The Hon’ble Delhi High Court has, in a suit of injunction filed by Tirupati Structurals Limited (“Plaintiff”), restrained Jai Prakash Singhal (“Defendant”) from using “MM TIRUPATI” or any other mark which is deceptively similar to the Plaintiff’s mark, “TSL-TIRUPATI”, during the pendency of the present suit. It was the Plaintiff’s case that it adopted the mark TSL-TIRUPATI, wherein TSL is the acronym of the Plaintiff’s corporate name and TIRUPATI has been adopted arbitrarily on/in relation to PVC pipes. Since the Plaintiff has been using the mark TSL-TIRUPATI since 1994 on/in relation to unrelated goods, in a non-geographical context, it has acquired distinctiveness. Accordingly, the Plaintiff, aggrieved by the use of the mark “MM TIRUPATI” by the Defendant, instituted a suit of infringement and passing off against the Defendant. The Defendant, on the other hand, argued that, since “TIRUPATI”, which is the common term in the rival marks, is generic and common to trade, and even the Plaintiff’s registration for the mark TSL-TIRUPATI was allowed by the Trade Marks Registry with a condition that the mark will not give the Plaintiff any exclusive rights over the word TIRUPATI, therefore, the Plaintiff does not enjoy monopoly or exclusivity over the said term. The Defendant, consequently, argued that presence of such common term in the rival marks cannot form the basis for the court to determine deceptive similarity. The Court ruled that, while the term TIRUPATI has a geographical designation, since it has been used by the Plaintiff on unrelated goods, it cannot be said that the adoption of the term TIRUPATI as part of the Plaintiff’s mark TSL-TIRUPATI is generic or descriptive. As regards the effect of disclaimer in the Plaintiff’s registration, the Court ruled that, while a disclaimer limits the scope of protection of the disclaimed element, such a disclaimer will not limit the Plaintiff’s common law right in the disclaimed element, which it has established through long usage. Lastly, as regards the Plaintiff’s plea for injunction, since the Court found the rival marks to be confusingly similar and the Plaintiff to have successfully met the criteria set forth by the classic trinity test of passing off, it granted an ad interim injunction in the Plaintiff’s favor, till the pendency of the suit.

The Hon’ble Delhi High Court has, in a suit for injunction filed by Infosys Ltd (“Plaintiff”), restrained Southern Infosys Limited (“Defendant”) from using the mark INFOSYS as part of its corporate name. It was the Plaintiff’s case that the Defendant’s adoption and use of INFOSYS as part of its corporate name constitutes infringement of the Plaintiff’s rights in the same. The Defendant argued that the term Infosys is generic and descriptive of the Plaintiff’s services, citing a 1999 Ministry of Corporate Affairs circular that allowed the use of the term Infosys as a part of corporate name to support its claim. The Defendant also argued that, while the Plaintiff has admitted that it had sent a notice to the Defendant in 2023, it has concealed material facts that, it has also issued similar notices in 2001 and 2020, which shows that the Plaintiff was aware of the Defendant’s use of Infosys since 2001. Accordingly, the Plaintiff was not only aware of the Defendant’s presence and use of INFOSYS as a corporate name, but there is also a delay of more than two (2) decades in instituting the present suit. Hence, such delay, and the Plaintiff’s acquiescence make the suit inadmissible. The Defendant, lastly, argued that, even on the merits of the case, the Plaintiff is not entitled to any relief due to the dissimilarity of the rival goods/services. The Court dismissed the Defendant’s reliance in the MCA’s circular and consequently, Defendant’s claim that the mark INFOSYS is generic, and the ruled that, such government advisories are to ensure that a company’s name accurately reflects its business activities, and it does not automatically deprive these terms from acquiring distinctiveness as trademarks. The Court also dismissed the Defendant’s claim that INFOSYS is descriptive, as the mark has acquired secondary meaning and is well-known. The Court also dismissed the Defendant’s defence of material concealment, stating that it had not provided a copy of the Plaintiff’s 2001 notice and that the 2020 notice was issued during the COVID-19 pandemic. Accordingly, the non-disclosure of 2020’s notice is un-intentional. The Court also ruled that acquiescence must be active and positive from the Plaintiff, and without sufficient evidence from the Defendant, the Court did not deny the Plaintiff’s relief sought, despite the Defendant’s argument of delay and acquiescence. The Court lastly, ruled that, since the suit is filed under Section 29(5) of the Trade Marks Act, 1999, under which use of a registered trademark as a corporate name amounts to infringement, any differences in the actual services does not assist the Defendant. The Court further ruled that, in any case, there is an overlap of rival goods/services and hence, a case of infringement is made out. The Court, accordingly, granted an ad interim injunction in the Plaintiff’s favor and granted the Defendant four months’ time to transition to a non-infringing trade name after the expiry of which the Defendant will cease use of the trade name INFOSYS. INFOSYS LIMITED versus SOUTHERN INFOSYS LIMITED CS(COMM) 257/2024, Judgment dt. May 27, 2024

