INTRODUCTION

The close of 2022 witnessed some key developments in the field of Intellectual property rights. A remarkable change was the increasing number of judgements where Courts started awarding high damages in trademark infringement suits. Another significant development has been that the 12th edition of the NICE classification system for trademarks now includes blockchain goods and services. This edition of our newsletter also tracks crucial jurisprudence with respect to design infringement, using a trademark in a descriptive manner, and the declaration of 'BUKHARA' as well-known trademark. Other intriguing snippets of this edition includes GI tags obtained for Nicobari Hodi Craft and Japanese Sake. We do hope you enjoy reading this edition and wish everyone a wonderful and joyous 2023.

CASE ANALYSIS

DELHI HIGH COURT AWARDS RS. 2 CRORE DAMAGES TO ADOBE IN A TRADE MARK INFRINGEMENT SUIT

Adobe, Inc. ("Plaintiff") had filed a suit for trade mark infringement against Namase Patel and others ("Defendants") before the High Court of Delhi ("High Court") alleging that they violated Adobe's trade mark by using the domain names www.addobe.com and www.adobee.com ("contested domain names").1 As the Defendants were also utilizing a number of subdomain names inside the contested domain names, which included the Plaintiff's marks "PHOTOSHOP" and "SPARK," the Plaintiff also claimed that these marks were infringed.

While noting that previously also, similar suits have been filed against the Defendants whereby the High Court observed that the Defendant is a "repeated cybersquatter, whose main sphere of activities involves infringing well-known domain names by using deceptively similar domain names and subsequently engaging in further misuse and infringing activities." The Court while upholding the Plaintiff's rights in its wellknown mark "ADOBE", granted a permanent injunction restricting the Defendants from using the trade marks of the Plaintiff and further granted damages to the Plaintiff for an amount of INR 2,00,01,000/- (USD 2,42,498/-).

HIGH COURT OF DELHI PROHIBITS AQUALITE FROM COPYING THE DESIGN OF RELAXO'S FOOTWEAR

In an appeal filed by Relaxo Footwears ("Relaxo"), a Division Bench of the High Court of Delhi has set aside the decision of the Single Bench and restrained Aqualite Industries Pvt. Ltd. ("Aqualite") from manufacturing, selling, offering for sale, or in any manner dealing with products infringing the design of footwears of Relaxo.2

In the year 2018, Relaxo had filed a suit3 against the Respondent for infringement of its design bearing no. 294938 ("Relaxo's Design"). Vide judgment dated May 06, 2019, the Single Bench held that Relaxo's designs were not unique and that other products with the same patterns were easily accessible on the market. A market survey report and a letter from a sales manager of a chinese company attesting to the popularity of the strap over a lengthy period of time were also considered by the Single Bench in reaching this conclusion.

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Thereafter, an appeal was preferred before a Division Bench of the Delhi High Court by Relaxo, which in turn ruled that it is crucial to first review the relevant design application of Relaxo and that it is relevant to compare the competing designs. The Division Bench noted that it is apparent from the above images that the design of Aqualite's products is almost identical to the Relaxo's Design. The only question to be considered is whether registration of Relaxo's Design is proscribed under Section 4(a) and 4(c) of the Designs Act, 2000 which prohibit the registration of designs that are not noticeably different from existing designs or combinations of existing designs. According to Aqualite, Relaxo's Design is not new or original and is also not distinguishable from known designs or a combination of known designs.

The Division Bench while comparing the design of Relaxo's product held that the conclusion of the learned Single Judge is not based on the findings that Relaxo's Design is indistinguishable from designs that were known at the time of the registration. It is based on prima facie, opinion that there are products with similar designs currently available in the market. Thus the 'prima facie' conclusion of the learned Single Judge is not well founded. The judgment of the Single Judge was therefore set aside by the Division Bench.

WHETHER PROVIDING A LINK ON A WEB PAGE THAT ENABLES A CUSTOMER TO ACCESS THE SITE OR A WEB PAGE OF ANOTHER SELLER CONSTITUTES PASSING OFF: HIGH COURT OF DELHI TO EXAMINE

n August 2022 a Single Judge Bench of the High Court of Delhi ("Single Bench") had granted an ad-interim injunction in favour of Akash Aggarwal ("Plaintiff") restraining Flipkart Internet Pvt Ltd ("Flipkart") and other e-commerce entities ("Defendants") from allowing third parties to 'latch on' to the Plaintiff's trade name/mark "V-Tradition", on its e-commerce platform.

