SpicyIP Weekly Review (July 8-July 14)
SpicyIP
Here is our recap of last week’s top IP developments including summary of the posts on MoC’s decision to scrap 259 show cause notices against the Indian Patent Officers, copyright dispute between music labels and AI platforms, ongoing patent and trade secrets dispute between Asian Paints and Paladin Paints. Anything we are missing out on? Drop a comment below to let us know. This Weekly Review is co-authored with SpicyIP intern Malavika Nair. Malavika is a final year law student at the National university of Advanced Legal Studies, Kochi.
Highlights of the Week
Deadline for the 2024 Shamnad Basheer Essay Competition on Intellectual Property Law has now been extended! The new deadline is 28th July, 2024 (11:59 pm IST). For the applicants who have already shared their submissions, worry not! In case you want to, you can update your submissions and send in the revised version before the new deadline.
A Sigh of Relief for IPO Officers as Ministry of Commerce Scraps 259(!) Show Cause Notices
MoC’s decision to scrap 259 show-cause notices against the IPO officers might be a sigh of relief for some, but the ordeal raises some pressing questions on how the performance of the officers are assessed.
Other Posts
JN Mangesh v. Paladin Paints (read Asian Paints): Who owns the Patent?
A very interesting patent-centric legal battle seems to have been brewing between Asian Paints and Paladin Paints, including allegations of subversive corporate takeovers! Who actually owns the patent.. if anyone at all? Yogesh Byadwal looks into the IP issues here, including questions of patent ownership, patent oppositions, and trade secrets.
Suno & Udio AI in Copyright Tussles: Music Plagiarism or Excusable Overfitting?
Recently, many music labels sued AI platforms Suno AI and Udio AI for copyright infringement. Akanksha Badika takes a dive into how these platforms operate and discusses whether overfitting by the platforms can be mitigated by fair dealing exceptions.
Yakshini is here! Analysing the Pocket FM v. Novi Digital Judgement
To whom does Yakshini, a spiritual being, belong? Pocket FM or Hotstar? Tejaswini Kaushal writes about this interesting copyright dispute between Pocket FM and Hotstar concerning copyright infringement by the latter’s OTT series Yakshini.
“Main Ladega”-The Fight Between Protection of Intellectual Property and Expressive Content
Standing true to the title of the film “Main Ladega” (I’ll fight), the makers of the feature film filed an appeal before the DHC against an injunction order restraining them from using the National Boxing Championship’s logo. Sumedh Gadham writes on this dispute explaining whether the use would amount to trademark or copyright infringement.
Case Summaries
Universitat Ulm vs Assistant Controller Of Patents on 3 July, 2024 (Madras High Court)
The appeal was sought against the rejection of the patent application. Counsel for the appellant argues that the respondent ignored prior art, D6 and explanation provided for in form-3. The Respondent argued that the order finds the patent obvious based on D1-D5 and D7-D10, eliminating the need to remit the matter. The Court held that the impugned decision is cryptic, lacking discussion on prior arts, Form-3, and synergistic effects, despite the appellant’s detailed submissions. Thus, the matter was remanded for a fresh consideration to the Respondent.
Nokia Of America Corporation vs Assistant Controller Of Patents on 2 July, 2024 (Madras High Court)
The appeal was sought against the rejection of the appellant’s patent application. The appellant argues that the impugned order, under S. 2(1)(j) Patents Act, 1970, lacks a discussion on obviousness to a skilled person, ignores the Appellant’s Form-3 submission wherein, and lastly, fails to consider the invention’s patent status in other countries, where it has been patented. The Court held that the respondent, after merely extracting the prior art D1 & D2, came to the conclusion that there was a technical glitch and that the additional journey time could be calculated by a person skilled in this art. However, the respondent did not actually test the prior arts in light of the invention. Hence, the Court remanded the matter.
