Monthly Round Up: December 2020

A. Notable Developments:

1. MoU signed between India and the USA for strengthening the IP systems[1]

India and USA have signed a Memorandum of Understanding to co-operate on intellectual property examination and protection for the next 10 years and to strengthen the IP systems in both countries. The MoU seeks to strengthen the IP systems of both countries, enabling further innovation and growth. The present MoU covers for the next 10 years, describing a range of cooperative activities pertaining to securing, using, and enforcing IP rights in the areas of patents, trademarks, copyrights, geographical indications, and industrial designs.

B. Notable Cases:

1. Philips has filed a suit for patent infringement before the Delhi High Court against Xiaomi for having used Philips’s Universal Mobile Telecommunication Service UMTS enhancement (HSPA, HSPA+) and LTE technologies and result in infringement of any of the suit patents. Philips has sought several reliefs from the Court such as restraining Xiaomi from manufacturing, assembling or selling its phones through any of the e-commerce platforms and retail chains in the subcontinent as well as preventing the import of Xiaomi's mobiles from entering the country for sale. The Court has directed Xiaomi to maintain a balance of Rs. 1,000 Crore (about USD 135 million) in their Indian bank account. They also directed the Defendant to file a Rejoinder within 2 weeks.[2]

2. In a matter where an application for rectification of the mark “N95” for goods in class 10 was filed and a miscellaneous petition was filed for Stay of operation of Registration of the Respondent for the impugned mark pending disposal for the main Rectification Application, the IPAB, owing to the global public health crisis and the dishonest adoption of the mark, stayed the operation of registration by the Respondent, until the rectification petition is decided. It held that it is evident that the Respondent is a squatter and has registered the generic term for blackmailing the bona fide users and to extract illegal gains.[3]

3. In a suit for declaration and permanent injunction to restrain the Appellant from copying, using or enabling others to use the Plaintiff’s registered design of container and lid, the Supreme Court held that the order of the Madhya Pradesh High Court that an application for cancellation of registration of design would lie to the Controller exclusively without the High Court having a parallel jurisdiction to entertain such matter is not sustainable.[4]

4. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from putting up the infringing content in relation to the Plaintiff’s mark 'SAP' and the copyright in the software SAP R/2 on its websites www.anooptech.net and www.anooptech.com or any other website(s). The Court also directed the Defendant to remove its listing/advertisements of the SAP courses within 36 hours of the receipt of the order, failing which, its websites and domain names would be taken down/deactivated/disabled.[5]

5. Ad-interim Injunction granted by the Bombay High Court restraining the Defendant from infringing the Applicant's registered copyright in the artistic work titled as "PREM DULHAN GREEN LABEL". Further, the Court restrained the Defendant from infringing the Applicant's registered mark "PREM DULHAN", by using its impugned mark "DABANG DULHAN". The Plaintiff is engaged in the business of manufacturing and marketing of Mehandi, Mehandi Powder, Mehandi Cone etc. and has adopted and used its mark since the year 1998. The Court held that the balance of convenience appears to be in favour of the Plaintiff and irreparable damage could be caused if the injunction is not granted. The Court also authorised a Court Receiver to seize any infringing products.[6]

6. Ad-interim Injunction granted by the Bombay High Court restraining the Defendant from selling and/or using in any manner the impugned pirated artwork of NATURAL AQUA bearing a colour scheme, get-up, layout, representation, style, trade dress and artwork or any other artwork which is identical with and/or is substantially/strikingly similar to the Plaintiff's original artistic label of BISLERI in relation to his packaged drinking water and/or any other like goods. The Court also authorised a Court Receiver to seize any infringing products. The Court observed that the artistic depiction on the Defendant's packaged drinking water bottle bearing the impugned mark is almost identical and/or is substantially similar to the original artistic work depicted on the Plaintiff's BISLERI packaged drinking water bottle. Moreover, the Defendant was a permitted user licensee who was duly permitted to use the Plaintiff's mark in relation to BISLERI artistic work and bottle design and after termination of the contract, the Defendant has copied the Plaintiff's trade dress, art work and bottle design. Thus, the Court held that the balance of convenience appears to be in favour of the Plaintiff and irreparable damage could be caused if the injunction is not granted.[7]