Recently, the Madras High Court, in the case of Imclone LLC (“Appellant”) v. the Assistant Controller of Patents and Designs (“Controller”), clarified the interpretation of non-patentability of “the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature”. The court allowed the appeal and directed the Controller to grant the Appellant a patent for its “Receptor Antagonists for Treatment of Metastatic Bone Cancer”. A First Examination Report was issued by the Controller, citing non-patentability, inter alia, on the ground of the invention being the discovery of a naturally existing molecule/substance. The Appellant, in its reply, submitted that the claimed antibody was not isolated from nature but was generated by enhancing the immunity of genetically modified mice. Subsequently, the Controller disagreed with the Appellant’s submissions in the oral hearing and refused the patent application. The Appellant relied on several decisions of the Intellectual Property Appellate Board (IPAB) and argued before the court that the Controller’s decision was misplaced, and the Appellant’s invention did not constitute non-patentable subject matter. The Controller, on the other hand, argued that the antibodies in question were isolated from human beings and were produced using known technology, and therefore lacked novelty. It was also argued that IPAB decisions cited by the Appellant involved genetically modified or mutated antibodies, which differ from the current case. The court observed that the statute uses the qualifier mere in relation to “discovery of a scientific principle” and this does not extend to “the discovery of any living thing or non-living substance occurring in nature”. The court further noted that, in any case, in the Appellant’s invention, the mice’s genetic material had been replaced with human genetic material, and the mice were then injected with an engineered antigen, resulting in the generation of novel antibodies. The court, therefore, concluded that while non-living substances found in nature or isolated from nature are not patentable, a synthetic version of a rarely occurring substance, crucial for treating illness, when produced in large quantities, can be patented, if other criteria such as novelty and technical advancement are satisfied. Accordingly, the court directed the Controller to grant a patent to the Appellant’s application. Imclone LLC v. Assistant Controller of Patents and Designs, [(T) CMA (PT) 126/2023, judgment dt. March 6, 2024]

The Delhi High Court, in a recent judgment, granted an interim injunction in favor of Dongguan Huali Industries Co. Ltd. (“Plaintiff”), barring Anand Aggarwal and others (“Defendants”) from using the mark HUALI. The court found that the Plaintiff had demonstrated prior rights in India, and a prima facie case of dishonest adoption by the Defendants, despite the Defendants being the registered proprietors of the HUALI mark in India. The Plaintiff contended that since it had marketed furniture components under the mark HUALI globally since 2004, and in India since 2007, it has established substantial goodwill and reputation. The Plaintiff also submitted that it has made efforts to secure a trade mark registration in India, which has been opposed by one of the Defendants. Further, the Plaintiff argued that the Defendants’ adoption of an identical mark for identical goods and services was a deliberate attempt to mislead consumers and exploit the Plaintiff’s established market presence. Moreover, as per the Plaintiff, the Defendants had obtained a trade mark registration dishonestly by relying on false documentation. The Defendants, on the other hand, submitted that they have a valid trade mark registration for the mark HUALI in India. They argued that the Plaintiff has claimed use of its mark in India only since December 2013, in its trade mark application, and that their alleged claim of use in India since 2007 is only an attempt to supersede the Defendants’ use claim of 2008. As regards the allegation of their evidence being false/fabricated, the Defendants submitted that the discrepancies in the documents were owing to inadvertent clerical errors made by junior employees, who have since left the company. The court, in its decision, highlighted the Defendants’ questionable conduct, including their reliance on forged documents, which threatened irreparable harm to the Plaintiff’s market reputation and financial interests. The court also emphasized that while trademark registration grants statutory benefits, it does not extinguish prior common law rights arising from actual use and accrued goodwill. Accordingly, the court granted an interim injunction in favour of the Plaintiff.

