Monthly Roundup: Key IP Cases reported in March 2023

Through this post we intend to cover important cases relating to Trademarks, Patents, Designs, Copyrights, Consumer and Accessibility Laws including decisions on registrations, infringement issues, rectification applications and deceptively similar trademarks decided in the month of March, 2023. We hope that these cases provide helpful insights into how the Indian Judiciary is dealing with IP-related matters.

Trademarks Cases

Dabur Wins Injunction for HONITUS Cough Remedies

The Plaintiff, Dabur India Pvt. Ltd. is the largest manufacturer of ayurvedic medicines and wellness/healthcare products in India and is the largest company in the organized sector for ayurvedic products. It owned registrations for the trade dress/labels/packaging of the cough syrup ‘HONITUS’. Dabur filed applications for interim injunctions against Good Luck Ayurveda Pvt. Ltd. and Vibcare Pharma Pvt. Ltd. in two separate suits.
The Delhi High Court in both cases found that the packaging and trade dress of MADHU JOSHANDA AYURVEDIC COUGH REMEDY and NURACUFF-AYURVEDIC MEDICINE FOR COUGH RELIEF were identical and deceptively similar to that of HONITUS. It held that Dabur had established a prima facie case of infringement of trademark and copyright against the defendants in each case. As the balance of convenience was in favour of Dabur, the Court granted the interim injunctions and restrained the respective defendants from using any trademark or trade dress which was identical, deceptively similar or confusingly similar to the Plaintiff’s registered trademark HONITUS or bearing its well-known registered trade dress/label until further orders.
1.   Dabur India Ltd. Vs. Good Luck Ayurveda Pvt. Ltd.: 
2.   Dabur India Ltd. Vs. Vibcare Pharma Pvt Ltd:

Stricter Test of Confusion in Pharma Cases: Bombay High Court Orders Removal of “OFLOMAC” Trademark

The petitioner, Macleods Pharmaceuticals Limited, challenged the order passed by the Intellectual Property Appellate Board, Chennai (Respondent-2), which allowed a Rectification application filed by Sun Pharmaceutical Ltd (Respondent-4) to cancel Macleods’ registered trademark OFLOMAC.
The Bombay High Court considered various principles set out by the Apex court in its judgments, and agreed with the decision of the IPAB. The Court held that the rectification was in the interest of the general public as the marks were concerned with medicinal/pharmaceutical products and the decision was not without jurisdiction or in excess of its jurisdiction as it was passed after giving full opportunity to both the parties.

The Court upheld the view of IPAB that the competing marks were phonetically deceptively similar, and a margin had to be given for imperfect or slurred pronunciation of the marks, as it could lead to confusion, deception and usher disastrous effects on the health of the public. It was held that a stricter test should be applied while arriving at a conclusion with respect to the similarity and confusion of pharmaceutical or medicinal products, and the point of view of an ordinary common man of average intelligence should be considered instead of a specialised medical practitioner in judging the issue.
Further, the Court found that Macleods was unable to establish the actual use of its OFLOMAC mark prior to Sun Pharma’s use of its OFROMAX mark, and/or honest and concurrent use and therefore was not entitled to protection under Section 34 and/or Section 12 of the Trademarks Act.
Source: Macleods Pharmaceuticals … vs Union Of India & Ors.

Delhi High Court Upholds Right to Expand Product Range, Allows Use of INDIA GATE Mark for Dalia.

The plaintiff Krbl Limited was a market leader in the business of processing, distribution, and sale of rice under the trademark “INDIA GATE”. It had acquired rights to the mark through registration and an assignment deed from the predecessors who had been using the mark since 1979, and the Plaintiff itself had been using the mark continuously since 1993. The plaintiff submitted that the defendant’s act of selling dalia under the mark “INDIA GATE” was infringing upon the plaintiff’s rights. The Defendant submitted that it was the prior user of the INDIA GATE mark in respect of various wheat products, and relied on a consent order between the two parties. The Defendant claimed a right to expand its range of products, as ‘dalia’ was an allied and cognate product of ‘atta’.
The Delhi High Court agreed with the contentions of the defendant, and relying upon the consent order, passed an interim order permitting the defendant to sell ‘dalia’ bearing the mark in respect of packaging of 20 kgs and above only. However, the court also stated that such a consent order would not prejudice the exclusive right of the plaintiff to sell rice or any other product under the same mark.
Source: Krbl Limited Vs. Vikram Roller Flour Mills Limited;

