IPR CASE LAWS
NOTES
By
Into Legal World
THE TRADE MARKS ACT, 1999
Century Traders v Roshan Lal Duggar Co. (1977 SCC OnLine Del 50)
Mere presence of the mark in the register maintained by the trade mark
registry does not prove its user by the persons in whose names the mark was
registered and was irrelevant for the purposes of deciding the application for
interim injunction unless evidence had been led or was available of user of
the registered trade marks. It was also believed by the Hon’ble Court that
proof for actual damage or fraud is unnecessary in a passing off action. If
there is a likelihood of the offending trade mark invading the proprietary
right, a case for injunction is made out.
Sumat Prasad Jain v. Sheojanam Prasad and Ors., AIR 1972 SC 413
The court in this case distinguished between trade mark and property mark.
It held that, “The distinction between a trade mark and a property mark is
that whereas the former denotes the manufacture or quality of the goods to
which it is attached, the latter denotes the
ownership in them. In other words, a trade
mark concerns the goods themselves, while a
property mark concerns the proprietor. A
property mark attached to the movable
property of a person remains even if part of
such property goes out of his hands and ceases
to be his.”
N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583
The Court held that a rights holder can maintain a passing off action against
an infringe on the basis of the trans-border reputation of its trade marks and
that the actual presence of the goods or the actual use of the mark in India is
not mandatory. It would suffice if the rights holder has attained reputation
and goodwill in respect of the mark in India through advertisements or other
means.
Laxmikant V. Patel v. Chetanbhai Shah And Another
The definition of trade mark is very wide and means, inter alia, a mark
capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others.
Mark includes amongst other things name or word also. Name includes any
abbreviation of a name.
Orchid Chemicals & Pharmaceuticals Ltd. vs. Wockhardt Limited
Section 28 of the Act specifically deals with the
exclusive right under the Act. Therefore, a registered
proprietor of a trade mark can assert an exclusive right
to use the trade mark under Section 28 of the Act.
However, the said assertion is subject to two
conditions. The first condition is that it is subject to
other provisions of the Act . The second condition is
that it is subject to its validity.
Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd
A descriptive trademark may be entitled to protection if it has assumed
secondary meaning which identifies it with a particular product or as being
from a particular source.
Living Media India Limited v. Jitender V. Jain and Anr.
The issue before the court was- whether the name and style of "AAJ TAK"
and its logo is a generic term and as such is not the monopoly of any
particular person either in relation
to the news programme or
otherwise. The court observed,
both the words "AAJ" and "TAK"
may be individually descriptive
and may not be monopolized by
any user. But together the
combination of words has acquired
distinctiveness by virtue of prior, continuous and extensive use and
therefore, is protected.
Ishi Khosla v. Anil Aggarwal
The Delhi High Court in this case observed that- "to acquire secondary
meaning it is not necessary that product is in the market for number of years.
If a new idea is fascinating and appeals to the consumers, it can become a hit
overnight".
Metropolitan Trading Company v. Shri Mohanlal Agarwal
In this case since the trademark was in use for a long period of time, it was
said to have acquired distinctiveness, while the other trademark which is
also named "ZODIAC" was not capable of registration because it was in use
for a short period of time. This case law gives an idea as to how the courts
perceive the time frame with respect to "acquiring distinctiveness".
Bajaj Auto Ltd Vs TVS Motor Company Ltd (2009)
The Supreme Court of India (SC) has ordered all Indian courts to expedite
the trial and disposition of Intellectual Property (IP)-related case laws. The
Supreme Court has ordered that the hearings in cases involving intellectual
property in India proceed on a daily basis and that the final judgement in a
case should typically be rendered within four months of the day the action
was filed.
Yahoo!, Inc. Vs. Akash Arora & Anr
In this case, Yahoo!, the domain name of the plaintiff, and Yahoo India!, the
domain name of the defendant, were almost phonetically same and
comparable. In such a scenario, there was a serious possibility that internet
users who were using the plaintiff's domain name would get confused and
tricked into thinking that the defendant's and plaintiff's domain names had
some sort of common source or connection.
Bayer Corporation Vs. Union Of India
Bayer Corporation's case was based on the claim that, when Section 2 of the
Drugs and Cosmetic Act and Section 48 of the Indian Patent Act, 1970 are
read together, a mechanism of patent linkage is created under which no
market approval for a drug can be given if a patent already exists for that
same drug. The Hon. Delhi High Court (HC) of India ruled that because the
objectives of the two Acts are unlike, there is no such Drug-Patent Linkage
system in the country of India.
Clinique Laboratories LLC And Another Vs. Gufic Limited And Anr
In this instance, the court decided that one registered owner of an identical
or similar brand might be sued for trademark infringement by another
registered owner. In this instance, a temporary injunction was issued in the
plaintiff's favour pending the competent authority's decision on the petition
for cancellation.