7. The Delhi High Court has restrained the Defendant from using the mark “ODDY” or any other identical/deceptively similar trade mark, on the basis of similarity with the Plaintiff’s ODDY mark. Plaintiff is the user of its mark since 1998 and has a valid copyright registration as well. The Court held that the mark used by Defendant is deceptively similar and the term "ODDY'' is not descriptive or generic and is a coined and adopted word. Thus, merely by adding TM or giving the description of the product, it would not change the core of the mark which continues to be "ODDY''.[8]

8. The Bombay High Court has passed an ad-interim order restraining the Defendant from using the mark “ARTEFAN” or any other identical/deceptively similar trade mark, on the basis of similarity with the Plaintiff’s ARTEFAN mark, which was adopted in 2004 at least for medicinal and pharmaceutical products.[9]

9. In an appeal filed against the order of the Assistant Controller of Patents & Designs refusing to grant a patent, the IPAB held that the order is not sustainable and directed the Controller to grant the patent on the basis of the claims on record, strictly within 2 weeks from the issuance of this order. It was held that none of the prior art documents cited in the impugned order make the invention ‘obvious’ to a person skilled in the art.[10]

10. A District Court in Delhi, in a case where a decree of permanent injunction was passed in favour of the Plaintiff whereby the Defendant was restrained from using the name 'Roop Heaven' and other similar names which is identical with or deceptively similar to the Plaintiff's mark 'Blue Heaven', did not grant relief of rendition of accounts, delivery up and damages since the Plaintiff neither opposed the application nor brought any material to show its entitlement for the relief of rendition of accounts, delivery up and damages.[11]

11. The Allahabad High Court has refused the Petitioner’s prayer for quashing the FIR filed against the Petitioner in respect of making fake detergent in the name of a detergent brand with registered trade mark. The Court held that the allegations in respect of the Petitioner, who is a shopkeeper, include cheating as well and are cognizable offences.[12]

12. Ex-parte ad-interim Injunction granted by the Delhi High Court restraining the Defendant from manufacturing or using “SITAGLIPTIN PHOSPHATE MONOHYDRATE” on the basis of Plaintiff’s patent for the salt commonly known as SITAGLIPTIN.[13]

13. The Bombay High Court has restrained the Defendant from using the mark “ANAPURNA GOLD” or any other identical/deceptively similar trade marks in relation to flour, flour preparations and any other like goods, on the basis of similarity with the Plaintiff’s ANNAPURNA marks, which have been in use since 1998 at least in respect of wheat flour.[14]

14. Ad-interim Injunction granted by the Bombay High Court restraining the Defendant from using any marks which are identical/similar to the marks “The Indian Association of Physiotherapist-IAP” and “Physiotherapy India” as a mark or service mark, trade name, trading style or domain name or email ID so as to pass off and/or enable others to pass off the Defendant’s services as and for the services of the Plaintiff or in some way connected with the Plaintiff.[15]

15. The Bombay High Court has restrained the Defendant from using the mark “ISKCON” or any other identical/deceptively similar trade marks in relation to its business of rendering services in relation to retail stores, multi-cuisine restaurants, party halls and similar hospitality services and goods such as cereal grains, grains, legumes, pulses, beans, masala etc, on the basis of similarity with the Plaintiff’s well-known mark “ISKCON”.[16]

16. The Delhi High Court has restrained the Defendant from permanently using the mark “PRINCE CHAAT BHANDAR” or any other identical/deceptively similar trade marks, on the basis of similarity with the Plaintiff’s PRINCE / PRINCE CHAAT CORNER marks, which have been in use since 1965 at least. The Court held that in view of the registrations, prior and extensive use of the Plaintiff’s marks as well as similarity of marks, there would be deception and confusion.[17]

17. A District Court in Delhi has restrained the Defendant from permanently using the mark and copyright "UNDER ARMOUR", "UA", "UA RECORD", and its logos and other registered trade marks of the Plaintiff on goods including apparels and accessories in any form and manner. The Court held that it is clear from the record including the evidence led by the Plaintiff that the impugned trade mark appears to be identical with and deceptively similar to the Plaintiff's trade mark.[18]