In a recent ruling, the Division Bench of the Delhi High Court, dismissed a petition filed by Loreal India Pvt. Ltd. (“Appellant”), seeking cancellation of the trademark CLARIWASH, registered by Rajesh Kumar Taneja, trading as Innovative Derma Care (“Respondent”), citing that, notwithstanding the errors made by the Trade Marks Registry (“Registry”) during the examination of the Respondent’s mark, the Appellant has failed to make out a case in its favour.  The petition was based on the Appellant’s prior use of the CLARI-formative marks, which were adopted by the Appellant’s predecessors in the year 2009. The Appellant argued that the Registry had committed a clerical error by searching for CHARIWASH instead of CLARIWASH during the examination of the Respondent’s mark. Consequently, the Appellant’s CLARI-formative marks were not cited in the Examination Report, and the Respondent obtained registration for the CLARIWASH mark. The Appellant claimed that since its CLARI-FI and CLARIMOIST marks were similar to the CLARIWASH mark, the Registry ought to not have granted registration to the Respondent. While the court acknowledged the Registry’s error, it declined to cancel the registration on this ground alone. As per the court, the Appellant had failed to establish prior use of its CLARI-formative marks at the time the Respondent’s CLARIWASH mark was registered, i.e., as of the year 2009. The court further opined that the Appellant’s CLARI-FI and CLARIMOST marks were not similar to the CLARIWASH mark, and thus could not be a ground for cancellation. The court also based its decision on the fact that the Respondent had enjoyed the registration of the mark for over 14 years, and the Appellant had failed to file an opposition against the application when it was published. Therefore, the court concluded that the cancellation of the mark would unfairly prejudice the Respondent’s rights in the CLARIWASH mark. Loreal India Pvt. Ltd. v. Rajesh Kumar Taneja, trading as Innovative Derma Care and Anr, [RFA(OS)(IPD) 2/2023], judgment dt. July 15, 2024

The Hon’ble Delhi High Court has overturned an injunction order passed by the Single Bench in a patent infringement claim by Novartis AG and ANR (“Novartis”) against Natco Pharma (“Natco”), after finding out that Novartis’s patented drug, ELT-O (“Suit Patent”) was a non-patentable subject matter and also ordered the Suit Patent to be cancelled. The Single Bench had, though its order, restrained Natco from using the Suit Patent, in any manner, to which Natco preferred an appeal on the ground that Novartis’ suit patent is invalid. Natco argued that the Suit Patent was covered under an earlier expired patent (IN’176) and the former was merely a new form of Novartis’ expired patent, ELT, a known substance, without enhancing ELT’s efficacy in ELT-O, and hence, the Suit Patent, being a non-patentable subject matter, is invalid. Novartis, on the other hand, contended that its expired patent only discloses ELT and not ELT-O. Additionally, ELT-O has higher therapeutic efficacy since it has enhanced solubility and bioavailability over ELT and hence, the Suit Patent is patentable. The Divisional Bench (DB) observed that patent validity is not presumed merely because a patent is granted, and emphasised a defendant’s right to challenge patent validity in patent infringement cases. The DB highlighted that enhanced bioavailability does not necessarily imply higher therapeutic efficacy and concluded that ELT-O, a pharmaceutical salt of a known substance ELT does not have enhanced therapeutic efficacy. Accordingly, the DB invalidated Noravtis’ suit patents and set aside the Single Bench’s injunction order. Natco Pharma v. Novartis Ag And Anr., [FAO(OS) (COMM) 178/2021, judgment dt. April 24, 2024]

