SpicyIP Weekly Review (June 24- June 30)
SpicyIP
Highlights of the Week
What’s in a Missing Name? Some Questions Around the Covaxin Patent Application
Why was ICMR’s name missing from the Covaxin patent applications? Tejaswini takes note of the back to back reports by Jacob Koshy (The Hindu) on this question, and then follows up by adding more questions to this mysterious patent application – such as why it was withdrawn in certain other jurisdictions. Read on for more on this.
Karnataka High Court Forms a Sub-Committee to Draft IPD Rules
Karnataka High Court’s IPD to be formed! The Registrar (Judicial) and Prof Arul Scaria (NLSIU) have been appointed to draft the rules for a dedicated IP division at the KHC. Praharsh’s post has the details.
Parties Settle the Tips v. Wynk Copyright Dispute: Wynk, Wink, and a 12 Crore Nod!
After two landmark decisions on the non-applicability of statutory licensing provisions on internet streaming, Tips and Wynk have settled their copyright dispute. Aditya recounts the previous decisions passed by the BHC. Read on below for more.
Other Posts
India has earned the title of the ‘Pharmacy of the World’ with its decade-long production of generic medicines. However, this hasn’t translated to dominance in innovative and high-value drugs, leaving us reliant on foreign players. To address this, the government has introduced a comprehensive policy and scheme to boost innovation through both industry and academia. Check out Pranav’s analysis on this promising yet challenging initiative.
[Sponsored] AI Searches get 33% Better with the New PatSeer’s AI Search v2 Engine
We are pleased to bring to you this sponsored post by PatSeer on the launch of their AI search V2. Read on below for more details.
Emphasizing the lack of a robust mechanism to ensure access to literary work by persons with disability, Lakshita and Pragya highlight how the existing copyright framework comes in conflict with the rights enshrined under the Rights of Persons with Disabilities Act, 2016.
Some Thoughts on the Bombay High Court Order in Pidilite v. Astral Design Infringement Case
On the BHC order in the design dispute between Pidilite and Astral, Aarav discusses the test for comparing competing designs and mosaicing in design law. Read on below!
Bevacizumab and Trastuzumab Biosimilars Case Continues, With No End in Sight
Tejaswini writes on the Delhi High Court’s September 2023 order rejecting the application to dismiss the suit alleging extended passing off and questioning the approvals granted to Bevacizumab and Trastuzumab biosimilars.
Case Summaries
Seiwa Kasei Co. Ltd vs Registrar of Trade Marks on 14th June (Bombay High Court)
The petitioner sought to overturn the Registrar’s orders dated 25 November 2021 and 18 May 2022, which refused their trademark application for “PHYTOCUTICLE” under Section 9(1)(a) of the Trade Marks Act, 1999. The petitioner argued that the mark is distinctive and coined by the petitioner, who had already secured its registration in multiple countries. The Court found the Registrar’s orders to be cryptic and lacking proper consideration of the petitioner’s contentions. Notably, the review order was not communicated to the petitioner, violating Rule 111 of the Trademarks Rules, 2017. The Court set aside the impugned orders and remanded the matter for a de novo hearing, emphasizing that a different officer should handle the case to ensure impartiality.
SRMB Srijan Private Limited vs Uma Shankar Jaiswal on 25 June 2024 (Calcutta High Court)
The plaintiff sought relief against the defendant for infringing its registered trademark “X-RIBS” used on TMT bars. The plaintiff claimed that the defendant’s TMT bars bore a deceptively similar “X-RIBS” mark, leading to consumer confusion and loss of goodwill. Despite multiple notices, the defendant did not appear in Court, resulting in an undefended suit. The Court noted the plaintiff’s established use and registration of the “X-RIBS” mark since 2004 and highlighted the defendant’s repeated failure to respond adequately to cease-and-desist notices. The plaintiff demonstrated substantial promotional expenses and sales figures, reinforcing its claim to the mark’s distinctiveness. The Court concluded that the defendant’s actions constituted trademark infringement and passing off, causing damage to the plaintiff’s business. Consequently, the Court granted the plaintiff’s request for a permanent injunction against the defendant, preventing further use of the “X-RIBS” mark, and awarded costs to the plaintiff.
The petitioner, West Bengal Chemical Industries, claimed that their patented processes for creating a pharmaceutical composition known as Ferric Carboxymaltose were infringed upon by the respondents. The patents involved were IN370845 and the subsequent improvement patent IN434424, which claimed a process to produce Ferric Carboxymaltose with less toxicity and cost. Despite these assertions, the respondents argued that Ferric Carboxymaltose is a known product, and the patent claims lack novelty, as the processes described were already public knowledge, involving no inventive steps. They also contested the patent’s validity based on prior art and suggested that the patents did not meet the necessary criteria of novelty or inventive step required under the Patents Act, of 1970. Ultimately, the Court concluded that the petitioner did not establish a prima facie case for an interim injunction, pointing out the lack of novelty in the patents and dismissing the application. It pointed out that the patents in question did not cover new products but rather known compounds, undermining the petitioner’s claims of exclusive rights under Sections 48(a) and (b) of the Patents Act.
