Intellectual Property Updates in India

Intellectual Property (IP) regime in India took the revolutionary road in the year 2022-23 with radical and profound changes seeing the light of the day. It will not be a hyperbole to throne this year as the flag bearer of cardinal transformations. Post the abolition of Intellectual Property Appellate Board, the IP litigation and court system in India witnessed an unprecedented development with the Delhi High Court paving the way with creation of the first Intellectual Property Division (IPD) in the country. Taking into consideration the best practices from around the world, detailed rules of functioning were laid down for the IPD which marked its tremendous presence with path breaking decisions delivered in the last one year on complex IP disputes. The advent of IPD has ushered in speedy disposal of cases, especially in cases of appeals from refusal orders issued by the Registrar of Trade Marks which may get decided within 1- 2 hearings before the Court. Following the path, the High Court of Judicature at Madras also created IPD in the Madras High Court which had its first sitting on 13th April 2023. Hearings of the transferred cases from IPAB as well as appeals/rectifications directly filed have also started in High Courts of Bombay, Gujarat, and Calcutta; and creation of special intellectual property division along with Rules is in pipeline. The hearings are being conducted in physical as well as via video-conference mode. The present compilation brings to you the ratios of some of the interesting decisions rendered by the Courts. Research & Publication Team LexOrbis P a g e | 3 [email protected] | www.lexorbis.com CONTENTS TRADEMARKS........................................................................................ 8 The Boeing Company and Ors. vs. Advance Technologies and Ors. ................8 KEI Industries Limited vs. Raman Kwatra and Another...................................9 PEPS Industries Pvt. Ltd. vs. Kurlon Ltd. .......................................................12 Sanjha Chulha vs. Sanjha Chulha ....................................................................15 S.N.R. Dhall Mill vs. Kaleesuwari Refinery Private Limited..........................18 Mondelez India Foods (P) Ltd. and Another vs. Neeraj Food Products..........19 Under Armour, Inc. vs. Aditya Birla Fashion & Retail Ltd.............................21 Anubhav Jain vs. Satish Kumar Jain................................................................23 Hermès International & Anr. vs. Crimzon Fashion Accessories Private Limited .........................................................................................................................25 TTK Prestige Ltd. vs. K.K. and Company Delhi Pvt. Ltd. and Ors.................26 Loreal vs. The Registrar Of Trade Marks........................................................28 Aktiebolaget Volvo & Ors. vs. Gyan Singh.....................................................29 Macleods Pharma vs. Union Of India..............................................................30 Cable News Network vs. CTVN Calcutta Television Network Pvt Ltd..........32 Winzo Games Pvt. Ltd. vs. Google LLC and Ors............................................33 Mohan Meakin Limited vs. Accord Distillers & Brewers Pvt. Ltd. ................34 Scholl’s Wellness Company Limited vs. M/S. Arihant Remedies ..................35 Dhananjay Rathi vs. Shree Vasu Steels Private Limited and Others...............37 Roger Yang vs. Registrar of Trade Marks.......................................................39 The Free Elective Network (P) Ltd. vs. Matrimony.com. Ltd.........................40 Star Television Productions Ltd. vs. Eurosport ...............................................42 Vee Excel Drugs & Pharmaceuticals (P) Ltd. vs. Union of India and Others .43 Perfetti Van Melle S.P.A. vs. Suresh Nanik Lilaram Hingorani and Others...45 Phonepe (P) Ltd. vs. EZY Services..................................................................46 P a g e | 4 [email protected] | www.lexorbis.com The Official Liquidator of M/s. Ideal Jawa (India) Ltd. (In Liquidation) vs. Registrar of Trademarks & Ors........................................................................48 Corona Remedies Pvt Ltd vs. Franco Indian Pharmaceuticals Pvt. Ltd. .........50 Tata Sia Airlines Limited vs. Shenzhen Colour splendour Gift Co. Ltd. ........51 Sanofi India Limited vs. Ridley Life Science Private Limited ........................52 TM 25 Holding BV vs. Uma Manja Shivappa.................................................53 V Guard Industries