Text & Context Newsletter – The IP Legal Lens – Edition 65

Hello to our ardent followers and the new readers joining us on BananaIP's LinkedIn company page! We're ecstatic to present to you the 65th edition of Text & Context - The IP Legal Lens. Intellectual Property, with its multifaceted implications in various industries, is a sphere that’s constantly evolving. Through this newsletter, we aim to keep you updated with the most pivotal legal happenings, crucial court rulings, and significant shifts in the IP landscape. Let's dive right in.

RECENT PATENT CASES

1. Another interim injunction denied to Vifor with respect to its patented invention for treatment of iron deficiency.

The Delhi High Court has denied another application for interim injunction filed by Vifor with respect to its product-by-process patent relating to the treatment of iron deficiency. The Court primarily denied the injunction because the defendant would suffer irreparable damage if an injunction is granted, and because the balance of convenience is in the defendant's favour. While arriving at its decision, the Court considered the fact that the patent is set to expire in October 2023 and that interim injunctions were denied in cases against other defendants as well. The Court also noted that the defendant had launched its FCM product before the suit was filed.

The Court however restrained the defendant from using the same process as that of Vifor's patented process. The question of whether Vifor's product by-process claims would cover products also is currently pending before the Division Bench.

Citation: Vifor International Ltd. and Ors. Vs. Biological E Limited and Ors [CS (COMM) 434/2023, I.A. 11567/2023, I.A. 11568/2023, I.A. 11569/2023, I.A. 11570/2023, I.A. 11571/2023, I.A. 11572/2023 and I.A. 11573/2023]

RECENT TRADEMARK CASES

2. KIT KAT vs. Kit Kat: A Trademark Infringement in confectionery brands

The Plaintiff, Societe Das Products Nestle S.A. & Anr, alleged infringement of its registered trademark “KIT KAT” registered in 1987, by the defendant KIT KAT Food Products and Anr. Defendants averred that they had been using the “Kit Kat” mark for snacks and cereal preparations.

The Hon’ble Calcutta High Court considered the order of the Intellectual Property Appellate Board, which held that the plaintiff was the prior user of the KIT KAT trademark, and the use of the identical mark by the defendants would cause confusion since both of them deal with similar products marketed through the same channel. The Court decided the matter in favor of the Plaintiff and granted a permanent injunction restraining the defendants from infringing the KIT KAT marks or any such design or artistic work.

Citation: Societe Das Products Nestle S.A. & Anr. Vs. Kit Kat Food Products & Anr [CS/48/2000]

3. 'AFFINITY' trademark dispute settled: Defendant Agrees to cease usage

The Plaintiff, Vinit Dua, alleged that the defendant Harshil and Co. was infringing its registered trademark AFFINITY, by using the mark AFFINITY LOUNGE in relation with provide hair and beauty salon services. The Plaintiff’s mark was registered for similar services. The parties agreed to settle the dispute based on the undertaking of the Defendant to discontinue the use of the trademark ‘AFFINITY.’ Accordingly, the Hon’ble Delhi High Court decreed the matter as settled.

Citation: Vinit Dua Vs. Harshil and Co. [CS (Comm.) 466/2023, I.A. 12580/2023, I.A. 12581/2023, I.A. 12582/2023 and I.A. 12583/2023]

4. La-Ramada World ordered to pay 5 lakhs for disobeying court order

The Plaintiff, Ramada International, Inc., sued the Defendant, La-Ramada World Pvt. Ltd., for using the trademark RAMADA and several similar domain names. In 2021, the Delhi High Court had passed an order restraining the Defendant from using any mark similar to that of the Plaintiff’s. Following non-compliance on the defendant's part and repeated cybersquatting with new domain names, the Delhi High Court issued similar orders three times. Taking note of the repeated breach of court orders, the Delhi High Court found the defendant guilty of contempt and willful disobedience and ordered the defendant to deposit ? 5 lakhs with the court registry, failing which the director of the defendant company would be sent to civil prison for one week.

Citation: Ramada International Inc. Vs. La-Ramada World Private Limited and Ors. [CS (COMM) 470/2021, I.A. 16225/2021, I.A. 4182/2022 and I.A. 7855/2023]

5. HOGWARTS and HOGWARTS KAFE trademark dispute settled through ADR.

The Plaintiff, Warner Bros Entertainment Inc, alleged trademark infringement of its registered trademark HOGWARTS by the defendant for providing restaurant services using the mark HOGWARTS KAFE. With the intervention of the Delhi High Court Mediation and Conciliation Centre, the parties agreed to settle the matter after an undertaking given by the Defendant to never use the HOGWARTS trademark. On perusal of the settlement terms, the Delhi High Court affirmed the same and decreed the matter as settled accordingly.

Citation: Warner Bros Entertainment Inc Vs. Ishant Kashiwal Trading As The Hogwarts Kafe and Ors. [CS (Comm.) 457/2021, I.A. 12131/2021 and I.A. 2934/2022]

6. Court finds ‘Pe’ is not unique

PhonePe appealed a single-judge bench order which refused to restrain DigiPe in a trademark infringement suit. Considering the rival contentions, a division bench of the Madras High Court refused to interfere with the single-judge bench order. Dismissing the applications, the Court reasoned that, firstly, PhonePe had failed to show that DigiPe catered to the same customers; secondly, there was no consistency in submissions of PhonePe in various forums while defending its trademark, including a trademark opposition over the use of the term ‘Pe,’ before the Delhi High Court in the case of PhonePe v. BharatPe, and, in the present issue as well.

