Monthly Round-up-March 2021

A. Notable Developments:

1. Copyright (Amendment) Rules, 2021

The Ministry of Commerce and Industry (Department for Promotion of Industry and Internal Trade), on March 30, 2021, has notified the Copyright (Amendment) Rules, 2021amending the Copyright Rules, 2013. These Rules are accessible at https://copyright.gov.in/Documents/Notification/Copyright-Rules_Amendment_2021.pdf.

2. End of Extension Period

The IPO, on March 24, 2021, has issued a public notice regarding cognizance for Extension of Limitation by Hon’ble Supreme Court of India[1]. The order of the Supreme Court, dated March 08, 2021, has been covered by us at https://www.candcip.com/single-post/india-covid-19-update-end-of-extension-period.

3. Vide a Public Notice dated March 19, 2021, the Copyright Office has introduced e-filing facility for registration or renewal of a Copyright Society and registration or renewal of a Performer’s Society.[2]

B. Notable Cases:

1. In an appeal filed against the order of the Assistant Controller of Patents & Designs refusing to grant a patent, the IPAB set aside the order of the Respondent on the ground that the Respondent’s contention that the invention is not novel cannot be accepted since the cited prior art is similar but not an identical document. The IPAB further directed the Appellant to submit an amended set of claims and the Respondent to grant the patent on the amended set of claims 1-5, strictly within 3 weeks from the submission of amended set of claims.[3]

2. In an appeal filed against the order of the Assistant Controller of Patents & Designs refusing to grant a patent, the IPAB set aside the order of the Respondent on the ground that the invention is novel and inventive as the complete specification mentions about the special configuration of interspaces between the separation discs and the preferred distance between the separation discs as well and the Respondent in the substantive examination should have taken these facts into account. The IPAB further directed the Appellant to submit an amended set of claims within 3 weeks of the order and the Respondent to grant the patent on the amended set of claims 1-9, strictly within 3 weeks from the submission of amended set of claims.[4]

3. The Madras High Court, in a suit filed by the Plaintiff seeking protection and infringement of its trade mark DIVYA DIAMEAL by virtue of the Defendant using the word DIAMEAL, held that since no effective progress has been made in the suit, which has been pending for the past 19 years and the fact that an order of interim injunction continues till this date, has dismissed the suit and held that the injunction granted to the Plaintiff would continue and the Plaintiff also has the liberty to institute a fresh suit.[5]

4. The Madras High Court, in a suit filed by the Plaintiff seeking protection from infringement of its registered mark INTEL, held that since no effective progress has been made in the suit, which has been pending since 2002, has dismissed the suit and held that the Plaintiff also has the liberty to institute a fresh suit if it gets information that there is a fresh infringement of its registered mark.[6]

5. The Calcutta High Court has passed an ad interim injunction in a case where the Plaintiff is the owner of the well-known trade mark AMUL and is essentially aggrieved by the Defendant for the unauthorized usage of its trade mark for goods in a different class of business i.e., candles. The Plaintiff averred that the Defendant is selling the candles at cake shops and confectioneries where the customers may be deceived into believing that the candles have something to do with the Plaintiff.[7]

6. The Calcutta High Court has passed an ad interim injunction restraining the Defendant from using the word "Shree Ganesh" in carrying on its business. The Plaintiff averred that the Defendant was using the word "Ganesh" to market the same products as that of the Plaintiff and that the Defendant had applied six times for registration of the word "Ganesh". The Registrar had disallowed three of such applications and the balance three had been rejected on the objections of the Plaintiff. The Plaintiff has produced documents to establish that the Plaintiff had been carrying on business since 1936 and has been marketing its products using the trade mark Ganesh since then. The Defendant has claimed use since 1989. However, in support of such a claim, the Defendant has relied upon a trade license of 1989. The trade license per se does not establish that, the Defendant had been marketing products under the name and style of "Ganesh". The Court held that In the facts of the present case, the Defendant cannot take shelter under Section 12 of the Act, which empowers the Registrar, in the case of honest concurrent use or on others special circumstances to permit the registration by more than one proprietor of the trade marks which are identical or similar. The Defendant has not established any special circumstances existing in its favour for allowing it to use "Shree Ganesh".[8]

