SpicyIP Weekly Review (May 20-May 26)
SpicyIP
Here is our recap of last week’s top IP developments including summaries of posts on the WIPO’s latest Treaty on IP, Genetic Resources and Associated Traditional Knowledge, agreements between EShodhSindhu and different publishers, Calcutta High Court’s decision in the Vodafone v. Saregama case, Delhi High Court’s decision in the Jackie Shroff personality rights case. This and much more in last week’s SpicyIP Weekly Review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
Finally, WIPO Adopts a Treaty on IP, Genetic Resources and Associated TK! But at What Cost?
Finally, WIPO adopts a treaty on IP, genetic resources, and associated traditional knowledge! However, this instrument seemingly comes at the cost of a compromised disclosure of origin requirement. Read this post by Praharsh to understand what this could mean for the Indian patent regime.
A Decade after the DU Photocopy Case, Publishers get their Pound of Royalties from Indian Taxpayers
RTI responses show E-ShodhSindhu’s (The Govt’s digital consortium offering access to numerous resources and databases) has paid 140 crores in licensing fees to academic repositories in the last year. Have academic publishers received the win they were trying for, 10 years ago in the DU Photocopy case? Prashant Reddy looks into this question in this post!
Sweet Sound of Victory: Looking at the Calcutta HC’s Decisive Decision on Rights of Authors
In a landmark decision, the Calcutta High Court, in a clear and lucid order, held that authors rights are inalienable, and authors are entitled to receive royalties for (interalia) the commercial use of sound recordings. Click to take a look atSurabhi’s post on the IPRS v Vodafone order from a few days ago.
Other Posts
Right on the heels of Praharsh’s post on the disclosure requirement, we are pleased to bring our readers a guest post by Mr. Praveen Raj R S on the implications of the new WIPO Treaty on databases like the TKDL, with an emphasis on the need to have a non-IP framework to protect TK. See below for the link!
In an interesting turn of events, the DHC recently granted partial interim relief to Jackie Shroff for his allegations of infringement of his personality rights and TM. While the court recognized that his personality rights deserve to be protected against unauthorized use of his likeness, it refused to restrain Youtuber Mahesh Keshwala for his tribute video to Jackie Shroff. Taking a look at this development, Aditya Bhargava compares the approach of the Court vis-a-vis personality rights and the right to livelihood with the one adopted in the Anil Kapoor case.
Case Summaries
Leonhard Kurz Stiftung And Co. Kg vs Controller Of Patents on 15 May, 2024 (Delhi High Court)
An appeal was filed under Section 117A of Patents Act, 1970 against the order of the Controller refusing the appellant's patent application for ‘decorated injection-moulded article’. The Court upheld appellant’s contention that the impugned order erroneously concluded that the amendments to the application are not in line with originally filed claims. Thus, the Court has set aside the impugned order and restored appellant’s application for fresh consideration.
The plaintiff company is engaged in the business of water proofing products and use the trademarks LW and LW+ since 1990 and 2009 respectively, under the Dr. Fixit product range. The plaintiff is also the owner of artistic work in the LW logo. The plaintiff claimed that the defendant engaged in manufacturing of products bearing the LW mark, LW logo and substantially reproduced and colourably imitated trade dress for their product ‘Hydrobuild LW’ or ‘Hydrobuild LW power’. The defendant on the other hand, argued that the use of “LW” is in a descriptive sense and not as a trademark. The Court observed that the defendant already had registration over Hydrobuild and later in 2014, got the marks with “LW” registered, depicting its mala fide intent and clearly infringing plaintiff’s trademarks. The defendant has been restrained from using marks bearing LW or LW+ till final disposal of suit.
Parijat Industries India Pvt. Ltd. v. Deputy Controller of Patent and Designs and Another on 15 May, 2024 (Delhi High Court)
This is an appeal against order of the Deputy Controller allowing a patent opposition and revoking appellant’s patent titled ‘a synergistic miticidal composition’ and removing it from the register. The appellant agues that while doing so, the respondent failed to consider the former's argument and erroneously rejected recommendations of the Opposition Board. The Court held that the respondent’s reasoning for revocation is not adequate. Thus, on the agreement of both parties, the Court has ordered for a de novo consideration of the opposition.