Novartis Vs. Union Of India
The issue concerns the denial of a patent for a drug that was neither
"inventive" nor "effective" enough. There was no novel drug invented, and
according to the Patent Act of 1970, the discovery of an already-known
drugs does not qualify as an invention. The Supreme Court of India endorsed
the idea that under the Patent Act of 1970, for the grant of pharmaceutical
patents in India, there is a new
test of improved therapeutic
efficacy for claims that cover
some incremental changes to
already existing drugs, for
which the Novartis's drug also
did not qualify, in addition to
proving the traditional tests of
inventive step, novelty, and application.
THE PATENTS ACT, 1970
F. Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central
It was first Patent Litigation in India post India’s 2005 Product Patent
Regime which included public interest and pricing issues. Over the years
India has seen many patent disputes between
Foreign Multinational Pharmaceutical
companies and Indian generic drug companies.
But the suit between Roche and Cipla has surely
set the standards when it comes to a patent
infringement suit.
The decision outlined certain procedures and
rules that must be followed in each case of
patent infringement. A 16 step test was
established for creating patent claims in order to
determine the scope and if there had been any infringement. For every patent
infringement lawsuit, this may be regarded as the standard and ideal test.
Dr Snehlata C. Gupte v. Union of India & Ors (2007)
The court held that the date of the grant of a patent is the date on which the
controller passes an order to that effect on the file i.e. on the day in which
the Controller makes a decision to grant a patent. The issue of a certificate at
a later date is then nothing more than a mere formality.
The court also came down strongly against the practice of filing serial pre-
grant oppositions. through aliases, a practice now fairly common in most
pharmaceutical patent cases.
Ericsson v Xiaomi, 2016
The case highlights how patent holders use the law to sometimes extract
large sums of royalties and license fees for use of their technologies.
Vringo Infrastructure Inc. & Anr. v. Indiamart Indermesh Ltd. & Ors.
The issue in this case involved that whether a foreign company who has
registered patents in India, but has not put the patents to use can seek
injunctions against others from using/ registering that patent? The court held
that if a patent is registered in India by a foreigner but not used, then others
cannot be restrained from using/ registering that patent as it would seriously
affect the economy.
Aloys Wobben vs Enercon (India) Limited (2010)
The issue in this case was Whether, in a patent infringement suit and patent
validity challenge, and a counter claim from the Defendant thereof before
the HC, the HC or IPAB will have exclusive jurisdiction to decide the
validity? The SC held that if a revocation has been filed before the IPAB
first then the Defendant in a patent infringement suit cannot file a
counterclaim on the same cause of action.
Since both Parties have consented to an expedited trial for the infringement
suit before the Delhi HC, it would not be open to either of the consenting
parties, to seek redressal from another forum. Thus, the Defendant will have
to pursue the infringement suit and the counterclaim before the Delhi HC
and not the revocation before IPAB.
Merck Sharpe and Dohme Corporation v. Glenmark
The court noted that the onus to prove that the invention in the patent was
obvious would rest on the Defendant. The court placed emphasis on the
definition of ‘invention’ given in Section 2(1) (ac) of the Patent Act and
according to which “invention” is a new product or process involving an
inventive step and capable of industrial application, which was applicable in
this case.
SAMSUNG ELECTRONICS CO., LTD. V. APPLE INC. (S.CT. 2016)
The U.S. Supreme Court addresses the
issue of damages in design patents
under 35 U.S.C. 289. In this decision,
the Supreme Court ruled that the
relevant "article of manufacture" for
arriving at a § 289 damages award need
not be the end product sold to the
consumer but may be only a component
of that product.
This decision overrules the Federal Circuit's 2015 Apple v. Samsung
decision, at least as it applies to damage calculations under Section 289.
EGYPTIAN GODDESS, INC. V. SWISA, INC. (FED. CIR. 2008)
In this en banc decision, the Federal Circuit does away with the point of
novelty test to determine infringement of a design patent. Instead, the Court
relies upon the ordinary observer test. The Court also explained that is was
not necessary, or even desirable, for District Courts to provide a verbal
description of the scope of a design patent claim.
SPORT DIMENSION, INC. V. COLEMAN CO., INC (FED. CIR. 2016)
The Federal Circuit once again considers the issue of functional elements in
a design patent and affirmatively rejects any interpretation of its prior cases
that requires that functional elements be "factored out" when analyzing
design patent claims.
CROCS, INC. V. INTERNATIONAL TRADE COM'N (FED. CIR. 2010)
The Federal Circuit applies its Egyptian Goddess decision to find
infringement of a design patent covering a sandle manufactured by Crocs.
BRULOTTE V. THYS CO. (S.CT. 1964)
A patent license that required royalties to be paid beyond the expiration of
the patents was considered patent misuse. As a result, the licensee had no
obligation to continue making payments under the agreement after the
expiration of the patents.
GRAHAM V. JOHN DEERE CO. OF KANSAS CITY (S.CT. 1966)
This is a seminal Supreme Court decision that sets forth the standard for
determining obviousness under the Section 103 of the U.S. Patent Act.