As per the Plaintiff, the Defendants are encouraging and allowing third party sellers to 'latch on' and use the Plaintiff's name/mark along with photographs of the Plaintiff's products, to sell their products on its platform. The Plaintiff submitted that when a third-party seller places a listing on the Defendants' respective platforms, it suggests the Plaintiff's products as one of the best sellers and allows them to add products under the Plaintiff's name/mark along with the Plaintiff's photographs into their listings. Flipkart by itself submitted that it would take down third party listings under the Plaintiff's name/ mark.

The Single Bench noted that permitting a third-party seller to 'latch on' to the Plaintiff's name/mark and product listings on an e-commerce platform is nothing but 'riding piggyback' as is known in the traditional passing-off sense in the brick and mortar world and amounts to taking unfair advantage of the goodwill that resides in the Plaintiff's name/mark and business. The Single Bench granted injunction against the Defendants to prevent them from "latching on" to the Plaintiff's product listings in order to promote their products, which are in no way related to the Plaintiff. While granting injunction, the Single Bench held that such a feature cannot be allowed to be used to the detriment of the owner of a brand, and accordingly, granted an ad-interim injunction in favour of the Plaintiff.4

Later on, an appeal was filed by Flipkart before the Division Bench of Delhi High Court. The Division Bench while staying the observations made by the Single Judge Bench, held that it is necessary to examine the issue of whether providing a link on a web page that enables a customer to access the site or a web page of another seller constitutes passing off, whereby the observations made by the Single Bench were stayed till the next date of hearing.5

HIGH COURT OF DELHI DETERMINES THE CORRECT JURISDICTION FOR APPEALS AGAINST PATENT OFFICE ORDERS

Recently, the High Court of Delhi ("High Court") in the matter of Dr. Reddys Laboratories Limited & Anr. v. The Controller of Patents & Ors.6 has decided upon the question, of whether upon the abolishment of the Intellectual Property Appellate Board ("IPAB"), all High Courts can entertain revocation petitions and appeals. The High Court also deliberated upon the method to determine the jurisdiction concerning for filing of revocation application under Section 64 and appeals under Section 117A of the Patents Act, 1970 ("Patents Act") after enactment of the Tribunal Reforms Act 2021 ("TRA")

The High Court held that the term 'appropriate office' is of immense significance in the process of prosecution and grant of a patent application in India. The High Court noted that due to high volume of cases, the Controller of Patents has been allocating examination of applications across several Patent Offices across the country due to the enormous number of cases. As a result, problems occur when, for example, a Delhi Patent Office application was scheduled to be considered before the Controller at the Mumbai Patent Office. The appeal to such an order was not necessarily being filed before the High Court of Delhi, however, with this order, the High Court has interpreted that the 'appropriate office' in the case of a patent application shall be the Patent Office where all procedures and proceedings related to the patent application have to take place, regardless of the fact that a hearing may have been scheduled before another Patent Office. Consequently, the High Court held that 'The appropriate office is, thus, the situs of the patent application.'

Footnotes

1. Adobe Inc. v. Namase Patel and Others, CS (COMM) 159/2022, November 29, 2022.

2. Relaxo Footwears Limited v. Aqualite Industries Pvt Limited, FAO (OS) (COMM) 145 of 2019, October 27, 2022

3. Relaxo Footwears Limited v. Aqualite Industries Pvt Limited, CS(COMM) No. 1288/2018]

4. Akash Aggarwal vs. Flipkart Entertainment Pvt Ltd & Ors, CS(COMM) 492/2022, order dated August 02, 2022

5. Flipkart Internet Pvt Ltd v Akash Aggarwal, FAO (OS) (COMM) 282/2022, order dated September 29, 2022.

6. Dr. Reddys Laboratories Limited & Anr. v. The Controller of Patents & Ors. C.O. (CONN.IPD-PAT) No. 3/2021, November 10, 2022.

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