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Bulletin 10 | Feb 2024

Topical Updates: To IP & Beyond

Snapshots

The Court held in favour of Puma SE in a trademark infringement claim against IndiaMART, an e-commerce website. Drawing on principles from Google LLC v. DRS Logistics (P) Ltd., the Court found IndiaMART to be actively promoting the unauthorized use of the well-known trademark ‘PUMA’ (in terms of S. 2(2)(b) of the Trademarks Act, 1999), by including it in its drop-down menu for sellers to choose from while registering themselves as dealers. Further, IndiaMART disentitled from claiming the safe-harbor of S. 79 of the IT Act since its actions aid infringement.

Prima facie case for infringement and temporary injunction made out.

The Division Bench partially set aside the Ld. Single Judge’s order which upheld the revocation of PepsiCo’s registration for ‘FL 2027’ potato variety, directed by the Protection of Plant Varieties and Farmers Rights Authority due to PepsiCo furnishing inaccurate information regarding the date of first sale and the incorrect categorization of the variety as “new” instead of “extant.” Held, an incorrect first sale date alone does not warrant revocation under S. 34 of the Protection of Plant Varieties Act, 2001. PepsiCo’s renewal application for ‘FL 2027’ under ‘New Variety’ was restored, to be considered by the Registrar.

In a suit filed for infringement of copyright in Zee’s films, GEC, web-series etc., the Court passed directions for blocking of rogue Apps while applying the principles developed in the UTV Software website blocking case. Passing a dynamic injunction against the rogue Apps, the Court directed Domain Name Registrars, Internet Service Providers and Govt. entities to block access to any infringing Apps/websites identified by Zee in future, and notified to them.

HIGH COURT OF KARNATAKA AT BENGALURU

ACC LIMITED V. ACC STEEL PVT LTD.

The Court allowed a Writ Petition filed against an order of the Ld. District Judge, which dismissed the Petitioner’s applications seeking production of additional documents and recall of witness. Held, Petitioner disclosed adequate reasons regarding relevance and inability to produce the said documents along with the Plaint. Further, the Ld. District Judge adopted a hyper-technical approach by concluding that the Petitioner had prior information about the said documents because  a similar application was filed by the Petitioner previously. Respondent was given liberty to cross-examine the witness on the additional evidence and present further evidence.

An ex-parte ad interim injunction was passed restraining the unauthorized use of the mark ‘KHADI ORGANIC’, and suspending the domain www.khadiorganic.com in a trademark infringement suit. The Defendants were promoting their website as the “official website for sale of Ayodhya Ram Mandir prasad,” where individuals could place orders for the same by paying a delivery charge. Held, Defendants were attempting to monopolize the consecration event by exploiting the public’s religious beliefs, thereby deceiving them into transferring money using the Plaintiff’s goodwill.

Significant Judgments

KUNAL KAMRA V. UNION OF INDIA & CONNECTED PETITIONS

BOMBAY HIGH COURT (DIVISION BENCH)

Split verdict delivered on the constitutionality of Rule 3(1)(II)(A) of the IT Amendment Rules, 2023 (Impugned Rule) which amended Rule 3(1)(b)(v) of the IT Rules, 2021 to mandate that Intermediaries shall inter alia prevent users from hosting any information which ‘knowingly and intentionally’ communicates false information related to the Central Government, and identified as fake/false/misleading by a fact check unit (FCU) of the Central Government.

Held by J. GS Patel that the Impugned Rule should be struck down as it:

  • Contravenes Article 19 of the Constitution, Section 79 of the IT Act, and principles of natural justice.
  • Leads to the loss of safe harbour for intermediaries and cause a chilling effect on free speech; contrary to Shreya Singhal.
  • Contains vague, uncertain terms which are open to arbitrary interpretation.

J. Dr. Neela Gokhale disagreed stating:

  • Impugned Rule should not be struck down based on potential abuse concerns.
  • Aggrieved persons have the right to redressal against FCU actions.
  • Government is best positioned to provide accurate information about its conduct; vagueness alone not sufficient to invalidate the Impugned Rule.

BOMBAY HIGH COURT

In a batch of suits filed for Copyright infringement, the Court held that entities like Phonographic Performance Limited and Novex (not being registered copyright societies) who act as agents for various copyright holders, are entitled to the relief of injunction for infringement of their copyright in sound recordings. Held:

  • In view of S. 14, 18 and 19 of the Copyright Act, 1957 (Act), a partial assignment would make the assignee the ‘owner’ of the copyright in the work.
  • An assignee or ‘duly authorized agent’ empowered under S. 30 of the Act to grant copyright license.
  • S. 33(1) and the object of Chapter VII of the Act in the interest of authors and owners.
  • On a reading of S. 34(1)(b), the author/owner did not have to carry out the business of licensing their works only through a society.
161. “…PPL and Novex as owners of copyright in respect of their works are entitled to file the present suits and seek reliefs sought for therein.”

DELHI HIGH COURT

The Division bench has clarified the Patents Act regime regarding pre-grant oppositions, distinguishing between the examination and opposition stage. The Court affirms the opposition’s right to be heard but not extending it to the examination process and clarifies that the objections are to aid the examination but does not detract from the Controller’s independent duty to assess a patent application. The Court also emphasized that Rule 55(5) of the Patent Rules confers a hearing right solely for adjudication of opposition proceedings, not participation in examination.

128. X. … we are of the firm opinion that the examination and opposition process though statutorily structured to proceed parallelly are independent and separate. It would be wholly incorrect to understand the provisions of the Act and the Rules as contemplative of convergence or merger.

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