Court Allows Registration of WHITE MAGIK Trademark for Dairy Products

Umang Dairies Limited had filed a trademark application for a device mark for milk and milk products in Class 29. The subject mark was a composite device mark, comprising of two words ‘WHITE’ and ‘MAGIK’, along with graphic representation of milk being poured in a hot cup of tea/ coffee. The Senior Examiner had rejected the mark on the following grounds:
–   Section 9(1)(b) of the Act for being descriptive;
–   Sections 11(1)(a) and 11(1)(b) of the Act due to the existence of similar cited marks;
–   No supporting documents on record claiming the use of the mark.
Umang Dairies appealed this decision before the Delhi High Court.
The Court determined that, although ‘WHITE’ may be associated with milk and milk products, the combination of ‘WHITE’ and ‘MAGIK’ (alternative spelling of ‘MAGIC’), the resulting mark ‘WHITE MAGIK’ was suggestive, not descriptive, of the applied goods. Further, the Court found one cited mark to be abandoned, and other conflicting cited marks top not be similar to the subject mark except for the common word ‘MAGIC’/ ‘MAGIK’ used in all of them. In addition, on perusal of the court record, the Court noted that an Affidavit demonstrating use had been filed for the subject mark, which escaped the attention of the Senior Examiner, despite being on record on the date of hearing i.e., 24th April, 2019.
The Court set aside the order of the Examiner, and ordered the Trademarks Registry to process the application for the subject mark and advertise it within 3 months, with a clarification that the subject mark will not grant any exclusive rights to the words ‘WHITE’ or ‘DIARY CREAMER’, either separately or individually.
Source: Umang Dairies Limited vs Registrar Of Trade Marks

Registration of Trademark Cannot be Refused when Owner Holds Multiple Registrations for Same Mark: The Delhi High Court

An order was passed by the Examiner of Trademarks, Delhi, rejecting a trademark application under Section 9(1)(b) of the Act, which stated that the mark VIRTUOUS RETAIL was devoid of distinctive character and there were no affidavit and supporting documents on record. This was appealed by the owner, as the company already owned a word mark registration in the same class.
The Court set aside the order, holding that it was not appropriate for the Trademarks Office to refuse the registration of the mark/logo in the subject application when there were various registrations granted to the appellant in respect of the mark/logo and other formative marks in various classes.
Source: VR Asset Management Pte. Ltd. vs. Examiner of Trademarks through the Registrar of Trademarks

Court directs Examiners to Consider Prior Settlement Agreements while Determining the Use of Marks for Registration

An appeal under section 91 of the Trademarks Act, 1999 was filed against an order refusing registration for the Appellant’s mark “CANON”. The Senior examiner had objected to the registration under Sections 11(a) and (b) of the Trademarks Act, on the ground that the mark looked identical or similar to an earlier registered trademark.
The Court held that passing orders without considering a binding agreement of settlement with the proprietor of the earlier registered mark despite it being brought to notice was not sustainable. It directed the Trademarks Registry to process the registration of application and set aside the impugned order.
Source: Surender Kumar Vs. Registrar of Trademarks

Social Media Influencer Dhruv Rathee’s video comparing Real fruit juice with soft drinks is disparaging, says Calcutta High Court.

In a case filed by Dabur, the Calcutta High Court asked a social media influencer to remove reference to Real fruit juice products from his video. In the video, Dhruv Rathee, who claims to be a social media influencer, compared the health effects of consuming Real packaged fruit juice with consuming soft drinks and fresh juice and opined that packaged fruit juice has negative health effects. Aggrieved, Dabur went to Court, and the Court agreed with Dabur that the reference to its real brand was denigrating and disparaging and that the use of the brand and packaging amounts to trademark and copyright infringement. The Court, therefore, ordered the removal of the brand references from the video.
This case illustrates that social media influencers are not free from actions based on copyright/trademark infringement. They must be careful about how they use brands in their videos and must take care to show videos in a manner that does not give rise to liability.

