IPR NEWS – WEEKLY UPDATES FROM 21ST AUG – 26TH AUG
ALLAHABAD LAW AGENCY V. AMAZON RETAIL INDIA PVT. LTD. & ORS
The plaintiff is a book publishing company and had filed a lawsuit seeking permanent injunction against third party sellers in the e-commerce website of the defendant. The plaintiff alleged that pirated versions of the book, “the Law of Torts by Dr. R.K. Bangia”, was being sold in the e-commerce website by many sellers thereby committing copyright infringement. The plaintiff had claimed that the copyright of the book was bought by them from the author by an assignment deed executed in August, 1968 and after the death of the author, the royalty rights have transferred to the author’s legal heirs. The issue came to light after customers had complained about the bad quality of the book they had received from Amazon and the plaintiff to cross check the same had placed an order of the infringing book by defendants no 2,3,4 who had published the book verbatim, with no authorization from the plaintiff. The Delhi High Court on mere inspection had found that the defendant’s product is a copyright infringement and unauthorized adaption of Dr. Bangia’s book, whose sole rights to publish exists is with the plaintiff. The Court ordered an ex-parte ad- interim injunction against the defendants and fixed 5th September 2022 for next hearing.
AUSTIN NICHOLS & CO INC & ANR v. GWALIOR DISTILLERIES PRIVATE LTD
The plaintiff is the registered owner of the trademarks ROYAL STAG and SEAGRAM, and have been manufacturing and selling whiskey under the same name since the year 1995 and have obtained trademark registration internationally as well. The plaintiffs alleged that the defendant has committed trademark infringement by selling and manufacturing whiskey under the trademark ‘ROYALCHAMP’ which is deceptively similar to the plaintiff’s product and have also engraved the bottles with the SEAGRAM marks. The Delhi High Court after perusal of the case, ruled that the defendant product’s logo is identical and similar to that of the plaintiffs thereby causing confusion in minds of consumers and free ride on the brand value of the plaintiffs. The Court directed the defendant to pay Rs.20 Lakh as damages and cost to the suit and also held that the mere addition of ‘CHAMP’ instead of ‘STAG’ is not adequate to separate the marks and it is clearly a “colorable and slavish imitation”.
BIKRAMJEET SINGH BHULLAR VS YASH RAJ FILMS PRIVATE LIMITED
The plaintiff had claimed that the movie, “Shamshera” was a substantial reproduction of his literary work “Kabu naa chhadein khet” and a dishonest breach of confidence, thereby leading to the commission of copyright infringement. The movie was released in July 22, 2022 and was set to be released in OTT platform on August 19, 2022. The defendant pleaded that denying the release of the movie in the OTT platform will lead to huge and irreplaceable loss to them and that the plaintiff can seek monetary damages if the Court rules in favor of the plaintiff. The Delhi High Court after a thorough perusal of both the sides, adjudicated that to balance the interests of both the parties and taking into consideration the situation as a whole, it allowed the movie to be released on Amazon Prime on 23rd August 2022 subject to depositing Rs.1 Crore with the Registrar General of this Court by the defendant, by 22.08.2022. The money will be further invested in a nationalized bank for three months in a fixed deposit with the accrual of interest.
GM MODULAR PVT. LTD. VS SYSKA LED LIGHTS PVT. LTD.
The plaintiff is involved in the manufacturing of electrical appliances like switches, LED lights and other components had filed a design infringement case of their product, a unique LED surface light, which was designed and registered in 2016, against the defendant ‘SYSKA’. The plaintiff alleged that the design of the defendant’s product is similar to that of the plaintiff’s design by showing pictorial comparison and pleaded the Court to restrain the defendant from selling the product with the infringing design. The defendant contended that the plaintiff had obtained trademark registration of the product and is not liable for protection as ‘design’ under the Designs Act, 2000. Initially the suit was filed before the Court of the learned District Judge who passed an ex parte ad-interim order on 12.2.2021, directing the defendant to refrain from manufacturing and selling the products having similar design to that of the plaintiff’s product until further order and subsequently the same was transferred to the Delhi High Court.
The Delhi High Court opinioned that the defendant had not showed any evidence to refute the allegation of similar design by the plaintiff but supported the defendant’s contention that a registered design per se is used as a trademark, it can’t be registered as a design and is liable for cancellation. Having taken both the sides into consideration, the Court ruled that the a question of law on the validity of the registration of the design granted to the plaintiff is yet to be decided and therefore lifted the interim injunction given on 12.2.2021 and to protect the interest of plaintiff, the defendant has to file the sales of the product with the infringing design, on affidavit, on half yearly basis during the pendency of the suit.