Jamboree Resorts India Llp & Anr vs Mehul Sharma & Ors on 16 May, 2024 (Delhi High Court)
The plaintiff has approached the Court for protection of trademark “Jamboree” and allied marks. The plaintiff runs a hotel and hospitality business and had entered into a revenue-sharing agreement with the defendant wherein the defendant would take possession and manage the ‘Jamboree Creek Yoga Resort, Goa’ and run it by the name ‘Signum Jamboree Creek Resort’. Later the plaintiff found out that the defendant company is not registered under Companies Act, thus the agreement was rendered non-est and void ab initio. In the present dispute, the plaintiff seeks passwords and credentials for third-party online booking websites where the resort, under the plaintiff’s trademark is listed. The Court has agreed that a prima facie case has been made in the favour of the plaintiff and passed an ex-parte ad-interim injunction restraining the use of mark ‘Signum Jamboree Creek Resort’ and directed the defendant to hand over all credentials.
M/S. Lotus Organic Care vs M/S. Aadhar Products Pvt. Ltd. on 16 May, 2024 (Rajasthan High Court)
The present writ petition was filed against the order of district court wherein the application under Section 124(1)(ii) of Trademarks Act, 1999 to stay the proceedings of the suit were rejected. The plaintiff-respondent had filed a trademark infringement and passing off suit of its registered trademarks. The defendant-petitioner filed an application for stay of proceedings on account that he wishes to file a rectification application against said registered trademarks. The Court allowed the writ petition on the grounds that defendant-petitioner, in written pleadings, has satisfied the court that the plea is prima facie tenable and held that the petitioner is allowed to file rectification petition as per law while infringement proceedings shall be stayed.
The Indian Hotels Company Limited vs Sagar Wadhwani And Ors on 16 May, 2024 (Delhi High Court)
The plaintiff, engaged in the hospitality industry, has filed the present suit seeking permanent injunction against use of their trademark ‘ginger’ by the defendants. The plaintiff argued that the trademark was registered, extensively and exclusively used by the Plaintiff and have acquired distinctiveness. The defendant’s use of mark ‘ginger tree’ for their resorts, social media handles and websites infringes upon statutory and common law rights of the plaintiff. The Court has observed that the marks are phonetically, visually and structurally, deceptively similar and creates a false nexus between the services of both the parties. The defendants, have thus been directed not to use the impugned marks till the next date of hearing and directed removal/blocking of all social media handles and domain names of the defendant.
Powerhouse Licensing Llc. And Another vs Anand Rai And Another on 24 April, 2024 (Bombay High Court)
The petitioner is a health club organization which runs gyms across the world under the mark ‘Powerhouse gym’. The trademark has been registered in India since 2005. Petitioner is also the owner of the artistic work that makes up their logo. In 2022, the petitioner was made aware that respondent has a registered trademark ‘powerhouse gym’, thus the present petition under Section 57 of Trade Marks Act, 1999 for removal of defendant’s mark from the Register has been filed by the petitioner. The Court ruled that defendant had adopted the impugned mark being aware of petitioner’s well-known and registered trademark and defendant’s mark is temporarily stayed.
Seagate Technologies Ltd. v. Daichii International on 21 May, 2024 (Delhi High Court)
In a bunch of connected matters, the Delhi High Court issued guidelines on the sale of refurbished hard disks. It was alleged by Seagate and Western Digital that the hard disks manufactured by them were refurbished and repackaged by the defendants and were sold as their products. The above plaintiffs argued that doing so would amount to infringement of their rights as the defendants are allegedly impairing and infringing their marks. The Court relying on the Kapil Wadhwa decision held that the impugned goods were acquired legally by the defendants and the plaintiff could not establish otherwise. The Court in order to balance between the rights of the trademark owner, the refurbisher, and public inter alia held that the refurbisher should give a full disclosure that the products have been changed by it and the product does not resemble the original product.
The suit was filed by the plaintiff alleging infringement of its “Forest Essentials-Baby” and “Forest Essential- Baby Essentials” by the defendant’s use of “Baby Forest” and other marks. The Court held that the plaintiff was not using “Baby Essentials” as a trademark, rather it was used as a description. Furthermore, the Court held that the plaintiff in its reply to the examination report has asserted that the terms “Forest” and “Essentials” have to be seen together and thus, applying the anti dissection rule, the Court held that the plaintiff cannot seek rights over the words individually. Relying on the above the Court refused to grant an interim injunction to the plaintiff.
Other IP Developments
- Delhi High Court passes an ex parte ad interim injunction against the alleged rogue websites’ unauthorized exhibition of “Undekhi” web series.
- BJP approaches Supreme Court against Calcutta High Court’s order restraining it from printing allegedly derogatory advertisements against Trinamool Congress.
- Makers of Malayalam film “Manjummel Boys” react to the Illayaraja Copyright infringement notice. Says that they have acquired relevant permissions from the music labels.
International IP Developments
- Micron technology to pay 445 million in damages to Netlist for infringing its patents rights.
- Scarlett Johansson sues OpenAI for replicating her voice without her authorization.