Kamal Kumar Hirawat vs Maruti Poly Films & Ors on 5 July 2024 (Calcutta High Court)
The petitioner, a manufacturer of adhesive tapes, has used the trademark “FIGHTER” since 1995. They oppose the respondents’ deceptively similar “FITTER” mark, claiming it confuses customers and infringes on their trademark rights. The petitioner argued that by conveniently replacing the two letters “GH” with “T”, they are duping the consumers into buying their products under the pretense of it being those of the Petitioners. The Court held that the petitioner is a prior user of the mark “FIGHTER” and the continued use of the term “FITTER” by the Respondent is a wrongful and illegal act. Thus, the Court restrained the Respondents from passing off their adhesive tapes under the impugned “FITTER” mark.
Zero Brand Zone Pvt. Ltd. vs The Controller Of Patents & Designs on 5 July, 2024 (Madras High Court)
The appellant sought a patent for their “eco-friendly lamp”. There was a pre-grant opposition filed against the application and the application was rejected after the hearing. The appellant filed an appeal against the order and argued that the invention used certain organic items, but the invention was the first to have a combined use of these ingredients and hence, the rejection under S. 3(p) of the Patents Act is not valid. The respondents claimed that the prior art D1 & D3 already contained the ingredients that the claimed invention utilizes. The Court held that the ingredients used would fall under the scope of the term “traditional knowledge” under S 3(p) and mere re-use in a different composition would not amount to a new invention. Additionally, the different composition did not result in a “technical advancement”. Additionally, since a routine observation of the claimed invention would show to a person skilled in this art, that this is not a new invention. Hence, the Court upheld the impugned order.
ITW GSE Aps & Anr. vs Dabico Airport Solutions Pvt Ltd & Ors. on 4 July, 2024 (Delhi High Court)
The plaintiffs sought an interim injunction against the defendant. The plaintiffs’ suppliers of Pre-Conditioned Air (“PCA”) units. The plaintiffs argued that since the year 2020, the defendants have won tenders and are selling PCA units, whose specifications match those of the plaintiffs. Counter to the defendant’s claim, the court held that the defendants were unable to establish how to mosaic different prior arts and that the invention carries an inventive step. Additionally, the plaintiffs have made out a prima facie case for interim injunctions and the grounds stated for irreparable harm and balance of convenience are in favour of the plaintiff. Hence, the interim injunction was granted to the plaintiff.
ITC Limited vs Elora Tobacco Company Limited & Ors. on 5 July 2024 (Madras High Court)
The plaintiff alleged that the defendant’s “Gold Impact” mark infringes its “Gold Flake” mark. After execution of the local commission, the plaintiff sought to amend the plaint and add the defendant’s other infringing marks- “Forever Gold” and “Gold Forever” cigarettes. The Court allowed the application to amend the plaint, noting that the defendants had neither appeared nor filed a written statement. Furthermore, the Court held that allowing the amendment will prevent multiple lawsuits in future.
F Hoffmann La Roche AG & Anr. V. Zydus Lifesciences Limited on July 9, 2024 (Delhi High Court)
The plaintiff filed the case seeking a quia timet interim relief against the sale and distribution of “Sigrima” a biosimilar version of the plaintiff’s “Perjeta”. The plaintiff alleged that the defendant launched its biosimilar drugs in the market without informing the Court or the plaintiff while the dispute is still pending before the High Court. The Court held that the defendant had a duty to disclose any information pertaining to the launch of the drug especially when the Court had explicitly inquired about the timeframe for regulatory approvals previously. Thus, under the principles of procedural fairness, especially in cases of quia timet injunctions, the Court granted an interim injunction to the plaintiff till the next date of hearing.
The plaintiff filed the case, alleging trademark and copyright infringement. The plaintiff claims that the defendant’s “Zaventis” mark is deceptively similar to their “Zuventus” mark and the impugned mark is being used for identical goods. The Court held that the plaintiff had established a prima facie case and granted it an ex parte ad interim injunction, restraining the defendant from using the “Zaventis” mark.
Aggrieved by an order rejecting the appellant’s patent application, the appellant filed an appeal before the Delhi High Court. The appellant submitted that the respondent passed an order without any reasoning and incorrectly concluded that the application does not constitute an invention under Section 2 (1) (j) of the Patents Act, 1970, for lack of technical advancement and non-patentability under Section 3 (d). The Court issued notice to both respondents to submit a reply within four weeks.