Ltd. vs. Crompton Greaves Consumer Electricals Ltd.....55 The British School Society vs. Sanjay Gandhi Educational Society and Ors..57 ML Brother LLP vs. Maheshkumar Bhuralal Tanna .......................................59 Aqua Pump Industries, Rep. by its Managing Partner Mr. Ramaswamy Kumaravelu and Another vs. Subhash Chandra Jain.......................................60 MakeMyTrip India Private Limited vs. Booking.com B.V. and Ors...............61 Blue Heaven Cosmetics Pvt. Ltd. vs. Shivani Cosmetics through its Partners Vinod Monga Nishant Monga .........................................................................63 Geoscope Exim Private Limited, Rep. by its Senior Manager/Authorized Signatory Mr. V. Prakash vs. SNJ Distillers Private Limited and Another.....64 Cable News Network INC vs. Fayyaz Shaikh and Another ............................66 Dr. Reddy Laboratories Limited vs. Controller General of Patents Designs and Trademarks ......................................................................................................67 Cipla Limited vs. Sun Pharmaceuticals Industries...........................................69 Dabur India Limited and Ors. vs. Ashok Kumar and Ors................................70 Havells India Ltd. vs. Panasonic Life Solutions India Pvt Ltd. And Another .72 Hell Energy vs. Kriti Karki Trading and Anr. .................................................73 Sudhir Bhatia Trading as vs. Bhatia International v Central Govt. of India ....74 Netsweeper Inc., Rep. by its authorised signatory Mr. N. Krishnan vs. Netsweeper Technologies Private Limited and Others....................................76 Vikas Jain vs. Aftab Ahmed and Ors...............................................................77 Vishal Pipes Limited vs. Bhavya Pipes Industry .............................................78 Proklean Technologies Pvt. Ltd. vs. Godrej Consumer Products Ltd. ............82 Karim Hotel Pvt Ltd vs. Kareem Dhanani.......................................................84 P a g e | 5 [email protected] | www.lexorbis.com Usv Private Limited. vs. Hindustan Unilever Limited & Ors..........................86 Kiran Jain & Ors. vs. Kangaro Industries (Regd.) & Ors. ...............................87 Gm Modular Pvt. Ltd. vs. Syska Led Lights Pvt. Ltd....................................187 COPYRIGHT........................................................................................ 196 Global Music Junction Pvt. Ltd. vs. Annapurna Films Pvt. Ltd. ...................196 V.Prabhakar vs. M/S.Saga Films...................................................................197 Phonographic Performance Limited vs. Union Of India & Ors.....................198 AP International, Represented by its Partner, Mr. Sanjay A. Wadhwa vs. Arun Mathew ..........................................................................................................200 Five Star Films Pvt. Ltd. vs. Sri Thenandal Films.........................................201 Samir Kasal vs. Prashant Mehta and Ors.......................................................205 Star India Pvt. Ltd. and Anr. vs. Afilmywap. TOP and Ors. .........................207 Jayant Industries vs. Indian Tobacco Company and Ors. ..............................209 Siddhi Margarine Specialties Ltd. and Another vs. Zydus Wellness Ltd. .....212 Polo/Lauren Company LP vs. Sandeep Arora and Another ..........................213 JA Entertainment Pvt. Ltd. vs. MS Sithara Entertainment and Others..........215 T.V. Today Network Limited vs. News Laundry Media Private Limited and Ors..................................................................................................................216 Warner Bros. Entertainment Inc. vs. HTTP: //MP4MOVIEZ. IO and Others .......................................................................................................................217 M/s Thind Motion Films Private Limited vs. Ishdeep Randhawa and others 218 C. Prakash vs. Zee Entertainment Enterprises Limited and Others...............220 YashRaj Films Private Limited vs. Triller Inc CS(COMM) 9/2023..............223 Elsevier Ltd. And Ors vs. Alexandra Elbakyan and Ors................................224 Maheshbhai @ Kanbhai Haribhai Sojitra vs. State Of Gujarat......................225 Indian Performing Right Society Limited vs. Rajasthan Patrika Pvt. Ltd. ....226 Indian Performing Right Society Limited vs. Music Broadcast Limited.......226 Adv. Anoop V.R vs. Union Of India, Ministry of Information and Broadcasting, Central Board of Film Certification (CBFC) and Ors.............228 P a g e | 6 [email protected] | www.lexorbis.com