Home / / Bulletin 11 | Mar 2024

Bulletin 11 | Mar 2024

Topical Updates: To IP & Beyond

Snapshots

DELHI HIGH COURT

STAR INDIA PRIVATE LIMITED & ANR V. TERIIMERIDOORIYAN.COM & ORS.

In a suit filed for infringement of copyright and broadcasting rights in Star’s films, general entertainment content, web-series etc., the Court while applying the principles of UTV Software Communication website blocking case, passed a dynamic injunction order for blocking of rogue websites. The Court further directed Domain Name Registrars, Internet Service Providers, and Govt. entities to block access to any infringing websites identified by Star and Disney+ Hotstar in future, and notified to them.

DELHI HIGH COURT

THE COMMISSIONER OF INCOME TAX – INTERNATIONAL TAXATION V. RELX INC.

The Division Bench, while dismissing an appeal preferred by the Income Tax Dept. against an order of the Income Tax Appellate Tribunal (ITAT), clarified that subscriptions to legal databases (LexisNexis in this case) do not constitute a transfer of copyright. The Court distinguished between access to copyrighted content and copyright transfer and held that mere access to the database, exclusive of additional services (technical, managerial etc.) would not classify the subscription fee paid to LexisNexis as ‘royalty’. Held, Sections 9(1)(vii) of the Income Tax Act and Article 12(4)(b) of the Double Tax Avoidance Agreement were inapplicable.

In suits filed by Interdigital against Oppo (handset manufacturer in India) in relation to its Standard Essential Patent rights, the Court directed Oppo to furnish a protem / interim deposit due to its failure to furnish a proper bank guarantee in terms of a previous consent order. Further held, the trial in the suits must be concluded in 2024, failing which Oppo will be required to deposit an additional sum. Failure of such deposit would entitle Interdigital to seek an injunction against Oppo from sale in India.

DELHI HIGH COURT

SEQUOIA CAPITAL OPERATIONS LLC & ORS. V. JOHN DOE & ORS.

An ex-parte ad interim injunction was passed in an infringement suit restraining the unauthorized use of the ‘SEQUOIA’ and ‘PEAK XV’ trademarks, and suspending the infringing domain names. The Defendants were held to be exploiting the Plaintiffs’ goodwill, luring consumers into joining Whatsapp and Telegram groups under pretenses of financial trading advice, leading them to “invest” significant amounts of money. Meta, Telegram, X Corp., and banks were directed to disclose information (in sealed cover) about the fraudsters operating through their platforms.

The Court dismissed the Plaintiff’s application u/O XI Rule 1(5) CPC seeking  to place additional documents on record while citing the mandate of the Commercial Courts Act – speedy disposal of high value commercial disputes. The CPC having been accordingly amended, entails a detailed timeline for filing of pleadings and documents. Relying on Ambalal Sarabhai Enterprises Ltd. v. K.S. Infraspace LLP, the Court held that the Plaintiff had no “reasonable cause” for not filing the documents at an earlier stage, i.e., inter alia along with the suit, in the extended period and with the replication.

Significant Judgments

DELHI HIGH COURT

The Court dealt with the interpretation of the term ‘The High Court’ as applicable to rectification/cancellation petitions under Section 57 of the Trademarks Act, 1999 (“TMA”), following the enactment of Tribunal Reforms Act, 2021 (“TRA”), to determine its jurisdiction over petitions filed qua marks which were registered in the office(s) of the Trade Mark Registry situated inter alia in Mumbai. Disagreeing with a co-ordinate Bench in Dr. Reddy’s Laboratories Ltd. v. Fast Cure Pharma, the Court held inter alia that Girdhari Lal Gupta v. Gian Chand Jain is inapplicable in interpreting jurisdiction under the TMA as it pertains to the Designs Act, 1911; TRA aimed to abolish certain tribunals without altering rights under the TMA; The approach of ‘dynamic effect’ in Dr. Reddy’s potentially extended TMA beyond its provisions; permitting different High Courts to exercise original jurisdiction over rectification petitions would confer jurisdiction which is not envisaged under the TMA. As such, the court referred the following issues to a larger Bench:

  • Whether the decision of the Full Bench in Girdhari Lal Gupta, would be applicable in the context of the TMA, for determining jurisdiction of a High Court?
  • Whether the jurisdiction of the High Court under the TMA would be determined on the basis of the Appropriate office of the Trade Mark Registry, which granted the registration?
  • Whether the expression ‘the High Court’ can be construed differently in Sections 47, 57 and 91 of the TMA?

DELHI HIGH COURT

Division Bench of Delhi High Court ruled on the interpretation and scope of product-by-process claims, holding that:

  • A product-by-process claim is an amalgam or hybrid, which straddles the otherwise discernible and recognized distinction between products and process patents per se.
  • Such claims are allowed when defining a product structurally is challenging.
  • “Obtained by” claims link product and process directly, while “obtainable by” claims suggest a descriptive process.
  • Process features in product-by-process claims do not limit infringement proceedings and patentability, and infringement standards remain consistent.
  • The conferral of an ‘INN’ cannot be accepted as constituting irrefutable evidence of an invention. It could at best be viewed as corroborative of an assertion of a patentable product having been obtained.

183. D. “…a product-by-process claim would be accepted and accorded statutory protection, only if the product itself be novel…”

M/S DESIRE RETAIL & ORS. V. NITIN BATRA & ORS.

NATIONAL COMPANY LAW TRIBUNAL, NEW DELHI

The National Company Law Tribunal, New Delhi (‘NCLT’), re-affirmed that in a Section 7 Application filed under the I&B Code, seeking to initiate Corporate Insolvency Resolution Process, no third party can seek impleadment, as only the creditor and the debtor are involved in such proceedings. Further, a direction was also sought to consider a scheme of compromise and arrangement filed under Section 230 of the Companies Act, 2013, as proposed by the debtor before considering the Section 7 Application filed by the creditors. However, the NCLT declined this request, affirming that in a Section 7 Application, its sole responsibility is to determine the existence of debt and default, without provision for prioritizing the Section 230 Application.

13. On an Application filed under Section 7 of the IBC, 2016, this Adjudicating Authority merely has to ascertain existence of financial debt and its default. The issue of maintainability has already been concluded by Hon’ble Supreme Court.

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