SpicyIP Weekly Review (August 21- August 27)
SpicyIP
Wondering what IP developments took place last week? Look no further as we present to you the SpicyIP Weekly Review, highlighting the discussions that took place on the blog along with other IP developments.
Highlights of the Week
Toothless National Policy on Rare Diseases – Part I
Among other things, the government introduced the National Policy on Rare Diseases, 2021 after the intervention by the Delhi High Court. However, as noted by Varsha Jhavar and Surbhi Nautiyal in part 1 of their 2 part post, the policy is far from being ideal and fails to even categorize diseases recognized by the WHO. They further explain how the effectiveness of the policy is further marred by a lack of coordination between the Centre and the States and the non-implementation of key action points by the government.
Toothless National Policy on Rare Diseases- Part II
Continuing the discussion on the National Policy on Rare Diseases, 2021 in Part 2, Varsha Jhavar and Surbhi Nautiyal explore the possible consequences of introducing legislation for the development of drugs for rare diseases, like the ones in the US and the EU along with other interesting suggestions.
Case Summaries
Fluke Corporation, 6920 Seaway vs Registrar Of Trademark on 16 August, 2023 (Delhi High Court)
The Delhi High Court sets aside the impugned order by the Registry for wrongly rejecting the TM application and not exploring whether the Appellant’s mark has acquired secondary meaning or not.
Hotel Bhagat Tarachand vs Empyral Lineage Private Limited on 17 August, 2023 (Bombay High Court)
Finding the mark “Bhagat Tarachand” as distinctive, popular and well known, the Bombay High Court compared the competing marks and passed an interim injunction in favor of the plaintiff. The defendant didn’t appear despite being served with the notice.
Universal City Studios v. Dot Movies.Baby on 9 August, 2023 (Delhi High Court)
Delhi High Court passed a Dynamic + injunction “to protect copyrighted works as soon as they are created….. as there is an imminent possibility of works being uploaded on rogue websites or their newer versions immediately upon the films/shows/series etc.”
Venus Worldwide Entertainment vs Popular Entertainment Network on 17 August, 2023 (Delhi High Court)
The Delhi High Court refused to grant an interim injunction to the plaintiff against the defendant’s use of the word “Khiladi” for suppression of material facts and lack of prima facie case. Inter alia, the court observed that the plaintiff tried to present as if it has registration over the word mark “Khiladi”, whereas most of the registrations in its favor were device marks instead.
Elyon Pharmaceuticals Pvt. Ltd. vs The Registrar Of Trademarks on 23 August, 2023 (Delhi High Court)
In an appeal against the order of the Respondent, the Delhi High Court has set aside the impugned order holding that the marks “Elmentin” and “Elemental” are not phonetically similar.
The Delhi High Court rejected a rectification petitioner seeking removal of the respondent’s mark “Harpic Drainxpert” from the Trademark Register. The petitioner argued that the impugned mark is similar to its “Xpert” marks, however, the court held that the competing marks are not confusingly similar. The court also clarified that the manner of use of the rival marks is irrelevant in the rectification petition as during the registration of the mark, the Registrar does not call for the manner of actual use of the mark. Furthermore, on the argument that “Xpert” is the dominant part of the competing marks, the court clarified that principle of “essential and dominant part” plays a role to mitigate the rigour of Section 17 in infringement actions and not Section 11.
Relying on the anti-dissection rule and after an overall comparison of the competing marks, the Delhi High Court rejected an application seeking an interim injunction. The competing marks here were a family of “D Mart” devices of the plaintiff with a dolphin and a family of “D Mart” devices and word mark.
Other IP Developments
- DPIIT notifies draft Patent (Amendment) Rules 2023
- While hearing an IP dispute over the similarity of Red coloured sole in shoes, the Delhi High Court refused to rely on the responses generated by Gen. AI ChatGPT.
- Madras High Court rejects appeal against the Single Judge Order in Phonepe v. Digipay Trademark dispute.
- Bombay High Court Refuses to stay the release of Dream Girl 2.
- Composer Uttam Singh alleges unauthorized use of his songs in Gadar 2.
International IP Developments
- Industry backlash may reshape EU compulsory pharma licensing reform, says GlobalData.
- Federal Judge rules AI-generated Art not eligible for copyright protection.