Home / / Bulletin 7 | Nov 2023

Bulletin 7 | Nov 2023

Topical Updates: To IP & Beyond

Snapshots

An appeal filed by domain name registrars (DNRs) against the Joint Registrar’s order, which closed their right to file written statements due to delay, was allowed considering the unique circumstances of the case. In this suit filed by Flipkart against infringing domain names, several domain names and their DNRs had been impleaded during the pendency of the suit. The Court counted the statutory limit of 120 days for filing a WS in a commercial suit, from the date of filing of the amended memo impleading the said DNRs as parties, and allowed the written statements to be taken on record subject to costs.

DELHI HIGH COURT

FSN E-COMMERCE VENTURES LTD. & ANR V. PINTU KUMAR YADAV & ANR.

Applying the ‘Triple Identity Test’ from Ahmed Oomerbhoy v. Gautam Tank, i.e., use of a deceptively similar mark in relation to identical goods/products being made available through the same trade channels, the Court determined infringement of the Plaintiff’s mark ‘NYKAA’ by the Defendants’ use of the deceptively similar ‘OYKAA’ .

Citing Laxmikant V. Patel v. Chetanbhai Shah, an immediate injunction was granted, restraining the Defendants from using ‘OYKAA’ or any similar mark. The court also directed suspension of the Defendant’s website www.oykaa.com.

The Court vacated the ad interim injunction against the Defendants restraining them from making available their Fantasy Sports Mobile App, ‘MYFAB11’ and infringing the Plaintiff’s copyright in the stock trading feature of its Fantasy Sports App. The Plaintiffs’ claim of ‘originality’ in the feature was rejected due to the prior existence of third-party gaming apps with the same feature, with emphasis laid on the fact that copyright protection does not vest in ideas, but their expressions. Further, the Court prima facie found no similarity between the User Interface of the two Apps, thereby rejecting the Plaintiff’s claim for copyright infringement.

TELECOM DISPUTES SETTLEMENT & APPELLATE TRIBUNAL, NEW DELHI

ALL INDIA DIGITAL CABLE FEDERATION V. STAR INDIA PVT. LTD.

In a seminal decision, the Telecom Disputes Settlement & Appellate Tribunal held that prima facie, OTT platforms do not qualify as a ‘distribution platform’ under S. 2(r) of the Telecommunication Regulations, 2017. The Tribunal clarified that OTT platforms are distinct from TV channels, not requiring a license from the Central Government, and fall beyond the purview of the TRAI Act. The TDSAT denied the Petitioner interim relief, seeking to restrain the Respondent from offering the Star Sports channel for free on its OTT App, or providing it to the Petitioner free of charge as well.

DELHI HIGH COURT

USTAD FAIYAZ WASIFUDDIN DAGAR V. A.R. RAHMAN & ORS.

The Plaintiff, a musician from a renowned vocalists’ family, sought an injunction against the song “Veera Raj Veera” in the film “Ponniyin Selvan – 2,” alleging infringement of copyright in “Shiva Stuti” composed by the Plaintiff’s father and uncle. The Plaintiff claimed that the impugned work had identical “taal” and beat, despite having differing lyrics. Held, S. 2(p) of the Copyright Act provides that there can be an infringement of copyright in a musical work even when the words, lyrics and action are dissimilar. Defendant No.1 was thus directed to furnish the raw recording of “Veera Raj Veera, in order to decide the prayer for ad-interim relief.”

Significant Judgments

DELHI HIGH COURT

The Court decided the question – whether writ petitions challenging the orders passed by the IPAB before its abolition, shall be adjudicated by a Single Judge of the Intellectual Property Division (IPD), in the affirmative. The Court considered inter alia Rule 4 read with Rule 2(i) and 2(l) of the IPD Rules to hold  that writ petitions challenging the orders passed by the IPAB, fall within the ambit of original proceedings relating to IPR subject matter, and are thus statutorily to be decided by a Single Judge. The Court further held that the exceptions carved out in the IPD rules, i.e., circumstances under which matters are to be heard by a Division Bench, as well as the Delhi High Court Rules, do not apply to such writ petitions. The Court further clarified –

“19. (ix) The position being thus clear from the Rules, any hesitation or refusal, by the Single Judge, to hear these petitions, short of recusal, would amount to abdication of the judicial function vested in him.” 

DELHI HIGH COURT

The Division Bench, on reference by a Single Judge who held a conflicting view from a coordinate Bench of the High Court, provided clarification on the question / scope of Divisional Applications under section 16 of the Patents Act, 1970. The Division Bench affirmed the maintainability of a Divisional application when the application discloses plurality of inventions not only in claims, as previously acknowledged, but also in the complete specification.

The court emphasized that the filing of a Divisional application, whether suo moto by the applicant or in response to objections from the Controller, must adhere to a consistent criteria. In either scenario, the Divisional application’s maintainability is subject to disclosure of plurality of inventions in the provisional or complete specification already filed.

The Court also held that the doctrine of “what is not claimed is disclaimed” is relevant for infringement analysis and cannot be imputed for purposes of discerning the scope of Sec. 16.

32. We hold that a Divisional Application moved in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed…

DELHI HIGH COURT

In a suit for disparagement filed by Tata against Puro, the Court denied Tata’s prayer to restrain Puro’s TV advertisement of its pink rock salt, holding that the commercial was within the acceptable parameters of comparative advertising, i.e., extolling one’s product without denigrating others. The Court, while refusing Tata any interlocutory injunctive relief, further highlighted that Tata also advertised its Himalayan Pink Salt product as natural and healthy and suppressed the said fact.

69… Extolling one’s product, even if it borders on exaggeration, is perfectly permissible in comparative advertising and, so long as it does not contain serious representations of qualitative or quantitative facts, does not even have to pass the test of truth…

Accordingly, an ex-parte injunction was passed, granting liberty to the Plaintiffs to communicate the details of the websites (discovered to be illegally streaming the matches during the currency of the World Cup) to the ISPs, to ensure “real time” blocking of the infringing websites.

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