7. The Bombay High Court granted an interim injunction restraining the Defendant from using any marks deceptively similar to the Plaintiff’s trade mark and its copyright in artistic works. The said judgement was covered by us at https://www.candcip.com/single-post/copyright-registration-is-not-mandatory-to-claim-relief-under-the-copyright-act

8. The Bombay High Court, in a petition filed under Article 226 of the Constitution of India, wherein the Petitioners have prayed for a writ of mandamus to Respondent no. 4 to revoke the suspension of clearance of its consignment i.e., bearings imported by Petitioner No.1 having "TR" mark / brand and for seeking release of its consignment, has held that “defnition of 'intellectual property law' also includes the Copyright Act, 1957, the Patent Act, 1970, the Designs Act, 2000 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 and therefore to state that the IPR Rules notified under the Customs Act, 1962 will have to be read independent of the provisions of section 53 of the Copyright Act, 1957 would not be the correct proposition.” Thus, the Court held that the assertion of the Respondent No. 6 that two independent remedies under different statutes namely section 53 of the Copyright Act, 1957 and IPR Rules framed under the Customs Act, 1962 being independent of each other cannot be construed harmoniously is a fallible submission. The Court finally held that since there has been no finality to the proceedings which are pending between the Petitioner and the Respondent No.6 in the Delhi High Court and Bombay High Court in respect of ownership of "TR" brand, the imported goods suspended from clearance will have to be released to the Petitioner subject to the Petitioner executing such bond with such surety or security and such conditions as may be specified in the bond in accordance with law.[9]

9. The Bombay High Court, in a peculiar trade mark and copyright infringement and passing of action case where the mark in question is only one i.e., CINEFONES and where the Defendant is using exactly the same mark, held that pending the hearing and final disposal of the Suit, the Respondent be restrained by an Order and temporary injunction of this Hon’ble Court from advertising or using the trade mark "CINEFONES" or any other deceptively similar mark in relation to goods included in class 9, so as to result in the infringement or so as to pass of and/or enable others to pass of their goods and business as and for the goods and business of the Plaintiff.[10]

10. The Bombay High Court has made a short order to address a question of both form and substance that seems to generally arise in applications and suits of this nature, viz., actions in trade mark infringement and passing off, whether with or without an accompanying cause of action in copyright infringement and passing off. The Court observed that typically, the Plaintiff casts a separate prayer for relief in infringement and a distinct prayer for relief in passing off. But both seek only one thing: an injunction against the Defendant from using the impugned mark, label or artistic work. The Court observed that the practice of segregating injunction prayers for infringement and passing off is also inconsistent with the other standard-form prayers. Thus, the Court stated that setting out two separate prayers, one for infringement and one for passing off is a singularly unwise practice and urged the Advocates to reconsider the manner in which they frame these prayers.[11]

11. The Delhi High Court has passed an order binding the Defendant to its agreement regarding the design of the cookies in a suit where the Plaintiff has claimed that the Defendant seeks to promote its product Parle 20-20 cookies by denigrating, defaming and disparaging the Plaintiff’s Britannia Good Day Butter Cookies/Good Day range of cookie.[12]

12. The Delhi High Court has passed an ad-interim order restraining the Defendants from posting, streamlining, reproducing, distributing, making available to the public and/or communicating to the public, the "Vivo IPL 2021" season of the Indian Premier League, conducted by the BCCI, or facilitating the same, on the infringing sixteen websites. The Court has also directed to suspend the domain name of one of the Defendants and has directed the Department of Telecommunications and Ministry of Electronics and Information Technology to block the access to the infringing websites. The Plaintiff asserts exclusive rights to broadcast the fourteenth season of Vivo IPL 2021, on television, internet and mobile applications, under agreement executed with the BCCI. These rights, it is asserted, include the right to use the Indian Premier League logos, Indian Premier League names and other marks associated with the IPL. The Plaintiff has submitted that infringement is apprehended based on previous infringements by the Defendants, though not actual, as yet. It is also asserted that any unauthorised broadcast of the Vivo IPL 2021 events would amount to an infringement of the Copyright Act.[13]

