IP NEWS UPDATES -MAY 2022
USPTO To Begin Issuing Electronic Trademark Registration Certificates
On 2nd May, the USPTO announced via federal notice that, on June 7, 2022, the United States Patent and Trademark Office (USPTO) will start issuing electronic certificates of trademark registration. The electronic registration certificate will serve as the official registration certificate once it is issued. Trademark owners will have the choice to obtain paper “presentation” copies when the USPTO starts distributing electronic registration certificates, although doing so will carry a price. The ability to purchase certified copies of their trademark registrations will also be available.
The Supreme Court’s Effort to Resolve the Date on Section 63 of the Copyright Act
The Supreme Court ruled in M/s Knit Pro International vs. The State of NCT of Delhi & Anr on May 20 that violations of Section 63 of the Copyright Act, 1957 are crimes that are both cognizable and non-bailable. This effectively implies that without a warrant, the police can lodge a FIR and make an arrest of anybody who is accused of (a) intentionally committing or aiding copyright infringement; or (b) knowingly breaching any other rights given under the Act. Additionally, the person(s) arrested in this manner cannot be released from custody as a matter of right; instead, they must apply for bail before a court of law to have it considered in accordance with Sections 437 and 439 of the CrPC, 1973, as well as the provision for anticipatory bail, i.e., Section 438 of the Code of Criminal Procedure (CrPC).
Supreme Court provides relief for Amitabh Bachchan’s ‘Jhund’
In a recent ruling on May 5th, the Supreme Court of India authorized the broadcast of the feature film “Jhund,” which stars Amitabh Bachchan among others, via OTT platforms in response to a continuing copyright infringement claim. Nandi China Kumar, a director based in Hyderabad, brought the lawsuit for copyright infringement after previously trying to block the theatrical distribution of “Jhund” on related grounds. However, the Supreme Court rejected the petitioner’s arguments and ruled that the movie’s OTT platform streaming continue.
Bengaluru Police files FIR against websites pirating content
TamilMV, Tamilblasters, Tamilrockers, and PikaShowTV are four dubious websites that the Bengaluru Police has filed a FIR against for allegedly enabling the piracy of protected content. Disney Star, a major player in digital media, filed the complaint upon which the FIR was based. Section 420 of the Indian Penal Code, Section 66 of the Information Technology Act, and Sections 63 and 65 of the Copyright Act are all referenced in the FIR filed by the Bengaluru Cyber Police. There have reportedly been 62 million visitors to the disputed websites, which are involved in widespread piracy and illegal distribution of content in Tamil, Telugu, and Malayalam languages.
Kanye West sued for copyright infringement
Kanye West is being sued by a Texas pastor for utilizing one of his sermons in “Come to Life,” a popular song from his most recent album “Donda.” The hip-hop superstar is accused of using Bishop David Paul Moten’s sermons without his consent in the case, which names Universal Music Group, Def Jam Recordings, G.O.O.D. Music, and West as defendants. The 57-year-old preacher claims that he did not give the singer permission to utilize portions of his sermon.
Google to sign licensing agreements with Indian publishers
Following prior licensing agreements with publishers, news organizations, and content providers, Google is now chasing Indian publishers to make such material available on its platform. Given the importance of India as a market, Google intends to enter many license agreements with Indian publishers and compensate the publishers for utilizing their material and content. Furthermore, in response to earlier concerns raised by the government about the level of immunity afforded to social media platforms for the content they publish, Google has declared that it is aware of the regulations established by the government to control such online content. The search engine giant acknowledged that it will follow these restrictions and will discuss them with the government for further clarity in order to guarantee that such recommendations are properly implemented.
China ratifies the Hague Agreement for the International Registration of Industrial Designs
The Hague Agreement Concerning the International Registration of Industrial Designs became effective in China on May 5, 2022, according to the CNIPA. As a result, Chinese industrial designers will now be able to efficiently and affordably submit applications for design registration and protection under the Hague System overseas. At the same time, holders of foreign rights may now use the Hague System to apply for design registration in China. Users can register on the system as of May 5, 2022, and applicants can manage the design-related worldwide application business.