Source: Dabur India Limited vs Dhruv Rathee and Ors.

Where Intermediaries Not Required to Take Action Based on Only Complaints: Delhi High Court

Applicable statutory rules do not mandate the intermediary to take actions merely on a complaint, the court cannot by placing reliance on an internal policy of a particular intermediary infer any such requirement.
The Plaintiff had filed a suit against Flipkart for continuing to display and list infringing products even after the plaintiff reported such infringement to Flipkart. The plaintiff relied on Rule 3(2) of Information Technology Rules, 2021 and contended that it was Flipkart’s duty to perform due diligence and take appropriate actions against such alleged infringers. It also relied on Flipkart’s infringement policy which allowed a user to lodge a complaint for infringement, based on which Flipkart had the authority to take action. The court opined that Rule 3 only envisages the grievance redressal mechanism of an intermediary and there is no provision which mandates an intermediary to take actions against infringers. The Court also found that the infringement policy of Flipkart uses the word “may take action” which makes it directory rather than mandatory. Since such mandate of taking appropriate action existed under Rule 3(4) of the Information Technology Rules, 2011 and had been consciously dropped by the law makers in the new Information Technology Rules, 2021, the court opined that it would be inappropriate for the Court to incorporate such a provision or requirement in the 2021 Rules.
The Court granted an interim injunction restraining the remaining defendants from infringing on the Plaintiff’s copyrights, including by selling on Flipkart, and directed that Flipkart may continue to be a defendant in the suit.

Source: Samridhi Enterprises Vs. Flipkart Internet Private;

Bombay High Court Injunction Favors Fevicol, Partly Disallows use of Tikawoo

Plea of common to trade cannot be taken by Defendant while the Defendant itself has applied or obtained registration for its marks utilizing similar words says Bombay High Court, partly allowing the interim injunction to Pidilite against Tikawoo. Pidilite, the maker of Fevicol and other adhesive products, had filed a suit for infringement and passing off against the maker of Tikawoo in respect of its brand logo and registered trademarks such as Dr. Fixit, LW+, LW, and HEATX.
Regarding the brand logo the court said that merely because a sun is shown in the background of the image of a Rhino in the impugned mark of the defendant, it cannot be said to be deceptive similarity to the Plaintiff’s mark where two elephants are pulling in opposite direction with sunset in the background. In respect of the plaintiff’s Dr. Fixit and Defendant’s Dr. Engineer, the Court said that it cannot be said that merely because the defendant has also used the image of a man with a construction helmet, it would lead to confusion in the mind of the consumer. However, the Court said that the Defendants LWP+ mark is deceptively similar to the Plaintiff’s LW and LW+ marks which stand for liquid waterproofing since the Defendant failed to prove how such marks were common to trade. The Court further said that Plaintiff’s HEATX and the impugned mark HEAT-TIK of the Defendant when spoken in a hurried manner sound similar particularly in a country like India where people from different backgrounds pronounce English differently and thus it is likely to create confusion, along with the similarity in the color scheme.
Source: Pidilite Industries Limited Vs. Chiripal Industries Limited

Dr. Reddy’s brand PRACTIN is prima facie infringed by Jankem’s Paktin, says Delhi High Court.

The Delhi High Court recently came to the prima facie conclusion that Dr. Reddy’s trademark, PRACTIN, is infringed by Jankem’s Paktin for the same drug. It came to the conclusion based on the similarity of marks, and also, based on similarity of packaging. Jankem’s tablets were also being sold in the same white/orange packaging with the brand in red colour as that of Dr. Reddy’s tablets, which convinced the Court that this was a case of bad faith infringement. The Court, therefore, granted an interim injunction restraining Jankem from using Dr. Reddy’s mark and packaging.

