TRADEMARK
DOON SCHOOL SRINAGAR RESTRAINED FROM USING 'THE DOON SCHOOL' TRADEMARK
In a trademark dispute, the Dehradun Commercial Court has issued an interim order restraining Doon School Srinagar from using the name "The Doon School," citing trademark infringement. The order, dated March 22, was passed after the Srinagar institution failed to respond to the petition filed by the original Doon School, a 94-year-old institution with a registered trademark since 2014. The petitioner argued that the Srinagar school's use of the name was misleading, defamatory, and harmed the reputation of the prestigious Dehradun-based institution. The issue came to light in February 2024 through a news article pointing out to the alleged malpractice at the Srinagar institution. The Court has also barred media platforms from publishing any content related to "The Doon School" during the ongoing legal proceedings.
TRADEMARK
DELHI HC ORDERS REMOVAL OF 'KINDPAN' FROM REGISTER
The Delhi HC has ruled in favor of Mankind Pharma Limited, directing the removal of the trademark 'Kindpan' from the official records of the Trade Marks Registry. The decision came in response to a petition filed by the pharmaceutical giant against M/s Sanavita Medicare, a proprietorship firm that had registered the disputed mark under Class 5, which covers medicinal and pharmaceutical products. Mankind Pharma argued that it holds exclusive rights over the trademarks 'Mankind' and 'Kind', with the latter registered as early as January 2013. The respondent, however, secured registration of 'Kindpan' in August 2014 on a 'proposed to be used' basis. The company alleged that this was a deliberate attempt to ride on the goodwill and reputation built by Mankind Pharma over the years.
Justice Saurabh Banerjee acknowledged Mankind Pharma's longstanding use and strong brand recognition in the pharmaceutical industry, particularly with respect to 'Mankind' and 'Kind' family of marks. He noted that the respondent had failed to provide a reasonable explanation for adopting a deceptively similar name and found no evidence of genuine intent or use. The Court concluded that the registration of 'Kindpan' was likely to mislead consumers and would unfairly benefit from Mankind Pharma's established reputation. Thus, it ordered the Trade Marks Registry to remove the mark, reinforcing the importance of protecting established trademarks from being exploited by newer market entrants.
1. Mankind Pharma Limited vs. Preet Kamal Grewal & Anr. (C.O.(COMM.IPD-TM) 279/2022)
TRADEMARK
DELHI DISTRICT COURT UPHOLDS BURBERRY'S TRADEMARK RIGHTS
In a significant ruling, a Delhi District Court has granted relief to Burberry Limited, (Plaintiff), the iconic British luxury fashion house, in a trademark infringement suit filed against two Delhi-based defendants found dealing in counterfeit Burberry products. The court observed that the defendants had been manufacturing, stocking, and selling goods bearing Burberry's registered trademarks, including the word mark "BURBERRY" and the well-known "Burberry Check" device, including the artistic work in the device, thereby infringing upon the plaintiff's intellectual property rights, including trademarks and copyrights. The suit, filed in March 2019, was prompted by the discovery of counterfeit products in the market. The Court noted that the Plaintiff had submitted conclusive documentary evidence, including valid trademark registration certificates and product listings on platforms like Amazon and the DLF Emporio Mall, confirming its long-standing use and registration of the disputed marks. During the proceedings, a Local Commissioner appointed by the Court found and inventoried over 200 counterfeit bags from the premises of the two defendants, Rajesh Kumar and Mukesh Kumar, both of whom were present during the raid.
Despite being served with notices, the defendants neither filed written statements nor participated in the trial. As a result, the Court proceeded ex-parte and granted a "permanent injunction" restraining the defendants from using the BURBERRY trademarks or any deceptively similar marks. It further directed the "delivery up" of all infringing goods for destruction, awarded Rs. 1,00,000 in damages to each defendant, and also granted costs of the suit in favour of Burberry.
