TRADEMARK
DELHI HC CANCELS ZEPTO TRADEMARK MARK OVER NON-USE
The Delhi HC recently ruled in favor of Kiranakart Technologies
(P) Ltd., the operator of the quick-commerce app Zepto, in a
trademark dispute against a prima facie 'prior user' of the
mark, one Mohammad Arshad, in what appears to be another case of
trademark squatting. Arshad's 'ZEPTO' trademark was
registered in 2014, but he failed to demonstrate genuine use of the
mark since its registration, given which the HC ordered the
cancellation of the same. In contrast, Kiranakart (the current
owners) have extensively used and promoted the 'ZEPTO' mark
since 2021, establishing substantial goodwill. The HC determined
that Arshad's mark was merely a "block" on the Trade
Marks Register and hindered Kiranakart's genuine business
operations.
The matter came to light when Arshad opposed Kiranakart's
application for the 'ZEPTO' trademark under Class 35,
despite failing to provide credible evidence of its use. Kiranakart
subsequently filed the present rectification petition in the Delhi
HC under Sections 47 and 57 of the Trade Marks Act, 1999. The HC
found that Arshad's non-use of the mark for over eight years
made it liable for cancellation under Section 47(1)(b), which
mandates the removal of trademarks that remain unused for at least
five years. With Arshad failing to contest the case, the HC ruled
in Kiranakart's favor, emphasizing that trademark registrations
must not be used as tools for anti-competitive behavior.
1. Kiranakart Technologies Private Limited vs. Mohammad Arshad & Anr (C.O. (COMM.IPD-TM) 62/2024 with I.A. 29531/2024 & I.A. 40361/2024)
TRADEMARK
MEDSERVE TO PAY ₹3.34 CRORE DAMAGES FOR SELLING COUNTERFEIT JOHNSON & JOHNSON PRODUCTS
In a recent and significant trademark infringement and
counterfeiting case, the Delhi HC ruled in favor of Johnson &
Johnson (J&J) and against Medserve and its associated entities
(Defendants) for selling counterfeit surgical products under
J&J's trademarks 'SURGICEL' and 'ETHICON'.
The HC granted a permanent injunction and imposed damages of
₹3.34 crores on the Defendants, and the ruling emphasized the
risks posed by fake medical devices and the need for strict
judicial intervention to protect public health and intellectual
property rights.
The case originated when counterfeit J&J surgical products were
discovered at the University of Kentucky Medical Center, which led
to an investigation that traced their source back to Medserve, a
New Delhi-based company. The counterfeit products, manufactured in
China and Turkey, were repackaged and falsely labeled with
J&J's trademarks before being distributed internationally.
The HC found substantial incriminating evidence, including
electronic communications and financial transactions, proving the
Defendants' involvement in large-scale counterfeiting and
illicit trade practices.
Citing the Defendants' fraudulent activities and non-compliance
with judicial proceedings, the court ordered compensatory damages
of ₹2.34 crores and exemplary damages of ₹1 crore to
deter future violations. It also mandated the destruction of all
seized counterfeit products and full recovery of litigation
costs.
1. Johnson & Johnson v. Pritamdas Arora, CS(COMM) 570/2019
TRADEMARK
SC ALLOWS PUNE EATERY TO USE 'BURGER KING' NAME
The SC of India has temporarily allowed a Pune-based eatery to
continue using the name 'Burger King' until the Bombay HC
delivers its final decision on the matter. The Division Bench ruled
that the Bombay HC's order, which had favored the US-based
fast-food chain Burger King Corporation, would remain stayed while
the appeal proceedings continue.
The legal battle began when Burger King Corporation, which entered
the Indian market in 2014, filed a trademark infringement lawsuit
against a local restaurant that had been operating under the
'Burger King' name since 2008. The multinational chain
argued that the Pune eatery's use of the name harmed its brand
reputation and sought a permanent injunction. However, a Pune court
ruled in July 2024 in favor of the local eatery, citing its
continuous use of the name since the early 1990s and declaring it a
'prior and honest user' of the trademark. Burger King
Corporation challenged this ruling in the Bombay HC, asserting that
it had registered the 'Burger King' trademark in India in
1979, even though it had not begun operations until 2014. The Pune
eatery countered that its use of the name predated the US
chain's entry into the Indian market and accused the
multinational company of 'squatting' on the trademark. With
the SC's latest order, the local eatery can continue operations
under the disputed name while awaiting the Bombay HC's
verdict.
