• Saumya Kapoor

Monthly Round Up: November 2020

A. Notable Developments:

1. Draft of the proposed “The High Court of Delhi Rules Governing Patent Suits, 2020” open for comments/suggestions.

The Delhi High Court vide the power conferred to it by Section 158 (Power of High Courts to make rules) of the Patents Act, 1970, has published a draft of the proposed “The High Court of Delhi Rules Governing Patent Suits, 2020[1] for comments/suggestions from the members of the Bar. Any comments/suggestions which are to be made need to be submitted to the office of the Registrar General of the High Court by e-mail at jrrules.dhc@gov.in, within 4 weeks.

2. Indian design applications have been added to the WIPO Global Design Database[2]

The Global Design Database now includes the national collection of India with over 59,900 design models. This brings the number of national/regional offices whose data is available in the Global Design Database to 31.

3. Extension of hearing of matters till January 16, 2021[3]

Vide an order dated November 24, 2020, the Delhi High Court, in light of the ongoing pandemic, has extended the hearing of matters listed before the Court from December 1, 2020 to January 16, 2021 to February and March 2021.

4. A document titled “Like-Minded IP Teachers’ Working Group on Intellectual Property and Public Interest [Copyright Amendment 2020-21][4] has been prepared by a group of like-minded IP teachers and provides a list of amendments which are essential to make the Copyright Act, 1957 capable of furthering creativity in the digital context and addressing some of the access related challenges faced by the society, particularly in the context of a pandemic like Covid19. Endorsement to the amendments suggested in the document need to be filled vide a form by December 10, 2020. Some of the proposed changes are:

· Broadening of the fair dealing exception;

· Expanding the scope of educational use exceptions to specifically include sharing of copyrighted materials in the online teaching context;

· Amendment to bring clarity on interpretation of the acts;

· Amending the definition of the terms “broadcast”, “communication to the public” and “computer programme”;

· Broadening the exceptions regarding libraries, archives, etc.;

· Broadening the scope of provisions regarding access for people with disabilities;

· Specific exception for text and data mining; and

· Excluding copyright protection over ‘Government works’.

5. An informal meeting of the WTO’s TRIPS Council in Geneva had Canada, Australia, Japan, Norway, United Kingdom, United States and European Union opposing the proposal submitted by India and South Africa to temporarily waive the IP rules for the Covid-19 diagnostics, therapeutics and vaccines. The proposal, however, received widespread support from developing nations, like Pakistan, Kenya, Mozambique and Eswatini, the WHO and several NGOs. China also welcomed the proposal but sought more time to assess legal and economic aspects, particularly on efforts by its own pharma companies for development of Covid-19 vaccines.[5] India and South Africa 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.

6. The Screenwriters Association of India, vide an application dated November 04, 2020, has applied through the Registrar of Copyrights for registration as a Copyright Society under Section 33 of the Act, in literary and dramatic works such as the story, script, screenplay, dialogues or any other literary works (excluding lyrics). Any objections/comments regarding this application are to be submitted within 30 days of the publication of this Notice on the website of copyright Office.[6]

7. The Copyright Office has introduced a “Non-Tax Receipt Portal” payment gateway for making online payments in its e-filing portal w.e.f. November 23, 2020.[7]

B. Notable Cases:

1. Owing to the fact that the Defendants were not marketing the products within the jurisdiction of the Court, inadmissible evidence had been produced by the Plaintiff to prove prior use of its mark and that the Defendants had been in the market since 1998, the Madras High Court held that that the Plaintiff is not entitled for any relief either for permanent injunction restraining the defendants from infringing the trade mark or for permanent injunction restraining the Defendants from passing off the products.[8]

2. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from using the mark “apj”, which was being used on its website, on the basis of similarity with the Plaintiff’s marks “APEEJAY/APJ” and especially owing to the fact that Defendant is not a Parents Teachers' Association recognised by the Plaintiff’s school.[9]

3. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from using the mark “TAZA WATER PLUS” or any other identical/deceptively similar trade mark, on the basis of similarity with the Plaintiff’s TATA and TATA-formative marks, especially the mark “TATA WATER PLUS”. The Plaintiff averred that the Defendant is using its mark to sell mineral and aerated water and that the Plaintiff and Defendant is in the same trade channel. Further, there was slavish imitation of the trade dress of the Plaintiff. Moreover, the balance of convenience also appears to lie in favour of the Plaintiff as the Defendant has entered the business recently.[10]

4. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from using the marks “AFZAL BIDI No. 90” and “AFZAL TAMBAKU No. 90.” or any other identical/deceptively similar trade marks, on the basis of similarity with the Plaintiff’s AFZAL and AFZAL-formative marks. The Plaintiff averred that its mark has been in use for tobacco products since 1977 and the earliest registration for one of the AFZAL-formative marks dates back to the year 1985. However, the Defendant is using its mark for by selling Bidis and Khaini. Thus, the Court held that the balance of convenience lies in favour of the Plaintiff.[11]

5. The Bombay High Court held that pre-grant opposition filed by the Petitioner after the decision of the Controller has been given and has been appealed before the Appellate Board is not maintainable in law. The Court held that pre-grant opposition is to be filed before the Controller who decides the patent application and the object of the pre-grant application is to assist the Controller. Further, the Court also reproved the rising tendency of filing of Benami oppositions to prevent the competitor from patenting its invention and thus, preventing misuse of abuse of power under section 25(1) of the Patents Act. Thus, the Court held that the Controller rightly refused to entertain the Petitioner’s pre-grant opposition.[12]

6. The Delhi High Court restrained the Defendants who were running rogue websites under domain names which were similar to the Plaintiff’s renowned “PAISABAZAAR” or “POLICYBAZAAR” marks and ordered the concerned domain name registrars to block/suspend the websites of the Defendants which are registered with them. The Court held that the balance of convenience also appears to be in favour of the Plaintiff and since the Defendants appear to be running rogue websites, they could cause irreparable damage, not only to the Plaintiff but also to the public at large.[13]

7. The Delhi High Court, in a case regarding an injunction sought by the Plaintiff against the Defendant from using the Plaintiff’s registered design in relation to a soap bar, against the use of their tagline, and also regarding the trade dress/packaging and the colour of the soap bar manufactured and/or sold by the Defendant, refused to grant the interim injunction. The Court observed that the cumulative effect of the packaging adopted by the Defendant seeks to distinguish its product from that of the Plaintiff’s. Further, the Court also observed that the shape and configuration is not apparent to the consumer until the packaging is removed. Further, the Court observed that the Defendant’s product could not be confused with that of the Plaintiff’s and it doesn’t appear that there was any intention to misrepresent.[14]

8. Ad-interim Injunction granted by the Delhi High Court restraining the Defendant from posting, publishing, sharing any content which is defamatory, derogatory or deprecatory in nature to the Plaintiff. Further, the Court ordered the Defendant to take down certain Twitter posts within 48 hours of the order. The Plaintiff had sought permanent injunction restraining the defendant from defamation, infringement of trade mark, dilution and tarnishing of trade marks, disparagement, damages, unfair competition etc and has averred that the Plaintiff came across the Defendant's twitter posts referring to the registered trade marks of the plaintiff 'WHITE HAT JR' and issuing statements/posts amounting to defamation/disparagement/trade marks'infringements, dilution and tarnishment of its trade marks.[15]

9. Ad-interim Injunction granted by the Delhi High Court restraining the Defendant from using the mark “Whitehat Sr”, which was being used on his YouTube channel, on the basis of similarity with the Plaintiff’s word mark and device mark “Whitehat Jr”. Further, the Court ordered the Defendant to take down certain Twitter and Youtube posts and restrained them from hacking the Plaintiff’s system or downloading the Plaintiff’s curriculum for circulation to people.[16]

10. Ex-parte ad-interim Injunction granted by the Bombay High Court restraining the Defendant from from adopting/using the Applicant's patented process or from manufacturing Albendazole by use of the patented process or from adopting, using, selling, offering for sale, importing, exporting or dealing in Albendazole or any other process as may be substantially similar thereto amounting to infringement of Indian Patent No. 326628 of the Applicant.[17]

