The Delhi High Court in a recent judgment in Dr. Reddys Laboratories Limited and Anr. v. The Controller of Patents and Ors., C.O.(COMM.IPD-PAT) 3 of 2021, held that since a revocation petition under Section 64 of the Patents Act, 1970 (“Act”) is not a ‘suit’, Section 10 of the Code of Civil Procedure, 1908 (“CPC”) (which relates to stay of suits which are sub judice) will not be applicable. On 16th October 2021 (which was a court holiday), Dr. Reddys Laboratories Limited (“DRL”) electronically filed the revocation petition against patent IN’846 granted to Boehringer Ingelheim International GmbH (“Boehringer”) before the Delhi High Court. It was registered on 21st October 2021, and scheduled for hearing on 22nd October 2021. Meanwhile, Boehringer filed a suit against DRL alleging infringement of their patent before the Himachal Pradesh High Court, which granted an ex parte stay on 21st October 2021. Boehringer submitted that since the issues in controversy in the revocation petition and the infringement suit (where DRL raised the defense of invalidity of Boehringer’s patent) were identical, the proceedings in the revocation petition should be stayed pending the outcome of the infringement suit. The Court referred to the Practice Directions for E-Filing of the Delhi High Court (Original Side) Rules, 2018 to conclude that the date of ‘presentation’ of a petition for the purposes of Order IV of CPC, in case of electronic filing, would be the date when such petition is electronically uploaded. Therefore, DRL’s revocation petition was filed and instituted prior to the institution of the infringement suit by Boehringer. The Court also held that it cannot consider a revocation petition under Section 64 of the Patents Act, as a suit, for the purposes of Section 10 of the CPC in the absence of any provision under law. Additionally, the Court noted that there is a fundamental difference between the scope of proceedings for revocation of a patent, and infringement claims for such patent. If a revocation proceeding succeeds, the patent would be effaced from the register of patents, whereas, if the defense of invalidity of the suit patent succeeds, the patent does not get extinguished, but rather results in the injunction not been granted to the plaintiff. Even the reliefs in both the proceedings are completely different. Accordingly, the Court refused to stay the revocation petition pending the outcome of the patent infringement suit.

Syngenta Limited v. Controller of Patents and Designs: The Delhi High Court examined the ‘Boehringer Ingelheim Case‘ interpretation of Section 16(1) of the Patents Act. This section allows a patent Applicant to file a divisional patent application(s) relating to multiple inventions disclosed in the parent application. Earlier, in Boehringer Ingelheim Case the Court ruled that a divisional patent application can be filed only if the claims in the parent application relate to a plurality of inventions, and it is not sufficient if the plurality of inventions are found in the description part of the complete specifications alone. Section 16(1) of the Patents Act recites: “A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.” The Delhi High Court analyzed the structure of Sec. 16(1) and observed that it includes the phrase “if he so desires“between two commas and noted the absence of a comma after the phrase “raised by the Controller“. In view of the analysis, the Delhi High Court opined that applicants could independently file divisional applications and there is no need for the claims to include multiple inventions, contrary to the Boehringer Ingelheim ruling. Further, the Delhi High Court framed the following two issues for the Division Bench to examine and return its view for a divisional application to be maintainable: 1) Does the requirement of a plurality of inventions being contained in the parent application apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller? 2) Assuming that the requirement of a plurality of inventions in the parent application is necessary, does the plurality of inventions have to be reflected in the claims of the parent application or is it sufficient if they are reflected in the disclosures of the complete specifications of the parent application? We will continue to share any updates on this case as they arise. Syngenta Limited v. Controller of Patents and Designs, C.A. (COMM. IPD-PAT) 471/2022

