaintiff’s SIGNATURE-formative marks for alcoholic and non-alcoholic beverages since balance of convenience lied in favour of the Plaintiff.[13]

11. Ex-parte ad-interim Injunctions granted by the Delhi HC in favour of Abbott basis its marks “LIMENSEE” and “LIN-C” for chewable Vitamin C tablets against Defendants who were using deceptively similar marks for identical products.[14]

12. Owing to the fact that the services of the rival parties were dissimilar, use of the term “PLEX” was as a suffix instead of a stand-alone word and that the Defendant had a bigger reputation in India, the Bombay HC held that the Plaintiff had failed to make out a case of passing off against the use of the defendant’s mark ZEEPLEX on the basis of its mark “PLEX” and thus, refused to grant an ad-interim injunction.[15]

13. Ad-interim Injunction passed by the Delhi HC restraining the Defendant from violating the Plaintiff’s copyright in the six characters of the 'Rainforest Family' in any manner on their products till the next date of hearing basis the fact that the copyright granted in USA in respect of the six characters of the 'Rainforest Family' would also extend to India in terms of the Copyright Act.[16]

14. Ad-interim Injunction granted by the Delhi HC restraining the Defendant from using the mark “VINTAGE MOMENTS” for alcoholic beverages on the basis of similarity with the Plaintiff’s "MAGIC MOMENTS" marks for same products.[17]

15. Ex-parte ad-interim Injunction granted by the Delhi HC in favour of Eastman Auto and Power Ltd basis its ADDO-formative marks for batteries against the Defendant who was using marks incorporating the ADDO mark for identical products.[18]

16. Ex-parte ad-interim Injunction granted by the Delhi HC restraining the Defendants from using the mark “DREAM11” or any other similar mark and from taking down the infringing material. The Court also directed the domain name registrars to divulge Basic Subscriber Information of such infringing websites. The Plaintiff had alleged that the Defendants were infringing the Plaintiff’s marks and some of them were even copying the entire get up and lay out of the Plaintiff’s website, www.dream11.com, for promoting their lottery/lucky draw schemes.[19]

17. Ex-parte ad-interim Injunction granted by the Delhi HC restraining the Defendant from using the mark “GMR” for its News Channel on YouTube on the basis of similarity with the Plaintiff’s registered GMR marks since balance of convenience lied in favour of the Plaintiff and irreparable loss would be caused to the Plaintiff. The Defendant was not only using the same marks but also similar stylisation and colour combination. The Plaintiff’s mark was held to be well-known in early 2020 and the Plaintiff had also asserted that the Defendant is not just violating its trade mark rights but also the copyright in its artistic work.[20]

18. Ad-interim Injunction passed by the Delhi HC restraining the Defendant from licensing, manufacturing, exporting, marketing, offering for sale, selling, advertising or in any manner dealing with the mark “RATHI” or any other similar mark for the impugned goods related to goods of common metal. The Court also issued a contempt order against the Defendants who continued using the impugned mark despite Court’s order.[21]

19. The Telangana High Court upheld the order passed by the District Court restraining the release of movie ‘Jhund’ in a copyright infringement case. The District Court held that strict burden of proof cannot be based on the Plaintiff to prove that there is infringement of copyright; and standard of proof appears to be 'prima facie proof'. The Courts held that there is every likelihood of prima facie infringement and breach of copyright. The Courts also held that the teaser of the film 'Jhund' prima facie shows that there are distinct similarities in the plot, depiction and the life and story of the protagonist of the film as with the registered script of 'SLUM SOCCER' of the Plaintiff and if Defendants release, exhibit or distribute the film, the loss caused to the Plaintiff cannot be compensated in monetary terms. [22]

C. Other news:

1. The application filed by a third party for the trade mark “PS5”, which was opposed by Sony, has been withdrawn.

2. The IPAB allowed the Appellant’s amendment of the claims and set aside the order of the learned Controller that the invention lacks “inventive step”.[23]

Please direct your queries to the author Ms. Saumya Kapoor, Senior Associate, at Saumya.kapoor@iprattorneys.com.