DHANI AGGARWAL VS MAHESH YADAV & ORS
The plaintiff who is an established, registered brand owner and a prior user of the trademark ‘RAMMA’ and ‘RAMMA MUNAKKA’ filed a trademark infringement by the defendant for using the name ‘RAMU’, which is deceptively similar to that of the plaintiff before the learned Additional District Judge (ADJ). The Learned ADJ passed an order on 31.8.2019 stating that the marks are not phonetically similar but the label/packaging is similar to the plaintiff, therefore ordered the defendant to continue to use the trademark ‘RTC RAMAA’ but with a different label and color combination. Aggrieved by this order, the plaintiff appealed to the Delhi High Court, which reversed the decision of the learned ADJ, that there exists no phonetic similarity between the marks and set aside the order made by the ADJ. The High Court held that the learned ADJ has made an error in law by using the test of comparison of marks side-by-side and in fact the two marks are similar enough to cause confusion in minds of unwary consumer. Further the Court held that the defendants are restrained by an ad-interim injunction from selling, manufacturing their product similar to that of the plaintiff during the pendency of the suit.
NIKE INC V ADIDAS
The famous shoe brands in the world Nike and Adidas have put an end to their patent infringement litigations over knit running shoes and mobile tracking technology, by entering into a confidential agreement. Initially Nike sued Adidas for patent infringement over its lightweight Flyknit technology before the US International Trade Commission (ITC) and subsequently Adidas filed a suit in Texas against Nike that it’s mobile fitness tracking technology and exercise apps infringe Adidas’s patents. The case is now dismissed by the Court because of the confidential agreement entered in between the two parties.
THE INDIAN ARMY ISSUES WARNING AGAINST SALE OF COMBAT LIKE UNIFORMS
The Northern Command of the Indian Army along with the Udhampur policemen have warned the retailers through an awareness campaign to not sell combat pattern uniform without authorization. This is done in view of protecting national security and preventing unauthorized selling of the new combat dress released by the Army in January. The Indian Army had applied for sole ownership on the pattern and design over the new combat dress before the Controller General of Patents, Designs and Trade Marks and the IPR process is expected to kick start soon. Once the IPR process and rights are finalized, then the Army can take action against unauthorized sellers selling similar pattern uniforms.
IPR CERTIFICATION FOR SEED VARIETIES BY THE AGRICULTURE MINISTRY
The Protection of Plant Varieties and Farmers’ Right Authority (PPVFRA) which is under the Ministry of Agriculture is working towards securing IPR certification of new seed varieties to protect the rights of plant breeders. This certification is done by way of field testing and assessment of 11,000 new seed varieties, legumes, spices, vegetables, to find out their uniqueness. The chairman of PPVFRA said that more than 4000 certificates have been issued to both private and public sectors for purposes of research and innovation.
LA DART V. SWIFT
The plaintiff who wrote the poetry book ‘Lover’ has filed a copyright infringement against Taylor Swift for $1 million worth of damages including actual damages and profits before the Tennessee Federal Court. The plaintiff alleges that the Taylor’s ‘Lover’ songbook which was accompanying the pop album, has been copied from the poetry work of the plaintiff which was published a decade ago and registered with the U.S.Copyright Office in February 2010. The plaintiff also contends that the styling and design of both the books are also similar and the plaintiff has used her creative design elements without any authorization.
ECONOMIC ADVISORY COUNCIL-PM REPORT SUGGESTIONS ON IP POLICY
The Economic Advisory Council-PM report advices the government to consider the enactment of new legislation which are less stringent to create patent rights for ‘jugaad’ innovations and incremental innovation through utility patents. This will help in steering the incremental innovation done by startups and small scale enterprises and the innovation done by Atal Tinkering Labs and Atal Incubation Centers under the Atal Innovation Mission. By using utility patent mechanism which doesn’t emphasize on strict novelty aspect, 3 million patents have been filed across the world in 2020. The report emphasized that the new legislation which focuses on utility patents should be separate from the already functioning patent system. Apart from this the report also suggested to increase the workforce in the Office of Controller General of Patents, Designs & Trade Marks, and from 860 TO 2800 workers within the span of 2 years. Adequate autonomy for decisions related to finance and manpower recruitment must be extended to the Office of Controller General of Patents, Designs & Trade Marks to facilitate ease in registration process and comply with global standards. Further suggestions regarding outsourcing of administrative process, changes in filing system and discarding cumbersome procedural formalities in patent applications have also been dealt in this report.