Home / LawPickle / Bulletin 17 | Sept 2024

Bulletin 17 | Sept 2024

Topical Updates: To IP & Beyond

Snapshots

In this suit for copyright infringement, the Court awarded Louis Vuitton Rs. 5 lakhs in costs against the website www.haute24.com for unauthorized use of the brand’s copyrighted photos and promotional materials while also directing removal of all infringing content. The Defendant was further restrained from dealing in any new Louis Vuitton products without authorisation, however, the Court allowed the website to continue selling pre-owned Louis Vuitton products, provided they are clearly labelled as “certified pre-owned goods.”

In a recent ruling, the Court recognised ‘BOROLINE’ as a well-known trademark under S. 2(1)(zg) and S. 11(2) of the Trade Marks Act, 1999, in an infringement action against the use of the (i) mark/name i.e. ‘BOROBEAUTY’ and (ii) trade dress of a distinct dark green tube ending in an octagonal black cap. Noting the immense global goodwill of ‘BOROLINE’, its phenomenal sales and national /international trademark registrations, the Court permanently injuncted the use of ‘BOROBEAUTY’ or any other deceptively similar mark. The Defendant was also directed to pay costs of INR 2,00,000/- in addition to rebranding its products, specifically removing the prefix ‘BORO’ from their trade name.

KARNATAKA HIGH COURT

BHAGWATI PRODUCTS LTD. V. INDKAL TECHNOLOGIES PVT. LTD.

A review petition was filed challenging an order passed under S. 11 of the Arbitration and Conciliation Act, 1996 appointing an arbitrator. It was held that in exercise of its inherent powers of recall / review under Articles 226 and 227 of the Constitution, the High Court was empowered to set aside the impugned order passed under S. 11. Despite delay in filing of the review petition, based on the specific denial of the petitioner on the existence of the arbitration agreement, the impugned order appointing an arbitrator was set aside and the matter was restored for disposal on merits.

BOMBAY HIGH COURT

PHONOGRAPHIC PERFORMANCE LIMITED VS STATE OF GOA & ORS.

A Writ Petition was filed seeking quashing of the circular dated 30.01.2024 notified by the State of Goa, which restricted collection of  royalties by copyright societies for the performance of musical works / recordings at religious ceremonies/festivals, weddings/marriage events etc. The Court set aside the circular as it improperly interfered with the enforcement and interpretation of S. 52(1)(za) of the Copyright Act, 1957, i.e., it wrongly interpreted the said provision to include weddings and other social events associated with them, within the exceptions to copyright infringement.

HIMACHAL PRADESH HIGH COURT

NOVENCO BUILDING & INDUSTRY V. XERO ENERGY ENGG. SOLUTIONS & ANR.

The Court, while allowing an application seeking rejection of plaint in a commercial suit due to non-compliance of S. 12A of the Commercial Courts Act, 2015, clarified that pre-institution mediation is mandatory in commercial suits, and that the Court is obliged to scrutinize the nature, subject matter and cause of action to affirm whether there is urgency to bypass the said mandate. The mere filing of an interim relief application is not sufficient. Held, Plaintiff failed to establish such urgency and the Plaint was rejected.

Significant Judgments

DELHI HIGH COURT

In a recent judgement, the High Court settled a dispute pending for over 20 years concerning the copyright and trademark rights of Lacoste’s “crocodile logo”, and its use by Crocodile International Pvt. Ltd.

Held, Crocodile International’s logo, without the wordmark, was deceptively similar and infringed Lacoste’s trademark. However, Lacoste’s claim for passing off was dismissed, as the company could not conclusively prove the reputation and goodwill of its trademarks in India at the relevant time. While the Court confirmed that Lacoste holds the copyright for its iconic crocodile logo, it dismissed the copyright infringement claim, stating that copyright protection is based on originality of depiction rather than novelty of concept. The Court also held that the 1983 Co-existence agreement between the parties, which Crocodile International relied on, was not applicable to India.

Accordingly, Crocodile International was directed to account for the profits made from the sale of goods under the disputed mark, and directed that Lacoste recovers its actual costs from Crocodile International.

DELHI HIGH COURT

An appeal against the refusal of BlackBerry’s patent application for ‘Administration of Wireless Systems’, was dismissed by the Court on the ground of non-patentability under S. 3(k) of the Patents Act, 1970. Held:

  • the core invention of Blackberry’s patent application was an algorithmic process governed by conditional logic and procedural steps, thereby falling under the exclusion criteria of S. 3(k), regardless of its technical contribution;
  • the technical contribution of the invention was assessed to be solely covering a complex sequence of instructions which are not entitled to patent in India.

52…Insofar as the patentability of inventions incorporating algorithms is concerned, if the invention relates purely to a set of instruction… without any substantial change in the hardware, such instructions … would not be entitled to patent protection in India.

DELHI HIGH COURT

The Court dismissed a petition filed by politician Dr. Shashi Tharoor under S. 482 of the Code of Criminal Procedure, challenging a summoning order for defamation under S. 500 of the Indian Penal Code. The case arose from a statement made by Tharoor at a Literature Festival, where he compared the Prime Minister to a “scorpion sitting on a Shivling.”

The Court held the statement to be prima facie defamatory, not only against the Prime Minister but also against his Party and its members. Tharoor’s arguments that the complainant, a Party leader, was not an “aggrieved person” under S. 199 CrPC, and that the Party was not a determinate and identifiable body, were rejected by the Court and it was clarified that a member of a well-defined group can file a defamation complaint on behalf of the group.

However, when challenged before the Supreme Court (SLP(Crl.) No.12360/2024); the apex Court issued notice and stayed the judgment passed by the Delhi High Court.

Meet the Picklers: Sneha Jain, Savni D. Endlaw, Snehima Jauhari, Saif Rahman Ansari, Kuber Mahajan, Disha Sharma, Srishti Dhoundiyal, Surabhi Pande, Aniruddh Bhatia, Mehr Sidhu, Rimjhim Tiwari and Ishi Singh.

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