[1] http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/IP_India_Annual_Report_2019_Eng.pdf [2] https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/IP/C/W669.pdf&Open=True [3] https://pib.gov.in/PressReleasePage.aspx?PRID=1664883 [4] Interdigital Technology Corporation Vs. Xiaomi Corporation Case no.: I.A. 8772/2020 in CS(COMM) 295/2020, accessible at https://techlawblog.s3.ap-south-1.amazonaws.com/bl4grrscltacfe50degm7dj9s28w?response-content-disposition=inline%3B%20filename%3D%22InterDigitalvXiaomi.Judg.09102020.pdf%22%3B%20filename%2A%3DUTF-8%27%27InterDigitalvXiaomi.Judg.09102020.pdf&response-content-type=application%2Fpdf&X-Amz-Algorithm=AWS4-HMAC-SHA256&X-Amz-Credential=AKIA6IOJBFQ6JW6VCR2J%2F20201029%2Fap-south-1%2Fs3%2Faws4_request&X-Amz-Date=20201029T074205Z&X-Amz-Expires=300&X-Amz-SignedHeaders=host&X-Amz-Signature=50f8f494e96f69097a4d235b24e7cd799683cd4ccab6ffe28cb7956309ccd7d2 [5] Tirumala Milk Products Private Limited v. Swaraj India Industries Limited [O.A.Nos.330 & 331 of 2020 in C.S (Comm.Div.).No.190 of 2020], available at https://images.assettype.com/barandbench/2020-10/9b6720bc-4eaf-4862-9ef6-df7fa8043fa4/Tirumala_Milk_Products_Private_Limited_v__Swaraj_India_Industries_Limited___Judgment.pdf [6] Delhivery Private Limited vs Treasure Vase Ventures Private, accessible at https://indiankanoon.org/doc/192445422/ [7] Syed Ghaziuddin vs Pepsico Inc: 2005 (30) PTC 448 IPAB], accessible at https://spicyip.com/wp-content/uploads/2020/10/Syed-Ghaziuddin-v.-PepsiCo.pdf [8] Exxon Mobil Corporation v. Xcel Automotives Pvt. Ltd. & Anr. CS(COMM) 600/2019 Order dt. 30.09.2020, accessible at https://indiankanoon.org/doc/192686927/ [9] Mohan Meakin Ltd. v. HG Brewers Pvt. Ltd. & Ors., Delhi High Court, order dated 29.9.2020 in CS(COMM) 403/2020. [10] Bennett Coleman & Co. Ltd. vs Arg Outlier Media Pvt Ltd & Ors., accessible at https://indiankanoon.org/doc/102071843/ [11] Parle Products Pvt. Ltd & Anr. v. Future Consumer Ltd. & Ors., Bombay High Court decision dt. 9.10.2020 in Commercial IP Suit (L) No. 4130 of 2020, accessible at https://drive.google.com/viewerng/viewer?url=https://www.livelaw.in/pdf_upload/pdf_upload-382748.pdf [12] BHARAT BHUSHAN GUPTA v. NITIN MITTAL, CS(COMM) 404/2020, accessible at https://indiankanoon.org/doc/32396075/ [13] United Spirits Limited v. Som Fragrances Pvt. Ltd. & Ors., Delhi High Court decision of 7.10.2020 in CS (COMM) 420/2020 [14] Abbott Healthcare Private Limited v. Apple Health Care [CS (COMM) No. 429/2020] & Abbott Healthcare Private Limited v. Inavars Biological Inc & Anr. [CS (COMM) No. 433/2020] [15] Plex, Inc v. Zee Entertainment Enterprises Ltd. , Comm. IP Suit (L) No. 3736/20 dt. 1/10/20, accessible at https://images.assettype.com/barandbench/2020-10/405cd73f-8061-468b-9017-448d9f5b8f32/Plex_v__Zee_01_10_2020.pdf [16] Mattel Inc. v. Present Enterprises & Ors., CS(COMM) 447/2020, accessible at https://indiankanoon.org/doc/113743670/ [17] Radico Khaitan Limited Vs. Vintage Distillers Limited, Delhi High Court, CS(COMM) 441/2020, Order dt. October 12, 2020, accessible at https://images.assettype.com/barandbench/2020-10/042a12c9-82ee-4db1-982b-a5579cb61fb2/Radico_Khaitan_vs_Vintage_Distillers.pdf [18] Eastman Auto and Power Ltd vs. Elliot Solar LLP CS(COMM) 432/20, DHC Order dt. 12.10.2020 [19] Sporta Technologies Pvt Ltd & Anr. v. Dream11 Prime & Ors., CS(COMM ) 448/2020, Order dated October 14, 2020, accessible at https://indiankanoon.org/doc/37356665/ [20] GMR Enterprises Pvt. Ltd vs. Gadham Ramesh CS(COMM) 436/20, DHC Order dt. 9.10.2020, accessible at https://indiankanoon.org/doc/192198875/ [21] Anil Rathi v. Shri Sharma Steeltech (India) Pvt. Ltd., accessible at https://indiankanoon.org/doc/195551743/ [22] Super Cassettes Industries v. Nandi Chinni Kumar, accessible at https://indiankanoon.org/doc/82857163/ [23] Prism Cement Ltd. The Controller of Patents & Designs, accessible at https://patentsrewind.files.wordpress.com/2020/10/oa-7-2016-pt-mum_sec-57-59-2.pdf

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