Red Chillies Entertainment Pvt. Ltd. vs. Ashok Kumar/John Doe and Others .......................................................................................................................229 Sony Music Entertainment India Pvt Ltd and Ors vs. Yt1s.Com and Ors.....230 Universal City Studios LLC & Ors. vs. Fzmovies.net & Ors........................232 The Mathrubhumi Printing and Publishing Co. Ltd. vs. Hombale Films & Ors. .......................................................................................................................234 Neetu Singh & Anr. vs. Telegram FZ LLC & Ors.........................................236 Star India (P) Ltd. vs. Aapkeaajanese. Net and Ors.......................................237 Abhishek Kumar vs. Union Of India Through Registrar Of Copyrights & Ors. .......................................................................................................................239 Mohd Ershad Sole Proprietor EK Agencies vs. Registrar of Copyrights & Ors. .......................................................................................................................241 Anil G. Karkhanis vs. Kirloskar Press and Another ......................................243 PATENTS.............................................................................................. 245 Novartis AG vs. Windlas Biotech (P) Ltd .....................................................245 Novartis Ag & Anr. vs. Natco Pharma Limited & Anr. ................................247 Astra Zeneca AB vs. Natco Pharma...............................................................251 Koninklijke Phillips N.V. vs. VIVO Mobile Communications Co. Ltd. .......252 Novartis AG and Another vs. Centurion Remedies Private Limited .............253 Sun Pharmaceutical Industries Ltd. vs. Union of India and Others...............254 Novo Nordisk AS vs. Union of India and Others..........................................256 Chugai Seiyaku Kabushiki Kaisha and Another vs. Hetero Labs Limited and Another ..........................................................................................................257 Novartis AG vs. Controller of Patents and Designs.......................................258 Bristol-Myers Squibb Holdings Ireland Unlimited Company and Others vs. Zee Laboratory...............................................................................................260 Avery Dennison Corporation vs. Controller of Patents and Designs.............261 Chandra Sekar vs. The Controller of Patents and Designs ............................264 Ace Technologies Corp and Ors. vs. Communication Components Antenna Inc. .................................................................................................................266 P a g e | 7 [email protected] | www.lexorbis.com Communication Components Antenna Inc. (Earlier Known As Ten Xc Wireless Inc) vs. Mobi Antenna Technologies Co. Ltd. & Ors.....................268 Koninklijke Phillips N.V. vs. VIVO Mobile Communications Co. Ltd. .......270 Allergan Inc. vs. The Controller of Patents ...................................................271 Societe Des Produits Nestle SA vs. Controller of Patents.............................272 Perkinelmer Health Sciences vs. Controller Of Patents.................................273 FMC Corporation vs. Natco Pharma..............................................................275 DESIGNS............................................................................................... 277 TTK PRESTIGE LTD vs. KCM APPLIANCES PRIVATE LIMITED. ......277 Philips Lighting Holding B.V. vs. Jai Prakash Agarwal and Another...........279 Novamax Industries LLP vs. Prem Appliances and Anr. ..............................281 Havells India Limited vs. Panasonic Life Solutions India Pvt. Ltd. and Ors.283 Diageo Brands B.V. and Ors. vs. Great Galleon Ventures Limited...............284 Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt...................286 Relaxo Footwears Ltd. vs. Aqualite India Ltd. ..............................................287 DOMAIN NAMES................................................................................ 292 Snapdeal Private Limited vs. Godaddycom LLC And Ors............................292 Adobe Inc. vs. Namase Patel and Others.......................................................295 Yonex Company Ltd. vs. John Doe ...............................................................296 PRIVACY/PERSONALITY RIGHTS ............................................... 