TRADEMARK
'WEATHERSHIELD' TRADEMARK DISPUTE – DELHI HC INJUNCTION FAVOURS AKZO
In a recent ruling, the Delhi High Court has granted an injunction in favour of Akzo Nobel Coatings International B.V. (Plaintiff), protecting their 'WEATHERSHIELD' mark, against JK Cement Ltd. (Defendant). Akzo, a leading global paint and coating company, has used its trademark for its extensive range of paints and coatings since the 1970s, and its mark is registered in over 91 countries, including India. The Plaintiff argued that the Defendant's use of the similar mark 'WEATHER SHIELD' on its cement products could cause consumer confusion and damage its brand reputation. The Defendant countered that 'WEATHERSHIELD' is a descriptive term related to weather protection, and that their use of 'WEATHER SHIELD' was intended to describe the properties of their cement and cater to different market segments.
The court ruled that 'WEATHERSHIELD' is a distinctive term with strong secondary meaning associated with the Plaintiff's products. It found that the similarity between 'WEATHERSHIELD' and 'WEATHER SHIELD' could reasonably lead to consumer confusion, particularly since both marks are used in the construction industry. Despite infringement being established, the court granted JK Cement an eight-week period to deplete its existing inventory of products bearing the disputed mark. This decision balances the protection of the Plaintiff's trademark rights with practical considerations for JK Cement's business operations.
(1) Akzo Nobel Coatings International B V V/s JK Cement Ltd. CS(COMM)-212/2023
TRADEMARK
TWENTY-THREE YEARS LONG TM DISPUTE BETWEEN FASHION GIANTS RESOLVED
The Delhi HC has resolved a long-standing trademark dispute between Lacoste and Crocodile International. Justice Sanjeev Narula ruled that Crocodile International's logo was deceptively similar to Lacoste's iconic crocodile emblem, which could mislead consumers and infringe Lacoste's trademark rights. The court issued a permanent injunction against Crocodile International, barring them from using the Crocodile mark and requiring them to account for profits earned from its use since August 1998. The case, initiated in 2001, involved Lacoste's claim of trademark infringement despite Crocodile International's defense of a coexistence agreement. The court found trademark infringement but dismissed claims of passing off and copyright infringement.
Reference:
(1) Lacoste & Anr. V. Crocodile International Pte Ltd & Anr. CS(COMM) 1550/2016
COPYRIGHT
RULING IN FAVOUR OF VISUAL ARTIST IN COPYRIGHT INFRINGEMENT CASE
In the internationally talked about case of Andersen (Plaintiff) V. Stability AI (Defendant), a California federal judge ruled on Monday that Stability AI, Midjourney, DeviantArt and Runway AI's artificial intelligence-based image generation systems infringe the copyrights of the Plaintiff. Plaintiff had sued the Defendant AI companies for using Plaintiff's copyrighted work in AI training, without its permission. The ruling does not capture the allegation made by the Plaintiff i.e. alleged misuse of their work to train AI systems, which directly infringes their copyright or that AI companies use their copyrighted material.
(1) Andersen v. Stability AI, U.S. District Court for the Northern District of California, No. 3:23-cv-00201
PATENT
JURY'S DECISION IN WYETH LLC V. AstraZeneca CASE OVERTURNED
In 2021, AstraZeneca Pharmaceutical LP (Defendant) was sued by Wyeth LLC (Plaintiff), which was acquired by Pfizer in 2009. The Plaintiff claimed that Defendant's drug 'Tagrisso' infringed Pfizer's patent. In May, the jury was in favour of Plaintiff and awarded monetary compensation for the damages which amounted to $107.5 million. However, on Wednesday U.S. District Judge overturned the decision made by the jury and ruled in favour of the Defendant. The judge found the patents lacked valid written descriptions of their inventions and were not reproducible by an ordinary scientist.
(1)Wyeth LLC v. AstraZeneca Pharmaceuticals LP, U.S. District Court for the District of Delaware, No. 1:21-cv-01338
PATENT
STAR SCIENTIFIC LIMITED V/S THE CONTROLLER OF PATENTS AND DESIGNS
Star Scientific Limited ('Appellant') challenged a
December 18, 2024, decision by the Controller of Patents and
Designs, regarding their patent application for "Composition
Methods, and Apparatuses for Catalytic Combustion." After
receiving a First Examination Report on August 23, 2021, the
Appellant responded on February 23, 2022. A hearing set for
December 8, 2023, was missed due to financial issues faced by the
Appellant, leading their attorney to request application
disposal.
The Controller's subsequent order led to multiple emails from
the Appellant's attorney seeking revival of the application,
all unanswered. The Delhi High Court ruled that non-appearance does
not automatically abandon a patent application. It emphasized that
the Controller must review all evidence and issue a reasoned
decision, ensuring procedural fairness and adherence to the
principle of "Audi Alteram Partem."
(1)Star Scientific Limited V. The Controller Of Patents And Designs C.A. (COMM.IPD-PAT)-20/2024
PATENT
CONCERNS OVER RECENT PATENT & TRADEMARK ORDERS IN INDIA
Recent patent and trademark orders issued by the Controller
General of Patents, Designs, and Trade Marks (CGPDTM) are facing
legal challenges. The Union Law Ministry and Additional Solicitor
General Aishwarya Bhati have opined that these orders are
"legally unenforceable" as they were made by outsourced
employees, violating the Trade Marks Act, 1999.
The controversy stems from the CGPDTM's decision to outsource
790 positions through the Quality Council of India (QCI) to address
delays in patent and trademark approvals. These outsourced
employees, hired at an annual cost of Rs 50.26 crore, issued
quasi-judicial decisions, which are now under scrutiny. The
Department of Legal Affairs and ASG Bhati argue that orders made by
these outsourced employees are legally flawed and can be challenged
as null and void. The Calcutta High Court has ruled that using
contractual employees for quasi-judicial functions is illegal.
Consequently, the Department for Promotion of Industry and Internal
Trade (DPIIT) has revoked the outsourcing arrangement. DPIIT has
issued a show cause notice to CGPDTM head Unnat Pandit, questioning
the legality of delegating quasi-judicial powers to contractual
staff without proper consent. ASG Bhati has recommended annulling
the decisions made by these employees and re-evaluating cases with
authorized officials, emphasizing that outsourcing quasi-judicial
roles does not comply with the General Financial Rules (GFR)
2017.
The issue raises serious concerns over the validity of the IPO
orders and the way forward.
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