The Hon’ble Delhi High Court has, recently, in a suit for injunction filed by Phonographic Performance Ltd (“Plaintiff”) restrained AL-Hamd Tradenation (“Defendant”) from using the Plaintiff’s copyrighted sound recordings without a license. It was the Plaintiff’s case that it owns and controls the public performance and broadcasting rights to a vast repertoire of international and domestic sound recordings and any use of these sound recordings without an appropriate license from the Plaintiff constitutes copyright infringement. The Defendant intended to use these copyrighted works for an event at a restaurant and proposed a license fee significantly lower than the standard rate, which the Plaintiff refused. In spite of this, the Defendant, proceeded to play the sound recordings. The Plaintiff, upon discovering the Defendant’s infringing activities, filed the suit. The Defendant argued it was prepared to pay only the proposed license fee and, following the Plaintiff’s refusal, it had filed a petition seeking a statutory license and asserted that it should not be compelled to meet the Plaintiff’s unreasonable demands. The Court highlighted the necessity of protecting the Plaintiff’s copyright and ensuring fair compensation for the use of their works. It also acknowledged that the Defendant’s unauthorized use and exploitation of copyrighted sound recordings, without a proper license, can cause irreparable damage to the Plaintiff. The Court therefore restrained the Defendant from using any of the Plaintiff’s copyrighted sound recordings without obtaining a proper license. The Court also ruled the Defendant is at liberty to approach the Plaintiff to secure a license by paying the fees as stipulated by the Plaintiff. Phonographic Performance Limited v. Al-Hamd Tradenation [CS(COMM) 564/2024].

Recently, the Bombay High Court granted an ex-parte ad-interim injunction restraining Codible Ventures LLP and Ors. (“Defendants”) from violating the personality and publicity rights of the renowned singer, Arijit Singh (“Plaintiff”), by employing AI tools for creating duplicate recordings, and mimicking his voice, vocal techniques and other attributable characteristics, in any manner whatsoever. The Plaintiff submitted that as a well-known singer and celebrity, holds the right to control the use of his personality traits, and any misappropriation thereof, for a commercial purpose, is liable to be restrained not only on the basis of publicity rights, but also the tort of dilution, specifically, tarnishment. The Defendants used AI tools to allow users of their platform to mimic the Plaintiff’s voice. The Plaintiff stated that such unauthorized distortion, mutilation, or dissemination of the Plaintiff’s performances amounts to violation of his moral rights under copyright law and have diminished his control over the commercial use of his persona. The court acknowledged the Plaintiff’s concerns and highlighted the increased targeting of artists through unauthorized generative AI. The court stated that the Defendants’ unauthorized and exploitative use cannot be shielded under the constitutional freedom of speech and expression, which allows for critique and commentary, but does not grant the license to exploit a celebrity’s persona for commercial gain. The court satisfied that the Plaintiff had met the requirements of establishing personality and publicity rights, i.e., by establishing (i) the celebrity status of the plaintiff, (ii) that the plaintiff is identifiable from the defendant’s unauthorized use, and (iii) that such use is for commercial gain, restrained the Defendants from use of the Plaintiff’s likeness and persona, in any manner whatsoever. Arijit Singh v. Codible Ventures LLP, COM IPR SUIT (L) NO.23443 OF 2024, Judgement dt. July 26, 2024 Click here to view the Judgement Copy