COPYRIGHT
MOANA SEQUEL LAWSUIT LOOMS AFTER DISNEY VICTORY
Screenwriter Buck Woodall's 2020 copyright infringement
lawsuit against Disney, alleging the 2016 film "Moana"
was based on his "Bucky the Wave Warrior" script, has
been concluded with a decisive win for Disney. Disney countered
Woodall's claim of similarity by citing contrasting character
backgrounds, timelines, and plot motivations.
The eight-member jury ruled in favor of Disney, observing that
Disney lacked access to Woodall's work and dismissing the
claims of similarity. However, Disney's legal troubles are not
over, as Woodall has filed a separate lawsuit related to Moana 2,
which is still pending in court.
1.https://www.newsweek.com/taylor-swift-copyright-lawsuit-florida-artist-eras-tour-2038875
COPYRIGHT
MADRAS HC STAYS ED ORDER ON SHANKAR IN COPYRIGHT CASE
Filmmaker S. Shankar faced a copyright infringement complaint
from writer Arur Tamilnadan, who alleged that the 2010 film
"Enthiran" was based on his story, "Jugiba."
Since copyright offenses are included in the Prevention of Money
Laundering Act, the Enforcement Directorate (ED) provisionally
attached Shankar's property.
On a plea filed by Shankar, the Madras HC has stayed the ED's
order. The HC noted that a single bench of the same court had
previously dismissed a civil suit filed by Tamilnadan against
Shankar for the same copyright infringement claim. While the ED has
the power to act on individual complaints, the HC questioned the
ED's decision to attach property, especially in light of the
earlier ruling. Further, it directed the ED to file a
counter-affidavit and adjourned the hearing.
1.S. Shankar v. The Deputy Director, WP 8352 of 2025
PATENT
NIKE AWARDED DAMAGES IN LULULEMON PATENT DISPUTE
A New York Federal Court jury has delivered a verdict in the
patent infringement lawsuit brought by Nike, Inc. against Lululemon
Athletica Inc., finding that Lululemon's Chargefeel,
Strongfeel, and Blissfeel footwear products infringed U.S. Patent
No. 8,266,749. This patent covers specific sneaker structures
related to knitted textile uppers.
The jury awarded Nike $355,450 in damages, calculated at $1.20 per
pair of infringing shoes sold. This amount is significantly less
than the 5% of total shoe sales initially sought by Nike. Lululemon
has announced its intention to appeal the jury's verdict.
1.Nike, Inc. v. Lululemon U.S. Inc., 1:23-cv-00771- AS
PATENT
EPO REJECTS HUMAN-ANIMAL CHIMERA PATENT ON MORALITY GROUNDS
The European Patent Office (EPO) Board of Appeal (BoA) upheld
the refusal of a patent application filed by the Regents of the
University of Minnesota (applicant), rejecting the claims related
to human-animal chimeras. The application (EP16759528.9) sought to
patent methods for creating gene-edited pig embryos with human stem
cells, aiming to generate humanized vasculature for potential
therapeutic use in organ transplantation.
The BoA agreed with the initial decision of the EPO Examining
Division (ED), which found that the invention violated Article
53(a) EPC, which specifically excludes inventions from
patentability if their exploitation is contrary to morality. The
invention, involving the integration of human cells into pig
embryos, raised ethical concerns, particularly regarding the
potential for human cells to integrate into the brain or germ line
of the chimeras as well as concerns relating to the potential for
human cells to participate in the brain or germ line of chimeras.
The BoA emphasized that, the invention remained in conflict with
human dignity.
1.T 1553/22 (Human-pig chimeras/UNIVERSITY OF MINNESOTA)
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