ARTICLE
12 March 2025

IPR Weekly Highlights (71)

LM
Lex Mantis

Contributor

Levi Strauss & Co., (Plaintiff) known worldwide for its Levi's brand of denim jeans has filed a suit against Aman Ojha, Kamal Kumar, and Raja Ram (Defendants) in the Delhi district court for trademark...
India Delhi Intellectual Property

TRADEMARK

DELHI COURT ORDERS DESTRUCTION OF LEVI'S COUNTERFEIT GOODS

Levi Strauss & Co., (Plaintiff) known worldwide for its Levi's brand of denim jeans has filed a suit against Aman Ojha, Kamal Kumar, and Raja Ram (Defendants) in the Delhi district court for trademark and copyright infringement. The Plaintiff sought a permanent injunction, damages, and the destruction of counterfeit goods, among other reliefs.
The court had previously issued an order restraining the Defendants from using Levi's registered trademarks. Subsequent inspection by court-appointed Local Commissioners revealed continued infringement activities at the Defendants' premises, that resulted in seizures of a substantial quantity of counterfeit Levi's products, including, finished jeans, Levi's tags, unfinished jean pockets, and labels.
Aman Ojha settled his dues by paying Rs. 1,50,000 as damages to the Plaintiff. To fully adjudicate the remaining claims, the court, applying the principles of damage assessment established in the Koninklijke Philips case, ordered Kamal Kumar and Raja Ram to pay damages of Rs. 3 lakhs along with the costs of the suit & fees of the commissioner. The court also mandated the destruction of all seized counterfeit goods.

1. Levis Strauss & Co. vs. Aman Ojha & Ors. ; CS (COMM) 75/2022

TRADEMARK

MADRAS HC ALLOWS RENEWAL OF TRADEMARK DESPITE LAPSE

Sakthi Oil Mills (Petitioner) filed a petition in the Madras HC to obtain a directive from the Registrar of Trademarks to allow the late renewal of their registered mark "THENALEE" in Class 29. The mark, originally registered in 2002 and renewed in 2012 (with an extension to 2022), faced rejection for renewal when the Petitioner applied in 2024 due to the application being filed beyond the prescribed deadline.
The Petitioner relied on the precedent set by the Madras HC's division bench ruling in A. Abdul Karim Sahib to argue its entitlement to seek renewal despite lapse. The Madras HC recognized the validity of the Petitioner's claim based on the established legal precedent and directed the Registrar to allow the Petitioner to file the renewal application for the mark "THENALEE".

1.M/s. Sakthi Oil Mills vs. Registrar of Trademarks; W.P. (IPD) No.38/2024

DESIGN

COMMUNITY DESIGN AND TRADEMARK DISPUTE OVER "DR. ALBERT"

Dr. Adina Alberts sought to invalidate a Community design registered by Techtex SRL in May 2020, claiming it contained the word element "dr. albert," similar to her trademarks and trade name. She relied on five Romanian word marks and three trade names under Article 25(1)(e) of Council Regulation (EC) No 6/2002. However, the EUIPO Cancellation Division rejected her claim in April 2023, citing the late registration of three trademarks and the dissimilarity of the earlier two. Lacking national legal proof for trade name protection, her claim was dismissed, leading to an appeal in June 2023.

On 11 March 2024, the EUIPO Board of Appeal partially upheld her appeal, recognizing some similarity between one of her trademarks and the contested design but requiring proof of use. Dr. Alberts objected to reassessment procedures, but the Court ruled verification necessary. The case was remanded to the Cancellation Division, leaving the dispute unresolved pending further proof of use and similarity evaluation. She further argued that the Board misinterpreted Article 25(1)(e) and failed to consider her reliance on Article 39(2)(c) of Law No 84/1998, which protects reputed marks in Romania. However, the Board found she had only argued a likelihood of confusion under Article 39(2)(b) without explicitly citing 39(2)(c). The Court upheld this, ruling that general legal references without specific arguments were insufficient.
Dr. Alberts also contested the Board's finding that her earlier mark No 2 covered goods which are dissimilar to sanitary masks. She claimed the contested design, related to surgical mask packaging, was similar to her goods in Classes 3 and 25. The Court rejected this, noting the differences in nature, purpose, and distribution channels. Ultimately, the Court dismissed her action, affirming the Board's decision. Dr. Alberts was ordered to bear her own costs and pay those incurred by Techtex SRL, whereas the EUIPO covered their own costs.

