The Calcutta High Court recently restrained various social media influencers (“Respondents”) from communicating offending portions of their videos/posts and making any reference to Unilever Industries Private Limited (“Petitioner”) or their frozen desserts under their trading names, Hindustan Unilever, HUL and their brands Kwality Walls, Cornetto and Feast (“Petitioner’s Marks”) in social media videos/posts. It was the Petitioner’s case that the Respondents were running negative campaign against the Petitioner’s frozen desserts by disseminating misleading information through their social media videos/posts, directly and blatantly rubbishing the Petitioner’s products. The Court prima facie noted that all these videos/posts make a direct reference to the Petitioner and its marks, disparages and is detrimental to the reputation and distinctive character of the Petitioner’s Marks. The Court noted that freedom of speech and expression is not absolute and by making a direct and clear reference to Petitioner’s products in the disparaging manner, the Respondents have crossed the Rubicon. Accordingly, the court granted an interim injunction in the Plaintiff’s favour and restrained the Defendant from communicating the offending portions of their videos/posts to public. Unilever Industries Private Limited and Ors. vs Naresh Gehani and Ors. at High Court of Calcutta [CS/66/2023].

Recently, the Delhi High Court dismissed an application for interim injunction filed by M/s Lightbook (“Plaintiff”), against use and registration of a similar mark by Mr. Pravin Shriram Kadam (“Defendant”). The Plaintiff had applied for registration of the Lightbook Label in September 2015, in Class 42 for consultancy services in relation to lighting, whereas, the Defendant had applied for the registration of the mark Lightbook Device in September 2014 in Class 11, in relation to apparatus for lighting, etc. The Plaintiff’s mark was granted registration in January 2017. The Defendant, in September 2019, filed an application under Section 57 of the Trade Marks Act, seeking rectification of the Plaintiff’s registration for the Plaintiff’s Lightbook Label. The Plaintiff on January 14, 2020, filed a response to this rectification application in which it was submitted that the rival marks are dissimilar. The present application was filed by the Plaintiff based on the deceptive similarity between the rival marks where the contradictory submissions made by the Plaintiff in their response were brought to light. The Plaintiff argued that it is not permissible to solely rely on the submissions made by the Plaintiff in their response. Whereas it was the Defendant’s case that the submissions made by the Plaintiff in their response were very clear and unequivocal. The court opined that the Plaintiff cannot, at the prima facie stage, escape the consequences of their submissions made in the response. It was observed that the Plaintiff had not only asserted that there is no possibility of confusion between the rival marks, but that, in fact, there did not exist any such confusion in the market at all. Further, the court opined that the omission on part of the Plaintiff to place this reply on record ipso facto disentitled the Plaintiff to claim the relief in the present application. In view of the above, the court dismissed the Plaintiff’s application seeking interim injunction based on the submissions made in the response dated January 14, 2020. MS Lightbook & Anr. vs. Mr. Pravin Shriram Kadam & Ors., CS (COMM) 56 of 2022, Judgement dated April 24, 2023.

Recently, in a suit filed by the firm before the Hon’ble Delhi High Court on behalf of its reputed fashion client, AMERICAN EAGLE OUTFITTERS INC., J. Amit Bansal declared the iconic Flying Eagle Device mark as a well-known trade mark! The well-known declaration took into account the substantial evidence alluding to the continuous and extensive use of the Flying Eagle Device mark worldwide and in India, including trade mark and copyright registrations, commendable sales figures as well as decisions of co-ordinate benches recognizing the fame of the Flying Device mark. The well-known declaration comes as a huge deterrent for infringers seeking to use similar eagle devices even in respect of dissimilar goods/services. Moreover, given the blatant infringement and the defendant’s non-appearance before court, the court awarded costs and damages to the tune of INR 6,00,000 in AEO’s favour. The suit was filed against an infringer using the Flying Eagle Device mark in relation to news broadcasting services. Sujata Chaudhri, Urfee Roomi, Deeksha Anand, Janaki Arun, Ritesh Kumar, Jaswant Singh Gusain.