Amazon Seller Services Pvt. Ltd. & Anr. v. Amazonbuys.in & Ors. on May 26th, 2022
The Delhi High Court awarded Amazon Seller Services Private Limited an ex-parte ad interim injunction, preventing several fraudulent websites from misusing its distinctive brand ‘AMAZON’ to deceive the public. It further asked the both the Ministry of Department of Telecommunications and the Ministry of Electronics and Information Technology to send notices instructing internet and telecom service providers to prohibit access to the Rogue Defendants’ domains listed by the Plaintiffs in the plaint. It ruled that practices that cause financial harm to innocent and unsuspecting members of the public must be prohibited.
The trademark squabble between Coke Studio and Cook Studio
The Delhi High Court has directed the continuing dispute between the Chawla Group and the Coca Cola Company to mediation. Accordingly both parties will be directed to the Delhi High Court Mediation and Conciliation Centre on May 31, 2022. The plaintiff engaged in blogging and producing video films related to cooking claimed that the defendants had sent letters saying that the defendants owned the registered trademark ‘COKE STUDIO’ and use of the mark COOK STUDIO infringed their mark. The Plaintiff’s arguments included that there were clear differences in both the parties’ marks and logos and that the terms COOK and STUDIO were generic.
The Delhi High Court fines ‘Sholay.com’ Rs 25 lakh.
In Sholay Media Entertainment & Anr. vs. Yogesh Patel and Ors., Justice Pratibha M Singh ordered ₹25 lakh in damages on the website Sholay.com for violating the iconic movie Sholay’s trademark. “Certain films surpass the borders of merely being regular words, and the title of the film ‘SHOLAY’ is one of them,” said Justice Pratibha M Singh. Titles and films are capable of being recognized under trademark law, and ‘SHOLAY’ is a prime example in India.” The Court went on to say, “The defendants’ use of the mark ‘SHOLAY’ was clearly mala fide and dishonest, owing to the use of the infringing logo, designs, selling of the DVD of the film ‘SHOLAY’ on the Defendants’ website, and so on.”
A tasty tussle between Karim’s and Kareem’s
The Delhi High Court has given temporary relief to ‘Karim,’ Delhi’s popular restaurant business restraining Kareem’s from opening any further outlets under identical or similar marks. The Court was of the opinion that a perusal of the records shows that Plaintiff is the prior owner and user of the marks “KARIM/KARIM’S/KAREEM” which was being used in relation to Mughlai food and North Indian delicacies and use of the nearly identical mark by the Defendant would result in passing off, confusion and deception. Thus, it was ordered that the Defendant had to include a public disclaimer stating that it is in no way affiliated to or associated with the Plaintiff or its entities. The High Court was perplexed as to how the Trademark Registry permitted the Defendants’ application. The hearing will take place in the first week of August.
HT Media Limited & Anr. v. www.Hindustantimes.Tech & Anr.
The Delhi High Court, on 26th May, has barred a rogue website, www.hindustantimes.tech, from posting any news item, citing a violation of Hindustan Media’s intellectual property rights. The Court stated, “There is no question in the Court’s opinion that Defendant No.1 aims to encash the Plaintiffs’ goodwill in the mark/name ‘Hindustan Times’ and also promote its website to the Indian audience.” According to Justice Pratibha M Singh, “the mark ‘Hindustan Times’ is the Plaintiffs’ registered trademark.” The Plaintiffs has a global audience as well as the repute of one of India’s oldest newspapers. The way in which the mark/name ‘Hindustan Times’ has been entirely misused leaves no question in the Court’s mind that Defendant No.1 intends to exploit the abovementioned mark as well as the material which the Plaintiffs post on their website.”