13. The Delhi High Court has passed an ad-interim order restraining the Defendant from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to any pharmaceutical and/or medicinal preparation under the impugned marks “TYXIM, TYXIM FORTE and TYXIM marks” and/or any other identical and/or deceptively similar mark to the Plaintiff's marks “TAXIM, TAXIM-O FORTE and TAXIM family of marks”. The Court has also restrained the Defendant from using the impugned packaging of 'TYXIM FORTE' or any other deceptively similar trade dress/carton as that of “TAXIM, TAXIM-O FORTE and TAXIM family of marks” of the Plaintiff.[14]

14. The Delhi High Court has passed an order injuncting the Defendant from using the impugned marks with the leeway to use the trade name/trade mark STUDIO MAN, albeit, without any stylization. The Plaintiff has been in business much longer than the Defendant and has been making commercial use of its device marks “STUDIOMASTER and STUDIOMASTER PROFESSIONAL” since 2003 at least. However, the application filed by the Defendant in 2019 was on "proposed to use" basis. Further, while there are several marks on the trade mark registry which bear the prefix or the suffix STUDIO, there is nothing placed on record by the Defendant to demonstrate that they are in the same trade channel i.e., in the business of manufacture and sale of sound recording equipment. Thus, there is a likelihood of confusion being caused in the mind of a consumer who has an imperfect recollection given the fact the stylized version of the impugned marks is deceptively similar to the Plaintiff's marks.[15]

15. The Delhi High Court in an application for ad interim injunction held that any claim of infringement, with respect to the rights of the Plaintiff would have to be determined in India, and not in the U.S. as infringement is an action relatable to statute, and not to common law. The Court held that prima facie, the proceedings in the Texas District Court appear to be oppressive and vexatious in nature and if they are allowed to proceed and any order passed thereon against the Plaintiff, irreparable injury is likely to result to the Plaintiff. Thus, the Court granted an interim injunction against continuance, by the Defendant, of the said proceedings before the Texas District Court. Further, the Defendant is restrained from selling, manufacturing, advertising, promoting or in any other manner using the impugned mark or any other mark identical/deceptively similar to the Plaintiff's trade mark "UNOCAL" or with respect to goods falling under Class 4 or any cognate or allied goods, which could have the effect of passing off the goods of the Defendant as those of the Plaintiff.[16]

16. The Delhi High Court has confirmed its order restraining the Defendant from using the mark AMPA and the logo or any other mark which is deceptively similar to the Plaintiff's mark AMPA which would amount to passing off its goods as that of the Plaintiff. The Court noted five elements of passing off, namely, (i) misrepresentations, (ii) to prospective customers, (iii) made by a trader, (iv) which are calculated to injure the business and goodwill of another trader and (v) which causes actual damage to the business or goodwill of the trader by whom the action is brought.[17]

17. The Delhi High Court has granted ex-parte ad interim injunction restraining the Defendant from manufacturing, using, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in either API or intermediates or any product, that infringes the claimed subject matter of the Plaintiff’s Patent No. 209816 or any of the claims thereof, including Sitagliptin or any of its pharmaceutically acceptable salts.[18]

18. The Delhi High Court has dismissed the application seeking urgent interlocutory injunction to restrain the release of a feature film named 'Haathi Mere Saathi' via any media platform such as cinemas, OTT, etc., alleging that the movie disparages Plaintiff's registered trade mark/brand 'DRL'. The Court held that the Plaintiff has failed to meet the three-pronged test for grant of injunction - The Plaintiff does not have a prima facie case in its favour, the balance of convenience is in favour of Defendants and not in favour of the Plaintiff and the Plaintiff has not been to able make out a case of irreparable loss that it would suffer if the movie is released. In view of the Court, the prima facie case is not made out in favour of the Plaintiff, to suggest that the average movie-goer would associate the name 'DRL Township' in the movie as a reference to the Plaintiff's brand or business.[19]

