Barodawala Mansion, 81, Dr. Annie Besant Road, Mumbai

IPR weekly Highlights (19)

8 (Demo)
TRADEMARK
HON’BLE MADRAS HIGH COURT RECOGNISES APOLLO AS A WELL-KNOWN TRADEMARK

Apollo Hospitals Enterprises Ltd sought a declaration designating their “Apollo” mark as a well-known trademark and requested an injunction against DR Dheeraj Saurabh, the owner of New Apollo Hospital in Bihar. This injunction aimed to prevent the unauthorized use of Apollo’s marks. Apollo informed the court that, in July 2022, they discovered the defendant’s blatant use of a deceptively similar mark for their hospital business. Despite receiving a cease-and-desist notice, the defendant neither admitted wrongdoing nor discontinued using the infringing trademark. The court also opined that the defendants were employing the mark within the same business sector and had dishonest intentions to gain unwarranted profits. Allowing them to use the name ‘New Apollo’ would lead to public confusion, as individuals might mistakenly perceive it as a hospital operated by the plaintiff. Consequently, the court concluded that the defendant not only violated the plaintiff’s trademark but also committed an act of passing off. Therefore, the court issued a permanent injunction, restraining the defendant from using Apollo’s registered trademark. The court further held that the plaintiff satisfied the criteria laid in Section 2(1)(zg) of the Trade Marks Act 1999 and declared it a well-known trademark.

Reference: 

(1) Apollo Hospitals Enterprises Ltd v Dr Dheeraj Saurabh C.S. (Comm.Div.) No.55 of 2023
TRADEMARK
HON’BLE HIGH COURT OF DELHI ORDERS THE ALTERATION OF THE SCENE WITH “VIMALAYA” PRODUCTS IN THE KANNADA MOVIE “AACHAR & CO”

The suit was filed by the Himalaya Wellness Company who are aggrieved by the depiction of the mark ‘VIMALAYA’ along with various other products of the Plaintiffs in the Kannada feature film titled ‘Aachar & Co’. In the movie, the protagonist engages in door-to-door sales of “Vimalaya” products, namely “Liv 52,” “Geriforte,” and “Evecare.” Intriguingly, Himalaya had officially registered these three products as trademarks, and the lawsuit additionally contested false advertising claims. In response, the Hon’ble Delhi High Court granted the filmmakers a 15-day window to enact the proposed revisions and submit the corrected version for verification to Himalaya’s legal representative. On 24th November 2023 the creators of the film “Aachar & Co” have acquiesced to altering scenes. Furthermore, the Hon’ble Delhi High Court mandated the submission of the altered film to the Censor Board of Film Certification (CBFC) for examination and approval. The CBFC is instructed to endorse the changes by 15th March 2024. Consequently, only the legally certified, modified version of the movie would be accessible for streaming on Amazon and other OTT platforms after the specified date.

Reference: 

(1) Himalaya Wellness Company & Ors. vs Prk Productions LLP CS(COMM) 844/2023 & I.A. 23488/2023
TRADEMARK
HON’BLE SUPREME COURT OVERTURNS INTERIM ORDER IN FAVOUR OF MAKE MY TRIP’S TO RESTRICT USE OF REGISTERED TRADEMARKS AS KEYWORDS BY GOOGLE AND BOOKING.COM

In its legal action against Google and Booking.com, Make My Trip sought to prevent the adoption or use of its registered word marks as keywords in the Google Ads Program or in any manner constituting trademark infringement. The single judge, on 27th April 2022, granted an interim injunction in favor of Make My Trip. The judge noted that competitors’ use of its registered mark, even as metatags, constitutes infringement under the Trademarks Act. However, the division bench at the Hon’ble Supreme Court overturned the impugned order, relying on a recent decision in Google LLC v. DRS Logistics (P.) Ltd. and Ors, wherein it was established that the use of trademarks as keywords would amount to fair use by both Google and the advertiser.
The Hon’ble Supreme Court emphasized that when searching for Make My Trip’s name or trademarks on Google’s search engine, Make My Trip’s web address appears in organic search results on the Search Engine Result Page (SERP). Consequently, the Hon’ble Supreme Court found it challenging to accept Make My Trip’s claim that Booking.com’s advertisements or links should not be visible as sponsored links on the SERP, asserting that MIPL cannot assert such rights based on the Trademarks Act.

Reference: 

(1) Google LLC v. Makemytrip (India) Private Limited and Ors. 2023 LiveLaw (Del) 1288
TRADEMARK
HON’BLE DELHI HIGH COURT GRANTS INJUNCTION IN PROHIBITING VBRO SKINCARE FROM PRODUCING AND SELLING PRODUCTS THAT RESEMBLE WOW SKIN SCIENCE

The Hon’ble Delhi High Court issued an interim order prohibiting VBRO Skincare from producing and selling products that resemble WOW Skin Science. The Hon’ble Delhi High Court further observed that the mark ‘WQVV’ was deceptively similar to the mark ‘WOW’, and the products of one company could be mistaken for another. The Hon’ble Delhi High Court found that VBRO Skincare’s products imitated Body Cupid’s ‘WOW’ products, causing confusion, and granted an injunction. Amazon, Flipkart, and Snapdeal were directed to take down infringing product listings within 72 (seventy-two) hours.

Reference: 

(1) Body Cupid Pvt Ltd v. Ms VBRO Skincare Pvt & Ors. CS(COMM) 883/2023, I.As. 25027/2023
PATENT
UNITED KINGDOM SUPREME COURT REJECTS AI INVENTORS

The recent judgment handed down on 20th December 2023 by the United Kingdom Supreme Court unanimously dismissed the appeal challenging the decision of the England and Wales Court of Appeal thereby affirming its previous decision to deny registration to inventions by Dr. Stephen Thaler’s AI DABUS, holding that AI software cannot be listed as an inventor. The court arrived at the definitive conclusion that, according to the Patents Act of 1977, an inventor must necessarily be a natural person. Notably, the legislative framework, at the time of its creation, did not anticipate the prospect of complex AI systems engaging in inventive activities. Furthermore, the appellant failed to substantiate how the invention could be attributed to the creative efforts of a natural person. Despite this, the court acknowledged the broader policy implications surrounding this matter, emphasizing that such considerations fall within the purview of lawmakers, urging them to address the evolving landscape of technological advancements.

Reference: 

(1) Thaler v. Comptroller General of Patents, Designs and Trademark [2023] UKSC49
COPYRIGHT
MICKEY MOUSE (STEAMBOAT WILLIE) ENTERS THE PUBLIC DOMAIN ON 1ST JANUARY 2024 AFTER 95 YEARS

The very first iteration of Mickey Mouse as Steamboat Willie in the 1928 short film entered the public domain after 95 (ninety-five) years on the 1st January 2024. This version of Mickey Mouse should ideally have entered the public domain in the year 1984 but Disney has systematically lobbied with Congress on two separate occasions to extend the duration of copyright protection by 40 (forty) years altogether, the 1998 law is sometimes derisively referred to as the ‘Mickey Mouse Protection Act’. The modern versions of Mickey Mouse are still protected by copyright.

Reference: 

Related Posts

Leave a comment