Recently, the Bombay High Court granted a dynamic injunction in favour of Applause Entertainment Pvt. Ltd. (“Plaintiff”) against thirty-two (32) Instagram handles in a suit alleging copyright infringement of the OTT series, Scam 1992: The Harshad Mehta Story, which streams exclusively on the OTT platform, Sony Liv. As per the Plaintiff, by virtue of an assignment agreement between the Plaintiff and the author of the book which inspired the Scam 1992 series, all rights, title and interest, for the purpose of adapting it on screen vest with the Plaintiff. Further, the OTT platform, Sony Liv, has the exclusive right to stream this web series. The Plaintiff also claimed that it has the publicity and character rights pertaining to the web-series and members of the cast. It was the case of the Plaintiff that it had come across numerous Instagram accounts which were communicating substantial parts of the web series to the public to promote their businesses. Before approaching the court, the Plaintiff had filed complaints with Instagram against these handles, but Instagram did not take any action. The court noted that the Plaintiff had placed sufficient documents on record to demonstrate that a strong prima facie case is made out in its favour. The court further observed that it is evident that the web series can be viewed only on the OTT platform, SonyLIV, and any other form of communication or broadcast of the web series or any part thereof, would amount to violation of the Plaintiff’s copyright. In light of the above, the court directed Meta Platforms Inc. to remove the infringing posts on its platform and further ordered that it disclose the contacts details, IP adresses and physical location of the owners of these accounts. Further, the dynamic injunction allows for extension of the order against similar websites/platforms that are infringing upon the Plaintiff’s copyright. Applause Entertainment Private Limited v. Meta Platforms Inc. and Ors., Commercial IP Suit (Lodging) No. 10238 of 2023, Order dt. May 2, 2023.

The Delhi High Court, recently, restrained Shubhom Juneja (“Defendant”) from using the mark ROYAL QUEEN and a green trade dress which are identical/similar to ADS Spirits (P) Ltd.’s (“Plaintiff”) ROYAL GREEN mark and trade dress, on and in relation to alcoholic beverages. The Plaintiff submitted that it is the proprietor of several registrations for ROYAL GREEN and ROYAL GREEN-formative marks for, inter alia, alcoholic beverages. Further, as per the Plaintiff, in 2014, it introduced a distinctive green trade dress and packaging for its goods. It was the Plaintiff’s case that the Defendant was earlier selling its alcoholic beverages under the mark ROYAL QUEEN in a packaging dissimilar to the Plaintiff’s packaging, in the state of Punjab. However, the Defendant had introduced its product in Delhi under a green packaging similar to that of the Plaintiff. The Defendant contended that the colour green and the suffix ROYAL are common to trade in relation to alcoholic beverages. The Defendant also sought to rely on its registration for the ROYAL GREEN Device mark. The court was of the opinion that it, prima facie, appears that the Defendant’s new trade dress is nearly identical to the Plaintiff’s trade dress. The court also stated that the likelihood of confusion was exacerbated by the phonetic similarity between the rival marks. As regards the Defendant’s registration, the court noted that the present case does not concern the Defendant’s device mark and therefore the registration is not of relevance. As regards the question of the colour green and the suffix ROYAL being common to trade, the court stated that this would be matter of trial. In light of the above, the court was satisfied that a prima facie case of infringement and passing off was made out in favour of the Plaintiff, and accordingly restrained the defendant from advertising, manufacturing, selling, etc. , alcoholic beverages, under the mark ROYAL QUEEN and/or the new green trade dress or any other mark/trade dress which is deceptively similar to the registered trademark and trade dress of the Plaintiff.