298 Ms. Aaradhya Bachchan and Anr. vs. Bollywood Time & Ors.....................298 Amitabh Bachchan vs. Rajat Nagi & Ors. .....................................................300 Krishna Kishore Singh vs. Sarla A Saraogi ...................................................302 ADVERTISING .................................................................................... 304 Dabur India Limited vs. Advertising Standards Council of India .................304 P a g e | 8 [email protected] | www.lexorbis.com TRADEMARKS The Boeing Company and Ors. vs. Advance Technologies and Ors. Forum: High Court of Delhi Case No.: 254/2022 Order Dated: 18h April 2023 Issue: Is use of by the defendant infringes of the plaintiff, The Boeing Company in same set of services and business sector? Order: The Court found that defendant adopted the plaintiff’s trademark/logo in its entirety and have merely added a second swoosh P a g e | 9 [email protected] | www.lexorbis.com graphic element that does not mitigate the deceptive and confusingly similar appearance of the impugned mark. The defendants are using the impugned trademark/logo in relation to aviation and defence sector, which are identical to that of the plaintiffs'. The defendants are infringing the trademark/logo of the plaintiffs, as also passing off their goods and services as that of the plaintiffs. Permanent injunction was granted against the defendants. Further, in view of obvious misconduct on behalf of the defendant, the suit was decreed in favour of the plaintiffs for INR 3 lakhs (USD 3670) towards damages to be paid by the defendants and INR 2 lakhs (USD 2450) as costs of the suit to be paid to the plaintiff. KEI Industries Limited vs. Raman Kwatra and Another Forum: High Court of Delhi Case No: FAO (OS) (Comm) 172/2022 and C.M. Appl. 30278/2022 Order Dated: January 6, 2023 Issue: Can the ground of ‘honest and concurrent use’ be a defence in the case of trademark infringement? What is the effect of the principle of estoppel if contrary submissions are made while replying to an examination report issued by the Trade Marks Registry? Can the doctrine of ‘ejusdem generis’ be applied in the specification of goods covered in a trademark application? Judgement: The appellant had filed the present appeal against the order of the Single Judge whereby in the plaintiff-respondent’s suit against the appellant for trademark infringement qua use of their mark ‘KEI’, an application for interim injunction/restraint was allowed. The appellant was engaged in the business of manufacturing electrical fans and other appliances while the respondent was engaged in the business of manufacturing, marketing and sale of wires and cables. The respondent claimed that they had been using the trademark/trade name “KEI” since the year 1968 which was thereafter registered in 1988 in class 9 for wires and cables. Subsequently, the respondent registered the word mark KEI in its name for classes 6, 16, 35, 37 and 42 which was followed by the respondent adopting the mark KEI (logo) in 2007. The respondent contended that on P a g e | 10 [email protected] | www.lexorbis.com the basis of its long and extensive usage, the mark KEI had acquired goodwill and reputation in the market. Further, it came to know during a due diligence check that the appellant had applied for registration of the mark KEI (logo) in classes 7, 11 and 35. The respondents further claimed prior use of the mark KEI, as the appellant had adopted the mark years later i.e., in 2008 in comparison to the respondent’s use since 1968. In the appeal filed, the appellant had claimed that they began their business in the name of Kwality Electrico (India) as started by the appellant’s father under the trademark/label “KEI Kwality (Logo)” in relation to electrical goods such as electric fans, room coolers, geysers, electric heating apparatus, electric rods, and the like. It was also claimed that the appellant’s father on April 4, 1997, had applied for registration of the mark “KEI Kwality (Logo)” in classes 9 (for Electrical iron, electric kettle, electric rods, testers and electrical accessories and appliances and parts thereof) and 11 (for electric fans, room coolers and geysers, electric heating apparatus and parts thereof). Subsequently, on May 25, 2009, appellant’s father issued a Consent Letter in favour of the appellant towards change in the constitution of the firm Kwality Electrico (India) from partnership to a sole proprietorship of the appellant. The appellant claimed to continue operations of the former partnership firm using the trade name KEI. It was argued that appellant created the contested mark in 2008 and had been using it ever since, and that the abbreviated "KEI" had