1. Burberry Limited vs Rajesh Kumar & Ors. CS (COMM.)/968/2022
COPYRIGHT
JAPANESE BUSINESS TO OBTAIN AI-REUSE RIGHTS LICENSE
The Japan Academic Association for Copyright Clearance (JAC), in partnership with Rights Direct, a subsidiary of Copyright Clearance Center in Japan, has introduced AI re-use rights within the Digital Copyright License (DCL). The reuse rights license specifically enables Japanese companies to legally utilize copyrighted materials for training and developing internal AI systems. This means companies can now efficiently incorporate text and data from millions of works, including academic papers and research, to improve AI functions like summarization, information extraction, and automated reviews. This partnership aims to streamline content licensing and mitigate legal risks associated with AI applications, ensuring that the use of copyrighted materials in AI development is both legal and efficient.
COPYRIGHT
NEWS OUTLETS DIVIDED: SOME SUE, SOME STRIKE DEALS WITH AI COMPANIES
A growing rift has emerged within the news industry regarding AI companies' utilization of copyrighted material. While prominent publishers, including The New York Times and others, are pursuing legal action against OpenAI and similar entities for unauthorized content use, a significant number are opting for licensing agreements. These agreements typically involve AI platforms using news content for training large language models and, in some cases, providing citations in tools like ChatGPT. Major outlets such as News Corp, Associated Press, Financial Times, and others have entered into such deals. Reports indicate that OpenAI has offered news organizations varying sums for content licensing, with figures ranging from $1 million to $5 million annually in many cases, with News Corp receiving a significantly larger agreement. However, not all publishers are in agreement, with some advocating for industry-wide solidarity against individual deals to ensure fair compensation.
1.https://pressgazette.co.uk/platforms/news-publisher-ai-deals-lawsuits-openai-google/
PATENT
DELHI HC RESTRAINS CDYMAX'S LAUNCH CANCER DRUG IN INDIA
Novartis AG and its Indian affiliate (Plaintiffs) have filed a patent infringement suit against CDYMAX Pharma (CDYMAX) in the Delhi HC, for infringement of their Indian Patent No. 283133, which covers the breast cancer drug Ribociclib. The Plaintiffs presented evidence of a manufacturing license obtained by CDYMAX for export, and third-party listings confirming exports of the drug's API to Russia, Egypt, and Bhutan. An independent investigation further corroborated CDYMAX's manufacturing and export activities, and revealed plans for a domestic launch in early 2025 among other things.
The HC finding a prima facie case of infringement restrained CDYMAX from launching the drug in India until the next hearing. However, export activities by CDYMAX are for the moment, not restricted. A Local Commissioner was appointed and directed to visit the premises of CDYMAX to make an inventory of CDYMAX's stock of the patented drug at its premises, without authorizing seizure of any product, to protect Novartis's rights.
1.Novartis AG & Anr. vs CDYMAX (INDIA) Pharma Pvt. Ltd., CS (COMM) 862025
PATENT
DELHI HC SETS ASIDE THE PATENT OFFICE'S ORDER IN ROTIGOTINE TTS
The Delhi HC has set aside an order passed by the Deputy Controller of Patents and Designs in August 2019, which refused to proceed with the patent application for the invention titled "Polyvinylpyrrolidone for the Stabilization of a Solid Dispersion of the Non-crystalline Form of Rotigotine." The patent application (No. 1574/KOLNP/2012) pertained to a transdermal therapeutic system (TTS) designed to offer enhanced stability of rotigotine, a drug used to treat Parkinson's Disease and related disorders. The appellant had revised the claims in response to the First Examination Report, narrowing them down to eight. However, the patent was refused on grounds that the invention lacked an inventive step, arguing that the components and their uses—including the ratio of rotigotine and PVP—were already known in the prior art. During the hearing, the Controller introduced two new prior art documents (D4 and D5), which had not been mentioned earlier, denying the appellant a fair opportunity to respond.
The Court held that the Patent Office exercises quasi-judicial powers and must act fairly by informing applicants of all prior art being relied upon before the hearing. Since this was not done, the Court ruled that the principles of natural justice were violated. The matter has now been remanded for fresh consideration by a different officer. The appellant will be allowed to respond to the new documents (D4 and D5), and a fresh decision is to be made within six months, uninfluenced by previous observations.
1. UCB Pharma Gmbh & Anr vs The Controller Of Patents And Designs IPDPTA No. 117 of 2023 (OA/1/2020/PT/KOL)
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