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Bulletin 9 | Jan 2024

Topical Updates: To IP & Beyond

Snapshots

The Plaintiff’s interim injunction application against the release of the Defendant’s film “Shamshera” on OTT platforms, was dismissed as the Plaintiff failed to establish substantial similarity of the film with its script ‘Kabu na chhadein Khet’. The Court relied on the R.G. Anand case to reiterate that no copyright subsists in an idea and further observed that principles, themes or historical / legendary facts being common property, cannot be monopolized by any particular person.

In setting aside the Trial Court’s order acquitting the Respondent in a complaint filed under S. 138, Negotiable Instruments Act, 1881, the High Court held:

  1. An issue that is not raised during the cross-examination stage is deemed to remain unrebutted and cannot be the sole reason for dismissal of the complaint.
  2. Non-filing of certificate under S. 65B, Indian Evidence Act, 1872 in support of tracking reports to demonstrate service, is a curable defect and such filing may be permitted at a later stage; is not fatal to the complaint.

Delhi High Court set aside an order of the Controller of Patent whereby a patent application was refused in an “arbitrary and whimsical” manner, and remanded the matter for fresh consideration. The order was passed after an inordinate delay of 4 years post oral hearing and without affording due opportunity to the applicant under Section 8(2) of the Patents Act, to respond in relation to information sought by the Controller.

Held, orders by the Controller post oral hearings are to be passed within six months to prevent undue delays.

DELHI HIGH COURT

NOVEX COMMUNICATION PRIVATE LTD. V. RSVK RESATAURANT PRIVATED LIMITED (& CONNECTED MATTERS)

In a copyright infringement suit, an ad interim order was passed restraining the  Defendants (restaurant owners) from playing the Plaintiff’s copyrighted songs on their premises, without a license from the Plaintiff. Relying on Phonographic Performance Limited v. Canvas Communication, the Court rejected the Defendants’ argument under S. 33 of the Copyright Act. Held, by virtue of S. 30 of the Act, a copyright holder (not being a registered copyright society), may insist upon a license before others exploit their work.

The Apex Court recently upheld the National Company Law Appellate Tribunal’s ruling on (NCLAT) maintainability of an application under S. 7 of the IBC. The NCLAT’s order had held that a S.7 application seeking ‘Joint’ Corporate Insolvency Resolution Process (CIRP) of separate corporate entities in a shared real estate project, is maintainable. Further, the requirement of minimum 100 allottees is to be met at the date of filing of the application and that CIRP can commence even if claims of certain allottees are time barred or less than INR 1 Crore.

Significant Judgments

KONINKLIJKE PHILIPS N.V V. OPLUS MOBITECH INDIA PVT. LTD. & ORS.

DELHI HIGH COURT

In a SEP litigation filed by Philips, the Delhi High Court directed the defendants to deposit Rs.53.25 crores as a pro-tem measure, while awaiting an interim injunction.

Citing Huawei Technologies v ZTE Corp., Intex Technologies v. Ericsson, Xiaomi Technology v. Ericsson, Nokia Technologies v. Oppo, the court emphasized that:

  1. implementers are required to provide pro-tem security during the stage of negotiations, i.e. even prior to initiation of litigation.
  2. an implementer has no right in silence or inaction at the stage of negotiation.
  3. pro-tem precedes ad-interim stage and does not entail arguments on merits.
  4. pro-tem security order cannot be likened to an injunction.
  5. Court in exercise of its inherent power under Section 151 CPC, as an interim measure, can pass a pro-tem order for balancing the equities with a view to aid a party.
25…This Court is empowered to pass a pro-tem deposit order without delving into the four-fold test required to be met at the time of grant of interim injunction…

DELHI HIGH COURT

The Court granted a permanent injunction restraining the Defendant from reusing the Plaintiff’s ‘DEVANS’ embossed glass bottles for selling its own ‘COX’ beer, deeming it an infringement of the Plaintiff’s trademark/design rights. The Defendant claimed inadvertent use of the bottles after purchasing them from scrap dealers but argued that there is no bar against using such recycled bottles. The Court reiterated the settled position of law and imposed a Rs. 2 Lakhs cost on the Defendant for unnecessarily contesting the matter.

20. The legal position is thus settled that reusing of third party branded bottles would not be permissible. In fact, the use of such bottles, which have name ‘DEVANS’ embossed on it, could create an impression to the consumer that the ‘COX’ beer sold by the Defendant also originates from the Plaintiff’s stable of products.

DELHI HIGH COURT

The Single Judge’s order whereby the use of the mark ‘MakeMyTrip’ as a keyword in the Google Ads program was injuncted, was set aside. Held, following provisions of Trade Marks Act, 1999 (Act) had been erroneously applied:

  1. 29(4) – both Booking.com and Makemytrip provided similar services.
  2. 29(8) – use of the trade marks as keywords by competitors, without any confusion or deceit did not per se amount to infringement.
  3. 29(7) – use of the impugned keywords could not be construed as applying the registered trade mark to any material intended to be used for labelling or packing goods etc.,
  4. The presumption of confusion under S. 29 (3) of the Act is rebuttable based on the material on record. Further, on the aspect of granting injunction it was held:
It is erroneous to suggest that in cases where a trademark, which is deceptively similar, is used in connection with similar goods and services, an injunction must necessarily follow.
Meet the Picklers: Sneha Jain, Savni D. Endlaw, Snehima Jauhari, Kuber Mahajan, Saif Rahman Ansari and Srishti Dhoundiyal.
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