been in use since 1966 through the appellant’s father. In light of this, the appellant asserted user primacy over the respondent 's use of the mark KEI. In response, the respondent disputed and denied that appellant inherited any such use to the trademarks "KEI Kwality (Device)" or "KEI" from the alleged date. The respondent contended that the appellant could not assert honest and concurrent user. The respondent additionally argued that appellant could not take refuge under Section 12 of the Trade Marks Act as to honest and concurrent use since that only applied to registration of marks and not to their use or as a defence to a case of trademark infringement. The Single Judge observing and relying on certain case precedents, also agreed with the respondent’s said contention. It was observed by the Single Judge that the respondent owned a legitimate and active registration for the word mark “KEI” in relation to electric wires and cables, and the court reasoned that any use of the abbreviation KEI by a third party in relation to the same P a g e | 11 [email protected] | www.lexorbis.com or comparable goods would constitute infringement. According to Section 29(2) of the Trade Marks Act, the appellant’s use of the contested mark in relation to electric fans, electric water heaters, immersion water heaters, etc. constituted prima facie an infringement of the respondent 's registered word mark and device mark containing "KEI". The Single Judge observed that the appellant’s impugned trade mark KEI was being used in respect of electrical goods, while the respondent ’s word mark KEI and device mark were also registered in respect of electrical goods and instruments and hence there was a clear prima facie case of infringement by the appellants. Accordingly, the appellant was restrained from using the impugned mark KEI in relation to any electrical goods or instruments, including electrical fans, room coolers, geysers, electric heating apparatus etc., or any allied or similar goods. In the appeal, the appellant contended that the Single Judge erred in not considering that the impugned trademark was registered in class 11. The appellant, to substantiate its claim, submitted its trademark registration for the impugned trademark, “KEI” in Class 11. Further, it was contended that the goods covered by the appellant’s trademark were distinct from those covered by the respondent’s trademarks. The appellant based its contention on the principle that the respondent was precluded from asserting any likelihood of confusion with respect to the impugned mark, as this assertion was entirely contrary to its earlier assertions made before the Trademark Registry in replying to an examination report for its mark in class 11, stating: “the services of the Applicant are different to that of the cited marks and therefore, there is not any likelihood of confusion….” and wherein one such citation was the impugned mark of the appellant. The Court was satisfied with the appellant’s contention that a party who has obtained trademark registration based on specific representations and declarations made before the Trade Marks Registry would be ineligible for equitable redress if it claimed otherwise. The Court further observed that if a party has obtained the registration of their trademark by alleging that their mark is distinct from a cited mark, such party cannot obtain an interim injunction against the cited mark’s owner on the contention that the marks are deceptively similar. On the aspect of honest and concurrent use, the Court observed the same to be a special circumstance, and as a matter of applicability of principle, concluded that where special circumstances P a g e | 12 [email protected] | www.lexorbis.com existed that warrant grant of registration of identical or similar trademarks in respect of similar goods and services, the person claiming entitlement to such registration may also be entitled to resist a restraining order for use of such trademark. The Court also went on to correctly apply the doctrine of ‘ejusdem generis’ to hold that “other kinds of electrical and electronic instruments” in the specification of the respondent’s registration were to be read in a restrictive sense by the items listed before the same, being “electrical wires & cables (viz. power cable, control cable, instrumentation cable, rubber cable, winding, flexible & house wire), electrical switchgears, control panels, circuit breakers, transformers, amplifiers, electric and electromagnetic and mechanical relays, switches, fuses of all kinds..” Hence, such electrical and electronic instruments would