Recently, the Delhi High Court, while setting aside a refusal order of the Trade Marks Registry, Delhi, came down heavily on the Assistant Examiner for refusing the trade mark application without a comprehensible reasoning. An application to register the mark, ABU DHABI GLOBAL MARKET, bearing Application No. 3184380 (“Impugned Mark”), filed by ABU DHABI Global Market (“Appellant”), was examined, and subsequently refused on the grounds that the Impugned Mark is neither coined nor invented; evidence of use was not submitted to establish distinctiveness of the mark by filing of affidavit; and ABU DHABI being a geographical name, the Impugned Mark as a whole is non-distinctive and cannot be monopolised. The Court, in the appeal filed by the Appellant, opined that distinctiveness is, undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not. As regard the second ground, the Court noted that evidence of use of the mark is not required to establish distinctiveness since the law allows registration of marks on a proposed to be used basis. The Court also concurred with the Appellant’s submission that since device element of the Impugned Mark already stands registered in favour of the Appellant, the Impugned Mark cannot lose its distinctiveness by addition of the words “ABU DHABI GLOBAL MARKET” below it. The court also noted that, distinctiveness of any mark would need to be assessed in line with the commonness of use of such mark or any similar mark by other proprietors, and, in the present case, after finding that the Impugned Mark is not used by anyone else, held the Impugned Mark to be distinctive. As regard the third ground of refusal, the Court held that Section 9(1)(b) of the Act only bars marks which consists exclusively of marks or indications which designate the geographical origin of the goods and composite marks which merely contains name of a geographical area are not barred. The Court, accordingly, expressed its disagreement with the reasoning of the Assistant Examiner and set aside the refusal order. The Court also remanded the application back to the Registry to advertise the mark in the Trade Marks Journal. C.A.(COMM.IPD-TM) 10/2023 ABU DHABI GLOBAL MARKET Vs. THE REGISTRAR OF TRADEMARKS, DELHI.

Recently, the Delhi High Court directed the cancellation of the registration for the INSAID mark based on its phonetic similarity with the mark INSEAD, and similarities between the Petitioner (Institut Europeen D Administration Des Affaires, Insead, Association) and Respondent’s (Fullstack Education Pvt. Ltd.) services. The Petitioner and Respondent both run business schools, under the names Institut Europeen D Administration Des Affaires Association (INSEAD), and International School of AI and Data Science (INSAID), respectively. It was the Petitioner’s case that it owns registrations for the INSEAD marks going back to 2007, and has been using the marks in India since 2010. On the other hand, the Respondent’s registration for the INSAID mark is dated February 2020 and records a use claim of December 2018. The Petitioner argued that the deceptive similarity between the rival marks is apparent from actual instances of confusion, and relied on an email it had received from a student who claimed to have erroneously attended one of the Respondent’s courses instead of the Petitioner’s. The Respondent argued that the rival marks are phonetically dissimilar on account of the differences in the number of syllables in each mark (IN-SAID v. IN-SE-AD) and the way they are pronounced (In-sed v. In-si-yaad). The Respondent also submitted that the consumers being students, there is little to no chance that they would be confused while securing admission in either institution. The court noted that it is indisputable that the petitioner has the benefit of priority of registration as well as priority of use. Further, the court observed that the rival marks are clearly phonetically similar and phonetic similarity has to be assessed from the point of view of the consumer, and not from the point of view of the parties. Accordingly, the court ordered cancellation of the Respondent’s registration for the INSAID mark. Institut Europeen D Administration Des Affaires, Insead, Association v. Fullstack Education Private Limited & Anr.., C.O. (COMM.IPD-TM) 1/2021, Order dt. May 17, 2023.