19. The Delhi District Court has passed a decree of permanent injunction restraining the Defendant from using, selling, exporting advertising or displaying the trade mark “ZONE” and deceptively similar trade mark "ZONO". The Plaintiff has adopted the trade mark “ZONE” both as a word mark and label mark in the year 2001 and is the registered proprietor of the trade mark “ZONE” in relation to the goods falling in class 29, 30, 31, 32 and 35 since the year 2005. The Defendant copied the trade mark “ZONE” of Plaintiff in relation to identical goods without any authorization from the Plaintiff and has made use of the identical and/or deceptively similar mark "ZONO" in relation to aerated water, aqua mineral water, fruit drinks, fruit juices, non­alcoholic drinks, soft drinks, beer, stout, ale, porter, syrups.[20]

20. The Delhi District Court has passed a decree of permanent injunction restraining the Defendant from advertising, marketing and offering, and whether on the internet or otherwise any goods/services using the impugned device mark of flying eagle incorporated in the Defendant's mark, the Plaintiff's mark or any other eagle device which is identical with and/ or deceptively similar to the Plaintiff's mark which amounts to infringement of the Plaintiff's trade mark and copyrights of the Plaintiff. The Court held that a comparative analysis of the marks of Defendant with the mark of Plaintiff clearly shows similarities in the marks of the parties as Defendant has also adopted and used the device mark i.e., flying eagle which is identical and similar in all particular material to device mark of the Plaintiff i.e., flying eagle. The only difference is that the Defendant is using the said device i.e., flying eagle within a circle having blue background and the eagle is printed in white colour. However, the same is immaterial, as the essential/prominent feature of the device mark is flying eagle, against which the Plaintiff has registration.[21]

21. The Delhi District Court has passed a decree of permanent injunction restraining the Defendant from using the trade mark “Larsen & Toubro, L & T, LT, LT, LK and GIC/GIC” and/or any other word/mark similar to the plaintiff's trade marks as part of its business, trade mark, trade name and/or domain name/email in relation to its business, goods, and/or services or in any manner whatsoever. Further, considering the fact that Defendant deliberately avoided to contest the matter, the Plaintiff is held entitled to appropriate damages which is assessed at INR 1,00,000/­ (approx. USD 1365).[22]

C. Notable mentions:

1. T-Series and The Indian Performing Right Society Limited (“IPRS”) in a joint press release announced that Super Cassettes Industries Limited, popularly known as “T-Series”, has joined the membership of IPRS.[23]

2. As per an article published in Mint, more than 250 members of European Parliament (MEPs) and national parliamentarians have urged the European Union (EU) to support a temporary patent waiver demanded by India and South Africa in the World Trade Organization (WTO) to exponentially increase availability of coronavirus vaccines across the world especially in poor countries.[24]

3. As per an article published in The Week, India ranked 40 among 53 global economies on the latest annual edition of the International Intellectual Property (IP) Index. "India ranked 40th in 2020, scoring 38.4 out of 100 on a set of 50 intellectual property-related indicators," the GIPC said in a media release. India's overall score has increased from 36.04 per cent (16.22 out of 45) in the seventh edition to 38.46 per cent (19.23 out of 50) in the eighth edition. India has shown real improvement over the past few years, the report said, adding that it has made a string of positive efforts which resulted in a score increase because of stronger enforcement efforts and precedent-setting court cases involving copyright and trade mark infringement.[25]

4. As per an official press release by Press Information Bureau, Government of India, The Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry and the Japan Patent Office (JPO), Ministry of Economy, Trade and Industry of Japan agreed to commence the function of Offices acting mutually as competent ISA / IPEA under the PCT, from July 1st, 2021.[26]