Source: Dr. Reddys Laboratories Limited Vs. Jankem Life Sciences;

Marks Cannot be Dissected while Examining for Registration: Delhi High Court

An appeal was filed under Section 91 of the Trademarks Act against an order passed by a Senior Examiner, rejecting registration u/s 9(1)(a) and 11(1) of the Act for the word mark “COOLPOLY” which was used for moulding materials, in manufacture of moulded plastic articles, heat sinks used in computers, and electric materials.

The Court observed that it was erroneous to examine the word COOLPOLY in parts. The word mark lacked meaning or any significance in the English language and even if “COOL” or “POLY” were seen individually, these words did not describe the products in respect of which registration was sought. The Court held that the examiner failed to cite other marks similar to COOLPOLY and did not provide any reason as to why the mark was not distinctive. The impugned order was quashed and set aside and the Court directed the Registrar to advertise the mark and proceed further in accordance with the Trademarks Act and Rules.

Source: Ticona Polymers, Inc. Vs. Register of Trademarks;

Patent Case Laws

The invention is Patentable if Combination of Features as a Whole is Non-obvious: Delhi High Court

The patent application of the Appellant for an “Air Decontamination Assembly”’ was rejected by the Controller of Patents and Designs on the ground that the subject patent lacked inventive step and was obvious from prior arts. The Appellant contended that the subject invention had additional features when compared to existing air purifiers by specifying electric fields, specifying gaps between the conducting plates and using multiple plates. Such improvements which were never thought of before enhanced the microbicidal activity in air purifiers in an unpredictable manner giving surprising effects.

The main question before the Court was whether the invention claimed in the subject patent application was more than a workshop improvement or whether it was a mere application of an old contrivance. The Court ruled that the subject invention was not a mere addition to a well-known combination but was an improvement on the method which resulted in greater efficiency. The Court relied on the EPO guidelines which provide that if the claims consist of a combination of features then it is incorrect to argue that separate features taken by themselves are obvious and that therefore the whole subject matter claimed is obvious. The Court held that if the interactions of the individual features i.e. the combination as a whole produced a synergistic effect, then the subject matter is patentable. The Court also placed secondary reliance on the fact that the subject invention addressed various disadvantages in the prior art. During the subsistence of the proceeding the Appellant was granted a patent in the US which in the opinion of the Court affirmed that the subject invention was not hit by prior-art documents. Therefore, the Court set aside the impugned order and the patent application was directed to proceed for grant.

Source: Biomoneta Research Pvt. Ltd. Vs. Controller General of Patents Designs and Anr.

Establishing a Prima Facie Case: Key for Granting Interim Injunctions in IP Cases

In a recent patent infringement lawsuit, the Plaintiff accused the Defendant of using their patented process to manufacture products containing specific botanical ingredients, namely “Rauwolfia Tetraphylla/ Canescens”. The Plaintiff sought an interim injunction, asserting that the Defendant should prove that their process was distinct from the Plaintiff’s patented method.

The Defendant, on the other hand, argued that the suit was an attempt to extract their trade secrets. Citing Section 104A(2), the Defendant maintained that they could not be forced to reveal commercial secrets when such disclosure would be unreasonable. Furthermore, they requested the formation of a confidential club to inspect the redacted information of their process.

The court ruled against the Plaintiff’s contentions, stating that in order to grant an interim injunction in an infringement suit, a prima facie case must be established. The availability of alternative ingredients for the Defendant to use in their process is not a determining factor. The Court sided with the Defendant, ordering the formation of a confidentiality club to minimize the risk of unauthorized disclosure during the inspection of commercially sensitive documents and information, in compliance with the Delhi High Court Rules, 2018.

Source: Pawan Kumar Goel Vs. Dr. Dhan Singh & Anr;

Copyright Law Cases

Court grants an injunction against publication/sale of market research reports based on similarity of titles.

In a recent judgment, the Delhi High Court has granted an exparte interim injunction restraining publication, sale, and advertising of market research reports as the titles and table of contents were similar to the reports of the Plaintiff. This injunction was granted in a copyright/confidential information suit filed by a market research company against its competitor, who had hired its employees. At a prima facie level, the Court  found that the titles and tables of contents of the reports were substantially similar, and found it fit to grant an exparte order while appointing a local commissioner.