Novartis AG & Anr. vs Novarish Healthcare Private Limited on 13 June (Bombay High Court)
In this case, the plaintiffs, Novartis AG and its Indian subsidiary, accused Novarish Healthcare of using a deceptively similar trademark, “NOVARISH,” which closely mimicked their well-established “NOVARTIS” mark. Despite multiple cease and desist notices and attempts at communication, Novarish failed to respond adequately. The court found that the phonetic, structural, and visual similarities between the two marks could potentially confuse consumers, thereby infringing on Novartis’ trademark rights and diluting their brand. The evidence presented demonstrated Novartis’ long-standing use and registration of their trademark, alongside substantial investments in global operations and R&D, underscoring the strength of their claim. Consequently, the court granted an ad-interim injunction, prohibiting Novarish from using the disputed mark or any similar variations in their pharmaceutical business.
The plaintiff, who licenses literary works and adapts them into audio formats, acquired exclusive rights to “Yakshini” from Mr. Anand Usha Borkar in 2023 and published it as an audio series. The plaintiff had previously engaged with Defendant No.1, who negotiated but refused to sign a Non-Disclosure Agreement, instead providing a Release Form relieving liability for shared content. The plaintiff alleges that Defendant No.1’s “Yakshini” series on Hotstar OTT, is similar to their own and that Defendant No.1 misrepresented its connection to the plaintiff’s “Yakshini” mark, attempting to imply an affiliation. The plaintiff claims Defendant No.1 copied unique characters like Aghori and the Blue Sun from their series and assessed damages of at least Rs.2,00,01,000/-. They seek an interim injunction to prevent the release of Defendant No.1’s video series, announced in May 2024 and set to launch in June. However, the Court noted the plaintiff’s delayed response to the series announcement and the lack of evidence showing similarities between the adaptations highlights that the balance of convenience lies in favour of Defendant No.1.
Colgate Palmolive Company & Anr vs Nixi & Anr on 26 June, 2024 (Delhi High Court)
The plaintiffs filed a suit seeking permanent injunctions to prevent trademark and copyright infringement, passing off against defendants who, using domain names and email IDs mimicking the plaintiffs’ (such as http://www.colgatepalmoliveindia.in), impersonated the Colgate Group to defraud job seekers. The Court has already frozen and blocked the relevant bank accounts, emails, and domain names. Despite this, the defendants continued their fraudulent activities by registering another domain, http://www.colgatepalmolive.work, on June 12, 2023, and sending forged interview call letters, deceiving individuals into depositing money for fake job offers. The plaintiffs also alleged that GoDaddy.com LLC allowed the registration of domain names containing their trademarks without verification, enabling these scams. The plaintiffs argued that these fraudulent activities, over which they have no control, damage their brand value and lead victims to wrongly attribute blame to them. The court issued interim directions in favour of the plaintiffs, instructing GoDaddy.com LLC to provide details of the registrant/owner of the domain www.colgatepalmoliveindia.in.
Re: Shambhu Nath and Brothers and Ors. on 24 June, 2024 (Calcutta High Court)
The plaintiffs, Shambhu Nath Brother, a registered partnership firm, sought ad interim relief against defendant No. 1 for using the trademark “TOOFAN” for electrical fans, a mark the plaintiffs have used since 1987. Despite a decree in November 2022 restraining the defendants from using “TOOFAN” or “TOOFANE,” the defendants resumed selling fans under this trademark in April 2024. The plaintiffs filed multiple lawsuits, arguing that “TOOFANE” is deceptively similar to their registered mark “TOOFAN,” causing confusion and misrepresentation, and that the defendants knowingly adopted the mark. The plaintiffs emphasized the need for an interim order to prevent further irreparable harm. The Court found that the plaintiffs established a prima facie case and granted an ad interim injunction against the defendants.
Hatsun Agro Product Ltd vs Praveen Kumar on 14 June, 2024 (Madras High Court)
The plaintiff sought a permanent injunction against the defendant for infringing its well-known trademark “AROKYA” by using the deceptively similar “AROGYA DHAN.” The plaintiff claimed that the defendant’s mark caused confusion among consumers and diluted the plaintiff’s brand distinctiveness. Despite a cease and desist notice and an unsuccessful Pre-Institution Mediation attempt, the defendant did not appear in court. The Court found the plaintiff’s claims valid, decreeing the suit in favour of the plaintiff, ordering the defendant to cease using the infringing mark, surrender all products with the offending labels, and pay Rs. 3,00,000 in damages. The Court also closed all connected pending applications, affirming the plaintiff’s entitlement to protect its trademark and reputation from the defendant’s unauthorized and prejudicial use.
Other IP Developments
- As per FAST India’s report, Mahindra and Mahindra and Bosch are the top R&D spenders in automobile sector in India.
- New Telecom Act comes into effect, replacing Indian Telegraph Act of 1885 and the Indian Wireless Telegraph Act of 1933.
- Youtube issues notices to multiple journalists and youtubers against copyright infringement allegations from Ziiki Media Entertainment.
- Bombay High Court summons Patanjali Ayurveda’s director, asks to tender unconditional apology in a trademark infringement case.
International IP Developments
- Centre for Investigative Reporting filed a copyright infringement suit against OpenAI alleging unauthorized use of their material to train AI models.
- Multiple record labels file copyright infringement case against AI music companies- Suno and Udio.