26th of April is World IP Day and we summarize and recapitulate some recent landmark judgments and legislative updates in the Indian IP landscape.

COPYRIGHT

Novex Communications Pvt. Ltd. v. Trade Wings Hotels Ltd. and Phonographic Performance Ltd. v. Bungalow 9 and 99 Ors.1

Novex Communications Pvt. Ltd. and Phonographic Performance Ltd. (collectively "Plaintiffs") sought to enforce their rights against establishments using copyrighted music without proper licenses. Defendants argued that Novex and PPL lacked authority, as they were not registered as Copyright Societies under Section 33(1) of the Copyright Act, 1957.

The Hon'ble High Court of Bombay determined that the assignment agreement between the music labels and Plaintiffs is lawful, rejecting the Defendants' claims to the contrary. The Court made a crucial distinction between copyright owners and copyright societies. In summation, the judgment emphasizes the importance of recognizing the rights of copyright owners whilst maintaining regulatory oversight.

The Court's thoughtful analysis and its contribution to the jurisprudence surrounding copyright law is nuanced. The decision serves as a precedent for future cases involving the intersection of copyright ownership, licensing, and the role of copyright societies in India's legal framework.

Universal City Studios LLC. and Others v. Dotmovies Baby and Others2

Universal City Studios filed an application for copyright infringement against rogue websites, wherein, the court rather than going with the usual "Dynamic Injunction", went a step ahead to issue a "Dynamic + Injunction" order. This can protect the copyrighted work from the moment they are created to cater the risk of them getting uploaded on rogue websites immediately. However, the court has also acknowledged that this is not sufficient to protect the copyright owners and new initiatives should be taken such as ISPs should block rogue websites as they can be accessed through VPN servers.

TRADE MARK

Pidilite Industries LTD v. Sanjay Jain & Anr.3

The Delhi High Court refused to cancel the registration of the "Kwikheal" trade mark and dismissed a plea filed by the plaintiff, an Indian adhesive manufacturing company based in Mumbai. The Court observed that even though the plaintiff has a statutory right in its registered mark "Fevikwik", it does not confer an exclusive right over part of the mark in "Kwik." "Having no such exclusive right on 'KWIK' there cannot be a right of rectification against 'KWIKHEAL'," the Court said while rejecting the plea. The plaintiff sought the removal of the mark "Kwikheal" which was registered as a trade mark in December 2014. The plaintiff claimed to be the registered proprietor of the mark "fevikwik" since January 1987. While dismissing the plea, the Court said that the common and dominating part of various marks of the plaintiff is "Fevikwik" which is suffixed with a sub-brand depending on the nature of the product.

PATENT

Novartis Ag v. Natco Pharma Limited & Anr.4

The Division Bench of the Hon'ble Delhi High Court stated that the Examination and Pre-Grant Opposition of a patent application are two distinct and independent processes and the Opponent has no right to intervene in the examination procedure. Novartis argued that the Patents Act, 1970 and/or Rules framed thereunder, do not provide for participation of pre-grant opponents in the examination process. It was submitted that while the representations of opposition may act as an aid to the examination process, however, the examination is an independent duty of the Controller irrespective of the opposition. Novartis highlighted that the right of pre-grant opposition is limited to orders passed under Section 25(4) of the Act.

The Division Bench highlighted that the rejection of opposition does not automatically lead to the grant of a patent, rather the Controller must conduct an independent examination of the application. Furthermore, the Court rejected the argument that Natco has a right to participate or be heard in the examination process, especially in cases where amendments are directed by the Controller. The judgment clarified that Opponent's right to be heard is specifically tied to the grounds specified in Section 25(1) of the Act with respect to Pre-grant Oppositions in Patents.

DESIGN

Jayson Industries and anr. v. Crown Craft (India) Pvt. Ltd.5

The dispute involved everyday items - a bucket, a mug, and a tub. The plaintiffs argued piracy of registered designs under Section 22(1) of the Designs Act, 2000. The defendant challenged the presumption of validity for registered designs, emphasizing distinctions from trade mark laws. The Court reiterated the basic features of a design as enumerated under the Designs Act. An idea, which is not intended for "temporal manifestation", by application of an industrial process cannot be protected under the Designs Act. The primary purpose of the Designs Act is the promoting industries by safeguarding new and original designs, emphasizing visual appeal and uniqueness, while prior publication, novelty, and aesthetic appeal are crucial considerations. The court concluded that the identified prior art designs posed a credible challenge, rendering the plaintiffs' designs vulnerable under the Designs Act.

PERSONALITY RIGHTS & DOMAIN NAMES

Anil Kapoor v. Simply Life India & Ors.6

The Delhi High Court passed an interim order protecting the personality rights of Bollywood actor Anil Kapoor and restrained various entities from misusing his image, name, voice or other elements of his persona for monetary gains without his consent. The Court also restrained "other unknown persons" from disseminating various videos, links of which will be uploaded in the order, and directed that the same shall be taken down immediately by all internet service providers.

The court passed interim injunction order in the plaintiff's suit seeking protection of his personality rights. The suit seeks to restrain various entities, including John Does, from violating his personality rights by using his name, acronym 'AK', nicknames like 'Lakhan', 'Mr. India ', 'Majnu Bhai' and phrase 'Jhakaas' and his voice and images, without his permission for commercial gain. The court directed that three domain names using plaintiff's name be blocked and suspended and be transferred in his name, subject to him paying requisite charges.

LEGISLATIVE DEVELOPMENTS

  • On April 12, 2023, the Madras High Court inaugurated its Intellectual Property Rights (IPR) Division, becoming the second High Court in India, after the Delhi High Court, to establish a dedicated division for IPR disputes
  • In August 2023, the Ministry of Commerce and Industry, with the aim of doing 'easy of business', notified the Jan Vishwas Act, 2023. This act aimed to revise 42 laws, including the Patents Act, 1970 by decriminalizing criminal penalties for specific offences outlined therein.
  • The Ministry of Commerce and Industry (Department of Promotion of Industry and Internal Trade) proposed certain amendments to the Patent Rules 2003 vide a notification dated 02 January 2024. The penalty for misrepresentation of patent rights has been raised from ₹ One Lakh to ₹ Ten Lakhs. The Jan Vishwas Act further replaced the imprisonment penalties previously stipulated in the Patents Act, 1970 for offences pertaining to i) unauthorized claim of patent rights under Section 120; ii) refusal or failure to supply information to the Central Government Section 122, and iii) the wrongful practice by non-registered patent agents provided under Section 123 of the Patents Act, 1970, with significant fines.

Additionally, the Jan Vishwas Act, 2023 introduced the appointment of an adjudicating officer to conduct inquiries and impose penalties, along with the provision to appeal against the decision passed by the Adjudicating Officer. In order to enact these provisions, The Draft Patent Rules 2024 outline the process, timelines and fees for filing and adjudicating complaints. This process helps prevent wrongful dismissals and gives alleged infringers an opportunity to defend themselves effectively, ultimately promoting justice and due process.

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