The plaintiff alleged that the defendants infringed their registered trademark ‘REBAHEAL’ by adopting the similar ‘REBAHEAL’ mark. It was submitted by the plaintiff that the word Rebaheal was chosen since a key component of the treatment was Rebamipide and the defendant’s use of the similar mark to sell the treatment for a different ailment would be dangerously misleading the customers. The Court was satisfied that a prima facie case was made for grant of interim relief.
The plaintiff is the registered proprietor of the trademark ‘JUPITER’ in relation to multispecialty hospitals and healthcare services. They inaugurated their first hospital under the name ‘JUPITER’ in 2007/2008 and have used the mark since. It is alleged by the plaintiff that the defendant has infringed upon their trademark by operating a hospital and websites related to the hospital with the word ‘JUPITER’ being the leading, essential, and most memorable feature of their name. The plaintiff also requested an ex-parte relief highlighting the potential delay in serving notice, and possibility of defendants destroying evidence of using the name ‘JUPITER’. The court was satisfied to grant an ex-parte ad-interim relief as sought.
The plaintiff alleged infringement of its “Quality Services and Solutions” trademark and “QSS” logo by its former employees and franchisee. The defendants argued that the plaintiff was aware about their use of the impugned mark and logo and thus is barred by acquiescence. It was also argued that the parties deal with different businesses and thus there is no likelihood of confusion. The Court clarified that use of the trademark by the defendants was initially “permissive” while the defendants were employed by the plaintiff and use of the impugned mark after the termination of association between the parties will not amount to acquiescence. On the basis of above reasoning, the Court granted an interim injunction to the plaintiff.
A.P. Møller Mærsk A/S & Anr vs Maersk Pharma Private Limited on 9 July, 2024 (Delhi High Court)
The plaintiff sought the protection of their “MAERSK” trademark against the defendant’s use of “MAERSK PHARMA PVT. LTD.” as their trade name. The plaintiff submitted that the defendant is using “Infallible Pharma Private Limited” as its trade name and is planning to use the impugned name from December 2024. The Court held that the plaintiff’s mark will be eroded and wrongly associated with that of the defendant as there exists no connection of any sort between the parties. It further held that considering that the defendant is dealing in pharmaceutical products, the Court has to deal with utmost care and caution and be watchful of the overall public good. Holding that the defendant has prima facie infringed the plaintiff’s mark, the Court granted the plaintiff an ex parte ad interim injunction.
Other IP Developments
- Bombay High Court ordered Patanjali Ayurved to pay Rs 50 lakh for violating an interim injunction.
- The Madras High Court instructed the Union Government to develop a policy governing the online selling of medications by e-pharmacies.
- Cricketer Yuvraj Singh petitions the Delhi High Court to appoint an arbitrator in his personality rights case.
- Razorpay obtains an interim injunction from the Delhi High Court against parties fraudulently misusing its trademark and brand to commit financial scams against the public.
- SISA, a Bengaluru-based startup, receives a patent for a system that can securely handle Aadhaar data.
- The Indian pharmaceutical industry urges the government to provide tax incentives for R&D investments, and to establish an effective intellectual property rights regime.
- Delhi High Court upholds the constitutional validity of the regulation for increased warning labels in pan masalas.
- Madras High Court stops the re-release of Kamal Haasan’s 1991 Tamil film “Gunaa” due to copyright infringement.
- Bharat Biotech files revised patent application for Covaxin, stresses that ICMR will not get any monetary benefits.
International IP Developments
- Cardi B is faces a copyright infringement lawsuit by producers Joshua Fraustro and Miguel Aguilar over her song “Enough (Miami)”.
- A WIPO study states that India has the annual growth rate of 56% in Generative AI (GenAI) patenting.
- Beastie Boys sue restaurant chain “Chili’s” for unauthorized use of their song “Sabotage”.
UK Court of Appeal increases the lump sum amount to be paid by Lenovo to Interdigital in their SEP dispute. Directs that Lenovo must pay 240 Million USD.