Recently, the Delhi High Court allowed an appeal filed by Microsoft Technology Licensing, LLC (“Appellant”) and set aside the order of the Assistant Controller of Patents and Designs (“Respondent”) refusing the Appellant’s patent on the ground that it falls in the category of non-inventions under the Patents Act, 1970 (“Act”). The Appellant had applied for a patent for “methods and systems for authentication of a user for sub-locations of a network location” which was refused on the ground that the invention is merely a set of computer executable instructions or algorithms, constituting “computer programs per se” which is included in the list of non-inventions under Section 3(k) of the Act. Specifically, the Respondent held that the invention is a method for performing two level authentications based on cookies created by a website, which is nothing but a set of instructions. The court observed that the test under Section 3(k) of the Act for assessing whether Computer Related Inventions (“CRI”) ought to be granted patent is of the technical effects and contributions provided by the inventions, and not just implementation of algorithms and instructions. The court observed that the Appellant’s invention provides a technique for authenticating users for accessing sub-locations on a network, and that its technical contribution is to prevent unauthorized access to sub-locations and improve security. Accordingly, the court set aside the Respondent’s order and directed that the Appellant’s patent application be re-examined on the tests of novelty, inventiveness, and prior art. Lastly, the court, after analyzing the CRI Guidelines, 2017 and the EUIPO and USPTO’s practices in relation to CRIs, directed the Respondent to consider providing examples of both patent-eligible and non-eligible inventions in the CRI Guidelines. The court noted that such examples would serve as reliable guidance and help with consistency in examination of patents. Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs [C.A. (COMM.IPD – PAT) 29/2022], order dt. May 15, 2023.

Recently, the Karnataka High Court, set aside an interim injunction order passed by the trial court in favour of Blinkhit Private Limited (“Respondent”) restraining Blink Commerce Private Limited (“Appellant”) from using the mark BLINKIT or any other mark deceptively and confusingly similar to Respondent’s registered marks BLINKHIT/iBLINKHIT. It was the Appellant’s case that while the BLINKHIT/iBLINKHIT are registered in favour of the Respondent, there has been no use of these marks since 2016 and hence, the Respondent is squatting on them. The Appellant also alluded to the difference in nature of business carried on by the parties. The Appellant further submitted that the trial court erred in holding that the registration certificate of the Respondent was a document of title and entitle the respondent to an order of interim injunction. The Court observed that mere obtaining of registration, without use, of a trademark cannot be construed as document of title. The Court also noted that, not only are nature of business of the parties are totally different, but the Respondent has also not carried on any business under the mark BLINKHIT/iBLINKHIT since 2016. In such circumstances, the Court ruled that, mere registration, without any use, cannot be a basis for injunction, and the balance of convenience lies in the Appellant’ favour. Accordingly, the Court expressed its disagreement with findings of the trial court and allowed the present appeal. Blink Commerce Private Limited v. Blinkhit Private Limited & Anr., Karnataka High Court, Miscellaneous First Appeal No. 5756 of 2022(IPR), Judgment dated April 17, 2023.

Recently, in appeals filed by DCM Shriram Limited (“Appellant”) against orders of the National Biodiversity Authority (“Respondent”), the National Green Tribunal (“NGT”) has observed that conventional breeding is not exempted from the access and benefit sharing provisions under the National Biodiversity Act, 2002 (“Act”). The Appellant specializes in research and development of crops, and had filed applications for access to biological resources, under the amnesty scheme of the Ministry of Environment, Forest and Climate Change. The Respondent provided the access and benefit sharing agreements with the Appellant and thereafter, directed the Appellant, inter alia, to pay the requisite fee for access upfront, irrespective of the outcome of the research. In light of the above, the Appellant preferred appeals against the Respondent’s orders. As per the Appellant, its business is conventional breeding of crops, including crossing and selection to obtain improved varieties, which is exempted from the requirement of prior approval under the Act, and that it had filed the applications merely by way of abundant caution. The Appellant submitted that it should not be deprived of the benefit of this exemption for this reason alone. On the other hand, the Respondent submitted that the imposition of upfront payment was in consonance with Access and Benefit Sharing Regulations and the amount shall be utilised for the cause of conservation and to promote research activities as decided by the authority. The NGT observed that the exemption is provided when resources are traded as commodities, and that the Appellant is involved in research which will lead to commercial utilization. It was further observed that parties, who produce seeds through conventional breeding cannot benefit from the exemption, since it only relates to agriculture, horticulture, animal husbandry, etc. The NGT noted that the amount was calculated based on the time period for which resources were accessed which is as per law, and accordingly directed the Appellant to pay the full amount. DCM Shriram Limited v. The National Biodiversity Authority [Appeal No. 61 to 63 2023(SZ)] The National Green Tribunal, Judgement dt. May 30, 2023.