11. The Delhi High Court has restrained the Defendant from using the mark “UFO” or any other identical/deceptively similar trade mark, on the basis of similarity with the Plaintiff’s UFO marks. The Court held that the mala fide is apparent and the Defendant being aware of the Plaintiff's trade mark, had no reason/justification to adopt as part of the device mark. The Court also placed reliance on the well-known principle that delay is inconsequential in a case of infringement/passing off, especially where the adoption is in bad faith. Further, the Court held that the Plaintiff is manufacturing clothes/garments for children as well and the Defendant manufactures and sells garments for kids under the age of fourteen years and thus, it is not a case where the goods are different within the proposed class.[18]

12. The Madras High Court has restrained the Defendant from permanently using the mark “Aachi's Village Restaurant” or any other identical/deceptively similar trade marks, on the basis of similarity with the Plaintiff’s Aachi and Aachi-formative marks, which have been in use since 1995 at least. The Court held that in view of the registrations of the Plaintiff’s marks, the continuation of the Defendant of the restaurant using the mark 'Aachi' would cause confusion in the minds of the general public who would certainly get the impression that the restaurant of the Defendant is actually a branch or another undertaking of the Plaintiff.[19]

13. The Bombay High Court has restrained the Defendant from using the mark “DIA VITA” or any other identical/deceptively similar trade marks in relation to its medicinal and pharmaceutical preparations, on the basis of similarity with the Plaintiff’s mark “DIAVIT”.[20]

14. The Delhi High Court has restrained the Defendant from uploading Plaintiff’s copyrighted study material/lectures on the Defendant’s platform. Further, the Court directed Telegram to take down various infringing channels/accounts. The Court held that the balance of convenience also appears to be in favour of the Plaintiff given the fact that it has been in the business of coaching the students for the past 32 years.[21]

15. The Delhi High Court has restrained the Defendant from using the mark “FACEBAKE” or any other identical/deceptively similar trade marks, on the basis of similarity with the Plaintiff’s Facebook marks. The Court also restrained the Defendant from operating the website i.e., www.facebake.in.[22]

C. Notable mentions:

1. The West Godavari District Alankriti Lace Manufacturing Mahila Mutually Aided Cooperative Societies Federation, The Narsapur All India Crochet Lace Exporters Association and Andhra Pradesh Handicrafts Development Corporation have filed an application for registering Narsapur Crochet Lace as a GI.[23]

2. The Karnataka Biodiversity Board (KBB) has written to the central government recommending that GI tag be given to Gajani Kagga variety (Oryza sativa). The saline-tolerant variety is unique to coastal regions. “The rice is a little bigger, rich in protein, has high fibre content, is a rich source of energy and healthy for diabetics. It is a favoured food of locals,” Prof. V N Nayak, Department of Marine Biology, Karnataka University, Karwar said. Prakash Mesta, a KBB member said that “Of the total 3,000 acres in Gajani land, only 5% has Kagga paddy left. The uniqueness of the crop is that it does not need fertilisers and the crop survives even if it’s submerged in water for a week”.[24]

3. Authoor Vattara Vetrilai Viyabarigal Sangam has filed a formal application for registering Authoor betel leaf as a GI. The move has been facilitated by NABARD's Madurai Agribusiness Incubation Forum. The betel leaves of this region are known across India for their pungency and spiciness. As stated in the GI application, Authoor vetrilai has some special morphological and biochemical characters like unique flavour and aroma because of geographical features, traditional cultural practices, specific genotypes, special soil characters and peculiar climatic features of the area of production.[25]

4. IndiaMart, a B2B e-commerce platform, has taken its competitor JD Mart, another e-commerce, to Delhi High Court over copyright violations. IndiaMart has alleged that JustDial has copied the website compilations of the company.[26]

For any questions, please feel free to write to the author, Ms Saumya Kapoor, Senior Associate, at saumya.kapoor@iprattorneys.com.

