IPR NEWS – WEEKLY UPDATES FROM 23rd OCT – 29th OCT

LIDL GREAT BRITAIN LIMITED AND ANOTHER v. TESCO STORES LIMITED AND ANOTHER

Attempting to resurrect a portion of its lawsuit against bargain retailer Lidl on October 25, Britain’s largest retailer Tesco said in court in London that its German-owned rival had filed for trademarks for a yellow circle against a blue backdrop in “bad faith”. In response to Lidl’s initial lawsuit, which claimed Tesco was attempting to “ride on (its) coat-tails” by adopting a logo of a yellow circle on a blue background to advertise its “Clubcard Prices” discount programme, Tesco filed a counterclaim against Lidl in 2021. Tesco stated that Lidl registered a trademark of its emblem without its name to support the trademark over its more commonly used logo. Tesco’s lawsuit was dismissed in June by a lower court for lack of good faith, but the supermarket’s attorneys said before the Court of Appeal in London that the public “had never seen the emblem without Lidl’s name.”

BROOKS SPORTS INC v. SPARC GROUP LLC

The running shoe division of Warren Buffett’s Berkshire Hathaway Inc (BRKa.N), Brooks, has settled a lawsuit that claimed Brooks Brothers was misleading customers by promoting sports apparel under the “Brooks” name but omitting the “Brothers” suffix. The lawsuit was dismissed on October 25 by U.S. District Judge Ricardo Martinez in Seattle, where Brooks is headquartered, after the companies, whose histories span more than a century, declared that the deal satisfied all claims and counterclaims.

OPTIS CELLUAR TECHNOLOGY LLC AND OTHERS v. APPLE RETAIL UK LIMITED AND OTHERS

In the most recent round in a protracted legal battle involving crucial telecommunications patents used in Apple products like the iPhone and iPad, Apple Inc. lost an appeal in a London court on October 27. The Court of Appeal found that Optis Cellular Technology LLC of Texas can prevent Apple from violating its patents, which are necessary for some technological standards, such as 4G, before a court has decided on acceptable terms of use. Judge Richard Arnold stated on Thursday that Apple merely needed to agree to take a global licence over the standard essential patents on terms that a court considered to be fair and reasonable in order to prevent an injunction on using the patents in England and Wales.

MR SANJAY CHADHA TRADING AS M/S EVEREADY TOOLS EMPORIUM v. UNION OF INDIA & ORS.

According to the Delhi High Court on October 27 stated that in addition to serving the fundamental purpose of identifying the source of goods, a trademark also serves the investment function of protecting the investments made by its owner in publicity and reputation-building. The brand now has a value that may be calculated in monetary terms, according to the bench. The court also stated that a trademark is a valuable asset despite being intangible. The court ruled that using a trademark that is identical to or confusingly similar to the senior mark will invariably dilute the senior mark and reduce its value. The Trade Marks Act further stated: “Therefore, the Trade Marks Act also extends protection to reputed trademarks and does not permit use of similar or deceptive trademarks even if they are not in respect of goods covered by the senior trademark, if their use is to take unfair advantage of or is detrimental to the distinctive character or repute of the registered senior trademark.”

GUJARAT COOPERATIVE MILK MARKETING FEDERATION LTD & ANR. v. MARUTI METALS & ANR.

In response to a trademark infringement lawsuit brought by the creators of the well-known dairy brand Amul, the Delhi High Court on October 28 ordered the removal of cookware being sold by a businessman under the name “Amul” from e-commerce sites. Maruti Metals, the maker of cookware and pressure cookers, was ordered by Justice Pratibha M. Singh to write to the e-commerce websites that are selling its items and request that their listings be taken down. Gujarat Cooperative Milk Marketing Federation Limited and Kaira District Cooperative Milk Producers’ Union Limited filed the lawsuit in an effort to prevent Maruti Metals from producing and marketing its products under the well-known trademark “AMUL,” which they claimed was confusingly similar to their registered trademark, which has been used since 1958 for milk and other goods.

FRANKFINN AVIATION SERVICES PRIVATE LIMITED v. TATA SIA AIRLINES LTD.

The Delhi High Court on October 28 has vacated its ex parte ad interim order against Tata Sia Airlines-owned Vistara’s promotional campaign “Fly Higher,” noting that the phrase “Fly High” is widely used in the aviation industry. The court immediately recognised that the airline was using the slogan “Fly Higher” in conjunction with its well-known emblem and trademark Vistara. The airline had launched the advertising campaign in 2018 as an extension of its motto “Fly The New Feeling.” The court observed that a “mark” and a “trademark” are separate under the law. The term must be able to distinguish the goods and services of one person from those of others, and it must be used or proposed to be used in relation to goods or services for indicating a connection, in the course of trade, between the goods or services, according to the court’s analysis of the pertinent provisions. The court declared that trademarks are “source identifiers,” instantaneously linking the owner of the good or service to the product, and are consequently intangible assets of the proprietors.

KANTARA MAKERS ARE RESTRAINED FROM PLAYING VARAHA ROOPAM SONG

On October 28, the producers of the Kannada super blockbuster film “Kantara” have been ordered by a Kerala court to refrain from using the song “Varaha Roopam” in theatres and on streaming services. The Kerala-based rock band “Thaikkudam Bridge” filed a lawsuit, alleging that “Varaha Roopam” had been lifted verbatim from its song “Navarasam,” and the Principal District Court in Kozhikode issued an ad-interim order in response. The plaintiff claimed that the similarities between the two songs were not merely coincidental or superficial, but rather substantial, and that this constituted intentional plagiarism that violated the rights protected by the Copyright Act of 1957.

ABC CORP.  v. PARTNERSHIP AND UNINCORPORATED ASSOCIATIONS

In a precedent-setting ruling published on Friday, October 28, the U.S. Court of Appeals for the Federal Circuit overturned the Northern District of Illinois’ award of a preliminary injunction against businesses who sold hoverboards under the Gyroor brand. The Federal Circuit determined that the district court erred in several ways in determining that the design patent owner plaintiffs had demonstrated a likelihood of success, including by applying the incorrect legal standard in meeting the likelihood of success burden and conducting the ordinary observer test while taking the Gyroor defendants’ asserted prior art into account.

OPTIS CELLULAR TECHNOLOGY LLC v. APPLE RETAIL UK LIMITED

Apple’s attempt to have a lower UK court’s injunction against it over its refusal to agree to a fair, reasonable, and non-discriminatory (FRAND) royalty rate for standard essential patents (SEPs) owned by Optis Cellular Technology dismissed by the England and Wales Court of Appeal, though the Court of Appeal urged standards development organisations to establish arbitration procedures for resolving disagreements over SEPs.

SINGH MANAGEMENT CO. v. SINGH MICHIGAN HOMES, LLC

In a decision published on October 26 in Singh Management Co. v. Singh Michigan Homes, LLC, the U.S. Court of Appeals for the Sixth Circuit upheld a preliminary injunction that forbade a real estate company founded following a family business dispute from simply adding the word “Michigan” to its name after an arbitration award forbade it from only using the family name in its advertising. Arguments that the district court improperly vacated the arbitration decision by imposing the preliminary injunction were rejected by the Sixth Circuit.