IPR Weekly Highlights (45) - Trademark - Intellectual Property (2024)

ARTICLE

3 September 2024

TRADEMARK

BOMBAY HC GRANTS INTERIM RELIEF TO BURGERKING

The Bombay HC granted Burger King an ad-interim order on Monday,prohibiting a Pune food joint from using the trademark 'BurgerKing' until further notice. The court will review BurgerKing's appeal on 06th September 2024. Earlier, a Pune court hadallowed the Pune eatery to use the trademark 'Burger King'and dismissed Burger King's request for a permanent injunctionand damages of 20 lakhs rupees.
Burger King's counsel, Hiren Kamod, noted that an interiminjunction had been in place since January 2012, but the Pune foodjoint resumed using the trademark following the DistrictCourt's decision. The HC will examine the trial court'sfinal judgment and decide on Burger King's request for a stayon the Pune court's order after further review.

TRADEMARK

DELHI HC DECLARED BOROLINE AS 'WELL KNOWNTM'

The Delhi HC has recognized "Boroline" as a well-knowntrademark under the Trade Marks Act, noting its status as ahousehold name and one of the oldest trademarks, having been in usesince before India's independence. The court ordered theRegistrar of Trademarks to add "Boroline" to the list ofwell-known trademarks once G. D. Pharmaceuticals completes thenecessary formalities.
The court issued a permanent injunction against Cento Products,prohibiting them from manufacturing, selling, or advertisingproducts under the name "Borobeauty," which was deemeddeceptively similar to "Boroline." Additionally, theCourt instructed Cento Products to change their trade dress andtrademark to ensure they are distinct from Boroline's, and toavoid the use of a dark green color and the prefix"Boro."
The court also directed Cento Products to pay Rs. 2 lakhs in coststo Boroline due to the prolonged nature of the lawsuit.

(1) G.D. Pharmaceuticals Private Limited v. M/S CentoProducts (India) Cs(Comm) 53/2019 & I.A. 2215/2021

COPYRIGHT

OPENAI DEFENDS AI TRAINING PRACTICES

OpenAI, the Microsoft-backed AI startup, has responded toallegations that it improperly trained its artificial intelligencelanguage models to use the copyrighted works of authors such asMichael Chabon, Ta-Nehisi Coates, and comedian SarahSilverman.
Copyright owners, including writers, news outlets, and musicpublishers, have filed several high-stakes lawsuits against techcompanies over the alleged exploitation of their work, withoutpermission in order to train text-based generative AI systems. Theabove group of authors also filed separate lawsuits against MetaPlatforms META.O and Microsoft-backed MSFT.O OpenAI over theirsystems last year.
OpenAI argues that it employs fair use of copyrighted material tocreate new, original content with its chatbot ChatGPT. Meta andOpenAI have both convinced judges to dismiss some of the claims,though courts have not yet addressed the core question of whetherthe use of material scraped from the internet to train AI infringescopyrights on a massive scale.

(1) RE: Openai Chatgpt Litigation, U.S. District Court ForThe Northern District Of California, No. 3:23-Cv-03223.

COPYRIGHT

DELHI HC ORDERS IN FAVOUR OF LOUISVUITTON

Recently, the Delhi HC ordered Rs. 5 lakhs as costs in favour ofthe famous French luxury brand Louis Vuitton in its suit against awebsite for the use of its photographs without authorization. Thecourt's order not only imposes a financial penalty on thewebsite owner but also mandates the removal of all infringing LouisVuitton content. Interestingly, the court clarified that thewebsite can continue selling pre-owned Louis Vuitton products aslong as it explicitly states on its website that these are"authentic pre-owned goods" belonging to Louis Vuitton.It said that the website in question shall not deal in the newproducts of Louis Vuitton, except, with the latter's writtenagreement or permission.

(1) Louis Vuitton Malletier v. www.haute24.com, 2024 SCCOnLine Del

PATENT

DELHI TEREX PRT LTD. V/s. CDE ASIA LTD &ANR

Terex India filed an appeal against the order passed by theDeputy Controller of Patent and Designs, challenging the validityof Indian Patent No. 307249 held by CDE Asia Ltd. Terex contestedthe patent, concerning a system for material classification, on thegrounds of prior knowledge and inadequate disclosures. The CalcuttaHC found the Deputy Controller's order lacked proper reasoningand failed to consider the Opposition Board's recommendations.Criticizing the order as mechanical and arbitrary, the courtremanded the case to a different officer to ensure fairness andfresh consideration of the arguments.

(1) Terex India Private Limited Versus CDE Asia Ltd. &Anr. IPDAID 4 of 2024.

MISCELLANEOUS

ZEE ENTERTAINMENT & SONY SETTLE FAILED MERGERDISPUTE

Indian media giants, Zee Entertainment Enterprises and SonyPictures Networks (operating under Culver Max Entertainment Pvt.Ltd.) have reached a mutual settlement regarding theirmerger-related dispute.
Each of them has agreed to withdraw all claims, counterclaims, andlegal actions, including arbitration at the Singapore InternationalArbitration Centre (SIAC) and proceedings before the NationalCompany Law Tribunal (NCLT). The merger, valued at around $10billion and announced on December 22, 2021, was called off by Sonyon January 22, 2024, due to Zee's failure to meet financialrequirements and disagreements over the merged entity'sleadership. The settlement will see both companies cancel theirclaims for termination fees and damages, terminate the CompositeSchemes of Arrangement filed with the NCLT, and notify relevantregulatory bodies, thus closing any remaining liabilities.