1.Adina Alberts v. EUIPO (Case R 1348/2023-3)

COPYRIGHT

TAYLOR SWIFT FACES ANOTHER LAWSUIT FROM KIMBERLY MARASCO

Kimberly Marasco has escalated her legal battle against Taylor Swift by filing a new copyright infringement suit, which broadens the scope of her accusations. The previous lawsuit, was dismissed due to Marasco's failure to serve the suit in a timely manner The latest suit targets Swift's album titled "The Tortured Poets Department: The Anthology", specifically alleging copyright infringement in the songs "Who's Afraid of Little Old Me?" and "I Can Do It With a Broken Heart." The lawsuit also adds new defendants, songwriters Jack Antonoff and Aaron Dessner, as well as Universal Music Group, Inc., and Republic Records.
Marasco reiterates her earlier infringement claims concerning Swift's tracks "The Man" from the "Lover" album and "Midnight Rain" from "Midnights" in the present suit. As a result of these expanded allegations and the inclusion of new songs and defendants, Marasco has dramatically increased her demand for damages, now seeking $25 million, a substantial rise from the $7 million requested in her initial, now-dismissed lawsuit.

1.https://www.newsweek.com/taylor-swift-copyright-lawsuit-florida-artist-eras-tour-2038875

COPYRIGHT

DELHI HC RULES IN FAVOR OF PPL

Phonographic Performance Limited (PPL), a music licensing company, has filed a lawsuit against Azure Hospitality, owner of popular restaurants like Mamagoto, Dhaba, Sly Granny, and Fox Trot, for copyright infringement in the Delhi HC. PPL alleged that restaurants belonging to Azure Hospitality were playing PPL's copyrighted sound recordings without obtaining the proper license.
The HC ruled in favor of PPL, asserting that as the owner of the songs, PPL has the right to issue licenses for its use, even though it was not a registered copyright society. The HC further went on to emphasize that the right to grant licenses for copyrighted works is an inherent right of the copyright owner under Section 30 of the Copyright Act 1957, and this right cannot be overridden by Section 33(1) of the Copyright Act 1957.

1.Phonographic Performance Limited vs. Azure Hospitality & Ors.; CS(COMM) 714/2022

PATENT

OPUS GENETICS CONFRONTS PATENT CHALLENGE FROM SANDOZ AMID ONGOING CLINICAL AND FINANCIAL DEVELOPMENTS

The Opus Genetics, Inc., a Durham, NC-based pharmaceutical company with a market capitalization of $31.57 million, has disclosed in an SEC filing that it received a Paragraph IV Certification Notice from Sandoz Incorporated. The notice, dated January 2025, informs Opus Genetics that Sandoz has submitted an Abbreviated New Drug Application (ANDA) with the FDA to produce a generic version of RYZUMVI", a patented drug owned by Opus Genetics. Sandoz challenges the validity and enforceability of six Opus Genetics patents listed in the FDA's Orange Book.
In response, Opus Genetics or its commercial partner may choose to initiate a patent infringement lawsuit within 45 days, which would trigger an automatic 30-month stay on FDA approval of the generic product unless the court rules otherwise. The company has emphasized that its decision will be based on commercial and legal considerations. The SEC filing includes forward-looking statements, cautioning that they are subject to risks and uncertainties that could impact the company's financial health and future operations.
Opus Genetics advances its pipeline, completing VEGA-3 trial enrollment and nearing full enrollment for LYNX-2. It received FDA Fast Track designation and dosed its first pediatric patient in a gene therapy trial. Financially, the company launched a $40 million equity program, revised executive compensation, and scheduled its 2025 stockholder meeting.

1.https://www.investing.com/news/sec-filings/opus-genetics-faces-patent-challenge-from-sandoz-93CH-3907393

PATENT

DELHI HC RULES IN FAVOR OF PHILIPS IN SEP INFRINGEMENT CASE

The Delhi HC has ruled in favor of Philips against Indian DVD manufacturers Pearl Engineering Company, Powercube Infotech, and Siddharth Optical Disc Private Ltd. (Defendants) for infringing its standard-essential patent (SEP) covering Eight-to-Fourteen Modulation Plus (EFM+) coding. The HC found that the Defendants knowingly used Philips' patented technology without a license and were unwilling licensees, holding them liable for aggravated damages. While the patent expired in February 2015, making an injunction impossible, the ruling reinforces India's position as a strong venue for SEP enforcement.
This judgment marks a significant win for SEP owners in India, aligning with global legal standards on FRAND principles. Legal experts highlight that the decision affirms the Indian judiciary's commitment to protecting intellectual property rights, ensuring that infringers face serious consequences. As India continues integrating with global IP frameworks, this case sets an important precedent for future patent disputes, signaling the necessity of proper licensing in standardized technology industries.

1.Koninklijke Philips N.V. V. Maj(Retd) Sukesh Behl & Anr (Cs(Comm) 423/2016 & I.As. 18701/2014, 20810/2014, 3550/2021), Koninklijke Philips N.V. Koninklijke Philips N.V. G.S Kohli & Ors (Cs(Comm) 499/2018 & I.As. 3258/2017, 3509/2021), Koninklijke Philips N.V V. Surinder Wadhwa & Ors (Cs(Comm) 519/2018 & I.As. 10541/2012, 16494/2018, 3549/2021)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More