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

[1] https://ipindia.gov.in/writereaddata/Portal/News/721_1_24.03.2021_Public_Notice.pdf [2] https://copyright.gov.in/Documents/PublicNotice49.pdf [3] TVS Motor Company Limited vs. Controller Of Patents And Designs [OA/40/2014/PT/CHN], accessible at https://www.ipab.gov.in/ipab_orders/chennai/OA-40-2014-PT-CHN.pdf [4] Tony Mon George vs. Controller Of Patents And Designs [OA/15/2020/PT/KOL], accessible at https://www.ipab.gov.in/ipab_orders/kolkata/OA-15-2020-PT-KOL.pdf [5] Handy Instant Foods vs. Nature'S Care [C.S.No.602 of 2002], accessible at https://indiankanoon.org/doc/144145646/ [6] Intel Corporation vs. Mr. S. Ramanan [C.S.No.282 of 2002], accessible at https://indiankanoon.org/doc/184884532/ [7]Kaira District Cooperative Milk Producers Union Ltd And Anr. vs. Maa Tara Trading Co. And Ors. [CS/107/2020], accessible at https://indiankanoon.org/doc/148365026/ [8]Ganesh Grains Limited & Anr vs M/S. Shree Ganesh Besan Mill & Ors [CS 92 of 2020], accessible at https://indiankanoon.org/doc/191202694/ [9] NBU Bearings Pvt. Ltd. & Anr. vs Union Of India [WRIT PETITION (L) NO. 3371 OF 2021], accessible at https://indiankanoon.org/doc/118918721/ [10] Cinefones vs Cinefones Systems And Anr [Interim Application (L) No. 4632 Of 2021 In Commercial Ip Suit (L) No. 4550 Of 2021], accessible at https://indiankanoon.org/doc/2151067/ [11] Hindustan Unilever Limited vs Greypixy Udyog [COMMERCIAL IP SUIT(L) NO. 3761 OF 2021], accessible at https://indiankanoon.org/doc/174971758/ [12]Britannia Industries Ltd vs. Parle Biscuits Pvt. Ltd & Anr [CS(COMM) 129/2021], accessible at https://indiankanoon.org/doc/39677244/ [13]Star India Pvt. Ltd & Anr vs. Y1.Mylivecricket.Biz & Ors [CS(COMM) 151/2021], accessible at https://indiankanoon.org/doc/35895849/ [14]Alkem Laboratories Ltd vs. Tyscon Pharmaceuticals Pvt. Ltd. [CS(COMM) 141/2021], accessible at https://indiankanoon.org/doc/178628004/ [15] Audioplus vs Manoj Nagar [CS (COMM) No. 193/2020], accessible at https://indiankanoon.org/doc/182483158/ [16] Raaj Unocal Lubricants Ltd vs. Apple Energy Pvt Ltd [CS(COMM) NO.100/2021], accessible at https://indiankanoon.org/doc/76547339/ [17]Jagmohan Ratra vs Ampa Cycles Pvt. Ltd. & Anr. [CS (COMM) 569/2020], accessible at https://indiankanoon.org/doc/43702182/ [18] Merck Sharp And Dohme Corp & Anr vs Actis Generics Pvt Ltd [CS(COMM) 106/2021], accessible at https://indiankanoon.org/doc/5889160/ [19] Dr. Reddys Laboratories Limited vs. Eros International Media Limited [CS(COMM) 126/2021], accessible at https://indiankanoon.org/doc/27588525/ [20]M/S Solar Sales India vs. Mr. Shanky Mittal Judgement [CS (COMM.) 287/19], accessible at https://indiankanoon.org/doc/141811715/ [21]Retail Royality Company vs Lemon Security And Services [CS (Comm.) No.: 90/2020], accessible at https://indiankanoon.org/doc/189041247/ [22]Larsen & Toubro Limited vs Radheshyam Singh [CS (Comm) No. 564/19], accessible at https://indiankanoon.org/doc/34271078/ [23] https://www.iprs.org/wp-content/uploads/T-Series-joins-IPRS.pdf [24] https://www.livemint.com/news/india/european-parliamentarians-support-proposal-for-trips-waiver-on-covid-vaccine-11616654484560.html [25] https://www.theweek.in/wire-updates/business/2021/03/23/fgn77-us-india-ip-rank.html [26] https://dipp.gov.in/sites/default/files/pressRelease-Indo-Japan-19March2021.pdf