Recently, in a plea for restriction on dynamic generation of the contents owned by, as many as six (6) well-known Hollywood studios, namely, Universal City Studio LLC, Warner Bros. Entertainment Inc., Columbia Pictures Industries, Inc, Netflix Studios, LLC, Paramount Pictures Corporation and Disney Enterprises, Inc. (‘Plaintiffs), the Delhi High Court has recently passed a one-of-a-kind dynamic+ injunction against 16 rogue websites impleaded as defendants including their redirect/ alphanumeric/mirror websites from streaming, reproducing, distributing to curb unauthorized reproduction of the copyrighted content which includes any future work of the Plaintiffs, as and when they are created. It was the Plaintiffs’ case that the rapid increase of platforms, including the rogue websites impleaded as defendants, for unauthorised, unlicensed, and pirated content, resulting in continuous production and unauthorized reproduction, is leading to copyright infringement and monetary loss. Some of those websites were newer versions of rogue websites that have been injuncted in previous litigations. The court observed that the frequent and periodic appearance and duplication of rogue websites can occur rapidly, and mirror websites can emerge within minutes, as domain names can be modified with minor modifications, and content can be easily moved between websites and these rogue websites potentially infringe the copyrighted content and hurt the thriving content creation industry. Given this patent illegalities of the rogue websites and apprehension of piracy of Plaintiffs’ future contents by the defendants, the court issued a “dynamic+ injunction” against the defendants. The court also directed (a) the Ministry of Electronics and Information Technology (MeitY) and the Department of Telecommunications (DoT) to issue blocking orders against the rogue websites; (b) Internet Service Providers to block such websites and; (c) Domain Name Registrars (DNRs) of the rogue websites’ domain names to lock and suspend the domain names and share KYC details of such registrants with the Plaintiff, upon intimation. Universal City Studios LLC. and Ors. V. DotMovies.Baby and Ors. [CS(COMM) 514/2023 and IA 14120/2023, 14122/2023].

In an interesting development emanating from a recent decision of the Delhi High Court, a Division Bench of the Delhi High court has set aside an injunction order passed by a Single Bench in favour of Emami Ltd., (“Emami”) which had restrained Dabur India Ltd. (“Dabur”) from selling its product with mark and packaging similar to the mark and packaging of Emami’s Navratna Oil. It was Dabur’s case that the order should be set aside as Dabur was not given any opportunity to file a reply to the injunction application and could not provide factual details which were germane to the lis. The Division Bench agreed with Dabur’s argument and observed that the order merited setting aside because Dabur, who had been selling the product for around two (2) months, had not been given an opportunity to oppose the injunction application. The court further stated that Dabur should have been given a chance to file a written reply since it was already using the mark and packaging, and that ends of justice would have been met if Dabur was given such an opportunity. Accordingly, the Court allowed the present appeal and set aside the ad interim injunction passed by the Single Bench. The Division Bench’s order has significant implications for future trademark infringement matters in India. Given the authoritative value this order holds, courts will be cautious in deciding interim injunction applications in fresh infringement matters. The Delhi High Court has already begun exercising restraint in granting ad interim injunctions in fresh infringement matters, citing the Division Bench’s order. It is expected that, barring pleas against either counterfeits or blatantly infringing products, the court will refrain from granting ad interim injunctions without providing an opportunity for the other side to file a reply. This order is expected to significantly impact the frequency of ad interim injunction orders in Indian courts, as most intellectual property matters involve urgent reliefs in the form of ad interim injunctions and Anton Piller orders. However, it remains to be seen if the Division Bench will pass clarificatory observations in other matters. Dabur India Ltd. v. Emami Ltd. {FAO(OS)(COMM) 171/2023, order dt. 21.08.2023}.

The Bombay High Court recently dismissed an application for interim relief by ARG Outlier Media Pvt Limited (Plaintiff), parent company of Republic TV, against Rayudu Vision Media Limited (Defendant), parent company of RTV, from using the R RTV device mark, which the Plaintiff alleged to be similar to the Plaintiff’s R. device mark. It was the Plaintiff’s case that it has both statutory and common law rights over the R. device mark which pre-dates the Defendant’s adoption of a deceptively similar, R RTV Device mark. The Defendant, on the other hand, submitted that, the Plaintiff’s R. device mark does not have any unique stylization as it merely consists of letter R with a dot, both written in white on a red background, and hence, R. device mark is a ‘weak trade mark’ and the Plaintiff cannot claim exclusive right over single letter R and the red and white colour combination. The Defendant also submitted that, R RTV device mark is a distinct and stylized mark and it is visually and structurally different from the Plaintiff’s R. device mark, when both the marks are compared as a whole. The court, while agreeing with the Defendant, held that, the R. device adopted by the Plaintiff was in no manner stylized and therefore was not distinctive, and the Plaintiff cannot claim exclusivity over the letter R and red and white colour combination. The court, accordingly, dismissed the application for interim relief moved by the Plaintiff. Plaintiff’s Mark Defendant’s Mark M/s ARG Outlier Media Pvt Limited vs Rayudu Vision Media Limited COMMERCIAL IP SUIT (L) No. 6543 OF 2023

