Topical Updates: To IP & Beyond
Snapshots
DELHI HIGH COURT
BEIERSDORF AG V. HINDUSTAN UNILEVER LIMITED
The Defendant’s in-mall marketing campaign for its ‘Ponds Superlight Gel’ being carried out by its sales representatives, who would apply cream from a ‘blue tub’ (identical to Plaintiff’s ‘NIVEA Crème’ packaging) to walk-in customers and show that it left an oily residue on skin, was restrained by the Court. Held, the Defendant’s activities were misleading and disparaging since:
- Plaintiff’s blue color trade dress has acquired
- Comparing dissimilar products (i.e. Plaintiff’s cream- based moisturizer with Defendant’s gel-based one to show the former in a negative light) is prima facie misleading and disparaging of Plaintiff’s product.
DELHI HIGH COURT
JAIKISHAN KAKUBHAI SARAF ALIAS JACKIE SHROFF V. THE PEPPY STORE & ORS.
In this new addition to suits filed for protection of inter alia personality rights, actor Jackie Shroff obtained an ex parte ad interim injunction against Defendants who were a) offering t-shirts, posters & wallpapers with his photos/autographs; b) creating distorted videos of him c) infringing his registered trademark ‘Bhidu’; d) Operating AI platform(s) using unlicensed chatbot responding with his mannerisms; , since such Defendants were found to be prima facie infringing his personality/publicity rights by utilizing his name, voice, image etc. for commercial purpose without consent. The Court balanced Youtube content creators’ artistic rights with that of a celebrity’s personality rights, and denied the injunction against such content creators.
DELHI HIGH COURT
NETWORK18 MEDIA & INVESTMENTS LTD. & ORS. V. WWW.BRAWLERSFIGHTCLUB. COM & ORS.
Addressing the surge in cases involving deepfake images and videos, the Court, in a suit filed by CNBC TV18 has directed suspension of rogue websites that published an article about a fake interview between Anant Ambani and reputed journalist Anand Narasimhan. The interview falsely presented Anant Ambani promoting a cryptocurrency website. Further, various links on the rogue websites redirected users to the said cryptocurrency platforms.
Held, the rogue websites are prima facie violating copyright and trademark rights of CNBC TV18, as well as the personality rights of Anand Narsimhan.
DELHI COURT COURT
AMRISH AGGARWAL
V. VENUS HOME APPLIANCES PVT. LTD.
The Division Bench settled the position with respect to S.124, Trade Marks Act, 1999, and held that suit proceedings must be stayed when the conditions of S.124 are met, regardless of whether the rectification petition is pending before the High Court or the Registrar. The DB determined that the position taken in Sana Herbals Pvt. Ltd. vs. Mohsin Dehlvi by the Ld. Single Judge, is incorrect since it was inconsistent with the precedents in Patel Field Marshal and Puma Stationer. Held, the obligation to stay suit proceedings under S.124 remains intact after the abolition of the IPAB.
SUPREME COURT OF INDIA
INDIAN MEDICAL ASSOCIATION & ANR.
V. UNION OF INDIA & ORS.
In a writ petition filed by the Indian Medical Association (IMA) under Article 32 of the Constitution against Patanjali, the IMA alleged that Patanjali made disparaging remarks about allopathic medicine and published misleading advertisements falsely claiming the treatment of certain diseases through its products. The Apex Court asserting the requirement of a robust mechanism to preserve the consumers’ fundamental rights, directed that advertisers must submit a Self-declaration under Rule 7 of the Cable Television Networks Rules, 1994, to be uploaded on a portal managed by the MIB. Broadcasters directed not to air advertisements without this proof.
Significant Judgments
INTERDIGITAL TECHNOLOGY & ORS V. GUANGDONG OPPO MOBILE & ORS.
DELHI HIGH COURT
The Delhi High Court, in a suit for infringement of standard essential patents (SEPs), has held that the Defendants’ agreements with third parties are not relevant for the determination of FRAND rates of the Plaintiff’s patents.
Rather, the onus is on the Plaintiff to establish that their patents are essential and infringed, and that the rates offered by them are FRAND. Furthermore, the Court ordered disclosure of the agreement of both parties with Qualcomm, to members of the confidentiality club, noting that the Defendants had taken the defence of exhaustion and as such the agreements of both parties may assist the Court in this regard.
32. …In any case the onus is first on the plaintiffs to establish essentiality and then infringement by the defendants. The positive evidence has to be supplied by the plaintiffs.
GUANGDONG OPPO MOBILE & ORS V. INTERDIGITAL VC HOLDINGS INC. & ORS.
DELHI COURT OF INDIA
In an appeal filed against the order of the Ld. Single Judge, which modified a consent order to provide Bank Guarantees as pro tem into an order of deposits, the Division Bench of Delhi High Court held that Bank Guarantees are adequate security and allowed the Appellants to provide Bank Guarantees of an Indian bank. The Division Bench further held that pro tem measures are ad-interim orders which are not punitive in nature, and clarified that even for pro tem orders, the Plaintiff must demonstrate a prima facie case before any interim relief is granted i.e. the Plaintiff must establish essentiality and validity of its patents.
99… The contention that there is no necessity to form a prima facie view before issuing pro tem orders is erroneous. Pro tem measures are also in the nature of an interim / ad- interim measures. It is thus necessary that in a contested case the court form a prima facie before granting any interim relief..
VODAFONE IDEA LTD. V. SAREGAMA INDIA LTD. & ANR. (&
connected matters)
CALCUTTA HIGH COURT
In a copyright infringement suit, the Court, upon a comprehensive reading of the provisions of the Copyright (Amendment) Act, 2012, reiterated the intention of the legislature, i.e., to protect the rights of the authors of the original literary and musical works. Emphasizing that copyright is not merely an economic tool, rather an extension of author’s personality, the Court directed Vodafone to cease unlicensed use of copyrighted works and to pay royalties to the Indian Performing Right Society (IPRS). It further clarified that despite Saregama being considered the first owner of the copyrighted works, and having granted license to Vodafone to exploit the same, the right of the authors to claim royalty cannot be circumvented.
25… Vodafone post amendment of the Act is bound and statutorily obliged to pay IPRS royalty to the authors of the literary and musical works incorporated in the sound recordings.
Meet the Picklers: Sneha Jain, Savni D. Endlaw, Snehima Jauhari, Saif Rahman Ansari, Kuber Mahajan, Disha Sharma, Srishti Dhoundiyal and Aniruddh Bhatia.