TRADEMARK
HARLEY DAVIDSON WINS TRADEMARK CASE AGAINST FOOTWEAR SELLER
Harley-Davidson (Plaintiff), the famous American motorcycle
manufacturer with a diverse product line, filed a trademark and
copyright infringement suit against the proprietor of Red Rose
Industries (Defendant) in the Delhi HC. The dispute arose in 2023
when Plaintiff's salesperson discovered the Defendant's use
of an identical mark and business activities under the brand name
"RONTEX", featuring a logo deceptively similar to the
Plaintiff's famed eagle logo. Investigations revealed that the
Defendant conducted business through third-party platforms like
Amazon, Flipkart, and IndiaMART.
The HC decreed a permanent injunction in favour of the Plaintiff,
directing the Defendant to destroy its products bearing the
infringed marks and inventories under the supervision of the Local
Commissioner. Furthermore, the HC imposed costs and damages of Rs.
5 lakhs on the Defendant, to be paid to the Plaintiff.
1. HD USA LLC v Vijaypal Dhayal owner/proprietor of Red Rose Industries; CS(COMM) 609/2023 & IA 42209/2024
TRADEMARK
LODHA BROTHERS SETTLE TRADEMARK DISPUTE
The trademark battle between the Lodha brothers, Abhishek Lodha – CEO of Macrotech Developers Ltd. (MDL) and Abhinandan Lodha, founder of House of Abhinandan Lodha (HOAL), has concluded through successful mediation. The resolution clarifies the use of the "Lodha" brand in their separate real estate endeavors. As per the settlement, MDL will now exclusively own the trademarks "Lodha" and "LodhaGroup", while Abhinandan Lodha will solely use his trademark, HOAL, for his real estate projects. Further, both parties have agreed to publicly state that their businesses are distinct and unaffiliated.
TRADEMARK
DELHI HC SEEKS DAIICHI'S RESPONSE IN FORTIS TRADEMARK UNDERVALUATION APPEAL
RHC Healthcare has filed an appeal in the Delhi HC contesting the ₹200 crore sale of the "Fortis" trademark to Fortis Healthcare. RHC argues that the sale price was determined based on an undervaluation report submitted by Daiichi Sankyo. Seeking a revaluation, RHC wants the court to appoint an independent valuer. The HC has not stayed the sale, but stated that future actions concerning the trademark are contingent on the appeal's result. Daiichi Sankyo and Fortis Healthcare are scheduled to respond to the appeal's maintainability on April 29.
COPYRIGHT
SC UPHOLDS FRESH TRIAL IN INOX CRYOGENIC TANK DESIGN COPYRIGHT CASE
The SC has upheld a Gujarat HC order for a fresh trial in Inox
India's copyright infringement case against Cryogas Equipment
and LNG Express. In the suit, Inox claimed copyright infringement
in its proprietary engineering drawings, intellectual property, and
literary works pertaining to the industrial design of cryogenic
storage tanks and their distribution systems.
Aggrieved by this decision Cryogas Equipment & LNG Express
filed an appeal before the SC. In examining the case, the SC
established a two-pronged test to determine if a work qualifies for
protection under the Designs Act. This test will first assess if
the work is purely an 'artistic work' eligible for
Copyright Act protection. If it is a 'design' derived from
an original artistic work and subjected to an industrial process
(as per Section 15(2) of the Copyright Act), it will be considered
under the Designs Act. Secondly, if the work doesn't qualify
for copyright protection as an artistic work, the test of
'functional utility' will be applied to ascertain its
primary purpose and determine if it qualifies for design
protection.
Affirming the HC's decision, the SC directed the Commercial
Court to conduct the trial, within one year, applying this new test
to discern the nature of Inox's Proprietary Engineering
Drawings and other IP infringements claimed. It also asked the
trial court to decide Inox's pending injunction application
within two months.
COPYRIGHT
DELHI HC RULES PPL CAN'T ISSUE MUSIC LICENCES TO PUBLIC VENUES
The Delhi HC, overturning the decision of the Bombay HC in the
matter, has firmly ruled that Phonographic Performance Ltd. (PPL)
cannot issue licences for playing music in public spaces like
restaurants and bars, as it is not a registered copyright society
under Section 33 of the Copyright Act, 1957. The decision came from
a Division Bench of Justice Hari Shankar and Justice Ajay Digpaul
and marks a major shift in how music licensing is regulated in
India.
The case began in 2022 when PPL sued Azure Hospitality for playing
music without a licence. While a single judge had earlier sided
with PPL, the Division Bench overturned that decision, stating that
owning music rights doesn't allow a company to operate a
licensing business unless it is a registered copyright society. The
Court also noted that allowing unregistered entities to license
music could lead to confusion and overlapping fees.
The ruling clarifies that venues must still pay for using
copyrighted music, but only through authorised channels. Azure was
directed to pay an amount equivalent to what it would have owed to
a registered entity like Recorded Music Performance Ltd. The
decision could reshape how music rights and royalties are managed
in India's hospitality sector.
PATENT
GERMAN FEDERAL PATENT COURT UPHOLDS XTANDI PATENT
In a victory for Astellas Pharma and The Regents of the
University of California in their ongoing European patent battle
over the prostate cancer drug Xtandi, the German Federal Patent
Court has upheld the validity of the basic patent EP 1 893 196 and
its related German Supplementary Protection Certificate (SPC), and
dismissed a nullity suit filed by Sandoz subsidiary Hexal. Sandoz
was joined by Accord Healthcare, Synthon, and Stada in the suit as
Plaintiffs.
The Patent Court upheld the patent and the SPC and agreed that they
protect the active ingredient enzalutamide, the core of Xtandi,
with the patent valid until May 2026 and the SPC extending
protection in Germany until June 2028. Astellas, the exclusive
sub-licensee of the IP, intervened in the proceedings in support of
the patent holder, the University of California. This decision adds
to Astellas' recent wins, including a UK High Court ruling in
October 2024 that also upheld the patent and the SPC. A parallel
decision from the District Court of The Hague in the Netherlands is
expected soon.
1.https://www.juve-patent.com/cases/federal-patent-court-upholds-xtandi-patent-in-win-for-astellas/
MISCEALLANEOUS
HUL SUES HONASA OVER DERMA CO BILLBOARD AD
Hindustan Unilever Ltd (HUL) has filed a case in the Bombay HC
against Honasa Consumer, the parent company of The Derma Co and
Mamaearth, accusing it of disparaging its Lakmé brand in a
recent billboard advertisement. The ad in question reads, "Hey
Lakmé, Congratulations on finally getting SPF 50 in-vivo
tested. Welcome to The Derma Co Standard," which HUL claims
directly targets and undermines its sunscreen product. The company
is seeking court orders to prevent further such ads from
Honasa.
This legal action follows a similar lawsuit filed by Honasa against
HUL in the Delhi HC just days earlier. In that case, Honasa alleged
that a Lakmé campaign misleads consumers by suggesting rival
sunscreens, allegedly resembling The Derma Co's product, do not
meet claimed SPF levels. The court noted the ad appeared
"disparaging" and has asked HUL to respond. With both
companies now embroiled in disparaging ads legal disputes, the
battle highlights intensifying competition in India's
₹2,000 crore sunscreen market and raises questions about the
need for clearer SPF testing standards in the country.
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