License mandatory to play music at weddings: Punjab and Haryana High Court
A notice from the Registrar of Copyrights stating that no permission or royalties would need to be obtained in order to use any sound recordings during religious ceremonies, including marriages, was recently overturned by the High Court of Punjab and Haryana. The notice in question was published in accordance with Section 52(1)(za) of the Copyright Act of 1957, which defined “fair use” as the use of copyrighted works in connection with religious activities. As a result, the notice claimed that such use of sound recordings did not violate copyright. The High Court noted that although there was a religious subtext, marriage in and of itself is distinct from the events associated with marriage. As a result, the High Court determined that the current tariff plan would apply to the playing of sound recordings at these events.
Delhi High Court Awards ₹10 Lakh Damages To Blue Heaven Cosmetics For Trademark Infringement
Blue Heaven filed a lawsuit in order to get a permanent injunction against the infringement of its registered trade mark, and Justice Pratibha M. Singh presided over the proceedings. The Court noted that the packaging of the plaintiff’s and defendant’s competing goods was identical. This Court additionally noted that the defendant replicated a number of characteristics, such as letter style, colour scheme, where various features were placed, packaging’s colour scheme, etc. In light of this, the Court noted that after physically inspecting the items, it was clear that the defendant’s offering was nothing more than a copy of the plaintiff’s product. As a result, the defendant was ordered to pay damages of ₹10 lakh.
Global patent license agreement signed between Huawei and SolarEdge
Israeli photovoltaics firm SolarEdge Technologies and Chinese telecom giant Huawei announced, on May 20, that they had agreed to a global patent licensing agreement. Each party is permitted to utilize the patented technology of the other side under the terms of the agreement, which is based on appreciation of the firms’ total innovative capabilities. A cross-license covering product-related patents for each company’s products is also included in the deal, along with a number of additional rights. Additionally, the settlement of ongoing patent disputes between the parties and the conclusion of Huawei and SolarEdge’s legal disputes in Germany and China will result from the agreement.
Exchange22 v. MyFab11
In its continuing copyright dispute with another game, “MyFab11,” “Exchange22,” received a favourable ruling from the Delhi High Court. Hulum Entertainment Pvt. Ltd., the creator of Exchange22, in the complaint, claimed that MyFab11 had plagiarized Exchange22’s complete design, its gaming interface, its front-end gaming statistics, and its advertising and promotional materials. In addition to preventing users from downloading the software through MyFab11’s website, app, or any other channel, the Delhi High Court ordered all app shops to remove the infringing programme from their lists.
Delhi High Court Grants Interim Injunction in favour of Atlantis Resorts in Trademark Infringement Suit
The Delhi High Court recently granted an injunction against Vokas Aggarwal using the mark “Atlantis Park Ballroom” in relation to a banquet hall in favour of Kerzner International, a business that owns the chain of Atlantis resorts in Dubai, the Bahamas, and China. Even though the resort is not located in India, Justice Prathiba M. Singh said that, “Plaintiff’s mark ‘ATLANTIS’, owing to the unique nature of the resorts which are run by it have, prima facie, gained enormous global reputation, especially in the Indian subcontinent.”
Pinterest wins copyright infringement lawsuit in the US
In a recent ruling by the United States District Court for the Northern District of California, a complaint brought by New Jersey-based photographer Harold Davis claimed that the social media network Pinterest had violated his copyright. Because “pins” including his copyrighted images were shown on the Pinterest application alongside other pins containing sponsored adverts, the plaintiff claimed that Pinterest had violated his copyright. Additionally, he claimed that Pinterest was making a sizable profit by advertising his photographs to other users via push notifications and emails. The US Digital Millennium Copyright Act (DMCA), which protects platforms and intermediaries from accusations of copyright infringement, was found to be adequate protection for Pinterest since it found that it had not in any way benefited from the use of the Plaintiff’s photos.