The Delhi High Court recently ordered removal of the artwork titled ‘GOORCHARREY LABEL’ registered in the name of the respondents, Deepak Kumar, among others (“Respondents”) from the Register of Copyrights (“Register”), following a cancellation petition filed by Manju Singal, trading as Singla Food Products (“Petitioner”). The cancellation petition was based on the Petitioner’s earlier rights in a similar artwork titled ‘GULCHHARE’. It was the Petitioner’s case that theRespondents’ adopted and fraudulently obtained registration for a similar artwork with a similar trade mark to offer identical goods. The Court noted that the Respondent’s artwork is a slavish imitation of the Petitioner’s registered artwork, name, colour combination, layout, arrangement, and artistic features used in the rival packaging. The Court, accordingly, ordered removal of the Respondent’s artwork from the Register. Petitioner’s artistic work Respondent’s artistic work Manju Singal Proprietor Singla Food Products versus Deepak kumar, Deepak Manocha, Sara Sales and anr. C.O.(COMM.IPD-CR) 715/2022.

The Supreme Court, recently, dismissed an appeal by Brihan Karan Sugar Syndicate Pvt Ltd (“Appellant”) against the Bombay High Court’s order to stay the execution of a decree passed by the Trail Court. In doing so, the Supreme Court ruled that in a suit for passing off action, Appellant must prove they acquired a reputation or goodwill related to the goods. If no goodwill or reputation is established, no further examination is needed to determine the Appellant’s right in the action. The Appellant, a country liquor seller, has copyright over the “Tango Punch” label and artistic work. The Appellant had, based on deceptive similarity between the rival labels and the Appellant’s prior rights, obtained a permanent injunction against Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (“Respondent”), restraining the Respondent from reproducing the label or any part of it in any material form. The Respondent appealed, and the Bombay High Court stayed the decree until the final disposal of the appeal. The Appellant appealed against the Bombay High Court’s order, arguing that the court should not have stayed the execution of a decree passed based on evidence and a complete trial. The Respondent argued that the Appellant had not provided evidence to prove its sales, turnover, or advertisement expenses, and that a Chartered Accountant certificate was not sufficient to establish goodwill and reputation. The Respondent also argued that the Appellant had objected to the Respondent’s application seeking approval for its labels from the Excise Commissioners. However, the Appellant later withdrew its objection, and accordingly, the withdrawal of objection and delay in filing the suit is an act of active acquiescence which was sufficient for the High Court to grant a stay on the execution of the decree. The Supreme Court, agreeing with the Respondent’s submissions, stated that sales and expenditure on advertising and promotion of a product from a Chartered Accountant may be sufficient for temporary injunction. However, at the time of final hearing, these figures must be proven to establish goodwill and reputation, which the Appellant has done. This was, in the Supreme Court’s opinion, the primary reason for the High Court’s stay on the execution of the decree. On the issue of acquiescence as a defence to copyright infringement, the Supreme Court ruled that, the Appellant’s withdrawal objection to the Respondent’s application seeking approval of the Excise Commissioner for the Respondent’s label and delay in filing the suit, was an act of active acquiescence, which is a complete defence against action of copyright infringement. The appeal was, accordingly, dismissed. Brihan Karan Sugar Syndicate Private Limited versus Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana.CIVIL APPEAL NO. 2768 OF 2023.