KEWANEE OIL CO. V. BICRON CORP., (S.CT. 1974)
The Supreme Court analyzed the relationship between patent laws and trade
secret laws, and determined that patent law does not preempt state trade
secret protection.
BONITO BOATS, INC. V. THUNDER CRAFT BOATS, INC. (S.CT.
1989)
The Supreme Court found that a state law that prevented the copying of
unpatented boat hull designs conflicts with the federal patent laws.
Consequently, this statute is preempted, and cannot be enforced.
THE COPYRIGHT ACT, 1957
THE CHANCELLOR, MASTER AND SCHOLARS OF THE
UNIVERSITY OF OXFORD & ORS. V. RAMESHWARI
PHOTOCOPYING SERVICES AND ANR., CS (OS) 2439/2012
The copyright judgement seems to defy the provision of section 52 of the
Indian Copyright Act, which states that using/reproducing/distributing parts
of a protected work without offering any payment to the owner can be
permissible. In a legal purview, this is known as the essence of ‘fair dealing’.
However, the petitioners had a different thought on that as they emphasized
the fact that duplication of course material via photocopying was not
covered under the concept of fair dealing for private use or research.
RATNA SAGAR (P) LTD. V. TRISEA PUBLICATIONS & ORS., 1996
PTC (16) 597
In Ratna Sagar (P) Ltd. v. Trisea Publications & Ors., 1996 PTC (16) 597,
the petitioner, a renowned publisher of children’s books “Living Science”,
sued respondent, who published the book
“Unique Science” for the copyright
infringement. According to the plaintiff, the
content available in the defendant’s book is
deceptively similar to theirs. After
examining either publication, the court held
the respondent guilty of copyright
infringement and imposed the perpetual
injunction on such an act as per Sections 14
& 19 of the Act.
NAJMA HEPTULLA V. ORIENT LONGMAN LTD., AIR 1989 DEL 63
The petitioner was the legal heir of Maulana Abdul Kalam Azad, who has
provided this work to Prof. Humanyun Kabir for its translation and
narration. The plaintiff had given the copyright to the publisher and had
rejoiced 50% of royalty for the next 30 years. Therefore, the court held that
the plaintiff under no circumstance deters the publisher from publishing the
book after completing the said term.
SUPER CASSETTES INDUSTRIES LIMITED V. YOUTUBE &
GOOGLE
SCIL claimed that the YouTube business model reaps substantial profit from
the use of copyrighted work uploaded
without availing approval from the
rightful copyright owners and without
paying any royalty for the same. The
High court opined that video streaming
giant and Google should stop
reproducing, distributing, transmitting, or
displaying on their portal any audio-visual works which are in the exclusive
ownership of SCIL.
STAR INDIA (P) LTD. V. PIYUSH AGARWAL & ORS, C.S. (O.S.) NO.
2722/2012, DEL HC
The Delhi High court opined that while the performance & sound/visual
recordings of the said performance are covered under copyright protection,
the facts from the broadcast were not. After the match’s broadcast, is it
impractical for any party to claim that such information manifested by the
performance is not in the public domain. After airing the first broadcast of
the performance, the information presented via performance is in the public
domain. Hence, the agreement (regarding the 72-hour media right
monopoly) between the plaintiff and the BCCI is not practical since
copyright protection is not available for information in the public domain.
HAWKINS COOKER LTD. V. MAGICOOK APPLIANCES, 100 (2002)
DLT 2008
The court passed a copyright judgement preventing respondent, and its
agents, offices and representative from violating, adapting, reproducing, or
transmitting in any manner on their portal or other violating in any manner
the feature films, musical work, or sound recording of the plaintiff claims
copyright, without getting an apt copyright license from the plaintiff.
EASTERN BOOK COMPANY & OTHERS V. D.B. MODAK &
ANOTHER, AIR 2008 SC 809
This case was itself puzzling because of the way deal with the concept of
Copyright in India. This case came to light when a plaintiff, Eastern book
company, file the petition in the court
for the alleged infringement done by
the respondents, viz Spectrum Business
Support Ltd and Regent Datatech Pvt
Ltd. The petitioner, a well-known
publishing house, claimed that the said
respondents infringed its work in a
significant way.
Thus, the petitioner has no rights to leverage legal proceeding on the
grounds of copyright protection.
The petitioners had tough times with these facts as these prevent them from
winning the case in the lower and high court.
KRISHNA KISHORE SINGH VS. SARLA A. SARAOGI & ORS.
In this case, the Delhi High Court refused to grant an interim injunction
against publication and release of films purportedly related to Sushant Singh
Rajput as the plaintiff, SSR’s father failed to make out a prima facie case,
and because irreparable harm and balance of convenience were in favour of
the defendants. After reviewing the facts and relevant cases, the Court came
to the conclusion that the plaintiff failed to make out a valid case for
violation of celebrity or publicity rights of SSR or his family members
because the plaintiff was not aware of the content of the films, the
defendants were not using SSR’s image, likeness or name, and because the
films had appropriate disclaimers.