Marvel and Stan Lee Universe sign license agreement
Stan Lee’s name and likeness will be used in future Marvel productions according to a 20-year licensing agreement that Marvel Studios has struck with the Stan Lee Universe. Due to his cameo appearances in various Marvel movies over the past several years, Stan Lee has gained popularity and widespread recognition among the younger generation of Marvel fans. Stan Lee’s name, likeness, voice, signature, photographs, existing video, and existing audio recordings will all be used by Marvel as part of this license agreement for “films and television productions, as well as Disney theme parks, other “experiences,” and merchandising.” The agreement also covered the exclusive use of Lee’s name, voice, likeness, and signature in theme parks, cruise lines, and park products. ‘
Ad Interim Ex-Parte Injunction Awarded in Favor of Law Firm Against Use of Deceptively Similar Mark by Delhi High Court
In a case involving trademark infringement, Sanjeev Narula, J., issued an injunction to the law firm “Singh & Singh.” The infringing marks were glaringly identical, were being used for identical services, and were being utilized on an identical class of clients or consumers, according to the bench’s opinion. According to the court, the defendant’s use of an identical mark or name in a deceptively similar colour scheme on online platforms for offering legal services was dangerous and did not seem to be legitimate. The court found that the plaintiffs had demonstrated a prima facie case, a favourable balance of convenience, and the likelihood that they would suffer an irreparable damage if the injunction was denied.
Delhi High Court rules in favour of Pepsico’s complaint over a liquor company using their trademark “Mirinda”
A recent ex parte injunction in favour of Pepsico against a liquor business that is purportedly exploiting their brand, Mirinda, was awarded by the Delhi High Court. As the balance of convenience is in their favour, a bench of Justice Jyoti Singh found that Pepsico had effectively established a prima facie case for an ad-interim injunction. In the end, it was basically asserted that the defendants’ use of the mark constitutes passing off since it implies to consumers that the defendants’ products have a connection to or are licensed by the plaintiffs, damages the plaintiffs’ common law rights, and is intended to cause confusion. In light of the above, the Court determined that this was an appropriate situation for the issuance of an ex parte ad interim injunction and barred the defendants from using the mark going forward.
Delhi High Court prohibits Faces Cosmetics from selling products using the “Velvette Matte” trademark
In response to a trademark infringement lawsuit brought by Colorbar Cosmetics, the Delhi High Court has ordered a Canadian brand, Faces Cosmetics, to stop marketing and selling their goods as “Velvette Matte.” In order to prevent Faces Cosmetics India Private Ltd. from producing, offering for sale, or using the mark “VELVET MATTE” or any other mark that is deceptively similar to or identical to the Plaintiff’s mark “VELVET MATTE,” Justice Pratibha M. Singh granted an ex parte ad interim injunction in favour of Colorbar Cosmetics Private Limited.
US Court sentences former Coca- Cola employee for stealing trade secrets:
The ex- employee who is a chemical engineer has been sentenced to 14 years over stealing and possessing important trade secrets of the company. The US Department of Justice states that she accessed confidential information about BPA-free internal coatings of beverage cans for which the development charges amounted to nearly $120 million.
Tesla initiates legal action against former engineer accused of accessing and transferring trade secret:
The tech giant has sued its former employee claiming that the engineer has copied secret data outside the official scope into his personal system. According to the company’s policies, employees are barred from moving confidential information from official workspace to personal systems. The company stated that it was extremely vigilant about its trade secrets as providing access to outsiders or competitors would have various adverse results including possible reverse engineering of its technologies. The company seeks an injunction against the defendant passing on Tesla’s trade secrets, return of all Tesla equipment, tangible materials, and information that remained in his possession.
Qualcomm settles its trade secret misappropriation lawsuit:
The case of Qualcomm Technologies Inc v. Kathuria before the U.S. District Court for the Southern District of California has concluded in a settlement. The company had sued it former employee claiming that he had stolen confidential information prior to acceptance of job with the company’s competitor. The company had accused the employee of stealing information in relation to chip software including core architecture and design modules. The terms of the settlement are unknown but the company has announced that the parties will file an agreed-to permanent injunction and move to dismiss the case.