Exparte orders and appointment of local commissioners has now become a common IP strategy with Courts becoming quite open to grant such orders. While this can be a nightmare for defendants, who might face an uphill task to defend their case, the strategy works very well for aggressive businesses.
Source: Markets And Markets Research … vs Meticulous Market Research

Consumer Law Cases

Flipkart asked to refund the airline booking cancellation fee with interest.

In a recent decision, the Punjab State Consumer Commission asked Flipkart to provide a full refund for cancellation of air ticket booking on its platform with an interest of 9 percent per annum. The Commission rejected the pleading by Flipkart that it was an intermediary because the transaction happened on its platform, and as money was transferred to Flipkart. The Commission also affirmed an additional compensation of Rs. 5,000/- for mental agony caused because of withholding of the refund.
Source: Flipkart Internet Pvt. Ltd. Vs. Amar Singh and Ors.;

Medical Services at AIIMS Free, thus Outside the Purview of the Consumer Protection Act: Delhi State Consumer Forum

In a case involving alleged medical negligence, the Delhi State Consumer Dispute Redressal Commission dealt with the issue of whether medical care provided at AIIMS, New Delhi would fall within the definition of “service” under Section 2(1)(o) of the Consumer Protection Act.
In this case, the appellant had received some treatment for a problem in his eye at AIIMS and subsequently developed vision problems. The District Forum had found no evidence of medical negligence and hence dismissed the complaint.
The State Commission examined the records and found that the appellant was not charged for the services provided to him. The Commission relied on the decision in the case of Nivedita Singh Vs. Dr. Asha Bharti & Ors., reiterated that services rendered free of cost cannot be termed “Services” under Section 2(1)(o) and the appellant did not fall within the definition of “Consumer”.
If the service rendered by the Hospital does not fall within the ambit of 2(1)(o) of the Consumer Protection Act on account of being free of charge, then the service rendered by an employee medical officer to a person availing such service would therefore continue to be service rendered free of charge and would be outside the purview of Section2(1)(o) of the Act.

Source: Case – Gopal Singh Rawat Vs A.I.I.M.S. & Anr.;

Accessibility Law Cases

Disabled category Cannot be Denied Reservations due to Faulty Methods of University: Patna High Court

Recently, the Patna High Court jointly decided numerous Civil Writ petitions filed by petitioners belonging to different categories, challenging an advertisement issued by the Bihar State University Service Commission calling for applications for the post of Assistant Professor in 13 Universities for 52 different subjects. Out of the total 4638 posts of Assistant Professors advertised, only 1223 posts had been made available for the General Category/Open Category, and only 103 posts had been reserved for persons with disabilities. The Court adjudicated the matters separately for each category of reservations, based on the relevant statutes.
The Court noted that sections 3 and 34 of the Rights of Persons with Disabilities Act 2016, passed by the Parliament provide for 4% reservation to disabled persons in each category, which was binding on the State Government. The Court observed that advertisement provided for only 103 posts to persons belonging to the disabled category which amounted to only 2.2% reservation as opposed to 4% specified in the Act. Thus, the Court held that the action of the respondents in reserving the posts for the Disabled Category resulting in failure to provide for 4% reservation was illegal and unjustified.
The Court held that persons with disabilities cannot be allowed to be deprived on account of the faulty and erroneous methods adopted by the respondents. The reservation which is Horizontal in nature will cut across the Vertical reservations meaning thereby if a person is of a Disabled Category, he shall be appointed even if he belongs to any of the reserved categories, and would take away a particular seat of that category. Interpretation of provision is to be done in a manner that the purpose of the Act is achieved.
The Court issued interim directions to call for additional interviews after re-calculating the number of posts from all the universities. The Court directed that the selected candidate shall have to be replaced by such category candidate even if the said candidate possesses higher merit.
Source: Dr. Amod Prabodhi and Others Vs. State of Bihar through Principal Secretary;

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Please note that these case updates have been put together from different sources, primary and secondary, and BananaIP’s reporters may not have verified all the decisions published in the bulletin. You may write to [email protected]  for corrections and take down.