[1] Accessible at http://delhihighcourt.nic.in/writereaddata/Upload/PublicNotices/PublicNotice_G3SK9Q0PX99.PDF [2] Accessible at https://www3.wipo.int/designdb/en/ [3] Accessible at http://delhihighcourt.nic.in/writereaddata/Upload/PublicNotices/PublicNotice_XZI53RKZTA2.PDF [4] Accessible at https://docs.google.com/document/d/1fYBArzpmHCGCYjStU55xNgSpMBpSrMhDvTYmn8Yq7gE/edit#heading=h.b3jocpzi0uyr [5] Accessible at https://www.deccanherald.com/national/china-pakistan-support-indias-call-for-patent-free-covid-19-vaccine-at-wto-us-eu-oppose-918399.html [6] Accessible at https://copyright.gov.in/Documents/PublicNotice46.pdf [7] Accessible at https://copyright.gov.in/Documents/PublicNotice44_1.pdf [8] Ashique Exports (P) Ltd. v. Suresh K.K., C.S.No. 643 of 2012, accessible at https://indiankanoon.org/doc/124029253/ [9] Apeejay Stya Knowledge Llp & Anr vs Naya Samaj Parents Association., CS(COMM) 459/2020, accessible at https://indiankanoon.org/doc/188076799/ [10] Tata Sons Private Limited & Ors vs Sarfaraz Khan, CS (COMM) 483/2020 & I.A. No. 9954/2020, accessible at https://indiankanoon.org/doc/137880530/ [11]Sopariwala Exports & Anr vs Mr.Haji Iqbal Ahmed Ansari, CS(COMM) 512/2020 & I.A.10732/2020, accessible at https://indiankanoon.org/doc/60880926/ [12] Dhaval Diyora vs Union of India And Ors, WRIT PETITION (L) NO.3718 OF 2020, accessible at https://indiankanoon.org/doc/41349461/ [13] Pb Fintech Pvt Ltd vs Policy Bazar Finance & Ors, CS (COMM) 471/2020 & I.A. No. 9795/2020, accessible at https://indiankanoon.org/doc/74681765/ [14] Rb Health (Us) Llc & Anr. vs Dabur India Limited, I.A. No. 6865/2020 in CS(COMM) 319/2020, accessible at https://indiankanoon.org/doc/64878627/ [15]Whitehat Education Technology ... vs Aniruddha Malpani, CS(COMM) 518/2020, accessible at https://indiankanoon.org/doc/52141040/ [16]Karan Bajaj & Anr vs Pradeep Poonia, CS(COMM) 515/2020 & I.A.10874/2020, accessible at https://indiankanoon.org/doc/4285786/ [17]Lasa Supergenerics Limited vs Shreegen Pharma Limited And 9 Ors, INTERIM APPLICATION (L) NO.4324 OF 2020 IN COMMERCIAL IP SUIT (L) NO.4316 OF 2020, accessible at https://indiankanoon.org/doc/78847824/ [18]Ufo Contemporary, Inc. vs Creative Kids Wear (India) Pvt., CS(COMM) 375/2020, IAs 8010/2020 & 9611/2020, accessible at https://indiankanoon.org/doc/188849175/ [19]Mr.A.D.Padmasingh Isaac vs Aachi'S Village Restaurant, C.S.No.132 of 2020, accessible at https://indiankanoon.org/doc/161200879/ [20]Franco-Indian Pharmaceuticals ... vs Faizan Javedbhai Bodla, INTERIM APPLICATION (L) NO.5435 OF 2020 IN COMMERCIAL IP SUIT (L) NO.5431 OF 2020 ALONGWITH LEAVE PETITION (L) NO.5436 OF 2020, accessible at https://indiankanoon.org/doc/146749923/ [21] M/S Allen Career Institute vs Telegram Fz-Llc & Ors, CS(COMM)No.505/2020, I.A.Nos.10626-27/2020, accessible at https://indiankanoon.org/doc/34187701/ [22]Facebook, Inc. v. Mr Noufel Malol, CS(COMM) 499/2020, accessible at https://www.livelaw.in/pdf_upload/pdf_upload-384741.pdf [23] Accessible at https://timesofindia.indiatimes.com/city/hyderabad/gi-tag-sought-for-narsapur-crochet-lace-products/articleshow/79270498.cms [24] Accessible at https://www.newindianexpress.com/states/karnataka/2020/nov/09/gajani-kagga-needs-to-be-saved-with-a-gi-tag-2221238.html [25] Accessible at https://www.newindianexpress.com/states/tamil-nadu/2020/nov/11/popular-from-the-times-of-marco-polo-tamil-nadus-authoor-betel-leaf-seeks-gi-tag-2222476.html [26] Accessible at https://www.businessinsider.in/business/news/indiamart-and-justdial-in-legal-battle-over-copyright-violations/articleshow/79275178.cms

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