18. The Bombay High Court has passed an ad-interim order restraining the Defendant from using the mark “SERON” or any other identical/deceptively similar trade mark, on the basis of similarity with the Plaintiff’s SERO mark, both of which are used in respect of same type of goods, i.e., readymade garments and menswear.[19]

19. The Bombay High Court has passed an ad-interim order restraining the Defendant from using the mark “LAKSHMAN CHAKAR” or any other identical/deceptively similar trade mark, on the basis of similarity with the Plaintiff’s LAXMANREKHAA marks, which have been in use since 1988. The Plaintiff has averred that the impugned mark is used for similar purposes with packaging, bearing design layout, getup and colour combination identical and deceptively similar to the Plaintiff's label.[20]

20. A decree has been passed in favour of the Plaintiff by the Delhi High Court on the grounds that despite repeated summons, the Defendant has not entered appearance and also since the Plaintiff's investigator has purchased facemask from the Defendant, which infringe the Plaintiff's trade mark ‘TOMMY HILFIGER'.[21]

21. In a suit filed by the Plaintiff seeking enforcement of its performers' rights, the Delhi High Court noted that Section 2(qq) of the Copyright Act includes a Singer within its sweep and the performers' right means any visual or acoustic presentation made live by one or more performers. Every performance has to be live in the first instance whether it is before an audience or in a studio. Further, the Court held that the performers' right is a serious triable issue. The Plaintiff has averred that the Defendant released the cinematograph film 'Gunjan Saxena- The Kargil Girl' commercially utilizing three performances of the members of the Plaintiff society which were originally part of earlier cinematograph films. The Plaintiff on becoming aware of the infringement of its rights issued a legal notice to the Defendant claiming that the members had the copyright in respect of the performers' rights, Thus, since the tariff for the performers' rights is fixed, the Defendant is bound to deposit the said amount before this Court pending final decision.[22]

22. Ad-interim Injunction granted by the Delhi High Court restraining the Defendant from infringing the Plaintiff’s patent of the molecule VORTIOXETINE, which is an anti-depressant. The Plaintiff averred that the Defendant is manufacturing and exporting substantial quantities of generic version of VORTIOXETINE to Latin America and Canada. Further, as per Section 107 of the Patents Act, export of the products from India would amount to use of the product in India.[23]

23. The Delhi High Court has passed an ad-interim order restraining the Defendant from using the mark “AMPA” or any other identical/deceptively similar trade mark, on the basis of similarity with and prior use of the Plaintiff’s AMPA mark. Further, the Court has also restrained the use of the website www.ampacycles.com till the next date of hearing. The Plaintiff had claimed use since 2011 whereas the Defendant had claimed use since 2013.[24]

24. The Delhi High Court has passed an ad-interim order restraining the Defendant from using the mark “CROMA” or any other identical/deceptively similar trade mark, on the basis of identity and similarity with the Plaintiff’s CROMA mark and for passing off its goods as that of the Plaintiff. Further, the Court has also directed to suspend the website www.thecroma.in.[25]

25. The Delhi High Court has passed an ex-parte ad-interim order restraining the Defendant on the basis of the Plaintiff’s assertions that the Defendant is counterfeiting Plaintiff’s products under the same trade marks with slavishly identical trade dress, get up, packaging etc. Moreover, the Defendant is listing its products on www.indiamart.com claiming to be involved in the business of hair care products and displaying the imitations/counterfeit of the Plaintiff’s products bearing the trade mark 'BRASIL CACAU PROFESSIONAL' with the logo. Further, the Defendant admitted to the Plaintiff’s investigator that it is selling the products under the trade name of the Plaintiff with packaging which is deceptively similar to the Plaintiff’s packaging.[26]

26. In a landmark decision pertaining to ten applications, all of which are concerning the issuance of the licenses by the respective owners/assignees of the copyright in lieu of the royalties towards the broadcasting of the sound recordings, the IPAB has set out royalty rates for broadcasting sound recordings payable respectively for the sound recording and for the underlying literary and musical works. The royalty rates shall be published in the IPAB Website and Copyright Office and shall come into effect from 01.10.2020.[27]