A Division Bench (“DB”) of the Hon’ble Delhi High Court has set aside an injunction order passed by the Trial Court against the appellant, Ganesh Gouri’s adoption of the new AQUA PLAST device mark after finding that the rival marks are different based on overall commercial impression. The brief facts of the case are that, Ganesh Gouri has entered into a settlement agreement with the respondent, RC Plasto, pursuant to an earlier suit in Nagpur court involving the rival parties, under which Ganesh Gouri agreed to not use the mark PLASTO or the tagline NAAM HI GAURANTEE HAI but could use the mark AQUA PLAST. Ganesh Gouri’s subsequent adoption of a new device mark for AQUA PLAST was challenged by the respondent in the form of a suit for injunction before the Trial Court, which allowed the interim injunction motion moved by the respondent. Ganesh Gouri, aggrieved by the order, preferred an appeal against the order. Ganesh Gouri argued that the present suit is a clear case of Forum shopping, since both the parties are based in Nagur and the prior suit was also filed in Nagpur court. Ganesh Gouri also placed reliance on his registration for the copyright over the work subsisting in the new device mark. While RC Plasto filed a copyright cancellation against this device mark, it was dismissed, first by a single judge, and then in appeal by the DB, since the DB concluded that the only similarity between the rival marks was the word PLAST or the colour blue, which was not held to be sufficient to hold Ganesh Gouri’s work as a colourable imitation or substantial reproduction of RC Plasto’s device mark. RC Plasto rebutted the allegations of forum shopping and argued that the present suit was based on new cause of action involving different device marks. RC Plasto also argued the rival marks to be nearly identical/deceptively similar. As regards maintainability of the suit, the DB reiterated the well-settled law that for every fresh cause of action, a fresh suit would lie. The DB also observed that while the Safe Distance Rule allows a party to act against another party from making minor changes to circumvent a court order by moving to the same court that passed the earlier order, the rule does not bar a party from filing a fresh suit. On merits, the DB held that the injunction passed by the Trial Court is misplaced since there is no commonality in the rival device marks, apart from the color blue and the word PLAST, which is derivative of plastic. The DB also ruled that, while it is a settled law that an appellate court ought not to disturb the prima facie findings, they may exercise discretion when the trial court has acted in ignorance of settled principles of law. The DB, accordingly, set aside the impugned interim injunction order. M/s. Ganesh Gouri Industries & Ors. v. R.C. Plasto Tanks & Pipes Pvt. Ltd. [FAO (COMM) 54/2022] and R.C. Plasto Tanks & Pipes Pvt. Ltd. v. Ganesh Gouri Industries & Anr. [RFA(OS)(IPD) 1/2023] Judgements dated August 5, 2024 .

Recently, Neela Film Productions Private Limited, a renowned production house, filed a suit for permanent injunction restraining, inter alia, infringement of copyright and trade mark, misappropriation of publicity rights, unfair competition, passing off, tarnishment and dilution, against John Doe parties, including various websites, e-commerce platforms, and YouTube channels. The plaintiff has produced several fiction and non-fiction shows since the year 1998, which have been broadcasted over various popular television channels, including the famed show ‘Taarak Mehta Ka Ooltah Chasmah’. The plaintiff has owned exclusive rights to all concept, format and the intellectual property vesting in the aforesaid show, by virtue of which, the plaintiff has obtained trade mark registrations for various trade marks in relation to the show, as well as copyright registrations for the various characters and animations featured in the show. The plaintiff has alleged the defendants of activities such as selling infringing merchandise on e-commerce platforms, registering the domain name https://taarakmehtakaooltahchashmah.com/ to advance commercial gains by attracting traffic to their website, hosting content that features the show’s characters and imagery, and creating AI-generated images (deepfakes) of the show’s characters, which dilute and tarnish the value of the plaintiff’s intellectual property, especially when associated with unsavoury sexually explicit content.    The court, in consideration of the merits of the case, stated that the defendants are not authorized to provide services utilizing the intellectual property of the plaintiff in the aforesaid show, and that the act of, inter alia, posting, streaming, broadcasting, providing access to communicating to the public, publishing content, goods or services featuring the intellectual property of the plaintiff amounts to infringement of the exclusive rights vested with the plaintiff. The court, additionally, held that the plaintiff will be exposed to irreparable financial and reputational loss and injury, in case the defendants are not restrained from carrying out the aforementioned activities, and that the illegal and infringing contents are easily and freely available and accessible across India, which makes it almost impossible for the plaintiff to take actions against such websites in various jurisdictions. Accordingly, the court, while issuing notice to the defendants, passed an ex parte ad-interim injunction in favour of the plaintiff, and restrained the defendants from, inter alia, carrying out the aforementioned activities. Neela Film Productions Private Limited vs. TaarakMehtaKaOoltahChashmah.com & Ors. [CS (COMM) 690/2024, order dt. August 14, 2024]