Citation: Phonepe Private Limted Vs. Digipe Fintech Private Limted [O.S.A. (CAD) Nos.70 to 73 of 2023]

7. Courts puts Plaintiffs apprehension to rest as the disputed Trademark is withdrawn from the Registry.

The Plaintiff, Maharashtra Safe Chemist and Distributors Alliance Ltd. had filed an Interim Application seeking specific Orders against the Defendant, Sachin Bhausaheb Bhalekar, for infringement of its Trademark “M + M Medicines Plus More.” The Bombay High Court disposed of the IA as the Defendant, through his Counsel, filed an affidavit stating that the Trademark was obtained by him immediately before the imposition of the first lockdown in 2021 and that no business activity was undertaken in the impugned trademark since registration due to Pandemic. It was further noted that the impugned Trademark was already removed from the Registry based on a favourable Order received by the Plaintiff in relation to its Rectification Petition filed against the Defendant’s mark.

Citation: Maharashtra Safe Chemist and Distributors Alliance Limited Vs. Sachin Bhausaheb Bhalekar and Anr [IA (L)/20731/2021 in COMIP/389/2021]

8. Exparte injunction against use of L'OPéRA' for bakery products to come into effect from 1st January 2024.

The Delhi High Court has granted an exprate injunction against the use of the trademark L'OPéRA' for bakery products, pastries, etc. The defendant in the case had agreed to change the trademark but had not changed it at the time of filing the suit. Therefore, the Court stated that the injunction would come into effect from 1st January 2024, if the mark is not changed by the defendant.

Citation: French Bakery Pvt Ltd Vs. L Opera Cake and Bake [CS(COMM) 649/2023 & I.As. 18110/2023, 18111/2023, 18112/2023]

9. Pepsi Vs. Parle: For the Bold Trademark Dispute

In this well-reasoned and comprehensive order, the Delhi High Court granted an interim injunction to Pepsi against the use of its trademark, For the Bold, For advertising Parle's B fizz malted drinks. Pepsi had registered the trademark - For the Bold - for its tortilla chips, which are sold under the Doritos brand. The Court however refused an interim injunction with respect to the use of 'Be the Fizz For the Bold' on the malted drink bottles of Parle. Furthermore, the Court also found that Parle's challenge to Pepsi's trademark was prima facie tenable, but it stated that prima facie tenability has no bearing on the prima facie validity of the mark.

Citation: Pepsico Inc. and Ors. Vs. Parle Agro Private Limited [CS (Comm.) 268/2021, I.A. 7170/2021 and I.A. 9591/2021]

RECENT COPYRIGHT CASES

10. Court summons authors over copyright allegations in textbook

Kartik Sharma, the plaintiff and author of the book “Essentials of Artificial Intelligence,” alleged that the defendants, Sultan Chand and Sons Pvt. Ltd. and the authors of the book “Essentials of Information Technology,” had verbatim copied 77 pages of his book and sought a permanent injunction against the defendants for copyright infringement. The Delhi High Court noted that one chapter titled ‘Communication Skills’ present in both books was almost a word-to-word reproduction of the plaintiff's book. The Court passed an order allowing the plaintiff to approach e-commerce platforms to take down infringing copies of his book, which the platforms would be required to do within 72 hours. The Court further ordered that the defendant authors be present in court for the next hearing date.

Citation: Kartik Sharma Vs. Sultan Chandand Sons Pvt. Ltd. & Ors [CS(COMM) 344/2023 & I.As. 11777/2023, 15925/2023, 15926/2023]

11. Whizlabs PMP Exam Simulator is a derivative work entitled to its own copyright protection.

The Plaintiff company provided training and certification for Project Management Professionals (PMP) and owned the copyright in a software product called PM FASTrack, a simulation tool for preparing for the PMP exam. The defendant’s company offered online courses and mock tests for various IT certifications, including the PMP exam. The plaintiff alleged that the defendants had infringed its copyright in the PM FASTrack software by creating and selling a software product called Whizlabs PMP Exam Simulator. The Delhi High Court held that the defendant's software was a derivative work as it provided not only correct answers but also a correct explanation to it, unlike the Plaintiff's software. Thus, the defendant’s software was also entitled to copyright protection, and the Plaintiff was denied injunctive relief.

Citation: RMC Project Management International, LLC Vs. Whizlabs Software Private Limited and Ors. [CS (Comm) 124/2018]

12. Assignment of rights in Satyajit Ray’s and other films is not valid, and digital exploitation in Bangladesh is not permitted, says Calcutta High Court.

While granting an interim injunction in favour of the producer of 10 films, including those directed by Satyajit Ray, the Calcutta High Court stated that the producer had granted a license to only broadcast films through wired and wireless means in India. The license also restricted internet and digital rights exploitation. As the licensee has no rights outside India, and with respect to digital rights in the films, the Court stated that those rights cannot be assigned to a third party. The assignment by the licensee to Zee is therefore not valid, and an interim injunction can be granted against the exploitation of the films.

The Bengali films that were the subject of the dispute were: 'Nishijapon', 'Bibar', 'Tapasya', 'Achin Pakhi', 'Charulata', 'Mahanagar', 'Mahapurush', 'Joy Baba Felunath' and 'Nayak'

Citation: RDB & Company (Hindu Undivided Family) and Ors. Vs. Zee Entertainment Enterprises Limited and Ors [G.A. No. 1 of 2021 and C.S. No. 135 of 2021]

Thank you for journeying with us through this roundup of recent IP cases. Intellectual Property, as it entwines with businesses, artists, and innovators, often stands as the pillar that safeguards their creative endeavors and investments. We hope this edition of Text & Context has imparted valuable insights and clarity on the latest developments. Stay informed, and until our next edition, remember that understanding the past and present of IP will always give you a vantage point for the future. Join us again for more IP news, and until then, stay curious and informed!