SpicyIP Weekly Review (June 17-June 23)
SpicyIP
Here is our recap of last week’s top IP developments including summary of the post on the writs against the recent Patent Examiner recruitments, Delhi High Court decisions in the Under Armour case, the InterDigital-Xiaomi SEP litigation, and the Court’s ex-parte interim injunctions in the “Aap ki Adalat” case. Anything we are missing out on, feel free to drop a comment and let us know.
Highlights of the Week
Irregularities in the Patent Examiner Recruitment Exams? DHC to Decide on the Allegations
Image by freepikAfter the ordeal with NEET and UGC NET, the NTA seems to be in deeper waters as allegations of irregularities in the recently concluded Patent Examiners Recruitment process surface in a writ petition filed before the DHC. Praharsh discusses the order passed by the Court in this matter and recounts the previous controversies surrounding this cycle of the recruitment process.
Following the discussion on the DHC’s Forest Essentials case, Aditya revisits initial interest confusion and consumer sophistication, offering a counter to his arguments. Read on below to know more.
Other Posts
Parody Under Fire: The Misuse of Ex-Parte Injunctions in Trademark Law to Curb Satire?
Why so serious? Recently, the DHC issued an ex parte ad interim injunction against a satirist, prima facie finding them to infringe the “India TV” and “Aap ki Adalat” trademarks, as well as journalist Rajat Sharma’s personality rights. Critiquing the Court’s simplistic approach, Aarav explains how the use of deceptively similar marks is permitted by virtue of nominative fair use and points out the lack of the three-factor interim injunction assessment by the Court. Read on to know more.
Secrets and Standards: Balancing the Confidentiality of SEPs in InterDigital v. Oppo [PART I]
In a two part post, Tejaswini discusses two important decisions by the DHC in InterDigital v. Oppo showcasing a more balanced approach towards intricate issues of FRAND determination and Pro-tem securities. In Part I, she takes a look at the crucial clarification on whether there is a need for the defendant to share its third party agreements for FRAND determination.
Secrets and Standards: Analaysing Pro-tem Securities in InterDigital v. Oppo [PART II]
Continuing the discussion on the DHC’s 2 decisions in InterDigital v. Oppo, in Part II of her post Tejaswini inter alia discusses the DB’s intricate clarifications on pro tem security.
Reminder: 2024 Shamnad Basheer Essay Competition on Intellectual Property Law [Submit by July 14)
Attention law students! Hope you have started working on your entries for the 2024 Shamnad Basheer Essay Competition! We cannot wait to read your submissions. Keep in mind, the deadline is just over 3 weeks away! As always, the competition is open ended, with any topic related to IP being eligible. And there are prizes of INR 50k to be split between the winners! Do spread the word!
Case Summaries
The appellant has been selling tea under the mark ‘JUMBO’, ‘FIVE JUMBO’, and the image of 5 elephants, with all the marks registered since 1989 and in usage from 1985. The appellant came to learn that respondent no.2 has filed an application for registration of the mark ‘HAATHI’ and submitted an opposition to the same before the registrar which was dismissed. The Court however found that respondent no.2 could only produce documents to prove usage from 2002 of the ‘HAATHI’ mark. The held that since the two marks are deceptively similar and cater to the same class of consumers, the certificate of registration awarded to respondent no.2 is recalled and impugned order of the Asst. Manager of Trade Marks is quashed.
The appellant’s claimed invention of creating a method to dope potassium into ammonium perchlorate without any catalyst or reactant was rejected by an order of respondent no.1. The order held the “invention” to be frivolous [s. 3(a) of the Patents Act], lacking an inventive step [s. 2(1)(ja) of the Patents Act], lacking industrial capability [s. 2(1)(ac)], and only made use of a known process not resulting in a new product or use of a reactant [s. 3(d)]. The crux of the claimed invention was that ammonium perchlorate acquires potassium from the filtering material if the process of dissolving, filtering, heating, and further heating is followed. The Court found that although the finding may be novel, the reaction took place in-situ without any additional input from the inventors and did not use a reactant or result in a previously unknown product, and hence amounted to a discovery and not an invention. The Court also concluded the “invention” lacked an inventive step that involves a technical advancement from existing knowledge as any person skilled in the art would find the method used and result found to be common knowledge and obvious. However the court did not find the “invention” to lack industrial capability. Hence, rejection of the claimed invention was upheld on the basis of lack of inventive step [s. 2(1)(ja)] and use of a known process not resulting in a new product [s. 3(d)].
Tips Industries Ltd vs Wynk Ltd. And Anr on 18 June, 2024 (Bombay High Court)
The order records the settlement between the parties, including the parties’ consent to be bound by the judgement dated April 23, 2019 by the Commercial Court. The order also notes that the defendant has undertaken to pay INR 12,00,00,000 plus applicable taxes, as a full and final settlement of its use of the Plaintiff’s repertoire for the period between 1st September, 2016 to 10th September, 2020.
Atlas Copco Airpower v. Controller of Patents on 14 June, 2024 (Calcutta High Court)
The High Court condoned the delay of 330 days caused by the plaintiff’s unawareness about the abolition of IPAB and subsequent transfer of the appeal to the High Court. The Court observed that the plaintiff is a foreign company who was not aware of the above legal fact regarding the IPAB’s abolition and thus readmitted the appeal.
Other IP Developments
- Bharat Biotech omits listing ICMR as inventor in Covaxin patent filings.
- Biocon plans to test generic Wegovy, Ozempic in China.
- Punjab and Haryana High Court restrain Goa based entity from using NIFD and INIFD marks.
- Delhi High Court issues orders to block illegal streaming of ICC T20 World Cup by rogue websites.