C. Notable mentions:

1. Vide Application Number 123, the National Horticulture Board, has registered Goa Nashik Valley Wine as a GI.[28]

2. Vide Application Number 728, the Department of Science & Technology & Waste Management, Goa, has filed an application for registering Goa Mankur Mango (Malcorado or Mankurad) as a GI.[29]

3. Vide Application Number 690, the Odisha Rajya Talgur Samabaya Sangha Ltd (ORTSS), has filed an application for registering Gajapati Date Palm Jaggery as a GI.[30]

4. With support from commercial bank for Agriculture and Rural Development, Human Welfare Association, applications have been filed for registering Ramnagar brinjal, Adamchini rice and Banarasi Langda mango, all from Varanasi, UP, as GIs.[31]

5. Britannia has taken its competitor ITC, another FMCG company, to Delhi High Court for alleged infringement of its product packaging trade mark by using similar design for ITC’s new biscuits. Britannia has alleged that that ITC’s packaging for its newly launched biscuits is “deceptively similar” to Britannia’s biscuits’ packaging.[32]

6. In a reply to questions raised under the Right to Information (RTI) Act, the Indian Space Research Organsation (ISRO) said that it is the producer of all its rocket/satellite launch broadcast/telecast by Doordarshan (DD) and the latter does not have any copyright. The space agency also categorically said DD does not have rights over independent animations produced by ISRO. However, the material of ISRO launches available in public domain can be used by an individual(s) for non-commercial activities with the permission of the department.[33]

7. In Cutis Biotech vs Serum Institute of India, a passing off suit has been filed by the Plaintiff, who had filed an application for registration of "COVI SHIELD" mark on April 29, 2020, seeking to restrain the pharmaceutical company from using the mark "COVISHIELD" or "COVID-SHIELD" or any other identical or similar mark for its Covid vaccine.[34]

For any questions, please feel free to write to the author, Ms Saumya Kapoor, Senior Associate, at saumya.kapoor@iprattorneys.com.

