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Bulletin 13 | May 2024

Topical Updates: To IP & Beyond

Snapshots

BOMBAY HIGH COURT

DAIWA PHARMACEUTICALS CO. LTD. V. DAIWA PHARMACEUTICALS PVT. LTD. & ORS.

The High Court held the Defendant liable for passing off in a suit filed for the protection of the well- known ‘Daiwa’ trademarks of the Plaintiff. The Court acknowledged the Plaintiff’s global goodwill in India based on promotional activities and past distribution, and held that the Plaintiff satisfied the “territoriality principle” for establishing trans-border reputation. The identity of defendant’s marks with that of the Plaintiff’s indicated an attempt to ride on its goodwill. In addition to injuncting the Defendant’s use of its impugned marks, the Court restrained the Defendant from creating any third-party rights in the same and from using/transferring its impugned domain name.

The Delhi HC upheld the Indian Patent Officer’s rejection of a patent application for a messaging system, citing lack of novelty and inventive step over prior arts.

The Court noted that the Appellant claimed differentiating features but failed to disclose that the corresponding EU patent application was rejected, not abandoned. Information about a subsequent divisional application being rejected was also withheld by the Appellant.

While dismissing the appeal, the Court imposed a cost of INR 1 lakh on the Appellant for non-compliance with disclosure requirements under the Patents Act viz. non- disclosure of rejections of the EU patent applications and for stating wrong facts before the Court.

CALCUTTA HIGH COURT

EMAMI LTD. V. HINDUSTAN UNILEVER LTD.

In a suit filed for protection of Emami’s “Fair and Handsome” trademark, Hindustan Unilever (HUL) was restrained from using the mark “Glow and Handsome” on the ground of passing off. However, the same did not amount to infringement and it was observed that Emami has not established secondary meaning and distinctiveness for the word “handsome”. While Emami could not claim exclusivity on the word per se, it was held that HUL’s deliberate adoption of the prominent and essential “Handsome” feature of Emami’s mark, is likely to deceive / cause consumer confusion.

COMMERCIAL COURT, BENGALURU

M/S BETWEEN SPACES v.
AKSHADHAA ASSISTED LIVING ESTABLISHMENT LLP

In a petition u/s 9 of the Arbitration & Conciliation Act, 1996, the Court granted an ex-parte ad-interim injunction in favour of the Petitioner, an architect firm which asserted copyright in its drawings, designs, and other works including master plan, concept design, schematic design, structural design drawings, RERA approval drawings etc. used in the construction of the subject matter project. The Respondent entity was thus restrained from using the Petitioner’s materials and directed to disclose the liabilities, assets and properties owned by them.

This trademark dispute saw an end after 40 years of legal battle, whereby the Court concluded that P.M. Diesels was the prior adopter, prior user and legitimate owner of the mark “FIELDMARSHAL”. The Court further cancelled the registrations of the said mark in favour of the Defendants, and passed a decree for actual costs in favour of P.M. Diesels given that the litigation between the parties had imposed substantial financial burden on them to protect and defend their mark.

Significant Judgments

DELHI HIGH COURT

A decree of permanent injunction and damages was passed in favour of the Plaintiff in a suit filed for infringement of the ‘HEIFER’ trademarks and logos. Stating this case to be a “classic instance of ‘triple identity’”, the Court observed that the Defendant Trust (which was established to be a licensee of the Plaintiff) was using nearly identical and deceptively similar marks to that of the Plaintiff’s despite termination of their contract, in the same areas of operation and targeting the same segments of the public. Such use of the ‘HEIFER’ trademarks by the Defendants to solicit donations for their projects in India subsequent to withdrawal of the Plaintiff’s permission to use the said marks, was deemed certain to cause deception / confusion among the public.

30. Indeed, the present case is a classic instance of ‘triple identity.’ The Impugned trademarks are nearly identical, as are the areas of operation, and the segments of the public they target. Therefore, the Defendants’ use of these nearly identical and deceptively similar marks is certain to cause deception and confusion among the general public.

SUPREME COURT OF INDIA

The Apex Court clarified the scope of ‘deficiency of service’ and ‘unfair trade practice’ under the Consumer Protection Act in relation to a promotional trailer of a film, and held that such a trailer does not establish a contractual relationship between the producer and the audience. As such, the absence of a song in the final film, despite being featured in the trailer, neither qualifies as a “deficiency of service” due to the absence of a contractual commitment, nor as an “unfair trade practice” since the trailer does not make any false or misleading representation. It was observed that artistic services inherently involve the service provider’s creative discretion and such creative element must be accounted for when judging transactions pertaining to them.

“17… A false representation is one that is false in substance and in fact, and the test by which the representation must be judged is to see whether the discrepancy between the represented fact and the actual fact would be considered material by a reasonable person.”

DELHI HIGH COURT (DB)

In a genus-specie dispute, the Division Bench overturned a single judge’s decision that had granted interim injunction in relation to the drug of Eltrombopag Olamine (IN 233161) stating:

  • Defendant neither has a heavy burden to discharge, nor needs to establish a strong prima facie case to challenge patent validity.
  • Section 3(d) sets a higher invention threshold for medicines/drugs, excluding new forms of known substances without significantly different efficacy. Enhanced solubility/bioavailability alone does not constitute higher therapeutic efficacy under Section 3(d).
  • No permissible dichotomy between patent coverage and disclosure; would negate fundamental patent grant rules.
  • Submissions during patent term extensions in other countries relevant, at least at interim stage.

98. There is no ambiguity in the aforesaid decision that there cannot be dichotomy between coverage or claim on one hand and the disclosure on the other.

Meet the Picklers: Sneha Jain, Savni D. Endlaw, Snehima Jauhari, Kuber Mahajan, Saif Rahman Ansari, Disha Sharma and Srishti Dhoundiyal.

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