The Delhi High Court, recently, refused to restrain Parle from using the tagline FOR THE BOLD as part of the label on its B FIZZ bottles and cans, in a suit for permanent injunction filed by PepsiCo Inc. The Court, however, restrained Parle from using the tagline FOR THE BOLD as predominant part of any advertising campaign of its B FIZZ beverage. It was PepsiCo’s case that Parle’s advertisement campaign/use of a malt flavoured fruit juice beverage under the brand B FIZZ, comprising the tagline BE THE FIZZ! FOR THE BOLD!, as well as the tagline FOR THE BOLD! in a standalone manner on its social media platforms is infringement of PepsiCo’s FOR THE BOLD mark. PepsiCo had also claimed that the rival goods are allied and cognate in nature. Parle, in its rebuttal to PepsiCo’s claims, submitted that PepsiCo has erred in comparing the rival marks, by extracting the latter FOR THE BOLD! component of the composite mark, in contravention of Section 17 of the Trade Marks Act, 1999. Parle also refuted PepsiCo’s claim that the rival goods are allied and cognate in nature, thereby negating any likelihood of confusion. The Court, while deciding the case, observed that, while the rival goods are, in fact, allied and cognate in nature, the tagline FOR THE BOLD! appearing on Parle’s B FIZZ bottle/can is the least conspicuous element of the composite label, and thus, is likely to go unnoticed by an average consumer. This, in the Court’s opinion, negates any likelihood of confusion in the mind of the public. Resultantly, the Court refused to injunct Parle from using the tagline FOR THE BOLD! appearing on Parle’s B FIZZ bottle/can. The Court, however, observed that Parle has been using the tagline FOR THE BOLD! in a standalone manner as part of its advertising campaigns, which was found to be of infringing nature, and accordingly, the Court restrained Parle from using the tagline FOR THE BOLD! in a standalone manner in its advertising campaigns. The Court also directed Parle to not alter the label on its B FIZZ bottle/can without prior approval of the court. PEPSICO INC. & ANR. v. PARLE AGRO PRIVATE LIMITED, CS(COMM) 268/2021, I.A. 7170/2021 & I.A. 9591/2021.

The Delhi High Court in a recent judgement, recognized the doctrine of extended passing off in relation to an expired patent. F Hoffmann-LA Roche Ltd. (“Plaintiff”) filed a suit seeking a declaration that the approval granted to ‘Cadila Healthcare Limited’ (“Defendant 1”) and ‘Hetero Drugs Limited’ (“Defendant 3”) by ‘the Drugs Controller General of India’ (“Defendant 2”) for manufacturing authorization under the Drugs and Cosmetics Act, 1940, was invalid. The Plaintiff alleged that Defendant 1 and Defendant 3 were conducting clinical trials and marketing a drug purported to be biosimilar of the Plaintiffs’ product. The suit specifically invoked the action for extended passing off pertaining to the characteristic, composition, and quality of a product named ‘Trastuzumab’, which was earlier protected under a patent that expired in 2013. Extended passing off is a legal concept that extends protection beyond trademarked goods to protect other aspects such as the composition, characteristics, and quality of a product. In this case, the plaintiff sought to protect the reputation and goodwill associated with ‘Trastuzumab’ beyond the scope of the expired patent. CS(COMM) 540/2016 F Hoffmann-La Roche Ltd. & Ors. V/S Drugs Controller General Of India & Ors., & CS(COMM) 1119/201601 Roche Product (India) Private Limited & Ors. V/S Cadila Healthcare Limited & Ors.

Recently, the Madras High Court set aside an order passed by the Registrar of Trade Marks (“Respondent”), refusing the application for registration of M/s. Chu Chu TV Studios LLP’s CHUCHU TV Device mark, noting that the order was unsustainable. In the order, the examiner had noted that mere combination of two known words would not qualify as an invented word, even though such an objection was not raised in the Examination Report. In the report, an objection was raised on the ground that the Appellant’s mark was similar to a prior mark, CHUCHU, and that an affidavit attesting to the veracity of electronic evidence was not provided. The Appellant submitted that it had filed relevant documents in reply to the Examination Report to show that it had earlier rights in the mark CHU CHU. As regards electronic evidence, the Appellant submitted that an affidavit is not required to evidence content posted online by a third-party, which is what the Appellant had submitted to show use of its mark. The court observed that the Appellant had produced cogent invoices and material to sufficiently evidence use of the mark. The court further noted that the mark cited in the Examination Report is itself pending clearance, and the conclusion that the cited mark is valid or that use of the mark predates use of the Appellant’s mark, is untenable in law. The court also stated that the observations in the Respondent’s order regarding distinctiveness is inapplicable to device marks. Lastly, the court held that a certificate of electronic evidence is required only when an electronic record, which is within possession of the person producing such record, is sought to be introduced as evidence, and is not applicable to the present case. The court stated that a rejection on this account is not warranted, and the examiner could have simply called for the affidavit. Accordingly, the court directed that the Appellant’s application be accepted and advertised in the Trade Marks Journal. M/s Chu Chu TV Studios LLP v. The Registrar of Trade Marks, CMA(TM) No. 2 of 2023 & CMP. No. 15970 of 2023, Judgement dt. September 15, 2023.