[1]https://economictimes.indiatimes.com/news/economy/policy/india-us-ink-mou-to-cooperate-on-ip-examination-and-protection/articleshow/79543955.cms?utm_source=contentofinterest&utm_medium=text&utm_campaign=cppst [2] Koninklijke Philips N.V. Vs Xiaomi Inc & Ors. [CS(COMM) 502/2020, I.As. 10600/2020, 10713/2020, 10714/2020, 10716/2020, 10717/2020, 10718/2020, 10719/2020] accessible at https://indiankanoon.org/doc/163578098/ [3] Sassoon FAB International Pvt. Ltd. v. Sanjay Garg [ORA/171/2020/TM/DEL], accessible at https://www.ipab.gov.in/ipab_orders/delhi/MP-NO.143-2020-IN-ORA-171-2020-TM-DEL.pdf [4] S.D. Containers Indore v. Mold Tek Packaging [CIVIL APPEAL NO.3695 OF 2020], accessible at http://scourtapp.nic.in/supremecourt/2020/20380/20380_2020_35_1501_24947_Judgement_01-Dec-2020.pdf [5] Sap Se vs Anoop Tech & Ors [CS(COMM) 528/2020], accessible at https://indiankanoon.org/doc/12026185/ [6] Chutraram Nemaram Gehlot v. Rajaram Magharam Tak [INTERIM APPLICATION (L) NO.8410 OF 2020], accessible at https://indiankanoon.org/doc/21382981/ [7] Bisleri International Pvt. Ltd. v. Laxmikanta Nayak, accessible at https://indiankanoon.org/doc/60428134/ [8]Atul Paper Pvt. Ltd. v. Sri Balaji Sales Corporation [CS(COMM) 544/2020] accessible at https://indiankanoon.org/doc/65039429/ [9]Ajanta Pharma Ltd. v. Saphnix Life Science [IA NO. 7543 OF 2020], accessible at https://indiankanoon.org/doc/59362466/ [10] Hettich-Oni GmbH & Co. v. Controller of Patents and Design, Chennai [OA/1/2020/PT/CHN], https://www.ipab.gov.in/ipab_orders/chennai/OA-1-2020-PT-CHN.pdf [11] M/S Blue Heaven Cosmetics Pvt. Ltd. v. Khempal Singh Bhatia Trading [CS (Comm.) No. 1765 of 2019], accessible at https://indiankanoon.org/doc/5804015/ [12] Amit Kumar v. State of UP, accessible at https://indiankanoon.org/doc/74042484/ [13] Merck Sharp And Dohme Corp & Anr v. Century Pharmaceuticals Limited [CS(COMM) 552/2020] accessible at https://indiankanoon.org/doc/189063387/ [14]Hindustan Unilever Ltd v. Balaji Enterprises, accessible at https://indiankanoon.org/doc/165822174/ [15]Indian Association of Physiotherapists v. Indian Association of Physiotherapy & Ors accessible at https://indiankanoon.org/doc/127806756/ [16]International Society for Krishna Consciousness v. Vishna Foods Pvt. Ltd., INTERIM APPLICATION NO.8962 Of 2020, accessible at https://indiankanoon.org/doc/125907939/ [17]Yash Tekwani v. Dheeraj Kashyap [OMP (I) (Comm) No. 261/2020], accessible at https://indiankanoon.org/doc/156131229/ [18]Under Armour Inc. v. Avengers [CS (COMM) No.129/2019], accessible at https://indiankanoon.org/doc/112906704/ [19]Savla Corporation v. Aristo Apparels, accessible at https://images.assettype.com/barandbench/2020-12/613426ce-c44a-4521-a872-644806011525/Savla_Corp__vs__Aristo_Apparels.pdf [20]Midas Hygiene Industries Private Ltd v. Ram Dev Industries, accessible at https://indiankanoon.org/doc/103245597/ [21] Tommy Hilfiger Europe B.V vs M/S Taqua Textiles & Ors [CS (COMM) 160/2020], accessible at https://indiankanoon.org/doc/162770185/ [22] Indian Singers Rights Association v. Dharma Productions Pvt. Ltd. [CS(COMM) 562/2020], accessible at https://indiankanoon.org/doc/197809860/ [23]H Lundbeck A/S & Anr v. Hetero Drug Ltd. & Anr [CS(COMM) 565/2020], accessible at https://indiankanoon.org/doc/27866573/ [24]Jagmohan Ratra v. Ampa Cycles Pvt. Ltd. & Anr [CS(COMM) 569/2020], accessible at https://indiankanoon.org/doc/25237395/ [25]Infiniti Retail Ltd v. M/s The Croma [CS(COMM) 577/2020], accessible at https://indiankanoon.org/doc/37726908/ [26]Br Beauty Cosmeticos Comercio vs Tjds Products Pvt. Ltd.& Anr [CS(COMM) 559/2020], accessible at https://indiankanoon.org/doc/167440145/ [27] Music Broadcast Ltd. v. Tips Industries Ltd. & Ors., accessible at https://www.ipab.gov.in/ipab_orders/delhi/OP-(SEC-31D)-1-to-9-2020-CR-NZ-and-OP-(SEC-31D)-1-2020-CR-WZ.pdf [28] Accessible at http://ipindiaservices.gov.in/GIRPublic/Application/Details/123 [29] Accessible at http://ipindiaservices.gov.in/GIRPublic/Application/Details/728 [30] Accessible at http://ipindiaservices.gov.in/GIRPublic/Application/Details/690 [31] Accessible at https://krishijagran.com/agriculture-world/three-agri-products-from-varanasi-listed-to-get-gi-tag-soon/ [32] Accessible at https://economictimes.indiatimes.com/industry/cons-products/fmcg/britannia-drags-itc-to-court-alleging-trademak-infringement/articleshow/79781136.cms [33] https://www.siasat.com/dd-does-not-have-copyright-over-rocket-launch-broadcast-isro-2039764/ [34] Accessible at https://www.livelaw.in/news-updates/serum-institute-of-india-sii-covishield-covid-trademark-suit-vaccine-167166